Taco Bell Corp. v. Cameron Stewart
Claim Number: FA1510001640949
Complainant is Taco Bell Corp. (“Complainant”), represented by Leanne Stendell of Yum! Brands, Inc., Texas, USA. Respondent is Cameron Stewart (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tacobelldelivery.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2015; the Forum received payment on October 5, 2015.
On October 6, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tacobelldelivery.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tacobelldelivery.com. Also on October 7, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <tacobelldelivery.com> domain name is confusingly similar to Complainant’s TACO BELL mark.
2. Respondent does not have any rights or legitimate interests in the <tacobelldelivery.com> domain name.
3. Respondent registered and uses the <tacobelldelivery.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the TACO BELL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 820,073, registered December 6, 1966). Complainant uses the TACO BELL mark in connection with its Mexican-style restaurant services and food products.
Respondent registered the <tacobelldelivery.com> domain name on February 10, 2015, and uses it to directly compete with Complainant’s delivery services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant’s USPTO registration of the TACO BELL mark is sufficient to establish rights under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <tacobelldelivery.com> domain name includes the generic term “delivery,” omits the space between “taco” and “bell,” and adds the “.com” gTLD to the domain name. Past panels have found that the addition of a generic word does not sufficiently distinguish the disputed domain name from a registered mark. Further, the omission of spaces and the addition of a gTLD does nothing to negate confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the <tacobelldelivery.com> domain name is confusingly similar to Complainant’s TACO BELL mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name, and is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists “Cameron Stewart” as the registrant of record. Complainant states that it has never authorized Respondent to use its TACO BELL trademark. As Respondent has failed to submit any evidence to the contrary, the Panel finds that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent’s lack of rights or legitimate interests in the <tacobelldelivery.com> domain name is made evident by Respondent’s failure to use the disputed domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent uses the <tacobelldelivery.com> domain name to directly compete with Complainant’s legitimate delivery services. Complainant urges that use of a registered trademark in a domain name to sell competing goods or services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s registration and use of the <tacobelldelivery.com> domain name disrupts Complainant’s business by misleading Complainant’s consumers and diverting them away from Complainant’s legitimate sites, and offering services in direct competition with Complainant. Past panels have agreed that this type of use is disruptive to Complainant’s business and evidence of bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel thus finds that Respondent’s disruptive use of the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant argues that Respondent uses the domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Respondent offers services in direct competition with Complainant, purposefully incorporating Complainant’s TACO BELL mark to trade on Complainant’s goodwill. Previous panels have found that creating confusing similarity to sell competing products and services is evidence of bad faith under Policy ¶ 4(b)(iv). Thus, the Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Finally, Complainant alleges that Respondent had knowledge of Complainant’s rights in the TACO BELL mark when it registered the disputed domain name due to the fame of Complainant’s mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tacobelldelivery.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 8, 2015
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