50 Eggs Holdings, LLC v. St. Doyle
Claim Number: FA1709001750141
Complainant is 50 Eggs Holdings, LLC (“Complainant”), represented by Meredith Frank Mendez of Malloy & Malloy, P.L., Florida, USA. Respondent is St. Doyle (“Respondent”), represented by Bradley Cousens, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yardbird.cool>, 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.
Anne M. Wallace, QC, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2017; the Forum received payment on September 21, 2017.
On September 22, 2017, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <yardbird.cool> 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 September 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2017 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@yardbird.cool. Also on September 22, 2017, 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.
A timely Response was received and determined to be complete on October 16, 2017.
On October 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, QC, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits:
B. Respondent
Respondent submits:
1. Complainant has established rights in the YARDBIRD mark in connection with restaurant and bar services and uses the YARDBIRD mark in its restaurant and bar business.
2. Respondent’s <yardbird.cool> domain name is confusingly similar to Complainant’s YARDBIRD mark.
3. Respondent has no rights or legitimate interests in the <yardbird.cool> domain name.
4. Respondent registered and is using the <yardbird.cool> domain name in bad faith.
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.
Complainant registered the YARDBIRD mark with the USPTO (e.g. Reg. No. 4,272,426, registered Jan. 08, 2013). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark…”).
Respondent’s <yardbird.cool> domain name is confusingly similar to Complainant’s mark. Using a complainant’s entire mark while adding a generic top-level domain (“gTLD”) such as <.cool>, is generally considered to be identical for the purposes of Policy ¶4(a)(i) and is certainly confusingly similar. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 (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 (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 has established a prima facie case that Respondent has no rights and legitimate interests in the <yardbird.cool> domain name. The WHOIS identifies “St. Doyle” as the registrant. There is nothing in the record to show Respondent is commonly known by the disputed domain name or that Respondent has any rights in the YARDBIRD mark. Complainant has confirmed it has not authorized Respondent to use the YARDBIRD mark. See Braun Corp. v. Loney, FA 699652 (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). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant ‘s evidence suggests Respondent was using the <yardbird.cool> domain name for a website advertising, under the YARDBIRD mark, a restaurant that also specializes in Southern food. Respondent’s use of a confusingly similar domain name that resolves to a webpage that directly competes with Complainant suggests Respondent is not engaging in a bona fide offering of goods or services. Complainant has provided a screenshot of the resolving webpage, which displays a menu of food goods with an apparent location in Michigan. This suggests Respondent operates a food company which competes with Complainant. This evidence suggests Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use).
Complainant’s evidence also suggests Respondent attempts to pass off as Complainant on the resolving webpage by displaying a chicken logo very similar to Complainant’s stylized design mark. Passing off can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provided screen shots of Complainant’s chicken design mark and of the logo including the chicken on Respondent’s web site. Respondent’s site depicts the chicken along with other animals. Complainant’s logo is a chicken only. However, the actual chicken portion of Respondent’s the logo is somewhat similar to Complainant’s logo. By itself this may not have been enough to establish a prima facie case of lack of a bona fide offering of goods or services under Policy ¶ 4(c)(i), but taken together with the other factors Complainant has raised, in totality Complainant’s evidence establishes the prima facie case.
The burden then shifts to Respondent. Respondent’s entire submission with respect to this element is that the <yardbird.cool> domain contains Respondent’s logo design copyright (VAu-1-256-119) and is not associated with a restaurant. Respondent provides no evidence to show the existence of a logo design copyright or when or how the alleged copyright came into existence. Neither does Respondent provide any evidence to refute Complainant’s evidence that Respondent’s web site displays a menu of food goods with an apparent location in Michigan. Respondent has not met the onus to refute the prima facie case of Complainant. Respondent has not established rights or legitimate interests in the disputed domain name.
Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
The logical inference to be drawn from the material before the Panel is that Respondent registered and is using the <yardbird.cool> domain name in bad faith under Policy ¶ 4(b)(iv) by diverting users seeking Complainant and its restaurant services to Respondent’s website for commercial gain. The website advertises restaurant services remarkably similar to Complainant’s services.
Furthermore, on its face, without any information otherwise from Respondent, Respondent’s use of the disputed domain name is a deceitful effort to obtain commercial gain by trying to impersonate another by using a domain name confusingly similar to that other’s trademark and, therefore, can be fairly characterized as phishing. Using a confusingly similar domain name to phish for information can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
The evidence before the Panel , on balance, leads to the inference that that Respondent had actual knowledge of Complainant’s mark when Respondent registered the disputed domain name. Respondent registered the <yardbird.cool> domain on June 8, 2014. Complainant has been using the YARDBIRD mark since 2011 and its trademark was registered in the USTPO on January 8, 2013. Complainant’s evidence under declaration speaks to the notoriety of their YARDBIRD mark. Respondent created a website advertising remarkably similar services to Complainant’s services. As part of its logo, Respondent displays a chicken quite similar to Complainant’s chicken mark. These factors taken together raise the inference of actual knowledge sufficient for bad faith under Policy ¶ 4(a)(iii).”). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent’s submission with respect to bad faith merely repeat its earlier contention that the <yardbird.cool> domain contains Respondent’s logo design copyright (VAu-1-256-119) and is not associated with a restaurant. Respondent provides no evidence to refute the inference of knowledge to be drawn from Complainant’s evidence. Complainant has established Respondent registered and is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yardbird.cool> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, QC, Panelist
Dated: October 31, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page