Panera, LLC and Pumpernickel Associates, LLC v. Rudolf Khandl
Claim Number: FA1804001784002
Complainants are Panera, LLC and Pumpernickel Associates, LLC ("Complainants"), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is Rudolf Khandl ("Respondent"), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <panerabreadapplication.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainants submitted a Complaint to the Forum electronically on April 27, 2018; the Forum received payment on April 27, 2018.
On April 27, 2018, NameSilo, LLC confirmed by email to the Forum that the <panerabreadapplication.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 May 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@panerabreadapplication.com. Also on May 2, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 May 24, 2018, pursuant to Complainants' request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainants request that the domain name be transferred from Respondent to Complainant Panera, LLC.
A. Complainants
Complainants are wholly-owned subsidiaries of Panera Bread Company, one of the largest food service companies in the United States, with more than 2,000 company-owned and franchise-operated bakery-café locations in the United States and Canada. Complainants use PANERA and PANERA BREAD as trademarks in connection with this business. Complainant Pumpernickel Associates, LLC, owns numerous United States trademark registrations for PANERA and PANERA BREAD, dating as far back as 1997, as well as registrations in other jurisdictions around the world.
Respondent registered the disputed domain name <panerabreadapplication.com> in February 2013. Complainants state that the registration was held in the name of a privacy registration service beginning in early 2015. The registrar removed the privacy shield upon receiving notice of this proceeding. The domain name is being used for a website that contains Complainants' logo, generic content regarding job applications, and pay-per-click links to an employment-related website. Complainants state that Respondent is not commonly known by the domain name, and that Complainants have not authorized Respondent to use or register the domain name. Complainants accuse Respondent of engaging in a bad faith pattern of registering domain names containing others' trademarks, noting that Respondent has also registered <pizzahutapplication.org>, <wendysapplication.net>, <chickfilaapplication.com>, and <kmartapplication.org>. Complainants suggest that Respondent may be using the disputed domain name in connection with a phishing scheme by purporting to offer employment opportunities.
Complainants contend on the above grounds that the disputed domain name is confusingly similar to a mark in which Complainants have rights; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainants has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Complainants 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 Complainants have 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 Complainants' undisputed representations pursuant to paragraphs 5(f), 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 (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 disputed domain name <panerabreadapplication.com> incorporates Complainants' PANERA BREAD mark, omitting the space and adding the generic term "application" and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainants' mark. See, e.g., Target Brands, Inc. v. Virtual Services Corp., FA 1470228 (Forum Dec. 31, 2012) (finding <targetapplication.com> confusingly similar to TARGET); Wal-Mart Stores, Inc. v. Henry Chan, D2004-0056 (WIPO May 27, 2004) (finding <walmartapplication.com> confusingly similar to WAL‑MART). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainants have rights.
Under the Policy, Complainants must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainants' registered mark without authorization. The domain name is being used for a commercial website that uses Complainants' mark and logo to create a false appearance of affiliation with or endorsement by Complainants. Such use does not give rise to rights or legitimate interests in respect of the disputed domain name. See, e.g., HEB Grocery Co., L.P. v. Igor Avramenko, FA 1545303 (Forum Apr. 7, 2014) (finding lack of rights or legitimate interests in similar circumstances).
Complainants have made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainants have sustained their burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainants must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered and is using a domain name obviously intended to create and profit from confusion with Complainants. Respondent’s website displays Complainants' mark and logo prominently, and contains pay-per-click links presumably intended to generate revenue for Respondent. Respondent's conduct appears to be part of a pattern of similar activities targeting other well-known trademarks. In the Panel's view, Respondent's actions demonstrate bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., HEB Grocery Co., L.P. v. Igor Avramenko, supra (finding bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv) under similar circumstances). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <panerabreadapplication.com> domain name be TRANSFERRED from Respondent to Complainant Panera, LLC.
David E. Sorkin, Panelist
Dated: May 24, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page