DECISION

 

El Pollo Rico, LLC v. Kenny Ji

Claim Number: FA2105001943925

 

PARTIES

Complainant is El Pollo Rico, LLC (“Complainant”), represented by Sheryl De Luca of Nixon & Vanderhye P.C., Virginia, USA.  Respondent is Kenny Ji, (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <polloricowings.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 4, 2021; the Forum received payment on May 4, 2021.

 

On May 5, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <polloricowings.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 May 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2021 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@polloricowings.com.  Also on May 10, 2021, 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 June 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, El Pollo Rico, LLC, operates a Peruvian restaurant chain in the Washington D.C. area. Complainant has rights in the POLLO RICO! mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 4,862,504, registered Dec. 1, 2015). See Rowel Decl., Ex. 2. Respondent’s <polloricowings.com> domain name is confusingly similar to Complainant’s POLLO RICO! mark, only differing by the omission of an exclamation point and the additions of the generic term “wings” and the “.com” generic top-level domain (“gTLD”).

2.    Respondent lacks rights and legitimate interests in the <polloricowings.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the POLLO RICO! mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Respondent instead uses the disputed domain name to divert Internet users to its own domain where it offers competing restaurant services.

3.    Respondent registered and uses the <polloricowings.com> domain name in bad faith. Respondent uses the disputed domain name to offer services highly similar to those offered by Complainant. Such use displays both bad faith disruption and attraction to commercial gain.

 

B.   Respondent

1.    Respondent did not submit a response to this proceeding.

 

FINDINGS

1.    Respondent’s <polloricowings.com> domain name is confusingly similar to Complainant’s POLLO RICO! mark.

 

2.    Respondent does not have any rights or legitimate interests in the <polloricowings.com> domain name.

 

3.    Respondent registered or used the <polloricowings.com> domain name in bad faith.

 

DISCUSSION

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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the POLLO RICO! mark through its registration with the USPTO. Registration of a mark with a trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 4,862,504, registered Dec. 1, 2015). See Rowel Decl., Ex. 2. The Panel therefore finds Complainant has rights in the POLLO RICO! mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <polloricowings.com> domain name is confusingly similar to Complainant’s POLLO RICO! mark as it only differs by the omission of an exclamation point and the addition of the generic term “wings” and the “.com” gTLD. Previous Panels have held that such changes may not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Thus, the Panel finds the disputed domain name is confusingly similar to Complainant’s POLLO RICO! mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent lacks rights and legitimate interests in the <polloricowings.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the POLLO RICO! mark. When response is lacking, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by a disputed domain name. See 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). Here, the WHOIS information of record identifies “Kenny Ji” as the registrant of the disputed domain name. See De Luca Decl., Ex. 3 & registrar verification email. The Panel therefore finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant also argues that Respondent does not use the <polloricowings.com> domain name for any bona fide offering of goods or services or any legitimate noncommercial or fair use, instead opting to divert Internet users to its own website where it offers competing restaurant services. Use of an infringing domain name to compete with a complainant does not qualify as a bona fide offer of goods or services, nor can it be a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides screenshots of the resolving website for the disputed domain name as evidence of Respondent’s competing use. See De Luca Decl., Ex. 2. Thus, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain under Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <polloricowings.com> domain name in bad faith as Respondent attempts to divert Internet users to its own website where it offers competing services. Under Policy ¶¶ 4(b)(iii) and (iv), use of a confusingly similar domain name to offer services which compete directly with a complainant’s business displays bad faith disruption of a complainant’s business and attraction for commercial gain. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also 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).”). As previously noted, Complainant provides screenshots of the resolving website for the disputed domain name as evidence of Respondent’s competing use. See De Luca Decl., Ex. 2. The Panel then finds Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <polloricowings.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  June 21, 2021