Chick-fil-A, Inc. and CFA Properties, Inc. v. qifu Guo
Claim Number: FA2204001993535
Complainants are Chick-fil-A, Inc. and CFA Properties, Inc. (“Complainants”), represented by Mary Grace Gallagher of Alston & Bird LLP, Georgia, USA. Respondent is qifu Guo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chickfiladiet.com>, registered with CyanDomains, Inc.
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.
Alan L. Limbury, as Panelist.
Complainants submitted a Complaint to the Forum electronically on April 23, 2022. The Forum received payment on April 22, 2022.
On May 10, 2022, CyanDomains, Inc. confirmed by e-mail to the Forum that the <chickfiladiet.com> domain name is registered with CyanDomains, Inc. and that Respondent is the current registrant of the name. CyanDomains, Inc. has verified that Respondent is bound by the CyanDomains, Inc. registration agreement, which is in Chinese, 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 17, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of June 6, 2022 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@chickfiladiet.com. Also on May 17, 2022, the Chinese and English language 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 13, 2022, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 Chick-fil-A, Inc.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are two Complainants in this proceeding: Chick-fil-A, Inc. and CFA Properties, Inc. CFA Properties, Inc. is a wholly-owned subsidiary of Chick-fil-A, Inc., and is the owner of all trademark and service mark rights in the CHICK-FIL-A mark, which CFA Properties, Inc. licenses to Chick-fil-A, Inc. for use on an exclusive basis.
Paragraph 3(a) of the Rules provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Panel accepts that the parent/subsidiary relationship between Complainants and their history of use of the CHICK-FIL-A trademark constitutes a sufficient nexus or link such that each may claim to have rights to the <chickfiladiet.com> domain name listed in the Complaint.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
As noted, the CyanDomains, Inc. registration agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding in relation to the <chickfiladiet.com> domain name shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainants request that the proceeding be conducted in English, contending that the registrar is in Hong Kong, where English is an official language and therefore English is a proper language for this Complaint. Additionally, the domain name is comprised of the famous English-language CHICK-FIL-A trademark with the addition of the English word “diet”. Because of the uniqueness of the CHICK-FIL-A mark, the domain name was unquestionably registered and is being used to target Chick-fil-A, Inc. customers, and Chick-fil-A, Inc. operates restaurants only in the United States and areas of Canada where English is the official language.
In the absence of any Response, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainants to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainants
Complainants, CFA Properties, Inc. and Chick-fil-A, Inc., operate a restaurant franchise. As registrant and licensee, Complainants have rights in the CHICK-FIL-A mark through registrations with various international trademark agencies, including the United States Patent and Trademark Office (“USPTO”). Respondent’s <chickfiladiet.com> domain name is confusingly similar to Complainant’s mark.
Respondent lacks rights and legitimate interests in the <chickfiladiet.com> domain name. Respondent is not commonly known by the domain name, nor have Complainants authorized or licensed Respondent to use the CHICK-FIL-A mark in the domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead uses the domain name to display adult-oriented images.
Respondent registered and uses the <chickfiladiet.com> domain name in bad faith, diverting Internet users to its adult-oriented webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainants have established all the elements entitling them to relief.
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 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”).
Complainant Chick-fil-A, Inc. franchises or operates more than 2,750 restaurant locations under Complainant CFA Properties, Inc.’s CHICK-FIL-A Mark in the United States, Canada and Puerto Rico. Complainants have shown that they have rights as registrant and licensee in the CHICK-FIL-A mark through registrations with various international trademark agencies, including the USPTO (e.g., Reg. No. 1,065,507, registered on May 10, 1977). The Panel finds Respondent’s <chickfiladiet.com> domain name to be confusingly similar to Complainants’ mark as it incorporates the mark in its entirety, while deleting the hyphens, and adds the descriptive word “diet”, which does nothing to distinguish the domain name from the mark. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored.
Complainants have established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <chickfiladiet.com> domain name was registered on February 7, 2022, well after Complainants have shown that the CHICK-FIL-A mark had become famous in the United States. It resolves to a commercial pornography website.
These circumstances, together with Complainants’ assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <chickfiladiet.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainants’ famous CHICK-FIL-A mark when Respondent registered the <chickfiladiet.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainants’ mark as to the source of Respondent’s website and of the services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainants have established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chickfiladiet.com> domain name be TRANSFERRED from Respondent to Complainant Chick-fil-A, Inc.
Alan L. Limbury, Panelist
Dated: June 14, 2022
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