El Pollo Rico, LLC v. Ismail Ipek
Claim Number: FA2208002006990
Complainant is El Pollo Rico, LLC (“Complainant”), represented by Sheryl De Luca of Nixon & Vanderhye P.C., Virginia, USA. Respondent is Ismail Ipek (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <polloricopocomoke.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2022; the Forum received payment on August 3, 2022.
On August 4, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <polloricopocomoke.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 August 5, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@polloricopocomoke.com. Also on August 5, 2022, 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 August 30, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a restaurant chain based in Arlington, Virginia, which is known for its offerings of Peruvian dining and charcoal-broiled chicken and side dishes.
Complainant holds a registration for the EL POLLO RICO mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 4,456,914, registered on December 31, 2013).
Respondent registered the domain name <polloricopocomoke.com> on December 7, 2021.
The domain name is confusingly similar to Complainant’s EL POLLO RICO mark.
Respondent has no rights to or legitimate interests in the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its EL POLLO RICO mark in a domain name.
Respondent has not been commonly known by the disputed domain name.
Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent both registered and now uses the domain name in bad faith.
Respondent attempts to attract Internet users for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
By reason of its registration of the service mark EL POLLO RICO with a national trademark authority, the USPTO, Complainant has shown that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010), finding that:
Complainant has … registered its … mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i),….
Coming to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <polloricopocomoke.com> domain name is confusingly similar to Complainant’s EL POLLO RICO mark. The domain name incorporates the mark in its entirety, with only the deletion of the spaces between its terms and of the Spanish definite article “el”, but with the addition of the geographic term “Pocomoke,” (a reference to both a city in Maryland and a river of the same name in the states of Maryland and Virginia in close proximity to Washington, D.C. and Arlington, Virginia, where Complainant is based), plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity between a domain name and a UDRP complainant’s mark where the domain name omitted the word (“the”) from the mark, and eliminated the spaces between its terms but added the gTLD “.com”).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Further see Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum April 11, 2018), finding the <franklincoveykorea.com> domain name to be confusingly similar to the FRANKLIN COVEY mark, because “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”
It is noteworthy in this regard that Respondent has incorporated in the domain name a geographic reference which plays upon Internet users’ familiarity with Complainant’s mark and the proximity of the locale of that reference to Complainant’s center of operations, which stands as a signal of Respondent’s illicit targeting of Complainant in the registration and use of the domain name.
As to Respondent’s deletion of the spaces between the terms of Complainant’s mark in creating the contested domain name, this alteration of the mark is of no consequence to our analysis. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
[S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the challenged <polloricopocomoke.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <polloricopocomoke.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the EL POLLO RICO mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Ismail Ipek,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
Complainant next asserts, without objection from Respondent, that Respondent, for its commercial gain, employs the domain name to offer, at the website resolving from it, products and services prominently featuring rotisserie chicken dishes in competition with the business of Complainant. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018):
Respondent’s use of the … 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 … domain name to offer for sale competing services.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has both registered and now uses the <polloricopocomoke.com> domain name, which we have found to be confusingly similar to Complainant’s EL POLLO RICO service mark, in an attempt to profit illicitly from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s registration and use of the domain name in bad faith. See, for example, CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum February 28, 2014) (finding, under Policy ¶ 4(b)(iv), that a respondent engaged in bad faith registration and use of a domain name by employing one that was confusingly similar to the mark of another to attract Internet users to its own website at which it sold competing insurance services). In this connection, we are particularly convinced that Respondent’s insertion in the domain name of the geographic reference “pocomoke” removes any doubt that Respondent intended to target Complainant on the basis of both its business model and its physical location. Such targeting goes to the very essence of bad faith.
The Panel thus finds that Complainant has amply met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <polloricopocomoke.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 1, 2022
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