TGI Fridays Franchisor, LLC v. zhi tao lu
Claim Number: FA2302002030241
Complainant is TGI Fridays Franchisor, LLC (“Complainant”), represented by Leanne Stendell, US. Respondent is zhi tao lu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tgifidays.com>, registered with Gname 048 Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on February 1, 2023; Forum received payment on February 1, 2023.
On February 2, 2023, Gname 048 Inc confirmed by e-mail to Forum that the <tgifidays.com> domain name is registered with Gname 048 Inc and that Respondent is the current registrant of the name. Gname 048 Inc has verified that Respondent is bound by the Gname 048 Inc 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 February 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2023 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@tgifidays.com. Also on February 3, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, TGI Fridays Franchisor, LLC, is in the restaurant business.
Complainant asserts rights in the TGI FRIDAYS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and other registrations worldwide.
Respondent’s <tgifidays.com> is confusingly similar to Complainant’s TGI FRIDAYS trademark because it incorporates the mark into the domain name only omitting the mark’s letter “r” and adding the generic top-level domain name (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests
in the <tgifidays.com> domain name. Respondent is not licensed or
authorized to use Complainant’s TGI
FRIDAYS mark and is not commonly known by
the at-issue domain name. Respondent also does not use the at-issue domain name
for any bona fide offering of goods or services or legitimate
noncommercial or fair use. Rather, the domain name hosts adult oriented
material.
Respondent registered and uses the <tgifidays.com>
domain name in bad faith. Respondent
has a pattern of bad faith registration. Respondent registered and uses the
disputed domain name for the specific use of hosting adult oriented material
for commercial gain. Respondent
had actual and/or constructive knowledge of Complainant’s rights in the TGI
FRIDAYS mark. Respondent engages in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in TGI FRIDAYS.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in TGI FRIDAYS.
Respondent uses the at-issue domain name to host pornography.
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”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case including Respondent’s failure to object to going forward in English, the Panel decides that the proceeding should be in English.
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant shows that it registered the TGI FRIDAYS and various related marks with multiple government agencies worldwide including the USPTO. Complainant’s registration for TGI FRIDAYS with at least one recognized trademark registrar is conclusive evidence of its rights in a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”).
Respondent’s <tgifidays.com> domain name consists of a recognizable misspelling of Complainant’s TGI FRIDAYS trademark where the mark’s letter “r” is omitted and the misspelled string is followed by the “.com” top-level domain name. The differences between Complainant’s TGI FRIDAYS trademark and Respondent’s at-issue domain name fail to distinguish the domain name from the mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <tgifidays.com> domain name is confusingly similar to Complainant’s TGI FRIDAYS trademark. See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark where the domain name omitted the letter “e” from the mark and added the generic top-level domain “.com”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <tgifidays.com> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “zhi tao lu” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <tgifidays.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the at-issue domain name to address webpages featuring adult-oriented material or pornography. Respondent’s use of <tgifidays.com> in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Complainant shows that Respondent has suffered multiple adverse UDRP decisions as a respondent in previous UDRP disputes. Respondent’s cybersquatting history demonstrates a pattern of bad faith domain name registration and use and is evidence of Respondent’s bad faith in the instant case under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations); see also, Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Next, Respondent engages in typosquatting by registering and using a confusingly similar domain name that consists of a anticipated misspelling or mistyping of Complainant’s TGI FRIDAYS mark. In forming the at-issue domain name, Respondent misspells/mistypes Complainant’s TGI FRIDAYS by omitting the mark’s “r.” Typosquatting in itself is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”); see Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also, Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”)
Additionally and as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to address a website featuring adult content, presumptively for commercial gain. Such use of the domain name is disruptive to Complainant’s business and demonstrates Respondent’s bad faith regarding the at-issue domain name per Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Google Inc. v. Bassano, FA 232958 (Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”)
Moreover, Respondent had actual knowledge of Complainant’s rights in the TGI FRIDAYS mark when it registered <tgifidays.com>as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s TGI FRIDAYS trademark and from Respondent’s overt misspelling of the mark in the at-issue domain name. Respondent’s registration and use of the confusingly similar domain name with knowledge of Complainant’s trademark rights in TGI FRIDAYS further demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tgifidays.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 3, 2023
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