DECISION

 

Chick-fil-A, Inc., CFA Properties, Inc., and Chick-fil-A Supply, LLC v. Era Koplan

Claim Number: FA2401002079117

 

PARTIES

Complainant is Chick-fil-A, Inc., CFA Properties, Inc., and Chick-fil-A Supply, LLC ("Complainant"), represented by Mary Grace Gallagher of Alston & Bird LLP, Georgia, USA. Respondent is Era Koplan ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cfa-supply.org>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 15, 2024; Forum received payment on January 15, 2024.

 

On January 15, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <cfa-supply.org> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 January 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2024 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@cfa-supply.org. Also on January 15, 2024, 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 February 6, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

In the instant proceedings, there are three Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint."  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 three Complainants in this matter are Chick-fil-A, Inc., CFA Properties, Inc., and Chick-fil-A Supply, LLC. CFA Properties, Inc. is the owner of all trademark and service mark rights and registrations worldwide of all the marks that Chick-fil-A, Inc. and and Chick-fil-A Supply, LLC use in connection with their business and those of their licensees.

 

Previous panels have interpreted Forum's Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int'l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.

 

The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding. The three Complainants are collectively referred to as "Complainant".

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that, for more than 50 years, it has continuously used the distinctive CHICK-FIL-A mark to identify restaurant services, food products, and a host of related goods and services. Complainant franchises, licenses, or operates more than 3,000 restaurant locations under the CHICK-FIL-A mark in the United States, Canada, and Puerto Rico. In 2012, CFA became the top-selling quick service restaurant brand in the chicken segment in the United States, and it has retained that position ever since. Today, the company's restaurants generate more revenue per restaurant than any other fast-food chain in the United States, and, for seven years in a row, Complainant has ranked as America's favorite fast-food restaurant in nationwide consumer surveys conducted by The American Consumer Satisfaction Index. Complainant's sales in 2022 were over $18 billion. For more than 20 years, Complainant has identified itself by the acronym "CFA", as reflected in the name of its IP holding company "CFA Properties, Inc.". In July 2019, Complainant launched CFA Supply, which is a distribution and warehousing service with at least five locations throughout the United States created to manage the transportation, shipping, and delivery of food products and supplies to Complainant's franchised, licensed, and owned restaurants. The website for the CFA Supply business is located at the domain name <cfa-supply.com>, which Complainant registered and has used since 2019. The CFA Supply website provides the public with information about CFA Supply and career opportunities with the company. The <cfa-supply.com> domain name is also used as the primary email domain for the CFA Supply business, and all or nearly all email communications with Complainant's franchised restaurants from the CFA Supply business are sent from the <cfa-supply.com> email domain. Complainant asserts rights in the CFA mark through its registration in the United States in 2020.

 

Complainant alleges that the disputed domain name is confusingly similar to its CFA mark as it incorporates the mark in its entirety, while merely adding the generic term "supply," a hyphen, and the ".org" generic top-level domain ("gTLD"). Complainant cites UDRP precedents to support its position.

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent's use of the mark. Further, Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the disputed domain name. Rather, the domain name resolves to an error page and Respondent is using the disputed domain name to send fraudulent emails to Complainant's customers. Specifically, Respondent is sending emails to Complainant's customers purporting to be one of Complainant's "Transportation Supervisor", but the name given is false; the signature block of the fraudulent emails displays Complainant's CHICK-FIL-A mark and distinctive logo; in the emails, Respondent tells the customers that Complainant's payment address and payee name have changed and requests that all future payments be sent to the new payee at a new address that is presumably owned or controlled by Respondent. Complainant cites UDRP precedents to support its position.

 

Further, says Complainant, Respondent is using the disputed domain name in bad faith. Respondent has engaged in a fraudulent email phishing scheme, attempting to pass itself off as Complainant. Respondent had actual and constructive knowledge of Complainant's mark and Complainant's rights therein. Respondent used a privacy service. Complainant cites UDRP precedents to support its position.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the mark CFA uses it in connection with its restaurant business.

 

Complainant's registration of its mark dates back to 2020.

 

The disputed domain name was registered in 2023.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

Respondent is using the disputed domain name to send fraudulent emails in furtherance of a phishing scheme; the signature block of the fraudulent emails displays Complainant's CHICK-FIL-A mark and distinctive logo.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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

The disputed domain name incorporates Complainant's CFA mark in its entirety, merely adding a hyphen, the generic/descriptive term "supply", and the generic top-level domain ("gTLD") ".org". Under Policy ¶ 4(a)(i), adding a gTLD and/or generic terms and/or hyphens is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Respondent is not licensed or otherwise authorized to use Complainant's CFA mark and is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (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)). Here, the WHOIS information for the disputed domain name lists the registrant as "Era Koplan". Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant has not licensed or authorized Respondent to use its mark. Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the disputed domain name. Rather, the domain name resolves to an inactive website and Respondent is using the disputed domain name to send fraudulent emails to Complainant's customers. Specifically, Respondent is sending emails to Complainant's customers purporting to be one of Complainant's "Transportation Supervisor", but the name given is false; the signature block of the fraudulent emails displays Complainant's CHICK-FIL-A mark and distinctive logo; in the emails, Respondent tells the customers that Complainant's payment address and payee name have changed and requests that all future payments be sent to the new payee at a new address that is presumably owned or controlled by Respondent. Panels have found such use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA 1600534 (Forum Feb. 26, 2015) ("The Panel agrees that the respondent's apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)."); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) ("The Panel finds that Respondent's attempt to "phish" for users' personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)."). Therefore, the Panel finds that Respondent's use of the disputed domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

 

Indeed, as already noted, Respondent is attempting to pass itself off as Complainant by using the disputed domain name in emails in furtherance of a fraudulent phishing scheme. This behavior is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Kalra, FA 1650447 (Forum Dec. 31, 2015); Qatalyst Partners LP v. Devimore, FA 1393436 (Forum Jul. 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use.); see also National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Forum Sept. 22, 2014) (finding bad faith where respondent fraudulently attempted to induce wire transfers by sending e-mails purporting to be from complainant's President and CEO); see also Capital One Financial Corporation and Capital One Bank v. Austin Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith where respondent used complainant's mark to fraudulently induce transfer of credit and personal identification information). Consequently, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

Further, Respondent registered the disputed domain name with actual knowledge of Complainant's mark: the signature block of the fraudulent emails displays Complainant's CHICK-FIL-A mark and distinctive logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); 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). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).

 

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 <cfa-supply.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard Hill, Panelist

Dated: February 6, 2024