DECISION

 

Chick-fil-A, Inc. and CFA Properties, Inc. v. Sameer Ijaz

Claim Number: FA2403002086949

PARTIES

Complainant is Chick-fil-A, Inc. and CFA Properties, Inc. ("Complainant"), represented by T. Austin Weatherly, Esq. of Alston & Bird LLP, Georgia, USA. Respondent is Sameer Ijaz ("Respondent"), Pakistan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chickfilamenu.org>, registered with Web Commerce Communications Limited dba WebNic.cc.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 5, 2024; Forum received payment on March 5, 2024.

 

On March 6, 2024, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to Forum that the <chickfilamenu.org> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 March 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 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@chickfilamenu.org. Also on March 12, 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 April 2, 2024, 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.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

In this proceeding there are two 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."

 

Complainant Chick-fil-A, Inc. is the parent company of its wholly owned subsidiary CFA Properties, Inc. Additionally, there is no objection by Respondent to the named Complainants proceeding together as if one. The Panel therefore finds that the two nominal complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they can be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Since 2012, Complainant has been the top-selling quick service restaurant in the chicken segment in the United States. Complainant'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 has rights in the CHICK-FIL-A mark through registration of such mark with the USPTO.

 

Respondent's <chickfilamenu.org> domain name is confusingly similar to Complainant's CHICK-FIL-A trademark. The domain name incorporates the CHICK-FIL-A mark with its hyphens deleted, and only adds the generic term "menu" and the ".org" top level.

 

Respondent lacks rights and legitimate interests in the <chickfilamenu.org> domain name. Respondent is not affiliated with Complainant and Complainant has not acted with Complainant's consent. Respondent has never made a legitimate use of the domain name. Respondent is not identified by Chick-fil-A in the relevant WHOIS information or elsewhere. Respondent failed to ever use the domain name in connection with a bona fide offering of goods or services. Instead, Respondent is using the domain name to address a phishing website with pay-per-click advertisements that passes off as Complainant's genuine website and disseminates false information regarding Complainant's menu.

 

Respondent registered and used the at-issue domain name in bad faith. Respondent registered the <chickfilamenu.org> domain name with knowledge of Complainant's trademarks. Respondent's <chickfilamenu.org> domain name addresses a website mimicking Complainant's genuine website for profit. Respondent uses the website to harvest personal information from Complainant's customers through a phishing scheme. Respondent generates pay-per-click revenue from the website. Respondent intended to induce Complainant into paying an extortionate sum to Respondent so that Respondent would stop disseminating misinformation about Complainant's menu through the <chickfilamenu.org> website. Doing so is disruptive to Complainant's business. Respondent also engages in typosquatting.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant's has rights in the CHICK-FIL-A trademark.

 

Respondent registered the at-issue domain name after Complainant acquired rights in CHICK-FIL-A.

 

Complainant's has not authorized Respondent to use Complainant's trademark.

 

Respondent uses the at-issue domain name to address a website posing as a Complainant sponsored website to distribute misinformation concerning Complainant's menu that may be detrimental to Complainant's business.

 

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 at-issue domain is confusingly similar to a trademark in which Complainant has rights.

 

Any of Complainant's USPTO registrations for the CHICK-FIL-A mark is conclusive evidence of Complainant's rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant's rights in the HOME DEPOT mark).

 

Respondent's <chickfilamenu.org> domain name consists of a misspelled or mistyped version of Complainant's CHICK-FIL-A trademark where the mark's hyphens are removed, followed by the descriptive term "menu" with all followed by the ".org" top-level domain name. The differences between Complainant's trademark and Respondent's at-issue domain name fail to distinguish the domain name from Complainant's mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent's <chickfilamenu.org> domain name is confusingly similar to Complainant's CHICK-FIL-A trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable 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, Bloomberg Finance L.P. v. Domain Administrator / Registry Services, LLC, FA2 2038314 (Forum July 26, 2023) ("The addition of a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i).").

 

Rights or Legitimate Interests

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 at-issue domain name. Respondent is not authorized to use Complainant's trademarks 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 legitimate 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 reveals the domain name's registrant is "Sameer Ijaz" and the record before the Panel contains no evidence otherwise tending to prove that Respondent is commonly known by <chickfilamenu.org>. The Panel therefore concludes that Respondent is not commonly known by the <chickfilamenu.org> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent uses <chickfilamenu.org> to address a website that Respondent dressed to appear as if it might be sponsored by Complainant. The website displays Complainant trademark and logo and contains purported information regarding Complainant's menu offering. Respondent likely profits via the website's embedded third-party links and advertisements from which Respondent's receives pay-per-click revenue. Respondent's use of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name "resolves to a website that Respondent has designed to mimic Complainant's own in an attempt to pass itself off as Complainant"); See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant's business); see also, Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.").

 

Given the forgoing, Complainant shows Respondent's lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to the Policy.

 

Respondent uses the confusingly similar <chickfilamenu.org> domain name to address a website dressed like it might be one of Complainant's official websites or a website sanctioned by Complainant. Respondent passing off its own website to be sponsored by Complainant falsely indicates that there is a sanctioned relationship between Complainant and Respondent when there is no such relationship. Respondent's <chickfilamenu.org> website purports to feature information concerning Complainant's restaurant menu. However, the website provides incorrect menu information regarding items, availability, and pricing. Using the confusingly similar <chickfilamenu.org> domain name to disseminate false information about Complainant's business is disruptive thereto. Respondent's use of the <chickfilamenu.org> domain name thus demonstrates Respondent's bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent's registration and use of the disputed domain name, which displayed a website virtually identical to the complainant's website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.")

 

Notably, Respondent's website displays embedded third-party links and advertising from which Respondent presumably profits. Respondent's use of the at-issue domain name to exploit pay-per-click links and advertising additionally demonstrates Respondent's bad faith. See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) ("Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant's business and respondent is likely collecting fees.")

 

Moreover, Respondent had actual knowledge of Complainant's rights in the CHICK-FIL-A mark when it registered <chickfilamenu.org> as a domain name. Respondent's actual knowledge is evident from the notoriety of the CHICK-FIL-A mark and from Respondent's use of the domain name to address a website concerned with offering information about Complainant's business that might mistakenly be believed to be endorsed by Complainant. Respondent's registration and use of <chickfilamenu.org> with knowledge of Complainant's rights in CHICK-FIL-A shows 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").

 

Respondent's <chickfilamenu.org> website features forms where visitors can leave their names, email addresses, and comments. As Complainant points out, such forms might be used to phish for information from website visitors under the pretext that they are dealing with Complainant, when they are not. However, Complainant does not allege, nor does the record show, that Respondent actually collected any data from website visitors notwithstanding that Respondent's website may have featured "contact us" and "leave a reply" forms. Similarly, Complainant's claim that Respondent intended on inducing Complainant to pay an extortionate sum to Respondent to purchase the domain name is also insufficient, in and of itself, for the Panel to find such conclusion little more than speculative.

 

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 <chickfilamenu.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: April 2, 2024