DECISION

 

Chester's International, LLC v. Lupita Silva

Claim Number: FA2404002092550

 

PARTIES

Complainant is Chester's International, LLC ("Complainant"), represented by Darius C. Gambino of Saul Ewing LLP, Pennsylvania, USA. Respondent is Lupita Silva ("Respondent"), Oregon, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chesterschicken.me>, registered with eNom, LLC.

 

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 10, 2024. Forum received payment on April 10, 2024.

 

On April 10, 2024, eNom, LLC confirmed by e-mail to Forum that the <chesterschicken.me> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 April 10, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@chesterschicken.me. Also on April 10, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On May 1, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.

 

PARTIES' CONTENTIONS

A. Complainant

The roots of Complainant's business date back to 1952, when W.O. Giles started frying donuts and later, chicken, with his patented fryers in Montgomery, Alabama. In 1965, Complainant's iconic 'Chester the Chicken' came to life with his cowboy hat, bandana, and spurs. Complainant began using the mark CHESTER'S in connection with batters, marinades and restaurant services at least as early as August 9, 2004. Today, Complainant remains a family-owned business with over 1,100 locations in the United States and Canada. Since June 24, 2020 Complainant has operated the website "www.chesterschicken.com".

 

Complainant has rights in the CHESTER'S mark through numerous trademark registrations, including with the United States Patent and Trademark Office ("USPTO"). Respondent's <chesterschicken.me> domain name is confusingly similar to Complainant's CHESTER'S mark.

 

Respondent has no rights or legitimate interests in the <chesterschicken.me> domain name. This is evidenced by Respondent's use of a fake physical address and inoperable email address at its website. Upon information and belief, Respondent does not maintain an office or physical presence at the U.S. address provided on its website "www.chesterschicken.me", which appears to be a 'scam' or 'phishing' site used to mislead consumers to wrongly believe that it is sponsored or authorized by Complainant. The contact email for the site ("cluck@chesterschicken.me") is a bogus and inoperable email address. Upon information and belief, Respondent's use of the domain name is also in furtherance of an illegal practice intended to disrupt Complainant's business and defraud users into accessing Respondent's website to gain ad revenue.

 

Respondent's bad faith is evident in several ways. First, Respondent registered as a domain name a mark that Complainant had been using for over twenty (20) years prior (since 2004), along with the highly descriptive term "chicken," which is Complainant's primary business line.

Second, Respondent uses a fake physical address and inoperable email address in an attempt to confuse customers into believing that Respondent is selling genuine goods and services.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has established all the elements entitling it to relief.

 

DISCUSSION

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 the domain name should be cancelled or transferred:

 

(i)                      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)                      Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)                      the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a formal 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 as 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

Complainant has shown that it has rights in the CHESTER'S mark through numerous registrations, including with the USPTO (e.g., Reg. No. 3,206,105, registered on February 6, 2007). The Panel finds Respondent's <chesterschicken.me> domain name to be confusingly similar to Complainant's mark, only differing by the omission of the apostrophe and addition of the word "chicken", which does nothing to distinguish the domain name from the mark and is descriptive of Complainant's business. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

 

Complainant has established this element.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

 

(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 <chesterschicken.me> domain name was registered on November 13, 2023 many years after Complainant registered its CHESTER'S mark and some three years after Complainant started using its "www.chesterschicken.com" website. Respondent's domain name resolves to a website featuring the words "Chester's Chicken" on the home page, offering Quick and Healthy Dinners, including burger, pizza, combo, chicken, dessert, specials, sauce and drinks. The contact address displayed is in South Portland, Oregon and the contact email address is "cluck@chesterschicken.me". This is followed by "© 2023 Chester's Chicken".

 

These circumstances, together with Complainant's 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 <chesterschicken.me> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA 1849706 (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 Complainant's CHESTER'S mark in relation to chicken and its "www.chesterschicken.com" website when Respondent registered the <chesterschicken.me> 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 Complainant's mark as to the source of Respondent's website and of the goods promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).

 

Complainant has 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 <chesterschicken.me> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Alan L. Limbury, Panelist

Dated: May 2, 2024