DECISION

 

Arby's IP Holder LLC v. Taylor Blue / Ruhl Construction

Claim Number: FA2412002129496

PARTIES

Complainant is Arby's IP Holder LLC ("Complainant"), represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is Taylor Blue / Ruhl Construction ("Respondent"), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <arbysfood.com>, (the "Domain Name") registered with HOSTINGER operations, UAB.

 

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.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 13, 2024; Forum received payment on December 13, 2024.

 

On December 16, 2024, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <arbysfood.com> Domain Name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 December 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2025 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@arbysfood.com. Also on December 16, 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 January 7, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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 Complainant owns the registered trade mark ARBY'S, registered, inter alia, in the USA for restaurant services since 1970 with first use recorded as 1964.

 

The Domain Name registered in 2024 consists of the Complainant's mark without its possessive apostrophe, and the addition of the generic word 'food' and the gTLD .com none of which distinguishes the Domain Name from the Complainant's mark. The Domain Name is therefore confusingly similar to the Complainant's mark for the purposes of the Policy.

 

Respondent is not commonly known by the Domain Name or authorised by the Complainant to use the latter's mark.

 

The Domain Name has been pointed to the Complainant's web site and used for a fraudulent e mail scheme using the Complainant's mark in its logo form as a sign off and purporting to come from one of the employees of the Complainant's parent company. This cannot be a bona fide offering of goods or services or a legitimate non commercial or fair use. It is registration and use in deceptive bad faith disrupting the Complainant's business in actual knowledge of the Complainant's rights.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant owns the registered trade mark ARBY'S, registered, inter alia, in the USA for restaurant services since 1970 with first use recorded as 1964.

 

The Domain Name registered in 2024 has been pointed to the Complainant's web site and used for a fraudulent e mail scheme using the Complainant's mark in its logo form as a sign off and purporting to come from one of the employees of the Complainant's parent company.

 

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 Domain Name consists of the Complainant's ARBY'S trade mark (registered in the USA for, inter alia, restaurant services since 1970 with first use recorded as 1964) without its possessive apostrophe and the addition of the generic word 'food' and the gTLD .com.

 

The omission of the possessive apostrophe is unlikely to be noticed in the use of a domain name as registration of possessive apostrophes is not possible in a domain name in any event. See Grigore's Hardwood Flooring v. Steve Livengood FA1507001628989 (Forum August 21, 2015).

 

Previous panels have found confusing similarity when a respondent merely adds a generic word to a mark in which a Complainant has rights. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). Accordingly the Panel holds that the addition of the generic word 'food' to the Complainant's trade mark in the Domain Name does not prevent confusing similarity between the Domain Name and that mark in which the Complainant has rights.

 

The gTLD .com does not serve to distinguish the Domain Name from the Complainant's mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

The Domain Name has been used in a fraudulent e mail phishing scheme impersonating the Complainant. As such it cannot amount to the bona fide offering of goods and services or a legitimate non commercial or fair use. See DaVita Inc. v Cynthia Rochelo FA 1738034 (Forum July 20, 2017) (finding that 'Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use'.)

 

The Domain Name itself carries a high risk of affiliation with the Complainant in itself, this is compounded as it resolves to the Complainant's own site. There is no indication that there is no authorisation from the Complainant for this connection. The Panel finds this is confusing and does not amount to a bona fide offering of goods and services or a legitimate non commercial fair use. See Direct Line Ins. Plc v Low-cost-domain, FA 1337658 (Forum Sept 8, 2010)(pointing to Complainant's own site is not a bona fide offering of goods or services or a legitimate non commercial fair use).

 

The Respondent has not answered this Complaint and has not rebutted the prima face case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Impersonating a complainant by use of a complainant's mark in a fraudulent phishing scheme using the Complainant's logo is disruptive and evinces bad faith registration and use disrupting the Complainant's business in actual knowledge of the Complainant's rights. See Microsoft Corporation v Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr 4 2016)(finding that respondent's use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy 4 (b)(iii). )

 

In the opinion of the Panelist, the use made of the Domain Name in relation to the site is confusing and deceptive in that visitors to the site might reasonably believe the Domain Name is connected to or approved by the Complainant as it carries a high risk of assumed affiliation with the Complainant and its well-known mark. The redirection to the Complainant's own site seems calculated to compound this confusion and also demonstrates the Respondent is aware of the Complainant's rights, business and services. Use of a disputed domain name to redirect to a complainant's legitimate website without explanation can be evidence of bad faith registration and use per Policy 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) ("The Panel finds that Respondent's registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant's own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).").

 

As such, the Panelist believes that the Complainant has made out its case and has satisfied the third limb of the Policy under para 4(b)(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 <arbysfood.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Dawn Osborne, Panelist

Dated: January 7, 2024