DECISION
Chipotle Mexican Grill, Inc. and CMG Pepper, LLC v. Shahbaz Ali / Desire Web Solution
Claim Number: FA2501002133994
PARTIES
Complainant is Chipotle Mexican Grill, Inc. and CMG Pepper, LLC ("Complainants"), represented by Emily J. Cooper of Holland & Hart LLP, Colorado, USA. Respondent is Shahbaz Ali / Desire Web Solution ("Respondent"), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chipocatering.com>, registered with NameCheap, Inc.
PANEL
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainants submitted a Complaint to Forum electronically on January 7, 2025. Forum received payment on January 7, 2025.
On January 8, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <chipocatering.com> 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 13, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 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@chipocatering.com. Also on January 13, 2025, 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 February 4, 2025, pursuant to Complainants' 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 formal response from Respondent.
RELIEF SOUGHT
Complainants request that the domain name be transferred from Respondent to Complainants [sic].
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are two Complainants in this matter: Chipotle Mexican Grill, Inc. and CMG Pepper, LLC.
Paragraph 3(a) of 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."
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 4.11.1.
In this case, Complainants have shown that they each have registered trademark rights in CHIPOTLE. This establishes a sufficient nexus or link between them. The Panel therefore finds that they have a specific common grievance against Respondent and that it would be equitable and procedurally efficient to permit consolidation.
PARTIES' CONTENTIONS
A. Complainants
Founded in 1993, Complainants operate one of the most well-known restaurant chains in the United States, if not the world, that pioneered the concept of "fast-casual" dining. Complainants own numerous trademark registrations worldwide for the trademark CHIPOTLE. Currently, Complainants have over 3,000 CHIPOTLE branded restaurants, the majority of which are in the United States and Canada, with some locations in Europe and the Middle East. Worldwide, Complainants employ more than 100,000 individuals.
The <chipocatering.com> domain name is confusingly similar to Complainants' CHIPOTLE marks.
Respondent has no rights or legitimate interests in the <chipocatering.com> domain name. Respondent is not affiliated with Complainants in any way, nor is Respondent authorized to use the CHIPOTLE marks or any formatives thereof, confirmed by the fact that Respondent registered the <chipocatering.com> domain name 7 days after being served with a prior complaint by the same Complainants over the domain name <chipotle-catering.com>, Chipotle Mexican Grill, Inc. and CMG Pepper, LLC v. Shahbaz Ali / Desire Web Solution FA 2126053 (Forum, transfer ordered on December 13, 2024).
There is no evidence that Respondent is commonly known by the <chipocatering.com> domain name. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is using the domain name to host a website that improperly suggests an affiliation with Complainants and purports to offer or facilitate use of Complainants' popular catering services.
Respondent registered the <chipocatering.com> domain name in bad faith because Respondent registered the confusingly similar domain name despite having actual knowledge of Complainants' CHIPOTLE marks, demonstrated by the fact that the resolving website uses the CHIPOTLE marks, discusses Complainants' catering services in detail, lists Complainants' headquarters and phone numbers, and provides URLs to Complainants' catering website, mobile app, and social media accounts.
In addition, just like the <chipotle-catering.com> domain name, Respondent likely intends to use the <chipocatering.com> domain name to resolve to a webpage that provides pay-per-click links.
Respondent's actions stand to significantly damage the goodwill and reputation Complainants have built in the famous CHIPOTLE marks and are likely to cause immeasurable harm if allowed to continue. Respondent's use and registration of the <chipocatering.com> domain name is clearly intended to suggest an affiliation with Complainants for Respondent's own commercial gain, which constitutes a bad faith use under the Policy.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Forum received two emails from Respondent including some argument related to this dispute, as follows:
Respondent's January 17, 2025 email stated: "Our domain is "Chipo", and we would like to clarify that we are not using the term "Chipotle," which is a trademark of Chipotle Restaurant. Furthermore, during the domain registration process, the term "Chipo" does not conflict with or reference any registered trademarks associated with Chipotle."
Respondent's January 28, 2025 email stated: "We are reaching out to bring to your attention a domain name issue regarding chipocatering.com. As you may know, the term Chipotle is a registered trademark under [Chipotle Mexican Grill, Inc.]. However, based on the provided PDF, there appears to be no registered trademark for Chipo. We have compiled a list of websites and domains that actively use the Chipotle trademark, which might serve as a helpful reference for context."
FINDINGS
Complainant has established all the elements entitling it to relief.
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."
(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 Complainants' 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
Complainants have shown that they each have rights in the CHIPOTLE mark through registrations, including with the USPTO (e.g., Reg. No. 2,344,423 registered on April 25, 2000 by CMG Pepper, LLC and Reg. No. 3,523,738, registered on October 28, 2008 by Chipotle Mexican Grill, Inc.)
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.
Respondent's assertion that there may be no registered trademarks for CHIPO is irrelevant to this issue.
The Panel finds Respondent's <chipocatering.com> domain name to be confusingly similar to Complainants' CHIPOTLE mark, only differing by the omission from Complainants' mark of the letters "tle" and the addition of the word "catering" which are insufficient to distinguish the domain name from the distinctive "CHIPO" element of Complainant's mark and instead evoke Complainant's business. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainants have established this element.
Rights or Legitimate Interests
(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 <chipocatering.com> domain name was registered on November 29, 2024, many years after the registration of Complainants' famous mark and a few days after the commencement of the prior complaint. It resolves to a website prominently displaying the name "Chipotle Mexican Grill", offering a "Chipotle Catering Menu with Prices 2024" and stating: "Chipotle is a popular fast-casual restaurant known for its Mexican-inspired dishes made from fresh, high-quality ingredients". The website appears to copy images and other material from the website to which the same Respondent's domain name <chipotle-catering.com> resolved when the prior complaint was filed.
These circumstances, together with Complainants' 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 <chipocatering.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (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.
Complainants have established this element.
Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy is expressed in the conjunctive: "the domain name has been registered and is being used 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, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainants and their famous CHIPOTLE marks when Respondent registered the <chipocatering.com> 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 Complainants' marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website and of the products or services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainants have established this element.
DECISION
Complainants having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chipocatering.com> domain name be TRANSFERRED from Respondent to Complainant Chipotle Mexican Grill, Inc.
Alan L. Limbury, Panelist
Dated: February 6, 2025
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