WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

RTBD, Inc. v. The Goldstein Law Group

Case No. D2007-1094

 

1. The Parties

The Complainant is RTBD, Inc., Maryville, Tennessee, United States of America, represented by Ladas & Parry, United States of America.

The Respondent is The Goldstein Law Group, Leesburg, Virginia, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names listed below are registered with Network Solutions, LLC:

<rubytuesdayfranchisees.com>
<rubytuesdayfranchisees.info>
<rubytuesdayfranchisees.net>
<rubytuesdayfranchisees.org>

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2007. On July 27, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On July 27, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 14, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2007.

The Center appointed William R. Towns as the sole panelist in this matter on October 1, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is the owner of a number of United States trademark registrations for RUBY TUESDAY for use in connection with restaurant and bar services, food, and merchandize, the earliest of which was obtained from the United States Patent and Trademark Office (USPTO) in January 1979. The Complainant also holds numerous international registrations for the RUBY TUESDAY mark in other countries around the world. The mark is used primarily in relation to the Ruby Tuesday restaurant chain. There are currently over 850 company-owned or franchised Ruby Tuesday restaurants in the United States of America.

The Respondent registered the disputed domain names on March 28, 2007. The Respondent is using the disputed domain names to direct Internet users to what appear to be a pay-per-click websites featuring links such as “Wendy’s hamburgers” and “Subway fast food” to other commercial websites containing advertising for such restaurant services.

On May 4, 2007, the Complainant sent a cease and desist letter to the Respondent respecting the disputed domain names, to which the Respondent did not reply.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain names are confusingly similar to its well known and distinctive RUBY TUESDAY mark. According to the Complainant, the Respondent registered the disputed domain names without the Complainant’s authorization or consent, and is using the confusingly similar domain names in an attempt to exploit and profit from the Complainant’s mark by diverting Internet traffic to the Respondent’s websites, which contain advertising links to restaurant services that compete directly with the Complainant, in order to generate pay-per-click income. The Complainant maintains that the Respondent has never been commonly known by the disputed domain names, and is not making any noncommercial or fair use of the domain names. In view of the foregoing, the Complainant concludes that the Respondent has not established rights or legitimate interests in the disputed domain names.

The Complainant further asserts that the Respondent registered and is using the disputed domain names in bad faith. The Complainant contends that the Respondent is intentionally attempting to attract Internet users to the Respondent’s pay-per-click websites for commercial gain by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s websites. According to the Complainant, the disputed domain names falsely convey an association with the Complainant and its services, and the Respondent is providing links on its websites to other commercial websites advertising competing restaurant services, all of which in the Complainant’s view establishes the Respondent’s opportunistic bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

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

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s RUBY TUESDAY mark. The Complainant unquestionably has established rights in its RUBY TUESDAY mark through registration and continuous and extensive use in commerce. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Under paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. The disputed domain names are confusingly similar because they incorporate the Complainant’s RUBY TUESDAY mark in its entirety. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. The addition of the generic or descriptive word “franchisees” and the inclusion of a generic top-level domain (gTLD) – i.e. “.com”, “.org”, “.info”, or “net” – do not dispel the confusing similarity of the disputed domain names with the Complainant’s mark. See Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., WIPO Case No. D2001-0075; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. It is uncontroverted that the Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s RUBY TUESDAY mark, nor has it authorized the Respondent to register domain names corresponding to that mark. Nor is there any indication that the Respondent has been commonly known by the disputed domain names. Further, the record reflects the Respondent’s registration and use of the disputed domain names, which are confusingly similar to the Complainant’s mark, to attract Internet users to a websites replete with what appear to be pay-per-click advertising links.

The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain names.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See, Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.1 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the safe harbors of paragraph 4(c) of the Policy.

Nothing in the record indicates that the Respondent has been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. The Respondent’s use of disputed domain names confusingly similar to another’s trademark ostensibly to generate pay-per-click revenue based on the attractive quality of the mark does not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. See Educational Testing Service (ETS) v. International Names Ltd., WIPO Case No. D2007-0449. Further, the Respondent’s use of domain names incorporating the Complainant’s mark to generate pay-per-click revenue is preclusive of any legitimate noncommercial or fair use of the domain name under the meaning of paragraph 4(c)(iii) of the Policy. See Bata Brands S..r.l v. Charles Power, WIPO Case No. D2006-0191.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

A strong inference can be drawn from the circumstances of this case that the Respondent was well aware of the Complainant’s distinctive RUBY TUESDAY mark at the time it appropriated the Complainant’s mark for use in its domain names, and the Panel so finds. The disputed domain names falsely convey an association with the Complainant’s Ruby Tuesday restaurant chain (“rubytuesdayfranchisees”) and are being used by the Respondent for commercial gain to redirect Internet users to third-party websites advertising competing restaurant services. The registration and use of domain names so obviously associated with the Complainant and its services by one with no connection to the Complainant in and of itself suggests opportunistic bad faith. See The Elizabeth Taylor Cosmetics Company v. NOLDC, Inc, WIPO Case No. D2006-0800; Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. In the final analysis, the Panel finds from the circumstances of this case that the disputed domain names were registered and are being used in bad faith by the Respondent in an attempt to profit from and exploit the Complainant’s RUBY TUESDAY mark by generating what appears to be pay-per-click revenue based on the attractive quality of the Complainant’s mark. See, e.g., ETS, infra.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following domain names be transferred to the Complainant:

<rubytuesdayfranchisees.com>
<rubytuesdayfranchisees.info>
<rubytuesdayfranchisees.net>
<rubytuesdayfranchisees.org>


William R. Towns
Sole Panelist

Dated: October 15, 2007


1 Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.