The Complainant is Santa Barbara Restaurant Group, Inc. of Carpentaria, California, United States of America, represented by Neal & McDevitt, United States.
The Respondents are Contactprivacy.com of Toronto, Ontario, Canada and Green Salsa Burrito (aka GreenBurrito.com) of Artesia, California, United States of America.
The disputed domain name <greenburrito.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2009. On March 16, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 16, 2009, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 18, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 24, 2009. 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” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on March 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2009. The Respondents did not submit any response. Accordingly, the Center notified the Respondent's default on April 15, 2009.
The Center appointed Emmanuelle Ragot as the sole panelist in this matter on April 24, 2009. 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.
The Complainant Santa Barbara Restaurant Group, Inc. is a Delaware corporation and is one the United States' leading restaurants and food product companies.
The Complainant is the sole and exclusive owner of the United States registered trademark THE GREEN BURRITO (and design), Registration no.1689454 as well as various registrations for the GREEN BURRITO Marks and various formatives for restaurant services, food products and other related services1.
The Complainant has used continuously the trademark registered under no. 1689454 for five consecutive years subsequent to the date of registration and still uses it in commerce.
Since at least as early as 1989, Complainant, and/or its predecessor in interest, has prominently used some of the GREEN BURRITO Marks and names in connection with restaurant services, food products and other related services and more than millions of dollars have been spent each year in promoting, advertising the GREEN BURRITO Marks.
The Complainant's parent company CKE Restaurants owns and has registered numerous domain names2 containing the GREEN BURRITO Marks such as <greenburrito.org>, <greenburrito.net>, <greenburrito.us>, <greenburrito.biz>.
The Complainant opened up in August 2007 communications with the then listed Registrant (which was Green Salsa Burrito) about the potential purchase of the domain name <greenburrito.com>.
On May 14, 2008, counsel for the Complainant sent a letter to Green Salsa Burrito requesting that it cease and desist use of the GREEN BURRITO Marks, or formatives thereof, that it was using in any domain name and requesting that it surrender and transfer the domain name registration to the Complainant. A copy of the May 14, 2008 Cease and Desist letter is provided by the Complainant3.
A response to the Cease and Desist letter was sent by Mr. Klein4 .
According to the Cease and Desist letter, the registration of the domain name predates Complainant's first use date of the GREEN BURRITO Marks. The Cease and Desist letter failed to acknowledge that the Complainant began use of THE GREEN BURRITO (and Design) trademark in at least as early as January 19895. Consequently, no agreement on the transfer of the domain name to the Complainant was found.
Further to discussions, a conference call was scheduled between the Complainant's counsel and Mr. Klein6. It derives from this discussion that Mr. Klein was not willing to transfer the domain name unless payment of “six to nine digit figure” range7.
The Complainant asserts that it owns numerous registered trademarks, and it has registered numerous domain names that include the term “Green Burrito”.
The Complainant alleges that the Respondents hold no license or any other type of authorization given by the legitimate holders of said trademarks to use the marks.
The Complainant also alleges that the disputed domain name containing the identical GREEN BURRITO marks is confusingly similar to the GREEN BURRITO Marks.
The Complainant points out that not only does the domain name contains the identical GREEN BURRITO marks, but the word “com” is added. The addition of “.com” to Complainant's GREEN BURRITO mark does not change the likelihood of confusion. It has been held in previous decisions8 that the addition of “.com” is an irrelevant distinction that does not change the likelihood for confusion.
The Respondents did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs the 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 states that a complainant must prove that each of the three following elements is present:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The term “Green Burrito” is the dominant part of numerous trademarks of the Complainant which are registered in several countries.
The disputed domain name <greenburrito.com> is confusingly similar to the Complainant's marks in which Complainant enjoys substantial goodwill.
In the present case, the Panel does not hesitate to decide that the disputed domain name is confusingly similar to the registered trademarks GREEN BURRITO.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on the evaluation of all the evidence presented, shall demonstrate the respondent's rights or legitimate interests to the domain name for the purpose of paragraph 4(a )(ii):
“(i) Before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name, without the intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue”.
It is well established from previous UDRP decisions (see Croatian Airlines d.d.v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455) that the burden of proof shifts to the respondent where the complainant establishes a prima facie case showing the lack of rights and legitimate interests of the respondent in the disputed domain name. If the respondent fails to rebut the complainant's case, the complaint is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the present case, the Complainant states that the Respondents have no rights or legitimate interest with respect to its use of the domain name. Furthermore, there is no evidence in the file showing any of the three circumstances under paragraph 4(c) of the Policy, or any other circumstance that would establish rights or legitimate interests of the Respondent.
The Respondents have not submitted any Response and thus failed to demonstrate that they have rights or legitimate interests in the domain name pursuant to paragraph 4(c)(i), 4(c)(ii), 4(c)(iii) of the Policy.
The Panel finds that the second element of the Policy has been established.
Paragraph 4(b) of the Policy states that the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 the 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”.
In the case at hand, the domain name <greenburrito.com> has been registered by the Respondent Green Salsa Burrito (aka GreenBurrito.com)despite the fact that GREEN BURRITO is a known trademark for restaurant services and food products.
Furthermore, the Respondents are not listed as an owner of any United States trademark containing any GREEN BURRITO formatives. Nor is there any evidence that Respondents own any or have applied for any United States trademark registrations. There is no evidence that the Respondents (as an individual, business or other organization) have been commonly known by the domain name.
On the contrary, it appears clearly established that the Respondent Green Salsa Burrito (aka GreenBurrito.com) is not making a legitimate noncommercial or fair use of the domain name. Rather, this Respondent appears to be using the domain name with the intent for commercial gain and to misleadingly divert Internet users.
On its website, the Respondent Green Salsa Burrito (aka GreenBurrito.com) has links that divert the Internet users to sites that are not associated with the Complainant.
The Respondent Green Salsa Burrito (aka GreenBurrito.com) has acquired the domain name with no apparent intention of utilizing the domain name in connection with the bona fide provision of goods or services. Rather, Respondent's bad faith intent is to create confusion among consumers as to the source of the domain name as well as for commercial gain.
It is likely that the Respondent chose the domain name because of its similarity to a name in which the Complainant has rights and an interest. This was most likely done in the “hope and expectation that Internet users searching for [Complainant's services and products) would instead come across the Respondent's site. Such a domain name does not provide a legitimate interest under the Policy” (See Shaw Industries Group, Inc. Columbia Insurance Company v. Administrator, Domain, WIPO Case No. D2007-0583, citing Express Scripts, Inc. v. Windgather Investments Ltd / Mr. Cartwright, WIPO Case No. D2007-0267].
It has been held in previous decisions that the registration of a well-known trademark in a domain name, of which a respondent must reasonably have been aware, constitutes opportunistic bad faith (See Veuve Clicquot Ponsardin, Maison fondée en 1772 v. Polygenix Group Co., WIPO Case No. D2000-0163). Moreover, the offending website also contains unauthorized links using Complainant's marks9.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to it's website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website. Respondent's website offers references to food companies and a consumer might be under the impression that theComplainant is affiliated or sponsored by such a website since they sell and make green burritos as no explicit statement of any kind reduces the likelihood of confusion as to the existence of such an association.
In addition, the website appears to be designed to present Internet users with search engine results. Thus, the website potentially derives revenue from “click through” from confused web users who were looking for a SBR Group or CKE restaurants website or information about the GREEN BURRITO brand.
Numerous UDRP decisions hold that “using the disputed domain name to redirect Internet users to websites that host links to external websites, including websites of Complainant's competitors”, evidences bad faith. (See DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031).
Finally, the Panel notes the use of a privacy protection service, namely Contactprivacy.com which is currently listed as the registrant. Contactprivacy.com allows an entity to get around a “public”, thus allowing the true registrant to hide behind the name “Contactprivacy.com” although the Panel also notes that in this case the underlying registrant was duly disclosed by the Registrar and added as a Respondent by the Complainant.
In consideration of the amounts demanded by the Respondent Green Salsa Burrito (aka GreenBurrito.com) for the transfer of the domain name well above any administrative costs, this Respondent is plainly seeking to profit from its domain name registration.
The Panel concludes that pursuant to the facts as outlined above, the bad faith of the Respondents in the registration and use of the disputed domain name has been established by the Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <greenburrito.com> be transferred to the Complainant.
Dated: May 13, 2009
1 Annex C
2 Annex H
3 Annex D
4 Annex E
5 Annex C
6 Annex F
7 Annex G
8 Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053
9 Annex I