The Complainant is Hardees Food Systems Inc. of St. Louis, Missouri, of United States of America, represented by Plave Koch PLC, United States of America.
The Respondent is Ali Abdelwahed (AEORG-MAHMEDO) of Sharjah, United Arab Emirates.
The Disputed Domain Name <hardees.ae> is registered with AE Domain Administration (.aeDA).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2009. On July 15, 2009, the Center transmitted by email to .aeDA a request for registrar verification in connection with the Disputed Domain Name. On July 16, 2009, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. .aeDA later confirmed on August 7, 2009 that the Domain Name Dispute Resolution Policy for .ae applied to the Disputed Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Domain Name Dispute Resolution Policy for .ae (the “Policy” or “aeDRP”), the Rules for Domain Name Dispute Resolution Policy for .ae (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy for .ae (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 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on Monday September 7, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on September 16, 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 operates 1900 Hardee's quick service restaurants throughout the United States and in 9 other countries including the United Arab Emirates. It owns various trademark registrations for the mark HARDEE'S in the United States including marks 741,048, 1,729,627 and 1,825, 221 and also in various countries around the world including at least 8 trademark registrations in the United Arab Emirates under registration numbers 9814, 9815 and 9816 for the same word mark. It also operates a website for its business at the domain name <hardees.com>
The Respondent registered the Disputed Domain Name on August 14, 2008 and has a contact postal address in the United Arab Emirates.
The Complainant says that it is the owner of registered trademarks for the HARDEE'S marks in various jurisdictions throughout the world including in the United States and the United Arab Emirates as noted above at section 4. Operating since 1960, its' business has grown to include 1900 quick service restaurants worldwide and as a result the Complainant maintains that its HARDEE'S name and mark is distinctive and famous. The Complainant says that it has operated its business for more than a decade in the United Arab Emirates.
The Complainant submits that the Disputed Domain name is identical to its registered name and marks and to its official website at <hardees.com> and that any use of the Disputed Domain Name will cause internet users to be mistakenly confused as to an association between the Complainant and the Disputed Domain Name.
The Complainant says that the Respondent registered the Disputed Domain Name without its consent or authorization and to its knowledge has never been known by the “Hardee's” name, or made any bona fide offering of goods or services using the name or the Disputed Domain Name. Nor, according to the Complainant, is there any evidence that it has made a legitimate, non-commercial or fair use of the Disputed Domain name or indeed that the Complainant has ever actually used the Disputed Domain Name.
The Complainant rather maintains that the Respondent must have been familiar with the “Hardee's” name and marks at the time of registration of the Disputed Domain Name and as a consequence of the Complainant's trademark registrations in the United States of America and in the United Arab Emirates was on constructive notice of the Complainant's trade mark rights. In view of the fame attaching to the HARDEE'S trade mark the Complainant says that the Respondent intentionally registered the Disputed Domain Name with a view to trading off the attached goodwill by selling the Disputed Domain Name. This is only confirmed by the by the large number of domain names held by the Respondent in the .ae ccTLD which it also has advertised for sale together with the Disputed Domain Name on at least two websites. The advertised domain names include the trade marks of other well known United States and United Kingdom based trademark owners including <gillette.ae>, <costacoffee.ae>, <chillis.ae>, <dominos.ae>, <claires.ae>, <mothercare.ae>, <jennycraig.ae>, <krispykreme.ae> and <heinz.ae>. Accordingly the Complainant says that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Based on the assertions as set out above that the Respondent has never used the Disputed Domain Name for any reason other than to advertise it for sale, the Complainant says that the Respondent's acts constitute bad faith under Paragraph 6 (b) (i) of the Policy in that the Respondent has acquired the Disputed Domain Name primarily for the purpose of selling it to the Complainant or to a competitor. Alternatively, the Respondent's conduct constitutes bad faith under Paragraph 6 (b) (ii) of the Policy because the Respondent registered the Disputed Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name and entered into a pattern of such conduct.
In addition the Complainant submits that the Respondent failed to respond to the Complainant's counsel's communications and failed to voluntarily cease use or registration of the Disputed Domain Name which is further evidence of bad faith.
The Respondent did not reply to the Complainant's contentions.
This Complaint is made under the .ae dispute resolution policy which closely mirrors the Uniform Domain Name Dispute Resolution Policy (“UDRP''). Accordingly the principles developed by panels under the UDRP are relevant and instructive in deciding this case.
The Panel accepts that the Complainant owns registered trade mark rights in the HARDEE'S trade mark in both the United States of America and in the United Arab Emirates. Although the HARDEE'S name and mark may be famous in these jurisdictions or others, as submitted by the Complainant, there is insufficient evidence before the Panel to determine this point, except to say that the name and mark appears to have been used extensively both in the United States and the United Arab Emirates and therefore must have attracted a fairly significant degree of renown.
In that the HARDEE'S registered trade mark differs from the Disputed Domain Name by the use of an apostrophe, it is not strictly speaking identical, but is most definitely confusingly similar to it. It is well established by panels under the UDRP that the “.tld” element is not relevant to this assessment and there is no reason to depart from this approach under the .aeDRP.
Accordingly the Complainant succeeds under the first element of the Policy at paragraph 6(a)(i).
The Complainant contends that the Respondent has not made an authorised or bona fide use of the Disputed Domain Name and has not been known by it or made a legitimate non-commercial or fair use of it. Further, it says that in view of the renown of the Complainant's marks the Respondent must have chosen the Disputed Domain Name purposefully with a view to selling it together with the other domain names that it holds which incorporate reputed brand owners' marks.
The Respondent has not rebutted this case and there is nothing expressly before the Panel to suggest that the Respondent had any right or legitimate interest in the Disputed Domain Name. Although the Panel does not accept that the Respondent necessarily had constructive notice of the Complainant's marks simply by reason of registration (see Alberto-Culver Company v. Pritpal Singh Channa WIPO Case No. D2002-0757), the co-incidence of factors including the obvious repute of the Complainant's mark or name in the United Arab Emirates, the Respondent's offering of the Disputed Domain Name for sale on at lest two websites and its apparent pattern of conduct together with the lack of evidence of rights or legitimate interests, leads the Panel to infer that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Complainant succeeds in relation to the second element of the .aeDRP at paragraph 6(a)(ii) of the Policy.
Although not strictly necessary in view of the Panel's findings in relation to the second element of the test, for completeness the Panel will also consider the third element of the Policy. The Respondent's conduct, as noted above, in not attempting to use the Disputed Domain Name for any bona fide reason but instead advertising the Disputed Domain Name for sale together with a range of other domain names containing reputed brand owners marks, is indicative of bad faith and is exactly the sort of conduct which the Policy seeks to proscribe. The Respondent's failure to respond to the Complainant's requests with any kind of explanation only serves to reinforce the inference of bad faith.
In these circumstances and based on the further facts outlined above, the Panel infers that the Respondent either; (a) registered or acquired the Disputed Domain Name with a view to selling it to a competitor of the Complainant for valuable consideration under paragraph 6(b)(i) of the Policy, or; (b) registered the Disputed Domain Name in order to prevent the Complainant from reflecting its mark in a corresponding domain name having engaged in a pattern of similar conduct in relation to other reputed brand owners'names, under paragraph 6(b)( ii) of the Policy. These inferences and the circumstances in which they are drawn are consistent with those made by other panels (as these relate to paragraph 6(b)(i) in the decisions of ebay inc. v. Akram Mehmood, WIPO Case No. DAE 2007-0001 and Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson c/o Sony Ericsson Mobile Communications AB, Sony corporation, c/o Sony Ericsson Mobile Communications AB v. Mohamed Ali Aal Ali, WIPO Case No. DAE 2006-0002; and (ii) in relation to paragraph 6(b)(ii) the decisions in Valeant Pharmaceutical International and Valeant Canada Limited v. John Carpela, WIPO Case No. D2005-0786 and in Bradford Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499.
As a result the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith and the Complaint succeeds in relation to the third element under paragraph 6(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <hardees.ae> be transferred to the Complainant.
Date: September 30, 2009