Complainant is Doctor's Associates Inc. of Plantation, Florida, United States of America, represented by Valerie A. Pochron, Esq., United States of America.
Respondent is Atomix of Tucson, Arizona, United States of America.
The disputed domain name <mysubwayrewards.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2010. On January 15, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 18, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on January 22, 2010. The Center verified that the amended 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 Respondent of the Complaint, and the proceedings commenced on January 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on February 17, 2010.
The Center appointed Seth M. Reiss as the sole panelist in this matter on March 1, 2010. 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.
Complainant, a Florida corporation, is engaged in the operation and franchising of fast food restaurants featuring submarine sandwiches. Complainant first used its SUBWAY mark in 1967, in connection with a sandwich shop in Bridgeport Connecticut. Since then Complainant has continuously expanded its franchise business operation so that presently, there are over 31,476 SUBWAY branded restaurants spread among 91 countries. Complainant claims registration of its SUBWAY mark in 138 counties. Annexed to its complaint is evidence of a United States Patent and Trademark Office (“USPTO”) registration for the word “subway” for restaurant services dating from 1981, and a USPTO registration for the word “subway” in stylized format, for clothing, dating from October 2008.
Complainant alleges that Respondent is using the disputed domain name to point to a website that offers visitors a “free $50” SUBWAY gift card. Complainant fails to append evidence of the putative website or of the content that Complainant claims is found on the offending website.
The WhoIs record for <mysubwayrewards.com> shows that it is registered to Respondent and that it was first registered on July 20, 2009.
On previous occasions, when the <mysubwayrewards.com> domain address was entered into an Internet browser, the domain name resolved, alternatively, into a “SurveyScout.com” website advertising Internet related revenue opportunities, and a website of the type described by Complainant offering a free $50 SUBWAY gift card. The website promoting free $ 50 SUBWAY gift cards also disclosed that the card is being offered by EasyBudgetGifts.com, “an independent rewards program . . . not associated with any of the above listed merchants and brands.” Ultimately, for the reasons set out below, it is unnecessary for the Panel to make a finding based on assessment of the website content in this particular case. For completeness, however, the Panel notes that the website content appears to have been changed out one or more times during the short period this Panel considered the case1
Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Complainant bases this allegation entirely upon the two USPTO registrations for the mark SUBWAY evidence of which is annexed to the Complaint.
Next, Complainant claims that Respondent is without rights or legitimate interests in respect of the disputed domain name because Respondent is not now nor has ever been affiliated with Complainant's SUBWAY branded restaurant system, and because there is no evidence that Respondent is using the disputed domain name in conjunction with a bona fide offering of goods or service.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith based upon: (1) Complainant's long term, widespread, use and registration of the SUBWAY mark; (2) Respondent having no legitimate right to the domain name; and (3) Respondent using the <mysubswayrewards.com> domain name to offer free SUBWAY gift cards to attract Internet traffic “most likely in an attempt to gather private information for a commercial gain.”
The remedy being requested by Complainant is that the disputed domain name be transferred to it.
Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs that: “A Panel shall 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 directs that the complainant has the burden with respect to each of the following three elements:
1) 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,
2) the 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.
Complaint has provided evidence establishing rights in the mark SUBWAY. Complainant's SUBWAY branded restaurants are indeed ubiquitous and this Panel has no difficulty in taking judicial notice that the SUBWAY mark has attained the status of a well-known and perhaps famous, functioning as an indicator of source and origin of fast food establishments featuring sub style sandwiches.2
Complainant, however, offers no evidence that it has rights in the mark MY SUBWAY REWARDS, or SUBWAY REWARDS, or MY SUBWAY, nor any explanation or argument as to why the phrase “mysubwayrewards” in the domain name is identical or confusingly similar to the mark SUBWAY3. While this Panel has no issue with disregarding the “.com” top level domain ending in determining whether the disputed domain name is identical or confusingly similar to the SUBWAY mark, Telstra Corporation Limited v. Mandino Pty Ltd, WIPO Case No. DAU2006-0006, it cannot similarly disregard words that appear to the left of the dot that also do not form a part of the mark in regard to which rights are being claimed.
The test of confusing similarity, in the context of the Policy, was set out in GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001; reiterated in The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven, WIPO Case No. DAU2003-0001. In the latter case, the panel relevantly stated that:
“the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases.”
Telstra Corporation Limited v. Mandino Pty Ltd, WIPO Case No. DAU2006-0006. 4
Or in terms of the consensus view among UDRP panelists, “the content of a website is irrelevant in the finding of confusing similarity[ . . .] The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.” Paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
This Panel further agrees with previous panels that, in general, a panel should base its likelihood of confusion determination “on a comparison between the commercial impressions imparted by the domain name and [the] Complainant's [. . .] marks.” Scholastic Inc. v. ScholasticAdvising.com and Ramit Sethi, WIPO Case No. D2001-0946. It is the impression of the domain name, taken as a whole, that is tested against the mark, taken as a whole. Thomas Cook Holdings Limited v. Sezgin Aydin, WIPO Case No. D2000-0676.
In this Panel's view, it is insufficient simply to demonstrate rights in a word that forms a part of a domain name particularly where, as here, the mark itself, SUBWAY, is bracketed between other words which could quite conceivably be used in combination to convey meaning unassociated with the SUBWAY mark per se. It becomes necessary, especially in such cases, for a complainant to advance arguments sufficient to demonstrate identity or confusing similarity of the domain name to the mark at issue. A “trademark owner does not necessarily ‘own' all combinations of marks using its principal word.” Scholastic Inc., supra. As regards potential confusing similarity, in this Panel's assessment, the words “my” and “rewards” are neither generic nor descriptive of the goods or services in regard to which Complainant claims trademark rights, whereas the word “subway” arguably may be.5
This is not a case where, in this Panel's assessment, the distinctive nature of a trademark wholly subsumed within a domain name nevertheless makes the domain name, confusingly similar to the mark under the Policy. See CHRISTIAN DIOR COUTURE v. Kianna Dior Productions, WIPO Case No. D2009-0353. Nor does this Panel accept that it inevitably follows from the fact that a domain name incorporates a trademark in its entirety that a domain name must be confusingly similar to that mark. See Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227, in which the panel observed that “[e]ach case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.”
Although the burden of proof under the first element is not a high one (Research in Motion Limited, supra) the Panel considers that it is nevertheless incumbent on a complainant to make its case as to identity or confusing similarity. To conclude that the domain name <mysubwayrewards.com> has been shown on the limited pleadings submitted to be identical or confusingly similar to the mark SUBWAY requires a leap that this Panel is not comfortable making.
Inasmuch as the Panel finds that Complainant has failed in these proceedings to discharge its burden of establishing that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, it is unnecessary to consider whether the second and third elements of the Policy have been met in the circumstances of this case.
For all the foregoing reasons, the Complaint is denied.
Seth M. Reiss
Dated: April 6, 2010
1 “A panel may visit the Internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 4.5, citing, e.g., Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070. In this case the Center (whose notification obligations to Respondent under paragraph 2(a)(ii)(C) of the Rules extend to forwarding a copy of the Complaint to any email address appearing on a website at the disputed domain name) also provided the Panel in the context of the case file with Internet content pointed to by the disputed domain name, while Complainant did not. The Panel has subsequently observed the content located at the Internet site, as discussed above.
2 Panels regularly taken notice of, for example, the fame of marks. See, e.g., Saks & Company v. John Zuccarini, WIPO Case No. D2000-1285; Singapore Airlines Limited v. P&P Servicios de Communicacion S.L., WIPO Case No. D2000-0643. “In an administrative proceeding such as this, directed to the summary resolution of disputes on the papers, the principle of judicial notice is one that can appropriately be applied. The application of that principle avoids putting the parties to unreasonable lengths to provide evidence of matters that are not seriously open to doubt.” Société Des Produits Nestlé SA v. Kayvan Sadeghi, WIPO Case No. DIR2007-0002.
3 Given the renown of the SUBWAY brand, the Panel has considered the possibility that Complainant might also have rights in the phrase SUBWAY REWARDS or even MY SUBWAY REWARDS. However, it is incumbent upon a complainant in expedited proceedings under the Policy to make its case at first instance, and the record here is devoid of evidence of rights in anything more than the just the word SUBWAY.
4 The first element of the test under the Policy -- identity or confusing similarity -- is formulated in identical terms as the first element of the test under the Domain Name Disputed Resolution Policy as adopted by the .au registry. In any event, the underlying principle of analysis is equally applicable to disputes under the Policy.
5 Under United States trademark law, descriptive words can acquire distinctiveness and secondary meaning, and become eligible for protection as trademarks through, inter alia, long, continuous and substantially exclusive use. See, e.g., Southwestern Association for Indian Arts, Inc. v. Indian Art of America and A. Mata, WIPO Case No. D2009-1774.