WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CBOCS Properties Inc. v. Tan Kim Fong
Case No. D2011-1007
1. The Parties
The Complainant is CBOCS Properties Inc. of Livonia, Michigan, United States of America, represented by Wyatt, Tarrant & Combs, United States of America.
The Respondent is Tan Kim Fong of Sitiawan, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <crackerbarrell.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2011. On June 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on June 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2011.
The Center appointed William P. Knight as the sole panelist in this matter on July 20, 2011. 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 current registration of the Disputed Domain Name dates from May 14, 2002.
The Complainant is a United States company that is concerned with the operation of “family dining” restaurants in the United States, which the Complainant says has been in operation since 1969 and has grown to 557 locations in 41 states of the United States. Each “Cracker Barrel Old Country Store” restaurant is connected with a retail store, selling a variety of souvenir, craft and food items. The Complainant has numerous United States Trademark Registrations for marks incorporating the words “Cracker Barrel”, in respect of a wide range of goods and services, other than restaurant services, including retail services, rocking chairs, foodstuffs, musical recordings, dinnerware and figures of porcelain as well as numerous domain names incorporating the words “Cracker Barrel” including:
At the date of this determination, the Disputed Domain Name is not presently in use by the Respondent but redirects to a third-party website.
Prior to issuing the Complaint, the Complainant attempted to identify and contact the Respondent, using the contact details recorded in the Registrar’s WhoIs directory for the Disputed Domain Name, by letter from its legal advisers dated September 15, 2008, sent by email and certified mail. No reply is recorded as being received by the Complainant’s legal advisers.
It should also be noted that, whilst service of the Compliant by email was effective, the attempt by the Center to serve the Complaint upon the Respondent by courier established that the postal address provided by the Respondent when registering the Disputed Domain Name was incomplete so that the Respondent could not be located via mail service.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:
(i) that the Disputed Domain Name is confusingly similar to the Complainant’s registered trademarks; 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.
In respect of Policy, paragraph 4(a)(i), the Complainant asserts that the Disputed Domain Name consists of nothing more than a common or obvious misspelling of the Complainant’s CRACKER BARREL trademark and that the difference, the addition of the letter ‘l’ at the end, is not sufficient to distinguish the Disputed Domain Name from the principal verbal feature of the Complainant’s trademark. Hence, the Complainant argues that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, citing and relying upon Express Scripts, Inc. v. Whois Privacy Protection Service, Inc./Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Fuji Photo Film USA Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971.
In support of Policy, paragraph 4(a)(ii), the Complainant contends that:
(a) the Disputed Domain Name is not being used in connection with a bona fide offering of goods or services (that is, it should be added, such an offering by the Respondent) but is being used to attract and divert Internet traffic;
(b) the use being made of the Disputed Domain Name is not otherwise a legitimate use. At the time of the Complaint, the Complainant’s evidence shows, the Disputed Domain Name redirected to a third party search engine called “Usseek”, which displayed search results for a range of goods and services, some of which were of the same kind as the Complainant sells in its retail stores. By this means, the Complainant argues, the Respondent was obtaining pay-per-click revenue, which the Complainant says is not a legitimate or fair use, relying upon MB Financial, NA v. LaPorte Holdings, Inc. NAF Claim No.FA362110; Disney Enterprises Inc v. Dot Stop NAF Claim No. FA145227; and Terroni, Inc. v. Gioacchino Zerbo WIPO Case No. D2008-0666;
(c) there is nothing in the name or other details of the Respondent to indicate that he is known by or uses “Cracker Barrell” as a trade mark or otherwise for any purpose;
(d) the confusing use of the Disputed Domain Name by the Respondent, derived from the addition of the letter “l” to the Complainant’s trademark, for the apparent purpose of diverting internet users seeking the Complainant, thereby profiting from the goodwill and reputation of the Complainant, in order to obtain pay-per-click referral fees, cannot be regarded as either the bona fide offering of goods or services or otherwise a legitimate non-commercial or fair use, relying upon Media General Communications Inc v. Rarenames, WebReg WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. Rarenames, WebReg RN WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings WIPO Case No. D2005-1277; The Black & Decker Corporation v. Clinical Evaluations NAF Claim No. FA112629; Mpire Corporation v. Michael Frey WIPO Case No. D2009-0258; V&S Vin&Sprit AB v. Corinne Ducos WIPO Case No. D2003-0301; and David Foox v. Kung Fox et al. WIPO Case No. D2008-0472
(e) the Respondent is not engaged in criticism, scholarship, political advocacy or any other legitimate or fair use.
In support of Policy, paragraph 4(a)(iii), the Complainant argues:
(a) at the time of registration of the Disputed Domain Name, the Respondent must have known of the Complainant’s trademark and reputation because of its registered trademarks incorporating the words “Cracker Barrel” and domain name usage preceded the date upon which the Disputed Domain Name was registered; and
(b) the Respondent has engaged in a pattern of such conduct namely, “typo-squatting”, in that the respondent has been the subject of numerous adverse decisions on UDRP complaints, including those brought by Fossil Inc., America Online, Expedia Inc., Countrywide Financial Corporation, Microsoft Corporation, Morningstar Inc., AOL Inc., and Travelocity.com LLP, all of which found the respondent engaging in this practice, further the Respondent has also registered <betsbuy.com>; <hallmark.com>; <usatodya.com>; <usatody.com>; <cosmogirl.com>; and <symantics.com>, each of which is alleged by the Complainant to be an obvious misspelling of a well-known trademark;
(c) use of the Disputed Domain Name with the intention of attempting to attract Internet users to a third party’s location, by creating a likelihood of confusion with the Complainant’s trademark, for commercial gain, presumably in this case in return for pay-per-click revenues, is use in bad faith (see paragraph 4(b)(iv) of the UDRP);
(d) failure to respond to a letter from the legal advisers of the Complainant may also be regarded as evidence of bad faith, relying on V&S Vin&Sprit AB v. Corinne Ducos WIPO Case No. D2003-0301.
As noted above, no Response has been filed.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the UDRP.
The Panel finds that the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The case, however, is not automatically made out by the Respondent’s failure to respond.
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 UDRP, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the burden on the Complainant will be satisfied if a conclusion may be drawn from the evidence provided by the Complainant (see inter alia Alcoholics Anonymous World Services, Inc. v. Raymond WIPO Case No. D2000-0007; and Ronson Plc v. Unimetal Sanayi ve Tic A.S. WIPO Case No. D2000-0011).
As to the first element of paragraph 4(a) of the UDRP, the Policy does not require any particular type of trademark to be established to demonstrate that the Complainant has the relevant rights. The fact that the Complainant’s trademarks are only registered in the United States and may not be identified by those outside the United States as being connected with the Complainant is not an issue in respect of this element (see i.e. Bennet Coleman & Co Ltd. v. Steven S. Lalwani, WIPO Case No. D2000-0014; Office Holdings Limited v. Hocu To d.o.o. and Office Shoes d.o.o., WIPO Case No. D2009-1277).
The Panel notes that the determination of confusing similarity is a factual one, which must be satisfied by the Panelist making a side-by-side comparison of: the Complainant’s trademark and the Disputed Domain Name, taking into account the degree of aural, visual or conceptual similarity between the two; the similarity of the goods and services for which they are used; and the inherent or acquired distinctiveness of the trademark, as well as issues relevant to language (see Tchibo Frisch-Röst-Kaffee GmbH v. Hans Reischl WIPO Case No. D2001-0079).
Placed side-by-side, the Panel finds that the similarity of the Complainant’s trademark and the Disputed Domain Name is self-evident.
Respondent has no legitimate interests in Disputed Domain Name
It is clear from the evidence that the Complainant’s trademark, whilst not comprised of an invented word, does not have any self-evident meaning. In the Panel’s view, the words “Cracker Barrel” would not be adopted by accident by anyone for the purpose of describing particular goods or services.
The commencement of use of the words “Cracker Barrel” by the Complainant in the United States predates, by decades, the registration of the Disputed Domain Name.
In the absence of any explanation from the Respondent, the Panel accepts the Complainant’s arguments that the Respondent could not have any legitimate interest in the Disputed Domain Name.
Registration and use in bad faith
The list of circumstances of bad faith in paragraph 4(b) of the UDRP is non-exclusive (see Telstra Corporation Ltd. v. Nuclear Marshmallows WIPO Case No. D2000-0003; Club Méditerranée S.A. v. Clubmedical WIPO Case No. D2000-1428; and Time Inc. v. Chip Cooper WIPO Case No. D2000-1342). In this matter, the Panel is satisfied, principally from the facts that:
(a) the Respondent registered the Domain Name well after the Complainant commenced use of its trademarks incorporating the words “Cracker Barrel”;
(b) the Respondent has recorded or maintained a false or incomplete address in the WhoIs details recorded by the Registrar;
(c) in the absence of any evidence, there is no reason to believe that a Malaysian resident would be aware of the Complainant or its reputation. However, in this case it has been established that the Respondent has engaged in a long and persistent business of typo-squatting. It is a reasonable conclusion, therefore, that in this case the selection of the Disputed Domain Name was not a mere coincidence but part of the same course of conduct on the part of the Respondent. Furthermore, it is more likely than not that the Respondent chose the Disputed Domain Name because he was aware of the Complainant and its reputation; and
(d) the use of the Disputed Domain Name to divert internet users to a third party website for the purpose of deriving commercial benefit from “pay per click” revenues, when based upon an improper use of a trademark belong to the Complainant qualifies as registration and use in “bad faith” within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
The Panel therefore concludes that the Respondent registered and has been using the Disputed Domain Name in bad faith.
For all the foregoing reasons, the Panel orders in accordance with paragraphs 4(i) of the Policy and 15 of the Rules that the Disputed Domain Name <crackerbarrell.com> be transferred to the Complainant.
William P. Knight
Dated: July 26, 2011