World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hardee’s Food Systems, Inc. v. Domains by Proxy, Inc. / Raghu Pokala

Case No. D2011-1701

1. The Parties

Complainant is Hardee’s Food Systems, Inc. of St. Louis, Missouri, United States of America (“United States”), represented by Neal & McDevitt, United States.

Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States / Raghu Pokala of Simi Valley, California, United States.

2. The Domain Name and Registrar

The Disputed Domain Name <hardeescoupons.info> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) against Domains by Proxy, Inc. on October 6, 2011. On October 7, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On October 7, 2011, GoDaddy.com, 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 Complainant on October 12, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 13, 2011.

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 Respondent of the Complaint, and the proceedings commenced on October 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2011.

The Center appointed Richard W. Page as the sole panelist (the “Panel”) in this matter on November 15, 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.

On November 28, and December 2, 2011, Respondent sent emails to the Center indicating that there would be no opposition to the transfer of the Disputed Domain Name. The Panel accepted these email as supplemental submissions and continued to issue this Decision.

4. Factual Background

Complainant owns several trademarks using HARDEE’S which have been registered with the United States Patent and Trademark Office and internationally (collectively the “HARDEE’S Mark”). The HARDEE’S Mark is used with Complainant’s restaurant services, food products and other related services.

Complainant has used the HARDEE’S Mark continuously since as early as 1960. Complainant has spent millions of dollars each year displaying, promoting and advertising the HARDEE’S Mark.

In addition, Complainant has registered numerous domain names including the phrase “hardees.”

5. Parties’ Contentions

A. Complainant

Complainant alleges that several of its registrations constituting the HARDEE’S Mark have become incontestable and that the Disputed Domain Name is confusingly similar to the HARDEE’S Mark.

Complainant alleges that Respondent has used the entirety of the phrase “hardees” in the Disputed Domain Name. The additional language of “coupons” in the food and beverage industry is descriptive and non-distinctive. The use of the suffix “.info” is required to designate a gTLD and likewise is non-distinctive.

Complainant declares that Respondent has never been given permission from Complainant to use the HARDEE’S Mark or any portion thereof for any purpose, including use in a domain name.

Complainant further alleges that Respondent has no right or legitimate interests in the Disputed Domain Name. Specifically, Respondent has (1) never been commonly known by the Disputed Domain Name, (2) never used or made preparations to use the Disputed Domain Name in any bona fide offering of goods or services and (3) is not making any noncommercial or fair use of the Disputed Domain Name.

Complainant further alleges that Respondent has registered and uses the Disputed Domain Name in bad faith, meeting the elements of the Policy, paragraph 4(b)(iv) by intentionally attempting to attract Internet users for commercial gain to Respondent’s website using the Disputed Domain Name, thus creating a likelihood of confusion with the HARDEE’S Mark.

B. Respondent

Respondent has indicated that it has no intention of contesting the transfer of the Disputed Domain Name to Complainant.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Respondent is not obliged to participate in a domain name dispute proceeding, but if it fails to do so, asserted facts that are not unreasonable would be taken as true and Respondent would be subject to the inferences that flow naturally from the reasonable information provided by Complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Claim No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Claim No. FA0094925.

In this case, Respondent has affirmatively responded that it will not challenge the allegations of Complainant or contest the transfer of the Disputed Domain Name.

While perhaps unnecessary, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the HARDEE’S Mark in which Complainant has rights;

ii) that 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.

A. Identical or Confusingly Similar

Complainant alleges that several of its registrations constituting the HARDEE’S Mark have become incontestable and that the Disputed Domain Name is confusingly similar to the HARDEE’S Mark.

Complainant alleges that Respondent has used the entirety of the phrase “hardees” in the Disputed Domain Name. The additional language of “coupons” and “.info” is non-distinctive.

Respondent has chosen not to contest these allegations. Therefore, the Panel accepts Complainant’s allegations and finds that Complainant has met the requirements of the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant further alleges that Respondent has no right or legitimate interests in the Disputed Domain Name. Specifically, Respondent has (1) never been commonly known by the Disputed Domain Name, (2) never used or made preparations to use the Disputed Domain Name in any bona fide offering of goods or services and (3) is not making any noncommercial or fair use of the Disputed Domain Name.

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

Respondent has chosen not to rebut the allegations of Complainant. Therefore, the Panel accepts Complainant’s allegations and finds that Complainant has met the requirements of the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant further alleges that Respondent has registered and uses the Disputed Domain Name in bad faith, meeting the elements of the Policy, paragraph 4(b)(iv) by intentionally attempting to attract Internet users for commercial gain to Respondent’s website using the Disputed Domain Name, thus creating a likelihood of confusion with the HARDEE’S Mark.

Respondent has chosen not to contest these allegations. Therefore, the Panel accepts Complainant’s allegations and finds that Complainant has met the requirements of the Policy, paragraphs 4(b)(iv) and 4(a)(iii)

7. Decision

For 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 <hardeescoupons.info> be transferred to Complainant.

Richard W. Page
Sole Panelist
Dated: November 30, 2011

 

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