World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hardee’s Food Systems, Inc. v. Morgan Kelsey

Case No. D2011-1757

1. The Parties

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

The Respondent is Morgan Kelsey of Connecticut, United States.

2. The Domain Name and Registrar

The disputed domain name <hardees-menu.com> is registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2011. On October 17, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On October 20, 2011, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 October 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2011.

The Center appointed Richard Hill as the sole panelist in this matter on November 23, 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 Complainant owns various registered trademarks for HARDEE’S.

The Complainant uses those well-known marks to market food products.

The Respondent is using the disputed domain name to point to a website containing links to competitors of the Complainant.

The Respondent does not have any licenses or other authorization from the Complainant to use the Complainant’s marks.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it is the owner of a famous family of HARDEE’S trademarks in the United States and internationally, comprising numerous registered marks. The marks are used in connection with restaurant services, food products and related services.

The Complainant states that it has spent millions of dollars each year displaying, promoting, and advertising its marks. As a result of these efforts, the Complainant is one of the United States’ leading restaurant and food product companies, and it is well-known internationally.

According to the Complainant, the Respondent’s disputed domain name is confusingly similar to its trademark, because it incorporates the mark in its entirety with the addition of the word “menu”. The presence of this term does nothing to differentiate the disputed domain name registration from the Complainant’s mark. The Complainant cites UDRP case law to support its position.

The Complainant alleges that the Respondent is not commonly known by the disputed domain name and has no rights or legitimate interests in the disputed domain name.

Further, says the Complainant, the Respondent is blatantly using the disputed domain name with intent for commercial gain and to misleadingly divert consumers. The Respondent’s website features various hyperlinks that divert consumers to sites that are not associated with the Complainant, as well as hyperlinks to numerous competitors of the Complainant. The Respondent has acquired the disputed domain name with no apparent intention of utilizing the disputed domain name in connection with the provision of legitimate goods or services.

According to the Complainant, by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’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. The website appears to be designed to present Internet users with sponsored links containing advertisements for other companies and the Respondent potentially derives revenue from “click-through” from confused web users who were looking for information about the Complainant or its products. The Complainant cites numerous UDRP precedents to support its position.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is obviously confusingly similar to the Complainant’s mark HARDEE’S. The Panel notes the cases cited by the Complainant to support this point and agrees that those citations are appropriate (see also paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

B. Rights or Legitimate Interests

The Respondent does not have any license or other authorization to use the Complainant’s mark. The Respondent is using the disputed domain name to operate a website offering click-through advertising links to competitors of the Complainant.

The Panel finds that the Respondent is redirecting Internet users interested in the Complainant’s products and services to its own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See The Royal Bank of Scotland Group plc, Direct Line Insurance plc, and Privilege Insurance Company Limited v. Demand Domains, c/o C.S.C.,NAF Claim No. 0714952 (finding that the operation of a commercial web directory displaying various links to third party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii), as the respondent presumably earned “click through” fees for each consumer it redirected to other websites) and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; see also Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404 and Damien Persohn c/o CPPD SAS / Têtu v. Joshua Lim c/o Webxel Consulting Pte Ltd, NAF Claim No. 0874447 (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click through fees” in the process).

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

It is clear that the Respondent must have been aware of the Complainant’s marks when it registered and started using the disputed domain name because its website refers to the Complainant’s products and because the Complainant’s mark is well-known.

The Respondent (who did not reply) has not presented any plausible explanation for its use of the Complainant’s mark. In accordance with the Rules, paragraph 14(b), the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when it registered the disputed domain name.

Indeed the Respondent’s actual use of the disputed domain name (as noted above) is clearly not bona fide, because the Respondent operates a website that offers links to competitors of the Complainant. This indicates that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and the Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Zee TV USA, Inc. v. Aamir Siddiqi c/o DotCorner.com, NAF Claim No. 0721969 (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third party websites that offered services similar to those offered by the complainant) and Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396; see also McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353 and The Association of Junior Leagues International Inc. v. This Domain Name My Be For Sale c/o Legend .name, NAF Claim No. 0857581 (holding that the respondent’s use of the disputed domain names to maintain pay-per-click websites displaying links unrelated to the complainant and to generate click through revenue suggested bad faith registration and use under Policy paragraph 4(b)(iv)).

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 <hardees-menu.com> be transferred to the Complainant.

Richard Hill
Sole Panelist
Dated: November 30, 2011

 

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