WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LC Trademarks, Inc. v. PayDues Inc.
Case No. D2011-2125
1. The Parties
The Complainant is LC Trademarks, Inc. of Detroit, Michigan, United States of America, represented by Harness, Dickey & Pierce, P.L.C., United States of America.
The Respondent is PayDues Inc. of Santa Fe, New Mexico, United States of America.
2. The Domain Name and Registrar
The disputed domain name <littlecaesarsfranchise.net> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2011. On December 6, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On December 6, 2011, 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. On the same date, the Complainant filed a revised Complaint.
The Center verified that the Complaint together with the revised 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 December 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2012.
The Center appointed Dana Haviland as the sole panelist in this matter on January 10, 2012. 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 LC Trademarks, Inc. has provided evidence of its ownership of the registered trademark and service mark LITTLE CAESARS, pursuant to United States Reg. No. 842596, issued January 16, 1968, for restaurant services and United States Reg. No. 2036763, issued February 11, 1997, for “pizza [and certain other food items] for consumption on or off the premises” (together, the “Mark”).
The Complainant has also provided evidence of an agreement dated March 29, 2000 whereby it has granted an exclusive license of the LITTLE CAESARS Mark, inter alia, to Little Caesars Enterprises, Inc. (the “Licensee”), and evidence of the Licensee’s use of the Mark for a chain of Little Caesars pizza restaurants owned and franchised by the Licensee for many years throughout the United States and in other countries. The Licensee also operates a web site utilizing the Mark at “www.littlecaesars.com”, providing information about its products, store locations, menu and franchising opportunities.
The Domain Name was registered by the Respondent on July 7, 2011. As shown in the exhibits to the Complaint, the Respondent’s Domain Name website offers information about Little Caesars pizza restaurant franchises, including franchise programs for veterans and minorities, and invites interested persons to receive more information about these franchises by filling out an application form requiring their names, addresses, email addresses, phone numbers, and other personal and financial information.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is identical or confusingly similar to a registered trademark in which it has rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name incorporates the Complainant’s LITTLE CAESARS Mark in its entirety and merely adds the generic word “franchise”, a term that relates directly to how Complainant’s Licensee operates its Little Caesars restaurant business. Under paragraph 4(a)(i) of the Policy, a domain name is confusingly similar to a mark where the domain name fully incorporates the mark and simply adds a generic term that does not negate the confusing similarity. See Chicago Pneumatic Tool Company LLC v. Tool Gopher, WIPO Case No. D2007-0330)(<chicagopneumatictools.com> confusingly similar to CHICAGO PNEUMATIC trademark); Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555 (<shawrugsonline.com> confusingly similar to SHAW RUGS trademark). And where, as here, the added generic term is related to the Complainant’s business, the confusing similarity is reinforced. See, e.g., Two Men and a Truck / International, Inc. v. Jason Rager / PayDues Inc., WIPO Case No. D2011-1312 (<twomenandatruckkfranchise.com> registered by the same respondent as in the instant case, confusingly similar to the TWO MEN AND A TRUCK trademark).
The Panel finds that the Domain Name is confusingly similar to the Complainant’s Mark in which the Complainant has prior rights, and that the Complainant has thus established the first element, pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not responded to the Complaint and has provided no evidence in opposition to Complainant’s allegations or in support of any rights or interests described in the three above subparagraphs of paragraph 4(c) of the Policy, or any other right or interest in the Domain Name. “[W]here Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the respondent.” Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416.
The records do not reflect that the Respondent has been commonly known by the Domain Name. The Complainant asserts that neither it nor its exclusive Licensee has licensed or otherwise allowed the Respondent to use the Mark for the Domain Name or for providing Little Caesars franchising information or for any other purpose. In view of this unrefuted evidence, Respondent’s use of the Domain Name web site for solicitation of personal information from Internet users interested in a Little Caesars restaurant franchise negates any inference that the Respondent is using the Domain Name in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use.
The Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name, and that the Complainant has satisfied the second element in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive examples of circumstances which, if proven, shall be evidence of the registration and use of a domain name in bad faith, including, in subparagraph 4(b)(iv):
“by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.”
Without any apparent right or legitimate interest whatsoever in the Complainant’s Mark or the Little Caesars pizza restaurant franchise business for which the Mark has been exclusively licensed to the Licensee, the Respondent is nevertheless using the Complainant’s Mark, both in the Domain Name and throughout the website to which the Domain Name resolves, for the purpose of soliciting personal and financial information from Internet users interested in a Little Caesars pizza restaurant franchise. This “phishing” use of the Mark by Respondent is, in this Panel’s view, obviously done with full knowledge of Complainant’s rights to the Mark prior to the registration of the Domain Name; with the intention of creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Domain Name website and the products and services on that website; and in anticipation of commercial gain, either from the interested Internet users themselves or from third parties to whom the Respondent may sell the personal and financial information of the individuals who fill out the Respondent’s website form. The registration and use of the Domain Name are thus both in bad faith. See Batteries Plus, LLC v. Jason Rager / Paydues Inc., NAF Claim No. FA1112001418065.
The Panel notes also that the Respondent is a serial offender with respect to the bad faith registration and use of domain names incorporating well known trademarks and the word “franchise”, as evidenced by transfer decisions rendered against the Respondent in other recent UDRP cases. See, e.g., Two Men and a Truck / International, Inc. v. Jason Rager / PayDues Inc., supra (<twomenandatruckfranchise.com>); Hardee’s Food Systems, Inc., Carl Karcher Enterprises, Inc. v. Jason Rager, Paydues Inc., WIPO Case No. D2011-1905 (<carlsjrfranchise.org> and <hardeesfranchise.org>); PFIP, LLC v. Paydues Inc., NAF Claim No: FA1110001411907 (<planetfitnessfranchise.net>); Batteries Plus, LLC v. Jason Rager / Paydues Inc., supra (<batteriesplusfranchise.org>).
The Panel finds that the Complainant has established the Respondent’s registration and use of the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy, and that the Complainant has therefore satisfied the third element of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <littlecaesarsfranchise.net> be transferred to the Complainant.
Dated: January 24, 2012