WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Buffalo Wild Wings, Inc. v. Paydues Inc.
Case No. D2012-0319
1. The Parties
The Complainant is Buffalo Wild Wings, Inc. of Minneapolis, Minnesota, United States of America, represented by Fredrikson & Byron, United States of America.
The Respondent is Paydues Inc. of Santa Fe, New Mexico, United States of America.
2. The Domain Names and Registrar
The disputed domain names <buffalowildwingsfranchise.com> and <buffalowildwingsfranchise.net> are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2012. On February 16, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On February 16, 2012, GoDaddy.com, LLC 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 February 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on March 14, 2012.
The Center appointed Dennis A. Foster as the sole panelist in this matter on March 20, 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 is a United States of America company that is an owner and franchiser of restaurants throughout that country and in some other counties. Since at least 1997, the Complainant has used the BUFFALO WILD WINGS service mark in conjunction with its operations and has valid registrations with the United States Patent and Trademark Office (“USPTO”) for that mark (e.g., Registration No. 2,239,550; issued April 13, 1999).
The Respondent is the registered owner of the disputed domain names, <buffalowildwingsfranchise.com> and <buffalowildwingsfranchise.net>, which were registered, respectively, on April 13, 2011 and July 7, 2011. The Respondent uses the disputed domain names to host websites that purport to provide information regarding the licensing of franchises from the Complainant, and attempt to gather personal information from Internet users for that purpose.
5. Parties’ Contentions
The Complainant is one of the fastest growing restaurant chains in the United States and has more than 820 sites in operation worldwide, the majority of which are owned by franchisees. The Complainant has used the BUFFALO WILD WINGS service mark in connection with its business since at least 1997.
The Complainant owns several USPTO registrations for its BUFFALO WILD WINGS and related marks. In addition, the Complainant markets, promotes and sells some of its goods and services through its online website found at “www.buffalowildwings.com”.
The disputed domain names, <buffalowildwingsfranchise.com> and <buffalowildwingsfranchise.net>, are nearly identical and confusingly similar to the BUFFALO WILD WINGS mark. The names fully incorporate the marks, and the addition of the word “franchise” is inconsequential as a means of distinction. The additional term is descriptive of the Complainant’s business – as the Complainant licenses franchises – thereby exacerbating the confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is in no way affiliated with the Complainant, and the Complainant has granted the Respondent no license to use the Complainant’s mark. Without the Complainant’s authorization, the Respondent uses the disputed domain names for websites that purport to solicit franchisees on behalf of the Complainant.
The Respondent is not commonly known as either of the disputed domain names. Using the Complainant’s marks and logos to create an aura of affiliation, the Respondent’s websites are apparently involved in “phishing” for personal data about Internet users under the guise of providing franchise information. Such action is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names.
The disputed domain names were registered and are being used in bad faith. The Respondent had actual knowledge of the Complainant’s marks as evidenced by use of the Complainant’s distinctive black and yellow logos on the Respondent’s websites. Moreover, the Respondent is a serial offender of the Policy, having been cited as such in at least one prior UDRP decision and having been ordered to transfer domain names in several other such cases.
The Respondent has used the disputed domain names to host websites designed to intentionally disrupt the Complainant’s business by including unauthorized references to possible franchise opportunities with the Complainant. Furthermore, the Respondent has attempted to gain commercially by creating a likelihood of confusion as to the source, affiliation, sponsorship or endorsement of the Respondent’s websites with respect to the Complainant and/or its marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i) – (iii), the Panel shall find that the Complainant has prevailed in these proceedings and should be granted a transfer of the disputed domain names, <buffalowildwingsfranchise.com> and <buffalowildwingsfranchise.net>, provided the Complainant can demonstrate that:
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has furnished ample evidence to the Panel of valid registrations with the USPTO for the BUFFALO WILD WINGS service mark, and thus the Panel concludes that the Complainant has demonstrated sufficient rights in that mark. See Motorola Trademark Holdings, LLC v. PeaceSearch.com, Ltd., WIPO Case No. D2011-2033 (“The Panel finds that Complainant has presented sufficient evidence of its trademark registrations to establish rights in its marks under Policy paragraph 4(a)(i).”); and Bloomberg L.P. v. Brian Johnston, NAF Claim No. FA760084 (“Complainant has established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office…).
Both of the disputed domain names, <buffalowildwingsfranchise.com> and <buffalowildwingsfranchise.net>, add merely the generic Top Level Domain (gTLD) suffixes “.com” and “.net” (which offer no material distinction for Policy purposes) and the generic term “franchise” to the Complainant’s complete service mark, BUFFALO WILD WINGS. Moreover, that generic term is very descriptive of the Complainant’s restaurant business, as the Complainant offers franchise licensing opportunities to authorized entities. Thus, the Panel believes that the inclusion of the term “franchise” increases, not diminishes, the confusing similarity between the disputed domain names and the Complainant’s mark. For these reasons, the Panel finds that those names are confusingly similar to that mark. See, Two Men and a Truck / International, Inc. v. Jason Rager / Paydues Inc., WIPO Case No. D2011-1312 (finding that <twomenandatruckfranchise.com> is confusingly similar to the TWO MEN AND A TRUCK mark.); The Gillette Company v. RFK Associates, NAF Claim No. FA492867 (“Respondent’s <duracellbatteries.com> is confusingly similar to Complainant’s DURACELL mark pursuant to Policy, Paragraph 4(a)(i), as the additions of the term “batteries,” which describes Complainant’s products, and the generic top-level domain “.com” are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); and Hickory Farms, Inc. v. Registration Private / Mihnea Constantin, WIPO Case No. D2011-2178 (“…it is well established by UDRP panels that a gTLD suffix, such as “.info”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy.”).
As a result, the Panel rules that the Complainant has proven that the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although the Policy places on the Complainant the ultimate burden of showing that the Respondent has no rights or legitimate interests in the disputed domain names, prior UDRP panels have noted the difficulty of proving that negative and have tasked complainants with establishing only a prima facie case in support of that proposition before respondents must come forward with demonstrable evidence that they possess such rights or interests. See, Diglloyd Inc. v. Rakshita Mercantile Private Limited, WIPO Case No. D2010-0741; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (“The Panel notes that Complainant bears the ‘general burden of proof’ under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests.”).
In this case, it is evident to the Panel that the Complainant has met the demands of a prima facie case, given its possession of rights in a valid service mark to which the disputed domain names are confusingly similar and Complainant’s clear assertion that no permission or license has been granted the Respondent to use that mark.
The Respondent has come forth with no evidence at all to rebut the Complainant’s prima facie case. Consequently, the Panel accepts all of the Complainant’s reasonable contentions as true. See, Hyatt Corporation v. Sinichi Akiyama, NAF Claim No. FA839408 (“In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations…”); and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (“Numerous cases under the Policy have adopted and applied the principle that a respondent’s failure to dispute the allegations of the complainant permits the inferences that the complainant’s allegations are true…”).
Therefore, the Panel believes, as contended reasonably by the Complainant, that the Respondent is using the disputed domain names for websites that feature the Complainant’s mark and offer, without authorization, franchise licensing information relating to the Complainant, beckoning Internet users to submit personal data in connection with such licensing. In the Panel’s view, this conduct is neither a “bona fide offering of goods or services” per Policy paragraph 4(c)(i) nor “a legitimate noncommercial or fair use” of those names per Policy paragraph 4(c)(iii). See, Two Men and a Truck, supra (finding non-applicability of Policy paragraphs 4(c)(i) and (iii) where the respondent used the disputed domain name for a website that included the complainant’s trademarks and the unauthorized solicitation of potential franchisees for the complainant’s business); and Mortgage Research Center LLC v. Russell Miranda, NAF Claim No. FA993017 (“Because Respondent in this case is also attempting to pass itself off as Complainant, presumably for financial gain, the Panel finds Respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Finally, there is not a scintilla of evidence in the record to support the notion that the Respondent, Paydues, Inc., is commonly known as either of the disputed domain names, <buffalowildwingsfranchise.com> or <buffalowildwingsfranchise.net>. Thus, the Panel concludes that the Complainant’s prima facie case is controlling.
Accordingly, the Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The record in this case clearly shows the Panel that the Respondent’s actions have run afoul of a number of the circumstances cited in Policy paragraph 4(b) that would give rise to a finding of bad faith registration and use of the disputed domain names, in particular including Policy paragraph 4(b)(iv). The Panel also notes that the learned panel in a prior UDRP decision, LC Trademarks, Inc. v. PayDues Inc., WIPO Case No. D2011-2125, found the Respondent to be a “serial offender” with respect to the Policy. Such serial offenses – an undeniable pattern of registering and using domain names to prevent legitimate trademark and/or service mark owners from reflecting their marks in corresponding domain names – are found by the Panel to be further evidence of bad faith registration and use of the disputed domain names under Policy paragraph 4(b)(ii). For other cases evidencing said pattern, see, Valpak Direct Marketing Systems, Inc. v. Paydues Inc., WIPO Case No. D2012-0042; Luby’s Fuddruckers Restaurants, LLC v. Paydues Inc., NAF Claim No. FA1421339; Famous Dave’s of America, Inc. v. Paydues Inc., NAF Claim No. FA1420191; Batteries Plus, LLC v. Jason Rager / Paydues Inc., NAF Claim No. FA1418065; PFIP, LLC v. Paydues Inc, NAF Claim No. FA1411907; Hardee’s Food Systems, Inc., Carl Karcher Enterprises, Inc. v. Jason Rager, Paydues Inc., WIPO Case No. D2011-1905; and Two Men and a Truck, supra.
In light of the above, the Panel rules that the Complainant has demonstrated that the disputed domain names were registered and are being used in bad faith.
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 names <buffalowildwingsfranchise.com> and <buffalowildwingsfranchise.net> be transferred to the Complainant.
Dennis A. Foster
Dated: April 4, 2012