World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Burger King Corporation v. Colorful Life Gerome Hofstett

Case No. D2012-0370

1. The Parties

The Complainant is Burger King Corporation of Miami, Florida, United States of America, represented by D. Young & Co., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

The Respondent is Colorful Life Gerome Hofstett of Canterbury, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bkcodes.com> is registered with Web Commerce Communications Limited dab WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2012. On February 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2012, 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 March 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2012.

The Center appointed Michael J. Spence as the sole panelist in this matter on April 5, 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 the proprietor of a trade mark with a strong international reputation in the area of food and beverage and associated products and services. The Complainant conducts various online promotional activities in order to access which a code is needed that is printed on the back of in-store purchase receipts. The Respondent conducts a website under the disputed domain name that allows Internet users to generate codes that permit them to participate in these online promotions without making an in-store purchase.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its trade mark; that the Respondent has no rights or legitimate interests in the disputed domain name; and that it was registered, and is being used, in bad faith.

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 contains the Complainant's extremely well known trade mark BK in its entirety. The addition of the generic term “codes” to a trademark in a domain name would be insufficient, in itself, to avoid a finding of confusing similarity under the first element of the UDRP. Moreover, since the website operating under the disputed domain name is addressed to consumers of the Complainants' products, even the Respondent must anticipate that at least some Internet users will find the disputed domain name identical or confusingly similar to the Complainant's trade marks.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain name.

In this case, given that the website operating under the disputed domain name operates to assist Internet users in circumventing the conditions of the Respondent's promotional schemes, and does so in order to attract users to a site that contain commercial advertising, it is impossible to conceive of any legitimate interest or right that the Respondent may have in the disputed domain name.

The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The web site operating under the disputed domain name operates to assist users in a type of fraud against the Complainant, and for commercial gain from Internet advertising. In this Panel’s view there can be few clearer cases of a domain name being registered and used in bad faith.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy

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 <bkcodes.com> be transferred to the Complainant.

Michael J. Spence
Sole Panelist
Dated: April 14, 2012

 

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