WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HBH Limited Partnership v. Paydues Inc.
Case No. D2012-0446
1. The Parties
Complainant is HBH Limited Partnership of Cincinnati, Ohio, United States of America (“U.S.”), represented by the law firm Kilpatrick Townsend & Stockton LLP, U.S.
Respondent is Paydues Inc. of Santa Fe, New Mexico, U.S.
2. The Domain Name and Registrar
The disputed domain name <honeybakedhamfranchise.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2012. On March 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 29, 2012.
The Center appointed Richard G. Lyon as the sole panelist in this matter on April 3, 2012. The Panel finds that it was properly constituted and has jurisdiction1 to decide this administrative proceeding. The Panel has submitted his 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
Complainant bakes and sells hams under the name HONEYBAKED HAM. Complainant sells many of its goods through its franchisees which in turn sell the hams at retail. Complainant holds numerous service marks registered on the principal register of the United States Patent & Trademark Office (USPTO), and in national trademark registries around the world, for HONEYBAKED HAM and variations. The earliest of these listed in the Complaint is dated 1957, and Complainant claims use in U.S. commerce since that date. Complainant uses its HONEYBAKED HAM name and mark in several domain names and actively promotes its products on the Internet. Complainant has no affiliation or contractual relationship with Respondent.
Respondent is a company apparently controlled by one Jason Rager, who is listed on the Registrar’s WhoIs page as the technical and administrative contact for the disputed domain name. The disputed domain name was registered in July 2011. The disputed domain name resolves to a webpage at which Respondent offers information about Complainant and its franchising practices. Complainant’s logo is prominently included. Readers are invited to submit personal information “to request more information about this franchise” by completing an online form. Readers are also invited to download a “Franchise Toolkit.” When a reader clicks on this tab he or she is directed to a page featuring “Jason Rager’s Franchise Analyzer Professional,” a work that may be ordered from that page.
5. Parties’ Contentions
1. Complainant has rights in HONEYBAKED HAM by virtue of its long use of that mark in commerce and its many registered service marks around the world that incorporate those words. Adding a common word, in this case “franchise,” does not obviate confusion, rather it enhances the likelihood of confusion because of Complainant’s own network of franchisees. Moreover Respondent (described as “no stranger to cybersquatting claims”) has engaged in very similar conduct in three reported UDRP proceedings, with the panels in those cases all finding the required Policy elements had been demonstrated and ordering transfer of the domain names at issue.
2. Complainant has granted Respondent no authority to use the HONEYBAKED HAM marks, and there is no indication that Respondent has been commonly known, individually or in business, by those words. Respondent’s use of the disputed domain name to advance his own commercial interests is not legitimate under the Policy.
3. Respondent’s website at the disputed domain name likewise evidences his bad faith in registration and use. Complainant’s mark is “famous” and Respondent’s use for his own commercial purposes is classic bad faith – making use of Complainant’s name and mark to create a false intimation of affiliation with Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In this Policy proceeding Complainant bears the burden of proof, by a preponderance of the evidence, to demonstrate each of the following Policy elements:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
As in any default case, Respondent’s failure to reply to the Complaint does not constitute an admission of any factual matter pleaded in the Complaint or result automatically in a transfer of the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6.
Complainant’s proof makes out a textbook example of cybersquatting – use of another’s mark in a domain name solely to attract Internet users to one’s own, unrelated commercial interests. The dominant feature of the disputed domain name is identical to Complainant’s registered marks, Respondent has demonstrated and the record reveals no rights or legitimate interests in the disputed domain name, and the evidence furnished by Complainant demonstrates that Respondent falls clearly within the examples of bad faith set out in paragraphs 4(b)(ii) and 4(b)(iv) of the Policy. The cases cited by Complainant, and others found by the Panel,2 involve conduct identical to what Complainant objects to here, other than selecting and making unauthorized use of another prominent franchisor’s registered mark. Seven cases involving such brazen conduct are in this Panel’s opinion sufficient to constitute the “pattern” required under paragraph 4(b)(ii).
Continuous use of Complainant’s name and logo at the website to which the disputed domain name resolves since registering the disputed domain name indicates Respondent’s knowledge of Complainant and its marks, so there is no question that Respondent both registered and used the disputed domain name 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 domain name <honeybakedhamfranchise.com> be transferred to Complainant.
Richard G. Lyon
Dated: April 8, 2012
1 The Center’s records indicate that the Complaint was delivered to Respondent by courier service, so there is no issue of jurisdiction. Rules, paragraph 2(a).
2 LC Trademarks, Inc. v. PayDues Inc., WIPO Case No. D2011-2125 (<littlecaesarsfranchise.com>); Two Men and a Truck / International, Inc. v. Jason Rager / PayDues Inc., WIPO Case No. D2011-1312 (<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., NAF Claim No. FA1112001418065 (<batteriesplusfranchise.org>); Buffalo Wild Wings, Inc. v. Paydues Inc., WIPO Case No. D2012-0139 (<buffalowildwingsfranchise.com> and <buffalowildwingsfranchise.net>). But see Batteries Plus, LLC v. Jason Rager / Paydues Inc, NAF Claim No. FA1109001408552 (<batteriesplusfranchise.org>) (complaint denied).