World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Buffalo Wings & Rings v. Paydues Inc.

Case No. D2012-1462

1. The Parties

Complainant is Buffalo Wings & Rings of Cincinnati, Ohio, United States of America, represented by Hart Baxley Daniels and Holton, United States of America.

Respondent is Paydues Inc. of Santa Fe, New Mexico, United States of America.

2. The Domain Name and Registrar

The disputed domain name <buffalowingsandringsfranchise.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 July 18, 2012. On July 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2012, the Registrar transmitted by e-mail 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 July 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 14, 2012.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 21, 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

Complainant is the owner of registrations for the word and design service mark BUFFALO WINGS & RINGS on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 1567637, dated November 21, 1989, in international class (IC) 42, covering restaurant services, and; registration number 4170486, dated July 10, 2012, in IC 43, covering restaurant and bar services including restaurant carry out services. Each of the aforesaid registrations disclaims exclusive use of “BUFFALO WINGS” apart from the mark as shown.

Complainant uses the BUFFALO WINGS & RINGS service mark in connection with ownership and operation of restaurants, and primarily in connection with franchising restaurants in the United States and other countries. Complainant operates a commercial Internet website at “www.buffalowingsandrings.com”.

According to the registrar’s verification, Respondent is the registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on July 7, 2011.

Respondent is using the disputed domain name to direct Internet users to a website that directly incorporates Complainant’s word and design service mark. Respondent invites Internet users to submit requests for information about owning a Buffalo Wings & Rings franchise, as well as offers download of a “franchise toolkit”. Respondent’s website is designed to convey the impression that Respondent is Complainant, stating for example:

“Foundation of a successful business starts with a good thorough training. Buffalo wings [sic] and Rings operate in that philosophy and give franchises [sic] thorough training on all the major aspects of the business. The training will cover on the job training as well as classroom work.”

Respondent has been the subject of at least four previous complaints under the Policy, each involving activities similar to those that are the subject of the present Complaint, and each resulting in an order of transfer of the disputed domain name to the complainant (see La Quinta Worldwide, L.L.C. v. Paydues, Inc., WIPO Case No. D2012-0016, <laquintafranchise.net>; Valpak Direct Marketing Systems, Inc. v. Paydues Inc., WIPO Case No. D2012-0042,<valpakfranchise.com>; Buffalo Wild Wings, Inc. v. Paydues Inc., WIPO Case No. D2012-0319,<buffalowildwingsfranchise.com> and <buffalowildwingsfranchise.net>, and; HBH Limited Partnership v. Paydues Inc., WIPO Case No. D2012-0446, <honeybakedhamfranchise.com>).

The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant argues that it has rights in the BUFFALO WINGS & RINGS service mark, and that the disputed domain name is confusingly similar to that service mark.

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not affiliated with Complainant, nor has Complainant granted a license to Respondent to use its service mark; (2) Respondent is not making a legitimate noncommercial nor fair use of the disputed domain name, in particular because Respondent is using the disputed domain name to create a false aura of affiliation with Complainant, apparently for commercial gain; and (3) Respondent’s registration and use of the disputed domain name appears to be part of an established pattern and scheme to gain commercially from misuse of third-party marks.

Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent obviously knows of Complainant’s stylized service mark because it copied and used that service mark on Respondent’s website; (2) Respondent has been cited in at least four prior administrative panel decisions under the Policy that order it to transfer disputed domain names; (3) Respondent is using the disputed domain name to intentionally disrupt Complainant’s business by offering information about Complainant’s business; (4) Respondent is using the disputed domain name to direct Internet users to Respondent’s website where it is seeking to obtain personal information about such users under the false pretense of being Complainant; (5) Respondent has attempted to gain commercially by creating a likelihood of confusion with Complainant’s mark as to Complainant being the source, sponsor, affiliate or endorser of Respondent’s website; and (6) Respondent’s misuse of Complainant’s service mark is diverting potential franchisees away from Complainant.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its records of registration. Respondent did not reply to e-mail notification. The express courier delivery service engaged by the Center was apparently unable to complete physical delivery based on the address information in the record of registration. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of registration of the word and design service mark BUFFALO WINGS & RINGS on the Principal Register of the USPTO, and of use of that service mark in commerce in the United States. Respondent has not challenged Complainant’s assertion of rights in the aforesaid mark. The Panel determines that Complainant has rights in the service mark BUFFALO WINGS & RINGS.

The disputed domain name incorporates the word portion of Complainant’s service mark in its entirety, adding the term “franchise” (and converting the “&” to “and”). By adding the term “franchise” to Complainant’s service mark, Respondent has not distinguished the disputed domain name from Complainant’s service mark, particularly in light of the fact that Complainant is in the franchising business.

The Panel determines that Complainant has rights in the service mark BUFFALO WINGS & RINGS and that the disputed domain name is confusingly similar to that service mark.

B. Rights or Legitimate Interests

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not affiliated with Complainant, nor has Complainant granted a license to Respondent to use it service mark; (2) Respondent is not making a legitimate noncommercial nor fair use of the disputed domain name, in particular because Respondent is using the disputed domain name to create a false aura of affiliation with Complainant, apparently for commercial gain; and (3) Respondent’s registration and use of the disputed domain name appears to be part of an established pattern and scheme to gain commercially from misuse of third-party marks. Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent has not furnished any potential basis for establishing rights or legitimate interests in the disputed domain name, and the record of this proceeding does not suggest to the Panel any such basis.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.

This Panel finds Respondent registered the disputed domain name with obvious knowledge of Complainant’s service mark. Respondent has used Complainant’s service mark in the disputed domain name to divert Internet users to Respondent’s website for commercial gain by intentionally creating a likelihood of confusion regarding Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website. Respondent has attempted to disrupt Complainant’s business. Respondent has engaged in a pattern or practice of using the service marks of established enterprises in domain names to confusingly divert Internet users to Respondent’s websites for commercial gain. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of Paragraph 4(b) 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 <buffalowingsandringsfranchise.com> be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Dated: September 3, 2012

 

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