WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Wendy’s Company (Wendy’s) and Quality Is Our Recipe, LLC v. Whois Protection

Case No. D2015-1355

1. The Parties

The Complainants are The Wendy’s Company (Wendy’s) and Quality Is Our Recipe, LLC (hereinafter collectively, the “Complainant”) of Dublin, Ohio, United States of America (“U.S.”), represented by Dreitler True LLC, US.

The Respondent is Whois Protection of Port Moresby, Papua New Guinea, self-represented.

2. The Domain Name and Registrar

The disputed domain name <wendysjob.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2015. On August 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2015, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on August 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2015. The Center received requests from the Respondent on August 6, 2015 and August 26, 2015 requesting the extension of the deadline to file a Response. On August 27, 2015 the Center notified the parties that the new due date for a Response was September 5, 2015. The Respondent sent an email message to the Center on September 4, 2015.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on September 11, 2015. 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 has submitted evidence that it, through Quality Is Our Recipe, LLC (a wholly owned indirect subsidiary of Wendy’s Restaurants, LLC, which is a wholly-owned subsidiary of Wendy’s), owns the following registered trademarks for use in connection with restaurant services, retail store services and branded merchandise:

WENDY’S, U.S. registration No. 911,053, registered April 6, 1971.

WENDY’S, U.S. registration No. 1,297,495, registered September 25, 1984.

WENDY’S, U.S. registration No. 1,269,515, registered March 6, 1984.

WENDY’S, U.S. registration No. 4,460,097, registered December 31, 2013.

The disputed domain name <wendysjob.com> was registered on November 27, 2006.

5. Parties’ Contentions

A. Complainant

The Wendy’s Company (“Wendy’s”) is an American international quick service chain restaurant. It is the world’s third largest hamburger quick service company with approximately 6,000 franchise and company restaurant locations worldwide. Currently, the Complainant’s restaurants can be found in 27 countries and U.S. territories worldwide, including the U.S., Canada, Indonesia, Japan, Malaysia, New Zealand, Philippines, Bahamas, Jamaica, India, United Arab Emirates, Argentina, Mexico, El Salvador, Guatemala, Honduras, Panama and Venezuela. The Complainant is a public corporation whose stock is traded on NASDAQ.

Quality Is Our Recipe, LLC is a wholly-owned indirect subsidiary of Wendy’s Restaurants, LLC, which is a wholly-owned subsidiary of Wendy’s, and is the owner of the WENDY’S trademarks. The Complainant has used WENDY’S as a trademark and service mark continuously and exclusively in connection with restaurant services and food products since at least as early as 1969 in the U.S.

The Complainant was founded by Dave Thomas who opened the first Wendy’s restaurant in Columbus, Ohio on November 15, 1969. Thomas named the restaurant after his fourth child, Melinda Lou “Wendy” Thomas. The Complainant expanded into franchising in 1972 and also aired its first television commercials that year. The commercials were broadcast locally in Ohio, and stressed the superiority of the Complainant’s food through the “Quality Is Our Recipe” slogan, which is still in use today.

In the past three years alone, the Complainant has spent in excess of USD 271 million advertising, marketing and promoting its restaurants and food items. As of December 28, 2014, the Complainant and its subsidiaries had approximately 31,200 employees, including 2,100 salaried employees and 29,100 hourly employees.

The Complainant has operated the website “www.wendys.com” since 1995. Customers going to the website can find information regarding the company’s history and products, purchase gift cards and receive coupons and information about promotional activities. There is also a link on the website to “Wendy’s Careers”, which provides lists of available jobs in a particular area and an opportunity for job-seekers to fill out and submit an online application. The Complainant also operates the website “www.wendys.jobs”, which links directly to the “Wendy’s Careers” page of the website “www.wendys.com”. There is no charge for filling out or submitting an application through the Complainant’s website.

In July 2015, the Complainant learned that a woman in Texas was under the impression that the disputed domain name belonged to the Complainant and completed the online application on the website. The woman believed that she applied for a job at a local Wendy’s restaurant. After she submitted her application she received a notification stating that she had signed up for credit monitoring, which she didn’t want. The credit monitoring company ended up charging the woman USD150. The Complainant has noted that when a job seeker starts to fill out an application, windows seeking personal information pops up. Other linked sites display Wendy’s trademarks, increasing the possibility for confusion among job seekers.

The Respondent registered the disputed domain name in an effort to capitalize on the recognition of the Complainant’s trademark and to generate income for the Respondent via click-through revenue on the many displayed links. The Respondent has registered and is using the disputed domain name in bad faith by illicitly exploiting the Complainant’s trademark for the Respondent’s pecuniary gain and by confusing and by misdirecting persons interested in applying for a job at Wendy’s to sites that collect personal information and money from them.

The Respondent’s use of the disputed domain name is neither a legitimate nor good faith use. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy.

The confusion is further exacerbated by the word “job” to the trademark, because the Complainant’s website contains a page where person interested in obtaining employment at Wendy’s can submit an application, and confused job seekers may think that a domain called <wendysjob.com> is sponsored by or affiliated with Wendy’s.

The disputed domain name incorporates the trademark WENDY’S in its entirety and it displays links to third party websites, including those offering goods and services in direct competition with Wendy’s.

From all of this evidence, the conclusion is inescapable that the Respondent registered the disputed domain name without any legitimate rights or interests and that the Respondent holds it in bad faith to profit from confused consumers who are seeking information on employment at Wendy’s.

B. Respondent

Despite given an extension of the deadline to submit a Response, the Respondent did not submit a formal Response. On September 4, 2015, the Center received an e-mail message from the Respondent stating “I agree to transfer the domain if the complainant suspends the UDRP proceeding”.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

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

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark WENDY’S. Apart from the apostrophe between the “y” and the “s”, the disputed domain name <wendysjob.com> incorporates the trademark in its entirety. Due to technical restrictions, an apostrophe cannot be used in domain names. Furthermore, the disputed domain name contains the addition of the descriptive term “job”. The ability for a descriptive term, such as “job”, to distinguish the domain name from the trademark, is limited in this case. In fact, since the Complainant provides lists of available jobs on its own websites, the addition of the term “job” may actually increase the risk of confusion.

Having the above in mind, the Panel concludes that the disputed domain name <wendysjob.com> is confusingly similar to the Complainant’s trademark WENDY’S and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating, in accordance with paragraph 4(c) of the Policy, any of the following:

(i) that it has used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or

(iii) that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has not licensed or otherwise consented to the Respondent’s use of the WENDY’S trademark in connection with the disputed domain name <wendysjob.com>, which is confusingly similar to the Complainant’s trademark. There is no evidence indicating that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute.

Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. It has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence indicating that the Respondent intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the disputed domain name was registered 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 disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) the disputed domain name has intentionally been used by the Respondent in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

The Complainant’s trademark registration predates the registration of the disputed domain name. It has been argued by the Complainant that the content on the website to which the disputed domain name resolves is misleading and confusing to consumers who are seeking information on employment at the Complainant’s business.

The evidence in the case before the Panel indicates that the disputed domain name <wendysjob.com> has intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark WENDY’S as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.

There is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has proven the requirements under paragraph 4(b) of the Policy and that the disputed domain name <wendysjob.com> has been registered and used in bad faith.

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 <wendysjob.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: September 24, 2015