WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Applebee’s Restaurants LLC v. Whois Privacy Services Pty Ltd., Domain Hostmaster, Customer ID: 48322810485706 / Domain Administrator, DigiMedia Holding and Whois Privacy Services Pty Ltd. Domain Hostmaster, Customer ID: 69322815172352 / Yeonju Hong, Dzone, Inc

Case No. D2015-2328

1. The Parties

The Complainant is Applebee’s Restaurants LLC of Glendale, California, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.

The Respondents are Whois Privacy Services Pty Ltd., Domain Hostmaster, Customer ID: 48322810485706 of Queensland, Australia / Domain Administrator, DigiMedia Holding of Panama City, Panama and Whois Privacy Services Pty Ltd. Domain Hostmaster, Customer ID: 69322815172352 of Queensland, Australia / Yeonju Hong, Dzone, Inc of Gwangju, Republic of Korea. For the reasons set out in section 5.A. below, for the purposes of the decision, the Panel will refer to the Respondents as a single Respondent.

2. The Domain Names and Registrar

The disputed domain names <applebeesrestaurant.com> and <applebeesrestaurants.com> (the “Domain Names”) are registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2015. On December 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 23, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 31, 2015.

The Center verified that the Complaint together with the amended 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 proceedings commenced on January 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2016.

The Center appointed Nicholas Smith as the sole panelist in this matter on February 4, 2016. 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 company that manages a chain of casual and family dining restaurants which operate around the world under the name Applebee’s. The Applebee’s chain consists of over 2000 full service restaurants operating in 49 states in the United States and 16 additional countries. The Applebee’s name has been used by the Complainant since 1983 and has featured in significant advertising. The Complainant also promotes its services from its website at “www.applebees.com” (the “Complainant’s Website”).

The Complainant holds numerous trade mark registrations for the term “Applebee’s” (the “APPLEBEE’S Mark”) since at least 1995 with a first use in commerce of 1983. Its trade mark registrations for the APPLEBEE’S Mark cover a range of restaurant services and include registrations in a large number of countries around the world, including the United States, the European Union, China and Australia.

The Domain Name <applebeesrestaurant.com> was created on November 27, 2005. It currently resolves to a portal site (the “Respondent’s First Website”) that provides a number of links under various headings including “Applebees Menu” and “Applebees Coupon”. The Domain Name <applebeesrestaurants.com> was created on January 27, 2013. It currently resolves to a portal site (the “Respondent’s Second Website”) that is stylistically identical to the Respondent’s First Website, and provides a number of links under various headings including “Applebees Restaurant Menu” and “Applebees com”. At the top of the site are the words “Buy this Domain”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Names are identical or confusingly similar to the Complainant’s APPLEBEE’S Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

The Complainant is the owner of the APPLEBEE’S Mark. It owns trade mark registrations for the APPLEBEE’S Mark in various jurisdictions around the world and has promoted the APPLEBEE’S Mark extensively.

The Domain Names contain the APPLEBEE’S Mark plus the highly descriptive terms “restaurant” or “restaurants”. The use of a federally registered mark along with a dictionary word does not avoid the likelihood of confusion. Moreover, the addition of the highly descriptive terms, “restaurant” and “restaurants,” may increase confusion between the Domain Names and the Complainant because the Complainant is in the business of providing restaurant services. The Domain Names are confusingly similar to the APPLEBEE’S Mark.

The Respondent has no rights or legitimate interests in the Domain Names. The Respondent has no trade mark rights or licence to use the APPLEBEE’S Mark, nor is it commonly known by the name. The Respondent has not used or made preparations to use the Domain Names in connection with a bona fide offering of goods and services, nor is the Respondent making a legitimate noncommercial or fair use of the Domain Names. The Domain Names lead to parking websites that feature sponsored links related to the Complainant and links related to the competitors of the Complainant.

The Domain Names were registered and are being used in bad faith. The Respondent registered and used the Domain Names with full knowledge of the Complainant’s APPLEBEE’S Mark and that it is used for restaurant services. The Respondent aims to divert traffic from Internet users interested in accessing the Complainant’s services and receives revenue for this purpose. Registering and using a domain name to attract consumers for commercial gain through hyperlinks that confuse Internet users into associating that domain name with a complainant’s business demonstrates bad faith. See AltaVista Co. v. Krotov, WIPO Case No. D2000-1091. The Respondent has registered and used the Domain Names in bad faith by registering the Domain Names while being aware of the Complainant’s rights and then using the Domain Names for financial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Consolidation of Proceedings

The named registrant of the Domain Name <applebeesrestaurant.com> is Whois Privacy Services Pty Ltd., Domain Hostmaster, Customer ID: 48322810485706 / Domain Administrator, DigiMedia Holding. The named registrant of the Domain Name <applebeesrestaurants.com> is Whois Privacy Services Pty Ltd. Domain Hostmaster, Customer ID: 69322815172352 / Yeonju Hong, Dzone, Inc. UDRP Proceedings are normally brought against a single Respondent. However, as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16, it is permissible to consolidate a proceeding against more than one named Respondent if (i) the domain names or the websites to which they resolve are subject to common control and (ii) the consolidation would be fair and equitable to all parties.

Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against each of the named registrants. Each of the Domain Names is registered with the same registrar and resolves to websites that are stylistically identical to one another. The Panel has received no objection from the Respondent to the consolidation of the proceedings requested by the Complainant. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all parties. As such, for the purposes of the decision, the Panel will refer to the named registrants of the Domain Names as a single Respondent.

B. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the APPLEBEE’S Mark, having registrations for APPLEBEE’S as a trade mark in the United States and various locations around the world.

The Domain Names consist of the APPLEBEE’S Mark with the removal of the apostrophe and the addition of either “restaurant” or “restaurants”. The addition of the descriptive terms “restaurant” or “restaurants” does not operate to prevent a finding of confusing similarity between the APPLEBEE’S Mark and the Domain Names, especially in circumstances where the Complainant provides restaurant services. Nor does the removal of the apostrophe, which for technical reasons cannot be a part of a domain name, operate to distinguish the Domain Names from the APPLEBEE’S Mark. The Panel finds that the Domain Names are confusingly similar to the Complainant’s APPLEBEE’S Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the APPLEBEE’S Mark or a mark similar to the APPLEBEE’S Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar names. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.

The Respondent has used the Domain Names to operate websites that make reference to the Complainant and then contain a number of sponsored links to third party commercial sites that offer services that compete with the Complainant. It is likely that the Respondent receives revenue from people who mistakenly visit its Websites and click on these links. This activity does not amount to a bona fide offering of goods or services.

The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct demonstrates a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or

(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark 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 Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the APPLEBEE’S Mark at the time the Domain Names were registered. The Respondent’s Websites make reference to the Complainant. Both the Respondent’s Websites and the Domain Names themselves indicate awareness that the Complainant operates restaurants under the APPLEBEE’S Mark. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Names were registered other than by reference to the Complainant. The registration of the Domain Names in awareness of the Complainant and the rights it had at the time in the APPLEBEE’S Mark and the absence of rights or legitimate interests in the Domain Names amount to registration in bad faith.

The Panel finds that the Domain Names were registered and are being used to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s APPLEBEE’S Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Websites. In particular the Respondent’s Websites are pages that offer sponsored-links to third-party sites. Such sites generally advertise by paying registrants on a pay-per-click basis for Internet users redirected to their sites. This means that the Respondent receives a financial reward for every Internet user redirected from the Respondent’s Websites to those third-party sites.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) 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 Domain Names, <applebeesrestaurant.com> and <applebeesrestaurants.com>, be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: February 7, 2016