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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

In-N-Out Burgers v. Erfan Ghalebani

Case No. DIR2017-0008

1. The Parties

The Complainant is In-N-Out Burgers of Irvine, California, United States of America ("United States"), represented Saba & Co. IP, Lebanon.

The Respondent is Erfan Ghalebani of Semnan, Islamic Republic of Iran ("Iran").

2. The Domain Name and Registrar

The disputed domain name <in-n-out.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2017. On March 3, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On March 5, 2017, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on March 8, 2017.

The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir 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 14, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2017. The Response was filed with the Center on April 2, 2017.

The Center appointed Luca Barbero as the sole panelist in this matter on April 12, 2017. 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.

The decision due date was extended to May 12, 2017.

4. Factual Background

The Complainant is an American chain of fast food restaurants with locations primarily in the American Southwest and Pacific coast. It was founded in Baldwin Park, California, in 1948 by Harry Snyder and Esther Snyder and has 300 outlets nowadays.

The Complainant has been rated as one of the top fast food restaurants in several customer satisfaction surveys, being rated as "better burger" in Zagat survey in 2009 and No. 1 in a customer satisfaction survey held by Sandelman & Associates in 2009. In 2016, Forbes magazine considered that the Complainant created a world class customer experience, a strong culture and committed employee base. The Nielsen's subsidiary, The Harris Poll, in 2016 considered the Complainant as "The Best Burger Place in the United States". According to Bloomberg, the Complainant's restaurant chain is worth roughly USD 1,1 billion.

The Complainant is the owner of the following trademark registrations:

- United States trademark registration No. 930203 for IN N OUT (word mark), registered on February 29, 1972, for services in International class 42;

- United States trademark registration No. 1031095 for IN-N-OUT BURGER (word mark), registered on January 20, 1976, for goods and services in International classes 30 and 42;

- United States trademark registration No. 1031096 for IN-N-OUT BURGER (figurative mark), registered on January 20, 1976, for goods and services in International classes 30 and 42;

- Iran trademark registration No. 229753 for IN-N-OUT BURGER (figurative mark), registered on June 27, 2015, for goods and services in classes 30 and 43.

The Complainant operates its website at the domain name <in-n-out.com>, which was registered on October 3, 1995.

The disputed domain name <in-n-out.ir> was registered by the Respondent on November 15, 2015. The disputed domain name used to resolve to a website offering the disputed domain name for sale and now resolves to a page purportedly promoting a soon to be launched advisory service in relation to electrical products.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's famous trademark as it solely incorporates the distinctive part of the Complainant's trademark IN-N-OUT BURGER, the term "burger" being a mere description of the Complainant's activity. In this regard, the Complainant claims to be commonly known as a business practice as "In-N-Out".

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name because:

- There is nothing in the WhoIs information for the disputed domain name, on the Respondent's website or in the records that demonstrates that the Respondent is commonly known by the disputed domain name;

- The Respondent is not an authorized distributor or manufacturer of the Complainant's products and there has never been any business relationship between the Complainant and the Respondent. The Complainant has not sponsored nor endorsed the Respondent's activities in any respect, and has not consented to the Respondent's use and exploitation of its trademarks in the disputed domain name or on the corresponding website;

- There is no evidence that the Respondent has used or made demonstrable 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 and services or made legitimate and noncommercial or fair use of the disputed domain name without intent to mislead consumers or harm the reputation of the Complainant's trademark.

The Complainant submits that the disputed domain name was registered and is being used by the Respondent in bad faith since:

- The Complainant's trademark has gained a strong reputation in the world and is considered as a well-known trademark;

- The circumstance that the disputed domain name is identical to the Complainant's trademark makes it more unlikely that the Respondent was not aware of the Complainant's rights;

- The Respondent is using the Complainant's trademark for its own commercial gain, as it has pointed the disputed domain name to a website where it offered the disputed domain name for sale to the highest bidder, as shown by the tag line "a good name, a good start" published therein;

- The very use of a domain name incorporating a well-known trademark where the Respondent has no connection with the product suggests opportunistic bad faith;

- The Respondent engaged in a pattern of registering domain names incorporating famous trademarks since it registered two additional domain names incorporating the trademark APPLE.

- The Respondent did not reply to the cease-and-desist letter that the Complainant addressed to the Respondent on November 26, 2016.

B. Respondent

The Respondent states that the Complainant cannot claim that its trademark IN-N-OUT is well-known in Iran as the Complainant has no active legal branches and does not provide any services under its trademarks in said country.

The Respondent claims that its reason for choosing the disputed domain name was "merely related to the beauty of words, phonetic weight and standing for 'Indoor-And-Outdoor'". It also points out that it recently decided to provide "free legal counseling services for purchasing electrical and electronic products in his field of study at university" and that, "in order to provide this service that seems necessary in Iran, when the people are intending to buy an electrical or electronic equipment and are faced with a wide range of choices, they can always ask online for help and receive advices and guidance which are totally free to make their best choice. It doesn't matter whether they buy, in their house (indoor) when shopping online or out of it (outdoor) when buying something in the market". The Respondent also states that preparatory works are being done for operationalizing a suitable website for the disputed domain name, which will be available soon instead of the current fixed page.

The Respondent denies the Complainant's allegation that it registered the disputed domain name in bad faith, and asserts that it was not aware of the Complainant's trademark at the time of the registration and until it received the email communication from the Center notifying the Complaint.

The Respondent stresses that the Complainant's trademark is not known in Iran and that the Complainant has not provided evidence to substantiate its claims on the reputation and well-known character of the trademark in said country.

The Respondent also states that no evidence has been submitted by the Complainant to demonstrate that the Respondent registered the disputed domain name for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant.

The Respondent further contends that, due to lack of awareness regarding the existence and activity of the Complainant, the Respondent did not register the disputed domain name in order to prevent the Complainant from reflecting the mark in the disputed domain name and has not registered the disputed domain name to disrupt the Complainant's activities in Iran.

The Respondent also states that it is not using the disputed domain name in bad faith as it is preparing to provide a free and legal counselling service in Iran which will be available soon at the disputed domain name, is not related to the Complainant's trademark and is a fair and noncommercial service without monetary purposes.

With reference to the cease-and-desist letter sent by the Complainant to the Respondent by email, the Respondent states that it came from an unknown and anonymous email address and the Respondent did not read it for security reasons and as it considered it as spam.

With reference to the domain names including the sign "apple" that the Respondent registered as highlighted by the Complainant, namely <apple-eshop.com> and <appleeshop.net>, the Respondent claims that they are not identical or confusingly similar to the trademark APPLE as "apple" is only used as a fruit name in them and Iran is one of the most important apple fruit producers in the world.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

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

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of valid trademark registrations for the word mark IN N OUT in the United States, for word and figurative marks IN-N-OUT BURGER in the United States and for a figurative mark IN-N-OUT BURGER in Iran.

The Panel finds that the disputed domain name is confusingly similar if not identical to the Complainant's trademark IN N OUT as it reproduces the Complainant's trademark in its entirety with the mere addition of hyphens "-", which do not prevent a finding of confusing similarity, and the country code Top-Level Domain ("ccTLD") ".ir", which is typically disregarded for purposes of comparison under the first element of the Policy. See Schneider Electric v. Bijan babanejad, WIPO Case No. DIR2017-0004.

In addition, the Panel also finds that the disputed domain name is confusingly similar to the Complainant's trademarks IN-N-OUT BURGER, as the core of the Complainant's trademark is constituted by the term "in-n-out", which is entirely encompassed and recognizable in the disputed domain name, while the term "burger" and the device elements in the Complainant's figurative trademarks can be disregarded for the purpose of this assessment.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to registered trademarks in which it has established rights as prescribed by paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Société Nestlé SA v. Kayvan Sadeghi, WIPO Case No. DIR2007-0002; MIP METRO Group lntellectual Property GmbH & Co. KG v. Masoud Ziaie Moayyed, WIPO Case No. DIR2007-0005; Kaufland Warenhandel GmbH & Co. KG v. Arash Ebrahimpour, WIPO Case No. DIR2016-0039, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0") paragraph 2.1.

In the case at hand, there is no relation between the Respondent and the Complainant and the Respondent has not obtained any authorization to use the Complainant's trademark or the disputed domain name. In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name.

According to the documents and statements submitted by the Complainant, the Respondent offered the disputed domain name for sale on the corresponding website prior to the filing of the Complaint. The Respondent did not provide any comment on said circumstance.

The Respondent argued that its selection of the disputed domain name was guided by the "beauty of words, phonetic weight and standing for 'Indoor-And-Outdoor'", claimed to have registered the disputed domain name to offer free counseling services for people intending to purchase electrical or electronic equipment, and asserted to be making preparatory works to realize a suitable website for the disputed domain name. However, the Respondent has not submitted any document to substantiate its claims besides a screenshot of the website currently displayed at the disputed domain name, which is constituted of a static web page showing the image of a young man followed by the wording "indoor and outdoor IN-N-OUT", some text in Arabic which appears to describe the Respondent's alleged advisory service and a button linked to a contact form. Moreover, the Respondent has not provided any explanations as to the reasons of its delay in activating the website at the disputed domain name, which has been registered by the Respondent since more than 17 months.

Based on the evidence on records, the Panel is more inclined to conclude that the Respondent registered the disputed domain name - confusingly similar to the Complainant's trademarks - in order to derive commercial gain than to promote a noncommercial activity like the one alleged by the Respondent and described on its website after the filing of the Complaint.

In view of the above, the Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to provide convincing elements to demonstrate its use of the disputed domain name, prior to receiving any notice of the dispute, in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent to misleadingly divert consumers for commercial gain. Rather, as further discussed below, the Panel finds that it is more likely that the Respondent put up the webpage after the notice of this proceeding as a pretext.

Therefore, the Panel finds that also the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met.

C. Registered or Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant proves that the disputed domain name was registered or is being used by the Respondent in bad faith.

In the case at hand, the Complainant stated that the Respondent registered and used the disputed domain name in bad faith. The Respondent denied the Complainant's contentions asserting that it was not aware of the Complainant's trademark rights and that the Complainant has not provided evidence of activities under its trademarks in Iran.

Based on the documents and statements submitted by the parties, the Panel finds that, on balance of probabilities, the Respondent was more likely than not aware of the Complainant's trademarks at the time of the registration of the disputed domain name, and proceeded with the registration with said trademark in mind to obtain commercial gain.

In reaching this conclusion, the Panel has considered the following circumstances: i) the core of the Complainant's trademarks is constituted by the term IN-N-OUT, which is entirely encompassed in the disputed domain name; ii) the disputed domain name is identical to the Complainant's domain name <in-n-out.com>, registered since 1995 and at which the Complainant operates its main website; iii) the disputed domain name was registered by the Respondent in 2015, a few months after the Complainant's registration of its trademark in Iran; iv) the Complainant has acquired a certain degree of notoriety as "In-N-Out", as shown by the international publications cited by the Complainant; v) the Respondent appears to be fluent in English as well as familiar with the use of the Internet, and it is very likely that it came across the Complainant and its trademarks; vi) the Complainant submitted that the Respondent was offering the disputed domain name for sale, providing evidence thereof, and the Respondent did not comment on this allegation.

The Panel finds that the Respondent also used the disputed domain name in bad faith since its prior offer for sale of the same demonstrates its intent to exploit the disputed domain name commercially. In the Panel's view, the circumstance that, after the filing of the Complaint, the Respondent changed the content of the website at the disputed domain name removing references to any offer for sale and replacing them with a description of the Respondent's asserted project to provide free advisory services in the field of electric and electronic equipment, suggests that the Respondent modified the use of the disputed domain name on purpose, after having received notice of the dispute, in an effort to build a defense in the present proceeding, claiming a legitimate noncommercial and good faith use of the disputed domain name.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name has been registered and is being used by the Respondent 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 <in-n-out.ir> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: May 12, 2017

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