WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CFA Properties, Inc. v. Domains by Proxy, LLC / John Selvig

Case No. D2012-1617

1. The Parties

Complainant is CFA Properties, Inc. of Wilmington, Delaware, United States of America, represented by Troutman Sanders LLP, and United States of America.

Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / John Selvig of Brooklyn, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <chick-fil-afoundation.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 August 10, 2012. On August 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 17, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 22, 2012.

The Center verified that the Complaint together with the amendment to 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 August 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 14, 2012.

The Center appointed M. Scott Donahey as the sole panelist in this matter on October 1, 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.

On October 10, 2012, the Panel issued its Administrative Panel Procedural Order No. 1. That Order provided:

“The Panel has determined that it will accept Complainant’s supplemental filing in WIPO Case No. D2012-1618 and consider it also in relation to D2012-1617. Accordingly Respondent will have until October 30, 2012 to file any supplemental response. The content of the supplemental response is to be limited to points raised in the supplemental filing submitted by Complainant and also will be considered in relation to both cases.

The Panel hereby extends the Decision due date in both cases to November 19, 2012.”

In its “Clarification” filed October 15, 2012, in response to Administrative Panel Procedural Order No. 1, Complainant indicated that it did not intend to file an additional submission in relation to WIPO Case No. D2012-1617, and that its Additional Submission filed September 28, 2012 related only to WIPO Case No. D2012-1618.

In Respondent’s Supplemental Response, filed October 30, 2012, although Respondent failed to identify the Case Number or Numbers to which it’s Response applied, Respondent identified only the domain name <chickfilafoundation.com>, which is the subject of WIPO Case No. D2012-1618, and Respondent’s arguments all concerned the web site to which that domain name resolves.

It has been necessary to extend the Decision due date in this case to the date indicated under paragraph 7 below.

4. Factual Background

Complainant is the registrant of the stylized and well-known CHICK-FIL-A mark. The earliest of the numerous registrations with the United States Patent and Trademark Office (“USPTO”) issued October 15, 1974. The CHICK-FIL-A mark has been in continuous use in connection with restaurants and the products served in those restaurants since 1964. The products and restaurants have been promoted on the “www.chick-fil-a.com” web site operated by Complainant since October 25, 1995.

Respondent registered the domain name at issue on November 30, 2011. The WhoIs lookup listed Domains By Proxy, LLC, a well-known privacy service as the registrant, but the Registrar informed the Center that the actual registrant was one John Selvig, which resulted in an amendment to the Complaint, adding John Selvig as a Respondent. Respondents are referred to herein, jointly and severally, as “Respondent”. The disputed domain name resolves to the “In your Community” web page on Complainant’s web site maintained at “www.chick-fil-a.com”.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to its CHICK-FIL-A registered trademark and service mark, in that it consists of the same spelling with the addition of the English word “foundation”. Complainant further alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name, since Respondent does not produce, distribute, or sell any goods or services under Complainant’s mark, is not making a bona fide offering of goods or services using the mark, and has never been commonly known by the terms used in the disputed domain name. Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith since it was registered years after Complainant registered and used the famous marks, and Respondent’s simultaneous registration of the <chickfilafoundation.com> domain name (subject to WIPO Case No. D2012-1618) and its use to resolve to a web site on which Complainant’s famous stylized trademark is featured prominently shows that Complainant was well aware of Complainant’s marks and its use in Complainant’s business at the time the disputed domain name was registered.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “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:

1. that the domain name registered by the respondent is identical or confusingly similar to a trademark or

service mark in which the complainant has rights; and;

2. that the respondent has no rights or legitimate interests in respect of the domain name; and,

3. that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name, consisting of Complainant’s distinctive trademark and service mark and the word “foundation”, descriptive of a private philanthropic organization, is confusingly similar to Complainant’s CHICK-FIL-A trademark and service mark. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a/ Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

B. Rights or Legitimate Interests

The consensus view of UDRP panels concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), Section 2.1.

In the present case the Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights or legitimate interests.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

In the present case, Respondent registered the disputed domain name several decades after Complainant had registered its widely known trademark and service mark. On the same date that Respondent registered the disputed domain name, it registered an almost identical domain name and used it to resolve to a web site that was apparently intended to parody Complainant and its views (see CFA Properties, Inc. v. Domains By Proxy, LLC and John Selvig, WIPO Case No. D2012-1618; such intent is significant regardless of whether the criteria for any affirmative safe-harbor parody defense under the second element of the Policy have been met). Complainant has openly opposed the rights of gay and lesbian couples to marry and has espoused a “family values” approach to traditional marriage. Respondent has been using the disputed domain name to resolve to a page on Complainant’s web site.

There is no material evidence before the Panel to indicate that Respondent has attempted to profit from the use of either the disputed domain name or the almost identical domain name that resolves to the attempted parody web site. This demonstrates both that Respondent was well aware of Complainant’s widely known mark at the time it registered the disputed domain name, and indicates a lack of any evidenced Respondent intent to realize commercial gain from the use of the trademark in the domain names, nor from the web sites to which each resolves.

While the circumstances indicative of bad faith under the Policy are not exclusive, it is still generally incumbent on Complainant to show by a preponderance of the evidence that Respondent registered and is using the domain name in bad faith. In this regard, in so far as other typical exemplars of bad faith may be concerned, the Panel notes there appears to be no evidence of any offer by Respondent to sell the disputed domain name to the Complainant for an exorbitant sum, or of any pattern or history indicating Respondent is a serial cybersquatter. There is also the possibility that Respondent’s current use of the disputed domain name in this present proceeding to resolve to Complainant’s website could be regarded in some way as an abusive form of passive holding (although of course any resulting redirection of Internet user traffic directly to Complainant’s own website would not necessarily be to Complainant’s detriment in that sense).

In any event, under the principles first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, “the requirement in paragraph 4(a)(iii) that the domain name ‘has been registered and is being used in bad faith’ will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith.” (Emphasis in original). In finding that the respondent’s conduct in that case, where the respondent failed to use the domain name at all, constituted bad faith passive use, the eminent panel cited five circumstances on which the panel relied:

1. That the complainant’s trademark had a strong reputation and was widely known;

2. That the respondent failed to provide any evidence of contemplated good faith use by it of the domain name;

3. That the respondent had taken active steps to conceal its true identity, by operating under a name that was not a registered business name;

4. That the respondent had actively provided, and failed to correct, false contact details, in breach of the registration agreement, and

5. That taking into account all of the above, it was not possible to conceive of any plausible actual or contemplated active use of the domain name that would be legitimate and would not constitute passing off or an infringement of the complainant’s trademark rights.

While in the current case Complainant’s trademark has a strong reputation and is widely known, not all of the other factors cited by the panel in Telstra seem to be present here.

Firstly, in contrast to the situation in Telstra, the disputed domain name resolves to a web page on Complainant’s own web site. Secondly, although each case needs to be decided on its own merits, it is nevertheless noteworthy that Respondent’s use of a similar domain name registered on the same date (see, CFA Properties, Inc. v. Domains By Proxy, LLC and John Selvig, WIPO Case No. D2012-1618) resolves to a web site at which Respondent attempts to parody Complainant’s views on gays, lesbians, bisexuals, and transsexuals. Thus, in contrast to Telstra, this Panel finds it quite possible to conceive of a plausible contemplated use of the presently disputed domain name in that light. Third, while Respondent did employ a privacy service in the present case, panels have held that the use of a privacy service can be for legitimate purposes, and, where, as in the present case, the Registrar promptly notified the Center of the true identity and address of the registrant, it cannot be said that Respondent took steps to actively conceal his identity, nor did Respondent fail to provide true contact details to the Registrar.

The essence of bad faith under the Policy is using confusion with the owner’s trademark in order to profit from the goodwill created by the trademark owner in the owner’s mark, and having regard to the above-described circumstances, the Panel finds sufficient indicia of such motive to be lacking on the present record.

Accordingly, in light of all of the facts and circumstances in this case, the Panel finds on balance that the disputed domain name has not been shown in these Policy proceedings to have been registered and used in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

M. Scott Donahey
Sole Panelist
Dated: November 30, 2012