WIPO Domain Name Decision: DRO2008-0012

1.1 The Complainant is Burger King Corporation, of Miami, Florida, United States of America, represented by CMS Cameron McKenna, Romania.

2.1 The disputed Domain Names <burger-king.ro>, <burgerking.ro> and <whopper.ro> (the “Domain Names”) are all registered with RNC.ro (the “Registrar”).

3.1 The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2008. On July 10, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names at issue. On July 11, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant in respect of all of the Domain Names and providing contact details. However, the Registrar also responded that the language of the relevant registration agreements was Romanian.

3.2 As the Complaint had been submitted in English, on July 18, 2008 the Center forwarded a notice to the Complainant stating that the complainant should (a) provide evidence of an agreement between the parties that proceedings be English; (b) translate the Complaint into Romanian; or (c) submit a request that English be the language of the proceedings.

3.3 On July 22, 2008 the Complainant submitted a request that the proceedings be in English. The basis for that request was that (a) the Complainant was head-quartered in the United States of America; and (b) at that time only one Romanian speaking panelist was listed on the Center's website as a potential panelist in these proceedings and the Complainant had chosen a three person panel. However, at the same time it stated that it would submit a Romanian translation of the Complaint and this was done shortly thereafter.

3.4 On July 24, 2008 the Center sent an email to the parties in which it informed the Respondent that if the Respondent intended to participate in these proceedings, and/or had any comments in response to the Complainant’s submission in relation to language, then it should submit these to the Center by July 25, 2008. It stated if the Center did not hear from the Respondent by that date it would proceed on the basis that the Respondent had no objection to the request that these proceedings be in English. No response to that email was forthcoming from the Respondent

3.5 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).

3.6 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 July 30, 2008. The Center’s explanatory email accompanying the notification was in both Romanian and English.

3.7 In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2008. On August 31, 2008 the Respondent sent an email to the Center purporting to be a Response but in fact being little more than the outline response available on the Center's website.

3.8 On August 31, 2008 the Respondent also sent an email to the Center responding to the Center's earlier request asking that the Respondent indicate its preference regarding the appointment of the Presiding Panelist in this case. After listing the suggested panelists that might fulfill this role the Respondent states as follows:

“For what this list serves is doubtful to us! Anyway we ask with ourselves in Roumanian [sic] to communicate. We have received from the file for the first time on the 20.08.2008 by means of email to the address knowledge. By mail we have received till this day no official writing. Another writing in this case will shut to you in a contemporary way.

3.9 The Center acknowledged that request in an email dated September 2, 2008 and stated this request would be included in the case file and any issue relating to the language of these proceedings would be left to be determined by the appointed panel.

3.10 The Center appointed Matthew S. Harris, Beatrice Onica Jarka and Marilena Oprea as panelists in this matter on September 4, 2008. The Panel finds that it was properly constituted. Each member of 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.

4.1 The Complainant is the well-known fast food restaurant chain. It is the second largest fast food chain in the world with more than 11,200 restaurants in 70 countries. Over 11 million customers visit the Complainant’s restaurants every day.

(i) community trade mark no. 000338434 dated August 21, 1996 for the words BURGER KING in classes 16, 25, 28, 29, 30, 31, 32, 42 (the “Burger King CTM”).

(ii) community trade mark no. 000330209 dated August 21, 1996 for the word WHOPPER in classes 16, 25, 28, 29, 30, 31, 32, 42 (the “Whopper CTM”).

4.3 The Respondent is an entity incorporated under the laws of Romania on May 5, 2004. According to documents filed at the Romanian Trade Registry, its listed shareholders are Thomas Strohle, a German citizen, Colors Restaurant SRL a Romanian company, and Iloxx Group SRL, a Romanian company.

4.4 The Respondent registered the Domain Name <burgerking.ro> on June 28, 2004, <burger-king.ro> on June 2, 2006 and <whopper.ro> on September 4, 2006.

4.5 The websites operating from the <burger-king.ro> and <whopper.ro> Domain Names have the tell tale signs of having been generated by a domain name parking service. Each uses as a heading the text of the relevant Domain Name and below this is the subtitle “What you need when you need it”. Below this is a search entry form and a number of links identified as “related searches”. In the case of the <burger-king.ro> Domain Name the majority of these searches have some connection with franchising. In the case of the <whopper.ro> Domain Name, the related searches are more varied, including such terms as “Small Business”, “Hot Videos” and “Pay Per click Program”. Each page also contains in small print at the bottom of the page the following disclaimer:

“This parking page is created for information only in agreement with the holder of the domain name above. EuroDNS did not play any part in the selection of this domain name and does not endorse any meaning it may have for visitors. Links that may appear on this page are provided by a third-party for advertising purposes and have not be chosen nor specifically approved by EuroDNS.”

4.6 The websites operating from the <burger-king.ro> and <whopper.ro> Domain Names continue to operate at the date of this decision.

4.7 At all relevant times no website has operated from the <burgerking.ro> Domain Name.

5.1 The Complainant refers to its trade marks and asserts that the distinctive element of the Domain Names is identical to its marks.

5.2 It claims that the Respondent has never used the Domain Names in connection with any bona fide offering of goods and services. It also claims that the company has failed to file various mandatory documents at the Romanian Trade Registry, which “may also mean that the company has no active commercial activity”.

5.3 The Complainant asserts that “the Respondent used to have 3 (three) trade marks registered (including WHOPPER) within the OSIM [i.e. the Romanian Trade Mark Office] register”, but all these marks were revoked.

5.4 It refers to the domain name parking use in the case of two of the Domain Names and claims that the Respondent is using the Domain Names “to mislead Internet users into using the sponsored links hosted on the domain names website for commercial gain”.

5.5 On the issue of bad faith, the Complainant refers to its world-wide reputation. It then repeats its claim that the Domain Names were registered for commercial gain, claiming that from the sponsored links “it could be assumed that the Respondent may be even paid for each occasion on which a consumer clicks” on such a link. It also states that the page operating from the <burger-king.ro> Domain Name contained links associated with franchising and that given the Complainant’s franchising activities, this “suggests that [the webpage] is connected with the Complainant”.

5.6 The Complainant also claims that the Respondent has registered a number of other domain names in bad faith. It refers to <burgerking.lt>, <burgerking.lv>, <burgerking.pl> and <burgerking.dk>, which are said to have also been used for web pages that display sponsored links. From this the Complainant concludes “the domain names have been registered for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant, as well as disrupting the business of the Complainant”. It is also said to involve “the Respondent prevent[ing] the Complainant from reflecting the BURGER KING trade marks in the corresponding domain names.

5.7 The Complainant also alleges that the activities of the Respondent constitute unfair competition under the laws of Germany, France, Romania and Poland. Lastly the Complainant claims that similar circumstances exist in this case as those set out in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003.

5.8 The Respondent did not put in a response within the time provided for by the Rules. As has already been described above, on August 31, 2008 the Respondent sent a purported response to the Center by email, but that “response” contained no substantive argument or evidence and did not reply to the Complainant’s contentions. In the circumstances, the Respondent can be treated as having filed no Response in these proceedings

6.1 Before addressing the substance of the Complaint, it is necessary first to address the question of the language applicable to this dispute. Paragraph 11(a) of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.”

6.3 Paragraph 11(b) of the Rules provides that a panel may require that documents that are not filed in the language of the proceedings be translated into that language. However, this Panel does not believe that is the sole extent of a panel’s powers so far as language is concerned.

6.4 Subject always to the requirement that proceedings are conducted in accordance with the Policy and the Rules, a panel is generally granted wide discretionary powers regarding the conduct of those proceedings under paragraph 10 of the Rules. Insofar as a panel is concerned that the conduct of proceedings in a language other than that of the registration agreement and the native language of the respondent may have had a detrimental impact on the ability of a respondent to express itself, then a panel may use those powers to address that concern. For example, it may issue a procedural order seeking further clarification of the Respondent’s case (see, for example, Mirela Zoita and Florin Popescu v. Westaco S.R.L., WIPO Case No. DRO2007-0008). The Panel can even conceive of circumstances where a panel might consider it appropriate to order the translation by the Complainant of a complaint or other documents into a language other than the formal language of the proceedings.

6.5 Therefore, the fact that a panel has these wide powers available to it under paragraph 10, is also something that the panel can take into account when exercising its power to determine the language of proceedings under paragraph 11(a) of the Rules (see, for example, Henkel KGaA v. Mr. Augustin Sbinta WIPO Case No. DRO2008-0003).

6.6 In this case, the Complainant provided the Respondent with a copy of the Complaint in Romanian but has put in a submission requesting that these proceedings take place in English. The Complainant gives as one of the reasons why the proceedings should be conducted in English, that it is based in the United States of America. The Panel is of the view that ordinarily this fact alone would not be enough to justify a determination that proceedings be in English. This is particularly so here where the Complainant is an organisation with substantive resources that has been able to instruct Romanian lawyers to conduct these proceedings.

6.7 Nevertheless the Panel are minded to agree to the Complainant's language request. First, there is the fact that the Complainant has translated the Complaint into Romanian. Given this fact, it does not believe that the Respondent could have had any difficulty in understanding the substantive claims made against it in these proceedings. Second, the Domain Names comprise English words and links on the website operating from two of the Domain Names were in English. Indeed, the very name of the Respondent is comprised of English words. If an entity conducts activities in English, it is difficult for that entity to object if someone complains about such activities in English. Third, in this case the Respondent at no time prior to August 31, 2008 made any complaint about these proceedings being conducted in English. It did not respond to earlier communications from the Center (at least one of which was also in Romanian), and did not attempt to file a Response in Romanian.

6.8 The one factor that might be said to point in the other direction is the Respondent's email of August 31, 2008. This is quoted from in detail at paragraph 3.8 of this decision. This email would suggest that whilst the Respondent has some grasp of English, that grasp may be poor. The comments suggest that the Respondent may at that stage have had a limited grasp of what was procedurally going on in these proceedings at that time. Further, the email expressly requests that all further communications from the Center be in Romanian. Nevertheless, the Panel believes that when one takes into account the factors that suggest that English would be an appropriate language in which to conduct these proceedings, this email is insufficient to justify the Panel making an order that the language of these proceedings should be Romanian. The Panel also does not believe that any purpose would be served here by making any other order under paragraph 10 of the Rules. The Panel is not convinced that any lack of understanding that the Respondent may have as to progress of this case has anything to do with choice of language.

6.9 In the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of these proceedings be English.

7.1 The Panel has reviewed the documents submitted by the Complainant in this case. In the light of this material, the Panel finds as set out below.

7.2 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.

7.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:

(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and

(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).

7.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

7.5 The Panel agrees that the <burger-king.ro> and <burgerking.ro> Domain Names can, after disregarding the “.ro” ccTLD, only be sensibly understood as the English words “burger” and “king” in combination. Accordingly, they are virtually identical to the Complainant’s Burger King CTM.

7.6 Similarly, the <whopper.ro> Domain Name can only be sensibly understood as the word “whopper”. Accordingly, the Domain Name is virtually identical to the Complainant’s Whopper CTM.

7.7 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

7.8 In this case the name of the Respondent contains the term “Burger King”. Accordingly, this raises the question whether so far as two of the Domain Names that incorporate that term, the Domain Names reflect a name by which the Respondent has been “commonly known” as provided for by paragraph 4(c)(ii) of the Policy. However, the Panel accepts the Complainant’s claims that the Respondent has never engaged in a substantial business activity under that name and accordingly has not established a right or legitimate interest under this heading.

7.9 The only activity in which the Respondent appears to have been engaged is the operation of website from two of the Domain Names. As has already been described, these web sites show the classic hallmarks of a parking site. Even the slogan “what you need when you need it” is one that has long been associated with the pages produced by these services. For examples of other cases in which it features, see Associated Professional Sleep Societies v. l.c./Li Chow, WIPO Case No. D2007-0695, First Magnus Financial Corp. v. Domains Ventures, WIPO Case No. D2006-1427 and First SBF Holding, Inc. v. XC2, WIPO Case No. D2008-0409.

7.10 How these sorts of site operate is described in greater detail in the context of bad faith later on in this decision. In the view of the Panel there is no real doubt that in this case the Respondent has registered these two Domain Names with a view to earning a share of the click through revenue generated by the domain name parking pages in question.

7.11 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. The key question is whether a respondent intended to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant’s rights and reputation in that term. If that is the case, then the respondent may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).

7.12 In this case, (and again as is explained in greater detail later on in this decision in the context of bad faith) the nature of the Domain Names is such that there can be little doubt that the two Domain Names <burger-king.ro> and <whopper.ro> were registered to take advantage of the reputation of the Complainant’s mark

7.13 In the case of the Domain Name <burgerking.ro> there is no evidence before the panel of any website having operated from that Domain Name. It also appears to have been registered over four years ago. Why this Domain Name has not been used is curious. Nevertheless, given the way in which the Respondent has used the other two Domain Names, the only reasonable conclusion that the Panel can draw is that the Respondent also registered the Domain Name <burgerking.ro> in order to take advantage in some way of the reputation that the Complainant has developed in its BURGER KING marks. Even if it is unclear to the Panel exactly how the Respondent intended to do this, the Panel is satisfied that the Respondent has no right or legitimate interest in this Domain Name.

7.14 There is one last complication in this case that needs to be addressed. The Complainant asserts that the Respondent was at one time the owner of three trade marks registered at the Romanian trade mark registry. The Complainant states that one of these marks was for the word WHOPPER but no further details are provided. Having conducted a search on the publicly available register¹, the mark would appear to be no. M2005/013169. An application for this mark was filed on December 28, 2005 but it would appear not to have proceeded to registration due to a failure on the part of the Respondent to pay the relevant examination fee. In any event, there is no evidence before the Panel that at the time of commencement of these proceedings, the Respondent owned any registered mark in any term incorporated in any of the Domain Names.

7.15 In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

7.16 The Panel has little difficulty in concluding in this case that the Domain Names have been registered and used in bad faith.

7.17 First, there is the use of two of the Domain Names in connection with a Domain Name parking service. It is now well known how these sorts of page operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see for example Owens Corning v. NA, WIPO Case No. D2007-1143).

7.18 In this case the pages appended to the Complaint, suggest that the link to the sponsored searches is indirect. Either sponsored links are produced when the Internet user undertakes a search in the search box provided on the page or chooses one of the “Related Searches” that are displayed.

7.19 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of pargraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page (see for example Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).

7.20 In this case the fame of the Complainant’s marks and in the case of the BURGER KING marks, the fact that the mark comprises an unusual combination of English words, mean that the inevitable conclusion to be drawn is that these Domain Names were chosen with the Complainant in mind and with to view to creating confusion between the Domain Names and the Complainant's marks in order to attract a greater number of Internet users to the relevant domain name parking pages.

7.21 As has already been mentioned, in the case of the <burgerking.ro> Domain Name there is no evidence of use for any website. Nevertheless, given that it is difficult to conceive of any use of the Domain Name in a manner that is not associated with the Complainant and taking into account the way in which the Respondent has used the other two Domain Names there is only one reasonable conclusion that can be drawn in this case. That is that the Respondent also registered that Domain Name in order to take advantage in some way of the reputation that the Complainant has developed in its BURGER KING marks. It has long been established that the mere holding of a Domain Name can in some circumstances constitute use of that domain name for the purposes of the Policy (see Telstra Corporation Limited v Nuclear Marshmallows WIPO Case No. D2000-0003).

7.22 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

7.23 In coming to its conclusions in this case the Panel has taken no account of the Complainant’s contention that the Respondent's activities are also contrary to the law of unfair competition in certain countries. This may well be true, but the Panel does not think that this is relevant to the issues that the Panel is required to consider in this case. As the panel stated in Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, WIPO Case No. D2003-0372:

“trademark infringement and abusive registration within the meaning of para 4(a) of the Policy are not the same thing” and “the fact that a particular set of facts may constitute trademark infringement has of itself no bearing on whether it is an abusive registration”

7.24 This Panel agrees with the comments of the panel in the Delta Air Transport case and believe that they apply equally to claims of breach of unfair competition law.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <burger-king.ro>, <burgerking.ro> and <whopper.ro> be transferred to the Complainant.

Matthew S. Harris
Presiding Panelist

Beatrice Onica Jarka
Panelist

Marilena Oprea
Panelist