The Complainant is Sbarro Franchise Co., LLC, United States of America (“United States”), represented by Gottlieb, Rackman & Reisman, P.C., United States.
The Respondent is Anastasiya Mazyra, Russian Federation.
The disputed domain name <mamasbarrosli.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2020. On February 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 20, 2020, 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 proceedings commenced on March 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2020.
The Center appointed Gareth Dickson as the sole panelist in this matter on April 3, 2020. 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 Complainant is a subsidiary of Sbarro LLC (“Sbarro”). Sbarro is a world famous owner and operator of fast food pizzerias and Italian-style restaurants, first established in Brooklyn, New York in 1959.
Today, Sbarro owns, operates, licenses, and oversees nearly 600 company-owned and franchised restaurants around the world, including over 300 locations in the United States and at least 17 locations in the Russian Federation.
The Complainant, its parent company, and affiliated companies are the owners of a number of trade mark registrations for or incorporating SBARRO around the world, including in the United States and in the Russian Federation, where the Respondent is located. Of particular note are:
- United States trade mark registration number 985647, for SBARRO, registered on June 4, 1974; and
- United States trade mark registration number 2622140, for MAMA SBARRO, registered on September 17, 2002.
The trade mark registration for MAMA SBARRO is referred to hereafter as the “Mark”.
The Domain Name was registered on October 7, 2019. It directs Internet users to a website apparently offering a marketplace for casual sexual encounters. Although no images are said to appear on this website and the textual content is limited, the Complainant refers to the content of the website as “pornographic”. A more accurate description might be “salacious”.
The Complainant contends that the Domain Name is confusingly similar to the Mark since the dominant element is the Mark and that the addition of the letters “li” to the Mark are likely to be perceived as a reference to Long Island, New York, not least because of the connection between that part of New York and the SBARRO brand.
The Complainant also states that it has not licensed, authorised, or otherwise sanctioned or consented to the Respondent’s use of the Mark for any purpose, including in connection with the Domain Name, and that it sent the Respondent a cease and desist letter concerning its use of the Mark by email, to which neither a bounce back nor a reply was ever received. In addition, the Complainant argues that there is nothing to indicate that the Respondent is now or has ever been known by or referred to by a name wholly consisting of or incorporating “sbarro”, which is an arbitrary word with no significance except as a means of identifying the Complainant, or the Mark. It adds that the direction of the Domain Name to a pornographic website does not involve a legitimate use of the Mark.
Finally, the Complainant argues that the Respondent’s bad faith is demonstrated by the Domain Name’s inclusion of the Mark, because it is inconceivable that the Respondent was not aware of the Mark, given its fame and reputation and its long-time use in the marketplace, including in the Russian Federation, when registering it. It submits that there is no plausible explanation as to how the Respondent could have come to incorporate the Mark into the Domain Name in good faith. The Complainant also contends that the Respondent’s redirection of the Domain Name to a salacious or pornographic website is by itself evidence of bad faith use of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
1. the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
The Panel accepts that the Complainant has rights in the Mark.Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that the Domain Name is confusingly similar to the Mark, since the Mark is recognisable within the Domain Name. The addition of “s” and “li” in the Domain Name does not prevent a finding of confusing similarity.
The Domain Name is confusingly similar to the Mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not alter this conclusion.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is neither generic nor descriptive but enjoys a degree of inherent distinctiveness that makes a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the Domain Name.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark, or is making any use of the Domain Name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel notes that the Domain Name was registered many years after the Mark was registered and that the Complainant has several outlets offering services under the SBARRO mark in the Russian Federation.
As a result, and in the absence of evidence from the Respondent that the similarity of the Domain Name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the Domain Name and chose the Domain Name by reference to the Mark.
The Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Mark.
The Domain Name is also being used in bad faith. The Domain Name is confusingly similar to the Mark yet is being used to provide access to content that has nothing to do with the Complainant and is likely to tarnish its brand.
Section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. While the current use of the Domain Name does not appear to be illegal, it is illegitimate in the sense that there is no justification to associate the Complainant’s brand with content that its customers will undoubtedly find objectionable and that is likely to be harmful to it.
The Respondent has not sought to explain its registration and use of the Domain Name and has not participated in these proceedings. There is also no conceivable use of the Domain Name by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the Domain Name is justified.
Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the Domain Name is without justification and is inconsistent with the Complainant’s rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <mamasbarrosli.com> be transferred to the Complainant.
Date: April 17, 2020