WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IHOP IP, LLC v. Terranova Corporation Limited
Case No. D2012-2397
1. The Parties
The Complainant is IHOP IP, LLC of Kansas City, Missouri, United States of America (“US”), represented by Stinson Morrison Hecker LLP, US.
The Respondent is Terranova Corporation Limited of Aberdeen, Hong Kong, People’s Republic of China.
2. The Disputed Domain Name and Registrar
The Disputed Domain Name <ihopfranchise.net> was first registered with GoDaddy.com, LLC. (the “Registrar”) on July 7, 2011 and registered to the Respondent on October 21, 2012.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on December 5, 2012. On December 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 6, 2012, 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”), 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 the Respondent of the Complaint by email to the email addresses provided in the WhoIs record, and by courier delivery attempted at “1 Harbour Road, Aberdeen, Hong Kong”, being the address given in the WhoIs record. It appears both from the communications between DHL and the Center, as well as from Google Maps, that there is no such street as Harbour Road in Aberdeen, Hong Kong. Whilst the Panel is bemused by DHL’s suggestion that it might be worth attempting delivery in Aberdeen, Scotland (where there is also no Harbour Road!) the false registration particulars could have been detected by the Registrar. Nevertheless, the Center having sent communications to the email and street addresses recorded in the WhoIs record, as verified by the Registrar, the proceedings are taken to have commenced on December 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Philip N. Argy as the sole panelist in this matter on January 16, 2013. 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.
All other administrative requirements appear to have been satisfied.
4. Factual Background
The following facts, taken from the Complaint, remain uncontested.
The Complainant is the intellectual property holding company for the International House of Pancakes group of entities. The first International House of Pancakes restaurant opened in California in 1958 and in 1960 the company began to expand through franchising. Since at least 1973 the acronym IHOP began to be used as a trademark and it has subsequently appeared prominently in all of the group’s advertising throughout the US. The IHOP restaurant chain is well-known in North America and there are over 1500 IHOP restaurants in US, Canada, Guatemala, Mexico, Puerto Rico and the US Virgin Islands. Many IHOP restaurants are open 24 hours seven days a week and are operated by independent small business franchisees which rely heavily on the reputation and strength of the IHOP-based trademarks, service marks and trade names to run their businesses.
The Complainant owns many registered trademarks and service marks for IHOP and variants including device marks all of which include the letters IHOP prominently. These marks have been used very extensively in all kinds of promotional contexts as well as online with social media sites and websites. In particular, the Complainant or one of its licensees provides a webpage for prospective franchisees to solicit further information and/or to obtain the Complainant’s franchise toolkit by entering their personal particulars and contact information. The website to which the Disputed Domain Name resolves does the same by reference to the IHOP business and trademarks. There is nothing on the latter website to indicate that it has no affiliation whatsoever with the Complainant or its related entities and certainly nothing to indicate to a person providing the particulars that the information will not be received or seen by anyone connected with the Complainant or the International House of Pancakes group or that an enquirer will not receive the International House of Pancakes franchisee toolkit.
In one manifestation of the Respondent’s website appears a photograph captioned “Jason Rager” and describing him as a successful IHOP franchisee willing to assist prospective franchisees to become equally successful. Mr. Rager is a principal of PayDues Inc. which has been the unsuccessful respondent in 23 other cases under the Policy in which it has been found to have engaged in cybersquatting on well-known trademarks and brand names. Indeed in two prior cases PayDues Inc. was described as a “serial offender” with respect to the Policy (see Buffalo Wild Wings Inc v. PayDues Inc, WIPO Case No. D2012-0319 and LC Trademarks Inc v. PayDues Inc, WIPO Case No. D2011-2125).
The Complainant claims that on May 7, 2012 the WhoIs information for the Disputed Domain Name showed PayDues Inc. as the registrant of the Disputed Domain Name. It had a creation date of July 7, 2011 and an expiration date of July 7, 2012. In late October 2011 the Complainant’s attorney sent a cease and desist letter to Mr. Rager at PayDues Inc. but received no response. Shortly before the Complaint was prepared it was found that the registrant of the Disputed Domain Name had been changed to the Respondent with a Hong Kong address and that it had an expiration date of July 7, 2013. The creation date of July 7, 2011 remained unchanged and the content of the website to which the Disputed Domain Name resolved remained largely unchanged. The Registrar’s verification response to the Center (which forms part of the record before the Panel) advised that the Disputed Domain Name became registered to the Respondent on October 21, 2012.
5. Parties’ Contentions
As might be expected, the Complainant relies upon all three limbs of the Policy. Whilst its submissions and accompanying evidence are extensive, they can be summarised as follows.
The Disputed Domain Name is confusingly similar to the IHOP trademark in which the Complainant has rights. It includes the entire IHOP trademark followed by the generic word “franchise” and the generic top-level domain (gTLD) “.net”. The use of the word “franchise” increases rather than decreases the likelihood of confusion given the nature of the Complainant’s business.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It is plain from the nature and content of the website to which the Disputed Domain Name resolves that the Respondent has simply appropriated the get up and trade dress of the Complainant’s businesses. There is actually nothing on that website that claims or constitutes any right or legitimate interest on the part of the Respondent – it is self-evidently masquerading as the Complainant. It purports to offer assistance and information in becoming a franchisee of the Complainant despite being in no position to do anything of the kind. It is not authorised in any way by the Complainant. Despite the change in registrant, the website to which the Disputed Domain Name resolves has remained virtually the same and continues to comprise a solicitation of particulars from prospective franchisees of the Complainant. In each of the 23 prior UDRP decisions involving PayDues Inc. and/or Jason Rager, the panel transferred a domain name consisting of a famous trademark followed by “franchise”, which is also the case here. This pattern of registering domain names is evidence that PayDues Inc, and entities closely affiliated with it, have no legitimate interests in the Disputed Domain Name.
The registrant history of the Disputed Domain Name and the depiction of Mr. Rager on the website to which it resolves strongly suggest that the Respondent is or is affiliated with PayDues Inc., that has been found to have registered and used other domain names in bad faith on at least 23 prior occasions. The Respondent's registration and use of the Disputed Domain Name is in bad faith because the Respondent registered, and continues to use, it with knowledge of the Complainant's rights in the IHOP trademark. The original registrant had actual notice of the Complainant's IHOP mark at least as early as its July 2011 registration of the Disputed Domain Name as evidenced by the display of the Complainant's trademarked logo on the website to which the Disputed Domain Name has resolved ever since that time.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Despite the Respondent’s failure to file a Response or to respond in any other way to the Complaint, the Complainant bears the onus of proving that each of the three limbs of the Policy has been made out.
A. Identical or Confusingly Similar
The Panel agrees with the Complainant’s submission that the addition of “franchise” to IHOP enhances rather than diminishes the confusing similarity of the Disputed Domain Name with the Complainant’s registered IHOP trademarks. The addition of the gTLD “.net” can also be ignored in assessing confusing similarity although it also connotes a network affiliated with the International House of Pancakes group and certainly does not constitute a distinguishing element.
The Panel comfortably concludes that the Disputed Domain Name is confusingly similar to the Complainant’s IHOP trademarks and service marks.
B. Rights or Legitimate Interests
Absent any Response it is difficult for the Panel to see any basis on which the Respondent could legitimately operate a website soliciting particulars from prospective franchisees of the Complainant where it is not authorized by the Complainant to do so and cannot legitimately supply enquirers with a copy of the Complainant’s franchisee toolkit. If anything the website to which the Disputed Domain Name resolves is simply a fraudulent imitation of the Complainant’s webpage through which it invites prospective franchisees to register an interest in becoming an operator of an International House of Pancakes restaurant.
There is simply no evidence before the Panel to displace the compelling inference that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Panel so finds.
C. Registered and Used in Bad Faith
The Panel is most concerned about the flagrancy of the misappropriation of the Complainant’s getup on the website to which the Disputed Domain Name resolves. The Respondent’s solicitation of personal particulars from prospective franchisees of the Complainant, and its promise to assist them to become successful operators of IHOP restaurants, is not plausibly legitimate absent any disclosure of its lack of affiliation with the Complainant and its lack of authority from the Complainant to do so nor to use the Complainant’s trademarks in the way they are used.
The cyberflight of the Disputed Domain Name from PayDues Inc. to the Respondent remains unexplained but highly suspicious and the Panel is inclined to accept the Complainant’s suggestion that it reflects an attempt to conceal the connection between PayDues Inc. and/or Mr. Rager with the website to which the Disputed Domain Name resolves. The continuity of that website content after the Respondent became registrant of the Disputed Domain Name, the continued false depiction of Mr Rager as a successful International House of Pancakes franchisee, and the false WhoIs address, together support an inference that the Respondent is an agent for PayDues, Inc and/or Mr Rager, and the Panel so infers. Certainly that evidence is corroborative of the Complainant’s assertion.
The website to which the Disputed Domain Name resolves purports to be a website of or authorized by the Complainant when this is not the case. In the Panel’s view it is a flagrant misappropriation of the Complainant’s trademarks and getup, and a commercial danger to the public. It is impossible to see any legitimate basis for the Respondent’s conduct. As noted above, despite the change of registrant to the Respondent, it appears more than likely that the website to which the Disputed Domain Name resolves is operated by or on behalf of PayDues Inc. and/or Mr. Jason Rager, as the Complainant asserts.
The Panel is entirely satisfied that the Disputed Domain Name was both registered and is being used in bad faith (possibly even fraudulently).
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 <ihopfranchise.net> be transferred to the Complainant.
Philip N. Argy
Date: January 20, 2013