WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Five Guys Holdings Inc. v. Domains by Proxy, LLC / Payman Ghasemi

Case No. D2014-1756

1. The Parties

The Complainant is Five Guys Holdings Inc. of Lorton, Virginia, United States of America ("United States"), represented by Nixon Peabody, LLP, United States.

The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States / Payman Ghasemi of Dubai, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <fiveguys-iran.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 October 7, 2014. On October 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2014, 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 the Complainant on October 13, 2014, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to amend the Complaint. The Complainant filed an amended Complaint on November 2, 2014.

The Center verified that the amended 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 the Respondent of the Complaint, and the proceedings commenced on November 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2014. Thereafter, the Respondent sent several emails to the Center on November 25 and 26, 2014, and December 1, 2014.

The Center appointed Edoardo Fano as the sole panelist in this matter on December 2, 2014. 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 December 8, 2014, the Panel issued a Procedural Order consenting to the filing of a late Response until December 11, 2014, as well as further submissions by the Complainant in response to any late Response filed by the Respondent until December 14, 2014. Following the Procedural Order, the Respondent filed a Response on December 11, 2014. The Complainant filed a further filing on December 14, 2014.

On December 15, 2014, the Respondent expressed the wish to reply to the latest Complaint's filing; however, the Panel having all the elements needed to reach a decision declined to accept any further filings from the Parties.

The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Five Guys Holdings Inc., a United States company that owns more than 1,000 restaurants all over the world using the trademark FIVE GUYS since 1986.

The Complainant owns several trademark registrations for FIVE GUYS, among which:

- United States Trademark Registration No. 2576160 for FIVE GUYS, applied for on September 24, 2001 and registered on June 4, 2002, with date of first use February 26, 1986;

- Community Trademark Registration No. 006893549 for FIVE GUYS, applied for on May 7, 2008 and registered on October 21, 2008;

- United Arab Emirates Trademark Registration No. 103926 for FIVE GUYS BURGERS AND FRIES, applied for on February 24, 2008 and registered on June 1, 2010;

- Turkey Trademark Registration No. 2011/39969 for FIVE GUYS, applied for on May 11, 2011 and registered on February 6, 2013.

The Complainant provided evidence in support of the above.

The disputed domain name <fiveguys-iran.com> was registered on August 27, 2011. At the time of filing of the Complaint, the disputed domain name resolved to a registrar parking page with pay-per-click ("PPC") links.

5. Parties' Contentions

A. Complainant

The Complainant states that prior to filing the Complaint, it discovered a restaurant in Tehran, Iran, that appears to be making illegitimate use of the Complainant's FIVE GUYS and FIVE GUYS BURGERS AND FRIES trademarks in English and Farsi; the restaurant being unaffiliated with the Complainant in any way. The Complainant submitted evidence showing that its trademarks and stylized logos and trade dress were being conspicuously displayed on the door of a restaurant that was under construction at the time. Also displayed, directly below an image of a hamburger and the Complainant's trademark was the disputed domain name itself.

The Complainant states that the disputed domain name <fiveguys-iran.com> is confusingly similar to its trademark FIVE GUYS.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorised by the Complainant to register the disputed domain name or to use its trademark, nor is it commonly known by the disputed domain name.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith, since it was registered with the only purpose to create a likelihood of confusion with the Complainant's trademark. The Complainant states that the Respondent is using the disputed domain name in connection with a restaurant that imitates those of the Complainant, trading off the Complainant's goodwill without the Complainant's consent. The Complainant states that prior to filing the Complaint, the disputed domain name redirected to a Facebook page connected to the abovementioned restaurant, which was subsequently taken down due to its infringing nature, and now resolves to a parking page with PPC links.

B. Respondent

The Respondent in his Response states that FIVE and GUYS, in Farsi and in their English translation, are two common words used in Iran and in Islam for centuries.

The Respondent asserts that the Complainant's trademark FIVE GUYS is not known in Asia or the Middle East and that the addition of the term "Iran" in the disputed domain name is clearly showing an independent and local business, without claiming any relation with the Complainant's business.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

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

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

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark FIVE GUYS both by registration and acquired reputation and that the disputed domain name <fiveguys-iran.com> is confusingly similar to the trademark FIVE GUYS.

Regarding the addition of the geographic term "Iran", the Panel notes that it is now well established that the addition of such terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the term "Iran" does not therefore prevent the disputed domain name from being confusingly similar to the Complainant's trademark.

It is also well accepted that a generic Top-Level Domain ("gTLD") suffix, in this case ".com", may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant shifts the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.

In fact, the Respondent asserts that the Complainant's trademark FIVE GUYS is not known in Asia and the Middle East, where it's translation in Farsi consists of a common expression in Islam, providing a Wikipedia link to support his argument.

The Panel is of the opinion that even if it is true that "five guys" can itself be considered as a common expression, when it is used in connection with restaurants, and in particular restaurants specialized in burgers and fries the terms make use of a registered trademark owned by the Complainant and widely known, as it can be checked by a simple search in Google search engine. Moreover, Respondent has not denied in his Response the relationship between the disputed domain name and the restaurant in Teheran showing the Complainant's trademarks FIVE GUYS and FIVE GUYS BURGERS AND FRIES, as well as the disputed domain name: the Respondent is instead saying that the use of the added term "Iran" is showing a local business, independent from the Complainant's business. However, as the Panel sees it, the wholesale imitation by the Respondent of the Complainant's trade dress, marks and logo provide exactly the opposite impression, namely that of an affiliation. This is not bona fide activity, but is impermissible under the Policy.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that "for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or

(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] web site or location."

As regards to the registration in bad faith of the disputed domain name, the reputation of the Complainant's trademark FIVE GUYS in the field of restaurants is clearly established and the Panel finds that the Respondent clearly knew that the disputed domain name <fiveguys-iran.com> was confusingly similar to the Complainant's trademark. This is also confirmed by the fact that the Complainant's trademark FIVE GUYS is registered significantly in countries surrounding the Respondent's country and especially because the disputed domain name is used on the rolling shutter of a restaurant specialized in burgers and fries, the Complainant's business activity.

The disputed domain name is also used in bad faith both on the Internet and in the real world.

In fact, on the Internet the relevant website shows sponsored links and the Respondent registered the disputed domain name knowing it to be a confusingly similar name to the Complainant's trademark FIVE GUYS for the purpose of deriving PPC revenue: a proportion of that revenue will be derived from Internet users hoping to reach the Complainant and visiting the Respondent's website in error.

The display of the disputed domain name on the rolling shutter of a burgers and fries restaurant is furthermore suggesting the very likely possibility that the Respondent is planning to make a website that will create a likelihood of confusion with the Complainant's trademark FIVE GUYS as to the affiliation of the Respondent's website and location, namely appearing as an affiliate and/or franchisee of the Complainant.

The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For all 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 <fiveguys-iran.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: December 22, 2014