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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IHOP Restaurants LLC v. H A Lempka

Case No. D2014-1799

1. The Parties

The Complainant is IHOP Restaurants LLC of Glendale, California, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.

The Respondent is H A Lempka of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <ihopgiftcards.com> is registered with Julius Caesar, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2014. On October 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 14, 2014.

The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on December 1, 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.

4. Factual Background

The Complainant asserts that it is the intellectual property holding company for the International House of Pancakes, LLC and other related entities, under its parent company, DineEquity, Inc. Since 1973 the IHOP mark has been used commercially by the Complainant, appearing in advertising for its restaurants, of which it asserts that there are now over 1600 in North America and other countries.

The Complainant has registered the IHOP mark federally in the United States: see inter alia the U.S. Trademark Registration Numbers 3429406; 4036294; and 3429405.

The disputed domain name was registered on August 17, 2014.

5. Parties' Contentions

A. Complainant

The Complainant asserts that it and its affiliates own many registered trademarks and service marks for the IHOP mark and its variants, including device marks, all of which prominently include the letters IHOP, and that is has expended very considerable resources over the years to promote its marks, both in traditional media and on the internet and social networks. The Complainant also owns and operates the <ihop.com> website. As a result of these activities the Complainant contends that the IHOP mark is a distinctive and strong trademark that is widely recognized as a badge of origin of the Complainant.

The Complainant alleges that the disputed domain name is very similar to its IHOP trademark as it incorporates that mark and the descriptive terms "giftcards". Including dictionary terms does not avoid the likelihood of confusion, according to the Complainant. The Complainant offers gift cards in the conduct of its restaurant services, which further increases the risk of confusion, it contends.

The Respondent also has never acquired any legal rights in the disputed domain name, as it has no legal relationship with the Complainant in any form. Nor is the Respondent, according to the Complainant, commonly known as or referred to as "ihopgiftcards.com", or making a legitimate noncommercial or fair use of the disputed domain name. The Respondent has used the domain name to point to a website with pay-per-click hyperlinks to third-party sites, including ones like TGI Friday's, Ruby Tuesday's and Chili's, that offer competing goods and services. The Complainant asserts that whether those links were automatically generated or selected by the Respondent makes no difference as to the existence of a legitimate interest in the disputed domain name.

Nor has the Respondent, according to the Complaint, used the IHOP mark in connection with the bona fide offering of goods or services, as the unauthorized use of another's trademark to attract users to a site by creating confusion renders a finding of 'bona fide offering of goods or services' otiose.

According to the Complainant, because of the world-wide fame of the IHOP trademark, it is inconceivable that the disputed domain name was registered by the Respondent without a design to profit from its similarity to the Complainant's mark. In any case the Respondent had constructive knowledge of the Complainant's relevant trademark rights due to the United States federal registrations referred to above.

Further, according to the Complainant the registration and use of a domain name to attract consumers for commercial gain through hyperlinks that confuse them into associating it with a complainant's business demonstrates bad faith.

The Complainant also asserts that the Respondent's email address is associated with at least 403 domain name registrations. The Complainant maintains that it is well established that those who register domain names in large numbers for targeted advertising, often using automated programs and processes, cannot ignore the possibility that the names they are registering will infringe or violate third-party trademark rights. In any case a cursory examination of the OHIM or USPTO trademarks registered would immediately reveal the Complainant's rights in the IHOP trademarks. According to the Complainant it is apparent also from the listing of numerous of its competitors amongst the hyperlinks on the relevant website, that the Respondent has not undertaken any reasonable efforts to ascertain whether any conflict existed with the Complainant's trademarks.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is not identical to the Complainant's IHOP trademark, for which it has obtained registration in the United States and a number of other countries. However, it incorporates the IHOP trademark as its first and most prominent part, and in its entirety. The Complainant's trademark is distinctive and devoid of primary meaning in the context of the restaurant services in relation to which it is used and registered. The Combination with 'giftcards' strengthens the impression of a legitimate connection between the website to which the disputed domain name resolves and the Complainant, as it is well known that many business offer giftcards to their customers. The Complainant asserts that it makes giftcards available at its establishments in this manner. The combination of IHOP with the generic terms gift and cards does not create some different or distinct concept or word.

Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's IHOP trademark.

B. Rights or Legitimate Interests

The Complainant has not afforded the Respondent any rights in the disputed domain name or in the trademark IHOP. The disputed domain name has no inherent meaning or connection with its business that would legitimate its use by the Respondent. Nor has the Respondent used the disputed domain name in any manner that it is likely to vest rights in it, or warrant a finding of legitimate interests in the disputed domain name. The disputed domain name resolves to a website that contains hyperlinks, inter alia to the websites of competitors of the Complainant. The tendency of the domain name is to induce consumers into visiting the related website under the misapprehension that it is a website concerned with the Complainant or where the Complainant offers its own gift cards. Relying on consumer confusion concerning a well established trademark is not a route to establishing a claim for rights or legitimate interests. The Respondent has not replied to any contention of the Complainant in this or any other regard.

Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant's use of the IHOP trademarks in relation to restaurant services, and their registration, amply predate the date of registration of the disputed domain name. The Complainant operates a large number of restaurants by reference to its IHOP trademark and has employed that mark extensively in advertising and promotion. The combination of the Complainant's trademark with the carefully selected terms "gift" and "cards" in any case indicates that the Respondent was fully cognizant of the Complainant's trademark and its commercial standing. Further, the Respondent has used the dispute domain name to direct internet users to its website and gain from the availability there of hyperlinks to other sites, including those of its competitors. Relying on a misleading impression of a legitimate association between the disputed domain name and the Complainant for financial gain, whereas in reality no such connection exists, amounts to a use in bad faith of the said domain name.

Therefore the Panel holds that the disputed domain name was registered and used in bad faith.

7. Decision

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, <ihopgiftcards.com> be transferred to the Complainant.

WiIliam A. Van Caenegem
Sole Panelist
Date: December 15, 2014

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