WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Wendy’s Company and Quality Is Our Recipe, LLC v. Whois Privacy
Protection Service, Inc. / Domain Vault LLC
Case No. D2015-1370
1. The Parties
Complainants are The Wendy’s Company and Quality Is Our Recipe, LLC both of Dublin, Ohio, United States of America (“United States”), represented by Dreitler True LLC, United States.
Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Domain Vault LLC of Dallas, Texas, United States.
2. The Domain Name and Registrars
The disputed domain name <wendysjobs.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2015. On August 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2015, the Registrar transmitted by email to the Center 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 Complainants on August 5, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on August 6, 2015.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 7, 2015. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 28, 2015.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on September 4, 2015. 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
Complainant The Wendy’s Company (“Wendy’s”) is a Delaware company with its principal place of business in Dublin, Ohio. In operation since 1969, Wendy’s is the world’s third largest hamburger quick-service company, with 6,000 franchise and company restaurant locations in 27 countries, and a total of approximately 31,200 employees. Wendy’s is the indirect parent of Complainant Quality is Our Recipe, LLC (“Quality”), which owns and manages Wendy’s marks. These include several registrations in the United States, where Respondent lists its address of record, including United States Registration No. 1,297,495 for WENDY’S (registered 1984); United States Registration No. 911,053 for WENDY’S, and design (registered 1971); United States Registration No. 1,269,515 for WENDY’S, and design (registered 1984), and United States Registration No. 4,460,097 for WENDY’S, and design (registered 2013). Complainant enjoys a high degree of renown around the world, including in the United States.
Complainants own the domain name <wendys.com> (registered 1995). Complainants use this domain name to connect to a website through which it provides information to potential customers about their WENDY’S marks, including about company history and products. Furthermore, the website contains a link to “Wendy’s Careers” through which potential applicants can learn about jobs and job openings. Complainants do not charge a fee for this service. Complainants also own the domain name <wendys.jobs> which links to the “Wendy’s Careers” site page.
Although the Registrar was unable to verify the date of registration, the disputed domain name <wendysjobs.com> was apparently created on April 22, 2005. Respondent has no affiliation with Complainants. Respondent has set up a website at the disputed domain name, with information and links regarding jobs at Wendy’s. Such links include such titles “Wendys Job Application Online”; “Apply for a Job at Wendys”; “Wendys Application”; and “Wendys Jobs (Hiring Now)”. Some of these lead to credit monitoring and other nonaffiliated websites. Complainants have not authorized any activities by Respondent, nor any use of their trademarks thereby.
5. Parties’ Contentions
Complainants contend that (i) the disputed domain name <wendysjobs.com> is identical or confusingly similar to Complainants’ trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The Panel notes that Wendy’s is the indirect parent company of Quality, which owns and manages Wendy’s marks. Accordingly, the Panel finds that Complainants have a common grievance against Respondent and that the consolidation is appropriate in this case.
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name <wendysjobs.com>, is identical or confusingly similar to a trademark or service mark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is.
The disputed domain name incorporates in full Complainants’ WENDY’S mark. The Panel finds that the added word “jobs” in the disputed domain name would be perceived by Internet users as descriptive of a website where they could find information about jobs working for Wendy’s. Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500; Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620; General Electric Company v. Recruiters, WIPO Case No. D2007-0584. Indeed, as stated previously, Complainants themselves offer consumers career service options on the Internet using the terms “Careers” and “jobs” in connection with their WENDY’S mark.
This Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has set up a web site at the disputed domain name with links that purport to be job application information for Complainants, but which lead to other nonaffiliated websites.
This Panel finds that considering the circumstances presented overall, Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up a website at the disputed domain name, from which it provides links to unaffiliated websites. Hence, Respondent is trading on the goodwill of Complainants’ trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Furthermore, considering the high degree of renown of Complainants’ WENDY’S marks, including in the United States where Respondent lists its address of record, and the fact that the website associated with the disputed domain name refers to those products and services, it may be presumed that Respondent was aware of Complainants’ rights in Complainants’ marks when registering the disputed domain name. Accordingly, this too, evidences bad faith by Respondent.
Therefore, this Panel finds that Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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 <wendysjobs.com> be transferred to Complainants.
Dated: September 10, 2015