WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Il Fornaio America Corporation v. Domain Hostmaster, Whois Privacy Services Pty Ltd / Lisa Katz, Domain Protection LLC
Case No. D2016-0892
1. The Parties
Complainant is Il Fornaio America Corporation of Corte Madera, California, United States of America, represented by Hitchcock Evert LLP, United States.
Respondent is Lisa Katz, Domain Protection LLC of Dallas, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <iifornaio.com> is registered with Fabulous.com ("Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on May 3, 2016. On May 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2016, 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 as well as confirming other details of the registration. The Center sent an email communication to Complainant on May 6, 2016 providing the registrant and contact information disclosed by the Registrar, inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 6, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 8, 2016.
The Center appointed Debra J. Stanek as the sole panelist in this matter on June 21, 2016. 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 owns United States federal trademark registrations for the word mark IL FORNAIO for bread and restaurant services as well as for a stylized version of the word mark. The earliest of these was registered in 1984.
Respondent registered the disputed domain name in 2006. It currently resolves to a page that appears to contain "pay-per-click" links.
5. Parties' Contentions
1. Identical or Confusingly Similar
Complainant owns four United States federal trademark registrations that include the words "Il Fornaio" and uses them in connection with its Il Fornaio restaurants.
Complainant and its predecessors have operated Il Fornaio restaurants since 1988, and have offered prepared foods under the IL FORNAIO mark since 1981.
The <iifornaio.com> domain name is confusingly similar to Complainant's registered trademark because the domain name differs by only one letter and when the first three letters domain name are capitalized, as in <IIFornaio.com> the disputed domain name is visually indistinguishable from Complainant's IL FORNAIO mark.
2. Rights or Legitimate Interests
Respondent registered <iifornaio.com> to redirect traffic from Complainant's website and either infect the user's computer with malware or deceive the user into providing his or her personal information for misuse.
Visitors to the site are presented with several "warnings" urging the user to contact "Microsoft" to resolve the issue and pop-up error windows prevent the visitor from navigating away from the page.
Respondent does not use the <iifornaio.com> name in connection with a bona fide offering of goods or services. She is using it to divert traffic from Complainant's website and, potentially, profit by hijacking the user's computer by installing malware or obtaining the user's personal information through phishing techniques.
Upon information and belief, Respondent is not commonly known by IL FORNAIO or II FORNAIO, and has no trademark or service mark rights in either. Respondent is not making a legitimate noncommercial or fair use of the domain name.
3. Registered and Used in Bad Faith
Respondent has registered and used the disputed domain name in bad faith. Respondent is engaged in a scheme to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant.
Respondent uses the domain name for a commercial purpose – to illegally obtain access to the user's computer and/or personal information.
The disputed domain name constitutes typosquatting. Taken in combination, Respondent's actions evidence her bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Procedural Matters
The Rules define the "Respondent" as "the holder of a domain-name registration against which a complaint is initiated." See Rules, paragraph 1, s.v. "Respondent." The Panel is of the view that a complaint is "initiated" when it is filed with the Center as described in the Rules, paragraph 3. This is consistent with the paragraph 3(a) of the Rules , which provides (emphasis added):
Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.
Therefore, under the Panel's view, the original complaint correctly named the service as Respondent. It was only after this proceeding was filed and commenced that the registrar changed the registration records and identified as the "registrant", an individual, Lisa Katz. As Complainant thereafter amended its Complaint to identify that individual, however, the Panel deems Respondent in this matter to be Lisa Katz.
B. Substantive Matters
In order to prevail, a complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent's default as it considers appropriate. See Rules, paragraph 14(b).
1. Identical or Confusingly Similar
Complainant has established its rights in the mark IL FORNAIO by virtue of the evidence of its United States federal trademark registrations.
Complainant does not argue that the <iifornaio.com> domain name is identical to its mark. Thus, Complainant must establish that it is confusingly similar to Complainant's mark, determined with reference to the degree of resemblance between the domain name and mark at issue as to appearance, sound, and meaning. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 (generally, test for confusing similarity involves straightforward comparison of trademark and alphanumeric string making up the domain name).
Respondent's domain name differs only as to the replacement of the letter "L" with the letter "I", the elimination of a space, and the addition of the generic top-level domain. The differences due to spacing and the generic top-level domain are not relevant for purposes of this comparison. The Panel agrees that the substitution of a single character does little to differentiate the disputed domain name from the mark. The domain name strongly resembles Complainant's mark visually – indeed if the second letter is presented capitalized, it does appear to be identical.
The Panel finds that the domain name is confusingly similar to a mark in which Complainant has rights.
2. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, Paragraph 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy. Respondent appears to be an individual named Lisa Katz. The screen shots provided by Complainant, as well as the current use of the site, support the prima facie showing that the use of the disputed domain name is not noncommercial or a fair use or use in connection with a bona fide offering of goods or services.
The Panel finds that Complainant has established that Respondent has no rights or legitimate interests in respect of the disputed domain name.
3. Registered and Used in Bad Faith
A complainant must establish that the disputed domain name was registered and is being used in bad faith. The Policy sets out four non-exclusive circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt 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 complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or a product or service on [the respondent's] web site or location (see Policy, paragraph 4(b)(iv)).
Under these circumstances, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith. Complainant's mark is well-known and appears to predate registration of the disputed domain name. Given the similarity between the disputed domain name and Complainant's mark, it seems most probable that Respondent was aware of Complainant and its mark and registered the domain name with Complainant and its mark in mind.
In light of these facts and the adverse inferences that arise from Respondent's failure to respond to the Complaint, the Panel finds that Complainant has established that Respondent has registered and is using the disputed 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 disputed domain name <iifornaio.com> be transferred to Complainant.
Debra J. Stanek
Date: June 29, 2016
1 See also, Rules, paragraph 4, which is entitled "Notification" of Complaint and does not refer to "initiation." Instead, paragraph 4(c) refers to the "commencement" of the proceedings.