WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez
Case No. D2016-1004
1. The Parties
Complainant is Wingstop Restaurants Inc. of Dallas, Texas, United States of America (“United States”), represented by DLA Piper US LLP, United States.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Johnson Millner of Columbus, Ohio, United States / Matthew Alvarez of Matteson, Illinois, United States.
2. The Domain Names and Registrar
The disputed domain names <wingstopmail.com> and <wingstoponline.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2016. On May 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 20, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 26, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 31, 2016.
The Center verified that the Complaint together with 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 27, 2016.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on July 4, 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 Wingstop Restaurants Inc. is an operator and franchisor of restaurants featuring buffalo-style chicken wings and other chicken products and complimentary items. Complainant currently operates or franchises more than 870 restaurant locations in various countries. Complainant owns and uses the mark WINGSTOP in connection with its restaurant services. Complainant has submitted as Annex C copies of its United States service / trademark registrations for the WINGSTOP and WINGSTOP-formative marks, the earliest of which dates back to December 1997, and as Annex D representative copies of its service / trademark registrations for the WINGSTOP mark in other countries. Complainant also owns the domain name <wingstop.com>, which was registered in March 1997 and which is used by Complainant as a forum to promote and disseminate information regarding Complainant’s various offerings under the WINGSTOP mark.
The disputed domain name <wingstopmail.com> was registered on or about April 8, 2016, and the disputed domain name <wingstoponline.com> was registered on or about February 23, 2016. Currently, the disputed domain names do not resolve to any web pages.
5. Parties’ Contentions
Complainant asserts that while the disputed domain names were registered under different registrant names, the disputed domain names are actually under the control of a single respondent with an unknown identity.
Complainant asserts that Complainant has continuously and exclusively used the WINGSTOP mark in connection with restaurant services since 1994. Complainant argues that it has achieved significant monetary success and recognition under the WINGSTOP mark with 870 restaurants in various countries and revenues of approximately USD 78 million in fiscal year 2015 alone. In addition, Complainant also asserts that it has extensively advertised its WINGSTOP mark, having spent in fiscal year 2015 alone over USD 20 million in print advertisements, sponsorships, online advertisements and television advertisements, and, in particular, conducting a wide variety of promotions with some of the largest and most visible sports organizations in the United States, such as, by way of example, the Dallas Cowboys and Los Angeles Dodgers.
Complainant contends that the disputed domain names are confusingly similar to Complainant’s WINGSTOP mark because they each contain the WINGSTOP mark in its entirety. Complainant also contends that the inclusion in the disputed domain names of descriptive terms such as “mail” or “online” creates confusion because the terms, when used with the WINGSTOP mark, suggest a relationship with Complainant.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain names, because Respondent is not commonly known by the disputed domain names, is not in any way affiliated with Complainant, and has not used the disputed domain names for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent has used the disputed domain names to pose as Complainant and to perpetrate a scam.
Finally, Complainant asserts that Respondent registered and has used the disputed domain names in bad faith since Respondent must have known of Complainant’s well-known WINGSTOP mark given that Respondent has used the disputed domain names to pose as or appear affiliated with Complainant in order to perpetrate a fraudulent scheme.
Respondent did not reply to Complainant’s contentions.
6. Complainant’s Request for Consolidation
As a preliminary procedural matter, the Panel must determine whether Complainant’s request to consolidate multiple respondents and domain names is appropriate in this proceeding. In determining whether to consolidate, the touchstone is (i) whether the evidence of record supports a finding that the disputed domain names are under the common control of single individual, entity or group and (ii) that consolidation would be procedurally efficient and fair to all parties. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.
Here, the undisputed evidence indicates that the disputed domain names are more likely than not under the common control of an unknown entity. The disputed domain names were registered in February and April 2016 using the same registrar, privacy service and domain name server. Moreover, since the disputed domain names were registered, the evidence of record suggests that the disputed domain names have been used in a similar manner for an email scam in which consumers receive emails that appear to be associated with Complainant and its business regarding employment with Complainant.
Given the readily identifiable commonalities in the registration and use of the disputed domain names, evidence of common conduct impacting Complainant’s rights, common questions of law and fact regarding the disputed domain names, and the lack of a response from any Respondent, the Panel believes that consolidation would be procedurally efficient, and fair to all Parties. Accordingly, Respondent is referred to in the singular form.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states:
“Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent’s default does not automatically result in a decision in favor of the complainant […]. [T]he complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 2.0, paragraph 1.1. Complainant has provided evidence that it has rights in the WINGSTOP mark, which has been registered in the United States and elsewhere well before Respondent registered the disputed domain names. Complainant has also submitted ample evidence that the WINGSTOP mark is known in the United States in relation to restaurant services.
With Complainant’s rights in the WINGSTOP mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain “.com”) are identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain names are confusingly similar to Complainant’s WINGSTOP mark as they incorporate the WINGSTOP mark in its entirety at the head of the disputed domain names. The addition of the descriptive terms “mail” or “online” does not distinguish the disputed domain names from Complainant’s WINGSTOP mark and in fact may heighten the confusion by suggesting that the disputed domain names are related to Complainant and/or Complainant’s company. See, e.g.,Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the WINGSTOP mark and in showing that the disputed domain names are identical or confusingly similar to its trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, well aware of Complainant and its WINGSTOP mark and does not have any rights or legitimate interests in the disputed domain names. Respondent has not made any bona fide or fair use of the disputed domain names in connection with any product or service. Rather, Respondent has used the disputed domain names to mislead unsuspecting consumers about the prospect of employment with Complainant in order to obtain personal information from such individuals. Complainant has not only submitted evidence attesting to the fact that consumers have been contacted about these alleged employment offers, but Complainant has produced examples of correspondence sent by Respondent to various individuals falsely providing a job offer with Complainant and soliciting personal information from such job seekers. Such use of the disputed domain names essentially constitutes a form of phishing and does not, and cannot, constitute a bona fide use or legitimate interest.
Given that Complainant has established with sufficient evidence that it owns rights in the WINGSTOP mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain names in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
In the present case, Respondent has registered the disputed domain names that each fully incorporates Complainant’s WINGSTOP mark with generic terms such as “mail” and “online”. Such combination of a generic term with Complainant’s widely-known WINGSTOP mark may create confusion by suggesting to consumers that the disputed domain names relate to Complainant and its WINGSTOP restaurant services. Given that Respondent has sent emails and correspondence to job seekers that feature the WINGSTOP name and mark from the disputed domain names, there can be no doubt that Respondent was well aware of Complainant and its WINGSTOP mark when Respondent registered the disputed domain names. Needless to say, given that the uncontested evidence shows that Respondent has used the disputed domain names to make fraudulent job offers to consumers to elicit personal information and to scam individuals, it is obvious that Respondent specifically targeted Complainant and its WINGSTOP mark, and has done so opportunistically and in bad faith.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
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 names <wingstopmail.com> and <wingstoponline.com> be transferred to Complainant.
Date: July 11, 2016