WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Cheesecake Factory Incorporated and TCF Co. LLC v. Lisa Dixon / Global Domain Privacy

Case No. D2016-2364

1. The Parties

The Complainants are The Cheesecake Factory Incorporated of Delaware, United States of America (“United States” or “US”) and TCF Co. LLC of Nevada, United States, represented internally.

The Respondent is Lisa Dixon of Grimsby, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”) / Global Domain Privacy of Bergamo, Italy.

2. The Domain Names and Registrar

The disputed domain names, <greatbritishcheesecakefactory.com>, <littlecheesecakefactory.com>, and <thegreatbritishcheesecakefactory.com> are registered with Register.IT SPA (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2016. On November 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 23, 2016 and November 25, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2016. At the Respondent’s request, the due date for Response was extended to December 23, 2016. The Center received an email communication from the Respondent on November 29, 2016. The Center received a second email communication from the Respondent on December 16, 2016.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 16, 2017. 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 Complainants are The Cheesecake Factory Incorporated and TCF Co. LLC. TCF Co. LLC is the owner of THE CHEESECAKE FACTORY trademarks described below. These parties will be collectively referred to as the “Complainant”.

The Complainant is a well-known operator of restaurants and bakeries, and is a producer and distributor of bakery and various other products. The Complainant currently sells its bakery products and various other products in the United States and around the world, in including but not limited to Brazil, Canada, the People’s Republic of China, Colombia, Mexico, the Kingdom of Saudi Arabia, the Republic of Korea, the United Arab Emirates, and the United Kingdom.

The Complainant owns trademark registrations in numerous jurisdictions for THE CHEESECAKE FACTORY as a word mark, including: US Registration No. 1,549,370 (registered July 25, 1989) and UK Registration No. 152222 (registered December 3, 1993). The Complainant also owns trademark registrations in numerous other jurisdictions for THE CHEESECAKE FACTORY as a logo mark. In total, the Complainant owns over 190 trademarks in 77 territories.

The Complainant also operates a worldwide website at the domain name <thecheesecakefactory.com>, registered on August 24, 1996.

The Respondent is Lisa Dixon, owner and director of The Great British Cheesecake Factory Ltd.

The Respondent registered the disputed domain name <thegreatbritishcheesecakefactory.com> on April 9, 2016 (reactivated after ICANN suspension on June 30, 2016). The disputed domain names <greatbritishcheesecakefactory.com> and <littlecheesecakefactory.com> were both registered on September 25, 2016.

The disputed domain names previously resolved to web pages displaying pay-per-click links. Currently, there are no websites at the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

a) The disputed domain names are confusingly similar to the trademark of the Complainant because:

- the disputed domain names are substantially identical in appearance and commercial impression to the Complainant’s trademarks.

- all of the disputed domain names contain “cheesecake factory” which is the dominant part of the Complainant trademark.

- the addition of the descriptive terms “.com”, as well as “little” and “Great British” do not significantly alter the commercial impression created by the trademarks.

b) The Respondent has no rights or legitimate interests in respect of the disputed domain names because:

- the Complainant has not authorized the Respondent to use the disputed domain names.

- the Respondent is not the Complainant’s employee or franchisee and is not affiliated with the Complainant in any way.

- the Respondent does not have a license or other authorization from the Complainant to use its trademarks.

- the Respondent owns no legal right to use the name “Cheesecake Factory” or the Complainant’s logo. However, the Respondent used both the name and the logo, modifying each of them slightly.

- the Complainant owns the trademark rights to “The Cheesecake Factory” in both the United States and the United Kingdom.

c) The disputed domain names were registered and are being used in bad faith because:

- given the Complainant’s numerous trademark registrations and widely known reputation, the Respondent intentionally attempted to create a misconception regarding her affiliation with the Complainant.

- the Respondent must have been aware of the Complainant’s trademarks when she registered the disputed domain name <thegreatbritishcheesecakefactory.com> on April 9, 2016, given (i) the close similarity between that disputed domain name and the Complainant’s trademarks, and (ii) the extremely close similarity between the Respondent’s original logo and the Complainant’s logo.

- the Respondent was aware of the Complainant when she registered both the <greatbritishcheesecakefactory.com> and <littlecheesecakefactory.com> disputed domain names, as by then she had received various correspondences from the Complainant.

- the Respondent’s actions clearly show that the Respondent was aware of the Complainant’s trademarks: (i) on April 18, 2016, the Respondent posted on her Facebook page that she had finally “become a Cheesecake Factory”, (ii) the Respondent made a comment on a blog post (dated August 2, 2016) on the website “www.startupbizhub.com”, in which she states, among other things: “I fully understand The Cheesecake Factory is not franchising.”, (iii) the Respondent also posted on her Facebook page stating that she has “become a Cheesecake Factory” and “Our new Cheesecake Factory opening soon.”.

- not only was the Respondent aware of the Complainant’s trademarks, but also she intentionally chose to use the disputed domain names that merely modified the Complainant’s trademarks, resulting in domain names which otherwise are in all respects identical to the Complainant’s trademarks.

- the Respondent registered the second and third of the disputed domain names (<littlecheesecakefactory.com> and <greatbritishcheesecakefactory.com>) on September 25, 2016, after receiving the Complainant’s cease-and-desist letters, after the Respondent’s Facebook page had been taken down for violating Facebook’s non-infringement policy, and after extensive email communication with the Complainant regarding the Respondent’s infringing use of the Complainant’s trademarks.

- the Respondent not only registered domain names that are only modified versions of the Complainant’s trademark, but the Respondent also used a variation of the stacked logo of Complainant’s trademark.

- the Respondent’s Facebook page (Once Upon a Time) promoted her new business “The Great British Cheesecake Factory” by stating misleading claims such as “I’ve Become A Cheesecake Factory !!” and “Our new Cheesecake Factory opening soon.”.

- the registration and use of the disputed domain names violate the trademark rights of the Complainant and causes a likelihood of confusion among the trade and purchasing public.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

No formal response was filed by the Respondent.

The Center received an email communication from the Respondent on November 29, 2016.

The Center received a second email communication from the Respondent on December 16, 2016, where the Respondent requested an extension of time and stated that she needed to find a specialized lawyer.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain names in order to succeed in this proceeding:

(i) That the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights; and

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

(iii) That the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain names are identical or confusingly similar to the trademark.

The Complainant owns trademark rights for THE CHEESECAKE FACTORY.

The disputed domain names <greatbritishcheesecakefactory.com>, <littlecheesecakefactory.com>, and <thegreatbritishcheesecakefactory.com> are confusingly similar to the trademark THE CHEESECAKE FACTORY.

The addition of the Top-Level Domain “.com”, as well as the addition of the descriptive terms “little”, “the” and “Great British” do not significantly alter the confusion created by the disputed domain names. It has been long established that a domain name that wholly incorporates a trademark regardless of any addition of a descriptive or generic word, may still be confusingly similar to a trademark.

In light of the above, the Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives nonexclusive examples of instances in which the Respondent may establish rights or legitimate interests in a disputed domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In this proceeding, it is undisputed that the Complainant did not give permission to use its trademark in the disputed domain names.

The Respondent has created a legal entity named “The Great British Cheesecake Factory Ltd” as a registered company in the United Kingdom (Registration No. 10128976). The Annexes to the Complaint contain a copy of the certificate of incorporation and an email from the Respondent Lisa Dixon dated August 16, 2016, where she signs as “Miss Lisa Dixon” with the title “Owner & Director & Baker / The Great British Cheesecake Factory”. The Respondent also opened a Facebook page. The Complainant filed a trademark claim with Facebook and the Facebook page was taken down.

The Panel is of the view that the mere incorporation of a legal entity does not mean that the Respondent is commonly known by the disputed domain names (see Luis Alfredo Ponce Garcia c. Balacotes balacotes, balacotes, WIPO Case No. D2016-1413).

Nothing in the record of this proceeding corroborates that the Respondent was known by a corresponding name or used the disputed domain names in connection with a bona fide offering of goods or services.

The Respondent has not rebutted the Complainant’s prima facie case on this point, and the Panel concludes that the Complainant also prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the disputed domain names in bad faith.

The reputation of the Complainant’s trademark has been clearly established in previous cases (see The Cheesecake Factory Inc. and The Cheesecake Factory Assets Co., LLC v. Say Cheesecake, WIPO Case No. D2005-0766 and The Cheesecake Factory Incorporated and TCF Co. LLC v. PT. Desserta Faktori Gelato, WIPO Case No. D2014-2277). The Complainant’s use of its trademarks predates the registration of the disputed domain names by approximately 20 years. Complainant is also active in the United Kingdom, where the Respondent is located.

The Respondent seems to be a baker or be in the business of making cakes. The Respondent made several comments in posts online aknowledging the Complainant and also adapted the Complainant’s logo to its own logo. It is clear that the Respondent was aware of Complainant’s trademarks at the time of registering the first disputed domain name, <thegreatbritishcheesecakefactory.com>. In addition, the Respondent registered the <littlecheesecakefactory.com> and <greatbritishcheesecakefactory.com> disputed domain names after receiving notice of the Complainant’s cease-and-desist letter.

Therefore, the Respondent was aware of the Complainant’s trademarks at the time of registration of the disputed domain names.

With respect to bad faith use, paragraph 4(b)(iv) of the Policy provides that bad faith is evidenced where “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 web site or location or of a product or service on your web site or location”.

From the record it is clear that the Respondent, by using the disputed domain names has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation with the Complainant’s trademarks.

In light of the above, the Panel concludes that the disputed domain names were registered and are being 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 names, <greatbritishcheesecakefactory.com>, <littlecheesecakefactory.com>, and <thegreatbritishcheesecakefactory.com>, be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: February 3, 2017