WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Cheesecake Factory Incorporated and TCF Co. LLC v. Ioana Veturia

Case No. D2017-0967

1. The Parties

The Complainants are The Cheesecake Factory Incorporated and TCF Co. LLC of Calabasas Hills, California, United States of America (“United States”), internally represented.

The Respondent is Ioana Veturia of Bucharest, Romania.

2. The Domain Names and Registrar

The disputed domain names <cheesecakefactory.biz> and <cheesecakefactory.info> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2017. On May 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 17, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2017. The Respondent did not submit any formal response. A copy of the Notification of Complaint and Commencement of Administrative Proceeding was also sent to an email address provided as contact information on the websites to which the disputed domain names resolved. On May 26, 2017, May 27, 2017 and May 29, 2017, a third party sent informal replies from that email address to the Center and to the Parties, which were forwarded in due course to the Panel, that included claims to be the user of the disputed domain names. On June 16, 2017, the Center notified the Parties the commencement of the panel appointment process. Additional communications by a third party were received on June 16, 2017, June 22, 2017 and June 28, 2017.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 22, 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 Cheesecake Factory Incorporated and its subsidiary TCF Co. LLC will be referred to collectively as “the Complainant”. The Complainant has been in the restaurant and bakery products business for about 45 years and has sold products online for at least 18 years. The Complainant conducts business in many countries in addition to the United States. Indications of the Complainant’s scale of business include revenues of about USD 2 billion in 2016, and the receipt of over 14 million unique visitors to its own authentic website “www.thecheesecakefactory.com” in the 12 months to April, 2017.

The Complainant (or Cheesecake Factory Assets Co. LLC) holds over 190 trademarks in 77 territories, of which the following are representative for the purposes of the present proceeding:

THE CHEESECAKE FACTORY (logo), United States Patent and Trademark Office (“USPTO”), principal register, registered January 16, 2001, registration number 2421042, classes 21, 25, 26, 30, and 42;

THE CHEESECAKE FACTORY (logo), USPTO, principal register, registered December 12, 2000, registration number 2412280, classes 21, 25, 26, 30, and 42;

THE CHEESECAKE FACTORY, USPTO, principal register, registered July 25, 1989, registration number 1549370, classes 30, and 42;

THE CHEESECAKE FACTORY (logo), USPTO, principal register, registered March 9, 1982, registration number 1191891, class 42;

THE CHEESECAKE FACTORY, European Union Trademark, Office for Harmonization in the Internal Market (“EUIPO”), registered June 10, 1998, registration number 000021592, classes 25, 30, and 42;

THE CHEESECAKE FACTORY (logo artistic), European Union Trademark, EUIPO, registered February 21, 2014, registration number 12187332, classes 30, and 43.

The disputed domain names were created on November 7, 2013. No background information has been provided by the current registrant and Respondent. The disputed domain names are in use by a third party for the purpose of selling cheese and cheesecakes via Internet websites.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following.

The Complainant contends that it has rights in the trademarks listed in section 4 above and has produced copies of parts of the relevant registration documents.

The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark. The generic Top-Level Domain (“gTLD”) designations “.info” and “.biz” should be disregarded in the determination of confusing similarity. The disputed domain names are then substantially identical to the dominant part of the Complainant’s trademark.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not an employee or franchisee of the Complainant and is not affiliated with the Complainant in any way. The Respondent has not been permitted or authorised to use the Complainant’s trademark. To the best of the Complainant’s knowledge the Respondent has no legal right to use the name “Cheese Cake Factory”. The disputed domain names serve to redirect traffic from the Complainant to the Respondent’s websites that promote a “Cheese Club”, and a “Cheesecake of the Month” club, which is in similar terminology to the Complainant’s reference to “Cheesecakes by the Month”. The Complainant refutes pre-emptively any potential assertion by the Respondent that its choice of the name “Cheesecake Factory” may have been incidental and says that whereas the current registrant of the disputed domain names is located in Romania, the previous registrant was located in the United States and the Respondent’s websites operate in the United States.

The Complainant further contends that the disputed domain names were registered and are being used in bad faith. The Complainant asserts that the Respondent registered the disputed domain names on or about November 7, 2013, some 30 years later than the Complainant registered and began to use its own domain name <thecheesecakefactory.com>, which the Respondent therefore knew or should have known about.

The Complainant asserts that a WhoIs record of the disputed domain names from January 2014 showed the registrant name to be “Cheese Factory” and the registrant organisation to be “cheesecakefactory”. Screen captures of the websites to which the disputed domain names resolved on dates in 2014 show substantial similarities to screen captures made in April and May 2017, including references to “Cheese Cake Factory”, and to “Cheese of the Month Club” and “Cheesecake of the Month Club”. The Complainant says it has never licensed its name to the “Cheese of the Month Club”.

The Complainant says that the Respondent has intended to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Respondent’s choice of the disputed domain names was not innocent but was to promote the Respondent’s business as if affiliated with Complainant. Internet users looking for the Complainant might accept a search result leading to the Respondent’s website by mistake, causing loss of goodwill to the Complainant and dilution of the distinctive quality of the Complainant’s trademark.

The Complainant has cited a number of previous decisions under the Policy that it considers to be supportive of its position.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

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

Email communications to the Center (forwarded by the Center to the Panel) and to the Parties were received from a third party, dated May 26, 2017, May 27, 2017, May 29, 2017, June 16, 2017, and June 22, 2017. The communications were essentially to the effect that this third party is using the disputed domain names and that the Complainant does not have a trademark in class 35. This third party also stated an intention to take certain action in the United States Federal Court concerning trademarks and asked the Center to provide contact information.

6. Discussion and Findings

A. Identity of the Respondent

Paragraph 1 of the Rules defines a respondent as “the holder of a domain-name registration against which a complaint is initiated”. According to the Registrar Verification for both disputed domain names sent by the Registrar of the disputed domain names to the Center dated May 17, 2017, “The Current Registrant as per the Whois database is the same as the Respondent - Registrant Details Ioana Veturia [...] Bucuresti [...]”. Thus, notwithstanding anything to the contrary, Ioana Veturia, as the registrant, would be the Respondent.

The Domain Registrant Agreement between the registrant and the Registrar of the disputed domain names states in part as follows:

“2. OBLIGATIONS OF THE REGISTRANT

(6) Any Registrant that intends to license use of a domain name to a third party or a privacy/proxy service, is nonetheless the Registered Name holder of record and is responsible for

(1) providing its own complete contact information and for;

(2) providing and updating accurate technical and administrative contact information adequate to facilitate timely resolution of any problems that arise in connection with the registered domain name.

The Registrant licensing use of the registered domain name according to this provision shall accept liability for harm caused by wrongful use of the registered domain name, unless it discloses the current contact information provided by the licensee and the identity of the licensee within seven (7) days to a party providing the registrant reasonable evidence of actionable harm.”

The registrant of the disputed domain names has not taken any specified action in respect of its obligations under paragraph 2(6) of the Domain Registrant Agreement, or otherwise, that may detract from the registrant’s continuing responsibility for the use of the disputed domain names by any licensee. The Panel confirms that it finds Ioana Veturia as the registered domain name holder of record to be the Respondent, and that the actions of any licensee shall be imputed to the Respondent.

The informal email communications from a third party claiming to be the user of the disputed domain names (and whose email address was provided as contact information on the websites to which the disputed domain names resolved) referred mainly to a trademark dispute, which would be outside the scope of the Policy, and intentions to pursue matters in court. The Panel did not find reason to take any action in respect of these emails.

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith”.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

B. Identical or Confusingly Similar

The Panel is satisfied by the copies of documentary evidence produced that the Complainant has the requisite rights under paragraph 4(a)(i) of the Policy in the trademark THE CHEESECAKE FACTORY.

The disputed domain names are <cheesecakefactory.biz> and <cheesecakefactory.info>. The gTLD designations “.biz” and “.info” may generally be disregarded in the determination of confusing similarity. The remaining entity “cheesecakefactory” differs from the Complainant’s trademark only by the absence of the word “the”, which in the circumstances, the Panel finds not to be distinguishing. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has asserted prima facie that the Respondent does not have rights or legitimate interests in respect of the disputed domain names, is not affiliated with the Complainant and has not been permitted or authorised to use the Complainant’s trademark.

Paragraph 4(c) of the Policy provides for the Respondent to rebut the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(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 Respondent has not replied. Nevertheless the Panel must be satisfied that the Respondent does not have rights or legitimate interests in the disputed domain names in the terms of paragraph 4(c) of the Policy or otherwise.

Certain screen captures of the Respondent’s websites, produced in the Complainant’s evidence, contain reference to “Cheese of the Month Club” as having trademark status (as mentioned by the third party who contacted the Center). In the exercise of its powers to undertake limited factual research into matters of public record (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8), the Panel has verified that the following trademark is currently registered to such third party:

CHEESE OF THE MONTH CLUB, word mark, USPTO principal register, registered September 28, 2010, registration number 3852089, class 35.

Whilst there may be no reason to doubt the trademark and authenticity of the “Cheese of the Month Club”, or that it is making an offering of goods or services, the use of the disputed domain names for the purpose cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the Policy because they substantially display the Complainant’s trademark without authorisation. In the terms of paragraph 4(c)(ii) of the Policy, there may be no reason to doubt that the “Cheese of the Month Club” is commonly known as such, but the business cannot claim to be commonly known by the disputed domain names, which comprise effectively the Complainant’s trademark. The use of the disputed domain names is clearly not within the contemplation of paragraph 4(c)(iii) of the Policy.

Accordingly, irrespective of the rights that the third party d/b/a Cheese of the Month Club may have in the trademark CHEESE OF THE MONTH CLUB, the Panel can find no grounds upon which the Respondent may have acquired rights or legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, of which the fourth is relevant in this instance:

“(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”.

Examination of the websites to which the disputed domain names have resolved or currently resolve shows attractively designed websites directed to the sale of a comprehensive variety of cheeses and cheesecakes. Indexed pages include “Cheesecake Of The Month Club”, “Goat Milk Cheese Of The Month Club”, “Spanish Cheese of the Month Club”, and many others, each leading to a further variety of products with prices and subscriptions. A large amorphous block of text on the landing page appears to be a keyword exercise.

In order to conduct its online business the Respondent must attract Internet users to its website. The Respondent relies upon the disputed domain names <cheesecakefactory.biz> and <cheesecakefactory.info> in order to attract Internet users. The Respondent thereby derives potential commercial benefit by trading on the fame and reputation associated with the Complainant’s established trademark THE CHEESECAKE FACTORY. The Panel finds it inevitable, on the evidence, that at least a proportion of Internet users, if presented with the disputed domain names in search results, or otherwise finding their way to the disputed domain names, would likely be confused into believing them to be associated with or endorsed by the Complainant. It is of no consequence that visitors on arrival at the Respondent’s websites may realise their mistake and that they have not reached the Complainant’s website, since initial interest confusion has already occurred.

Having regard to all the evidence, the Panel finds on the balance of probabilities that the Respondent has intentionally used the disputed domain names in such a way as to create confusion with the Complainant’s trademark for commercial gain in the terms of paragraph 4(b)(iv) of the Policy. The Panel further finds, on the evidence and on the balance of probabilities, that the disputed domain names have been registered or acquired for the bad faith purpose for which they have been used. Accordingly registration and use of the disputed domain names in bad faith are found under paragraph 4(a)(iii) of the Policy.

The Policy deals only with complaints of abusive registration of a domain name. Trademark disputes per se are outside the scope of the Policy and the third party who contacted the Center is free to pursue any such claims in an appropriate forum.

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 <cheesecakefactory.biz> and <cheesecakefactory.info>, be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: July 4, 2017