WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Domino''s Pizza Enterprises Limited v. WhoisGuard Protected, C/O dominosau.com / Uladzislau Vasilkevich, Atlant Advisors
Case No. D2017-2078
1. The Parties
The Complainant is Domino''s Pizza Enterprises Limited of Queensland, Australia, represented by Norton Rose Fulbright LLP, Australia.
The Respondent is WhoisGuard Protected, C/O dominosau.com of Panama / Uladzislau Vasilkevich, Atlant Advisors of Edinburgh, United Kingdom, Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <dominosau.com> ("Disputed Domain Name") is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 25, 2017 naming WhoisGuard Protected of Panama as the Respondent. On October 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 entity and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 1, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on November 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2017. The Respondent did not submit a Response by the November 21, 2017 deadline. Accordingly, the Center notified the Respondent's default on November 23, 2017.
On November 24, 2017, the Respondent Atlant Advisors responded to the Center's notification to say that the Disputed Domain Name was registered by one of Atlant Advisors' employees by mistake. The Center informed the Parties of the possibility of suspending the proceedings to allow the Parties a chance to negotiate a settlement agreement. On December 1, 2017, the Complainant informed the Center that it did not wish to request a suspension of the proceedings.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 7, 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 Complainant is the Australian master franchisee of the DOMINOS' brand and business through a master franchise agreement dated May 25, 1993 with Domino's Pizza International Franchising Inc. (the "Franchisor"). The Complainant is exclusively authorized to use the registered trademark DOMINO''S in various jurisdictions, including Australia and has more than 2,000 stores across seven countries. The trademark DOMINO'S is owned by Domino's IP Holder LLC (the "Trademark Owner"), which has granted an international license to Domino's Pizza International Franchising Inc. Domino's IP Holder LLC holds, inter alia, the trademark registration No. 362632, registered on July 9, 1981 in Australia.
The Disputed Domain Name was registered on October 6, 2017 and: 1) between October 18, 2017 and October 20, 2017, resolved to Complainant's own website and 2) after October 20, 2017, resolved to a website that purported to offer Domino's pizza vouchers in exchange for the website visitor completing a survey and registering with a mobile number.
5. Parties' Contentions
The Complainant''s contentions can be summarized as follows:
(a) The Complainant holds the exclusive master franchise rights for the DOMINO'S Marks in Australia, New Zealand, Belgium, France, the Netherlands, Japan and Germany through a master franchise agreement with the Franchisor dated May 1993. The Trademark Owner owns various registered trademarks encompassing the DOMINO'S trademark, including those registered in Australia (the "DOMINO'S Marks"), and granted an international license to the DOMINO'S marks to the Franchisor via an International Franchisor IP License Agreement dated April 2007. The Trademark Owner is listed as the owner of the DOMINO''S trademark in Australia with a priority date of July 9, 1981. The Complainant has been offering goods and services under the DOMINO'S Marks since 1983.
(b) The Disputed Domain Name, which was registered on October 6, 2017 by WhoisGuard Protected, resolved to the Complainant's website for a short time and later resolved to a website (the "Website") that purported to offer free Domino's vouchers in exchange for completing an online survey and registering using a mobile number.
(c) The most distinguishing part of the Disputed Domain Name is "dominos", which is confusingly similar to the DOMINO'S Marks. The use of the term "au", which is commonly used as the country code for Australia, does nothing to distinguish the Disputed Domain Name from the DOMINO'S Marks.
(d) The Respondent has no legitimate interests or rights in the Disputed Domain Name. The Respondent is in no way connected to the Complainant and has been using the Disputed Domain Name to intentionally mislead internet users by offering vouchers to Complainant's goods and services and displaying the DOMINO'S Marks on its Website. Given the international fame of the DOMINO'S Marks prior to the registration of the Disputed Domain Name, and the fact that the Respondent uses the DOMINO'S Marks on its Website, the Respondent must have been aware of the Complainant and the DOMINO'S Marks when the Respondent registered the Disputed Domain Name.
(e) The Respondent registered and is using the Disputed Domain Name in bad faith. The DOMINO'S Marks is a well-known mark and the Respondent has incorporated it into the Disputed Domain Name with no plausible explanation for doing so. The Respondent is providing convoluted contact information to avoid being notified. The Disputed Domain Name was first registered through a privacy protect service out of Panama, and continues to use a Russian contact number even though the Respondent is a Scottish company. The Disputed Domain Name resolved to the Complainant's website for a period of time for no apparent reason. The Disputed Domain Name later resolved to Respondent's Website, which prominently displayed the DOMINO'S Marks, and was likely using the DOMINO'S Marks to induce visitors of the Website to submit their sensitive information to Respondent or a third party.
The Respondent did not file a formal Response.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the DOMINO'S Marks, based on the Trademark Owner's registrations in Australia. For example, the Trademark Owner owns the trademark for DOMINO''S PIZZA for restaurant services relating to pizza with a priority date of July 9, 1981, and the trademark for DOMINO'S for restaurant services, catering services and services related to supplying meals with a priority date of July 26, 1985.
The Disputed Domain Name incorporates the word "dominos" which is confusingly similar to the DOMINO'S Marks. The term "au", as used in the Disputed Domain Name, is a generic term, which may be understood as the abbreviation for Australia, where the Complainant operates. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant's mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088).
The Panel finds that "dominos" is the distinctive component of the Disputed Domain Name, and the addition of "au" does nothing to distinguish it from the Complainant''s DOMINO'S Marks.
It is also well established that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the generic Top-Level Domain extensions, in this case ".com", may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant obtained the rights to and began using the DOMINO'S Marks many years before the Disputed Domain Name was registered by the Respondent, and the Complainant has never authorised the Respondent to use its trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant's contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant's evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondent's use of, or demonstrable preparations to use the Disputed Domain Name or names corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if they have acquired no trade mark 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 trade mark or service mark at issue.
The Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Name, or names corresponding to them. The Disputed Domain Name is currently inactive, but based on the screenshots provided by the Complainant as at October 20, 2017, it used to resolve to a website that allegedly offered vouchers to Complainant's goods and services in exchange for completing an online survey and providing a mobile number for registration.
Based on the foregoing, and the fact that the Disputed Domain Name is confusingly similar to the Complainant's DOMINO'S Marks, the Panel finds that the Respondent has been using the Disputed Domain Name with the intent of misleadingly diverting Internet users to the Website in order to make commercial gains, either for the Respondent or a third party. Such use cannot confer any rights or legitimate interests to the Respondent in the Disputed Domain Name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel accepts that the Respondent is likely to have known of the the Complainant's DOMINO'S Marks at the time it registered the Disputed Domain Name, and registered and used it in bad faith, based on the following:
(a) the Respondent acquired the Disputed Domain Name on October 6, 2017, this was many years after the Complainant first began using the DOMINO'S Marks in relation to its business;
(b) the Disputed Domain Name actually resolved to the Complainant's website for a time and later resolved to a website that displayed the DOMINO'S Marks; and
(c) the Disputed Domain Name is confusingly similar to the DOMINO'S Marks.
The Panel believes that the Respondent registered and used the Disputed Domain Name with the intent of trading on the reputation of the DOMINO'S Marks to attract Internet users to the Respondent's Website, by creating a likelihood of confusion with the DOMINO'S Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website, for commercial gain.
Further, the Respondent initially registered the Disputed Domain Name through a privacy protect service and continues to use a Russian contact number for a Scottish company in what may be an attempt to avoid accurate identification. The Website also appears to be used for acquiring sensitive information from Internet users, i.e., a "phishing" website. It is difficult to believe that the Disputed Domain Name was mistakenly registered by an employee of Atlant Advisors, as claimed by the Respondent in its email to the Center of November 24, 2017, when the Disputed Domain Name first resolved to the Complainant's own website and later to a new website that prominently displayed the DOMINO'S Marks.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.
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, <dominosau.com>, be transferred to the Complainant.
Date: December 21, 2017