WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sbarro Franchise Co., LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Martketplace*** c/o Dynadot
Case No. D2018-1713
1. The Parties
Complainant is Sbarro Franchise Co., LLC of Columbus, Ohio, United States of America (“United States”), represented by Gottlieb, Rackman & Reisman, PC, United States.
Respondent is Expired domain caught by auction winner.***Maybe for sale on Dynadot Martketplace*** c/o Dynadot of San Mateo, California, United States.
2. The Domain Name and Registrar
The disputed domain name <sbarronewyorkpizza.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2018. On July 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 31, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2018.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on September 10, 2018. 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 is a subsidiary of Sbarro LLC (both subsequently referred to as “Complainant”), the owner and operator of fast food pizzerias and Italian-style restaurants. The first Sbarro restaurant was established in Brooklyn, New York in 1959. Today, Sbarro owns, operates, licenses, and oversees more than 623 company-owned and franchised restaurants around the world, including 329 locations in the United States.
The commercial strength of Sbarro’s brand is reflected in its worldwide sales: in 2017, Sbarro had global sales in excess of USD 340 million. In addition, Sbarro has invested millions of dollars in advertising and promoting its brand. Sbarro supports its franchisors’ advertising efforts both domestically and internationally. Sbarro operates an interactive website accessible at the domain name <sbarro.com>, and has thousands of followers on Twitter and Instagram, as well as over 300,000 “likes” on Facebook. Every Sbarro location (regardless of whether company-owned or licensed) operates under a mark incorporating the SBARRO trademark. Sbarro has used the SBARRO trademark in connection with restaurant services since 1965. Complainant owns 13 valid trademark registrations in the United States incorporating the SBARRO mark, dating from 1974 (United States Trademark No. 0985647 SBARRO, registered on June 4, 1974).
Complainant also owns United States trademark application No. 87/884,566 for SBARRO NEW YORK PIZZA in International Class 43 for “restaurant services”. This trademark application was filed by Complainant on April 19, 2018. Four days later, on April 23, 2018, Respondent registered the Domain Name. The Domain Name resolves to a website indicating that it may be for sale through “DomainAgents”, a domain name brokerage and negotiation platform. According to the webpage, the Domain Name is available for purchase and the webpage provides instructions on how to open a negotiation by submitting an offer.
Complainant has not authorized Respondent to use the SBARRO trademark for any purpose, including in connection with the Domain Name.
Complainant has been involved in prior UDRP proceedings. In Sbarro Franchise Co., LLC v. Domain Admin Domain Admin, whoisprotection biz / Burc Caglayan, WIPO Case No. D2016-1837, the UDRP panel awarded transfer of the domain name <sbarroreklam.com> to Complainant.
5. Parties’ Contentions
Complainant contends that consideration of the three key elements under the Policy leads inexorably to the conclusion that Respondent registered the Domain Name in bad faith and in violation of Complainant’s exclusive rights in the SBARRO trademark. Accordingly, Complainant states it is entitled to the transfer of the Domain Name.
(i) Identical or confusingly similar
Complainant states that the Domain Name consists of two elements – the SBARRO trademark and the words “newyorkpizza”. Complainant contends that the Domain Name’s inclusion of the SBARRO mark – which by virtue of Sbarro’s decades-long use of the mark, substantial advertising and promotion, and enormous sales is indisputably strong, distinctive, and uniquely associated with Complainant – results in confusing similarity.
Complainant explains that it has a pending application for the mark SBARRO NEW YORK PIZZA, which was filed prior to Respondent registering the Domain Name. Sbarro has been using the SBARRO NEW YORK PIZZA mark in commerce in the United States since as early as March 2017. Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. Not only does Complainant have a registered trademark for SBARRO, but Complainant has developed extensive common law trademark rights with the SBARRO and SBARRO NEW YORK PIZZA marks in connection with restaurant services prior to Respondent’s registration of the Domain Name. Sbarro has been making and selling New York style pizza for over 50 years. Thus, there is no doubt that consumers identify Sbarro’s pizza with New York.
Moreover, simply employing a geographic term like “New York” or an ordinary descriptive term like “pizza” in tandem with a mark does not guard against a finding of confusing similarity. The descriptive term “pizza” relates to Sbarro’s business-namely, the goods sold under the SBARRO brand-and underscores the Domain Name’s confusing similarity.
In sum, the Domain Name amounts to nothing more than a conjoining of Complainant’s famous trademark, a geographic term, and a generic term that describes Sbarro’s goods. As such, the Domain Name is confusingly similar to the SBARRO and SBARRO NEW YORK PIZZA trademarks, and Complainant indisputably satisfies the first prong of the UDRP analysis.
(ii) Rights or legitimate interests
Complainant states that Respondent can muster no argument to demonstrate any rights or legitimate interests in the Domain Name. Complainant has not licensed, authorized, or otherwise sanctioned Respondent’s use of the SBARRO trademark or the SBARRO NEW YORK PIZZA trademark application for any purpose. There is nothing to indicate that Respondent is now or has ever been known by or referred to by a name wholly consisting of or incorporating “sbarro” . Moreover, Complainant’s use of its famous mark predates Respondent’s registration of the Domain Name by more than five decades. Complainant’s application for the SBARRO NEW YORK PIZZA mark predates Respondent’s registration of the Domain Name by four days, which is not a coincidence. Complainant notes that Respondent presumably received, but made no effort to respond to Complainant’s efforts to contact Respondent prior to filing the Complaint. The Domain Name resolves to a parked page – it is not associated with a webpage that might indicate that Respondent has any claim to or interest in the names “Sbarro” or “Sbarro New York Pizza.”
In short, Complainant contends there is no evidence that Respondent has made any bona fide commercial use of the names “Sbarro” and “Sbarro New York Pizza.” Accordingly, Respondent cannot lay claim to any rights or legitimate interests in the Domain Name.
(iii) Registered and used in bad faith
Complainant contends that the factual circumstances listed in the Policy (demonstrating that a registrant has registered or used a contested domain name in bad faith) are not exclusive, and UDRP panels have frequently found that a respondent registered and used a domain name in bad faith where, as here, the domain name was passively held. The passive holding doctrine is generally applied after consideration of the totality of the circumstances.
Complainant states that Respondent’s bad faith is demonstrated primarily by the Domain Name’s inclusion of the famous SBARRO trademark, in which Complainant has enjoyed exclusive rights in the field of restaurant and food services for more than 50 years, and Respondent’s registration of the Domain Name merely four days after Complainant filed its trademark application for SBARRO NEW YORK PIZZA. Respondent cannot reasonably dispute that it was unaware of the SBARRO trademark and its use in connection with restaurant and catering services prior to registering the Domain Name. Sbarro owns 623 locations worldwide. As such, it is overwhelmingly likely that Respondent has encountered the SBARRO trademark in use in connection with Complainant’s famous eateries.
Additionally, “Sbarro” is an arbitrary word with no significance except as a trademark. By any reasonable analysis, therefore, Complainant urges it cannot be seriously doubted that Respondent devised and registered the Domain Name with every intention of trading upon the renown and goodwill reposed in the SBARRO mark.
Finally, Respondent’s failure to articulate any justification for the Domain Name’s inclusion of the SBARRO trademark in response to Complainant’s pre-Complaint correspondence further supports a finding bad faith based on passive holding.
Accordingly, Complainant contends that it has satisfied the third and final element of the UDRP analysis, justifying the transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the SBARRO trademark, based on trademark registrations and extensive use of the mark in the United States and at its 623 locations worldwide. Indeed, Complainant has strong rights in its SBARRO mark.
Further, the Panel determines that the Domain Name is confusingly similar to the SBARRO mark. The Domain Name incorporates the mark in its entirety, while adding the phrase “New York pizza”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its SBARRO mark; that Respondent is not commonly known by “sbarro” or the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name is linked to a webpage indicating that it is for sale. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it, especially where the Domain Name is confusingly similar to Complainant’s well-known SBARRO mark.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark.”
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. First, based on the evidence, the Panel finds that Respondent was very likely aware of Complainant and its well−known SBARRO mark, and targeted that mark, when registering the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive SBARRO trademark in its entirety, along with the phrase “New York pizza”. The Panel observes that “sbarro” is a made-up word, with no meaning other than to refer to Complainant and its business. The Panel finds that the addition of “New York pizza” reinforces the possibility of confusion, especially because Complainant has been making and selling New York style pizza for over 50 years. Moreover, Respondent registered the Domain Name just four days after Complainant applied for the trademark, SBARRO NEW YORK PIZZA, which is identical to the Domain Name. The Panel finds, on the balance of the probabilities, that this timing was not a coincidence.
Respondent has provided no explanation for registering the Domain Name, and the Panel can think of no plausible explanation for registering the term, “sbarronewyorkpizza” as a domain name. Given the fame of the SBARRO mark, the fact that the Domain Name is so obviously connected with Complainant’s mark, and the timing of the Domain Name’s registration, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its SBARRO mark when registering the Domain Name. See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products, […] its very use by someone with no connection with the products suggests opportunistic bad faith”).
Complainant indicated that the Domain Name connects to a webpage indicating that the Domain Name is for sale. This fact alone may be insufficient evidence of bad faith use. However, when considered in combination with the close similarity between the Domain Name and Complainant’s well-known SBARRO trademark, described above, and the following factors, the Panel determines that the Domain Name has been used in bad faith. The evidence indicates that Respondent registered the Domain Name just four days after Complainant submitted its trademark application for the mark, SBARRO NEW YORK PIZZA. The Domain Name resolves to a webpage indicating that it is offered for sale. The Panel cannot think of any plausible explanation of good faith use, in any event Respondent did not provide an explanation for its choice of the Domain Name and evidence of any actual or contemplated good faith use of the Domain Name.
Thus, in this case where Respondent targeted Complainant’s well-known SBARRO mark and failed to submit a response to the Complaint, and where the Domain Name is offered for sale, these circumstances, when considered in context with all of the other circumstances of case, support the Panel’s finding of bad faith registration and use.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <sbarronewyorkpizza.com> be transferred to Complainant.
Christopher S. Gibson
Date: October 9, 2018