WIPO Arbitration and Mediation Center


CBOCS Properties, Inc. v. WhoIs Guard, Inc. / Tiffany Saarinen Hundley

Case No. D2018-2598

1. The Parties

Complainant is CBOCS Properties, Inc. of Livonia, Michigan, United States of America (“United States”), represented by Frost Brown Todd LLC, United States.

Respondent is WhoIs Guard, Inc. of Panama / Tiffany Saarinen Hundley of Wilmette, Illinois, United States.

2. The Domain Name and Registrar

The disputed domain name <crackerbarrel.online> (the “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 November 13, 2018. On November 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 15, 2018, 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 November 20, 2018.

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 November 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 2, 2019.

The Center appointed Robert A. Badgley as the sole panelist in this matter on January 4, 2019. 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 restaurant chain in the United States, with more than 650 locations, including 21 in the State of Illinois, where Respondent resides. Complainant has operated its restaurants under the mark CRACKER BARREL since 1969. It holds various trademark registrations with the United States Patent and Trademark Office (“USPTO”), including USPTO Reg. No. 3,886,461 for the mark CRACKER BARREL, registered on December 7, 2010 in connection with “restaurant services” with a date of first use of September 18, 1969. Complainant also has an Internet presence, with its main website located at “www.crackerbarrel.com”.

The Domain Name was registered on August 29, 2018. The Domain Name resolves to a largely undeveloped site which contains various hyperlinks to third-party sites, including the sites of several restaurant chains (such as Outback, Joe’s Crab Shack, Bubba Gump, and TGI Friday’s). Complainant alleges that Respondent derives per-click revenues from these hyperlinks.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the marks CRACKER BARREL registration and use. The Panel also finds the Domain Name to be identical to the mark.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. It is undisputed that Complainant never granted permission to Respondent to use its CRACKER BARREL trademark in any manner. Respondent has not come forward in this proceeding to articulate or prove her bona fides vis-à-vis the Domain Name, and no rights or legitimate interests emerge from the undisputed record in this case.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith.

The Panel first finds it more likely than not that Respondent had Complainant’s CRACKER BARREL mark in mind when registering the Domain Name. The mark has been in use for nearly 50 years and is fairly well known in the United States, including in Illinois. If there were any doubt about Respondent’s actual knowledge of the mark, her failure to deny knowledge of the mark, coupled with the fact that the Domain name resolves to a site featuring links to several other restaurant chains, dispels any reasonable doubt that Respondent was aware of the CRACKER BARREL mark when she registered the Domain name.

The Panel also finds bad faith use here. As noted above, a visitor to Respondent’s site is invited via hyperlink to visit the websites of other restaurant chains. Complainant alleges plausibly, and Respondent does not deny, that Respondent derives per-click revenue from these links. Such conduct amounts to bad faith under the above-quoted Policy paragraph 4(b)(iv).

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <crackerbarrel.online> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: January 4, 2019