WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Little Caesar Enterprises, Inc. v. Shi Wen Li, Li & Plum
Case No. D2020-0196
1. The Parties
Complainant is Little Caesar Enterprises, Inc., United States of America (the “United States” or “U.S”), represented by Davis & Gilbert LLP, United States.
Respondent is Shi Wen Li, Li & Plum, United States.
2. The Domain Name and Registrar
The disputed domain name <littlecaesars.app> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2020. On January 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from that provided in the Complaint. The Center sent an email communication to Complainant on January 28, 2020 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 January 31, 2020.
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 February 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 26, 2020.
The Center appointed Debra J. Stanek as the sole panelist in this matter on March 2, 2020. 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 has operated pizza restaurants under the name “Little Caesars” since 1959 and also franchises “Little Caesars” pizza restaurants in 24 countries and territories throughout the world. Complainant’s affiliate, LC Trademarks, Inc., owns several United States federal trademark registrations for the LITTLE CAESARS mark, including among others, U.S. Reg. No. 0842596, registered in 1968 for restaurant services.
Complainant owns and operates the domain name <littlecaesars.com>.
On October 11, 2019, Respondent registered <littlecaesars.app>. The disputed domain name does not appear to be used with an active website; instead it resolves to “textmei.com”. Using an email address provided on that site, Complainant’s counsel requested that the <littlecaesars.app> server be disabled, and that the owner’s contact information be provided. In response, Complainant’s counsel received an email message signed by Respondent Shi Wen Li identifying Respondent as the owner of the disputed domain name and offering to “discuss a settlement” for its transfer. Complainant’s counsel replied that in light of the fact that use of the LITTLE CAESARS was not authorized, it was not clear what “settlement” was being proposed. Respondent subsequently indicated that it was willing to entertain a “monetary settlement” for the disputed domain name.
5. Parties’ Contentions
1. Identical or Confusingly Similar
The disputed domain name is identical to Complainant’s LITTLE CAESARS mark.
2. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent’s use of its mark and is not affiliated with Respondent. There is no evidence that Respondent is using or has engaged in any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services because the disputed domain name does not connect to a website that uses it.
Respondent never asserted any rights or legitimate interests in the disputed domain name in communications with Complainant’s counsel.
3. Registered and Used in Bad Faith
Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or transferring it to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name.
In response to the communications from Complainant’s counsel, Respondent offered to sell the disputed domain name as part of a “monetary settlement.”
The offer to sell indicates that Respondent registered the disputed domain name primarily for sale for profit to Complainant.
Respondent’s bad faith is further demonstrated by the fact that Complainant has been using its LITTLE CAESARS mark in the United States since 1969. Respondent registered the disputed domain name in 2019.
Further, according to the “CuteState.com” website, which provides information about websites and domain names, Respondent’s organization, Li & Plum, has held itself out as the owner of other websites: “advil.app” and “thesheraton.app”. Like the disputed domain name, those websites also include the trademark of a third party, ADVIL (a United States federal registration for which is owned by PF Consumer Healthcare 1 LLC) and SHERATON (several United States federal registrations for which are owned by The Sheraton LLC). Complainant is not aware of that Respondent has been authorized by the owners of those marks to use the mark in a domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To prevail, a complainant must prove, as to the domain name at issue, that: (a) it is identical or confusingly similar to a mark in which complainant has rights, (b) respondent has no rights or legitimate interests in respect to it, and (c) it has been registered and is being used in bad faith. Policy, paragraph 4(a).
The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b). A respondent’s failure to respond to a complaint does not automatically result in a finding for complainant. A complainant continues to have the burden of establishing each element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. The Panel may, however, draw such inferences from Respondent’s default as appropriate. See Rules, paragraph 14(b).
A. Identical or Confusingly Similar
Under the circumstances presented here, consistent with the consensus view, the Panel finds that Complainant may be considered to have rights in the LITTLE CAESARS trademark for purposes of standing under the Policy. Section 1.4, WIPO Overview 3.0. The United States registrations appended to the Complaint identify the owner as LC Trademarks, Inc.; Complainant has indicated that LC Trademarks, Inc. is its affiliate. In the Panel’s view, while it is preferable for a party to submit evidence of its authority, the Panel is satisfied that Complainant has the authority to bring this Complaint based on the registration held by its affiliate.
The disputed domain name is identical to Complainant’s mark save for the elimination of a space between “little” and “caesars” and the addition of the generic Top-Level domain (“gTLD”). For purposes of this factor, those differences are inconsequential.
The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel shares the consensus view that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing, under paragraph 4(c) of the Policy. See WIPO Overview 3.0, section 2.1(once complainant makes a prima facie case, the burden of production shifts to respondent). Respondent has not come forward with any evidence demonstrating rights or legitimate interests in the disputed domain name. For the following reasons, the Panel finds that Complainant has made a prima facie showing under this element.
It does not appear that Respondent is making any use of the disputed domain name in connection with any bona fide offering. The disputed domain name redirects to another, seemingly unrelated, site. That use does not, under these circumstances, constitute evidence of prior use or demonstrable preparations to use the disputed domain name. Compare WIPO Overview 3.0, section 2.2 (examples of use or preparations to use include evidence of, among other things, forming a business, investing in website development or promotional materials, creating and implementing a business plan, etc.).
Further, it does not appear that Respondent is commonly known by the disputed domain name – the WhoIs record identifies an individual, “Shi Wen Li,” and an organization, Li & Plum.
The Panel also concludes that the use of the disputed domain name is not a legitimate noncommercial or fair use of the disputed domain name. Due to the identity of the disputed domain name and the LITTLE CAESARS mark, the disputed domain name falsely suggests an affiliation between the two. See WIPO Overview 3.0, section 2.5.
As noted above, Respondent has not rebutted Complainant’s prima facie showing. The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant must establish that the disputed domain name was registered and is being used in bad faith.
Merely registering a domain name in the hopes of selling it for a profit does not, in and of itself, establish bad faith registration and use. Here, however, the disputed domain name is identical to a mark whose registration predates registration of the disputed domain name by over 50 years. Moreover, the mark is widely-known in the United States. It therefore seems most probable that Respondent (also located in the United States) was aware of Complainant and its mark and registered the disputed domain name with them in mind. Respondent’s response to Complainant’s counsel referencing a “settlement” suggests that Respondent was seeking something other than an amount equal to “documented out-of-pocket costs”. Lastly, Complainant provided some evidences to suggest that Respondent may be engaging in a pattern of registering domain names that correspond to third party registrations.
In light of the foregoing facts and the adverse inferences that arise from Respondent’s failure to respond to the Complaint, the Panel finds that Complainant has established that Respondent has registered and is using the disputed domain name in bad faith.
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 <littlecaesars.app> be transferred to Complainant.
Debra J. Stanek
Date: March 16, 2020