WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sbarro Franchise Co., LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Josephong
Case No. D2020-0604
1. The Parties
The Complainant is Sbarro Franchise Co., LLC, United States of America (“United States” or “US”), represented by Gottlieb, Rackman & Reisman, PC, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Josephong, China.
2. The Domain Name and Registrar
The disputed domain name <sbarrochina.com> is 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 March 10, 2020. On March 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 12, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email to the Complainant informing the Complainant of a deficiency with the Complaint. The Complainant filed an amended Complaint on March 17, 2020.
The Center verified that the Complaint, together with the amendment to 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 March 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2020.
The Center appointed Rachel Tan as the sole panelist in this matter on April 14, 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
The Complainant is a subsidiary of Sbarro LLC (collectively referred to as “the Complainant”), which is an owner and operator of fast food pizzerias and Italian-style restaurants. The first Sbarro restaurant was established in New York in 1959. The Complainant now owns, operates, licenses, and oversees more than 577 company-owned and franchised restaurants worldwide. The Complainant’s global sales were in excess of USD 319 million for fiscal year 2019. The Complainant has invested millions of dollars in advertising and promoting its brand. The Complainant operates an interactive website at the domain name <sbarro.com>.
The Complainant has traded under the SBARRO mark since 1965, and owns 15 trade mark registrations in the US and seven trade mark registrations in China that incorporate the term “sbarro”. In particular, four of them are SBARRO word mark registrations, namely, US Registration No. 4982244 registered on June 21, 2016, in class 30; US Registration No. 1991581 registered on August 6, 1996, in class 30; US Registration No. 0985647 registered on June 4, 1974, in class 42; and, Chinese Registration No. 107699 registered on August 14, 1997, in class 42.
The Complainant’s counsel sent a cease and desist letter and a follow up email to the Respondent on January 13, 2020, and February 5, 2020, respectively, demanding transfer of the disputed domain name to the Complainant, but there was no response from the Respondent.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Josephong, China.
The disputed domain name was registered on December 12, 2019, and currently resolves to a gambling website in the Chinese language.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its famous SBARRO trade mark. The addition of the geographic term “China” does not inhibit the finding of confusing similarity between the disputed domain name and the Complainant’s SBARRO trade mark.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed, authorized, or otherwise sanctioned the Respondent’s use of the SBARRO trade mark for any purpose. The Complainant’s use of its famous trade mark predates the Respondent’s registration of the disputed domain name by more than five decades. There is nothing to indicate that the Respondent is now or has ever been known by or referred to by a name wholly consisting of or incorporating “Sbarro”. There is no evidence that the Respondent has made any bona fide commercial use of the name “Sbarro”.
The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith. The Respondent’s bad faith is demonstrated by incorporating the Complainant’s famous SBARRO trade mark into the disputed domain name. The Respondent was likely aware of the SBARRO trade mark. The Respondent’s redirection of the disputed domain name to a website which promotes online gambling is evidence of bad faith. The Respondent had registered the disputed domain name with every intention of trading upon the renown of and goodwill reposed in the SBARRO trade mark. Moreover, the Respondent’s failure to articulate any justification for the disputed domain name’s inclusion of the SBARRO trade mark in response to the January 13, 2020 notice letter further supports a finding bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the SBARRO trade mark.
The Panel notes the disputed domain name is comprised of the SBARRO trade mark in its entirety followed by a geographical term “China”. The positioning of the SBARRO trade mark at the beginning of the disputed domain name makes it instantly recognizable. The term “China” does not preclude a finding of confusing similarity between the SBARRO trade mark and the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is permissible for the Panel to ignore the generic Top-Level Domain suffix, in this case “.com”. In cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0. Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In circumstances where the Complainant possesses exclusive rights to the SBARRO trade mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “sbarro”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s SBARRO trade mark or register the disputed domain name. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant owns trade mark registrations of SBARRO and the earliest registration predates the registration date of the disputed domain name by almost 50 years. Through extensive use and advertising, the Complainants’ SBARRO trade mark is known throughout the US as well as China where the Respondent is apparently located. Moreover, the term “sbarro” is not merely a name. Search results using the key word “sbarro” on the Baidu and Google search engines direct Internet users to the Complainant and its SBARRO restaurants, which indicates that an exclusive connection between the SBARRO trade mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s SBARRO trade mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes, WIPO Case No. D2011-0874.
Section 3.1.4 of the WIPO Overview 3.0 states that “given that the use of a domain name for per se illegitimate activity[…], such behavior is manifestly considered evidence of bad faith.”. The disputed domain name resolves to a Chinese gambling website. This is an indication that the Respondent intentionally traded on the goodwill of the Complainants’ SBARRO trade mark to conduct a possibly illegitimate activity and attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s SBARRO trade mark.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, direction of the disputed domain name to a gambling website, and by continuing to hold the disputed domain name, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Therefore, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.
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 <sbarrochina.com> be transferred to the Complainant.
Date: April 27, 2020