WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IHOP Restaurants LLC v. WhoisGuard, Inc. / Gabriella Garlo
Case No. D2020-3001
1. The Parties
The Complainant is IHOP Restaurants LLC, United States of America (“United States” or “U.S.”), represented by Neal, Gerber & Eisenberg, United States.
The Respondent is WhoisGuard, Inc., Panama / Gabriella Garlo, Brazil.
2. The Domain Names and Registrars
The disputed domain names <ihop.coupons> and <ihop.delivery> are registered with NameCheap, Inc. NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2020. On November 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on November 13, 2020 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 amendment to the Complaint on November 13, 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 November 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2020.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on December 11, 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 which is incorporated under the law of Delaware, United States, is the intellectual property holding company for the International House of Pancakes LLC (referred to as “IHOP”) and other related entities established under its parent company, DineEquity, Inc.
IHOP trades as a chain of restaurants specializing in pancakes and breakfasts under the name IHOP. The first restaurant was opened in California in 1958 and in 1960 it began to expand through franchising. A printout of its story is set out in Exhibit 3 to the Complaint and at Exhibit 4 a printout of its history taken from the website that resolves from the Complainant’s domain name <ihop.com>.
Since at least 1973 when the acronym IHOP began to be used as a trade mark it has been used prominently in the group’s advertising throughout the U.S. The chain trading as IHOP is now famous in North America and there are over 1,650 IHOP restaurants in all U.S. states, as well as in Canada, Guatemala, Mexico, Puerto Rico, United Arab Emirates (“UAE”), Kuwait, Saudi Arabia, and the U.S. Virgin Islands. At Exhibit 5 is a print out of a June 18, 2014 press release on <ihop.com> entitled “IHOP Restaurants Celebrate 56 Years of Being America’s Favorite Breakfast”.
IHOP and its affiliates own an extensive worldwide portfolio of trade marks for IHOP. A schedule of these is set out in Exhibit 6. These marks have been very widely used in all kinds of promotional contexts as well as online with social media sites and websites.
In particular, the Complainant is the owner of the following U.S. Registration Nos. 5274710, for IHOP, registered on August 29, 2017; 5264018, for IHOP with a Smile logo, registered on August 15, 2017; and 3433996 and 3429408, for IHOP RESTAURANT with a logo, registered respectively on May 27, 2008 and May 20, 2008. At Exhibit 11 the Complainant exhibits a demand letter from its lawyers to the Respondent setting out a number of the marks set out in the schedule at Exhibit 6 and on which it relies as against the Respondent, including the above U.S. Registration No. 3433996.
The Complainant has over the years expended substantial resources to advertise and publicize the mark IHOP extensively, including traditionally on signage, in print, on television and radio as well as online and using social media such as Facebook and Twitter. Printouts of some of the social media pages featuring IHOP are exhibited as Exhibit 7.
Additionally, IHOP and/or its affiliates have owned and used the domain name <ihop.com> since at least 1998, as can be seen from the WhoIs Information at Exhibit 8 and sample web pages at Exhibit 9. The Complainant maintains that the mark IHOP as a result of its promotion is “distinctive, strong, and widely recognized among the general consuming public as a designation of the goods and services originating with, sponsored by, approved by, or affiliated with IHOP”.
In the absence of a Response or evidence to the contrary the Panel finds the above factual evidence to be true and proceeds to determine the Complaint on the basis of that evidence.
5. Parties’ Contentions
The Complainant submits:
i. that it owns registered trade mark rights in the mark IHOP and that the disputed domain names are “virtually identical and confusingly similar” to that mark;
ii. on the evidence, the Respondent has no legitimate rights or interest in the disputed domain names and has not nor is it currently making, a legitimate noncommercial or fair use of the disputed domain names; and,
iii. on the evidence, the Respondent has registered and used the disputed domain names in bad faith and with full knowledge of the Complainant’s mark IHOP.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds on the evidence of the Complainant’s trade mark rights set out in Section 4 above that the Complainant is the owner of the registered trade mark IHOP and that it has used the mark since at least 1973 in connection with its restaurants so that it has acquired a trading goodwill in the mark IHOP.
The two disputed domain names consist of the mark IHOP and, respectively, the generic Top-Level Domains (“gTLDs”) “.delivery” and “.coupons”. In the Panel’s view, the gTLDs “.delivery” and “.coupons” are standard registration requirements and as such may be disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. Accordingly, the Complainant’s trade mark is clearly recognizable in the disputed domain names.
On this evidence the Panel finds that the two disputed domain names are identical to the trade mark IHOP in which the Complainant has established it has registered rights, within Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent, on the evidence, has no rights or legitimate interests in the disputed domain names.
The Complainant confirms that that the Respondent has no legal relationship with it under which the Respondent can claim any rights in the disputed domain names. In particular, the Complainant has given no consent to use the mark IHOP.
On the evidence, the Respondent is not commonly known as or referred to by the disputed domain names. The Respondent does not own any applications or registrations for the term “ihop”.
Nor is there any evidence that the Respondent has made or is making a legitimate, noncommercial or fair use of the disputed domain names. To the contrary the Respondent is using the disputed domain names to redirect users to parked webpages that provide hyperlinks to third party sites, including websites advertising or offering services that compete with the Complainant’s business. The evidence of this use is set out in Exhibit 10.
The Complainant submits that where the Respondent has not used the mark IHOP in connection with a bona fide offering of goods or services but instead uses the mark to unlawfully attract Internet users to its website by causing customer confusion that precludes a finding that the Respondent is making a bona fide offer of goods or services within Paragraph 4(c)(i) of the Policy. Support for this view is contained in the UDRP decision UNIVERSAL CITY STUDIOS, INC. V. G.A.B. ENTERPRISES, WIPO Case No. D2000-0416. This Panel agrees with this submission.
Noting the above circumstances, the Panel finds that the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. In the absence of evidence to the contrary from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names within Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent submits that the Respondent has registered and used the disputed domain names in bad faith and with full knowledge of the existence of the Complainant’s registered mark IHOP.
It submits that given the “worldwide renown” of the mark IHOP it is implausible that the Respondent innocently registered the disputed domain names without an intention to exploit their similarity to the mark IHOP. It argues that the registration of IHOP means that the Respondent had constructive knowledge of the Complainant’s long-standing rights in the marks at the dates of registration of the disputed domain names in August and September 2020.
The Panel, in the absence of contrary evidence, accepts that submission. This submission is strengthened by the evidence that the Respondent is not known by the mark IHOP and is not using it in connection with any business trading under that name. The Panel follows the earlier UDRP decision in The Nasdaq Stock Market, Inc. v NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492where the UDRP panel found that in such circumstances “the only reasonable conclusion is that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the site (at issue) by creating a likelihood of confusion”. In this Panel’s view, that is the position here.
The Panel takes into account the evidence, set out in Exhibit 10, of the two disputed domain names’ redirection to websites containing pay-per-click links that redirect users to third party websites advertising or offering services that compete with the Complainant’s business. This is further evidence of bad faith.
The Respondent did not reply to the cease and desist letter, Exhibit 11, sent by the Complainant’s lawyers. It is well-established that failure to do so may support a finding of bad faith. Similarly, on the evidence, the fact that the Respondent has used a proxy service supports a finding of bad faith in these circumstances.
In the absence of a Response and contrary evidence from the Respondent, the Panel accepts the Complainant’s submissions and finds that the Respondent registered and is using the disputed domain names in bad faith within Paragraph 4(a)(iii) 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 names, <ihop.coupons> and <ihop.delivery>, be transferred to the Complainant.
Clive Duncan Thorne
Date: December 21, 2020