WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jersey Mike’s Australia Pty Limited, Jersey Mike’s Franchise Systems Inc v. The Trustee for Puleys Dental Trust and The Trustee for VSS Dental Unit Trust
Case No. DAU2016-0002
1. The Parties
The Complainant is Jersey Mike’s Australia Pty Limited (“JMAPL”) of Sydney, New South Wales, Australia, Jersey Mike’s Franchise Systems Inc (“JMFSI”) of Manaquan, New Jersey, United States of America (“United States”), represented by Competitive Foods Australia Pty Ltd, Australia.
The Respondent is The Trustee for Puleys Dental Trust and The Trustee for VSS Dental Unit Trust of Brisbane, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <jerseymikes.com.au> is registered with Web Address Registration Pty Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2016. On January 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 22, 2016, the Center received an informal pre-commencement communication from the Respondent.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2016.
The Center appointed Andrew F. Christie as the sole panelist in this matter on February 16, 2016. 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
Of the two entities making up the Complainant, JMFSI is the registered proprietor, and JMAPL is the Australian licensee, of Australian trademark registration number 1520569 for the trademark JERSEY MIKE’S. This trademark was registered on June 28, 2012, in Classes 35 and 43 in respect of restaurant management services and restaurant services. JMFSI and its predecessors in business have continually, since 1956, operated a submarine sandwich restaurant and franchise business in the United States, and since 1987 has used the name and style “Jersey Mike’s” as its brand name. JMFSI has exclusively authorized JMAPL to use the “Jersey Mike’s” name and the JERSEY MIKE’S trademark in Australia in respect of its corporate name and style and the submarine sandwich restaurants that it has been appointed to franchise throughout Australia.
In 2012 the Jersey Mike’s franchise system was ranked 4th in the Top 10 sandwich franchise opportunities systems in the United States according to Entrepreneur Media Inc. In 2013 the gross revenue of outlets operating under the JERSEY MIKE’S trademark exceeded AUD 570 million.
According to information provided by the Registrar, the disputed domain name was registered on March 13, 2015. As of the date of the filing of this Complaint, the disputed domain resolved to a landing page of a domain name registrar called “Crazy Domains”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name comprises the whole of the JERSEY MIKE’S trademark, save for the apostrophe. The disputed domain name is therefore identical to the Complainant’s registered trademark or, if the apostrophe is regarded as material, is at the least confusingly similar to its registered trademark, as well as to its corporate name.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) it only resolves to a parking page in the name of the Registrar, and there is no evidence of any MX record, meaning that it is not being used for email; (ii) the Complainant has not been asked to grant, and has not granted, any right to the Respondent to use its name or trademark, or to reflect that name or trademark in any domain name, or to offer any goods or services under that name or trademark, anywhere in the world; (iii) there is no legitimate reason for the Respondent to register or contemplate the use of the disputed domain name, which has no connection with any of the entities or persons identified in the relevant WhoIs record, and no discernable nexus with a dental practice which is the Respondent’s business; and (iv) the Complainant needs to be able to use the disputed domain name to operate its Australian business, but is being blocked by the Respondent’s conduct in squatting on the disputed domain name and not using it in connection with its business or at all.
The Complainant contends that the disputed domain name was registered and is subsequently being used in bad faith because the Respondent appears ineligible to hold a domain name in the “.com.au” Second-Level Domain (“2LD”) and has therefore breached its registration eligibility representation. Under paragraph 2 of the eligibility criteria for registration in the “.com.au” 2LD, a domain name must be either an exact match, abbreviation or acronym of the registrant’s name or trademark, or otherwise closely and substantially connected to the registrant. As the registrant is a partnership of trustees of a dental practice operating under the business name “Southern Dental” in Brisbane, the disputed domain name has no resemblance to the names of the joint registrants, or to the business name under which they operate a dental practice, and there is no evidence of those same trustees operating any other business under any name resembling the disputed domain name. There is no plausible, let alone close and substantial, connection between the registrants and the disputed domain name. The evidence is consistent only with the disputed domain name having been registered for the purpose of preventing the Complainant from registering it, or to disrupt the business plans of the Complainant, or both. The Complainant also draws attention to the fact that in 2014 the founder of JMFSI, gave a video interview to The Street in which JMFSI’s plans for international expansion were mentioned. Although Australia was not expressly named as a future country for expansion, and the Complainant has no evidence that any representative of the Respondent saw the interview or any other publicity about the Complainant’s international expansion aspirations, it would be a reasonable assumption to include Australia when 5,000 stores internationally were predicted to be opened.
On January 22, 2016, the Center received an email from the Respondent’s email address stating “I am the owner of the domain and am not sure what this complaint is and is about. Please can you please give me further information regarding this issue.” Despite being duly notified of the Complaint later on January 22, 2016, no formal Response was filed by the Respondent.
6. Discussion and Findings
A. Identical or Confusingly Similar
When the country code Top-Level Domain (“ccTLD”) identifier “.au” and the 2LD extension “.com” are ignored, the disputed domain name consists solely of the Complainant’s JERSEY MIKE’S trademark absent the apostrophe. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its JERSEY MIKE’S trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name resolves to a landing page of a domain name registrar. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate non-commercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
The disputed domain name was registered almost three years after the Complainant registered its JERSEY MIKE’S trademark in Australia. The evidence on the record provided by the Complainant with respect to the use of its trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s JERSEY MIKE’S trademark, knew that it had no rights or legitimate interests in the disputed domain name, and registered the disputed domain name in order to prevent the owner of the JERSEY MIKE’S trademark from reflecting that trademark in a corresponding domain name. Pursuant to paragraph 4(b)(ii) of the Policy, this is evidence of the registration and use of the domain name in bad faith. For the above reasons, the Panel is satisfied that the disputed domain name has at least been registered in bad faith, satisfying the requirements of the Policy.
D. Complainant’s Eligibility
The Complainant has requested transfer of the disputed domain name to JMAPL. The evidence on the record provided by the Complainant does not disclose whether JMAPL meets the eligibility requirements for registration of the disputed domain name. However, the Panel is of the view that its responsibility does not extend to determining, definitively, whether or not the party to whom it orders transfer of the disputed domain name in fact satisfies the eligibility requirements for such a transfer to take place. Rather, that responsibility rests elsewhere. Thus, while the Panel will order transfer of the disputed domain name to JMAPL as requested, it recognizes that such an order may be subject to the responsible entity requiring JMAPL either to demonstrate that it satisfies the eligibility requirements or to nominate another person (being a person that does satisfy the eligibility requirements) to be the person to whom the disputed domain name should be transferred under this order.
For all 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 <jerseymikes.com.au> be transferred to Jersey Mike’s Australia Pty Limited.
Andrew F. Christie
Date: March 1, 2016