WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DPH Holdings, LLC v. Josh Brody

Case No. D2017-2462

1. The Parties

The Complainant is DPH Holdings, LLC of Indianapolis, Indiana, United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.

The Respondent is Josh Brody of New York, New York, United States.

2. The Domain Name and Registrar

The disputed domain name <crispybird.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2017. On December 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2017, 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.

The Center verified that 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 December 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2018.

The Center appointed William R. Towns as the sole panelist in this matter on January 31, 2018. 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.

The Panel issued a Panel Procedural Order on February 5, 2018, inviting the Complainant to submit on or before February 12, 2018, evidence that the Complainant’s marks had acquired distinctiveness. The Respondent was invited to submit a reply no later than February 16, 2018. The date for the submission of the Panel’s decision to the Center was extended accordingly.

4. Factual Background

The Complainant owns and operates six restaurant brands in the state of Indiana, including the Crispy Bird restaurant. The Complainant is the owner of a United States trademark registration for the word mark CRISPY BIRD, U.S. Reg. No. 5000373, for restaurant and catering services, applied for on September 23, 2015, and registered on the United States Patent & Trademark Office (USPTO) Supplemental Register on July 12, 2016.¹

The Complainant also owns a word plus design mark registration for CRISPY BIRD, U.S. Reg. No. 5248720, for restaurant and catering services, applied for on May 17, 2016, and registered on the USPTO’s Principal Registrar on and July 25, 2017, as depicted below. The Complainant’s word plus design mark registration disclaims the exclusive right to use “CRISPY BIRD” apart from the mark as shown.

The Complainant maintains a website at “www.crispy-bird.com”, and promotes its CRISPY BIRD restaurant on social media, including Twitter, Facebook and Instagram pages. The Complainant asserts first use of both marks in commerce on May 11, 2016. The record reflects that the Complainant’s CRISPY BIRD restaurant opened for business on December 7, 2017.

The Respondent registered the disputed domain name <crispybird.com> on May 8, 2016, according to the Registrar’s WhoIs records. Several months later, the Complainant became aware of the registration of the disputed domain name and the use of “Crispy Bird” on Facebook and Instagram with another restaurant, Yunnan BBQ. The Complainant on September 27, 2016, issued cease and desist letters to Yunnan BBQ and to the Respondent. A person named “Erica” responded to the Complainant for Yunnan BBQ, stating that Yunnan BBQ was not affiliated with the disputed domain name and that Yunnan BBQ would agree not to use “Crispy Bird” in the future.

The Complainant, still concerned that the Respondent was affiliated with the Facebook page, filed a takedown complaint with Facebook. On November 7, 2016, Facebook removed the page as being in violation of Facebook’s policies. The Complainant for several months afterwards sought correspondence with the Respondent seeking the transfer of the disputed domain name. However, the Complainant concluded in early February 2017 that the Respondent was not willing to cooperate and thereafter brought this Complaint under the UDRP. The disputed domain name currently resolves to a parking page provided by GoDaddy, which contains pay-per-click links and represents that the disputed domain name may be for sale.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <crispybird.com> is identical or confusingly similar to the Complainant’s CRISPY BIRD mark as it incorporates the Complainant’s mark in its entirety. The Complainant asserts that the Top-Level Domain “.com” serves no distinguishing purpose and should be disregarding when comparing the disputed domain name to the Complainant’s mark.

The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant represents that the Respondent has not been authorized to use the CRISPY BIRD mark and has not been commonly known by the disputed domain name. According to the Complainant, the Respondent at the very least had constructive notice of the Complainant’s intent to use the CRISPY BIRD mark when registering the disputed domain name on May 8, 2016, as the Complainant’s application to register CRISPY BIRD with the USPTO was filed on September 23, 2015, well in advance of the Respondent’s registration of the disputed domain name on May 8, 2016.

According to the Complainant, the Respondent initially used the disputed domain name to lure Internet traffic to another restaurant, Yunnan BBQ, and it was only after the Complainant served the Respondent with a cease and desist letter that the Respondent changed the content of his website to a parked page. The Complainant submits that the Respondent is passively holding the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and has not made any legitimate noncommercial or fair use of the disputed domain name.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. Calling attention to paragraph 2 of the Policy, the Complainant asserts that had the Respondent conducted even a cursory search prior to registering the disputed domain name the Respondent would have discovered the Complainant’s pending application to register its CRISPY BIRD mark. The Complainant further posits that the Respondent’s passive holding of the disputed domain name warrants a finding of bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel initially addresses whether the Complainant has established trademark rights in CRISPY BIRD for purposes of paragraph 4(a)(i) of the Policy. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy has been held to encompass registered marks as well as unregistered or common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

The Complainant’s registration the CRISPY BIRD word mark on the Supplemental Register reflects the USPTO’s determination that the mark is merely descriptive and had not acquired distinctiveness at the time of the registration. See Kip Cashmore v. URLPro, WIPO Case No. D2004-1023. In that regard, it is well settled for purposes of paragraph 4(a)(i) of the Policy that the registration of a trademark on the USPTO Supplemental Register is not sufficient to demonstrate rights in the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.2.2. See, e.g., Tarheel Take-Out LLC v. Versimedia, Inc., WIPO Case No. D2012-1668 (“It is well-settled that a Supplemental Registration in the U.S. is not sufficient in itself to establish that a Complainant has rights to a mark for the purposes of the Policy”).

Accordingly, the Complainant must bring forth evidence to support a finding that CRISPY BIRD has acquired secondary meaning. See, e.g, Corporate Image Marketing, Inc. v. Privacydotlink Customer 240945 / Privacydotlink Customer 240946 / James Lee, WIPO Case No. D2017-0944. This is also the case with the Complainant’s stylized CRISPY BIRD trademark registration, in which the textual elements of the mark are entirely disclaimed: The effect of this disclaimer is such that the scope of protection afforded to this mark is effectively limited to its stylized elements. Thus, trademark rights under the Policy may not be found unless the Complainant can demonstrate secondary meaning in the disclaimed terms. See WIPO Overview 3.0 Sections 1.2.3 and 1.10.

Relevant evidence demonstrating acquired distinctiveness (or “secondary meaning”) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. See WIPO Overview 3.0, Section 1.3 and cases cited therein.

As noted earlier, the CRISPY BIRD restaurant opened its doors to the public on December 7, 2017, which would appear from the record to be the first occasion the CRISPY BIRD mark was used by the Complainant to provide restaurant and catering services to the public.² The Panel takes notice, however, of the extensive promotion and advertising for the CRISPY BIRD restaurant leading up to its opening. The Complainant also has submitted evidence of substantial consumer and media recognition following the opening of the CRISPY BIRD restaurant. In view of the salient factors discussed above, the Panel finds a sufficient showing has been made that a relevant segment of the public has come to recognize CRISPY BIRD as a source identifier for the Complainant’s restaurant and catering services.

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <crispybird.com> is identical to the CRISPY BIRD mark, in which the Complainant has demonstrated rights. In considering this issue, the first element of the Policy serves essentially as a standing requirement.³ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the Complainant’s mark is clearly recognizable in the disputed domain name.⁴ Top Level Domains (TLDs) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.⁵

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to register or use the Complainant’s CRISPY BIRD mark. The Respondent notwithstanding has registered the disputed domain name, which is identical to the Complainant’s mark, and after initially using the disputed domain name to redirect Internet users to the website of another restaurant, is currently using the disputed domain name with a parking page containing pay-per-click links and an indication that the disputed domain name may be for sale.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial 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 Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

The Respondent has not brought forward any evidence of rights or legitimate interests in the disputed domain name. In the absence of any explanation by the Respondent, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor is there any indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark, and there is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. While the Respondent appears to have registered the disputed domain name <crispybird.com> prior to the Complainant’s acquisition of registered rights in the CRISPY BIRD mark, the Respondent registered the disputed domain name after the Complainant’s filing of its first trademark application for CRISPY BIRD. The circumstances of the Respondent’s registration of the disputed domain name provide strong indication that the Respondent’s was aware of the Complainant’s trademark application and that his aim was to exploit or otherwise capitalize on the Complainant’s nascent trademark rights. See WIPO Overview 3.0, section 3.8.2. The Respondent’s use of the disputed domain name to redirect Internet users to the website of another restaurant clearly suggests such was the case, and informs the Panel’s view that the Respondent in all likelihood registered the disputed domain name intending to target the Complainant. The Respondent discontinued his abusive use of the disputed domain name only after receipt of the Complainant’s cease and desist letter, and the Respondent since has used the disputed domain name with a parking page containing pay-per-click links and appears to be offering disputed domain name for sale.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 disputed domain name, <crispybird.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: February 24, 2018

¹ The United States Trademark Act (“Lanham Act”) provides for the registration of trademarks on either the Principal or Supplemental Registers. The Principal Register is reserved for arbitrary, fanciful and suggestive marks, and descriptive marks that have acquired distinctiveness through use. Conversely, marks that are merely descriptive and lacking a showing of acquired distinctiveness may only be registered on the Supplemental Register. See USPTO Trademark Manual of Examining Procedure (TMEP) § 1209.01. The Supplemental Register thus is reserved for marks “capable of distinguishing applicant’s goods or services not registrable on the principal register . . .” 15 U.S.C. § 1091(a).

² See TMEP § 901.

³ See WIPO Overview 3.0, section 1.7.

⁴ See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.

⁵ See WIPO Overview 3.0, section 1.11 and cases cited therein. The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.