The Complainant is Hardee's Food Systems Inc. of St. Louis, Missouri, United States of America, represented by Plave Koch PLC, United States of America.
The Respondent is Transure Enterprise Ltd. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland; Above.com Domain Privacy of Beaumaris, Australia.
The disputed domain name <hardeesrestaurant.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2010. On February 12, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 15, 2010, Above.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 10, 2010.
The Center appointed Edoardo Fano as the sole panelist in this matter on March 17, 2010. 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 has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of the Respondent's default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent's response.
The language of the proceeding is English, being the language of the Registration Agreement.
The Complainant is Hardee's Food Systems Inc., a world-famous provider of quick service restaurant and carry-out services and products, operating in the United States and worldwide since 1960.
The Complainant is the owner of numerous trademark registrations for HARDEE'S in the United States and other countries, including:
- United States Trademark Registration for HARDEE'S, No. 741,048, registered in 1962;
- United States Trademark Registration for HARDEE'S, No. 1,729,627, registered in 1992;
- United States Trademark Registration for HARDEE'S, No. 1,825,221, registered in 1994;
- Community Trademark Registration for HARDEE'S, No. 946.285, registered in 2000 and claiming several seniorities.
The Complainant provided evidence in support of the above-mentioned trademark registrations.
The Respondent's domain name < hardeesrestaurant.com > was registered on November 5, 2009. It presently points to a webpage displaying advertising links to websites related to restaurant services.
The Complainant states that the disputed domain name <hardeesrestaurant.com> is confusingly similar to its trademark HARDEE'S, with the mere addition of the word “restaurant”, which is generic or descriptive and does not change the fact that the Complainant's trademark is incorporated in full in the disputed domain name.
Moreover, the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register and use the disputed domain name and is not making a legitimate non-commercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered, used, and continues to use the disputed domain name in bad faith.
In fact, the Complainant's trademark HARDEE'S enjoys worldwide fame and the Respondent could not have registered the domain name without knowledge of the Complainant's trademark rights.
Moreover, the Respondent is using the disputed domain name for diverting Internet traffic to the Respondent's website displaying click-through advertisements related to restaurant services.
The Respondent did not reply to the Complainant's contentions and is in default: no exceptional circumstances explaining the default have been put forward.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, facts asserted by the complainant may be taken as true, and reasonable inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant is the owner of the trademark HARDEE'S both by registration and acquired reputation and that the disputed domain name <hardeesrestaurant.com> is confusingly similar to the trademark HARDEE'S.
Regarding the addition of the generic word “restaurant”, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the word “restaurant” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant's trademark.
It is also well accepted that a top-level domain, in this case “.com”, may be ignored when assessing identity of a mark and domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i).
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no right or legitimate interest in the disputed domain name. The Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of proof to the Respondent to demonstrate that it has a right or legitimate interest in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied.
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent has 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) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line 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 the Respondent's website or location.
As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant's trademark is clearly established and the Panel finds that the Respondent knew or must have known that the disputed domain name <hardeesrestaurant.com > was confusingly similar to a trademark of a third party.
Moreover, the addition of the generic word “restaurant” further suggests the Respondent's registration of the disputed domain name was in bad faith, since the provision of restaurant services is the Complainant's core business.
As regards the use in bad faith of the disputed domain name, the disputed domain name is used by the Respondent in order to divert Internet users to other websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The Complainant's trademark HARDEE'S is widely known, especially in the restaurant field, and the Respondent was clearly aware thereof, since the website at the disputed domain name is full of references to the restaurant field.
The Respondent is therefore intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark (See, e.g., Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; Pfizer, Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290).
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 <hardeesrestaurant.com> be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Dated: March 29, 2010