WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CBOCS Properties, Inc. v. Whois Privacy Protection Service, Inc. / ICS INC.

Case No. D2013-0700

1. The Parties

The Complainant is CBOCS Properties, Inc. of Livonia, Michigan, United States of America, represented by Wyatt, Tarrant & Combs, United States of America.

The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America (“US”) / ICS INC. of Grand Cayman, Cayman Islands, Overseas Territories of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The Disputed Domain Name <crackerbarrelschedule.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2013. On April 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 17, 2013, 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 April 18, 2013 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 amended Complaint on April 19, 2013.

The Center verified that the Complaint together with the amended 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 April 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2013.

The Center appointed Charné Le Roux as the sole panelist in this matter on May 22, 2013. 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 Michigan corporation, with its name probably an acronym for the phrase “Cracker Barrel Old Country Store”. The Complainant is a leading US company operating in the area of restaurant services and retail gift shop services. It is the owner of a substantial portfolio of US trade mark registrations and also domain names, mainly for the trade mark CRACKER BARREL and marks and domain names including the mark CRACKER BARREL. The earliest US trade mark registration, for CRACKER BARREL OLD COUNTRY STORE label, was filed in 1978. The trade marks are registered for a broad range of services, with an emphasis on restaurant services and retail gift shop services. The portfolio of domain names started with the registration of <crackerbarrelocs.com> and <crackerbarrel.com>, in January 1997 and November 1998 respectively. Additional nine domain names were registered subsequently, including <crackerbarrelmenu.com>, <crackerbarrelbymail.com>, <crackerbarreldonations.com>, etc. The Complainant has, since 1969, used its CRACKER BARREL trade mark in commerce.

The Disputed Domain Name was created on April 9, 2012, using the privacy services of Whois Privacy Protection Service, Inc.

On June 26, 2012, the Complainant’s representative wrote to the Respondent requesting it immediately to deactivate the website associated with the Disputed Domain Name. The letter drew attention to the Complainant’s trade mark rights and indicated that the Complainant is the rightful owner of the Disputed Domain Name. The Respondent did not respond to the notice letter. At that time and also at the date of the Complaint, the website associated with the Disputed Domain Name redirected to a website featuring the Complainant’s CRACKER BARREL trade mark and incorporating links to commercial websites from which competing restaurant and related services of third parties were offered for sale. The website associated with the Disputed Domain Name also included what appeared to be an offering of the Disputed Domain Name for sale.

5. Parties’ Contentions

A. Complainant

The Complainant provides substantial information regarding its use of the CRACKER BARREL trade mark in its Complaint. It asserts that it has been using this trade mark for over 40 years in connection with restaurant services and retail gift shop services and supports this with evidence in the form of an affidavit deposed to by its president, and copies of a restaurant menu printed in 1969 and magazines dated August 1991 and June 1984 that feature the Complainant’s trade mark. The Complainant contends that the CRACKER BARREL trade mark is well-known and refers to its portfolio of trade marks and domain names as well as its significant use of its trade mark in this regard. The Complainant evidences the search of the phrase “cracker barrel” through the Google search engine, showing the Complainant’s domain name <crackerbarrel.com> listed as the top two search results.

The Complainant contends that the Disputed Domain Name is confusingly similar to a trade mark in which it holds rights. It points out that the Disputed Domain Name incorporates the whole of its CRACKER BARREL trade mark, coupled with a descriptive element, being the word “schedule”. The Complainant submits that the word “schedule” is a term commonly used in the restaurant services industry to refer to a timetable kept by employees and that a domain name combining the Complainant’s well-known trade mark and a descriptive term associated with the goods and services of the Complainant, will lead to confusion.

The Complainant asserts that the Respondent lacks rights and legitimate interests in the Disputed Domain Name in that:

a) the Respondent is not using the Disputed Domain Name in connection with the bona fide offering of goods and services. Instead, the Respondent is simply diverting Internet traffic intended for the Complainant by using a domain name that is confusingly similar to the Complainant’s CRACKER BARREL trade mark;

b) the website associated with the Disputed Domain Name incorporates a security threat in the form of a virus. The Complainant refers to decisions by other panels, where they found that the use of a domain name for the distribution of malware and hostile software cannot be said to have been use for purposes of a bona fide offering of goods and services;

c) the Respondent is not making legitimate, noncommercial or fair use of the Disputed Domain Name. In fact, the Complainant states, the Respondent has been gaining from the sales of the competing products and/or services offered for sale on the website corresponding to the Disputed Domain Name and on the other commercial websites linked to the Disputed Domain Name’s website. The Complainant asserts that the Respondent’s use of a domain name corresponding to the Complainant’s trade mark to attract Internet users to its website for its own commercial gain, exploits the Complainant’s trade mark;

d) the Respondent is using a domain name that is selected for its trade mark value rather than its generic meaning and that the juxtaposition of the mark, CRACKER BARREL and the word, “schedule” creates the impression of an association of the Respondent with the Complainant;

e) the Respondent is not commonly known by the Disputed Domain Name; nor has the Complainant ever been affiliated with the Respondent; or authorized the Respondent to use its well-known CRACKER BARREL trade mark; and

f) the Respondent is not engaged in criticism, scholarship, political advocacy or any other legitimate fair use.

The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith. It contends that the Respondent clearly registered the Disputed Domain Name with an intention to the refer to the Complainant’s mark, in order to capitalize on its goodwill by the financial gain that the Respondent stands to make by displaying revenue generating advertising links to the Complainant’s competitors’ websites and offering the Disputed Domain Name for sale.

The Complainant states that the Respondent either knew of the Complainant’s trade mark rights or should have known, as a trade mark search by the Respondent would have identified the Complainant’s large portfolio of US trade mark registrations. The Complainant also points out that when the phrase “cracker barrel” is searched through the Google search engine, the Complainant’s <crackerbarrel.com> domain name is listed as the top two results. Furthermore, when the phrase “cracker barrel schedule” is searched through Google, the Complainant’s <crackerbarrel.com> domain name is still listed as the top result. The Complainant argues that at the time of registration of the Disputed Domain Name, the Respondent could easily have found the Complainant’s abundant use of the CRACKER BARREL trade mark.

The Complainant also relies on paragraph 4(b)(ii) of the Policy, stating that the Respondent has a long history of registration and use of domain names comprising third parties’ trade marks. It provides a list of twenty seven (27) prior proceedings under the Policy, which is attached to this Decision as Annexure 1. It appears from the list that the panels in every one of these proceedings ordered the Respondent to transfer one or more domain name registrations, and also that the Respondent failed to respond to any of the complaints in the proceedings.

The Complainant contends that the Respondent’s failure to respond to the cease and desist letter is an indication of the Respondent’s bad faith. The Complainant furthermore asserts that the Respondent’s attempt to monetize the Disputed Domain Name, by offering it for sale, is indicative of bad faith, as is its use of a privacy service, especially considering that the Respondent failed to respond to the cease and desist letter and that its identity remained unavailable until after the filing of the original Complaint.

The Complainant requests that the Disputed Domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

A. General

In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove:

(i) That the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;

(ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) That the Disputed Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Complainant has demonstrated that it has acquired rights in the CRACKER BARREL trade mark by virtue of its portfolio of trade mark registrations for it, coupled with its portfolio of domain name registrations containing the trade mark and its considerable use of this mark and related marks and domain names for over four decades. The Panel is satisfied that the Complainant has demonstrated that the CRACKER BARREL trade mark is well-known.

The Panel finds that the combination of the Complainant’s well-known trade mark with the descriptor “schedule”, which is a term commonly used in the restaurant services industry where the Complainant operates, suffices for finding that the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights.

The Complainant has satisfied this Policy requirement.

C. Rights or Legitimate Interests

The Complainant asserts that its CRACKER BARREL trade mark is famous, that it has not granted the Respondent any rights in respect of the Disputed Domain Name, that the Respondent is not known by the Disputed Domain Name and that there is no bona fide offering of goods or services or fair use of the Disputed Domain Name by the Respondent. The Panel finds that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy shifting the burden of production to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent has not disputed any of the claims made by the Complainant and has not provided any reply. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

D. Registered and Used in Bad Faith

The Panel finds that the Respondent has registered the Disputed Domain Name primarily with an intention to capitalize on the reputation attached to the Complainant’s mark and to divert Internet users seeking information about the Complainant to the Respondent’s website under the Disputed Domain Name, in order to obtain financial reward through the sponsored links promoted on the website linked to the Disputed Domain Name. Also, the Respondent’s knowledge of the Complainant’s rights in its CRACKER BARREL trade mark, at the time of registration of the Disputed Domain Name, is borne out by the subsequent listing of the Complainant’s business on the website associated with the Disputed Domain Name.

The use that the Respondent has made of the Disputed Domain Name corresponds with its intention at registration.

The Respondent had opportunities both when the Complainant’s representative sent a cease and desist letter to it and in this administrative proceeding, to demonstrate its rights or legitimate interests, or its good faith conduct, or to challenge the Complainant’s contentions, but it elected not to take up these opportunities.

Taking all the above circumstances into account and also the list of cases where the Respondent was found by other panels to have registered third party trade marks as domain names with the intention of exploiting, in one form or another, the goodwill associated with these trade marks, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii), 4(b)(ii) and 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <crackerbarrelschedule.com> be transferred to the Complainant.

Charné Le Roux
Sole Panelist
Date: June 4, 2013

Annexure 1

See Kforce, Inc. v. Contact Privacy Inc. Customer 0130261450 I ICS INC., WIPO Case No. D2013-0267; Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio v. ICS INC. I PrivqcyProtect. org, WIPO Case No. D2013-0195; Teleperformance v. ICS INC. I Contact Privacy Inc. Customer 0131175994, WIPO Case No. D2013-0035; AlliedBarton Security Services LLC v. ICS INC. I Whois Privacy Protection Service, Inc., WIPO Case No. D2012-2474; Alex and Ani LLC v. Whois Privacy Protection Service, Inc. I ICS INC., WIPO Case No. D2012-2451; Valero Energy Corporation, Valero Marketing and Supply Company v. ICS INC. I Contact Privacy, Inc. Customer 0131720907, WIPO Case No. D2012-2398; AlliedBarton Security Services LLC v. Contact Privacy Inc. Customer 0132268359 I ICS INC., WIPO Case No. D2012-2361; Zions Bancorporation, Inc. v. PrivacyProtect.org I ICS INC., WIPO Case No. D2012-2326; F. Hoffmann-La Roche AG v. ICS INC. I Whois Privacy Protection Service, Inc., WIPO Case No. D2012-2113; CMA CGM v. PrivacyProtect.org I ICS INC., WIPO Case No. D2012-2088; F. Hoffmann-La Roche AG v. ICS INC. I PrivacyProtect.org, Domain Admin, WIPO Case No. D2012-2070; Amegy Bank National Association v. Contact Privacy Inc. I ICS INC., WIPO Case No. D2012-2018; IG Group Limited v. ICS INC. I Contact Privacy Inc. Customer 0131236749, WIPO Case No. D2012-1993; O2 Holdings Limited v. ICS INC. I PrivacyProtect.org, WIPO Case No. D2012-1873; Credit Agrico/e S.A. v. ICS INC. I Whois Privacy Protection Service, Inc.,, WIPO Case No. D2012-1755; Anadarko Petroleum Corporation v. ICS INC./Contact Privacy, Inc., WIPO Case No. D2012-1740; Hardee’s Food.Systems, Inc. v. Whois Privacy Protection Service, Inc. I ICS Inc., WIPO Case No. D2012-1696); AlliedBarton Security Services LLC v. Customer 0131242686 Contact Privacy Inc. I ICSINC., WIPO Case No. D2012-1565; Sanofi v. Contact Privacy Inc. Customer 0129138820 I ICS INC., WIPO Case No. D2012-1314; Sanofi v. PrivacyProtect.org I ICS INC., WIPO Case No. D2012-1293; AlliedBarton Security Services LLC v. Registrant: ICS INC., WIPO Case No. D2012-1003; Associazione Radio Maria v. Contact Privacy Inc. ICS Inc., WIPO Case No. D2012-0826; John L. Scott, Inc. v. PrivacyProtect.org I ICS INC., WIPO Case. No. D2012-0649; AlliedBarton Security Services LLC v. ICS Inc., WIPO Case No. D2012-0411; National Grid Electricity Transmission Plc v. Undisclosed customer 0129436546 I ICS Inc., WIPO Case No. D2012-0352; Amegy Bank National Association v. ICS INC. I Contact Privacy Inc., WIPO Case No. D2012-0248; DBA LUX 1 v. ICS INC., WIPO Case No. D2012-0122.