WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roy Upshaw d.b.a. Taco Casa and R&S Upshaw Franchising, LLC. v. Rod Wilkin, Taco Casa, Inc.

Case No. D2020-0155

1. The Parties

The Complainant is Roy Upshaw d.b.a. Taco Casa and R&S Upshaw Franchising, LLC, United States of America (“United States”), represented by Norredlaw PLLC, United States.

The Respondent is Rod Wilkin, Taco Casa, Inc., United States, represented by Bradley Arant Boult Cummings LLP, United States.

2. The Domain Name and Registrar

The disputed domain name <tacocasa.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2020. On January 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 22, 2020, 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 January 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2020. On February 5, 2020, the Center received an email communication from the Respondent requesting an automatic extension of four days to the Response filing period. On February 6, 2020, pursuant to paragraph 5(b) of the Rules, the Response filing period was extended until February 16, 2020.

On February 13, 2020, the Center received an additional extension request from the Respondent for a period of 14 days. The Respondent’s email communication contained an attachment from the Complainant from February 12, 2020, consenting to the extension request. On February 14, 2020, the Response filing period was extended until March 1, 2020, pursuant to paragraph 5(e) of the Rules. The Response was filed with the Center on February 26, 2020.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 28, 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 Complaint provides little information about the Complainants or their business. It appears that the Complainant Mr. Upshaw is an individual in Fort Worth, Texas whose business involves “serving tacos and other tex-mex foods by the Taco Casa franchise”.

The Complainant Mr. Upshaw holds United States Trademark Registration Number 5440873 (registered on April 10, 2018) for the standard character mark TACO CASA (Spanish for “taco house”), for which he applied in December 2015. The Complainant Mr. Upshaw is also the current owner, following a lengthy string of assignments, of United States Trademark Registration Number 1377666 (registered on January 7, 1986) for a design mark consisting of an illustration of a man in traditional Mexican dress alongside the words “Taco Casa”.

The Registrar reports that the Domain Name was created on April 29, 1998, and is currently registered by the Respondent Rod Wilkin of Taco Casa, Inc., listing a postal address in Tuscaloosa, Alabama, United States. The Response was submitted on behalf of Taco Casa, Inc., of which Mr. Wilkin is the principal owner, according to his affidavit attached to the Response. Taco Casa, Inc. is listed in the online database operated by the Alabama Secretary of State as an existing, domestic business corporation formed on January 17, 1980. Mr. Wilkin and Taco Casa, Inc. are collectively referred to hereafter as the “Respondent”.

The Domain Name is used for the Respondent’s website, headed “Taco Casa, Quality Since 1974”, advertising the Respondent’s chain of seven “fast food Mexican restaurants” in Alabama, providing information about its corporate offices, and selling “Taco Casa” merchandise online. The website includes links to the Respondent’s social media sites. The website’s “About Us” page includes a history of the business, including photos of signage and advertising from the 1970s and 1980s. Additional samples of advertising from that period are attached to the Response.

The Respondent states that it first used the domain name <tacocasa.net> for its website and then <taco-casa.com>. The Response states that the Respondent acquired the Domain Name from a third party, but it does not say when this occurred, and the record is otherwise silent as to this issue.

Mr. Wilkin’s Affiidavit includes details concerning a number of Alabama state trade name and service mark registrations obtained by Mr. Wilkin, consisting of a design with the words “Taco Casa”, all claiming first use on August 20, 1974:

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its registered TACO CASA marks, of which the Respondent had actual and constructive notice:

“Complainant gave notice to the world that it was using the Taco Casa mark by its national registration in 1984, before Respondent began its business using the same mark. Respondent was aware of the registration and has additionally been aware since agents for Complainant made demand for the name since that time.”

The Complainant argues that the Respondent “uses the Taco Casa mark to mislead and divert consumers to their own restaurant, taking advantage of Taco Casa’s advertising and good will”.

B. Respondent

The Respondent acknowledges the Complainant’s current United States trademark registrations but argues that the Respondent has senior rights to use its design marks. More to the point, for this UDRP proceeding, the Respondent asserts rights or legitimate interests in the Domain Name based on operating a restaurant business continuously with a corresponding name since 1974, incorporated under that name since January 1980, and reflected in registered state trade names and service marks since February 1981. The Respondent claims common law protection under United States federal trademark law as well (although the Panel notes that this claim is not reflected on the Respondent’s website).

The Respondent requests a finding of Reverse Domain Name Hijacking, given the substantial evidence readily available to the Complainant that the Respondent had rights or legitimate interests in the Domain Name at the time it acquired the Domain Name for use in its business. The Respondent reports that its counsel communicated these concerns to counsel for the Complainant after the filing of the Complaint and suggested withdrawing the Complaint. The Complainant chose to continue with the UDRP proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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 in respect of the domain name; and

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

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

6.1 Preliminary Matter: Multiple Complainants

The Rules, paragraph 3(c), contemplate that a complaint may relate to more than one domain name, provided that the domain names are registered by the same person, while paragraph 10(e) also gives panels the authority to consolidate multiple domain name disputes. In assessing whether a complaint may be filed by multiple complainants, as in this proceeding, panels consider whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.

Mr. Upshaw owns the United States trademarks on which the Complaint is grounded. “Taco Casa” is merely an alias (“d.b.a.” or “doing business as”) for Mr. Upshaw. R&S Upshaw Franchising, LLC is a company that he owns, which presumably uses the trademarks in its business. The Respondent has not objected to listing R&S Upshaw Franchising, LLC as an additional Complainant, and the Panel does not find that this is would result in undue delay or prejudice.

Accordingly, the Panel allows the proceeding to continue in the name of the several Complainants as styled above and refers to the Complainants hereafter collectively as the “Complainant”.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. For this purpose, the seniority of marks is not relevant, although that may be an issue for the second and third elements of the Complaint.

The words “taco casa” are precisely the words of the Complainant’s standard character mark, as well as those found in its figurative mark. Hence, the Panel finds that the Domain Name is identical to the one and confusingly similar to the other. The generic Top-Level Domain (“gTLD”) (“.com”) “is viewed as a standard registration requirement” and as such is disregarded under the first element of the Complaint. Id., section 1.11.2.

The Panel concludes that the Complainant has established the first element of the Complaint.

Normally the Panel would not raise the following given the risk for misunderstanding, but in the circumstances it seems appropriate to record for the benefit of the Complainant and their counsel that a finding here of “confusing similarity” under the Policy should in no way be misconstrued as speaking to the trademark law concept of “likelihood of confusion” and given the Panel’s findings below, it seems highly improbable this standard would be met; assessing such concept would in any event be for a court to decide.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial 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.

Here, the Respondent furnishes substantial evidence that it has been doing business under a corresponding name, “Taco Casa”, since August 1974, many decades before the dispute arose. Indeed, the Respondent’s business corporation bears precisely that name and was formed in 1980, some three years before the Complainant’s predecessor in interest even applied for a design mark including the words “Taco Casa”. The Respondent has had registered state trade names and service marks including the words “Taco Casa” since February 1981. So, the Respondent clearly satisfies the examples given in the Policy, paragraphs 4(c)(i) and (ii), of rights or legitimate interests. It is bewildering that the Complainant refers to its predecessor’s 1984 application for a design mark and says that this was “before Respondent began its business using the same mark”. Of course, the Respondent has never used that particular design mark, but the Respondent was using the words “Taco Casa” in its own design marks, in another state, for a decade before the application to which the Complainant refers.

The Complaint fails on the second element.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

The discussion of the facts germane to the second element also reveal the improbability of establishing the Respondent’s bad faith on this record. Whenever the Respondent acquired the Domain Name (a fact that neither party furnishes in this proceeding), it is clear that the Respondent had rights or legitimate interests in the name “Taco Casa” going back to 1974 and that it was firmly established in the corporate name and state-registered trade names and service marks by 1981. The Respondent clearly has a successful business built around that mark in Alabama over a period of decades, and the Complainant has not demonstrated reasons to believe that the Respondent would adopt a corresponding Domain Name, not to build on that success but to trade on the fame of a distant business with the same name in Texas. The probabilities do not favor the Complainant’s theory of the case for bad faith.

The Panel concludes that the Complainant has not established the third element of the Complaint.

7. Decision

For the foregoing reasons, the Complaint is denied.

8. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here.

Here, the Complainant offered few supporting facts, misstated a material fact (that the Respondent did not commence business until after the application for the first mark now held by the Complainant), and ignored evidence (available on the Respondent’s website and in conversation with the Respondent’s counsel) that the Respondent indeed possessed well-established rights and legitimate interests in the Domain Name long before the dispute arose.

The Panel finds, therefore, that the Complaint was brought in an attempt at Reverse Domain Name Hijacking.

W. Scott Blackmer
Sole Panelist
Date: March 18, 2020