Generic Top Level Domain Name (gTLD) Decisions

DECISION

TCBY Enterprises, Inc. v. Jason Manheim

Claim Number:  FA0302000146224

PARTIES

Complainant is TCBY Enterprises, Inc., Salt Lake City, UT (“Complainant”) represented by Michael E. Mangelson, of Stoel Rives LLP. Respondent is Jason Manheim, Levittown, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <tcbybroker.com> and <tcbybrokers.com>, registered with Bulkregister.Com, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 18, 2003; the Forum received a hard copy of the Complaint on February 19, 2003.

On February 19, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain names <tcbybroker.com> and <tcbybrokers.com> are registered with Bulkregister.Com, Inc. and that Respondent is the current registrant of the names. Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.Com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@tcbybroker.com and postmaster@tcbybrokers.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 19, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1.   Respondent’s <tcbybroker.com> and <tcbybrokers.com> domain names are confusingly similar to Complainant’s TCBY mark.

2.   Respondent does not have any rights or legitimate interests in the <tcbybroker.com> and <tcbybrokers.com> domain names.

3.   Respondent registered and used the <tcbybroker.com> and <tcbybrokers.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant operates in the food services industry, specifically selling frozen yogurt, ice cream, confections, beverages, flavored ices, sorbet and other frozen and non-frozen treats.  Complainant has been involved in this industry since 1982 and has continually used the TCBY mark to denote its services.  Complainant’s TCBY mark has gained a significant amount of goodwill through twenty years of commercial use.  Complainant has actively sought trademark protection for its various uses of the TCBY mark, and currently owns over thirty federally registered TCBY trademarks with the United States Patent and Trademark Office.  The earliest registration date for the TCBY mark is May 28, 1985. 

Complainant’s TCBY business operations spread over sixty-five countries worldwide.  Specifically, Complainant has over 3,000 TCBY stores worldwide, and as a result of its expansive business undertakings customers associate the TCBY mark with Complainant’s services.  Consequently, Complainant’s business interests in the TCBY mark have become extremely valuable and Complainant has actively sought federal trademark protection for the various uses of the mark. 

Complainant also provides information about its TCBY related services on the Internet at the <tcby.com> website.  This website serves to inform customers of store locations, product offerings, company history and much more.  Also, potential investors/franchisees can learn about franchise opportunities at the <tcby.com> website. 

Respondent registered the domain names on August 2, 2002.  Complainant has learned through a reverse WHOIS search that Respondent owns over 1,750 domain names.  The disputed domain names were not identified in Complainant’s reverse WHOIS search.  Further investigation uncovered a number of domain names registered to Respondent that are similar to the disputed domain name because they use well-known trademarks of other food service entities with the suffix “broker” (e.g., <tacobellbroker.com>, <mcdonaldsbroker.com>, <pizzahutbroker.com>, <wendysbroker.com>, <krispykremebroker>, among others). 

Most of Respondent’s domain names are for sale at the website <buydomainsnow.com>.  Complainant notes that the <buydomainsnow.com> website is currently unavailable.  The disputed domain names are not actively used in connection with a website. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

Complainant has demonstrated valid rights in the TCBY mark to support a claim against the disputed domain names.  Complainant has established commercial use of the TCBY mark for twenty years along with interests in numerous trademark registrations with the United States Patent and Trademark Office.

Respondent’s domain names wholly incorporate Complainant’s TCBY mark with the addition of the suffix “broker” or “brokers.”  The word “broker” is a common word that denotes dealings on behalf of someone in a business transaction.  Since Complainant franchises its TCBY stores, the words “broker” or “brokers” used in connection with the TCBY mark conjure up Complainant’s TCBY related services; thus, the disputed domain names are confusingly similar to the TCBY mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

The Panel finds that Policy ¶ 4(a)(i) is satisfied. 

Rights or Legitimate Interests

Respondent has not come forward to address Complainant’s allegations, which include the accusation that Respondent has no rights or legitimate interests in the disputed domain name.  The Panel will accept all of Complainant’s allegations as true unless clearly contradicted by the evidence available to the Panel, because Respondent has failed to contest the Complaint.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).  Moreover, the Panel will draw all reasonable inferences in Complainant’s favor.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Complainant notes that even assuming Respondent ran a legitimate restaurant brokerage business from the disputed domain names, such a use would infringe on Complainant’s rights in the TCBY mark because the domain names reflect the mark in its entirety.  Complainant has properly alleged factual circumstances that evidence a lack of rights and legitimate interests in the disputed domain names, including the aforementioned lack of a non-infringing legitimate use.  Such allegations shift the burden on Respondent to demonstrate legitimate rights or interests in the domain names.  Respondent has not satisfied its burden, and the Panel accepts the allegation that Respondent could not use the domain names in a non-infringing manner.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Furthermore, Complainant uncovered evidence that suggests Respondent is in the business of selling domain names at the recently inaccessible website <buydomainsnow.com>.  Complainant’s investigation revealed that Respondent has over 1,750 domain names registered, including domain names that contain the “broker” suffix preceded by well-known marks in the food services industry (e.g., tacobellbroker.com>, <mcdonaldsbroker.com>, <pizzahutbroker.com>, <wendysbroker.com>, <krispykremebroker>, among others).  This information permits a reasonable inference that Respondent has registered the disputed domain names to sell the registration rights, based on the value and goodwill the TCBY mark conveys.  Such motive does not represent rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii), and Respondent has failed to show otherwise.  See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights). 

Finally, nothing on record demonstrates that Respondent is commonly known by the disputed domain names.  The WHOIS information page indicates Respondent’s identity as Jason Manheim, and nothing supports a conclusion that Respondent has a business identity the same as the disputed domain names.  Therefore, Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names; thus, Policy ¶ 4(a)(ii) is satisfied. 

Registration and Use in Bad Faith

Respondent’s disputed domain name has an obvious connection with Complainant’s TCBY mark because the domain names incorporate the mark along with generic words that are industry related.  The words “broker” and “brokers” are related to Complainant’s restaurant business in the sense that Complainant franchises stores to willing investors.  Hence, someone interested in franchising Complainant’s yogurt store may search for a restaurant broker, in which case Respondent could potentially ensnare such people by using the disputed domain names.  Respondent’s registration of the disputed domain names that predominately reflect Complainant’s TCBY mark suggests opportunistic bad faith under Policy ¶ 4(a)(iii), especially with a lack of proof or contention to the contrary.  See Alitalia -Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that <gameicq.com> and <gameicq.net> are obviously connected with services provided with the world-wide business of ICQ and that the use of the domain names by someone with no connection to the product suggests opportunistic bad faith).

In addition, Complainant has provided evidence showing that Respondent has registered domain names similar to the disputed domain names that contain well-known marks such as MCDONALD’S, TACO BELL and PIZZA HUT.  Because these marks are so well recognized, the Panel infers Respondent was aware of the interest other entities had in the marks incorporated in the corresponding domain names.  Hence, the Panel infers from Respondent’s willingness to register domain names containing trademarks used in the restaurant industry that Respondent knew of Complainant’s interest in the TCBY mark.  Registering the disputed domain names, despite knowledge of Complainant’s corresponding interests, demonstrates bad faith registration.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration)

Finally, since it is apparent Respondent is in the business of selling domain names, due to its registration of over 1,750 domain names and connection to the <buydomainsnow.com> website, the Panel infers Respondent registered the domain name with the primary intent to sell it.  This conclusion is further bolstered by Respondent’s lack of use of the disputed domain names and Respondent’s failure to demonstrate any alternative objective.  Therefore, the Panel finds that Respondent’s circumstances warrant a finding of bad faith under Policy ¶ 4(b)(i).  See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Globosat Programadora Ltda v. Artmidia Comunicacao Visual Criacao E Arte Ltda, D2000-0605 (WIPO Sept. 13, 2000) (finding that “the fact that almost all the domain names registered by the Respondent or the Administrative Contact for these domains are inactive and redirected to a site apparently dedicated to the commerce of domain names, force this Panelist to consider that .  Respondent has registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names registration to the Complainant or to a Complainant's competitor for valuable consideration").

The Panel finds that Policy ¶ 4(a)(iii) is satisfied. 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <tcbybroker.com> and <tcbybrokers.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY ( Ret.)

Dated:  March 24, 2003