WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Cheesecake Factory Incorporated and TCF Co. LLC v. PT. Desserta Faktori Gelato

Case No. D2014-2277

1. The Parties

The Complainants are The Cheesecake Factory Incorporated and TCF Co. LLC of Calabasas Hills, California, United States of America (the “US”), internally represented.

The Respondent is PT. Desserta Faktori Gelato of Jakarta, Jakarta Pusat, Indonesia, represented by Isnaini, Muchlis & Partners (IMPLAW), Indonesia.

2. The Domain Name and Registrar

The disputed domain name <chzcakefactory.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2014. On December 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 31, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on January 14, 2015.

The Center verified that the Complaint together with the amendment to 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 January 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2015. The Response was filed with the Center on February 3, 2015.

The Center appointed John Swinson as the sole panelist in this matter on February 10, 2015. 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.

On February 27, 2015, the Respondent emailed the Center, attaching supplementary submissions. The supplementary submissions were translations of some of the annexures to the Response.

4. Factual Background

The Complainants are The Cheesecake Factory Incorporated and TCF Co. LLC of the US. TCF Co. LLC is a subsidiary of The Cheesecake Factory Incorporated. TCF Co. LLC licenses THE CHEESECAKE FACTORY trade marks set out below to The Cheesecake Factory Incorporated. For reasons explained below, these parties will be collectively referred to as “the Complainant”.

The Complainant is a well-known operator of restaurants and bakeries, and is a producer and distributor of bakery and various other products. The Complainant has used trade marks and service marks for THE CHEESECAKE FACTORY since 1972.

The Complainant owns trade mark registrations in numerous jurisdictions for THE CHEESECAKE FACTORY as a word mark, including:

- US Registration No. 1,549,370 (registered July 25, 1989);

- Indonesian Registration No. IDM000068652 (registered July 7, 1997); and

- Indonesian Registration No. IDM000108999 (registered August 15, 1997)

(collectively, the “Trade Mark”).

The Complainant also owns trade mark registrations in numerous jurisdictions for THE CHEESECAKE FACTORY as a logo mark. The Complainant registered the domain name <thecheesecakefactory.com> on August 24, 1996.

The Respondent is PT. Desserta Faktori Gelato of Indonesia. It appears that the Respondent runs a business called “Cheese Cake” in Indonesia, however, no specifics of this business were provided by the Respondent.

The Respondent registered the Disputed Domain Name on February 28, 2008. Currently, there is no website at the Disputed Domain Name. In the past, the website at the Disputed Domain Name featured a background drawing of a bakery, a “Cheese Cake Factory” round logo and the text “MORE THAN JUST a CAKE SHOP”.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

Identical or Confusingly Similar

The Complainant has registered trade mark rights. The Disputed Domain Name is phonetically identical to the Trade Mark. The Disputed Domain Name dilutes the distinctive quality of the Trade Mark.

Rights or Legitimate Interests

The Respondent has no relationship with the Complainant. The Complainant has not authorized the Respondent to use the Trade Mark.

The Complainant acknowledges that the Respondent holds an Indonesian trade mark registration for CHEESE CAKE (Registration No. IDM000050336). The Complainant submits that this does not give the Respondent the right to use the Trade Mark. Further, the Respondent’s trade mark is not for “chzcakefactory”.

Registered and Used in Bad Faith

The Respondent has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation with the Trade Mark.

The Respondent was aware, or should have been aware, of the Complainant and the Trade Mark at the time it registered the Disputed Domain Name, due to the Complainant’s longstanding reputation and numerous trade marks. The Complainant is well-known in Indonesia.

The Respondent has merely modified the term “cheese” to “chz” to obtain a domain name that is in all other respects identical to the Trade Mark. The Respondent’s registered trade mark does not contain the term “factory”.

B. Respondent

The Respondent’s contentions are as follows.

Identical or Confusingly Similar

The Disputed Domain Name is not identical or confusingly similar to the Trade Mark, as it does not contain “the cheese”. This means that the pronunciation also differs.

Rights or Legitimate Interests

The Respondent has held an Indonesian trade mark registration for CHEESE CAKE since March 1, 2004. On November 21, 2013, the Complainant filed a lawsuit in the Indonesian Commercial Court to cancel the Respondent’s CHEESE CAKE trade mark. The Complainant was unsuccessful and filed a cassation with the Indonesian Supreme Court. The Complainant was again unsuccessful.

The Respondent owns a registered trade mark for CHEESE CAKE as a logo mark in Indonesia (Registration No. IDM000050336, registered March 1, 2004).

The Respondent has filed a renewal application for the “Cheese Cake” trade mark with the Indonesian Trade Mark Office. The Respondent has also filed trade mark applications for “Cheese Cake Factory”.

The Complainant’s Indonesian trade mark registrations shall be deleted from the Register due to non-use (the Respondent provided a copy of the verdict of the Indonesian Commercial Court, which was not in English).

The Disputed Domain Name was registered in relation to a genuine offering of goods and services.

Registered and Used in Bad Faith

The Respondent submits that the Disputed Domain Name was registered and has been and is being used in good faith. It submits that none of the circumstances of bad faith set out in paragraph4(b) of the Policy have been satisfied.

The Respondent included a number of annexures to its Response, but did not explain their significance to this matter.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 onus of proving these elements is on the Complainant.

A. Procedural Matters

Supplementary submissions

The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and word limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the Panel is to conduct proceedings “with due expedition” and gives the Panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, panels will only accept supplementary filings in “exceptional” circumstances.

On February 27, 2015, the Complainant provided supplementary submissions that were translations of some of the annexures to the Response. These submissions were 24 days late. The Panel had been able to extract the relevant information from the Response and the Indonesian versions of the annexures. As such, the supplementary submissions do not offer evidence that was previously unavailable. Accordingly, the Panel declines to accept the supplementary submissions as part of the record in this proceeding.

Multiple Complainants

The Panel accepts that TCF Co. LLC and The Cheesecake Factory Incorporated have common legal interests in the Trade Mark, as the owner/licensor, and as the licensee of the Trade Mark, respectively. As such, the Panel permits both parties to be joint Complainants in this dispute.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Respondent submits that the Complainant’s Indonesian trade marks are to be deleted for non-use in Indonesia. While this may be the case, the Panel finds that the Complainant still has rights in numerous other registered trade marks for THE CHEESECAKE FACTORY. The Complainant does not have to demonstrate trade mark rights in Indonesia to succeed on this element.

The Disputed Domain Name is confusingly similar to the Trade Mark, both visually and aurally. The second half of both are identical (i.e., “cake factory”). Further, “chz” could be considered to be an abbreviation for “cheese” (just as “plz” is often used as an abbreviation for “please”). By way of example, there are a number of food outlets with names like “Max & Chz” (being macaroni and cheese), “Grilled Chz” (for cheese sandwiches) and “Xtra Chz” (for pizzas). In each of these instances, a consumer would understand “chz” to stand for “cheese”.

The additional “the” in the Trade Mark is insufficient to distinguish the Disputed Domain Name from the Trade Mark in this case.

In light of the above, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:

- the Respondent is not commonly known by the Disputed Domain Name and does not own any trade or service marks corresponding to the Disputed Domain Name (noting that its registered trade mark for CHEESE CAKE is not the same as the Disputed Domain Name);

- the Respondent has no connection with the Complainant; and

- the Complainant has not consented to the Respondent’s use of the Trade Mark.

It appears that the Respondent has been operating a business called “Cheese Cake” in Indonesia. The Respondent has submitted that it owns a registered trade mark for CHEESE CAKE in Indonesia.

The Panel has verified that the Respondent owns an Indonesian trade mark registration for CHEESE CAKE as a logo mark.

A number of UDRP Panels have held that the fact that a respondent owns a trade mark registration may in appropriate cases be an important consideration, however, it is not an absolute bar to a complainant succeeding in appropriate cases under the Policy (see, e.g., Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, BECA Inc v. CanAm Health Source Inc.,WIPO Case No. D2004-0298, Uponor Oyj andUponor Innovation AB v. Iman G. Mohammadi, Network Supporters Co. Ltd., WIPO Case No. D2008-0209 and Duracell Batteries BVBA v. Stanley Myers Limited, WIPO Case No. D2011-0822). Here, the Respondent’s registered trade mark is sufficiently different to the Disputed Domain Name so as to carry little weight for the Respondent on this element.

The Respondent submits that it is currently applying for trade mark registrations for CHEESE CAKE FACTORY. Such applications may give rise to rights or legitimate interests, where they evidence a respondent’s bona fide business plans. However, the materials provided by the Respondent show that these registrations are being applied for by De Silva U Chandra Sri Lal, not the Respondent. In the absence of any explanation from the Respondent, the Panel is unable to discern how these applications give the Respondent rights or legitimate interests in the Disputed Domain Name. The Panel further notes that the Respondent did not bring the non-use application in relation to the Complainant’s Indonesian Trade Mark. The application was instituted by De Silva U Chandra Sri Lal.

The Respondent submitted, without referring to any supporting evidence, that the Disputed Domain Name “is used by Respondent in business in relation to a genuine offering of goods and services”.

Paragraph 4(c)(i) of the Policy provides that rights or legitimate interests can be demonstrated where “before any notice to you of the dispute, your 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”.

The latter scenario (i.e., “a name corresponding to the domain name”) does not apply here.

The Respondent claims trade mark rights in CHEESE CAKE. An annexure to the Response is headed “CHEESE CAKE INDONESIA” and features photos of the interior and exterior of a restaurant, various dishes (both mains and desserts), display cabinets filled with cakes and slices, and various individual cheesecakes (including prices). Neither “Cheese Cake” nor “Cheese Cake Indonesia” can be considered “a name corresponding to the domain name”.

The Panel now turns to whether the Disputed Domain Name itself has been used “in connection with a bona fide offering of goods or services”.

Over the past 43 years, the Complainant has amassed substantial goodwill in the Trade Mark. The Complainant, its business and the Trade Mark are well-known and frequently referenced in popular culture. For example, one of the main characters in the popular US sitcom “The Big Bang Theory” works at The Cheesecake Factory.

The Complainant’s Indonesian trade mark registrations pre-date the Respondent’s trade mark and the Disputed Domain Name registrations by approximately seven and 11 years, respectively. Given the Complainant’s significant international reputation, the Panel infers that the Respondent was aware of the Complainant, the Complainant’s business and the Trade Mark when it registered the Disputed Domain Name in 2008.

From the evidence provided by the Respondent, one could infer that the Respondent’s business has been be modelled off the Complainant’s. In fact, one of the photos provided by the Respondent is captioned: “Our version of Cheesecake Factory’s Chicken Madeira”.

The use by the Respondent of the Disputed Domain Name, in these circumstances, does not constitute a bona fide offering of goods or services (see, e.g.,Five Guys Holdings Inc. v. Domains by Proxy, LLC / Payman Ghasemi, WIPO Case No. D2014-1756). Further, the evidence available to the Panel suggests that the Respondent has been trading off the Complainant’s goodwill in the Trade Mark for some time.

For the reasons outlined above, the Panel is not satisfied, on the evidence which has been provided, that the Respondent’s use of the Disputed Domain Name in connection with its business has been a use “in connection with a bona fide offering of goods or services”.

As such, the Panel finds no rights or legitimate interests under paragraph 4(c)(ii) of the Policy. The Respondent owns a trade mark registration for a logo containing the words “cheese cake”, and the Respondent provided no explanation as to why it was necessary to register <chzcakefactory.com> rather than a domain name incorporating its own trade mark, such as <cheesecakeindonesia.com> for example. The Panel finds no explanation other than the Respondent did so with the Complainant in mind.

Paragraph 4(c)(iii) of the Policy does not apply as the Respondent’s use of the Disputed Domain Name is in connection with commercial purposes.

In light of the above, the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.

Paragraph 4(b)(iv) of the Policy provides that bad faith is evidenced where “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”.

As outlined above, the reputation of the Trade Mark is clearly established. It appears that the Complainant and the Respondent are competitors, both operating in the restaurant industry focused on cheese cake sales. The Panel infers that the Respondent was aware of the Complainant, the Complainant’s business and the Trade Mark when it registered the Disputed Domain Name. The marked similarities between the Complainant’s and the Respondent’s businesses clearly indicate that the Respondent intended consumers to (incorrectly) assume there was some connection between the Respondent and the Complainant.

In light of the above, the Panel finds that the Complainant has succeeded on the third element 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, <chzcakefactory.com>, be transferred to the Complainant.

John Swinson
Sole Panelist
Date: February 28, 2015