WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MOD Super Fast Pizza, LLC v. Registration Private, Domains By Proxy, LLC / Ken Thorn

Case No. D2016-1568

1. The Parties

The Complainant is MOD Super Fast Pizza, LLC of Bellevue, Washington, United States of America (“United States”), represented by Stokes Lawrence, P.S., United States.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Ken Thorn of Bend, Oregon, United States.

2. The Domain Name and Registrar

The disputed domain name <mod.pizza> is registered with Go Australia Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2016. On August 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2016, 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 August 4, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 5, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2016.

The Center appointed William R. Towns as the sole panelist in this matter on September 16, 2016. 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, founded in Seattle, Washington in 2008, owns and operates more than 140 pizza restaurants in the United States and a recently opened pizza restaurant in the United Kingdom of Great Britain and Northern Ireland under the name “MOD Pizza”. The Complainant owns United States trademark registrations for MOD PIZZA, MOD, and MOD PIZZA SUPER FAST, used by the Complainant in connection restaurant and restaurant-related goods and services. The Complainant also has registered the MOD PIZZA mark in Canada, the European Union, and Lebanon. The earliest of the Complainant’s United States registrations for MOD PIZZA (Registration No. 3,577,268) was issued by the United States Patent and Trademark Office (USPTO) on February 17, 2009.

The Respondent registered the disputed domain name <mod.pizza> on December 10, 2014, according to the relevant WhoIs records of the concerned Registrar. There is no evidence in the record that the Respondent has used the disputed domain name with an active website. The Respondent employed a privacy protection service when registering the disputed domain name; the Registrar disclosed the Respondent as the underlying registrant after the filing of the original Complaint herein.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to its marks as it incorporates the Complainant’s marks or the dominant element of the Complainant’s marks. The Complainant argues that the disputed domain name, consisting of the combination of the term “mod” with the generic Top-Level Domain (“gTLD”) “.pizza”, is identical to the Complainant’s MOD PIZZA mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that the Respondent is not affiliated in any way with the Complainant and has not been authorized to use the Complainant’s marks. The Complainant further submits that the Respondent does not own registered or common law trademarks or trade names containing “mod” or “mod pizza”, and has not been commonly known under such names. The Complainant notes that the disputed domain name does not resolve to an active website, and in view of the foregoing the Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the disputed domain name.¹ The Complainant argues that the Respondent’s use of a privacy shield supports an inference that the no legitimate or fair use has been made of the disputed domain name.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent asserts that the Respondent knew or should have known of the Complainant’s marks when registering the disputed domain name, given the Complainant’s extensive and long-term use of the marks. The Complainant adds that the Complainant’s marks are widely known and well established in relation to the Complainant’s pizza restaurants. The Complainant further notes that one of its pizza restaurants in Bend, Oregon is located only 4.5 miles from the Respondent’s Bend, Oregon address provided when registering the disputed domain name. The Complainant submits that even a cursory Internet search would have revealed the existence of the Complainant’s marks.

The Complainant maintains that the Respondent’s passive holding of the disputed domain name in the circumstances of this case constitutes registration and use of the disputed domain name in bad faith. The Complaint argues in light of the attendant circumstances that the Respondent’s registration of the disputed domain through a privacy service in order to conceal its identity is further indication of bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent 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 with respect to the domain name; and

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

Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

A. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <mod.pizza> is confusingly similar to the Complainant’s MOD, MOD PIZZA, and MOD PIZZA SUPER FAST marks, in which the Complainant has established rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.² The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.

In this case, the Complainant’s MOD and MOD PIZZA marks are easily recognizable in the disputed domain name. Disregarding the gTLD “.pizza”, the disputed domain name can be considered as identical to the Complainant’s MOD mark. Taking the gTLD “.pizza” into account, the disputed domain name could be considered as identical to the Complainant’s MOD PIZZA mark. Consideration of TLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity under the first element of the Policy. See, e.g., Bayerische Motoren Werke AG v. Masakazu/Living By Blue Co., Ltd., WIPO Case No. DMW2015-0001 (<b.mw>); Tesco Stores Limited v. Mat Feakins, WIPO Case No. DCO2013-0017 (<tes.co>); Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269 (<zionsbank.holdings>). In any event, the disputed domain name is confusingly similar to the Complainant’s marks whether or not the gTLD is considered.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is confusingly similar if not virtually identical to the Complainant’s MOD and MOD PIZZA marks. The Respondent does not appear to have made any active use of the disputed domain name.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed 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) 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.

The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

Based on the record in this proceeding, the Panel considers it most likely that the Respondent was aware of the Complainant and had the Complainant’s marks in mind when registering the disputed domain name. The Respondent’s registration of a domain name combining “MOD” – the distinctive element in each of the Complainant’s marks – with the gTLD “.pizza” is a clear indication of the Respondent’s knowledge of the Complainant and the Complainant’s marks. Internet users could easily expect that the disputed domain name would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.

In the absence of any explanation by the Respondent, the Panel is of the view that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s marks. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774. The record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. There is no indication in the record that the Respondent has been commonly known by the disputed domain name for purposes of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As noted above the Panel concludes that the Respondent in all probability was aware of the Complainant’s marks when registering the disputed domain name. In the absence of any explanation from the Respondent, the Panel finds the Respondent registered the disputed domain name with the intention of capitalizing on, or otherwise taking advantage of, the Complainant’s trademark rights.

Given the foregoing, the Respondent’s arguable passive holding of the disputed domain name does not preclude a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. To the contrary, the Respondent’s registration and holding of the disputed domain in the circumstances reflected in the record is indicative of opportunistic bad faith. The Panel cannot envision any commercial use the Respondent could make of the disputed domain name that would not trade on the Complainant’s mark. Nor in the Panel’s opinion could the Respondent, being on notice of this dispute, conceivably make any legitimate noncommercial or fair use of the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <mod.pizza> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: September 30, 2016

¹ The Complainant relates that its representatives anonymously contacted the Respondent via email on June 8, 2016, inquiring whether the disputed domain name was for sale. The Respondent replied that he had plans to develop the domain name and that it was not for sale. The Complainant submits this is further evidence that the Respondent has made no bona fide offering of goods or services within the meaning of the Policy.

² See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.