Complainant is Hunt Family Properties, LLC of Nashville, Tennessee, United States of America (“United States”), represented by Waller Lansden Dortch & Davis, LLP, United States (“Complainant”).
Respondent is Jamesspencer, save-a-lot of Charlotte, United States (“Respondent”).1
The disputed domain name <huntbrotherspizzas.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2017. On August 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2017.
The Center appointed M. Scott Donahey as the sole panelist in this matter on September 1, 2017. 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.
Complainant is a provider of pizza products and pizza distribution services in more than 7,300 locations located in twenty-eight of the fifty United States. Complaint, Annex D. Complainant’s pizza products and pizza distribution services are offered under the HUNT BROTHERS and HUNT BROTHERS PIZZA design trademarks and service marks, which marks were registered with the United States Patent and Trademark Office (“USPTO”) as early as October 26, 2004.
Complainant registered the domain name <huntbrotherspizza.com> on August 14, 2002, and has used the domain name in commerce since at least that time in connection with its pizza products and pizza distribution services. Complaint, Annex G.
On April 21, 2017, Respondent registered the disputed domain name. Complaint, Annexes A and B. Respondent has been using the domain name at issue in conjunction with a scheme in which classified advertisements have been placed with various college websites in the United States, inviting applicants to submit personal information as part of an ostensible application process to provide goods and services under Complainant’s trademarks and service marks. Complaint, Annex H.
Various college students who saw and some who responded to such advertisements have contacted Complainant, believing that Complainant had placed the advertisements. A scheme apparently designed to procure money from the college student applicants through fraudulent misrepresentation gave rise to the students and their parents contacting Complainant. Complaint, Annex I. At least one of the students who responded to the advertisements received a document from a “Jefferson Burrows” purporting to represent Complainant and done on paper bearing one of Complainant’s HUNT BROTHERS PIZZA trademark or service mark and design marks with “®” registration symbol.
Complainant contends that the disputed domain name <huntbrotherspizzas.com> is confusingly similar to Complainant’s HUNT BROTHERS PIZZA and design marks. Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name in that Respondent is not related to, affiliated with, endorsed by, connected to, or otherwise associated with Complainant, nor has Respondent sought, nor has Complainant granted, Respondent authorization permission or license to use Complainant’s registered marks. Complainant argues that Respondent is using the disputed domain name to lure unsuspecting college students into sending money to Respondent under the belief that it will assist them in obtaining employment or other compensated engagement from Complainant without any authorization whatsoever from Complainant.
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall 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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that 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,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
Complainant has alleged that the disputed domain name is confusingly similar to Complainant’s HUNT BROTHERS PIZZA trademarks and service marks and designs in that it consists of Complainant’s marks but for the addition of the plural additive “s” to the word pizza in the disputed domain name, <huntbrotherspizzas.com>. It has long been found that the conversion of a mark from the singular to the plural by the addition of an “s” is confusingly similar to the mark so converted. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark and design.
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant has submitted evidence that Respondent has used the disputed domain name in a scheme to defraud college students into believing that they are dealing with Complainant in respect to possible employment and to cause them to send money to Respondent. The Panel finds that such use of the domain name violates paragraph 4(b)(iv) of the Policy, which sets out as one example of bad faith registration and use that the “by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with complainant’s mark.”
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, <huntbrotherspizzas.com>, be transferred to Complainant.
M. Scott Donahey
Date: September 5, 2017
1 The Panel notes that according to the information available at the WhoIs of the disputed domain name, the registrant State is indicated to be “Other”.
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