WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sbarro Franchise Co., LLC v. Zhichao Yang

Case No. D2019-1074

1. The Parties

Complainant is Sbarro Franchise Co., LLC, United States of America (“US”), represented by Gottlieb, Rackman & Reisman, P.C., US.

Respondent is Zhichao Yang, Anhui, China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2019. On May 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 9, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 13, 2019 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 13, 2019.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 12, 2019.

The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on June 24, 2019. 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

According to the publicly available WhoIs information, the Domain Name was registered on September 3, 2018, and resolves to a pay-per-click webpage.

Complainant is a subsidiary of Sbarro LLC (“Sbarro”). Sbarro is the owner and operator of fast food pizzerias and Italian-style restaurants, with the first Sbarro restaurant being established in Brooklyn, New York in 1959.

Today, Sbarro owns, operates, licenses, and oversees more than 589 company-owned and franchised restaurants around the world, including 323 locations in the US.

Sbarro has been the owner of its SBARRO trade mark (“Complainant’s Mark”) since as early as 1965 in connection with restaurant services, and every Sbarro location, regardless of whether company-owned or licensed, is operated under a mark incorporating Complainant’s Mark.

Sbarro owns the following 14 trade mark registrations in the US incorporating Complainant’s Mark:

5. Parties’ Contentions

A. Complainant

Complainant contends that the fame and commercial strength of Complainant’s brand is reflected in its worldwide sales success, and further, its 2018 global sales were in excess of USD 328 million. In addition, Complainant states that it has invested millions of dollars in advertising and promoting its brand.

Complainant states that it operates an interactive website accessible at <sbarro.com> where Complainant’s Mark is prominent. It has thousands of followers on Twitter and Instagram, as well as almost 300,000 likes on Facebook.

Complainant asserts that Respondent’s bad faith is demonstrated by the Domain Name’s inclusion of its famous Complainant’s Mark, in which Complainant has enjoyed exclusive rights in the field of restaurant and food services for more than 50 years.

Complainant further states that its counsel sent a cease and desist letter to Respondent on October 15, 2018, advising that registration and use of the Domain Name constituted cybersquatting and trade mark infringement of Complainant’s Mark, and demanding Respondent transfer the Domain Name to Complainant. No response was received from Respondent, although advice was received from the Registrar that the letter was forwarded to Respondent.

Complainant contends that the Domain Name is confusingly similar to Complainant’s Mark as it consists of two elements; being Complainant’s Mark in its entirety, prefixed by the word “tel”. The addition of the prefix “tel” does not negate the confusing similarity.

Complainant goes on to state that it has not licensed, authorized, or otherwise sanctioned Respondent to use Complainant’s Mark for any purpose, including in connection with the Domain Name. In addition, there is nothing to indicate that Respondent is now or has ever been known by or referred to by a name wholly consisting of or incorporating “Sbarro”.

Complainant contents that there is no evidence that Respondent has made any bona fide commercial use of the name “Sbarro” and therefore cannot lay claim to any legitimate rights or interest in the Domain Name.

Complainant also notes that as at May 9, 2019, the Domain Name directs to a pay-per-click webpage.

Complainant states that “Sbarro” is an arbitrary word with no significance exceptas a trade mark, and submits therefore that Respondent devised and registered the Domain Name with the intention of trading upon the renown of and goodwill reposed in Complainant’s Mark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant owns or is involved in about 589 company-owned and franchised restaurants around the world, of which 323 locations are in the US. It has used Complainant’s Mark since about 1965 in connection with restaurant services, and has 14 trade mark registrations in the US incorporating Complainant’s Mark

Complainant contends that the Domain Name is confusingly similar to Complainant’s Mark as it consists of two elements; being Complainant’s Mark in its entirety, prefixed by the word “tel” and that the addition of the prefix “tel” does not negate the confusing similarity.

Respondent does not explain its actions or try to refute the allegations made by Complainant. In the absence of such response, it is found that:

a) Complainant has rights in respect of Complainant’s Mark.

b) The Domain Name is confusingly similar to Complainant’s Mark.

Accordingly, the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

In terms of whether Respondent has rights or legitimate interests in the Domain Name, in the absence of any response or explanation, the Panel finds that Respondent is not sponsored by or affiliated with Complainant, nor has Respondent been licensed, authorized, or permitted to register domain names incorporating Complainant’s Mark. Further, Respondent is not commonly known by the Domain Name. Based on Complainant’s assertions, since May 9, 2019, the Domain Name has directed to a pay-per-click webpage. That suggests the Domain Name is being used for monetization purposes.

Based on the above, the Panel is therefore satisfied that the second element of the Policy has been met.

C. Registered or Used in Bad Faith

Given Complainant’s use and registration of Complainant’s Mark, and its international repute, the Panel infers that Respondent knew of Complainant’s Mark when registering the Domain Name.

The Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Complainant’s long-standing interest in Complainant’s Mark, at the time of registration of the Domain Name; and since (pay-per-click monetization).

The Panel thus finds that the third limb of the Policy has been met.

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 Domain Name <telsbarro.com> be transferred to Complainant.

Clive L. Elliott Q.C.
Sole Panelist
Date: July 16, 2019