A Chinese cybersquatter monetized the domain Chik-fil-a.com for almost a decade, sending typo-traffic to “Chinese chicken” competitors among other destinations.
The ensuing UDRP was filed by CFA Properties Inc. and Chick-fil-A Inc., that own the registered trademark CHICK-FIL-A since 1982. Founded in 1946, the friend chicken (and more) franchise is extremely popular in the US and also worldwide.
An easy job for the sole panelist at the Forum (formerly NAF) who stated:
“The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, February 3, 2012, Respondent had actual knowledge of Complainant’s CHICK-FIL-A mark. A number of the links on the website to which the Domain Name resolves to make direct reference to Complainant. Moreover it would be unlikely for a party to register a domain name that consists of a misspelling of the well-known CHICK-FIL-A mark and redirect it to a pay-per-click website absent any awareness of Complainant and its CHICK-FIL-A mark […]”
Final decision: Grant transfer of the domain Chik-fil-a.com to the Complainant and no fries for the Respondent.
CFA Properties, Inc and CFA Properties, Inc. v. Sui Xian Nam
Claim Number: FA2109001962324
PARTIES
Complainant is CFA Properties, Inc and CFA Properties, Inc. (“Complainant”), represented by Mary Grace Gallagher of Alston & Bird LLP, Georgia, USA. Respondent is Sui Xian Nam (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chik-fil-a.com> (“Domain Name”), registered with EnCirca, 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.
Nicholas J.T. Smith as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on September 2, 2021; the Forum received payment on September 2, 2021.
On September 7, 2021, EnCirca, Inc. confirmed by e-mail to the Forum that the <chik-fil-a.com> domain name is registered with EnCirca, Inc. and that Respondent is the current registrant of the name. EnCirca, Inc. has verified that Respondent is bound by the EnCirca, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@chik-fil-a.com. Also on September 9, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 30, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 Name be transferred from Respondent to Complainant. Specifically, Complainant requests the domain name be transferred to Chick-fil-A, Inc..
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel has reviewed the Complaint and is satisfied that that CFA Properties Inc. is a wholly owned subsidiary of Chick-fil-A Inc. and the holder of the CHICK-FIL-A mark which it licenses to Chick-fil-A Inc.. This is sufficient to establish a sufficient nexus or link between the Complainants such that they should be treated as a single entity in this proceeding referred to in the singular, as “Complainant”.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, CFA Properties Inc. and Chick-fil-A Inc., offers restaurant services, food products, and a host of related goods and services. Complainant has rights in the CHICK-FIL-A mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,209,211, registered September 14, 1982). Respondent’s <chik-fil-a.com> domain name is confusingly similar to Complainant’s CHICK-FIL-A mark because it merely omits the second letter “c” from the mark and adds the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <chik-fil-a.com> domain name. Respondent is not commonly known by the Domain Name nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the CHICK-FIL-A mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to host pay-per-click links related to Complainant.
Respondent registered and uses the <chik-fil-a.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the Domain Name where Respondent generates revenue from pay-per-click links. Additionally, Respondent’s domain name registration constitutes typosquatting. Finally, Respondent had actual knowledge of Complainant’s rights in the CHICK-FIL-A mark when the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant holds trademark rights for the CHICK-FIL-A mark. The Domain Name is confusingly similar to Complainant’s CHICK-FIL-A mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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.”
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant has rights in the CHICK-FIL-A mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 1,209,211, registered September 14, 1982). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <chik-fil-a.com> domain name is confusingly similar to Complainant’s CHICK-FIL-A mark because it merely omits the second letter “c” from the mark and adds the “.com” gTLD. Misspelling a mark by adding, removing, or transposing letters and adding a gTLD may not negate confusing similarity between a mark and a disputed domain name per Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the CHICK-FIL-A mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Sui Xian Nam” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to a website which appears to be used to obtain click-through revenue by containing advertising links to third-party websites, using terms related to Complainant and its services (“Chick Fil Menu” or “Restaurant Franchise”) websites. Use of a domain name to host pay-per-click links unrelated to any descriptive meaning of the domain name is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, February 3, 2012, Respondent had actual knowledge of Complainant’s CHICK-FIL-A mark. A number of the links on the website to which the Domain Name resolves to make direct reference to Complainant. Moreover it would be unlikely for a party to register a domain name that consists of a misspelling of the well-known CHICK-FIL-A mark and redirect it to a pay-per-click website absent any awareness of Complainant and its CHICK-FIL-A mark (and intention to capitalize on Complainant’s reputation in its CHICK-FIL-A mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith in order to resolve to a website that provides a series of pay-per-click links for which Respondent would be expected to receive revenue. Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chik-fil-a.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: October 1, 2021
