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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pizza Hut, Inc. v. RJ, Inc.
Case No. D2000-0939
1. The Parties
The Complainant is Pizza Hut, Inc. ("the Complainant"), a California corporation having its principal place of business at 14841 Dallas Parkway, 3rd Floor, Dallas Texas 75240, USA. Complainant is represented in these proceedings by Larisa Colton, Esq. of Tricon Global Restaurants, Inc. 14841 Dallas Parkway, 3rd Floor, Dallas Texas 75240, USA.
The respondent is RJ, Inc. ("the Respondent") of Honolulu, Hawaii, USA.
2. The Domain Name and Registrar
The disputed domain name is "pizzahut.org", registered with Register.com, Inc. of New York, NY, USA on December 7, 1999.
3. Procedural History
Pizza Hut’s Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on August 3, 2000, and in hard copy on August 7, 2000. The Center acknowledged receipt to the Complainant on August 10, 2000. On August 15, 2000 the Center electronically contacted the Complainant to verify the domain name at issue. The Complainant responded to the Center’s inquiry on August 16, 2000 confirming that the domain name at issue was "pizzahut.org".
On August 15, 2000 the Center contacted Register.com informing them of the proceeding. Register.com via a facsimile dated August 18, 2000 confirmed the following: that they had received a copy of the Complaint from the Complainant; that Register.com was the registrar of record for the "pizzahut.org" domain name; that Rick Juarez of RJ, Inc. was the current registrant of the domain name in question; and that the domain name registration "pizzahut.org" is subject to the Uniform Domain Name Dispute Resolution Policy. Register.com also provided postal, telephone and facsimile information for the contacts and confirmed that the status of the registration is "active."
On August 28, 2000, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent at both the postal and e-mail addresses provided by Register.com. Attempts to transmit the document by the Center to the Respondent via facsimile failed on two separate attempts. The Center received confirmation that the hard copy was delivered via courier on September 1, 2000.
On September 28, 2000, having received no response from the Respondent within the time specified in the Notification of Complaint, the Center issued to both parties a Notification of Respondent Default.
On November 14, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing them that the Administrative Panel would be comprised of a single Panelist, Michael D. Palage.
The Panel has not received any additional requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Pizza Hut alleges and has provided evidence of the following key facts:
Pizza Hut is a leading and widely known operator of restaurants, offering primarily pizza, pasta and other Italian-style food items and has sold and advertised its services under the trademark PIZZA HUT throughout the United States and world-wide. It has used this mark in connection with its business for more than forty (40) years and owns five (5) United States federal registrations and approximately four hundred (400) registrations worldwide for PIZZA HUT trademarks.
In 1999, Pizza Hut had sales at its restaurants in the United States and abroad that exceeded seven and a half billion U.S. dollars coupled with an advertising budget of approximately 375 million U.S. dollars.
Pizza Hut restaurants now number over 7,000 worldwide and are located in over 177 jurisdictions throughout the world, including all fifty (50) states. Moreover, there are 18 Pizza Hut restaurants located in Respondent’s hometown of Honolulu, Hawaii.
The Respondent registered the domain name "pizzahut.org" on December 7, 1999. Upon investigation, Complainant has determined that Respondent is not a Pizza Hut, Inc., employee or franchisee and is not affiliated with Pizza Hut, Inc., in any way.
On February 25, 2000, Complainant sent a letter to Respondent informing him that PIZZA HUT was a federally registered trademark of Complainant, and demanding that Respondent permanently cease all use of the "pizzahut.org" domain name. Complainant’s February 25, 2000 letter was received and signed for by D. Gibson on March 1, 2000
On March 13, 2000, Complainant sent a follow up letter to Respondent again demanding that Respondent terminate his rights to the "pizzahut.org" domain name. Complainant’s March 13, 2000 letter was received and signed for by D. Gibson on March 16, 2000.
Pizza Hut received no response to either letter.
5. Parties’ Contentions
Pizza Hut contends that the domain name "pizzahut.org" is identical or confusingly similar to its registered trademarks and service marks and that the Respondent registered this domain name and is holding it without any right or legitimate interest and in bad faith.
Because the Respondent has failed to submit any response to Pizza Hut’s Complaint, its contentions are unknown.
6. Discussion and Findings
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy (" the Policy") requires a Complainant to prove three elements: first, that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; second, that the respondent has no rights or legitimate interests in respect of the domain name; and third, that the disputed domain name has been registered and is being used in bad faith.
The first of these elements is rather self-evident. Complainant has demonstrated that it has registered and long used the mark "PIZZA HUT" on an international basis. The disputed domain name, "pizzahut.org" is in no real sense distinguishable from Pizza Hut’s numerous trademark and service mark registrations.
Addressing the second and third elements of Paragraph 4(a) of the Policy is rendered more difficult as a result of Respondent’s failure to file a response, because direct evidence of a Respondent’s rights, interests and state of mind in respect of a domain name tends to be in the Respondent’s exclusive or primary possession. In the absence of direct evidence, the Panel must resort to reasonable inferences from whatever evidence is in the record. In addition, while neither the Policy nor the Rules allow for default judgment, Paragraph 14(b) of the Rules does authorize a Panel to draw such inferences from a respondent’s failure to respond "as it considers appropriate." WIPO D2000-1195, Euromarket Designs, Inc. v. Domain For Sale VMI.
Paragraph 4(b) of the Policy sets forth "in particular but without limitation" circumstances that "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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."
In this case, Respondent by either design or happenstance has managed to skirt the enumerated elements of bad faith registration and use as provided for in the Policy. First, there is no evidence in the record to indicate that the Respondent attempted to acquire the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. Second, although the Respondent’s registration of the domain name has prevented the Complainant from using the domain name, there is no evidence in the record to indicate that the Respondent has engaged in a pattern of such conduct. Third, Respondent does not appear to be a competitor of the Complainant. Finally, the Respondent does not appear to be deriving any commercial gain associated with the web site, as the domain name currently resolves to a Register.com default "Coming Soon" page.
As the Policy clearly states, a Panel is not limited exclusively to the elements set forth in 4(b). In analyzing the totality of circumstances in the record, the Panel finds the following additional factors relevant in reaching its final decision with regard to the elements of bad faith registration and use.
The first factor the Panel considers is the strength of the PIZZA HUT mark. Complainant alleges in its Complaint that the PIZZA HUT mark is "famous." The Panel cannot discount this claim in light of the standards set forth in the Lanham Act § 43(c). 15 U.S.C. § 1125(c) (1996) (Footnote 1) and the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, issued by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) in September of 1999. However, deciding whether the mark at issue is a "well-known" or "famous" mark, is currently outside the scope of this Panel’s mandate. See WIPO D2000-0021, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren. Without addressing the ultimate issue of Complainant’s fame, the Panel finds that the PIZZA HUT mark is a strong mark.
Additional factors that the Panel considers relevant are: Respondent’s failure to respond to this proceeding and Complainant’s two previous inquiries; the fact that Pizza Hut operates 18 restaurants in Respondent’s hometown of Honolulu, Hawaii; Respondent registered the domain name in December 1999 after over forty years of usage by Complainant; and Respondent has not made, nor taken any preparatory steps to make, any legitimate commercial or fair use of the domain name.
For these reasons, the Panel concludes that the record in this case supports a finding in Pizza Hut’s favor as to elements two and three of the Paragraph 4(a) test.
Having considered this case in accordance with Paragraph 15 of the Rules, the Panel finds for the Complainant, Pizza Hut, Inc., and ORDERS that the domain name "pizzahut.org" be transferred from the Respondent to the Complainant.
Michael D. Palage
Dated: November 28, 2000
1. The Panel elects to reference United States trademark law in light of the fact that both Respondent and Complainant are subject to United States law.