Myquiznos.com

The timeline behind myquiznos.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION The Quizno's Master LLC v. Shailesh Sardesai Claim Number: FA0702000916990 PARTIES Complainant is The Quizno's Master LLC (“Complainant”), represented by Libby Huskey, of Holland & Hart LLP, 1800 Broadway, Suite 300, Boulder, CO 80302. Respondent is Shailesh Sardesai (“Respondent”), 46801 Keswick Sq., Sterling, VA 20165. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <myquiznos.com>, registered with Network Solutions, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Tyrus R. Atkinson, Jr., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 15, 2007. On February 14, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <myquiznos.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On February 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@myquiznos.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On March 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <myquiznos.com> domain name is confusingly similar to Complainant’s QUIZNOS mark. 2. Respondent does not have any rights or legitimate interests in the <myquiznos.com> domain name. 3. Respondent registered and used the <myquiznos.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, The Quizno's Master LLC, is a worldwide leader in restaurant products and services. Complainant is currently one of the fastest growing restaurant chains in America, and Complainant has more than 5,000 restaurants in over twenty countries. Complainant has used various forms of its QUIZNOS mark for over twenty-five years, and holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the mark (Reg. No. 2,728,066 issued June 17, 2003). Complainant also operates a website at the <quiznos.com> domain name. Respondent registered the <myquiznos.com> domain name on October 30, 2003. Respondent’s disputed domain name resolves to a website that displays hyperlinks for various third-party websites, some of which are in direct competition with Complainant. 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." 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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. Identical and/or Confusingly Similar The Panel finds that Complainant’s trademark registration with the USPTO sufficiently establishes Complainant’s rights in the QUIZNOS mark pursuant to Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (“Complainant has submitted evidence of its registration of the AOL mark with the USPTO. The Panel finds that such evidence establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Respondent’s <myquiznos.com> domain name is confusingly similar to Complainant’s QUIZNOS mark under Policy ¶ 4(a)(i), as the disputed domain name combines Complainant’s mark in its entirety with the generic word “my” and the generic top-level domain “.com.” The addition of the common, generic term “my” does not sufficiently distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i), and the addition of a generic top-level domain also does not create a sufficiently distinct domain name as generic top-level domains are required in all domain names. See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant initially must establish that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant makes a prima facie case, the burden of proof shifts and Respondent must prove that it has rights or legitimate interests in the <myquiznos.com> domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <myquiznos.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). Respondent’s WHOIS information lists Respondent as “Shailesh Sardesai” and there is no other information in the record indicating that Respondent is commonly known by the <myquiznos.com> domain name. Additionally, there is no evidence to suggest that Complainant has ever authorized Respondent to use its mark. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found no rights or legitimate interests where the respondent was not commonly known by the mark and had never applied for a license or permission from the complainant to use the trademarked name. See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name). The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Furthermore, Respondent’s <myquiznos.com> domain name resolves to a website that displays hyperlinks to various third-party websites, some of which are in direct competition with Complainant. The Panel accordingly infers that Respondent is operating the disputed domain name and corresponding website for its own commercial gain by receiving click-through fees for the hyperlinks displayed on its website. The Panel finds that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Based on the uncontested evidence presented by Complainant, the Panel infers that Respondent receives click-through fees for diverting Internet users to a website that displays hyperlinks for various third-party websites, some of which are in direct competition with Complainant. Additionally, Respondent’s <myquiznos.com> domain name is capable of creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and corresponding website. The Panel finds that such use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). The Panel further finds that Respondent’s use of the disputed domain name to display links to third-party websites, some of which are in direct competition with Complainant, constitutes a disruption of Complainant’s business. Such use of the <myquiznos.com> domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 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 <myquiznos.com> domain name be TRANSFERRED from Respondent to Complainant. Tyrus R. Atkinson, Jr. , Panelist Dated: March 19, 2007 Click Here to return to the main Domain Decisions Page. 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Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.