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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DFO, LLC v. Foodfetchers

Case No. D2008-0593

1. The Parties

Complainant is DFO, LLC, Spartanburg, South Carolina, United States of America, represented by Venable, LLP, United States of America.

Respondent is Foodfetchers, Strongsville, Ohio, United States of America, represented by The Minshall Law Offices, United States of America.

2. The Domain Name and Registrar

The disputed domain name <dennys2go.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2008. On April 17, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 18, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2008. The Response was filed with the Center on May 12, 2008.

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on May 28, 2008. 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

Complainant DFO, LLC owns the trademark DENNY’S, as used as early as March 1959 in connection with restaurant and related goods and services. The mark has been registered in a number of countries, including the United States. Complaint, Annex B.

The disputed domain name <dennys2go.com> was registered by Respondent on December 26, 2007.

5. Parties’ Contentions

A. Complainant

Complainant notes that it owns registrations for the DENNY’S mark in 36 countries and in the European Community and that its rights in each of these countries predate Respondent’s registration of the disputed domain name. Complainant further contends that there is clear similarity of the mark and the domain name, when viewed in their entireties, as to appearance, sound, connotation, and commercial impression. According to Complainant, “[t]he domain name ‘DENNYS2GO.COM’ is … clearly an invitation to associate the website with Denny’s Restaurants and with prepared meals to be carried out or delivered and eaten off the premises, the phrase ‘to go’ having this common understanding. Using the Aramic number ‘2’ instead of the word ‘to’ does not change this common understanding.”

Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of Complainant’s knowledge, Respondent has no rights to any mark consisting of the term “denny’s” in any country. Instead, Complainant asserts, Respondent is using the domain name in issue with the intent, for commercial gain, to misleadingly divert Complainant’s consumers to Respondent’s website and to hold the site as ransom.

Complainant believes that the disputed domain name was registered in bad faith. On information and belief, Complainant alleges that Respondent, at the time it registered the disputed domain name, knew of Complainant’s rights in the DENNY’S mark. According to Complainant, Respondent had constructive notice of Complainant’s trademark rights by virtue of Complainant’s trademark registrations in the United States and elsewhere and Complainant’s use of the trademark registration symbol when referencing the DENNY’S mark in print advertising and on its website located at “www.dennys.com”.

Complainant maintains that circumstances indicate that the domain name <dennys2go.com> was acquired in bad faith, primarily for the purpose of diverting Complainant’s customers to Respondent’s site and for the purpose of selling the domain name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name. In support of the former assertion, Complainant points out that Respondent’s web page contains sponsored ads and links to competing restaurants. Complaint, Annex D. In support of the latter contention, Complainant submits an affidavit from a paralegal indicating that she received a call from Mr. Seoud, the owner of Respondent Foodfetchers, on February 15, 2008, in which he explained that he had been approached by Denny’s Restaurants about a business relationship, that discussions between the parties had been broken off, that he was very unhappy about this, and that he would sell the domain name to Complainant for $10,000. Complaint, Annex E. An affidavit submitted by a vice president for one of Denny’s, Inc.’s affiliated companies alleges that Mr. Seoud, in a February 1, 2008, telephone call, indicated that he would release the disputed domain name or transfer it to Complainant, but that in a subsequent call on February 21, 2008, Mr. Seoud indicated that if Complainant “wanted the domain name so badly, [Complainant] should buy it from him.” Complaint, Annex F.

B. Respondent

Respondent concedes that Complainant owns the DENNY’S mark for restaurant services, that such rights predate the registration of the disputed domain name, and that such name is similar, but not identical, to Complainant’s <denny’s.com> domain name. Respondent points out, however, that it does not engage in “coffee shop services.”¹

Respondent contends that it has rights and a legitimate interest in the domain name and submits the affidavit of its owner, Mr. Seoud, in support of such contention. Response, Annex A. Respondent explains that, in 2007, Complainant approached Respondent concerning a business venture, namely, using Respondent for home delivery service of Complainant’s dine in meals. Respondent contracts with restaurants to provide delivery service for the restaurant’s customers. Complainant approached Respondent about providing delivery service by online ordering to their local restaurants. During these discussions, Respondent asserts, Complainant indicated that it did not want to use Respondent’s existing web pages for ordering and should Respondent desire to work with Complainant, it would require a separate “landing page” for use in online ordering.

As a result of such discussions, Respondent acquired the domain name <dennys2go.com>. “While ultimately the Complainant did not desire to use Respondent and its delivery services, “DENNYS2GO.COM” was acquired by the Respondent solely to further a business venture suggested by the Complainant,” Respondent asserts. The domain name in issue, Respondent notes, was acquired prior to Respondent’s receipt of any notice of any dispute over the domain name and such name has not been used by Respondent in any other business context or for any other purpose since being acquired in 2007.

Respondent denies that it is using the disputed domain name with the intent, for commercial gain, to misleadingly divert Complainant’s customers to its website and to hold the site as ransom. The domain name, Respondent emphasizes, was acquired for one purpose only – as part of the negotiations with Complainant to provide food delivery services. According to Respondent, “[t]he domain name is parked, and has never been used by Respondent. … Further, … Respondent has no interest, financial or otherwise, in any links from the parked site, and receives no income or revenue from the parked site.”

“Simply put,” Respondent states, “prior to receiving any notice of a dispute over DENNYS2GO.COM, Respondent was preparing to use the domain name in connection with bona fide business venture with Complainant. As preparations for this venture were instituted at the request of the Complainant, Respondent had legitimate interests in registering the domain name at the time it did.”

For many of the reasons set forth above, Respondent also contends that the domain name in issue has not been registered and is not being used in bad faith.

According to Respondent:

“The domain name at the center of this dispute was acquired solely for use in the business venture described above. This venture was spearheaded by an employee of Complainant who, apparently, is no longer with the Complainant. *** After the departure of that employee, Respondent was summarily contacted by the Complainant about transferring the domain name. *** Respondent had expended time and resources into this venture, and believed he had legitimately acquired DENNYS2GO.COM as a part of the process. *** Respondent was therefore taken aback when Complainant demanded he transfer the domain name. During that uncomfortable phone call, when asked at what price he would transfer DENNYS2GO.COM to Complainant he hastily stated $10,000.00. As Respondent had been negotiating with Complainant over other business ventures, it expected to receive a counteroffer for the sale of the domain name, which never came. Respondent had no intention of holding the domain name ‘ransom’, but instead expected to negotiate to an agreed upon fair price, as he had been negotiating with Complainant over several months prior to this telephone call. No subsequent negotiations followed, and he was summarily served with the Complaint in this arbitration….

“Likewise, the domain name was not registered in order to prevent the Complainant from using the mark, but to facilitate the business venture to allow Complainant to use the mark in its home delivery service. DENNYS2GO.COM was registered to facilitate the Complainant and the Respondent working together, not to compete with each other. Therefore, since the domain name was registered while these two parties were attempting to create a business venture, Respondent had no intention, nor currently has any intention, of disrupting the Complainant’s business (especially any delivery service) when registering DENNYS2GO.COM. In fact, as noted above, Respondent has never used the domain name for any other reason.

“Complainant has produced no evidence that Respondent acquired DENNYS2GO.COM in bad faith for the purpose of diverting Complainant’s customers to respondent’s site. Complainant cites to a printout of the parked webpage at DENNYS2GO.COM listing sponsored advertisements (including other restaurants) as evidence of bad faith. However, as confirmed in that same telephone conversation with Shepard Bell of godaddy.com, Respondent has no input or say into what sponsored advertisements appear on the parked page…. Furthermore, none of the sponsored advertisers have any connection or link, financial or otherwise, to Respondent or any business associated with Respondent. …And, as shown above, Respondent receives no income or revenue from owning DENNYS2GO.COM. ***

“Respondent, in good faith and as a part of business negotiations with Complainant, acquired DENNYS2GO.COM. While it is true that Respondent hastily offered $10,000.00 dollars to Complainant to purchase the name, he did so assuming the parties would negotiate down to a mutually agreeable price. Respondent acquired the domain name in order to further a business venture proposed by the Complainant itself, as Respondent was approached by Complainant and was informed Complainant wanted its own “landing page” for online ordering. Respondent should not be strong armed into relinquishing a legitimately acquired domain name simply because Complainant has the resources to file the instant arbitration assuming Respondent would be unable or unwilling to respond.”

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant, through its registrations for and use of the DENNY’S mark, has rights in such mark. The Panel further rules that the domain name <dennys2go.com> is confusingly similar to the DENNY’S mark. The domain name incorporates Complainant’s mark in full. The addition of the descriptive term “2go” and of the top-level domain “com” do not detract from the fact that the mark and domain name are confusingly similar.

B. Rights or Legitimate Interests

The Panel concludes that Complainant has not met its burden of proving that Respondent does not have rights or legitimate interests in the <dennys2go.com> domain name. In the Panel’s view, the evidence establishes that before notice to Respondent of the dispute, Respondent engaged in demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy.

The evidence indicates that Respondent registered the disputed domain name in December 2007, only after being approached by Denny’s to begin delivery service for local Denny’s restaurants and being told by Denny’s that “they did not want to use [Respondent’s] existing website for customers to place orders, but instead they wanted a separate Denny’s ‘landing page’ which customers would use.” Mr. Seoud Affidavit, paragraph 4 and Exhibit 1 to Response consisting of exchange of emails between the parties. That Respondent chose to register <dennys2go.com> as the domain name for the landing page appears consistent with Respondent’s understanding of Denny’s desire and understandable, given the nature of the services to be offered by Respondent. Indeed, a November 8, 2007, email from a Denny’s employee to Respondent’s operations director, after requesting information as to the telephone number Denny’s customers should call to place their orders, states: “We would prefer a dedicated line that is answered as if by a Denny associate – is this possible?” This suggests that Denny’s desired to structure the relationship so as to give customers the impression that they were dealing directly with Denny’s. The use of the domain name <dennys2go.com> would certainly strengthen such impression. The fact that the business relationship did not materialize does not detract from the fact that Respondent registered the disputed domain name “in preparation of planning an online ordering page as desired by Denny’s.” Mr. Seoud Affidavit, paragraph 5.

C. Registered and Used in Bad Faith

In view of the above determination on the issue of rights or legitimate interests, the Panel concludes that the disputed domain name was not registered in bad faith. The Panel emphasizes that, except in cases involving “abusive registrations,” the Policy set forth in the UDRP leaves the resolution of disputes to the courts. See Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, paragraph 4.1(c). The facts of this case do not support a determination that registration of the <dennys2go.com> domain name was “abusive.”

7. Decision

For all the foregoing reasons, the Complaint is denied.

Jeffrey M. Samuels
Sole Panelist

Dated: June 11, 2008