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The Cheesecake Factory Incorporated and The Cheesecake Factory Assets Co., LLC v. cheesecake-factory.com [2001] GENDND 1258 (29 June 2001)

WIPO Arbitration and Mediation Center

Complainants are The Cheesecake Factory Incorporated and The Cheesecake Factory Assets Co., LLC 26950 Agoura Road, Calabasas Hill, California, 91301, U.S.A.

Respondent is cheesecake-factory.com, cheesecake-factory@mg.nu, Prala 8, Bolivia, ch 31235, Bolivia.

The domain name at issue (hereinafter the Domain Name) is <cheesecake-factory.com>.

The registrar of the Domain Name is Network Solutions, Inc., 505 Huntmar Park Dr., Herndon, Virginia, 20170, U.S.A (hereinafter the Registrar).

On May 14, 2001, "The Cheesecake Factory Incorporated" and "The Cheesecake Factory Assets Co." [hereinafter collectively the Complainant] filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in a letter to the Complainant dated May 16, 2001. In a letter bearing the same date the Center informed the Registrar that the Complaint had been submitted to the Center regarding the Domain Name.

The Center then proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules] and the World Intellectual Property Organisation Supplemental Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on May 17, 2001.

The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.

In a letter dated May 17, 2001, the Center informed the Respondent of the commencement of the proceedings as of May 17, 2001, and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.

In a letter dated June 7, 2001, the Center informed the Respondent that it was in default pursuant to the ICANN Rules and WIPO Rules and that an administrative panel would be appointed. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules. The Panel has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.

The Panel has received no further submissions from either party since its formation.

The Panel is obliged to issue a decision on or prior to July 1, 2001, in the English language and is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.

The complainant "The Cheesecake Factory Incorporated" is a Delaware corporation and the complainant "The Cheesecake Factory Assets Co.", LLC, a Nevada limited liability company. The relationship between "The Cheesecake Factory Incorporated" and "The Cheesecake Factory Assets Co." is that the latter is a subsidiary of the other.

The Complainant is an operator of restaurants and bakeries in the United States as well as a producer and distributor of bakery products and various other products. The Complainant also operates a website at the domain name <thecheesecakefactory.com> which is used to publicize its business and to provide means for customers to order and purchase its products via a telephone number listed on the website.

Copies of the United States trademark registration certificates supplied by the Complainant as Exhibit 4 of the Complaint support the finding that the trademark "THE CHEESECAKE FACTORY" is a duly registered trademark of Cheesecake Factory Incorporated and has been registered since prior to the awarding of the Domain Name to Respondent.

Evidence supplied in the Complaint as Exhibit 1, shows that the Respondent registered the Domain Name with the Registrar on February 15, 2001.

On March 13, 2001, the Complainant sent a cease and desist letter to the Respondent, Exhibit 7, in which it demanded that Respondent cease and desist from using the Domain Name and transfer the Domain Name to it. The Complainant did not received any response to said letter.

No information has been provided which indicates the nature of the activities of the Respondent.

The Complainant alleges, in section II B of its Complaint, that the Domain Name is confusingly similar to the Complainant's trademark. Complainant argues that the terms ".com" and "the" do not significantly alter the commercial impression created by its trademark. Furthermore, the Complainant adds that the addition of a hyphen makes an insubstantial difference.

The Complainant adds at section II C of its Complaint that the Respondent has no rights or legitimate interests with respect to the Domain Name. To support that, the Complainant argues that the Respondent makes no use of the Domain Name in connection with a bone fide offering of goods or services nor is it making a legitimate non-commercial or fair use of the said Domain Name. The Complainant adds that the Respondent is not its employee, franchisee or affiliate.

At section II D of the Complaint, the Complainant states that the Respondent registered and used the Domain Name in bad faith. The Complainant asserts that the use of hyphens by the Respondent was a device to obtain a Domain Name, which is otherwise in all respects identical.

Complainant further states that the Respondent took deliberate steps to insure that its identity and true business address could not be determined from the register, which constitutes evidence of Respondent's bad faith.

In addition, the Complainant asserts that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name.

The Complainant states that the Respondent must have been aware of "THE CHEESECAKE FACTORY" trademark because of its large exposure. The Complainant submits that the Respondent's registration and use of the Domain Name, under such circumstances, constitute bad faith. Complainant further alleges that the failure to use the Domain Name in a bona fide manner by the Respondent constitutes bad faith as well.

The Complainant finally states that the Respondent is offering to sell the Domain Name via a website to third parties for financial gain without having used it, which is another proof of bad faith.

The Respondent failed to file a response with the Center within the specified time period and has failed to file a response since.

In accordance with paragraph 14 of the ICANN Rules, in the absence of a response to the Complainant’s claims by the Respondent, the Panel considers those claims in the light of the unchallenged evidence submitted by the Complainant. However, the Panel cannot decide in the Complainant’s favor solely given the Respondent’s default but is entitled to draw, and does draw such inferences as it feels just from the Respondent’s failure to respond.

Pursuant to the ICANN Policy paragraphs 4 (a)(i)(ii)(iii) the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:

i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights;

ii) that the Respondent has no rights or legitimate interests in the Domain Name; and

iii) that the Domain Name was registered and used in bad faith.

These three elements are considered below.

The Panel is of the opinion that the evidence provided by the Complainant supports a finding that the Complainant holds rights in the registered trademark "THE CHEESECAKE FACTORY". There remains to be determined whether or not the Domain Name is identical or confusingly similar to the said trademark. As it was stated in previous decisions, the Panel finds that the use of a hyphen and the addition of the suffix ".com" are not enough to avoid confusion (see Club Mediterranee v. Yosi Hasidim, WIPO Case No. D2000-1350, [December 15, 2000] and SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. 2000-0131, [April 13, 2000]). Moreover the Panel does not think that the prefix "the" distinguishes significantly the trademark of the Complainant from the Domain Name. The Panel is of the opinion that the Domain Name is confusingly similar to trademark "THE CHEESECAKE FACTORY" and therefore the Complainant has met the burden of proof as established by paragraph 4 (a)(i) of the ICANN Policy.

Paragraph 4(a)(ii) of the ICANN Policy requires the Complainant to show that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such legitimate rights or interests : (1) use of, or preparation to use the domain name in connection with bona fide offering of goods or services; (2) the fact that the respondent has commonly been known by the domain name; and (3) legitimate non-commercial or fair use of the Domain Name.

The Panel finds that the Respondent has no legitimate rights or interests in the Domain Name since: (1) the Respondent is not an employee, franchisee or licensee of Complainant, and acted without any consent or permission from Complainant; (2) Complainant held rights in "THE CHEESECAKE FACTORY" trademark before Respondent's registration of the Domain Name; and (3) there is no proof that Respondent was known or was doing any business under the name "cheesecake-factory" but for the web page of <GreatDomains.com> where the Domain Name was up for sale which is not enough to constitute use of, or preparation to use the Domain Name in connection with a bona fide offering of goods and services. Moreover there is no proof of any use of the Domain Name by the Respondent.

Furthermore, the Panel finds it appropriate in this regard to draw an adverse inference from Respondent's failure to reply and detail any rights or interests it might have had. The Panel therefore finds that the Respondent failed to establish a right or legitimate interest under paragraph 4 (c) of ICANN Policy.

Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith. The Complainant submits many arguments in an attempt to show the bad faith of the Respondent, the Panel does not entirely agree with the Complainant that all of those arguments support a conclusion of bad faith.

First of all the Complainant argues that the use of a hyphen by the Respondent was a device to obtain the Domain Name. On that issue the Panel is not of the opinion that this constitutes in it self bad faith.

The Complainant further argues that the absence of all of the information in the application with the Registrar suggests a desire on the part of Respondent to cover up its identity. Even if the application was not properly filled, the Panel cannot, in regard of the evidence submitted, find that it constitutes bad faith.

In addition the Complainant asserts that the Respondent registered the Domain Name in order to prevent the Complainant form reflecting the mark in a corresponding Domain Name. With all due respect the Panel does not agree with this argument.

The Complainant finally states that the Respondent is offering to sell the Domain Name for valuable consideration in excess of the out-of-pocket costs directly related to the Domain Name. Considering that there is no proof at all that might suggest that the Respondent had or has the intent of using the Domain Name himself as part of a business operating under the trade name "cheesecake-factory", that the said Domain Name is up for sale on the <GreatDomains.com> web page and that the Respondent should have known that the Domain Name was likely to be confused with the trademark of the Complainant, the Panel is of the opinion that the only inference that can be drawn from the above is that the Respondent's actions amounted to bad faith with respect to paragraph 4(b)(i) of the ICANN Policy.

For the foregoing reasons, the Panel decides:

- that the Domain Name registered by the Respondent is confusingly similar to the trademark "THE CHEESECAKE FACTORY" in which the Complainant holds rights;

- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

- the Domain Name has been registered and is being used by the Respondent in bad faith.

Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel requires that the registration of the domain name <cheesecake-factory.com> be transferred to the "The Cheesecake Factory Incorporated" and "The Cheesecake Factory Assets Co." or to one of them at their option, and so directs Network Solutions, Inc., to do so forthwith.

Hugues G. Richard
Sole Panellist

Dated: June 29, 2001