The Cheesecake Factory Incorp. v. cheesecake-factory.com; cheesecake-factory3-DOM

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

The Cheesecake

Factory Incorporated and The Cheesecake Factory Assets Co., LLC v. cheesecake-factory.com

Case No.

D2001-0648

1. The Parties

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.

2. The Domain Name and

Registrar

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).

3. Procedural History

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.

4. Factual Background

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.

5. Parties’ Contentions

A. Complainant

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.

B. Respondent

The Respondent failed to

file a response with the Center within the specified time period and has failed

to file a response since.

6. Discussion and Findings

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.

Identical or Confusingly

Similar to Trademark

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.

No Rights or Interest

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.

Bad Faith

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.

7. Decision

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