WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sbarro Franchise Co., LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Martketplace*** c/o Dynadot Case No. D2018-1713 1. The Parties

Complainant is Sbarro Franchise Co., LLC of Columbus, Ohio, United States of America (“United States”), represented by Gottlieb, Rackman & Reisman, PC, United States.

Respondent is Expired domain caught by auction winner.***Maybe for sale on Dynadot Martketplace*** c/o Dynadot of San Mateo, California, United States. 2. The Domain Name and Registrar

The disputed domain name (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2018. On July 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 31, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2018.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on September 10, 2018. 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 is a subsidiary of Sbarro LLC (both subsequently referred to as “Complainant”), the owner and operator of fast food pizzerias and Italian-style restaurants. The first Sbarro restaurant was established in Brooklyn, New York in 1959. Today, Sbarro owns, operates, licenses, and oversees more than 623 company-owned and franchised restaurants around the world, including 329 locations in the United States.

The commercial strength of Sbarro’s brand is reflected in its worldwide sales: in 2017, Sbarro had global sales in excess of USD 340 million. In addition, Sbarro has invested millions of dollars in advertising and promoting its brand. Sbarro supports its franchisors’ advertising efforts both domestically and internationally. Sbarro operates an interactive website accessible at the domain name , and has thousands of followers on Twitter and Instagram, as well as over 300,000 “likes” on Facebook. Every Sbarro location (regardless of whether company-owned or licensed) operates under a mark incorporating the SBARRO trademark. Sbarro has used the SBARRO trademark in connection with restaurant services since 1965. Complainant owns 13 valid trademark registrations in the United States incorporating the SBARRO mark, dating from 1974 (United States Trademark No. 0985647 SBARRO, registered on June 4, 1974).

Complainant also owns United States trademark application No. 87/884,566 for SBARRO NEW YORK PIZZA in International Class 43 for “restaurant services”. This trademark application was filed by Complainant on April 19, 2018. Four days later, on April 23, 2018, Respondent registered the Domain Name. The Domain Name resolves to a website indicating that it may be for sale through “DomainAgents”, a domain name brokerage and negotiation platform. According to the webpage, the Domain Name is available for purchase and the webpage provides instructions on how to open a negotiation by submitting an offer.

Complainant has not authorized Respondent to use the SBARRO trademark for any purpose, including in connection with the Domain Name.

Complainant has been involved in prior UDRP proceedings. In Sbarro Franchise Co., LLC v. Domain Admin Domain Admin, whoisprotection biz / Burc Caglayan,WIPO Case No. D2016-1837, the UDRP panel awarded transfer of the domain name to Complainant. 5. Parties’ Contentions A. Complainant

Complainant contends that consideration of the three key elements under the Policy leads inexorably to the conclusion that Respondent registered the Domain Name in bad faith and in violation of Complainant’s exclusive rights in the SBARRO trademark. Accordingly, Complainant states it is entitled to the transfer of the Domain Name.

(i) Identical or confusingly similar

Complainant states that the Domain Name consists of two elements – the SBARRO trademark and the words “newyorkpizza”. Complainant contends that the Domain Name’s inclusion of the SBARRO mark – which by virtue of Sbarro’s decades-long use of the mark, substantial advertising and promotion, and enormous sales is indisputably strong, distinctive, and uniquely associated with Complainant – results in confusing similarity.

Complainant explains that it has a pending application for the mark SBARRO NEW YORK PIZZA, which was filed prior to Respondent registering the Domain Name. Sbarro has been using the SBARRO NEW YORK PIZZA mark in commerce in the United States since as early as March 2017. Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. Not only does Complainant have a registered trademark for SBARRO, but Complainant has developed extensive common law trademark rights with the SBARRO and SBARRO NEW YORK PIZZA marks in connection with restaurant services prior to Respondent’s registration of the Domain Name. Sbarro has been making and selling New York style pizza for over 50 years. Thus, there is no doubt that consumers identify Sbarro’s pizza with New York.

Moreover, simply employing a geographic term like “New York” or an ordinary descriptive term like “pizza” in tandem with a mark does not guard against a finding of confusing similarity. The descriptive term “pizza” relates to Sbarro’s business-namely, the goods sold under the SBARRO brand-and underscores the Domain Name’s confusing similarity.

In sum, the Domain Name amounts to nothing more than a conjoining of Complainant’s famous trademark, a geographic term, and a generic term that describes Sbarro’s goods. As such, the Domain Name is confusingly similar to the SBARRO and SBARRO NEW YORK PIZZA trademarks, and Complainant indisputably satisfies the first pron