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Generic Top Level Domain Name (gTLD) Decisions |
Vienna Beef, Ltd. v. Elias Papadeas
Claim
Number: FA0411000360718
Complainant is Vienna Beef, Ltd. (“Complainant”), represented
by Max Shaftal, of Patzik, Frank & Samotny Ltd., 150 South Wacker Drive, Suite 900, Chicago, IL 60606. Respondent is Elias Papadeas (“Respondent”),
1901 Donald Place, South Daytona, FL 32119.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bistrochili.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
2, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 3, 2004.
On
November 3, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <bistrochili.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has
verified that Respondent is
bound by the Go Daddy Software, 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
November 4, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
November 24, 2004 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@bistrochili.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 7, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed James A.
Carmody, Esq., 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bistrochili.com>
domain name is identical to Complainant’s BISTRO CHILI mark.
2. Respondent does not have any rights or
legitimate interests in the <bistrochili.com> domain name.
3. Respondent registered and used the <bistrochili.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, a
global manufacturer and distributor of a wide variety of foodstuffs, is the
owner of U.S. trademark Reg. No. 2,352,510
for BISTRO CHILI (registered on May
23, 2000). Complainant first used its BISTRO CHILI mark in connection with its
chili products
that are sold to consumers worldwide in 1998. Complainant has
used its mark extensively and continuously since that time. Complainant
has
expended substantial time, effort, and money in advertising, promoting and
marketing its products sold under its BISTRO CHILI
mark. As a result of
Complainant’s substantial use and extensive advertising and sales, it has
acquired valuable goodwill in the
BISTRO CHILI trademark. Complainant also
operates a website at the <bistrosoups.com> domain name.
Respondent
registered the <bistrochili.com> domain name on August 9, 2003.
Respondent has not used the disputed domain name for any purpose since
Respondent registered the
<bistrochili.com> domain name more than
one year ago. The disputed domain name resolves to a parking page created by
Respondent’s domain name registrar.
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.
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.
Complainant has
established that it has rights in the BISTRO CHILI mark through registration
with the United States Patent and Trademark
Office and through the use of its
mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently
distinctive and have acquired secondary
meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201
(WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration
of a mark is prima facie evidence of validity,
which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden
of refuting this assumption).
The domain name
registered by Respondent is identical to Complainant’s BISTRO CHILI trademark
because the domain name fully incorporates
the mark and merely removes a space
between the words in the mark and adds the top-level domain “.com” to the mark.
See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb.
Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER
RE, “as spaces are impermissible
in domain names and a generic top-level domain
such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kijong, AF-0302
(eResolution Sept. 25, 2000) (finding
that the domain name <croatiaairlines.com> is identical to Complainant's
CROATIA AIRLINES trademark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant is
able to establish a prima facie case by showing that Respondent does not
qualify for the three “safe harbors” provided
under Policy ¶¶
4(c)(i)-(iii). Such a showing shifts
Complainant’s burden to Respondent, who must come forward with evidence
rebutting Complainant’s allegations
in order to prevail on this element. In this case, Complainant has made a prima
facie showing that Respondent does not have any rights or legitimate interests
in the <bistrochili.com> domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO May 14, 2001) (stating that “[p]roving that the
Respondent has no rights or legitimate interests in respect of
the [d]omain
[n]ame requires the Complainant to prove a negative. For the purposes of this
sub paragraph, however, it is sufficient
for the Complainant to show a prima
facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those
circumstances, the common approach is for [R]espondents to
seek to bring themselves within one of the examples of paragraph 4(c)
or put
forward some other reason why they can fairly be said to have a relevant right
or legitimate interests in respect of the domain
name in question”); see
also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate
interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”).
Since
Complainant has made a prima facie showing that Respondent does not have any
rights or legitimate interests in the <bistrochili.com> domain
name, the burden is shifted to Respondent to demonstrate that it has rights or
legitimate interests in the disputed domain
name. In this proceeding, Respondent has not submitted a Response. Thus, Respondent has failed to present any circumstances
under which it could substantiate rights or legitimate interests in the <bistrochili.com>
domain name. Furthermore, because
Respondent has failed to submit a Response in this proceeding, the Panel may
accept as true all reasonable allegations
submitted by Complainant in the
Complaint. See Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because Respondent
never submitted a response or
provided the Panel with evidence to suggest otherwise); see also Bayerische
Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002)
(finding that in the absence of a Response the Panel is free to make inferences
from
the very failure to respond and assign greater weight to certain
circumstances than it might otherwise do).
Respondent has
made no use of the <bistrochili.com> domain name; as such, it
cannot be said to be making a bona fide offering of goods or services, nor can
it be said to be making a
legitimate noncommercial or fair use of the domain
name. In these circumstances, Policy ¶¶ 4(c)(i) and (iii) are inapplicable to
Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci,
D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain
name is not sufficient to establish rights or legitimate
interests for purposes
of paragraph 4(a)(ii) of the Policy”); see also Pharmacia & Upjohn AB v.
Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate
interests where Respondent failed to submit a Response to the Complaint
and had
made no use of the domain name in question).
Furthermore, no
evidence in the record suggests that Respondent is commonly known by the <bistrochili.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant;
(2)
Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the
domain name in
question).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has not used the <bistrochili.com> domain name since its
registration over a year ago. Notwithstanding the possibility that Respondent
initially registered the domain
name in good faith, such passive holding
equates to bad faith use and registration under Policy ¶ 4(a)(iii). See Phat Fashions v. Kruger, FA 96193
(Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(a)(iii)
even though Respondent has not used the domain
name because “It makes no sense
whatever to wait until it actually ‘uses’ the name, when inevitably, when there
is such use, it will
create the confusion described in the Policy”); see
also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260
(WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain
name in question and there are no
other indications that Respondent could have
registered and used the domain name in question for any non-infringing
purpose).
Furthermore,
Respondent’s registration of the disputed domain name, a domain name that incorporates
Complainant’s well-known mark
in its entirety, suggests that Respondent knew of
Complainant’s rights in the BISTRO CHILI mark. Additionally, Complainant’s
trademark
registration on file at the United States Patent and Trademark Office
gave Respondent constructive notice of Complainant’s mark.
Therefore, the Panel
finds that Respondent likely chose the <bistrochili.com> domain
name based on the distinctive and well-known qualities of Complainant’s mark,
which evidences bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly
known mark at the time
of registration); see also Orange Glo Int’l v. Jeff Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status
that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”).
Accordingly,
the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bistrochili.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
December 20, 2004
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