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Generic Top Level Domain Name (gTLD) Decisions |
The Dinex Group, LLC and Daniel Boulud v.
Undici Design
Claim Number: FA0401000231668
PARTIES
Complainant
is The Dinex Group, LLC and Daniel Boulud, New York, NY
(collectively, “Complainant”) represented by Alexandre A. Montagu P.C., 1060
Park Avenue, Apt. 10C, New York, NY 10128.
Respondent is Undici Design,
99 Bank Street, #5A, New York, NY 10014 (“Respondent”) represented by Mark Deutsch.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <danielboulud.com>,
registered with Bulkregister, Llc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Clive
Elliott as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 24, 2004; the Forum received
a hard copy of the
Complaint on January 30, 2004.
On
January 28, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the
domain name <danielboulud.com>
is registered with Bulkregister, Llc. and that the Respondent is the current
registrant of the name. Bulkregister,
Llc. has verified that Respondent is bound by the Bulkregister, Llc.
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
February 3, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 23, 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@danielboulud.com by
e-mail.
A
timely Response was received and determined to be complete on February 23, 2004.
On March 15, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Clive Elliott
as Panelist.
RELIEF SOUGHT
Complainant
request that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant runs and asserts it is known for
internationally renowned restaurants and food related services. Daniel Boulud is also a a world-renowned
chef who is the proprietor of the Daniel and Café Boulud restaurants and has
authored seven
books. The Dinex Group
asserts it has invested substantial sums of money in developing and marketing
its restaurant services and marks. Evidence
of repute was provided and is not
contested.
Complainant asserts rights in the CAFÉ BOULUD mark
as a result of its registration of the mark with the United States Patent and
Trademark
Office on July 8, 2003 (Reg. No. 2734459). The registration was filed on August 12, 2002 (Ser. No.
76/441821). It also relies on continuous
use in connection with its restaurant, bar and café services since 1998.
Complainant also asserts rights in the D DANIEL and
DANIEL BOULUD CONNOISSEUR marks as a result of registration applications filed,
respectively, on July 31, 2003 (Ser. No. 78/281308) and July 29, 2003
(78/280413). The former mark has been
used since 1998 in connection with Complainant’s restaurant services while the
latter has been used since
1997 to identify food products, mainly caviar and
smoked salmon.
Complainant states that Respondent has no relationship with Complainant or
permission for the use of its name or mark.
Complainant
states Respondent has held the contested domain name for at least one year
without creating a website, therefore Respondent
submits it is merely passively
holding the domain name and has not sufficiently demonstrated its preparations
to use the name.
Complainant
further asserts that Respondent registered and used the disputed domain name in
bad faith by attempting to piggy-back
on the goodwill and brand recognition
associated with Complainant’s famous mark and any use of the name would merely
confuse consumers.
B.
Respondent
The
Respondent develops websites. It alleges that the disputed domain name was
registered for the purpose of hosting an open forum that relates to
Complainant’s restaurants.
Respondent
argues that Complainant has not established rights in the DANIEL BOULUD mark
because the mark is not registered with any
government agency and mere
trademark applications are insufficient to establish rights in the mark.
Respondent
concedes that some similarity exists between the domain name and Complainant’s
marks, but states the disputed domain name
still fails to reach the requisite
level of confusing similarity.
Respondent
claims the filing dates for Complainant’s marks, except the CAFÉ BOULUD mark,
postdate the registration of the disputed
domain name.
Respondent
contends that Complainant had equal opportunity to purchase the disputed domain
name registration, but neglected to do
so and instead chose to register the
<danielnyc.com> domain name.
Respondent
notes that one-year is a short period of time for an entity run by one person
to conceptualize, create content, design
and program a web site.
FINDINGS
Having reviewed
all of the papers and submissions, the Panel finds that:
(1) the domain name registered by the
Respondent is identical to and confusingly similar to a trademark in which the
Complainant has rights;
(2) the 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.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the Complaint is made out and that
the < danielboulud.com > domain name should be transferred from Respondent to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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.
Identical or Confusingly
Similar: Policy ¶ 4(a)(i).
Complainant alleges rights in the CAFÉ BOULUD mark
as a result of its registration of the mark with the United States Patent and
Trademark
Office on July 8, 2003 (Reg. No. 2734459). The registration was filed on August 12, 2002 (Ser. No.
76/441821) and continuously used in connection with its restaurant, bar and
café services since 1998. See
Janus
Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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).
Complainant also alleges rights in the D DANIEL and
DANIEL BOULUD CONNOISSEUR marks as a result of registration applications filed,
respectively, on July 31, 2003 (Ser. No. 78/281308) and July 29, 2003
(78/280413). The former mark has been
used since 1998 in connection with Complainant’s restaurant services while the
latter has been used since
1997 to identify food products, mainly caviar and
smoked salmon. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that Complainant's trademark or service
mark be registered
by a government authority or agency for such rights to
exist. Rights in the mark can be
established by pending trademark applications).
Complainant claims and relies on long standing use
and reputation. The Panel may find that the mark DANIEL BOULUD has acquired
secondary
meaning as a result of continuous and extensive use in the United
States and worldwide, effectively confering rights to Complainant
in the mark. See
Tuxedos
By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary
meaning was
established).
The
Respondent does not dispute Complainant’s use of and identification with the
disputed domain name and indeed seeks to utilize
its repute, supposedly to
further its own interests (see comments below). It is clear that Complainant
‘has rights’ under the Policy.
Given the lack of connection in fact between the Complainant
and Respondent, the domain name is likely to confuse and is thus confusingly
similar to a trademark in which the Complainant has rights and is one falling
within the contemplation of the Policy
¶ 4(a)(i).
It is found that the domain name
registered by Respondent is identical to and confusingly similar to a trademark
in which the Complainant
has rights. The
ground is thus made out.
Rights and Legitimate
Interests: Policy ¶ 4(a)(ii).
Complainant
states, “Respondent has held the Infringing Domain for at least one year
without creating a website.” Complaint at 7.
Therefore, the Panel may find that
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)
because Respondent is merely passively holding
the domain name and has not sufficiently demonstrated its preparations to use
the
name. See Melbourne IT Ltd. v.
Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate
interests in the domain name where there is no proof that Respondent
made
preparations to use the domain name in connection with a bona fide offering of
goods and services before notice of the domain
name dispute, the domain name
did not resolve to a website, and Respondent is not commonly known by the domain
name).
Complainant
further states, “Respondent is not known by the Infringing Domain and has no
relationship with or permission from Complainant
for the use of his name or
mark.” Complaint at 7. Therefore, the
Panel may find that Respondent is not commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly
known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply applied for a license or permission from
Complainant to use the trademarked name); see
also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000)
(finding that Respondent lacked rights and legitimate interests in the domain
name because Respondent
was not authorized by Complainant to use its trademarks
and the mark was distinct in its nature, such that one would not legitimately
choose it unless seeking to create an impression of an association with
Complainant).
Respondent’s
position is that it is not in competition in any way with Complainant and
asserts it simply wished to
create a “blog” to post reviews of DANIEL BOULUD restaurants. However, this
argument sits uneasily with the evidence that Complainant has long traded under
the mark and is known by and claims
rights in the DANIEL BOULUD trademark and name.
On this basis,
it is found that the Respondent has no rights or legitimate interests in the
domain name. The ground is thus made out.
Registration
and Use in Bad Faith: Policy ¶ 4(a)(iii).
In
response to Complainant’s charge of passive holding, Respondent notes that the
law is silent in regard to any time frame in which
a domain name registrant is
required to create a website at the domain name. Likewise, Respondent notes
that “one year is a short
period of time to [sic] for one person to conceptualize,
create content, design and program a web site.” Response at 4. See Sports Authority Mich., Inc. v. Jablome, FA 124861
(Nat. Arb. Forum Nov. 4, 2002) (noting
that holding a domain name for less than a year is normally insufficient to
find passive holding).
This
is not an area where a “tariff” type approach is appropriate. Each case depends
on its facts. Here, there is no evidence to support
Respondent’s asserted wish
to set up a “blog” or like activity. Complainant has done enough to meet its
burden and Respondent has
done little to rebut it. Indeed, with the widespread
use of relatively simple modern web site development tools it is hard to
believe
that at least some steps could not have been taken to at least initiate
the project within a year.
Complainant
further asserts that Respondent registered and used the disputed domain name in
bad faith by attempting to piggy-back
on the goodwill and brand recognition
associated with Complainant’s famous mark and any use of the name would merely
confuse consumers. See Phat Fashions v.
Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) even though Respondent has not used the domain
name because
“[i]t 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”).
In
addition, Complainant points to Respondent’s own statement that Respondent
intended to create a “blog” to post reviews of DANIEL
BOULUD restaurants in
order to establish that Respondent had actual knowledge of Complainant’s rights
in the DANIEL BOULUD mark. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when
Respondent reasonably should have
been aware of Complainant’s trademarks,
actually or constructively.”). Actual knowledge of the Complainant’s rights or
claim to such rights exists, by Respondent’s own admission, having previously
eaten
in one of Daniel Boulud’s restuarants.
The Panel may also find that Respondent registered
and used the disputed domain name in bad faith because any use of the disputed
domain name <danielboulud.com> would lead people to believe that
the website was somehow associated with Complainant. See Harrods Ltd. v. Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001)
(finding that where a mark is so obviously connected with well-known products,
its very use by someone
with no connection to these products can evidence
opportunistic bad faith). Here, there is an obvious connection with the
Complainant
and no satisfactory rebuttal of the Complainant’s assertion that a
mistaken association is the likely outcome.
The ground is thus also made out.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <danielboulud.com>
domain name be TRANSFERRED from Respondent to Complainant.
Clive L Elliott, Panelist
Dated: March 24, 2004
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