RARE Hospitality Management Inc. v.
Cambridge
Claim Number: FA0204000112431
Complainant
is RARE Hospitality Management Inc.,
Atlanta, GA (“Complainant”) represented by David
M. Maxwell, of Alston & Bird
L.L.P. Respondent is Cambridge, Miami, FL (“Respondent”).
The
domain name at issue is <rare.biz>,
registered with IHoldings.com, Inc.
d/b/a DotRegistrar.com.
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. Crary as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on April 27, 2002.
On
May 10, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 30,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the
Start-up Trademark Opposition Policy (the “STOP Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On June 27, 2002
pursuant to STOP Rule 6(b), the Forum appointed James A. Crary as the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<rare.biz> domain name is identical to Complainant’s RARE mark.
Respondent
has no rights or legitimate interests in the <rare.biz> domain
name.
Respondent
registered the <rare.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
Complainant owns and operates
approximately 199 restaurants in over twenty-five states. Complainant has used the RARE service mark
in association with its restaurants and services since at least September, 11
1996. Complainant exclusively uses the
RARE mark for restaurant services.
Respondent registered the <rare.biz>
domain name on March 27, 2002.
Complainant has been unable to uncover any evidence of preparations by
Respondent to use the domain name.
Complainant’s investigation revealed Respondent’s true identity as being
DomainCollection.com, which is a company in the business of selling domain
names. Complainant found that typing a
search at <domaincollection.com> for the <rare.biz> domain
name leads to an order form that would provide a price quote for <rare.biz>. Also, on the WHOIS registration form
Respondent stated “This Domain Name Is For Sale.”
Paragraph 15(a) of the STOP 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 the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
In
the current matter, there are no further IP Claims for the Panel to consider.
Complainant
has established common law rights in the RARE service mark through substantial
continuous use of the mark in the restaurant industry. See Crazy Creek Prods., Inc. v.
Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002) (finding
that the Complainant satisfied STOP Policy ¶ 4(a)(i) by demonstrating its
common law rights in the CRAZY CREEK mark); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000)
(finding that the Complainant has common law rights in the mark FISHTECH which
it has used since 1982).
Respondent’s
<rare.biz> domain name contains Complainant’s RARE mark in its
entirety. But for the inconsequential
addition of “.biz,” Respondent’s domain name is identical to Complainant’s
mark.
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
In light of Complainant’s assertion that
Respondent has no rights or legitimate interests in the disputed domain name
and Respondent’s failure to respond, the Panel may presume Respondent has no
such rights or interests in the disputed domain name. See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names). Furthermore, when Respondent fails to submit
a Response, the Panel is permitted to make all inferences in favor of
Complainant. See Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
There is no evidence on the record and
Respondent has not come forward to offer any evidence that it holds rights in a
mark identical to <rare.biz>.
Therefore, Respondent has no rights or legitimate interests in the <rare.biz>
domain name pursuant to STOP Policy ¶ 4(c)(i).
See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites,
FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did
not come forward with a Response, the Panel could infer that it had no
trademark or service marks identical to <grammy.biz> and therefore had no
rights or legitimate interests in the domain name).
Complainant asserts that Respondent is
not Cambridge but actually DomainCollection.com. In the absence of a contrary claim, the Panel will accept this
assertion as true. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”). The
administrative contact address on the WHOIS registration form states “This
Domain Name Is For Sale.” It can be
inferred that Respondent registered the domain name principally for the purpose
of selling it to Complainant.
Therefore, Respondent has no rights or legitimate interests in the
domain name pursuant to STOP Policy ¶ 4(c)(ii). See Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where the Respondent
registered the domain name with the intention of selling the domain name); see
also Cruzeiro Licenciamentos Ltda v.
Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate
interests do not exist when one holds a domain name primarily for the purpose
of marketing it to the owner of a corresponding trademark); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell domain name suggests it has no legitimate use).
The evidence shows that Respondent
registered the domain name under the name Cambridge but is actually
DomainCollection.com; there is no evidence and Respondent has not offered any
evidence that it is known as RARE or <rare.biz>. Therefore, Respondent has not met the
requirements of STOP Policy ¶ 4(c)(iii).
See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in domain name when Respondent is not known by
the mark); see also Broadcom Corp.
v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Upon registering the <rare.biz>
domain name, Respondent was aware that Complainant held rights in the RARE mark
due to the STOP “IP Claim” notification procedure. Registration of a domain name containing a mark of another with
knowledge of the other’s rights constitutes bad faith pursuant to STOP Policy ¶
4(a)(iii). See Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was
on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed
domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed
domain name despite this notice when Respondent had no right or legitimate
interest in the domain name is evidence of bad faith”).
Respondent provided, as it’s
administrative address, “This Domain Name Is For Sale” when it registered the disputed
domain name. This shows intent to sell
the disputed domain name to Complainant.
Hence, Respondent’s registration of <rare.biz> constitutes
bad faith pursuant to STOP Policy ¶ 4(b)(i).
See Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat.
Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name,
even if no certain price is demanded, are evidence of bad faith”); see also
Parfums
Christain Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS
registration information contained the words, “This is domain name is for
sale”).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements
required under the STOP Policy, the Panel concludes that relief shall be hereby
GRANTED.
Accordingly, it is Ordered that the <rare.biz>
domain name be TRANSFERRED from Respondent to Complainant. Furthermore, subsequent challenges under the
STOP Policy against this domain name SHALL NOT be permitted because
there are no further IP Claims.
James A. Crary, Panelist
Dated: July 5, 2002
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