Valaskantjis Family Trust v. Katz Global Domain Name Trust
Claim Number: FA1101001366191
Complainant is Valaskantjis Family Trust (“Complainant”), represented by Amanda V. Dwight of Dwight Law Group, California, USA. Respondent is Katz Global Domain Name Trust (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com>, registered with WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC.
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 January 5, 2011; the National Arbitration Forum received payment on January 5, 2011.
On January 6, 2011, WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC confirmed by e-mail to the National Arbitration Forum that the <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names are registered with WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC and that Respondent is the current registrant of the names. WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC has verified that Respondent is bound by the WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tomsfamousfamilyrestaurants.com and postmaster@tomsfamousfamilyrestaurants-review.com. Also on January 11, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 3, 2011, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names are confusingly similar to Complainant’s TOM’S FAMOUS FAMILY RESTAURANTS mark.
2. Respondent does not have any rights or legitimate interests in the <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names.
3. Respondent registered and used the <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Valaskantjis Family Trust, registered the TOM’S FAMOUS FAMILY RESTAURANTS with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,717,608 issued May 20, 2003). Complainant uses its mark in connection with restaurant services.
Respondent, Katz Global Domain Name Trust, registered the <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names no earlier than September 5, 2010. The <tomsfamousfamilyrestaurants.com> domain name formerly resolved to, and the <tomsfamousfamilyrestaurants-review.com> domain name currently resolves to, a website that featured Complainant’s mark and images and contained complaints about Complainant’s business practices. The <tomsfamousfamilyrestaurants.com> domain name currently resolves to an inactive website.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 holds a trademark registration with the USPTO for its TOM’S FAMOUS FAMILY RESTAURANTS (Reg. No. 2,717,608 issued May 20, 2003). The Panel finds that Complainant’s trademark registration is sufficient to establish rights in the mark under Policy ¶ 4(a)(i), even though Respondent resides in a country different than the country Complainant registered the mark in. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names are confusingly similar to Complainant’s TOM’S FAMOUS FAMILY RESTAURANTS mark. The <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names incorporates Complainant’s entire mark, except for the spaces separating the terms of the mark and the apostrophe, and add the generic top-level domain (“gTLD”) “.com.” The <tomsfamousfamilyrestaurants-review.com> domain name also adds a hyphen and the generic term “review.” The Panel finds such alterations fail to sufficiently distinguish the disputed domain names from Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). While Complainant’s mark is a stylized mark that incorporates a design element, design elements are ignored while conducting a Policy ¶ 4(a)(i) analysis. See Roux Labs., Inc. v. Sheldeez Beauty Salon, D2005-0799 (WIPO Sept. 30, 2005) (“The fact that Complainant’s stylized mark incorporates a distinctive design element is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”); see also Saba's Stores Inc. v. Web Dev. Group Ltd., FA 997451 (Nat. Arb. Forum Aug. 2, 2007) (Panelist David E. Sorkin dissenting) (“Since the stylization of Complainant’s mark cannot be duplicated in a domain name, the Panel concludes that the only deviation from that mark and the disputed domain name is the deletion of the apostrophe and the addition of the gTLD, “.com.” These differences do not prevent the disputed domain name from being confusingly similar to Complainant’s valid trademark.”). Therefore, the Panel determines that the <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names are confusingly similar to Complainant’s TOM’S FAMOUS FAMILY RESTAURANTS mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant contends that Respondent is not commonly known by the <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names. The WHOIS information identifies the registrant of the disputed domain names as “Katz Global Domain Name Trust,” which is not similar to the disputed domain names. Complainant asserts that Respondent was not authorized to use its TOM’S FAMOUS FAMILY RESTAURANTS mark. The Panel fails to find any evidence in the record that would support a finding that Respondent is commonly known by the disputed domain names. Thus, the Panel concludes that Respondent is not commonly known by the <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant alleges that Respondent’s <tomsfamousfamilyrestaurants.com> domain name formerly resolved, and Respondent’s <tomsfamousfamilyrestaurants-review.com> domain name currently resolves, to a website containing Complainant’s mark and images and featuring derogatory content relating to Complainant and Complainant’s restaurant business. The Panel finds that such a use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark).
Complainant contends that Respondent currently fails to make an active use of the <tomsfamousfamilyrestaurants.com> domain name. Therefore, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
Complainant argues that it formerly owned the <tomsfamousfamilyrestaurants.com> domain name and inadvertently allowed the domain name registration to lapse in September 2010. The Panel finds that Respondent’s opportunistic registration of the disputed domain name fails to establish rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name); see also Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002) (finding that the respondent could not rely on equitable doctrines under the Policy to defend its registration of the disputed domain name after the registration was inadvertently permitted to lapse by the complainant, noting that “Respondent was aware of the Complainant’s well-known business and its mark and intended to exploit the mark”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive, and thus the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant argues that Respondent formerly used the <tomsfamousfamilyrestaurants.com> domain name, and currently uses the <tomsfamousfamilyrestaurants-review.com> domain name, to resolve to a website that featured Complainant’s mark and images. This website also contained derogatory content about Complainant and Complainant’s restaurant business. The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith); see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website).
Complainant claims that Respondent’s <tomsfamousfamilyrestaurants.com> domain name does not currently resolve to an active website. The Panel holds that the failure to make an active use of a disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Complainant asserts that it formerly owned the <tomsfamousfamilyrestaurants.com> domain name and inadvertently allowed the domain name registration to lapse. The Panel determines Respondent’s attempt to take advantage of Complainant’s mistake is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that the respondent’s registration of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith).
The Panel finds 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 <tomsfamousfamilyrestaurants.com> and <tomsfamousfamilyrestaurants-review.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 4, 2011
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