Chef2Chef, LLC v RealTimeInternet.com,
Inc.
Claim Number: FA0212000137710
PARTIES
Complainant
is Chef 2 Chef, LLC, Englewood, CO
(“Complainant”) represented by Fred
Roosli, of Chef 2 Chef, LLC. Respondent is RealTimeInternet.com, Inc., Fort Wayne, IN (“Respondent”)
represented by Ari Goldberger, of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <cheftochef.com>,
registered with BulkRegister.com, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 23, 2002; the Forum received a hard copy of the
Complaint on December 27, 2002.
On
December 24, 2002, BulkRegister.com,
Inc. confirmed by e-mail to the Forum that the domain name <cheftochef.com> is registered
with BulkRegister.com, Inc. and
that Respondent is the current registrant of the name. BulkRegister.com, Inc. verified that Respondent is bound by the BulkRegister.com, 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
January 2, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of January 22,
2003, 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@cheftochef.com
by e-mail.
The Forum received no Response by the
Response Due Date. On January 27, 2003, the Forum received a timely Additional
Submission from Respondent. Respondent had twenty days from the Commencement
Date to file a timely Response; the Additional Submission was received within
the time period allotted for Additional Submissions, in accordance with Forum
Supplemental Rule 7. The Arbitrator has considered the Additional Response. See
BPI Communications, Inc. et al v. Boogie TV LLC, FA 105755 (Nat. Arb.
Forum, Apr. 30, 2002) (finding that Additional statement filed after response
deadline “considered the substantive Response in th[e] proceeding.”).
On
January 31, 2003, Complainant filed a timely Additional Submission.
On February 12, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the follow allegations
in the case:
1. The domain name registered by Respondent
is identical to or confusingly similar to a mark belonging to Complainant.
2. Respondent has no rights to or legitimate
interests in the mark included in the disputed domain name.
3. Respondent registered and used the
disputed domain name in bad faith.
B. Respondent makes the following
allegations in its Additional Submission:
1. That although Respondent did not file a
timely Response, the Panel should
consider Respondent’s timely filed
Additional Submission.
2. That the domain name registered by
Respondent is not identical to or confusingly similar to Complainant’s mark
because Complainant’s Chef2Chef mark is generic and has substantial secondary
meaning and widespread use by many in the culinary arts community.
3. That Respondent has rights in the domain
name; and
4. That Respondent did not register and use
the domain name in bad faith.
C. Complainant’s Additional Response makes
the following allegations in reply:
1. Contrary to Respondent’s contention,
Complainant urges that Complainant had common law rights in chef2chef, a
distinctive mark that Complainant used, sought patent rights for, spent
substantial funds to develop beginning in 1999; and to which Complainant
ultimately received legal rights in the mark from the United States Patent and
Trademark Office.
2. Respondent registered the disputed domain
name in 2001, two years after Complainant’s use and rights began.
3. Complainant’s mark was famous and
distinctive before Respondent filed the disputed domain name.
4. Respondent has not been active in the culinary arts community for
fifteen years; and
5. Respondent’s sole reason for registering and holding the domain
name would be to lure unsuspecting Internet users seeking the services of
Complainant in Complainant’s area of commerce.
FINDINGS
Complainant is Chef2Chef, LLC, which operates as a
limited liability company.
Complainant’s mark, Chef2Chef, is confusingly similar to the domain name
registered by Respondent, cheftoChef, because spelling “2” as “to” does not
affect a claim of confusing similarity.
Complainant offered proof that it registered the
Chef2Chef mark with the United States Patent and Trademark Office, holding
registration number 2,659,411.
Complainant established that Respondent has been
refused a trademark for cheftochef due to its confusing similarity with
Complaint’s mark. Complainant’s
registration includes the right to use “words, letters and/or numbers.”
Not only did Respondent fail to acquire a license to
use Complainant’s mark, Respondent is known to the Panel only as
RealTimeInternet.com, Inc. Respondent brought forth no evidence that it has
ever been known as Chef2Chef or ChefToChef.
Complainant alleges that Respondent registered the
domain name to attract for commercial gain, Internet users to its website, by
creating the likelihood of confusion with Complainant’s mark as the source,
sponsorship, affiliation or endorsement of Respondent’s website. Further Complainant urges that Respondent
acted to prevent Complainant from being able to reflect its mark in an Internet
offering, both of which constitute bad faith.
On April 2, 2002, Complainant wrote a formal Cease
and Desist Request for cheftochef.com, setting out that Respondent was
infringing on Complainant’s trademark rights.
Respondent avers that it registered the disputed
domain name as an informational website and concedes that it has not yet
developed the site but merely posts general advertisements on it.
Respondent urges that “chef to chef” is a common
term with substantial third party use that is not associated with Complainant.
Respondent maintains that more than 600 third-party web pages contain the term
Chef to Chef.
Respondent denied acting under any of the grounds
cited by Complainant as an example of bad faith and notes that its registration
of the domain name on November 13, 2001, preceded the date Complainant obtained
its trademark. Respondent cites to a line of cases that hold that Complainant’s
trademark rights must precede the date that Respondent files the domain name in
order to prevail.
In its Additional Response, Complainant notes that
its common law rights in the mark began at least by October of 1999 and that
Complainant registered the domain name chef2chef.com with Network Solutions
December 8, 1999, nearly two years before Respondent registered the
cheftochef.com domain name. Complainant’s trademark application was filed in
September 2000, more than one year before Respondent registered the
cheftochef.com domain name.
Complainant cites to a line of cases recognizing
protection for common law rights in a mark from a subsequently filed domain
name.
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 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;
(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.
Identical to and/or Confusingly Similar
Complainant
urges that use of the CHEF2CHEF mark in commerce since 1999 and trademark
registration for the mark show Complainant’s rights in the mark. 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 governmental authority or agency
for such rights to exist. Rights in the
mark can be established by pending trademark applications); see also British
Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant
argues that the <cheftochef.com> domain name registered by
Respondent is confusingly similar to its CHEF2CHEF mark. See Hewlett-Packard Co. v. Cupcake City, FA
93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name, which is
phonetically identical to Complainant’s mark, satisfies ¶ 4(a)(i) of the
Policy); see also YAHOO! Inc. v.
Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name
<yawho.com> is confusingly similar to the Complainant’s YAHOO mark).
In
its Additional Submission Complainant maintains that it has rights in its
distinctive and famous mark by virtue of long and exclusive use in commerce. See
Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute
Resolution Policy does not require “that a trademark be registered by a
governmental authority for such rights to exist”); see also Smart Design LLC v. Hughes, D2000-0993
(WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant
to demonstrate ‘exclusive rights,’ but only that Complainant show a bona fide
basis for making the Complaint in the first place).
Respondent
argues in its Additional Submission that its registration of the disputed
domain name came over a year after Complainant registered its CHEF2CHEF mark
but that Complainant’s mark provides no enforceable rights under the UDRP. See
Amsec Ent. v. McCall, D2001-0083
(WIPO Apr. 3, 2001) (finding that Complainant’s pending trademark applications
do not establish any enforceable rights to the mark until a trademark
registration is issued); see also Ode
v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (stating that “We are of
the unanimous view that the trademark must predate the domain name”). In fact, Complainant obtained trademark
rights in the Chef2Chef mark and Respondent was denied such rights due to the
similarity of cheftochef to Complainant’s mark. Further, Complainant’s mark
includes the right to use “words, letters and/or numbers.”
Having found that
the domain name is confusingly similar to a mark in which Complainant has
rights, the Panel finds that ICANN Policy ¶ 4(a)(i) requiring a showing of
“confusing similarity” has been satisfied.
Rights to or Legitimate Interests
Complainant has
established that it has common law and legal rights to the Chef2Chef mark. Complainant urges that Respondent’s nominal
use of the infringing domain name does not create rights to or legitimate
interests in the domain name because the use that Respondent made of the domain
name in dispute is not a legitimate or bona fide use. See Vapor
Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a legitimate
use of the domain name); see also Big
Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding
no legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that
use of the domain name to direct users to other, unconnected websites does not
constitute a legitimate interest in the domain name).
Complainant maintains in its Additional
Submission that Respondent could have implemented its proposed culinary website
in the time that has passed since the domain name was registered but has chosen
not to develop the site. Passive
holding does not create rights to or legitimate interests in the domain name
absent some presentation by a Respondent that a plan is in place, that
preparations have been made to develop the site, and that some development of
the site have been made prior to notice of the dispute. See Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when
Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i)
requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to
use the domain name, and 2) that such preparations were undertaken ‘before any notice
to [Respondent] of the dispute’”); see also 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”). Respondent presented no demonstrable
evidence supporting any plan for the website.
Complainant argues that the term “chef to
chef” is not a common term but is a distinctive trademark, rebutting
Respondent’s allegation that the disputed domain name is generic, and available
on a first come, first served basis. Respondent argues that the generic nature of the
term “chef to chef” lessens Respondent’s burden of establishing rights and
legitimate interests in the disputed domain name. See Philippe Tenenhaus v. Telepathy, Inc.,
FA 94355 (Nat. Arb. Forum May 17, 2000) (finding that Respondent has rights and
legitimate interests where Complainant failed to show that he should be granted
exclusive use of the domain name, <daf.com>, as many other organizations
use the generic term "DAF" and that it was not available to him at
the time he commenced business utilizing the name); see also Tough Traveler, Ltd. v. Kelty Pack, Inc,
D2000-0783 (WIPO Sept. 28, 2000) (finding that Respondent had a legitimate
interest in the domain name, <kidcarrier.com>, as a generic term for a
class of products that Respondent sells).
Respondent further urges that
Respondent’s current use of the domain name also evidences rights and
legitimate interests. See First
Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001)
(finding that, absent bad faith, the operation of a portal website is a
legitimate interest). This case is distinguishable from those cases
refusing to protect generic terms. Here Complainant had common law rights
through use and a pending application with the United States Patent and
Trademark Office for trademark rights prior to Respondent’s registration. Complainant’s application was thereafter
granted. Respondent knew of those rights by the notice given by public filing
of the application and also by the fact that Respondent filed to protect the
mark cheftochef but was denied trademark rights based on the confusing
similarity with Complainant’s mark.
The Panel finds that
Complainant satisfied ICANN Policy ¶ 4(a)(ii)’s requirement of showing that
Respondent has “no rights or legitimate interests” in the disputed name.
Registration and Use in Bad Faith
Complainant argues that Respondent
registered and used Complainant’s mark in bad faith. Complainant first urges that Respondent is using Complainant’s
mark for commercial gain by posting advertisements on a website that is
confusingly similar to Complainant’s mark, and that such use does not
constitute a legitimate use but instead is evidence of bad faith use and
registration pursuant to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v.
Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where
the Respondent attracted users to advertisements); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat.
Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the
domain name to another website <iwin.com>, presumably, the Respondent
received a portion of the advertising revenue from site by directing Internet
traffic to the site, thus using a domain name to attract Internet users, for
commercial gain).
Respondent’s
Additional Submission argues that, due to the generic nature of the domain
name, Respondent could not have registered the domain name in bad faith. See
Lowestfare.com LLC v. US Tours &
Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith
where Respondent was using the descriptive domain name
<thelowestfare.com> to lead consumers to a source of lowest fares in good
faith); see also Loris Azzaro BV,
SARL v. Asterix & De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000)
(“Mere belief and indignation by Complainant that Respondents have registered
and are using the Domain Name in bad faith are insufficient to warrant the
making of such a finding in the absence of conclusive evidence”).
In
its Additional Submission, Complainant also alleged that Respondent has
exhibited a pattern of preventing trademark holders from reflecting their marks
on the Internet, which is evidence of bad faith use and registration pursuant
to Policy ¶ 4(b)(ii). See Armstrong
Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000)
(finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple
domain names, which infringe upon others’ famous and registered trademarks); see
also America Online, Inc. v.
iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad
faith pattern of conduct where Respondent registered many domain names
unrelated to its business which infringe on famous marks and websites).
Further,
Respondent had actual or constructive notice of Complainant’s prior use before
registering and passively holding the confusingly similar domain name, contrary
to the circumstances set out in those authorities that look to the date of
filing of the domain name in which the Complainants had made no prior use. Nat'l Radio Sales, Inc. v. Internet Domain
Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the
Respondent registered the domain prior to the Complainant’s use of the mark).
Complainant
had used the mark and applied for federal protection of its trademark rights
prior to the registration of the domain name by Respondent. see Collegetown
Relocation, LLC v. Concept Software & Tech. Inc., FA 96555 (Nat. Arb.
Forum Mar. 14, 2001) (distinguishes prior decisions by clarifying that a
Complainant’s Federal trademark registration speaks to constructive notice for
bad faith use, not bad faith registration).
Taking into consideration the full
circumstances presented, as it must, the Panel finds that ICANN Policy ¶ 4(a)(iii) requiring a showing of “bad faith”
has been satisfied.
Having determined that all three of the required
elements have been satisfied, the Panel finds that the domain name, <cheftochef.com>, should be TRANSFERRED.
Accordingly, it is hereby ORDERED that the
domain name,<cheftochef.com>, be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: February 26, 2003.
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