Garrey Corp., a California Corporation, doing business as Xalos Bar and Grill and as Xalos Restaurant & Bar v. Xalos Bar / Munoz, Jaime
Claim Number: FA1208001458953
Complainant is Garrey Corp., a California Corporation, doing business as Xalos Bar and Grill and as Xalos Restaurant & Bar, (“Complainant”), represented by Daniel M. Cislo of Cislo & Thomas LLP, California, USA. Respondent is Xalos Bar / Munoz, Jaime (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xalosbar.com>, registered with GoDaddy.com, LLC.
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 August 21, 2012; the National Arbitration Forum received payment on August 27, 2012.
On August 23, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <xalosbar.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 2012 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@xalosbar.com. Also on August 30, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 28, 2012, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <xalosbar.com> domain name, the domain name at issue, is confusingly similar to Complainant’s XALOS RESTAURANT & BAR mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns a trademark registration for the XALOS RESTAURANT & BAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,079,029 filed November 3, 2010; registered January 3, 2012). Complainant owns common law rights in the XALOS RESTAURANT & BAR mark as well. Complainant began using the mark on February 28, 2003 and has continued to use the mark since that time in connection with its restaurant, bar, and music/dancing services. Complainant has used signage containing the XALOS RESTAURANT & BAR mark in front of its location since February 28, 2003.
Respondent was hired as a promoter for Complainant and spent money for advertising on the radio, flyers, and Internet from 2003 to 2011. After Respondent stopped working for Complainant, Complainant spent $220,000 on advertising of its restaurant and bar under the XALOS RESTAURANT & BAR mark. Complainant’s restaurant is one of Southern California’s most popular Latin restaurant and bars. Complainant’s USPTO trademark registration lists a first use date as February 28, 2003. Respondent’s <xalosbar.com> domain name is confusingly similar to Complainant’s XALOS BAR & RESTAURANT mark. Respondent is not commonly known by the <xalosbar.com> domain name. Although Respondent was at one time employed by Complainant, he did not have permission to register a domain name containing Complainant’s XALOS RESTAURANT & BAR mark. Respondent is not now associated or affiliated with Complainant. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <xalosbar.com> domain name. Respondent uses the disputed domain name to promote a competing restaurant and bar, called “Ember of Anaheim,” that is located 5.2 miles away from Complainant and is attempting to disrupt Complainant’s business and uses the <xalosbar.com> domain name to host a website promoting a competing bar and restaurant. Respondent is attempting to commercially benefit by creating a likelihood of confusion as to Complainant’s affiliation with the <xalosbar.com> domain name.
Respondent failed to submit a Response. Respondent registered the <xalosbar.com> domain name on May 28, 2003.
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."
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.
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.”).
Complainant owns a trademark registration for the XALOS RESTAURANT & BAR mark with the USPTO (Reg. No. 4,079,029 filed November 3, 2010; registered January 3, 2012). Complainant’s USPTO trademark registration sufficiently establishes Complainant’s rights in the mark for the purpose of Policy ¶ 4(a)(i), dating back to the filing date of November 3, 2010. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant also avers that it owns common law rights in the XALOS RESTAURANT & BAR mark and claims it began using the mark on February 28, 2003 and has continued to use the mark since that time in connection with its restaurant, bar, and music/dancing services. Complainant’s USPTO trademark registration lists the first use date as February 28, 2003 and Complainant asserts that it has used signage containing the XALOS RESTAURANT & BAR mark in front of its location since February 28, 2003. Respondent was hired as a promoter for Complainant and spent money for advertising on the radio, flyers, and Internet from 2003 to 2011. After Respondent stopped working for Complainant, Complainant spent $220,000 on advertising of its restaurant and bar under the XALOS RESTAURANT & BAR mark. Complainant’s restaurant is one of Southern California’s most popular Latin restaurant and bars. Accordingly, in the absence of a Response, the Panel finds that Complainant established common law rights in the XALOS RESTAURANT & BAR mark, by making extensive and continuous use of the mark, and the Panel concludes that Complainant’s rights in the mark date back to February 28, 2003 under Policy ¶ 4(a)(i). See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning).
Respondent’s <xalosbar.com> domain name is confusingly similar to Complainant’s XALOS BAR & RESTAURANT mark. The disputed domain name contains the major portion of Complainant’s mark and the disputed domain name does not contain the ampersand, space between terms, or the term “RESTAURANT” found in Complainant’s mark. The removal of an ampersand, space, and a term in a complainant’s mark does not sufficiently distinguish a disputed domain name from a 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 Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). The <xalosbar.com> domain name features the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Accordingly, Respondent’s <xalosbar.com> domain name is confusingly similar to Complainant’s XALOS BAR & RESTAURANT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
While Respondent was hired by Complainant, Respondent did not have permission to register a domain name containing Complainant’s XALOS RESTAURANT & BAR mark. Respondent is not now associated or affiliated with Complainant. Respondent attempted to file a trademark registration with the USPTO for the phrase “xalos bar,” but abandoned its trademark application. The WHOIS information lists “Xalos Bar / Munoz, Jaime” as the registrant of the disputed domain name. Although the WHOIS information is similar to the <xalosbar.com> domain name, the Panel still finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) due to the lack of a Response from Respondent to Complainant’s evidence and arguments. See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Respondent uses the disputed domain name to promote a competing restaurant and bar, called “Ember of Anaheim,” that is located 5.2 miles away from Complainant. Respondent’s competing use of the <xalosbar.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is attempting to disrupt Complainant’s business. As noted above, Respondent uses the <xalosbar.com> domain name to host a website promoting a competing bar and restaurant. Respondent is disrupting Complainant’s business and registered and uses the <xalosbar.com> domain name in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent is attempting to commercially benefit by creating a likelihood of confusion as to Complainant’s affiliation with the <xalosbar.com> domain name. Respondent commercially benefits from the promotion of a competing restaurant and bar and is attempting to create confusion as to Complainant’s affiliation with the disputed domain name. Accordingly, the Panel concludes that Respondent registered and uses the <xalosbar.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xalosbar.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 4, 2012
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