Hofbrauhaus of America, LLC v. Dobosiewicz, Eddy / Forgotten Buffalo
Claim Number: FA1404001555850
Complainant is Hofbrauhaus of America, LLC (“Complainant”), represented by Linda C. Emery of von Brisen and Roper, Wisconsin, USA. Respondent is Dobosiewicz, Eddy / Forgotten Buffalo (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hofbrauhausbuffalo.com>, registered with Network Solutions, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2014; the National Arbitration Forum received payment on April 24, 2014.
On April 25, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <hofbrauhausbuffalo.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 April 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2014 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@hofbrauhausbuffalo.com. Also on April 28, 2014, 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 May 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant
a) Complainant is the exclusive franchisor and United States licensee of Hofbrauhaus locations, beer, and related merchandise for Staatliches Hofbrauhaus in Munchen, a German Corporation, which owns and operates the world famous brewery and beer hall in Munich, Germany. Complainant is also the exclusive licensee of the Hofbrauhaus marks.
b) Complainant has rights in the HOFBRÄUHAUS mark, used in connection with restaurant services and beer. Complainant owns a registration for the HOFBRÄUHAUS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,130,029 registered August 15, 2006).
c) Respondent’s <hofbrauhausbuffalo.com> domain name is confusingly similar to Complainant’s HOFBRÄUHAUS mark. The disputed domain name contains Complainant’s mark in its entirety while adding the geographic indicator “Buffalo.”
d) Respondent does not have any rights or legitimate interests in the <hofbrauhausbuffalo.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HOFBRÄUHAUS mark in any way. Respondent’s company, “Forgotten Buffalo,” offers tours of the Buffalo and Niagara Falls region of New York.
b. Respondent registered the <hofbrauhausbuffalo.com> domain name with intent to sell it to the potential franchisee of a potential Hofbrauhaus opening in Buffalo, New York. Respondent rejected Complainant’s offer of $200, which likely would have fully compensated Respondent for the minimal fees incurred to obtain the disputed domain name. See Complainant’s Exhibit C.
c. No website is hosted as the <hofbrauhausbuffalo.com> domain, and there is no evidence to suggest that Respondent has made any plans to develop the disputed domain name.
e) Respondent registered and is using the <hofbrauhausbuffalo.com> domain name in bad faith.
a. Respondent registered the disputed domain name with intent to sell it for consideration in excess of Respondent’s out-of-pocket costs related to the disputed domain name. Respondent was aware of the impending opening of a Hobrauhaus establishment in Buffalo, New York, and Respondent rejected two offers from Complainant to settle the dispute and cover Respondent’s costs because Respondent felt the offers were too low. See Complainant’s Exhibit C.
Respondent
a) Respondent did not submit a formal response in this proceeding.
1. Respondent’s <hofbrauhausbuffalo.com> domain name is confusingly similar to Complainant’s HOFBRȀUHAUS mark.
2. Respondent does not have any rights or legitimate interests in the <hofbrauhausbuffalo.com> domain name.
3. Respondent registered or used the <hofbrauhausbuffalo.com> domain name in bad faith.
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 contends it has rights in the HOFBRÄUHAUS mark, used in connection with restaurant services and beer. Complainant states it owns a registration for the HOFBRÄUHAUS mark with the USPTO (Reg. No. 3,130,029 registered August 15, 2006). Therefore, the Panel finds that Complainant has rights in the HOFBRÄUHAUS mark within the meaning of Policy ¶ 4(a)(i) because the Complainant owns a valid registration for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <hofbrauhausbuffalo.com> domain name is confusingly similar to Complainant’s HOFBRÄUHAUS mark. Complainant states that that the disputed domain name contains Complainant’s mark in its entirety while adding the geographic indicator “Buffalo.” The Panel notes that the disputed domain name also contains the generic top-level domain (“gTLD”) “.com,” and it removes the accent over the letter “A.” First, the Panel finds that the addition of a geographic indicator to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Next, the Panel finds that removal of an accent in a trademark is insignificant because it cannot be reproduced in domain names. See Florentine Caffe, Inc. v. Pfeffer, FA 465152 (Nat. Arb. Forum June 3, 2005) (finding that “[t]he removal of the accent is insignificant under the Policy because it is not possible to reproduce such punctuation in a domain name”). Further, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity 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.”). Therefore, the Panel finds that Respondent’s <hofbrauhausbuffalo.com> domain name is confusingly similar to Complainant’s HOBRAUHAUS mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant contends that Respondent does not have any rights or legitimate interests in the <hofbrauhausbuffalo.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HOFBRÄUHAUS mark in any way. Respondent’s company, “Forgotten Buffalo,” offers tours of the Buffalo and Niagara Falls region of New York. The Panel notes that the WHOIS record for the disputed domain name lists “Dobosiewicz, Eddy” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the HOFBRÄUHAUS mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <hofbrauhausbuffalo.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that no website is hosted at the <hofbrauhausbuffalo.com> domain, and there is no evidence to suggest that Respondent has made any plans to develop the disputed domain name. Past panels have found that the respondent has not met the burden of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) when the respondent has not demonstrated any preparations to use the disputed domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent has failed to make an active use of the <hofbrauhausbuffalo.com> domain.
Complainant alleges that Respondent registered the <hofbrauhausbuffalo.com> domain name with intent to sell it to the potential franchisee of a potential Hofbrauhaus opening in Buffalo, New York. Complainant states that Respondent rejected Complainant’s offer of $200, which likely would have fully compensated Respondent for the minimal fees incurred to obtain the disputed domain name. See Complainant’s Exhibit C. Past panels have found that a respondent’s offer to sell a disputed domain name demonstrates that respondent does not have rights or legitimate interests in the disputed domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the <hofbrauhausbuffalo.com> domain name pursuant to Policy ¶ 4(a)(ii) because the Respondent offered to sell the disputed domain name to Complainant.
Complainant alleges that Respondent registered and is using the <hofbrauhausbuffalo.com> domain name in bad faith. Complainant asserts that Respondent registered the disputed domain name with intent to sell it for consideration in excess of Respondent’s out-of-pocket costs related to the disputed domain name. Complainant explains that Respondent was aware of the impending opening of a Hobrauhaus establishment in Buffalo, New York, and Respondent rejected two offers from Complainant to settle the dispute and cover Respondent’s costs because Respondent felt the offers were too low. See Complainant’s Exhibit C. Past panels have found that attempting to obtain payment for a disputed domain name from a complainant in excess of the out-of-pocket costs associated with that domain name constitutes bad faith pursuant to Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name). Therefore, the Panel finds that Respondent registered and is using the <hofbrauhausbuffalo.com> domain name in bad faith under Policy ¶ 4(b)(i) because Respondent endeavored to sell the disputed domain name to Complainant for a price in excess of Respondents out-of-pocket costs.
Complainant claims Respondent was well aware that Complainant was opening a branch on Buffalo, New York, and sought to take advantage of this by registering the domain name. The Panel here agrees the evidence suggests Respondent registered the domain name in Policy ¶ 4(a)(iii) bad faith because he actually knew of Complainant’s trademark prior to registering the domain name. See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hofbrauhausbuffalo.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 2, 2014
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