Sainato's Restaurant and Catering Limited v. chen xue ming
Claim Number: FA1804001781748
Complainant is Sainato's Restaurant and Catering Limited (“Complainant”), represented by Kyle McDonald of McDonald Law LLC, New Hampshire, USA. Respondent is chen xue ming (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sainatos.com>, registered with eName Technology Co., Ltd.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2018; the Forum received payment on April 13, 2018.
On April 15, 2018, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <sainatos.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. 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 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2018 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@sainatos.com. Also on April 23, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 21, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David. A. Einhorn as 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 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 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.
Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant argues that the proceedings should be held in English because respondent has demonstrated a sufficient understanding of English. Respondent demonstrates an understanding of English by its conduct of modifying Complainant’s website, which is also in English. Respondent altered the links of Complainant’s homepage to lead to other pages in which the content was also in English, and created by Respondent. If Respondent was not able to effectively communicate in English, Complainant argues, it is unlikely that Respondent would have been able to make the changes to Complainant’s website in English. Furthermore, the web pages created by Respondent at the <sainatos.com> domain are solicitations for business in English.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).
A. Complainant
Complainant, Sainato's Restaurant and Catering Limited, is a longstanding restaurant in Cleveland, Ohio, which provides dine in, take out, and catering services to its customers. Complainant established common law rights in its SAINATO’S RESTAURANT through its continuous use of the mark since 1982. Complainant was also the original registrant of the <sainatos.com> domain name before it inadvertently allowed its registration to lapse. Respondent’s <sainatos.com> mark is confusingly similar to Complainant’s mark because it merely appends the generic top-level domain (“gTLD”) “.com” to an abbreviated version of the SAINATO’S RESTAURANT mark.
Respondent does not have rights or legitimate interests in the <sainatos.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its SAINATO’S RESTAURANT mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “chen xue ming” as the registrant. Respondent is not using the <sainatos.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website that features advertisements for discount designer shoe outlets.
Respondent registered and is using the <sainatos.com> domain name in bad faith as Respondent is using the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain.
B. Respondent
Respondent failed to submit a response in this proceeding.
The Panel notes that the <sainatos.com> domain name was registered on May 5, 2008.
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(f), 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 (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 claims common law rights in its SAINATO’S RESTAURANT mark. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant contends that it has used the SAINATO’S RESTAURANT mark continuously since 1982 and that it was the original registrant of the identical domain name, <sainatos.com>. As Respondent has not disputed these allegations, the Panel holds that Complainant has established common law rights in the SAINATO’S RESTAURANT mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant claims that Respondent’s <sainatos.com> mark is confusingly similar to Complainant’s mark because it merely appends the gTLD “.com” to an abbreviated version of the mark. The addition of a gTLD to an abbreviated version of a mark may not sufficiently distinguish a disputed domain name from a mark. See Sterling Jewelers Inc. v. KAY KAY YAN, FA 1542616 (Forum Mar. 17, 2014) (finding that Respondent’s <kisskay.com> domain name is confusingly similar to Complainant’s KAY and EVERY KISS BEGINS WITH KAY marks as it constitutes a mere abbreviation.). The Panel notes that the disputed domain name contains the identified first term of the mark, “sainatos,” less the apostrophe and the generic second term, “restaurant.” Accordingly, the Panel holds that Respondent’s <sainatos.com> domain name is confusingly similar to Complainant’s mark.
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its SAINATO’S RESTAURANT mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (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 that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <sainatos.com> domain name lists “chen xue ming” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <sainatos.com> domain name.
Further, Complainant claims that Respondent is not using the <sainatos.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant argues that Respondent uses the domain name to resolve to a website that features advertisements for discount designer shoe outlets. Use of a domain name to promote advertisements unrelated to a complainant’s mark or business may not be considered a bona fide offering or fair use under Policy ¶ 4(c)(i) or (iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or services). Complainant provided screenshots of the <sainatos.com> website, which indicate that the site displays advertisements for “OUTLETS OUTLETSSHOP,” and “SNEAKER OUTLET.” Therefore, the Panel finds that Respondent is using the domain name to promote advertisements unrelated to Complainant’s SAINATO’S RESTAURANT mark and holds that Respondent failed to use the domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use.
Thus Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and is using the domain name in bad faith because Respondent is attempting to create confusion with Complainant’s mark for Respondent’s commercial gain. Use of a domain name to create confusion as to the source, sponsorship, affiliation or endorsement therein for commercial gain may evidence bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Complainant alleges, and Respondent does not dispute, that screenshots of the <sainatos.com> website indicate that the site features advertisements for discount designer shoe outlets, from which Respondent likely profits. As such, the Panel finds that Respondent used the domain name to create confusion with Complainant’s mark for commercial gain and holds that Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sainatos.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 4, 2018
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