RARE Hospitality Management, Inc. v.
Registrant(187640) info@fashionid.com +1.25255572
Claim
Number: FA0409000331623
Complainant is RARE Hospitality Management, Inc. (“Complainant”),
represented by Wendy L. Robertson, of Alston & Bird, LLP,
1201 West Peachtree Street, Atlanta, GA 30309.
Respondent is Registrant(187640)
info@fashionid.com +1.25255572 (“Respondent”), P.O. Box No. 71826, KCPO, Hong Kong, Hong Kong HK
852.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <capitalgrille.com>, registered with Onlinenic,
Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 20, 2004; the Forum received a hard copy of the
Complaint on September 22, 2004.
On
September 21, 2004, Onlinenic, Inc. confirmed by e-mail to the Forum that the
domain name <capitalgrille.com> is registered with Onlinenic, Inc.
and that Respondent is the current registrant of the name. Onlinenic, Inc. has
verified that Respondent is bound by the Onlinenic, 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
September 27, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 18, 2004 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@capitalgrille.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 25, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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."
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.
A. Complainant makes the following assertions:
1. Respondent’s <capitalgrille.com>
domain name is confusingly similar to Complainant’s THE CAPITAL GRILLE mark.
2. Respondent does not have any rights or
legitimate interests in the <capitalgrille.com> domain name.
3. Respondent registered and used the <capitalgrille.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant and
its related companies operate and franchise over 250 restaurants, including 19
The Capital Grille restaurants.
Complainant registered the THE CAPITAL GRILLE mark with the U.S. Patent
and Trademark Office (“USPTO”) on May 7, 1991 (Reg. No. 1,644,015).
Respondent
registered the <capitalgrille.com> domain name on January 13,
2003. Respondent’s domain name resolves
to a website that links to commercial websites that pay referral fees.
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.
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 has
established rights in the THE CAPITAL GRILLE mark through registration with the
USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive, and
Respondent has the burden of refuting this assumption); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”).
Respondent’s <capitalgrille.com>
domain name is confusingly similar to Complainant’s THE CAPITAL GRILLE mark
because the domain name merely omits the word “the” from the mark. The Panel finds that the mere omission of
the word “the” and the addition of the generic top-level domain “.com” are
insufficient to distinguish the domain name from Complainant’s mark. See Buffalo
News v. Barry, FA 146919 (Nat. Arb. Forum
Mar. 31, 2003) (finding Respondent's <bufalonews.com> domain name
confusingly similar to Complainant's THE BUFFALO NEWS mark); see also Mega
Soc’y v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004)
(finding that the disputed domain names <megasociety.net> and <megasociety.com> were
identical or confusingly similar to Complainant's THE MEGA SOCIETY common
law mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to provide a Response, the Panel presumes that Respondent
lacks rights and legitimate interests in the <capitalgrille.com> domain
name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a Response, Respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the <capitalgrille.com>
domain name. Therefore, the Panel
concludes that Respondent lacks rights and legitimate interests in the domain
name pursuant to 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 Gallup Inc. v. Amish
Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights
in a domain name when Respondent is not known by the mark).
Moreover, the
record indicates that Respondent commercially benefits through use of the <capitalgrille.com>
domain name by using it to generate referral fees from third-party Internet
vendors. Respondent’s commercial use of
the misleading domain name does not constitute a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that Respondent’s use
of the disputed domain name to redirect Internet users to websites unrelated to
Complainant’s mark, websites where Respondent presumably receives a referral
fee for each misdirected Internet user, was not a bona fide offering of goods
or services as contemplated by the Policy); see
also Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that Respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to Complainant and
presumably with the purpose of earning a commission or pay-per-click referral
fee did not evidence rights or legitimate interests in the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <capitalgrille.com>
domain name is confusingly similar to Complainant’s mark and is used to
generate referral fees. Respondent’s
commercial use of the domain name takes advantage of the goodwill related to
Complainant’s mark and constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also ESPN,
Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad
faith where Respondent linked the domain name to another website
<iwin.com>, presumably receiving a portion of the advertising revenue
from the site by directing Internet traffic there, thus using a domain name to
attract Internet users for commercial gain).
The Panel finds
that 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 <capitalgrille.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
November 8, 2004
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