RESTRICTIONS DISPUTE RESOLUTION POLICY
UNIFORM DOMAIN NAME DISPUTE RESOLUTION
POLICY
CEC Entertainment Concepts, L.P., a
wholly owned subsidiary of CEC Entertainment, Inc. v. Andrew Boston a/k/a e
element
Claim Number: FA0503000441941
PARTIES
Complainant
is CEC Entertainment Concepts, L.P., a wholly owned subsidiary of CEC Entertainment, Inc. (“Complainant”),
represented by Kimberly F. Rich,
of Baker & McKenzie
LLP, 2001 Ross Avenue, 2300 Trammell Crow Center, Dallas, TX 75201. Respondent is Andrew Boston a/k/a e element (“Respondent”), 1040 West
Granville Avenue, Suite 830, Chicago, IL 60660.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <chuckycheese.biz>,
registered with Network Solutions Inc.
PANEL
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.
Paul
M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 18, 2005.
On
March 18, 2005, Network Solutions Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <chuckycheese.biz>
is registered with Network Solutions Inc. and that Respondent is the current
registrant of the name. Network
Solutions Inc. has verified that Respondent is bound by the Network Solutions
Inc. registration agreement and has thereby agreed to resolve domain name
disputes brought by third parties in accordance with ICANN’s Restrictions
Dispute Resolution Policy (the “RDRP”) and the Uniform Domain Name Dispute
Resolution Policy (the “UDRP”).
On
March 30, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 19,
2005 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@chuckycheese.biz by e-mail.
A
timely Response was received and determined to be complete on April 19, 2005.
On April 26, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Paul M. DeCicco as Panelist.
Although
a Response was received from Respondent, Respondent did not submit an
electronic copy of the Response in accordance with ICANN Rule 5(a). Therefore,
the Panel has discretion to give appropriate weight to the contents of the
deficient Response in consideration of the deficiency. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat.
Arb. Forum Feb. 21, 2002; see also
Schott Glas & Nec/Schott Components Corp. v. Necschott, D2001-0127
(WIPO Mar. 14, 2001). In the instant
case, the Panel considers the Response notwithstanding the formal defect.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
contends the following:
The
Complainant is the owner of numerous trademarks for and including the word mark
CHUCK E. CHEESE. Respondent breached his agreement with registrar Network
Solutions. Respondent has registered the domain name set out in this Complaint,
knowing that the registration and the manner of intended use directly or
indirectly infringed the legal rights of a third party. Also, Respondent did
not and does not intend to use the domain name primarily for a bona fide
purpose.
Identical
Confusingly Similar. The
domain name is identical or confusingly similar to a trademark or service mark
in which the complainant has rights. Complainant’s trademarks and service marks
consist of the words “Chuck E. Cheese” and “Chuck E. Cheese’s.” Respondent’s
domain name is “chuckycheese.biz.” Respondent’s domain name is virtually
identical and certainly confusingly similar to Complainant’s trademarks and
service marks. Both Complainant’s marks and Respondent’s domain name show a
matching visual appearance to a remarkable extent. Also, both signs are
identically pronounced. Being merely of descriptive character, the top-level
domain is not of any relevance in this regard. Finally, both signs are
congruent in meaning, being suggestive of food, more specifically, cheese
and/or related services.
The Respondent has no rights or legitimate
interests in respect of the domain name.
The
WHOIS Record for the domain name at issue reflects that Respondent registered
the infringing domain name on April 15, 2004. There is no evidence of
Respondent’s use of or demonstrable preparations to use the domain name or a
name corresponding to the domain name in connection with a bona fide offering
of goods or services. Respondent was not authorized to use Complainant’s marks
for any of the period during which he has registered the domain name at issue.
Respondent (as an individual, business, or other organization) has never been
commonly known by the domain name at issue and has no legitimate noncommercial
or fair use of the domain name. The at-issue domain name is not the nickname of
Respondent or other member of his family, or in any other way identified with
or related to a legitimate interest of Respondent.
The
domain name was registered and is being used in bad faith. The domain name was registered or
acquired for a primary purpose of intentionally attempting to attract for
commercial gain, Internet users to Respondent’s website or other on-line
locations, by creating a likelihood of confusion with the Complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of Respondent’s website
or location. When an Internet user accesses Respondent’s website, the user is taken
to a website unrelated to the Complainant and the goods and services covered by
Complainant’s rights. In fact, the website is the registrar’s default website
announcing that an Internet presence is currently being built. The website,
however, contains sponsored links to commercial offerings of cheese-related
products. Clearly, Respondent acquired the domain name to profit from a user
who may unintentionally misspell Complainant’s trademarks when attempting to
access Complainant’s website.
On
September 22, 2004, the Complainant notified the Respondent, that Respondent
was infringing Complainant’s trademarks and requesting that the domain name be
transferred to the Complainant. On October 12, 2004, after receiving
Respondent’s voice mail, Complainant notified Respondent, that Respondent
should cease and desist from any use of the domain name and transfer the domain
name to the Complainant. On October 15, 2004, Respondent sent an e-mail message
announcing his willingness to transfer the domain name for $150.00 in
registration costs plus reimbursement for alleged “out-of-pocket expenses.”
The
rate charged by registrar for a three-year registration of a domain name being
$24.99 per year, thus, the costs for the overall period not being in excess of
$75.00. Furthermore, in order to drive up the Complainant’s willingness to make
this payment Respondent indicated that an additional charge of $300.00 per hour
for his personal time would apply.
On
October 18, 2004, Complainant’s counsel sent a follow-up letter to Respondent
advising him that the Complainant had retained legal counsel in that dispute.
On October 22, 2004 Respondent replied that no funds were available and
requested the Complainant to set up the electronic equipment required to
effectuate the transfer due to an alleged dissolution of Respondent’s business.
Respondent’s
continuing conduct demonstrates bad faith intent to trade on the value of, and
to interfere with, Complainant’s rights to use its marks in commerce.
Respondent’s offer to sell the domain name for the price mentioned plus
“out-of-pocket” expenses shows that Respondent’s only interest was to convert
the domain name into money. Respondent did not contend that the domain name had
been acquired for bona fide business and commercial purposes other than the
sale.
The
domain name is not being used primarily for a bona fide business or commercial
purpose. Respondent has
registered the domain solely for the purpose of selling it to an interested
acquirer, most likely the Complainant. There is no other explanation why
Respondent would have chosen a domain name virtually identical to Complainant’s
famous marks. When contacted by the Complainant, Respondent never alleged a
business-related objective pursued by the registration of the domain name but
instantaneously offered the domain name for sale. Since the domain name’s
registration Respondent has not loaded any business-related content onto the
website connected to the domain name. In fact, prior to Complainant’s request
to surrender the domain name, the domain name remained idle and connected only
to the registrar’s default website for more than six months. In view of the visual similarity of the
domain name and Complainant’s trademarks, there was no intent to use the domain
name for the purposes set forth above.
The
domain name must be considered as registered and used solely for the purposes
of selling the domain name for compensation. In absence of any bona fide
business and/or commercial relation and/or intent of the Respondent to do so,
and in view of the fact that Respondent offered to sell the domain name to the
Complainant for an amount that appears to be in excess of the costs of
registering the domain name, the domain name was registered and used in bad
faith.
B.
Respondent
The
Response fails, in great part, to substantively address the particular claims
made in the Complaint. Instead, Respondent, in a maniacal informal letter
response to the arbitrating body, rants that he is now, and was always, willing
to give up the domain name for his costs of
$150. The Respondent further claims that the domain name was to be used
to reference a government surplus cheese site, and that the project was
scrapped for financial reasons.
FINDINGS
Complainant has trademark rights in
“Chuck E. Cheese.” The registered mark is well known and was known to the
Respondent at the time of registration.
The Respondent agrees that the domain
name may be transferred.
The Respondent’s request for compensation
of out his out of pocket expenses is beyond the authority of the Panel to
grant.
Respondent has no current bona fide plans
to use the domain name for any commercial purpose.
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 UDRP, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the UDRP 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.
As an
alternative ground for relief in this proceeding, Complainant has alleged that
Respondent has violated its obligations under the RDRP. Paragraph 4(a) of the
RDRP requires complainants to prove that the “domain name is not being or will
not be used primarily for a bona fide business or commercial purpose.”
Paragraph 4(b) of the RDRP defines “bona fide business or commercial use” as
the bona fide use or bona fide intent to use the domain name or any content
software, materials, graphics or other information thereon, to permit Internet
users to access one or more host computers through the DNS:
(1) to exchange goods, services, or property
of any kind; or
(2) in the ordinary course of trade or
business; or
(3) to facilitate the exchange of goods,
services, information, or property of any kind or the ordinary course of trade
or business.
Complainant
alleges that the Respondent did not register the domain name for a bona fide
commercial purpose. Respondent offers that the domain name was registered for
the purpose of establishing a surplus government cheese related site. At
present, the site located at <chuckycheese.biz>, while not referencing
government surplus cheese, does reference a webpage displaying links to cheese
related businesses. However, even if we
take Respondent’s claim of intended use as true, such use and the present use,
does not constitute a “bona fide business or commercial use.” As elaborated
below, Respondent has no right to use Complainant’s registered trademark in
such a manner. Additionally, the fact that the Respondent agreed to transfer
the domain name supports an inference that Respondent had no serious commercial
purpose for the domain name.
Therefore
the Panel agrees with Complainant. Respondent has violated the RDRP. While Respondent’s violation of the RDRP is
sufficient to allow the Panel to find for Complainant, the Panel nevertheless
feels compelled to discuss the domain name in light of the UDRP.
Complainant has established rights in the CHUCK E.
CHEESE mark through registration with the United States Patent and Trademark Office
(Reg. No. 1,203,974 issued Aug. 3, 1982) and through continued use of the mark
in commerce since at least October 1977. See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002), see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002). The
domain name is symbolically identical to Complainant’s mark except for one
letter. The mere alteration or exchanging of a letter and adding a gTLD are
insufficient to distinguish the domain name form Complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000). The
single letter difference between Complainant’s trademark and the second level
domain name in the instant case does not distinguish the two. Furthermore, the
domain name is phonetically identical to the Complainant’s trademark. Phonetic identity alone is sufficient to
allow a finding the trademark and the domain name is identical. See
generally, Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum
Feb. 22, 2002).
Complainant
has not licensed its mark to Respondent for any purpose, e.g. to be used in a
domain name. Additionally, Respondent is not commonly known as “Chucky Cheese”
or any close variation thereof. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000). Respondent fails to credibly assert that it used the domain name, or
intends to use the domain name for a bona fide offering of goods or services,
or to demonstrate the applicability any other defense under the Policy that
shows that the Respondent has legitimate rights or interests in the at-issue
mark. In fact, aside from a nearly unintelligible and unsupported comment by
Respondent that the domain name was acquired to reference a government surplus
cheese website, there is no indication as to why the domain name was registered
or why the particular name was selected.
Finally,
Respondent’s willingness to sell the rights to the disputed domain name
demonstrates Respondent’s lack of rights and legitimate interests in the
disputed domain name pursuant to UDRP ¶ 4(a)(ii). See Mothers Against Drunk
Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000.
Although Complainant bares the initial burden to show
Respondent’s bad faith regarding the registration and the use of the disputed
domain name, once a prima facie case of bad faith has been made by
Complainant, as the Panel finds in the present case, it is up to Respondent to
either justify its business conduct, explain it, or demonstrate satisfactorily
the contrary. See Royal Bank of Scotland Group v. Lopez, D2002-0823
(WIPO Dec. 3, 2003); see also AT&T Corp. v. Linux Security Sys.,
DRO2002-0002 (WIPO Oct. 11, 2002). Here Respondent merely states, without
presenting any corroborating evidence, that he has registered the domain name
for a government surplus cheese business.
Respondent’s
registration of the disputed domain name, which is identical to Complainant’s
mark, suggests that Respondent knew of Complainant’s rights in the CHUCK E.
CHEESE mark. Complainant’s trademark registration for the CHUCK E. CHEESE mark
on the Principal Register of the United States Patent and Trademark Office gave
Respondent constructive notice of the mark. Respondent also appears to have had
actual knowledge that Complainant had rights in the CHUCK E. CHEESE mark.
Complainant’s mark is very well known in the field; the mark is fanciful and
not likely to be picked as a domain name absent some awareness of the mark.
Therefore, it is nearly undeniable that the Respondent registered
ChuckyCheese precisely because of the
distinctive and well-known qualities of the Complainant’s identical trademark
thereby intending to trade on the Complainant’s mark. Such conduct evidences
bad faith registration and use under the Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000). Where, as here, a Respondent chooses a domain name with knowledge
that it is similar to another’s mark, intent to confuse might be inferred. Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002). Such intent evidences
bad faith.
While
each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences
bad faith use and registration of the domain name, additional factors, can also
be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000). The
record shows Respondent’s frequent use of belittling and gratuitous foul
language in dealing the Complainant, and in communicating with the arbitrating
body and its staff. Respondent’s
disgraceful prose does nothing to enlighten the Panel as to the relevant facts
in this case. Instead it indicates that Respondent has no respect for the
Complainant, Complainant’s rights, the people charged with enabling this
arbitration, or the sanctity of these proceedings. The Panel finds such
abhorrent conduct to be compelling evidence of Respondent’s bad-faith in
registering and using the domain name.
DECISION
Having
established all elements required under the UDRP, the Respondent having agreed
to a transfer of the domain name, and having found the Respondent to be in
violation of the RDRP, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chuckycheese.biz>
domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 10, 2005
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