Florentine Caffe, Inc. v. Mark Pfeffer
d/b/a Blue Avenue Productions
Claim
Number: FA0504000465152
Complainant is Florentine Caffe, Inc. (“Complainant”),
represented by Peter A. Talieri, 220 San Vicente Blvd. P109, Santa
Monica, CA 90402. Respondent is Mark Pfeffer d/b/a Blue Avenue
Productions (“Respondent”), P.O. Box 130400, Boston, MA 02113.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <florentinecafe.com>, registered with Network
Solutions, Inc.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 21, 2005.
On
April 22, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <florentinecafe.com> 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 Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
April 26, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 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@florentinecafe.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 20, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
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." 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:
1. Respondent’s <florentinecafe.com>
domain name is identical to Complainant’s FLORENTINE Café mark.
2. Respondent does not have any rights or
legitimate interests in the <florentinecafe.com> domain name.
3. Respondent registered and used the <florentinecafe.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
Florentine Caffe, Inc., a Massachusetts corporation organized in 1994. Complainant operates a full service Italian
restaurant/bar offering food and beverages for lunch and dinner customers. Complainant uses the name “Florentine Café”
on its signs and menus. Complainant’s
attorney has signed an affidavit dated April 24, 2005 in which he purports to
be “in the process of filing several trademark applications in the name
Florentine Café, for both the name and the stylized design of the mark.”
Respondent was
once an employee of Complainant. At
that time, Respondent was instructed to purchase the <florentinecafe.com>
domain name on Complainant’s behalf.
Respondent registered the domain name on February 29, 2000; however,
Respondent registered the domain name in his own name. It was not until after Respondent’s
employment was terminated with the company, on or about October 1, 2002, that
Complainant was informed that the domain name was registered in Respondent’s
name. Complainant contacted Respondent
via e-mail regarding the transfer of the disputed domain name registration
sometime prior to January 4, 2005. On
February 20, 2005, Respondent sent an e-mail to Complainant in which he stated
that the “minimum bid for owning www.FlorentineCafe.com is $10,000.”
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.
“In the absence
of a response, it is appropriate to accept as true all allegations of the
Complaint.” Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000); see
also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of Complainant to
be deemed true).
Complainant has
asserted rights in the FLORENTINE Café
mark, which is used in commerce to identify and distinguish Complainant’s
services from those offered by others.
Complainant’s assertion is entirely consistent with the evidence in the
record. Therefore, the Panel finds
that, in the absence of a response, Complainant has established rights in the
FLORENTINE Café mark pursuant to
Policy ¶ 4(a)(i).
Even though
Complainant has not registered the mark with a governmental authority, panels
have held that trademark rights may exist independently of government
registration of a mark. See McCarthy
on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN
dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
Complaint under the Policy); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that Complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist).
The Panel
further finds that the <florentinecafe.com> domain name is
identical to Complainant’s FLORENTINE Café
mark because the domain name incorporates the mark in its entirety and has
merely removed the accent. The removal
of the accent is insignificant under the Policy because it is not possible to
reproduce such punctuation in a domain name.
See Mrs. World Pageants,
Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding
that punctuation is not significant in determining the similarity of a domain
name and mark); cf. Chernow
Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding
“that the use or absence of punctuation marks, such as hyphens, does not alter
the fact that a name is identical to a mark").
Complainant has
established Policy ¶ 4(a)(i).
Complainant has
asserted that Respondent lacks rights and legitimate interests in the disputed
domain name. Respondent has the burden
pursuant to Policy ¶ 4(a)(ii) to advance concrete evidence to rebut
Complainant’s assertion because this information is “uniquely within the
knowledge and control of the respondent.”
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002). Respondent has failed to rebut
Complainant’s assertion. Therefore,
Complainant’s assertion stands and the Panel finds that Respondent lacks rights
and legitimate interests in the disputed domain name. See 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 interests
in the domain names); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where Respondent fails to respond).
Former employees
who register domain names identical to a former employer’s trademark generally
do not acquire rights or legitimate interests in those domain names, especially
when operating as an agent of the employer.
See Savino Del Bene Inc. v.
Gennari, D2000-1133 (WIPO Dec. 12, 2001) (finding that a former employee
does not acquire rights or legitimate interests in a domain name identical to
the former employer's trademark); see also Vinidex Pty. Ltd. v. Auinger,
AF-0402 (eResolution Oct. 18, 2000)
(finding that as a former employee, Respondent knew or should have known
Complainant’s mark was in use as an integral part of the corporate name and as
a trademark and that Respondent understood the legitimate interests and rights
of Complainant and, by contrast, its own lack of interest or right. This is sufficient for Complainant to
establish that Respondent had no rights or interests in the domain name).
Complainant has
asserted that Respondent was a former employer and that Respondent registered
the disputed domain name on Complainant’s behalf while employed. In the absence of a response, the Panel
accepts this assertion as true.
Therefore, consistent with prior cases under the Policy, the Panel finds
that Respondent is not using the disputed domain name in connection with a bona
fide offering of goods or services nor a legitimate noncommercial or fair use
pursuant to Policy ¶¶ 4(c)(i) and (iii).
Moreover, there
is nothing in the record to indicate that Respondent is commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS
information, and its failure to imply that Respondent is commonly known by the
disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does
not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
Complainant has
established Policy ¶ 4(a)(ii).
Bad faith registration and use is established under Policy ¶ 4(b)(i) when
the circumstances indicate
that Respondent registered the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to
Complainant, who is the owner of the FLORENTINE Café mark for valuable consideration in excess of documented
out-of-pocket costs directly related to the domain name. As a Panel has said, “What makes an offer to
sell a domain [name] bad faith is some accompanying evidence that the domain
name was registered because of its value that is in some way dependent on the
trademark of another, and then an offer to sell it to the trademark owner or a
competitor of the trademark owner.” Pocatello
Idaho Auditorium Dist. v. CES Mkt’g Group, Inc., FA 103186 (Nat. Arb. Forum
Feb. 21, 2002).
In the instant
case, Respondent was an actual employee of Complainant charged with registering
the domain name on Complainant’s behalf.
Instead, Respondent registered the domain name on his own behalf and
subsequently stated that the minimum purchase price for the disputed domain
name was $10,000. This registration and
use is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See
Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under
Policy paragraph 4(b)(i) where Respondent stated in communication with
Complainant, “if you are interested in buying this domain name, we would be
ready to sell it for $10,000”); see also
Dollar Rent A Car Sys. Inc. v.
Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent
demonstrated bad faith by registering the domain name with the intent to
transfer it to Complainant for $3,000, an amount in excess of its out-of-pocket
costs).
Moreover, Respondent
registered the disputed domain name with actual knowledge of Complainant’s
trademark rights. The registration of a
domain name that is identical to another’s mark, despite actual knowledge of
the trademark owner’s rights is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (“[T]here is a legal presumption of bad faith, when the respondent
reasonably should have been aware of the complainant’s trademarks, actually or
constructively.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse").
Complainant has established Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <florentinecafe.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
June 3, 2005
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