Cooking.com, Inc v. EverythingForSaleOnline c/o Domanin Registration
Claim Number: FA0511000597496
Complainant is Cooking.com, Inc. (“Complainant”), represented by Tawnya R. Wojciechowski, 19900 MacArthur Boulevard, Suite 1150, Irvine, CA 92612. Respondent is EverythingForSaleOnline c/o Domanin Registration (“Respondent”), 1117 Desert Lane, Suite 1403, Las Vegas, NV 89102.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <everythingcooking.com>, registered with eNom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 18, 2005.
On November 18, 2005, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <everythingcooking.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 November 23, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 13, 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@everythingcooking.com by e-mail.
On January 5, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Respondent received an extension of time to file a Response and timely filed a Response on January 12, 2006. Complainant filed a timely Reply on January 17, 2006.
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."
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant, Cooking.com, Inc., contends that (1) Respondent’s <everythingcooking.com> domain name is confusingly similar to Complainant’s COOKING.COM mark, (2) Respondent does not have any rights or legitimate interests in the <everythingcooking.com> domain name, and (3) Respondent registered and used the <everythingcooking.com> domain name in bad faith.
B.
Respondent, EverythingForSaleOnline,
contends that (1) its domain name <everythingcooking.com> is not confusing (2) Complainant’s COOKING.COM
mark is generic, (3) Respondent has a
legitimate interest in the phrase “cooking.com”, and (4) there is no evidence
of bad faith. Complainant fails to show
why Respondent’s use of <everythingcooking.com> is different from the hundreds of other
domain names currently using the phrase “cooking.com” in their names. Respondent contends that the Complaint was
filed in retaliation of its refusal to purchase the business operations of
Cooking.com, Inc. a few months ago. For
several months prior to the filing of the Complaint, Respondent had been using
the <everythingcooking.com> domain name to promulgate the internet
sale of its household goods and wares.
Complainant has failed to show that consumers looking for a product sold
by both companies will be directed to Respondent’s site first.
C. In Reply, Complainant contends that Respondent’s claims of retaliation following business discussions between Respondent and Complainant are without merit. Respondent was doing business under the name EverythingHome.com. Respondent pursued Cooking.com, Inc. for a potential merger or acquisition and had actual knowledge of the Cooking.com business. Just because the merger discussions were not fruitful did not give Respondent the right to go out and register a domain clearly incorporating the COOKING.COM mark and name, and to launch a directly competitive website to the business of Cooking.com after discussions terminated.
At the time of the discussions with Cooking.com, Mr. Michael Goldstein, owner of Respondent, held himself out as a business operating under the name EverythingHome, operated a website under a URL of the same name, and did business under the EverythingHome name.
Although other URLs have the word “cooking” in them,
such third-party sites are irrelevant in the face of Respondent’s clear bad
faith actions in opening a commercial and directly competitive site to compete
with Complainant, incorporating Complainant’s entire registered trademark and
name. Respondent had no prior business conducted legitimately under the
COOKING.COM trademark. The launch of
the directly competitive website, by Respondent’s own admission, was done with
the intent to build a business on the coattails of the Cooking.com business
after Cooking.com failed to present an offer to Mr. Goldstein to purchase the
EverythingHome business and employ Mr. Goldstein.
Complainant, Cooking.com, Inc., was founded in 1998 and has been engaged in the promotion, distribution and sale of high quality kitchenware, giftware, housewares, and related products and services targeted to the general public at large. Complainant registered the COOKING.COM mark on September 17, 2002 (Reg. No. 2,657,525) with the U.S. Patent and Trademark Office (“USPTO”).
Respondent, EverythingForSaleOnline, registered the <everythingcooking.com> domain name on December 30, 2003. The website associated with the <everythingcooking.com> domain name advertises cooking and food related items for sale, including, inter alia, “Bakeware,” “Cookware,” “Coffee Makers,” “Cutlery,” “Cooks Tools,” “Dinnerware,” “Flatware,” and “Kitchen.”
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.
Complainant offers its USPTO registration to demonstrate its
rights in the COOKING.COM mark. The
Panel accepts this evidence and finds that Complainant has established rights
in the COOKING.COM mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”).
The Panel finds that Respondent’s <everythingcooking.com>
domain name is confusingly similar to Complainant’s COOKING.COM mark because
the only difference is the addition of the word “everything,” which does not
significantly distinguish the domain name from the mark. See Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates
the VIAGRA mark in its entirety, and deviates only by the addition of the word
“bomb,” the domain name is rendered confusingly similar to the complainant’s
mark); Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding
the <westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent is appropriating Complainant’s mark to offer
cooking and food related items for sale.
The Panel finds that appropriating another’s mark to offer similar goods
for sale is neither a bona fide offering of a good or service pursuant
to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); Or. State Bar v. A
Special Day, Inc., FA 99657 (Nat. Arb.
Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of
law-related books under Complainant's name is not a bona fide offering of goods
and services because Respondent is using a mark confusingly similar to the
Complainant's to sell competing goods.”).
The Panel finds that there is nothing in the record,
including the WHOIS registration information, which demonstrates that
Respondent is commonly known by the disputed 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); Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent has appropriated Complainant’s mark to sell
cooking and food related items at the associated website. The Panel finds that Respondent has registered
and used the <everythingcooking.com> domain name to compete with
complainant, which is evidence of bad faith pursuant to Policy ¶
4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from the complainant's marks suggests that the
respondent, the complainant’s competitor, registered the names primarily for
the purpose of disrupting the complainant's business); S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
The Panel also finds that Respondent is appropriating
Complainant’s mark in a confusingly similar domain name for commercial gain,
which is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent
used <land-cruiser.com> to advertise its business, which sold goods in
competition with Complainant. This establishes bad faith as defined in Policy ¶
4(b)(iv).”); Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov.
10, 2003) (“As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant has established 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 <everythingcooking.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 30, 2006
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