VICORP Restaurants, Inc. v. Paradigm
Technologies Inc. c/o Arden Bohanec
Claim Number: FA0605000702527
PARTIES
Complainant is VICORP Restaurants, Inc. (“Complainant”), represented by Miriam Trudell, of Sheridan Ross P.C., 1560 Broadway, Suite 1200, Denver, CO 80202. Respondent is Paradigm Technologies Inc. c/o Arden Bohanec (“Respondent”), 27450 Ynez Rd., Temecula, CA 92591.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bakerssquare.com>,
registered with Schlund+Partner Ag.
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.
Jonas Gulliksson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 5, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 8, 2006.
On May 11, 2006, Schlund+Partner Ag confirmed by e-mail to the National
Arbitration Forum that the <bakerssquare.com>
domain name is registered with Schlund+Partner Ag and that the Respondent is
the current registrant of the name. Schlund+Partner
Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 May 12, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 1, 2006 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@bakerssquare.com by e-mail.
A Response was received on June 2, 2006 and determined not to be
complete pursuant to Rule #5(a), because it was received after the deadline for
response and was not in hard copy form.
The Panel has chosen to not consider this Response in its Decision.
Without an adequate timely filed response, all reasonable inferences of fact in
allegations of the Complainant will be taken as true. See S. Exposure v. S. Exposure, Inc., FA 94864
(Nat. Arb. Forum July 18, 2000).
On June 6, 2006, an Additional
Submission was received from Complainant.
The submission was received in a timely manner according to The Forum’s
Supplemental Rule 7.
An Additional Submission was submitted by Respondent on June 15, 2006
and was determined to be deficient. The
Panel has chosen not to consider this Additional Submission in its Decision.
On June 7, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jonas Gulliksson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant has stated the
following in its Complaint.
This Complaint is based on the
following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] The first element that must be proven in a UDRP is that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights. ICANN Policy ¶ 4(a)(i). Complainant proves this first element, as follows.
Complainant, VICORP Restaurants, Inc., is the owner of seven federal trademark registrations incorporating the mark “BAKERS SQUARE”.
Complainant has been using the mark "BAKERS SQUARE" in connection with restaurant services, pastries, and bakery goods for consumption on or off the BAKERS SQUARE premises since 1983.
Complainant operates or franchises approximately 150 BAKERS SQUARE restaurants throughout the United States. See Exhibit B. In 2004, Complainant had revenues of approximately $217,685,424 from their BAKERS SQUARE restaurants and spent approximately $4,164,642 on television, print, and radio advertising for its restaurant services advertising the BAKERS SQUARE brands. In 2005, Complainant had revenues of approximately $213,082,203 from their BAKERS SQUARE restaurants and spent approximately $3,987,446 on television, print, and radio advertising for its restaurant services advertising the BAKERS SQUARE brands.
The domain name bakerssquare.com is virtually identical and confusingly similar to the trademark and service mark “BAKERS SQUARE” in which the Complainant has rights, under ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i), because the domain name incorporates Complainant’s entire mark. As will be discussed below, Respondent’s removal of a space between “BAKERS” and “SQUARE” and addition of the top level domain (TLD) “.com” do not distinguish the domain name from Complainant’s registered trademark.
With regard to the removal of the space between the words “BAKERS” and “SQUARE” in the domain name, “[t]he removal of spaces between the words of a mark does not differentiate the domain name because spaces are impermissible in domain names.” See Daddy’s Junky Music Stores, Inc. v. Amjad Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003). Accordingly, the lack of a space between the words “BAKERS” and “SQUARE” in Respondent’s domain name <bakerssquare.com> does not differentiate Complainant’s mark and the domain name in any meaningful way.
Also, “[t]he addition of a top-level domain adds no distinct characteristics because top-level domains are a required feature of every domain name.” See Daddy’s Junky Music Stores, Inc. v. Amjad Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003); see also Pomellato S.p.A. v. Tonnetti, D2000-0493 (WIPO July 7, 2000) (the generic top-level domain “.com” after the name POMELLATO was found not to be relevant). Accordingly, the addition of “.com” to bakerssquare.com does not add a distinctive characteristic to Respondent’s domain name.
In conclusion, even though the domain name <bakerssquare.com> lacks a space between the words “BAKERS” and “SQUARE” and includes the generic top-level domain “.com”, the domain name <bakerssquare.com> is virtually identical and confusingly similar to Complainant’s registered trademark “BAKERS SQUARE”, and thus meets the first element under ICANN Policy ¶ 4(a)(i).
[b.] The second element that must be proven in a UDRP is that the domain name holder has no rights or legitimate interests in respect of the domain name. ICANN Policy ¶ 4(a)(ii). Complainant proves this second element, as follows.
(i.) Respondent is not commonly known by the domain name, under
ICANN Policy ¶ 4(c).
The WHOIS record for the domain name is attached as Exhibit D. This domain name is registered to Arden Bohanec.
There is nothing in the WHOIS record that indicates that Respondent is
commonly known by “BAKERS” and/or “SQUARE”.
In addition, “merely registering the domain name is not sufficient to
establish rights or legitimate interests.”
See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci,
D2000-1244 (WIPO Nov. 11, 2000). Complainant
further notes that there is no relationship between the parties giving rise to
any license, permission, or other right by which the Respondent could own or
use any domain name incorporating Complainant’s mark.
(ii.) Before any notice to the Respondent of the dispute, Respondent’s use of the domain name was not in connection with a bona fide offering of goods or services, under ICANN Policy ¶ 4(c)(i).
Respondent has not developed the web site for <bakerssquare.com>, which shows that the use of the domain name is not in connection with a bona fide offering of goods or services. See Exhibit E for a print out of current content of the <bakerssquare.com> web page, dated April 18, 2006, which shows on the page "This domain has just been registered for one of our customers! Domain registration and webhosting at best prices." Also attached for reference are print outs of prior content of the <bakerssquare.com> web page from February 3, 2005 (Exhibit F), February 4, 2005 (Exhibit G) and March 8, 2005 (Exhibit H), downloaded from <archive.org>, an archival service offering downloads of past content from web pages. These three archived sites from February and March 2005 also show on the pages "This domain name has just been registered for one of our customers!" which further shows that Respondent has failed to develop the web site, dating back to more than 1 year. Further, the WHOIS record for the domain name (Exhibit D) shows that the domain name registration was created on March 3, 1999. Since Respondent has failed to develop the web site, Respondent’s use of the domain name is not in connection with a bona fide offering of goods or services. See Dollar Financial Group, Inc. v. Mobile Internet Technologies, LLC, FA 363953 (Nat. Arb. Forum Dec. 28, 2004) ("Respondent has not made any use of the domain name since registering it in May 2004 [seven months prior to decision of UDRP]. Passive holding is not considered a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). . . .”) (citing Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name)); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).
(iii.) Respondent is not making a legitimate noncommercial or fair use of the domain name, under ICANN Policy ¶ 4(c)(iii).
Respondent has not developed the web site for <bakerssquare.com> since its registration. Since Respondent has failed to develop the web site, Respondent is not making a legitimate noncommercial or fair use of the domain name. See Dollar Financial Group, Inc. v. Mobile Internet Technologies, LLC, FA0411000363953 (Nat. Arb. Forum Dec. 28, 2004) ("Respondent has not made any use of the domain name since registering it in May 2004 [seven months prior to decision of UDRP]. Passive holding is not considered a . . . a legitimate noncommercial or fair use of the domain name pursuant to Policy 4(c)(iii).")
In conclusion, Respondent’s use of the domain name is not in connection with a bona fide offering of goods or services, Respondent is not commonly known by the domain name and Respondent is not making a legitimate noncommercial or fair use of the domain name. Accordingly, Complainant has proven that Respondent has no rights or legitimate interests in respect of the domain name under ICANN Policy ¶ 4(a)(ii).
Finally, Complainant notes that if the owner of the domain name fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the disputed domain name. See Mattel, Inc. v. RaveClub Berlin, FA 106115 (Nat. Arb. Forum May 8, 2002) (citing 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). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when “the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue.” (Emphasis in original).
[c.] The third element that must be proven in a UDRP is that the domain name has been registered and is being used in bad faith by Respondent. ICANN Policy 4(a)(iii). Complainant proves this third element, as follows.
(i.) “Registration of a domain name that is confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).” See Hugh Jackman v. Peter Sun, FA 248716 (Nat. Arb. Forum May 10, 2004); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Mr. Clive Davis v. Michael Spicer, FA 133761 (Nat. Arb. Forum Dec. 31, 2002) (“At the time of registration of the disputed domain names, Respondent knew, or should have known, of Complainant’s famous name and mark. Since the disputed domain names are identical to Complainant’s name and mark, Respondent must have registered the domain names in bad faith by intentionally trying to infringe on Complainant’s mark.”).
As shown in the WHOIS record for
the domain name, this name was registered on March 3, 1999. Six of the seven federal registrations
containing the mark "BAKERS SQUARE" owned by Complainant were filed
and registered prior to March 3, 1999. Since
there is no question that the domain name was registered after Complainant's
registration of its mark with the U.S. Patent and Trademark Office, this is
evidence of Respondent's bad faith registration and use of the domain name. See Printingforless.com v. Printing
Source Inc., FA 616764 (Nat. Arb. Forum Feb. 8 2006) ("[T]he Panel finds that Respondent’s registration of the
<printing-for-less.com> domain name, incorporating Complainant’s mark,
after Complainant’s registration of its mark with the USPTO 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 Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Victoria’s Cyber Secret Ltd. v. V Secret
Catalogue, Inc., 161 F.Supp.2d 1339, 1349
(S.D. Fla. 2001) (noting that “a Principal Register registration [of a
trademark or service mark] is constructive notice of a claim of ownership so as
to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. §
1072)."
Previous panels have found that it is “inconceivable” that Respondents can be unaware of well-known and federally registered marks, and have found bad faith upon registration and use of infringing domain names. For example, in Williams-Sonoma Inc. v. Polanski, D2001-0236 (WIPO April 5, 2001), the Panel held that in view of Williams-Sonoma Inc.’s various trademark registrations, the distinctiveness of the mark, and its long and extensive use, it was “inconceivable that Respondent chose this domain name, which is virtually identical to Complainant’s inherently distinctive and highly publicized WILLIAMS-SONOMA mark, without prior knowledge of such mark. This evidences that Respondent registered william-sonoma.com in bad faith.” Id.
The facts in the present case correspond closely to the facts in Williams-Sonoma. Complainant holds seven trademark registrations that include the mark BAKERS SQUARE, including six that predate the registration of this domain name and Complainant has long-standing use and advertising of these marks. Therefore, under Williams-Sonoma, Respondent chose the domain name <bakerssquare.com> with prior knowledge of Complainant’s mark and as such, evidences bad faith.
Further, Complainant notes that five of its BAKERS SQUARE restaurants are located within 40 miles of Respondent's zip code 92591, information regarding which is enclosed as Exhibit I. Therefore, not only was Respondent constructively aware of Complainant's rights in BAKERS SQUARE in view of Complainant's trademarks registrations for the mark, but also Respondent was likely actually aware of Complainant's BAKERS SQUARE restaurants when the domain name was registered, in view of the close proximity of the restaurants to Respondent.
Thus, Complainant has shown that Respondent was either actually aware or constructively aware of the registered trademark BAKERS SQUARE and/or the BAKERS SQUARE restaurants, and the registration of <bakerssquare.com> has been shown to be in bad faith.
(ii.) Respondent’s lack of development of a web site constitutes bad faith use and registration under ICANN Policy ¶ 4(a)(iii). “The [evidence of bad faith] list of circumstances set forth in ICANN Policy ¶ 4(b) which, if found, can constitute registration and/or use in bad faith, is not exclusive.” See AltaVista Company v. Astavista.com, FA 95251 (Nat. Arb. Forum Aug. 17, 2000).
Panels have consistently found that a respondent’s passive holding of a web site incorporating a trademark of a third party is evidence that the domain name was registered and used in bad faith:
1. Megatrax Production Music, Inc. v. Fulltone, FA 649297
(Nat. Arb. Forum Apr. 12, 2006) (“The
Panel finds that Respondent registered the <megatracks.com> domain name
in bad faith, because Respondent has made no use of the domain name since
registering it in December 1999 and has not provided evidence of demonstrable
preparations to use the domain name.”).
2. Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
3. BCR, Inc v. None, FA 615308 (Nat. Arb. Forum Feb. 14, 2006) ("[T]he passive holding of a valuable trademark . . . constitutes bad faith. This is not one of the enumerated bad faith grounds under ¶ 4(b)(i-iv) of the Policy, but Rule 15(a) of the Rules gives the Panel the authority to find additional grounds for bad faith when appropriate, and this particular ground is widely known and accepted in Policy decisions.").
4. Gary L. Pifer v. Stenzel, FA 588409 (Nat. Arb. Forum Dec. 27, 2005) ("The Panel finds that Respondent has registered the <colchester.com> domain name in bad faith because Respondent has made no use of the domain name since it registered the domain name in 1999.").
5. DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of 4(a)(iii) of the Policy).
6. Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith”).
Even if Respondent were to submit evidence of plans to develop the <bakerssquare.com> site, the fact that the web site has not been developed is sufficient evidence of bad faith registration and use of the domain name. “[W]ith the widespread use of relatively simple modern web site development tools it is hard to believe that at least some steps could not have been taken to at least initiate the project [of developing the passive web site <danielboulud.com>] within a year.” The Dinex Group, LLC v. Undici Design, FA 231668 (Nat. Arb. Forum March 24, 2004) (bad faith use and registration found of domain name <danielboulud.com>, incorporating the famous chef Daniel Boulud’s name, in view of the lack of development of the site, despite Respondent’s assertions that it intended to create a blog to post reviews of Daniel Boulud’s restaurants). See Kevin Garnett v. Trap Block Technologies, FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (“[G]iven the strength and fame of the KEVIN GARNETT trademark, it is difficult to conceive of any plausible active use of the domain name that would not be illegitimate. Any use by Respondent of the domain name <kevingarnett.com>, which is identical to Complainant’s name, would at least create ‘initial interest confusion’ as to the sponsorship, affiliation or endorsement by Complainant of Respondent’s website.”).
As a final matter, Respondent has not responded to attempts by Complainant’s attorneys to contact Respondent at the contact information listed in the WHOIS record. See Exhibit J for correspondence. The Panel in V&S Vin&Sprit v. Ducos, D2003-0301 (WIPO June 1, 2003) held that failure on the part of Respondent to respond to Complainant’s legal advisors and file a Response to a Complaint is a factor that adds weight to a conclusion that that there was no good faith reason for the registration. Here, the Panel should consider such lack of response to be further evidence of bad faith.
In sum, Complainant has proven
that (1) the domain name <bakerssquare.com> is virtually identical
and confusingly similar to registered trademarks owned by Complainant; (2)
Respondent has no rights or legitimate interests in the domain name; and (3) the
domain name was registered and is being used in bad faith.
B. Respondent
The Panel has chosen to not consider the late Response and Additional
Submission, see above.
C. Additional Submissions
The Complainant has filed a timely Additional Submission in response to
the Respondent’s Response. Since the Panel has decided to not consider the late
Response, the Additional Submission filed by the Complainant will not be
referred to below.
DISCUSSION & FINDINGS
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 Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 shown that it is the proprietor of numerous trademark registrations with the United States Patent and Trademark Office for the BAKERS SQUARE mark. According to the Panelist, these registrations, as well as Complainant’s continuous use of the mark in commerce, demonstrate Complainant’s rights in the BAKERS SQUARE mark for purposes of Policy ¶ 4(a)(i).
The Panelist further finds that the <bakerssquare.com>
domain name is confusingly similar to Complainant’s mark, since the domain name
fully incorporates Complainant’s mark, eliminates the space between words and
adds the generic top-level domain (“gTLD”) “.com.” The mere elimination of a space and the addition of a gTLD do not
sufficiently distinguish Respondent’s <bakerssquare.com> domain
name from Complainant’s mark, thus rendering the domain name identical to the
mark pursuant to Policy ¶ 4(a)(i). See
Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001)
(finding that the <bodybyvictoria.com> domain name is identical to the
complainant’s BODY BY VICTORIA mark); see also Croatia Airlines v. Kwen
Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is
identical to the complainant's CROATIA AIRLINES trademark).
As held by Complainant the Panelist finds that Complainant has prior rights in the trademark BAKERS SQUARE, which precede Respondent’s registration of the domain name <bakerssquare.com>. Respondent is not a licensee of Complainant, and Respondent has not received permission or consent from Complainant to use the trademark. Furthermore, it has not been shown that Respondent has been commonly known by the domain name in question.
In the Panelists’s opinion, Respondent’s
failure to use the disputed domain name for over seven years amounts to passive
holding, which is not a bona fide offering of goods or services pursuant to
Policy 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy
4(c)(iii). See Bloomberg L.P. v. SC Media Services and Information SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent
is wholly appropriating Complainant’s mark and is not using the
<bloomberg.ro> domain name in connection with an active website. The Panel finds that the passive holding of
a domain name that is identical to Complainant’s mark is not a bona fide
offering of goods or services pursuant to Policy 4(c)(i) and it is not a
legitimate noncommercial or fair use of the domain name pursuant to Policy 4(c)(iii).”); see also Hewlett-Packard
Co. v. Shemesh, FA 434145 (Nat.
Arb. Forum Apr. 20, 2005) (finding that passive holding of a domain name that
is identical to a complainant’s mark is not 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)).
Even though Respondent has not violated any of the factors listed in Policy 4(b), the Panel still finds that, based on the totality of the circumstances, Respondent’s registration and use of the <bakerssquare.com> domain name constitutes bad faith under Policy 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Respondent’s <bakerssquare.com> domain name has never resolved to any content and thus this provides evidence that Respondent is passively holding the disputed domain name. The Panel finds that Respondent’s non-use of the disputed domain name since its registration seven years ago constitutes bad faith registration and use pursuant to Policy 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bakerssquare.com>
domain name be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: June 21, 2006
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