National Arbitration Forum

 

DECISION

 

American Culinary ChefsBest v. Vertical Axis, Inc c/o Domain Adminstrator

Claim Number: FA0705000991959

 

PARTIES

Complainant is American Culinary ChefsBest (“Complainant”), represented by Jerry T. Gulley, of American Culinary ChefsBest, Levi's Plaza, 1255 Battery Street, San Francisco, CA 94111.  Respondent is Vertical Axis, Inc c/o Domain Adminstrator (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, USA.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <chefsbest.com>, registered with Nameview, 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.

 

Hon. Carolyn M. Johnson, (Ret.), Diane Cabell, David P. Miranda, Chair, as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2007.

 

On June 13, 2007, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <chefsbest.com> domain name is registered with Nameview, Inc. and that the Respondent is the current registrant of the name.  Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 June 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 2007 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@chefsbest.com by e-mail.

 

On June 27, 2007, Respondent requested, pursuant to Supplemental Rule 6, an extension of 20 days to respond to the Complaint due to extenuating circumstances.  On June 27, 2007, the National Arbitration Forum, with Complainant’s consent, granted Respondent an extension and set a new deadline of July 23, 2007 for a filing of a Response.

 

A timely Response was received and determined to be complete on July 23, 2007.

 

On August 1, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Carolyn M. Johnson, (Ret.), Diane Cabell, David P. Miranda, Chair, as Panelists.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the owner of the registered trademark CHEFSBEST for services related to food and beverage products and services.  Registration No. 3,211,763, with a filing date of August 21,2003, and a registration date of February 20, 2007.  Complainant seeks transfer of the domain name <chefsbest.com> registered by Respondent on May 22, 2006.  Complainant contends that ChefsBest is an independent judging organization recogizing and honoring America’s best products.  Its award receives 60 million impressions per day, and is found on over 1500 products in retail outlets.  Complainant contends that the domain name is identical or confusingly similar to Complainant’s trademark.  Complainant contends that Respondent does not have any rights or legitmate interest in the disputed domain name and that Respondent is using the domain name to link to other sites which is not a bona fide offering of goods and services.  Respondent’s name is “Vertical Axis, Inc.” and is not commonly known by the name ChefsBest or <chefsbest.com>.  Complainant alleges bad faith based upon the fact that the registration of the disputed domain occurred after the filing of Complainant’s trademark, and that Respondent has been found to be in violation of the UDRP on at least two other occassions.

 

B. Respondent

Respondent does not contest the disputed domain is identical or confusingly similar to Complainant’s mark.  Respondent contends that it has used the domain name in connection with bona fide goods and services in the nature of pay-per-click ads.  Respondent contends that it registered the disputed domain because it incorporates the descriptive term “chef’s best,” and did not register the disputed domain with Complainant’s trademark in mind, had no knowledge of Complainant, its business, its website or trademarks when it registered the disputed domain.  Respondent contends that it did not register the disputed domain with the intent to sell to Complainant, disrupt Complainant’s business or to confuse consumers seeking to find Complainant’s website, and that Complainant has failed to meet its burden of proving bad faith registration and use.  Respondent contends a finding of bad faith is not required merely because Respondent has been found in violation of the UDRP on other occasions, and points out that there are many UDRP decisions which were decided in Respondent’s favor.

 

FINDINGS

The Panel finds that the domain registered by Respondent is identical or confusingly similar to a trademark or service mark to which Complainant has rights, and that Respondent has no rights or legitimate interests in the domain name.  The Panel finds that Complainant has failed to establish that the domain name was registered and is being used in bad faith in accordance with UDRP policy.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant registered the CHEFSBEST mark with the United States Patent and Trademark Office (“USPTO”).  The USPTO record for Registration Number 3,211,763 lists a filing date of August 21, 2003, and a registration date of February 20, 2007.  Respondent registered the <chefsbest.com> domain name on May 22, 2006.  Complainant’s rights in the CHEFSBEST mark predate Respondent’s registration of the disputed domain name, and Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i).  See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that a complainant’s rights in a registered trademark date back to the filing date); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (holding that the complainant established rights in the KISSES mark that predated the respondent’s registration of the disputed domain name because the complainant filed for a trademark registration for the mark before the respondent registered the disputed domain name, even though the USPTO did not issue the registration until after the respondent’s registration).

 

Respondent does not contest Complainant’s allegations with respect to this element of the Policy.

 

Rights or Legitimate Interests

 

Complainant maintains that nothing beyond the disputed domain name itself identifies Respondent as being commonly known by the <chefsbest.com> domain name.  The WHOIS registration information reveals Respondent to be “Vertical Axis, Inc c/o Domain Adminstrator.”  A majority of the Panel finds there is no evidence that Respondent or its products or services are commonly known by the domain name at issue and, therefore, Respondent cannot establish rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain n name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant asserts that Respondent has “populated the disputed domain with minimal content, specifically in the forms of links associated with the complainants ChefsBest mark.”  Respondent does not contend that it is known by the name, but rather is profiting from click-through fees it earns each time an Internet user clicks on one of these links.  The Panel does not consider such use to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.  A majority of the Panel finds Respondent has failed to establish rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii).  See eHealthInsurance Servs., Inc. v. Hasan, FA 982289 (Nat. Arb. Forum July 9, 2007) (concluding that the use of a confusingly similar domain name to operate a pay-per-click site, presumably for commercial gain, was 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)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent has been the subject of several previous UDRP proceedings in which panels have ordered the respondent to transfer domain names.  See Harvey Casino Resorts v. Vertical Axis, Inc., FA 117320 (Nat. Arb. Forum Oct. 10, 2002); see also MBNA Am. Bank, N.A. v. Vertical Axis, Inc., FA 133632 (Nat. Arb. Forum Jan. 6, 2003).  While this may be considered on the issue of bad faith, it is not sufficient to establish bad faith in this case as Respondent has provided evidence of numerous UDRP decisions in favor of Respondent.  See, e.g., Shoulderdoc Ltd. v. Vertical Axis, Inc., D2006-0625 (WIPO Sept. 8, 2006); Jet Marques v. Vertical Axis, Inc., D2006-0250 (WIPO May 26, 2006); Aquascape Designs, Inc. v Vertical Axis, Inc., FA 629622 (Nat. Arb. Forum Mar. 7, 2006); Intune Media Group LLC v. Vertical Axis, FA 385881 (Nat. Arb. Forum Mar. 2, 2005); Vernons Pools Ltd. v. Vertical Axis, Inc., D2003-0041 (WIPO Mar. 12, 2003); Proto Software, Inc. v. Vertical Axis, Inc., D2006-0905 (WIPO Oct. 10, 2006); JetDirect Aviation, LLC v. Vertical Axis, Inc., FA 953970 (Nat. Arb. Forum June 19, 2007).  The Panel may also consider these cases as evidence that Respondent is not engaged in a pattern of preventing trademark holders from registering domain names containing their marks in bad faith under Policy ¶ 4(b)(ii).  See Nursefinder, Inc. v. Vertical Axis, Inc., D2007-0417 (WIPO July 5, 2007) (holding that although some decisions have gone against the respondent, each case has to be decided on its own merits, and the respondent also had won several cases involving domain names comprised of generic terms or short strings of letters); see also Sustainable Forestry Mgmt. Ltd. v. SFM.com, D2002-0535 (WIPO Sept. 13, 2002) (“The Complainant has referred to various other Panel decisions which it says show that the Respondent has acted in bad faith with regard to domain names on other occasions. However, the Panel must deal with this case on its own merits, and we cannot take into account decisions made in other cases on the basis of different evidence and submissions.”); see also Minn. Mining & Mfg. Co. v. Overbey, D2001-0727 (WIPO Oct. 15, 2001) (finding that Policy ¶ 4(b)(ii) was inapplicable because the complainant already had registered and used a domain name containing its mark and thus, “the Panel does not find that [the complainant] has been deprived of its ability to register or use the mark as a domain name”).

 

Complainant further asserts that some of the links on Respondent’s website at the <chefsbest.com> domain name resolve to the websites of Complainant’s competitors.  Proof of such conduct causing disruption of Complainant’s business could amount to bad faith registration and use according to Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).  However, Complainant fails to submit sufficient proof to support its claim or to support a finding of bad faith.  Complainant has only submitted an allegation of bad faith in an unsigned Complaint without any supporting factual support or documentation sufficient to establish bad faith under the Policy ¶ 4(b).

 

Respondent asserts that it registered the <chefsbest.com> domain name when it expired in 2006 and that it did not have Complainant’s CHEFSBEST mark in mind.  Respondent further argues that it had no knowledge of Complainant when registering the disputed domain name.  Complainant has failed to establish that Respondent has violated any of the bad faith factors listed in Policy ¶ 4(b), or that Respondent has acted in bad faith in registration and use of this domain name.

 

DECISION

Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <chefsbest.com> domain name NOT BE TRANSFERRED at this time.

 

 

           

 

Hon. Carolyn M. Johnson, (Ret.), Diane Cabell, David P. Miranda, Chair, as Panelists
Dated: August 22, 2007

 

 

 

 

 

 

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