E-Brands Restaurants, LLC v.
Name Administration, Inc. (BVI)
Claim Number: FA0801001126047
PARTIES
Complainant is E-Brands Restaurants, LLC (“Complainant”), represented by Jon
M. Gibbs, 420 South Orange Avenue #1200, Orlando, FL 32801. Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John
Berryhill
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <timpano.com>, registered with Domain Name
Sales Corp.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Jeffrey M. Samuels and David
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 2, 2008; the
National Arbitration Forum received a hard copy of the Complaint on January 7, 2008.
On January 3, 2008, Domain Name Sales Corp. confirmed by e-mail to
the National Arbitration Forum that the <timpano.com> domain name is
registered with Domain Name Sales Corp.
and that the Respondent is the current registrant of the name. Domain Name
Sales Corp. has verified that Respondent is bound by the Domain Name Sales Corp. 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 January 14, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 4, 2008 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@timpano.com by e-mail.
A timely Response was received and determined to be complete on February 4, 2008.
On February 14, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Jeffrey M. Samuels and David
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain name, <timpano.com>, is identical to its federal service mark
registration and that the word “timpano” is an arbitrary term when applied to
restaurant, catering and bar services. Complainant asserts that the domain name,
<timpano.com>, was obtained to
attract users for commercial gain by creating a likelihood of confusion with
respect to Complainant’s mark and that no legitimate noncommercial or fair use
of the domain name, <timpano.com>,
is being made by Respondent.
B. Respondent
Respondent contends that Complainant’s registration is, in effect,
invalid for failing to disclose that “timpano” is a traditional Italian recipe
and that in the absence of a showing of use, the mark has been presumptively
abandoned. Respondent also contends that
the word “timpano” is a generic term for an Italian recipe. Still further, Respondent contends that it
has rights and legitimate interests in the domain name, <timpano.com>, as a suggestive term and that the registration
and use of the domain name, <timpano.com>,
is consistent with its business in providing directory services and is one of
numerous other generic, Italian food related domains that it owns. Respondent
also contends that the domain name, <timpano.com>,
was in use prior to registration of the TIMPANO trademark to Complainant and
that Respondent acquired the domain name when the original registration lapsed
with a legitimate belief that it was entitled to acquire the domain name, <timpano.com>.
FINDINGS
Complainant has failed to meet its burden
of proof to establish that the domain
name, <timpano.com>, was
registered and used in bad faith.
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.
Since the panel has found that the
Complainant has failed to meet its burden of proof to establish that the domain name, <timpano.com>, was registered and used in bad faith, this
element need not be evaluated.
Since the panel has found that the
Complainant has failed to meet its burden of proof to establish that the domain name, <timpano.com>, was registered and used in bad faith, this
element need not be evaluated.
The Panel finds that Complainant
failed to meet the burden of proof to establish bad faith registration and use
under Policy ¶ 4(a)(iii). See
Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA
406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to
establish that respondent registered and used the disputed domain name in bad
faith because mere assertions of bad faith are insufficient for a complainant
to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen
Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that
general allegations of bad faith without supporting facts or specific examples
do not supply a sufficient basis upon which the panel may conclude that the
respondent acted in bad faith).
Respondent contends that Complainant has not established that the <timpano.com> domain name was registered primarily for the purpose of disrupting the business of a competitor. In fact, Complainant has presented no evidence of any kind which would indicate that its business has been disrupted by Respondent’s use of the <timpano.com> domain name. The Panel finds that Complainant has failed to establish that Respondent has registered or used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine); see also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that the respondent registered and used the domain name in good faith “because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute”).
Respondent contends that it can
have no bad faith in registering a domain name consisting of a common
term. Moreover, Respondent contends that
the <timpano.com> domain name
consists primarily of the word “timpano,” which is the common name of an
Italian entrée and has provided evidence showing widespread use of the word
“timpano” in association with Italian foods.
No rebutting evidence has been provided by Complainant. The Panel finds
that Complainant has not established that Respondent has registered or used the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Vitello v. Castello, FA 159460
(Nat. Arb. Forum July 1, 2003) (“As to both registration and use, the generic
nature of the disputed domain name itself rebuts any allegation by Complainant
that Respondent registered or used the disputed domain name in bad faith.”); see
also Canned Foods, Inc. v. Ult. Search
Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that, where
the domain name is comprised of a generic term, it is difficult to conclude
that there was a deliberate attempt to confuse on behalf of the respondent, and
stating that “[i]t is precisely because generic words are incapable of
distinguishing one provider from another that trademark protection is denied
them”); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec.
8, 2003) (finding that because
the respondent was using the <highlife.com> domain name, a generic
phrase, in connection with a search engine, the respondent did not register and
was not using the disputed domain name in bad faith).
Respondent contends that it did not
have the required bad faith intent when Respondent registered the disputed
domain name. Respondent alleges that it
had intended to register a generic term associated with Italian recipes in
order to associate the domain name with relevant advertising and had no
knowledge of Complainant’s
business when it registered the <timpano.com>
domain name. Complainant has
provided nothing in the way of evidence that would demonstrate that
Respondent’s acquisition of a domain name that predated Complainant’s registration
of the TIMPANO trademark and for a use unrelated to its services and consistent
with Respondent’s demonstrated business model was in bad faith. Thus, the Panel
finds that Complainant has not established that Respondent has registered and
used the disputed domain name in bad faith pursuant to Policy ¶ (a)(iii). See MatchMaker Int'l Dev. Corp. v. Kaiser Dev.
Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) (Panelist David
Sorkin, dissenting) (“If Respondent registered the domain name for legitimate
purposes, or if it reasonably believed at the time of registration that those
purposes were legitimate, then the registration was not in bad faith.”).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <timpano.com> domain name be RETAINED
by Respondent.
David S. Safran , Chair
Jeffrey M. Samuels and David E. Sorkin, Panelists
Dated: February 28, 2008
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