Galaxy Catering, Inc. d/b/a Big Texan Steak Ranch v. Whois Privacy Protection Service, Inc. / Whois Agent
Claim Number: FA1309001518824
Complainant is Galaxy Catering, Inc. Big Texan Steak Ranch (“Complainant”), represented by Chris Stewart of Burdett, Morgan, Williamson & Boykin, LLP, Texas, USA. Respondent is Whois Privacy Protection Service, Inc. / Whois Agent (“Respondent”), represented by Allison R. Imber of Allen, Dyer, Doppelt, Milbraith & Gilchrist, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thebigtexan.com>, registered with eNom, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2013; the National Arbitration Forum received payment on September 10, 2013.
On September 10, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <thebigtexan.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thebigtexan.com. Also on September 12, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A Response was received and determined to be deficient on October 8, 2013, because Respondent failed to separate the Response from the Response Annexes as required under the Forum’s Supplemental Rule 5(c)(i).
Respondent submitted additional correspondence to the Forum on October 8, 2013, but both of the received documents were not found to constitute a complete and sufficient Response.
On October 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In this proceeding Complainant is Galaxy Catering, Inc, a company specializing in catering and restaurant activities.
Complainant is the holder of the USPTO registered trademark THE BIG TEXAN n°2,608, 755 which was first used in commerce in January 1963. Complainant is also the holder of the USPTO registered trademark BIG TEXAN STEAK RANCH n°4,233,390, filed on March 7, 2012. In addition, Complainant is the owner of the domain name <bigtexan.com> registered on January 28, 1999.
Regarding the confusing similarity to Complainant’s trademark rights, Complainant finds that the domain name in dispute is confusingly similar to THE BIG TEXAN trademark and to the domain name <bigtexan.com>.
Complainant has not licensed or otherwise permitted Respondent to use its mark THE BIG TEXAN or any similar name thereto nor has it licensed or otherwise permitted Respondent to apply for or use any domain name incorporating its mark or any confusingly similar name. Moreover, Respondent’s business identity has never been known as “The Big Texan” and Respondent has never acquired trademarks or service marks in such name.
The Respondent is not currently using the domain name in connection with a bona fide offer of goods and services, nor is engaging in a legitimate noncommercial or fair use.
As for registration and use in bad faith, Complainant points out, among other things, that the Respondent attempted on the phone to sell the disputed domain name for an amount in excess of Respondent’s out-of-pocket costs. In addition, Respondent has intentionally attempted to attract Internet users for commercial gains by creating a likelihood of confusion as to the source of affiliation. Furthermore, Respondent has never properly addressed the cease and desist letter that he received from Complainant and the contact emails were changed to hide the fact that Respondent is a domain broker.
In the light of the above mentioned circumstances, Complainant believes that there can be no doubt as to whether the Respondent registered the disputed domain name in bad faith.
Moreover, Complainant asserts that Respondent used the domain name in bad faith because its aim was to divert Internet users to Complainant’s competitors and that this amounts to disruption of business.
B. Respondent
A Response was received and determined to be deficient on October 8, 2013, because Respondent failed to separate the Response from the Response Annexes as required under the Forum’s Supplemental Rule 5(c)(i).
C. Additional Submissions
Respondent submitted additional correspondence to the Forum on October 8, 2013, but both of the received documents were not found to constitute a complete and sufficient Response.
The Complainant owns in particular the registered trademark THE BIG TEXAN n°2,608, 755 which was first used in commerce in January 1963.
The disputed domain name was registered on September 9, 2000 by Respondent.
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.
Preliminary Issue: Deficient Response
On October 8, 2013, Respondent submitted a Response to this proceeding. The Forum determined that this Response was deficient because it failed to separate the pleadings of the formal Response from the Annexes/Exhibits attached thereto, as specifically required under the Forum’s Supplemental Rule 5(c)(i). Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, has decided not to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5).
Complainant states that it has registered its THE BIG TEXAN mark with the USPTO (Reg. No. 2,608,755 filed July 31, 2000; registered on August 20, 2002).
Previous panels have found that once a trademark has been used in commerce so as to warrant federal registration, such rights date back to the effective filing date of the registration. See, e.g., Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Thus the Panel agrees that Complainant’s trademark registration in itself dates Complainant’s Policy ¶ 4(a)(i) rights back to the July 31, 2000 filing date of the trademark with the USPTO. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Complainant argues that Respondent registered the <thebigtexan.com> domain name, which is identical to Complainant’s mark. The Panel notes that the domain name contains the element “thebigtexan” without the trademark’s spacing, and adds the generic top-level domain (“gTLD”) “.com.” The Panel agrees that as such, this domain name is in fact identical to the trademark THE BIG TEXAN under Policy ¶ 4(a)(i), as spacing is prohibited in domain names and some type of TLD is mandatory. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel notes that the parties do not dispute that Respondent registered the disputed domain name on September 9, 2000, almost 13 years prior to this proceeding. Further, it appears that the disputed domain name was at some point used in connection to the display of poems and song lyrics.
Accordingly, the Panel finds that the presumption in favor of Complainant upon satisfaction of the first element of the Policy can be rebutted since the domain name at issue does not appear to have caused any business disruption or confusion suffered by Complainant and by the fact of laches on the part of Complainant. It appears that Complainant would have taken action in a more timely fashion had the disputed domain name been seriously disruptive. In addition, if the Panel takes note that the restaurant “The Big Texan” seems to have been renowned at least in Texas since the years 2010, the data provided by Complainant doesn’t confirm that the said restaurant and the related trademarks were known when the disputed domain name was registered by Respondent in 2000. In addition, Complainant has not justified in its Complaint why it has waited 13 years to file a UDRP complaint against the disputed domain name. Last, the Panel has duly noted that Complainant alleges that Respondent orally declared that he doesn’t accept offers less than $1000. This financial offer is unfortunately not backed by any written evidence and the Panel wonders whether such request is really inappropriate when occurring 13 years after the registration of the disputed domain name.
Previous panels have found that the principles associated with the equitable doctrine of laches are applicable in situations such as the one described above. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defense in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”). See also The New York Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Nat. Arb. Forum Nov. 17, 2010) ( laches is “a valid defense in any domain dispute where the facts so warrant.” ); Prof’l Rodeo Cowboys Ass’n, Inc. v. Alternative Advertising Concepts, Inc. / Kenneth Forman, FA 1440736 (Nat. Arb. Forum June 26, 2012) (“The Panel also finds that the doctrine of laches should apply as a defense in this matter and thus further support the legitimacy of Respondents’ rights and interests in the disputed domain names.”); IDN, Inc. v. Name Administration Inc. (BVI), FA 1461862 (Nat. Arb. Forum Oct. 23, 2012).
Accordingly, the Panel finds that the Complaint must be dismissed and that it is unnecessary to examine the two other elements (Rights or Legitimate Interests of Respondent and Registration and Use in Bad Faith of the domain name) required under the ICANN Policy
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <thebigtexan.com> domain name remain with Respondent.
Nathalie Dreyfus, Panelist
Dated: October 22, 2013
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