TELE PIZZA, S.A.U. v. Lukasz Dunikowski

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

The Complainant states: "Telepizza has not authorized the registrant to register or use its trademark as a domain name or otherwise. The disputed domain was registered to be sold as evinced in a screenshot of the webpage telepizza.menu where the phrase “HACER OFERTA. El dominio telepizza.menu está en venta” (“MAKE AN OFFER. The domain telepizza.menu is for sale”) appears. This links to another page where people can make their offers. The “listing price” is 199 GBP, more than five times higher than the registration price. The above clearly demonstrates the registrant has no legitimate right or interest in the disputed domain name." The examiner agrees and finds that the Respondent (who did not reply) has no rights or legimate interest in the disputed domain name.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

The Complainant states: "Registrant registered the disputed name on 19 March 2014 despite receiving notification that it matched a mark registered with the Trademark Clearinghouse. Registrant must have clicked on the notice of Acknowledge of Claim when presented with the Trademark Claims Notice to complete registration of the name. Furthermore, it is very likely that the registrant had constructive notice of the TELEPIZZA trademark, which is a famous well-known brand in Poland (http://www.telepizza.pl/), where Telepizza has 112 stores and is a leader in pizza take out and home delivery. There is even a Telepizza store 15 minutes away from the registrant’s address as it appears in the whois. Despite this, the registrant went ahead with the registration to profit from its later sale. In addition, while awaiting for the domain to be sold, the registrant is using SEDO’s sponsored parking link (also known as PPC Parking) --a form of parking that displays links which the domain owner associates to the disputed domain. Each time that a parked link page is visited, a commission is given to the owner of the domain. In this case the registrant has included links to different pizza restaurants (including Telepizza, which proves registrant’s knowledge of this trademark). Such use does not constitute a bona fide offering of goods or services and wrongfully misappropriates Telepizza’s mark’s goodwill." The examiner agrees and finds that the Respondent (who did not reply) registered and is using the disputed domain name in bad faith.

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

telepizza.menu

	Complainant Submitted: April 14, 2014
	Commencement: April 23, 2014
	Default Date: May 8, 2014
	Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

	Complainant: TELE PIZZA, S.A.U. of SAN SEBASTIAN DE LOS REYES (MADRID), Spain
	Complainant Representative: CORE Association of Geneva, Switzerland

	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 Examiner in this proceeding.
	Richard W. Hill, as Examiner

	Respondent: Lukasz Dunikowski of Krakow, malopolska, II, PL

	Registries: MENU Registry
	Registrars: GoDaddy