EMM Group Holdings LLC v. Robert Ferguson
Claim Number: FA2305002044468
Complainant is EMM Group Holdings LLC (“Complainant”), represented by Jason Paul Blair of Smith, Gambrell & Russell, LLP, District of Columbia, USA. Respondent is Robert Ferguson (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thecatchrestaurants.com>, registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on May 15, 2023. Forum received payment on May 15, 2023.
On May 15, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <thecatchrestaurants.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2023 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@thecatchrestaurants.com. Also on May 16, 2023, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, EMM Group Holdings LLC, has used the CATCH mark for seafood restaurant and catering services in New York, Los Angeles, Las Vegas, and Aspen. Complainant has rights in the CATCH mark both at common law and based upon registration with the United States Patent and Trademark Office (“USPTO”). Complainant has operated the website at “www.catchrestaurants.com” since 2015. Respondent’s <thecatchrestaurants.com> domain name is confusingly similar to Complainant’s CATCH mark and <catchrestaurants.com> domain name.
Respondent does not have rights or legitimate interests in the <thecatchrestaurants.com> domain name. Respondent is not licensed or authorized to use Complainant’s CATCH mark and is not commonly known by the domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass itself off as Complainant.
Respondent registered the <thecatchrestaurants.com> domain name in bad faith with constructive and/or actual knowledge of Complainant’s rights in the CATCH mark and uses it in bad faith to pass itself off as Complainant. The fact that Respondent uses an anchor design at the top banner of its website shows that Respondent is attempting to create an inference to Complainant’s U.S. Trademark Registration No. 4,078,228, which also contains an anchor design in proximity to the work CATCH.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights to the stylized CATCH mark, depicting an anchor design above the word CATCH, based upon registration with the USPTO (Reg. No. 4,078,228 registered on December 27, 2011 in Class 43 for restaurant, catering, and take-out restaurant services). Complainant has also shown that, by 2017, it had, through use, established common law trademark rights in the word CATCH in connection with restaurants (Exhibit D).
The Panel finds Respondent’s <thecatchrestaurants.com> domain name to be confusingly similar to Complainant’s common law and registered marks as it comprises the entirety of the common law mark CATCH, which is also the dominant feature of Complainant’s registered stylized mark, merely adding the generic terms “the” and “restaurants”, which are insufficient to distinguish the domain name from the marks. The inconsequential gTLD “.com” may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <thecatchrestaurants.com> domain name was registered on May 16, 2022, many years after Complainant established common law and registered rights in its CATCH marks and operated its “www.catchrestaurants” website. The <thecatchrestaurants.com> domain name resolves to a website displaying an anchor and the words “The Catch” in the header and promoting The Catch as “a fast casual seafood restaurant with numerous locations across Texas and Oklahoma”.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <thecatchrestaurants.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s CATCH marks and <catchrestaurants.com> domain name when Respondent registered the <thecatchrestaurants.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the goods and services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thecatchrestaurants.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: June 9, 2023
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