Fum Machineworks Inc. v.
Plamen Tomov
Claim Number: FA0706000997922
PARTIES
Complainant is Fum Machineworks Inc. (“Complainant”), represented by Pallavi
Mehta Wahi, of Kirkpatrick & Lockhart Preston Gates
Ellis LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <recipezaar.biz> and <recipezaar.info>,
registered with Enom, Inc.
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.
David A. Einhorn appointed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 1, 2007; the
National Arbitration Forum received a hard copy of the Complaint on June 4, 2007.
On June 4, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <recipezaar.biz> and <recipezaar.info>
domain names are registered with Enom, Inc.
and that Respondent is the current registrant of the names. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 6, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 26, 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@recipezaar.biz and postmaster@recipezaar.info
by e-mail.
A timely Response was received and determined to be complete on June 25, 2007.
An Additional Submission by Complainant was received and determined to
be complete on July 2, 2007.
An Additional Submission by Respondent was received and determined to
be complete on July 3, 2007.
On July 5, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David A. Einhorn as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Complainant, Fum Machineworks Inc., owns a federal service mark registration for RECIPEZAAR for “computer services, namely providing online recipes, cooking instructions and grocery shopping lists in the field of food preparation.” (U.S. Registration No. 2,475,952, issued on August 7, 2001). Complainant further contends that Respondent’s <recipezaar.biz> and <recipezaar.info> domain names are confusingly similar to Complainant’s Mark.
2. Complainant contends that Respondent does not have any rights or legitimate interests in the <recipezaar.biz> and <recipezaar.info> domain names.
3. Complainant contends that Respondent registered and used the <recipezaar.biz> and <recipezaar.info> domain names in bad faith.
B. Respondent
Respondent states, in an unsigned and uncertified
response, that it has a pending trademark application in
C. Additional Submissions
In its Additional Submission, Complainant argues that even if Respondent could prove that it filed a trademark application, a pending application is not sufficient to establish rights or legitimate interests in a domain name.
In Respondent’s Additional Submission, Respondent adds no additional evidence or arguments.
FINDINGS AND 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 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;
(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.
Identical and/or Confusingly Similar
Complainant alleges that it has registered the RECIPEZAAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,475,952 issued August 7, 2001) in connection with computer services, including the posting of recipes, cooking instructions, and grocery shopping lists online. This sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Because the <recipezaar.biz> and <recipezaar.info> domain names contain Complainant’s entire RECIPEZAAR mark and only add different generic top-level domains, the Panel finds the disputed domain names to be identical to the mark according to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Therefore, Complainant has
satisfied ¶ 4(a)(i) of the Policy.
Rights or Legitimate Interests
Complainant alleges that Respondent is redirecting Internet users who enter the <recipezaar.biz> and <recipezaar.info> domain names to its own website at the <recipes.bgkuliner.net> domain name, which Complainant claims provides similar recipes and food services as Complainant does at its <recipezaar.com> domain name. Respondent does not contest that allegation. The Panel finds that Respondent’s diversion of Internet users to a competing website does not represent 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing travel reservation services does not fall within the parameters of 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)”).
Respondent alleges, without any
supporting evidence, that it has a pending trademark application in
Therefore, Complainant has
satisfied ¶ 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
Complainant asserts that Respondent
offered to sell the disputed domain name registrations to Complainant if
Complainant would make an offer for them.
Respondent does not deny that assertion.
The Panel finds that Respondent’s conduct is indicative of bad faith
registration and use according to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”); see also Little Six,
Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
the respondent's offer to sell the domain name at issue to the complainant was
evidence of bad faith).
Complainant alleges that the domain
names in dispute, <recipezaar.biz>
and <recipezaar.info>,
both resolve to a website in direct competition with Complainant. Respondent does not deny that assertion. The Panel finds that Respondent has
registered and is using these domain names in order to disrupt Complainant’s
business under the RECIPEZAAR mark, and that this conduct establishes bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan,
FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s
registration of a domain name substantially similar to Complainant’s AMERICAN
SINGLES mark in order to operate a competing online dating website supported a
finding that respondent registered and used the domain name to disrupt the
complainant’s business under Policy ¶ 4(b)(iii)); see also Marriott Int’l, Inc.
v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The
Respondent is a travel agency and thus operates in the same business as the
Complainant. The parties can therefore
be considered as competitors. The Panel
thus finds that the Respondent registered the domain name primarily for the
purpose of disrupting the business of a competitor, which constitutes evidence
of registration and use in bad faith under Policy [¶] 4(b)(iii).”).
Finally, this Panel also finds that by using the disputed domain names in a competitive manner, Respondent is taking advantage of the likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the websites at the disputed domain names and Complainant’s RECIPEZAAR mark. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
For the above reasons, Complainant
has satisfied ¶ 4(a)(iii) of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <recipezaar.biz> and <recipezaar.info>
domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 19, 2007
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