Golden Corral
Corporation v. NicGod Domain Services aka
For Sale
Claim Number: FA0111000102621
PARTIES
Complainant is Golden Corral Corporation, Raleigh, NC (“Complainant”) represented by Bruce A. McDonald, of Wiley, Rein & Fielding LLP. Respondent is NicGod Domain Services aka For Sale, Kaluga, RUSSIA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <goldencorralrest.com>, registered with Dotster.
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 28, 2001; the Forum received a hard copy of the Complaint on November 30, 2001.
On November 29, 2001, Dotster confirmed by e-mail to the Forum that the domain name <goldencorralrest.com> is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 December 3, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 2001 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@goldencorralrest.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On January 2, 2002 , pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The <goldencorralrest.com> domain name is confusingly similar to Complainant's GOLDEN CORRAL mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response.
FINDINGS
Since 1973, Complainant has used the GOLDEN CORRAL mark in commerce in association with its family steak and buffet restaurants. There are approximately 450 GOLDEN CORRAL restaurants in 38 states of the United States. Complainant owns five United States Service Mark Registrations for the GOLDEN CORRAL mark.
Until November 15, 2001, Complainant held registration for the disputed domain name <goldencorralrest.com>, when its registration lapsed, Complainant was not able to renew before Respondent registered it the very same day. Complainant has invested substantial sums of money to promote the goodwill and family atmosphere associated with its GOLDEN CORRAL mark.
Respondent registered the disputed domain name on November 15, 2001. Respondent is using the disputed domain name to post pornography. Respondent also put the disputed domain name up for sale immediately. Respondent's address, name and registration information have lead Complainant to believe he is a known cybersquatter that engages in a pattern of registering infringing domain names.
DISCUSSION
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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.
Identical and/or
Confusingly Similar
Complainant through
continuous use and registration has established that it has rights in the
GOLDEN CORRAL mark. Furthermore,
Respondent's <goldencorralrest.com> domain name is confusingly
similar to Complainant's mark because it incorporates the entirety of
Complainant's mark and merely adds "rest" an abbreviation of the word
restaurant. Complainant owns
restaurants and therefore Internet users are likely to associate the
abbreviation with Complainant. It has
been found that the addition of a generic word associated with Complainant's
business is not enough to create a distinct mark capable of overcoming a claim
of confusing similarity. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the Complainant combined with a generic
word or term); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001)
(finding that the <hoylecasino.net> domain name is confusingly similar to
Complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which Complainant is engaged, does not take
the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4 (a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent registered the disputed domain
name after Complainant inadvertently let its own registration lapse. It can be inferred that the Respondent had
knowledge that the disputed domain name previously was held by Complainant, and
therefore, that Internet use confusion would result from Respondent's use. See American Anti-Vivisection Soc’y v. “Infa dot
Net” Web Serv., FA 95685 (Nat.
Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the
same domain name is a factor in considering Respondent’s rights or legitimate
interest in the domain name).
Respondent's use of a confusingly similar domain name for sexually explicit material is not considered a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <goldencorralrest.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Complainant asserts that Respondent registered the disputed domain name in order to sell it and therefore is not using the domain in connection with a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent has linked the confusingly similar <goldencorralrest.com> domain name to an adult content website. This conduct is evidence of bad faith under Policy ¶ 4(b)(iv). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”).
It can be inferred from the circumstances that Respondent registered the disputed domain name to sell it for profit. According to Policy 4(b)(i) Respondent exhibits bad faith if circumstances indicate that it has registered the disputed domain name primarily for the purpose of selling or renting. See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Cruzeiro Licenciamentos Ltda v. Sallen & Sallen Enter., D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the fact that the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”).
Respondent has engaged in a pattern of registering domain names infringing upon the marks of others; it has been found that a pattern of such conduct is evidence of bad faith. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <goldencorralrest.com> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 7, 2002
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