Union Square Hospitality Group, LLC v. Blue Smoke Barbecue LLC c/o Michael French
Claim Number: FA0707001036200
Complainant is Union Square Hospitality Group, LLC (“Complainant”), represented by Larry
L. Saret, of Michael Best & Friedrich LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluesmokebbq.com>, registered with Register.com, Inc.
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 Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 16, 2007.
On July 17, 2007, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bluesmokebbq.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 July 24, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 13, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <bluesmokebbq.com> domain name is confusingly similar to Complainant’s BLUE SMOKE mark.
2. Respondent does not have any rights or legitimate interests in the <bluesmokebbq.com> domain name.
3. Respondent registered and used the <bluesmokebbq.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Union Square Hospitality Group, LLC, is a
nationwide distributor of barbecue food and services. Complainant owns a restaurant under its BLUE
SMOKE mark and also markets its products throughout the country, including
Respondent registered the <bluesmokebbq.com> domain name on November 18,
2004. Respondent’s disputed domain name
resolves to a website that displays information about Respondent’s barbecue
catering service, which operates in southern
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
The Panel finds that Complainant’s trademark registration
with the USPTO sufficiently establishes Complainant’s rights in the BLUE SMOKE
mark pursuant to Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
The Panel finds that Respondent’s <bluesmokebbq.com> domain name is confusingly similar to Complainant’s BLUE
SMOKE mark under Policy ¶ 4(a)(i), in that it contains Complainant’s entire
mark and merely eliminates the space between the terms and adds the generic
term “bbq” to the end of the term, which bears an obvious relationship to
Complainant’s business, as Complainant markets barbecue food and services. Furthermore, the addition of the generic
top-level domain name “.com” does nothing to alleviate the confusing
similarity, as a top-level domain is a requirement for all domain names. See Mrs.
World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr.
24, 2000) (finding that punctuation is not significant in determining the
similarity of a domain name and mark); see
Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first establish that Respondent lacks rights or legitimate interests with respect to the <bluesmokebbq.com> domain name. However, once Complainant makes a prima facie case, the burden of proof shifts, and Respondent must prove it has rights or legitimate interests in the disputed domain name. In the case at hand, the Panel finds that a prima facie case has been established pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Based on Respondent’s failure to respond, it can be presumed that Respondent lacks all rights and legitimate interests in the <bluesmokebbq.com> domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent’s <bluesmokebbq.com> domain name resolves to a website that displays information for Respondent’s barbecue catering service. The Panel presumes that Respondent is benefitting commercially from this website, by offering goods and services in direct competition with Complainant. Use such as this does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”) Thus, the Panel finds that Respondent’s used of the disputed domain name does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has alleged that Respondent is not commonly known by the disputed domain name and is neither licensed nor authorized to use the BLUE SMOKE mark. Because Respondent has not provided any evidence to the contrary, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because Respondent’s website provides similar services
through its <bluesmokebbq.com> domain name as Complainant, the Panel finds that such
use is a disruption of Complianant’s business.
Therefore, Respondent’s use of the disputed domain name is evidence of
bad faith pursuant to Policy ¶ 4(b)(iii).
See Gen. Media Commc’ns, Inc. v. Vine Ent.,
FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor
of the complainant registered and used a domain name confusingly similar to the
complainant’s PENTHOUSE mark to host a pornographic web site); see also
Respondent is using the <bluesmokebbq.com> domain name to attract Internet users to its website,
presumably for commercial gain.
Respondent is therefore taking advantage of the likelihood that users
will confuse the disputed domain name as being affiliated with Complainant and
its BLUE SMOKE mark. This indicates that
Respondent registered and is using the <bluesmokebbq.com> domain
name in bad faith pursuant to Policy ¶ 4(b)(iv).
Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bluesmokebbq.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 24, 2007
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