Al Cantina, Inc. v. Steve Hart
Claim Number: FA0708001067477
Complainant is Al Cantina, Inc. (“Complainant”), represented by Bridget
C. Heffernan, of Allen, Dyer, Doppelt, Milbrath &
Gilchrist, P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lacantinasteakhouse.com>, registered with Namesecure.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 23, 2007.
On August 24, 2007, Namesecure.com confirmed by e-mail to the National Arbitration Forum that the <lacantinasteakhouse.com> domain name is registered with Namesecure.com and that Respondent is the current registrant of the name. Namesecure.com has verified that Respondent is bound by the Namesecure.com 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 August 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 18, 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@lacantinasteakhouse.com by e-mail.
On September 12, 2007, the Parties submitted a Joint Motion to Stay the Administrative Proceeding for forty-five (45) days until October 27, 2007. The National Arbitration Forum granted the Parties request on September 13, 2007.
On October 26, 2007, Complainant submitted a Motion to Resume the Administrative Proceeding. The National Arbitration Forum granted the request on October 29, 2007, setting a new deadline of November 5, 2007 by which Respondent could file a response to the Complaint.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <lacantinasteakhouse.com> domain name is confusingly similar to Complainant’s LINDA’S LA CANTINA STEAKHOUSE mark.
2. Respondent does not have any rights or legitimate interests in the <lacantinasteakhouse.com> domain name.
3. Respondent registered and used the <lacantinasteakhouse.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Al Cantina, Inc.,
has operated restaurant services in
Respondent, Steve Hart, registered the <lacantinasteakhouse.com> domain name on July 19, 2007. That same day, Respondent contacted Complainant and offered to sell the disputed domain name for $100. Respondent knew of Complainant’s business operated under the LINDA’S LA CANTINA STEAKHOUSE mark because Respondent is the step-son of Complainant’s Vice President, Karen Hart. The website located at the disputed domain name contains hyperlinks to the third-party websites of Complainant’s competitors. Respondent also contacted Complainant on August 10, 2007 informing Complainant that he purchased the disputed domain name from “tom.” Respondent demanded $325 for the disputed domain name that Complainant allegedly owed to “tom” “for the sites last three years.” The Respondent also threatened to post the “story of how I was treated” on the website located at the disputed domain name.
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.
Complainant is not required to hold an official registration of the LINDA’S LA CANTINA STEAKHOUSE mark with a government agency to establish rights under Policy ¶ 4(a)(i). See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); see Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Through continuous and extensive use of the LINDA’S LA CANTINA STEAKHOUSE mark dating back to 1988, Complainant has sufficiently established common law rights in the mark. Complainant has continuously been featured in print and online media and has advertised and operated under the mark for almost twenty years. The Panel finds that Complainant’s LINDA’S LA CANTINA STEAKHOUSE mark has acquired secondary meaning under Policy ¶ 4(a)(i) sufficient to establish common law rights in the mark dating from 1988. See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
The <lacantinasteakhouse.com>
domain name simply removes the word “Linda’s” from Complainant’s mark and
appends the mark with the generic top-level domain (“gTLD”) “.com.” These edits are insufficient to distinguish
the disputed domain name from Complainant’s mark. Accordingly, the Panel finds the disputed
domain name confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb.
Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is
confusingly similar to the complainant’s mark, where the complainant holds the
WEST JET AIR CENTER mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to the
complainant’s ASPREY & GARRARD and MISS ASPREY marks).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds that Complainant’s assertion that Respondent lacks such rights and interests sufficiently meet Policy ¶ 4(a)(ii)’s requirement and shift the burden to Respondent to show that rights or legitimate interests exist. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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).”).
Respondent did not submit a Response in this dispute. The Panel finds that Respondent’s lack of
response permits the presumption that Respondent holds no rights or legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it
is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”); see also Bank of Am. Corp. v. McCall, FA
135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”). The Panel is
required to make no further analysis, but will now examine the evidence to
determine if Respondent holds right or legitimate interests in the disputed
domain name under Policy ¶ 4(c).
The Panel concludes that Respondent has no rights or
legitimate interests under Policy ¶ 4(c)(ii) as
nothing in the record, including the WHOIS information, indicates that
Respondent, “Steve Hart,” is commonly known by
the <lacantinasteakhouse.com> domain name. See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Am. Online, Inc. v. World
Photo Video & Imaging Corp., FA
109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not
commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as
“Sunset Camera” and “World Photo Video & Imaging Corp.”).
Further, Respondent’s use of the disputed domain name to display hyperlinks to the third-party websites of Complainant’s competitors is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Therefore, the Panel finds that Respondent is also unable to establish rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is the
step-son of Complainant’s Vice President.
This familial relationship reasonably should have put the Respondent on
notice of Complainant’s right in the LINDA’S LA CANTINA
STEAKHOUSE mark. Further,
e-mails from the Respondent in regards to the disputed domain name indicate
that Respondent had actual knowledge of Complainant’s right in the mark and
that knowledge served as the motivation for Respondent’s registration and use
of the disputed domain name. The Panel
finds Respondent’s registration and use of the disputed domain name indicative
of bad faith registration and use Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
As is illustrated by e-mail correspondence, Respondent’s
motivation in registering and using the disputed domain name was to sell it to
Complainant, first for $100, then for $325, allegedly to recuperate three years
of site expenses for “tom.” Respondent also
threatened to post the “story of how I was treated” on the website located at
the disputed domain name, implying that negative content would be posted at the
website if Complainant failed to purchase the disputed domain name from
Respondent. The Panel concludes that
Respondent’s registration and use of the disputed domain name solely to sell it
to Complainant and employment of blackmail tactics to force the Complainant’s
purchase is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See
Respondent,
aware of Complainant’s business operated under its mark, located a website at
the disputed domain name which diverts Internet users to the websites of
Complainant’s competitors including Outback Steakhouse and BOA Steakhouse. Respondent registered and is using the
disputed domain to disrupt Complainant’s business by diverting Internet users
seeking Complainant’s services to those of Complainant’s competitors. The Panel finds that Respondent’s
registration and use of the disputed domain is illustrative of bad faith under Policy ¶ 4(b)(iii). See
Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003)
(“Respondent registered a domain name confusingly similar to Complainant's mark
to divert Internet users to a competitor's website. It is a reasonable
inference that Respondent's purpose of registration and use was to either
disrupt or create confusion for Complainant's business in bad faith pursuant to
Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
As
Respondent had actual knowledge of Complainant’s rights in the LINDA’S
LA CANTINA STEAKHOUSE mark, Respondent’s subsequent registration and use of the
disputed domain name was intended to attract Internet users for commercial
gain, confusing them as to Complainant’s affiliation with the disputed domain
name. The Panel finds this as further
evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); State Bar of Cal. v. eWebNation.com, Inc., FA 97137 (Nat. Arb. Forum June 14, 2001)
(given that the respondent is an attorney and was well aware of the complainant
and its rights before establishing its own website, an inference can be made
that the respondent sought to trade on confusion with the California State Bar
and exploit its reputation and stature).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lacantinasteakhouse.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 19, 2007
National
Arbitration Forum
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