National Arbitration Forum
DECISION
West End Events LLC v.
Jerome Obinabo c/o amazuma.com
Claim Number: FA0709001072982
PARTIES
Complainant is West End Events LLC (“Complainant”), represented by Grant
A. Monachino, of Baker & Hostetler LLP, 3200
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tasteofdallas.com>, registered with Tlds, LLC d/b/a Srsplus.
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.
Hugues G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 31, 2007; the
National Arbitration Forum received a hard copy of the Complaint on September 4, 2007.
On September 5, 2007, Tlds, LLC d/b/a Srsplus confirmed by e-mail to
the National Arbitration Forum that the <tasteofdallas.com> domain
name is registered with Tlds, LLC d/b/a Srsplus
and that the Respondent is the current registrant of the name. Tlds, LLC
d/b/a Srsplus has verified that Respondent is bound by the Tlds, LLC d/b/a Srsplus 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 September 12, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 2, 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@tasteofdallas.com by
e-mail.
A timely Response was received and determined to be complete on October 2, 2007.
A timely Additional Submission from Complainant was received on October
8, 2007 in accordance with the Forum’s Supplemental Rule 7.
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges the following:
1- The Respondent’s <tasteofdallas.com>
domain name is confusingly similar to the complainant’s common law trademark.
2-The Respondent has no rights or legitimate interest in the <tasteofdallas.com>
domain name.
3- The Respondent registered the domain name in bad faith, in order to
redirect Internet users to a commercial website sponsored by the Respondent.
B. Respondent
1-The Respondent denies each of the Complainant’s allegations.
2- The Respondent claims:
·
That he
registers domain names in order to develop websites for legitimate business
purposes.
·
That the
<tasteofdallas.com>
domain name was registered in order to advertise restaurant and food services.
·
That the
Complainant does not have a registered trademark on the name,
therefore has no rights in the name.
·
That he
was not aware of the Complainant’s right in the name.
·
That the
domain name was registered in 1999 without resolving to an IP address until
October 2005
·
That the
Complainant did not register the <tasteofdallas.org> domain until 2001
·
That he
never received any cease and desist letter as alleged by the Complainant
C. Additional Submissions
The Complainant submits the following:
1-
Contrarily
to the Respondent’s assertions, established trademarks to not have to be
registered to be enforceable under the ICANN regime. TASTE OF DALLAS has become a distinctive
trademark even if not used as a company name, corporation name or assumed name.
2-
Under the
ICANN regime, the Complainant is not required to prove its allegations by a
preponderance of evidence. The Complainant needs only to make out a prima facie case that the Respondent has
no legitimate interest in the mark, and has done so.
3-
Respondent
is not known by the name TASTE OF DALLAS, nor is it affiliated to West end.
4-
The
registration of a domain name does not give the Respondent rights or a
legitimate interest in the domain name.
5-
The
Respondent alleges that he intends to use the domain name; however statements
of intended use do not prove legitimate interest in the name.
6-
The
Respondent registered the domain name eight years ago but has made no use of it
other than in 2005 to redirect traffic to one of his commercial websites.
7-
The
Respondent does not use the Domain Name for a bona fide offering of goods or services, or for noncommercial fair
use.
8-
The
Respondent uses the Domain Name to divert internet users interested in the
TASTE OF DALLAS festival to his commercial website.
9-
The
Respondent’s claim of lack of knowledge should fail, as the Respondent is a
resident of
10-
The
Respondent admits to wanting to create a website offering similar services to
those provided in association with the mark.
Such a use would create a false impression of association with the mark.
FINDINGS
The Complainant, a non-profit organization,
is the exclusive owner of the TASTE OF DALLAS trademark, which it uses in
connection with annual community festivals featuring music, food, games, and a
variety of activities.
The Complainant’s predecessor (West End
Association) began the use of the TASTE OF DALLAS mark in July 1986 in
connection with a festival located in the historical Dallas West-end district.
The Complainant and its predecessor have made
a widespread use of the mark in connection with the annual festival.
The Taste of Dallas festival is the largest,
free outdoor festival in
The TASTE OF DALLAS trademark has not been
registered.
The Complainant claims it owns trademark
rights under common law.
The Respondent registered the Domain Name <tasteofdallas.com>
on July 13, 1999. The registered domain name redirects the Internet user to
another page: <amazuma.com>, registered under the Respondent’s name. <amazuma.com> is not related to the
Taste of Dallas festival and provides online advertising services as well as a
link to another of the Respondent’s website.
The Respondent is a
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 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
Based on ICANN Policy 4(a)(i),
a Complainant may introduce a proceeding when it holds that a Respondent’s
domain name is identical or confusingly similar to a trademark or a service
mark in which the Complainant has rights.
The UDRP does not distinguish between registered trademarks and
non-registered trademarks. Therefore, a
trademark registration by a governmental authority is not required for such a
right to exist. As long as there are
common law rights in a mark, proceedings can be held before the UDRP; see Great
Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001)
In compliance with Policy 4(a)(i), the Complainant has established that it has common law
rights in the trademark TASTE OF DALLAS, due to continuous and exclusive
use. Respondent does not contest that
these rights were acquired by the Complainant from its predecessor. The mark has been in use for over twenty
years in relation to the ongoing extremely popular Taste of Dallas annual
festival and therefore has become distinctive and has developed a secondary
meaning. The Respondent does not contest
the fact that this popular event attracts tens of thousands of people in
downtown
It is established that spaces are
impermissible in domain names, and that such names require top level domain
extensions such as “.net” or “.com.” See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Ar. Forum
Jan. 7, 2001). In regards to Policy 4(a)(i),
this does not affect the fact that the Respondent’s domain name is identical to
the Complainant’s mark as it is composed of exactly the same words.
The Panel concludes that Policy 4(a)(i) has been satisfied.
Rights or Legitimate Interests
In regards to Policy 4(a)(ii),
the Complainant has to provide prima
facie evidence that the Defendant has no rights or legitimate interests in
the <tasteofdallas.com>
domain name. If the Complainant does so,
the burden shifts to the Respondent.
According to Policy 4c)(i)
(ii) (iii), the Complainant must provide prima
facie evidence that:
(i)
The
Respondent is not using nor has prepared to use the domain name in connection
with a bona fide offering of goods or
services
(ii)
The
Respondent has not been commonly known by the domain name
(iii)
The
Respondent is not making a legitimate non-commercial or fair use of the domain
name and intends to misleadingly divert consumers or tarnish the trademark or
service mark at issue.
Regarding Policy 4c)(i)
and (ii), the Complainant has established that the Respondent registered the <tasteofdallas.com>
domain name in July 1999. Since that
time the only use of the domain name has been in 2005 to redirect Internet
traffic to one of the Respondent’s commercial websites: <amazuma.com>. Thus, any Internet user searching for
information about the Taste of Dallas festival and using the “.com” gTLD will
be redirected from the <tasteofdallas.com> domain name to a
commercial website. Such a diversion is
not recognized as being a bona fide
offering of goods or services nor is it making a legitimate non-commercial or
fair use of a domain name; see Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003). The Respondent merely alleges that he has
legitimate rights in the domain name, but fails to provide any proof of these
rights or legitimate interests.
Furthermore, the Respondent provides no evidence that he is preparing to
use the domain name in connection with a bona
fide offering of goods and services.
Respondent simply claims that he has registered the domain name for
legitimate business purposes and is planning to use it “for marketing and
advertising of international foods in
The Respondent is a
The Panel concludes that Policy 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
In order to establish the registration and
use of a domain name in bad faith, the Complainant has to establish any of the
circumstances, in particular but without limitation, listed at paragraph 4(b)
of the Policy.
The Complainant alleges that the Respondent
has no legitimate use of the Domain Name; that the Respondent cannot make any
active use of the Domain Name without creating a false impression of
association with the Complainant and that the Respondent, a
The Complainant has established that the <tasteofdallas.com>
domain name redirects Internet users to the Defendant’s commercial website
<amazuma.com> which provides online advertising services, and that the
Defendant is commonly known as Jerome Obinabo and has no known connection or
association with the Complainant’s mark and has no established legitimate
interest in it.
Respondent admits wanting to use the domain
name (despite failing to produce demonstrable preparations for such use) in
regards with “marketing and advertising of international foods in
The Taste of Dallas festival is popular in
the
The Complainant has proven the registration
and use in bad faith.
The Panel concludes that Policy 4(a)(iii) has been satisfied.
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 <tasteofdallas.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: October 18, 2007
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