CBI Acquisitions LLC v. Total Safety Consulting c/o Elizabeth Bifulco
Claim Number: FA0712001122548
Complainant is CBI Acquisitions LLC (“Complainant”), represented by Norm
D. St. Landau, of Drinker Biddle & Reath LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caneelbaycaribbeangrill.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2007.
On December 19, 2007, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <caneelbaycaribbeangrill.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 January 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 2008 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 January 30, 2008, 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:
domain name is confusingly similar to Complainant’s
2. Respondent does not have any rights or legitimate interests in the <caneelbaycaribbeangrill.com> domain name.
3. Respondent registered and used the <caneelbaycaribbeangrill.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CBI Acquisitions, LLC, operates a business
under its CANEEL BAY mark providing resort and restaurant services. Complainant has conducted business and has
advertised these goods and services under the mark since it was founded in
Respondent registered the <caneelbaycaribbeangrill.com>
domain name on April 10, 2006.
Respondent was operating a website under the disputed domain name which
contained a menu and information for the Caneel Bay Caribbean Restaurant
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 has established common law
rights in the
The Panel finds Respondent’s <caneelbaycaribbeangrill.com> domain name is confusingly
similar to Complainant’s CANEEL BAY mark pursuant to Policy ¶ 4(a)(i) because
Respondent’s domain name fully incorporates the CANEEL BAY mark in combination
with the descriptive terms “Caribbean” and “grill.” In addition, generic top-level domain names
such as “.com” are considered irrelevant in evaluating whether a disputed domain
name is confusingly similar to a mark. See Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition
of an ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur Guinness Son &
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <caneelbaycaribbeangrill.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. Moreover, due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. 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, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent was previously using the <caneelbaycaribbeangrill.com> domain
name to operate a website containing information and a
menu for a purported restaurant named Caneel Bay Caribbean Grill in
Respondent is currently using the <caneelbaycaribbeangrill.com> domain name to display a message stating “Pardon our appearance we are under construction.” The Panel finds that this constitutes a failure to make an active use of the disputed domain name and is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).
Additionally, the record and WHOIS information contain no
evidence suggesting that Respondent is commonly known by the <caneelbaycaribbeangrill.com> domain
name. Also, Respondent was not
authorized to use Complainant’s
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds Respondent’s initial use of the disputed domain name was a registration and use in bad faith pursuant to Policy ¶ 4(b)(iv) because it was being used to operate a website for Respondent’s competing restaurant business. Respondent’s use of Complainant’s mark and logo are evidence that Respondent is trying to profit from the goodwill in Complainant’s mark by diverting Internet users interested in Complainant’s business to Respondent’s competing business. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
Additionally, Respondent’s initial use of the disputed domain name was a use in bad faith pursuant to Policy ¶ 4(b)(iii) because it was being used to disrupt Complainant’s business. 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 S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).
Upon receiving a letter
from Complainant’s attorney, Respondent removed the content of the website and
replaced it with the following statement: “Pardon our appearance we are
under construction.” The Panel finds
that this current use also constitutes bad faith registration and use pursuant
to Policy ¶ 4(b)(iii) because Respondent is not actively using the disputed
domain name. See DCI
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 <caneelbaycaribbeangrill.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 11, 2008
National Arbitration Forum