Check Please! LLC v. Ivory Investments c/o Domain Admin
Claim Number: FA0803001156036
Complainant is Check Please! LLC (“Complainant”), represented by L.
Daniel Liutikas, of Much Shelist,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <checkplease.com>, registered with eNom.
The undersigned and each of them certify 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 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.
A late and deficient Response was
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant relies on its rights in its registrations and pending applications for the service mark CHECK, PLEASE! Details of the registrations and pending applications are listed below.
Complainant submits that the domain name <checkplease.com> is identical to and confusingly similar to Complainant’s registered trademarks and pending applications.
Complainant submits that the content of the website established at the <checkplease.com> domain name includes information related to Complainant’s services and Respondent’s use of the domain name creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation and endorsement of Respondent’s website.
Complainant submits that Respondent has no rights or legitimate interest in the domain name <checkplease.com>. Respondent is not commonly known by the domain name, either as a business, individual or other organization.
Complainant admits that Respondent’s original use of the domain name was not in bad faith.
Complainant contacted Respondent in February 2006 inquiring if the domain name \ was available for purchase. Respondent’s principal indicated that he would be willing to sell the domain name and in an e-mail dated February 14, 2006 stated “the name is for sale but it will not be cheap.” In addition, after agreeing on a price of $25,000 Respondent informed Complainant that the price of the domain name increased to $45,000 as there was another interested party. Complainant decided not to purchase the domain name.
Complainant states: “Respondent has, since then, begun to use the domain name in a manner that is confusingly similar to Complainant’s domain and registered trademarks.” Complainant has not consented to Respondent’s use of the domain name in this manner. Respondent’s use of the domain name in this manner will deceive consumers by redirecting Complainant’s customers and potential customers to a website offering information on restaurants, none of which are affiliated with Complainant.
In addition, by its use of Complainant’s registered trademark CHECK, PLEASE on Respondent’s website, Respondent is leading consumers to believe that such its site is somehow affiliated with, or otherwise sponsored by or approved by Complainant.
Respondent is using the domain name <checkplease.com> in bad faith to intentionally attract Internet users to its web site, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation and endorsement of Respondent’s website.
Respondent argues that “check, please” is a common phrase with a number of meanings including a request for the check in restaurants.
The domain name <checkplease.com> was registered in 1999. The domain name was chosen because the principal of Respondent and his family were, and still are, in the restaurant business.
Respondent did not register the domain name in bad faith.
Complainant’s trademark rights post-dated Respondent’s registration of the domain name in 1999 by six years.
Complainant is obliged to prove all three elements of Policy ¶ 4 of the UDRP and Complainant’s application should fail.
Respondent claims to have rights and legitimate interest in the domain name because its principal is in the restaurant business.
Respondent denies that the domain name was registered and is being used in bad faith.
Respondent was approached by Complainant with a request to sell the domain name. The contact was initiated by Complainant and not by Respondent. Respondent is not in the business of selling domain names and was very reluctant to sell. Respondent asserts that it is entitled to sell the domain name as it sees fit.
Respondent uses the domain name with its “e-mail address service.” Respondent has spent the past year developing its “system.” Respondent has parked the domain name pending development of its “system.” The content on the website was automatically generated by the service provider while the domain name was parked.
C. Additional Submissions
The Complainant filed Additional Submissions which for the most part repeated the arguments made in the Complaint.
Complainant asserts that it is not attempting to prevent fair use of the term “check please” but is seeking to protect its registered trademarks and prevent unlawful use of the trademarks by an unrelated and un-sponsored third party. Complainant repeats its allegations that Respondent changed the nature of the content of the website established at the address of the domain name from a parking site generating pay per click revenue to content with reference to Complainant’s business.
cites the decision of the learned panel in the Nominet UK case, MySpace, Inc. v. Total Web Solutions,
Complainant rejects Respondent’s claim to rights or legitimate interest in the domain name because he and his family are engaged in the restaurant business.
Complainant believes that Respondent is the owner of the business Internet Domains which is engaged in the business of registering and selling internet domain names, despite the statement to the contrary by Respondent. Respondent has been the unsuccessful respondent in a number of UDRP complaints.
Complainant owns and operates a syndicated television program CHECK, PLEASE! The television program relates to providing entertainment in the nature of arts, hospitality, leisure and restaurant reviews. In addition Complainant operates the website <checkplease.tv>.
Complainant is the owner of the following US registered trademarks and pending applications:
Trademark Registration 2,934,603, CHECK, PLEASE! filed on
US Trademark Registration 3,384,032, CHECK, PLEASE! filed on November 29, 2006 and registered on February 19, 2008 in international classes 41 and 43 in respect of “hospitality entertainment services in the nature of providing a website in the field of leisure activities, arts, and entertainment; mobile media services in the nature of content preparation, concerning leisure activities, arts, and entertainment” and “providing a website in the field of restaurant reviews” respectively claiming a first use in commerce in 2001.
US Trademark Application number 76/582,429 CHECK, PLEASE!
US Trademark Application number 77/327,938 CHECK, PLEASE!
name in dispute, <checkplease.com>, was regstered by
The domain name was registered prior to the registration and claimed first use of Complainant’s trademarks.
Complainant has admitted and this Panel finds that the domain name was not registered in bad faith.
Preliminary Issues: Deficient Response and Additional Submissions
Respondent has provided a Response that was deficient because the National Arbitration Forum has determined that the Response was received after the Response deadline, and in hard copy only. The Panel has decided to admit the Response because there is no prejudice to either the Complainant or the process in doing so in the present case.
The Panel has also admitted Complainant’s Additional Submissions, based upon the vote of a majority of the Panel.
Panelist Sorkin dissents from the Panel’s decision to admit
the Additional Submissions for the following reasons: Paragraph 12 of the Rules confers upon a
panel the sole discretion to request or accept supplemental submissions. The Forum's Supplemental Rule 7 merely
provides a procedure by which parties may tender such submissions for possible
consideration by the panel. As a general
rule, a panel should consider additional submissions only in exceptional
circumstances, such as where they reflect newly discovered evidence not
reasonably available to the submitting party at the time of its original
submission or rebut arguments by the opposing party that the submitting party
could not reasonably have anticipated. See Aylward v. GNO, Inc., FA751622 (Nat. Arb.
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 asserts rights in the CHECK, PLEASE! service mark through its ownership of the above listed service mark registrations and at common law through its use of the service mark in association with its entertainment business.
This Panel is satisfied that the domain name <checkplease.com> is confusingly similar to Complainant’s CHECK, PLEASE! service mark under Policy ¶ 4(a)(i) as the disputed domain name consists of Complainant’s mark without punctuation, and omitting the exclamation mark, along with the addition of the generic top-level domain “.com.”
The minor differences between Complainant’s registered
service mark and the domain name <checkplease.com>,
such as they are, do not sufficiently distinguish the disputed domain name from
Complainant’s mark under the requirements of Policy ¶ 4(a)(i). See Mrs. World Pageants, Inc. v. Crown Promotions,
FA 94321 (Nat. Arb. Forum
Complainant has failed to establish that the domain name was registered in bad faith for reasons given below. Therefore Complainant cannot succeed its application. In the circumstances, this Panel had decided that it is unnecessary to consider the second element of the test as set out in Policy ¶ 4(a)(ii), and decide whether Respondent has rights or legitimate interest in the domain name
The earliest rights claimed by Complainant are based on US Trademark Registration 2,934,603,
CHECK, PLEASE! The service mark was registered on
The domain name in dispute, <checkplease.com>, was registered by Respondent on January 11, 1999.
As the domain name <checkplease.com> was registered by Respondent prior to the accrual of Complainant’s rights in its first registration and claimed first use of the service mark CHECK, PLEASE!, this Panel finds that the Respondent did not register the domain name in bad faith. This is in any event expressly admitted by Complainant in the Complaint.
In order to satisfy the third element of Policy ¶ 4(a), Complainant
must prove that the domain name has been both registered and is being used in
bad faith. The test in Policy ¶ 4(a)(iii) is different from the test that a
complainant must satisfy in the Nominet UK
It follows that Complainant has failed to establish the third element of Policy ¶ 4(a) and Claimant’s application must fail.
As Complainant failed to establish all three elements required under the ICANN Policy ¶ 4, this Panel concludes that relief shall be DENIED.
Dated: April 25, 2008
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