Uncle Nicks, Inc. v. Micheal Eng
Claim Number: FA0812001236932
Complainant is Uncle
Nicks, Inc. (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unclenicksgreekcuisine.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 8, 2008.
On December 4, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <unclenicksgreekcuisine.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 December 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 31, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2009 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <unclenicksgreekcuisine.com> domain name is identical to Complainant’s UNCLE NICK’S GREEK CUISINE mark.
2. Respondent does not have any rights or legitimate interests in the <unclenicksgreekcuisine.com> domain name.
3. Respondent registered and used the <unclenicksgreekcuisine.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Uncle Nick’s Greek Cuisine, is a restaurant specializing in Greek cuisine. Complainant owns a trademark registration for the UNCLE NICK’S GREEK CUISINE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,378,459 issued February 5, 2008, filed August 20, 2007).
Respondent registered the <unclenicksgreekcuisine.com> domain name on April 30, 2004. Respondent’s disputed domain name is allegedly being used to divert Internet traffic to third-party websites.
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 registration of its UNCLE NICK’S GREEK CUISINE mark with the USPTO demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant may also establish rights in the UNCLE NICK’S GREEK CUISINE mark by showing common law rights to satisfy Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant implicitly alleges it has established common law rights in the UNCLE NICK’S GREEK CUISINE mark dating back to its first use in commerce in 1994 by providing its registration information. However, Complainant has not provided any evidence to establish that the mark has acquired secondary meaning. Therefore, the Panel finds that Complainant lacks common law rights in the mark pursuant to Policy ¶ 4(a)(i). See GLB Serviços Interactivos S.A. v. Ultimate Search Inc., D2002-0189 (WIPO May 29, 2002) (“[I]n the present case, there is insufficient evidence of a common law trademark even if common law trademarks are possible in a civil law country like Brazil.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).
Respondent’s <unclenicksgreekcuisine.com> domain name contains Complainant’s UNCLE NICK’S GREEK CUISINE while removing all punctuation and spacing from the mark, and adding the generic top-level domain “.com.” The Panel finds that none of these alterations are relevant under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and
legitimate interests in the disputed
domain name. If a complainant makes
a prima facie case in support of its
allegations, the burden shifts to the respondent to prove that rights or
legitimate interests exist pursuant to Policy ¶ 4(a)(ii). In this case, the Panel finds that Complainant
has not established a prima facie
case because Complainant failed to provide any evidence of Respondent
‘s use of the disputed domain name.
Thus, the Panel cannot make a determination that Respondent lacks rights
and legitimate interests in the disputed domain. See Lush LTD v. Lush
Environs, FA 96217 (Nat.
Arb. Forum Jan. 13, 2001) (finding that even when the
respondent does file a response, the complainant must allege facts, which if
true, would establish that the respondent does not have any rights or
legitimate interests in the disputed domain name); see also VeriSign Inc. v.
Though Complainant has not provided enough information to make a prima facie case in support of its allegations, the Panel will examine the evidence on record against the applicable ¶ 4(c) elements before making a final determination with regards to Respondent’s rights and legitimate interests.
Complainant fails to provide evidence of Respondent’s use of
the disputed domain name. Therefore, the
Panel finds that Complainant failed to establish that Respondent’s disputed
domain name was not being used to offer bona
fide goods and services pursuant to Policy ¶ 4(a)(i),
or a noncommercial or fair use pursuant to Policy ¶ 4(a)(iii). See
In addition, the Panel finds that Complainant has failed to provide any information that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. Credit Union Buyers Ass’n v. Acuba Ltd., FA 164306 (Nat. Arb. Forum July 16, 2003) (finding that complainant’s allegations that “[n]o evidence indicates that Respondent has been known . . . by the Domain Name” did not acknowledge or address evidence that respondent was known by the disputed domain name, having registered <acuba.com> under the name Acuba Limited, and, therefore, were not a prima facie showing under Policy ¶ 4(a)(ii)).
The Panel notes that Respondent's disputed domain name was registered on April 30, 2004, which predates both Complainant's trademark and common law rights in the UNCLE NICK'S GREEK CUISINE mark. The Panel finds that Respondent’s registration of the disputed domain name prior to Complainant’s acquisition of rights in its mark evidences Respondent’s rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the complainant applied for registration of the mark after the respondent registered the domain name and the complainant has not proven any earlier use of the mark); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before the complainant had established rights in its alleged mark).
Finally, the Panel finds that because Complainant has not satisfied Policy ¶ 4(a)(ii), the Panel chooses to forego an analysis of the remaining element of the Policy under Policy ¶ 4(a)(iii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.
Because Complainant has failed to satisfy Policy ¶ 4(a)(ii), the Panel chooses to forego an analysis under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <unclenicksgreekcuisine.com> domain name shall remain with Respondent.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 21, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum