Infusion Management Group d/b/a the
Signature Room at the 95th v. Mike Lemonde d/b/a TCS Eugene d/b/a VNL, LLC
Claim Number: FA0210000126833
PARTIES
Complainant
is Infusion Management Group d/b/a The Signature Room at the 95th, Chicago, IL (“Complainant”)
represented by Melissa Masiello, of Bell, Boyd, & Lloyd LLC. Respondent is TCS Eugene d/b/a VNL, Eugene, OR (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <thesignatureroom.com>,
registered with eNom.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 2, 2002; the Forum received a hard copy of the
Complaint on October 4, 2002.
On
November 6, 2002, eNom confirmed by e-mail to the Forum that the domain name <thesignatureroom.com> is
registered with eNom and that the Respondent is the current registrant of the
name. eNom has verified that Respondent
is bound by the eNom 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
November 6, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 26, 2002 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@thesignatureroom.com by
e-mail.
A
timely Response was received on November 26, 2002.
Complainant’s
additional submission was received on December 2, 2002. Respondent’s untimely additional submission
was received on December 12, 2002.
Although Respondent’s additional submission was untimely, the Panel has
considered it.
On November 16, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to
Complainant. Respondent requests a
finding that Complainant has engaged in reverse domain name hijacking.
PARTIES’ CONTENTIONS
A.
Complainant
1. Respondent’s
<thesignatureroom.com> domain
name is identical and confusingly similar to Complainant’s THE SIGNATURE ROOM
marks.
2. Respondent
does not have any rights or legitimate interests in respect of the <thesignatureroom.com> domain
name.
3.
Respondent
registered the <thesignatureroom.com>
domain name in bad faith.
B.
Respondent
Respondent,
TCS Eugene d/b/a VNL, LLC, contends that the mark THE SIGNATURE ROOM is generic
and that Complainant does not have exclusive rights in the mark. Respondent contends that Complainant does
not have registered or common law rights in THE SIGNATURE ROOM. Respondent contends that it has a legitimate
interest in the domain name as it intends on using the domain name to begin developing
a marketplace for the exchange of collectable autographs.
C.
Additional Submissions
Complainant
objects to the Response because it was filed by a third party with some alleged
interest in the domain name.
Complainant alleges that Respondent transferred the domain name after
the initiation of these proceedings.
Respondent claims to have been unaware of these proceedings when the
domain name was transferred.
Complainant’s objection is overruled.
FINDINGS
Complainant, Infusion Management Group,
Inc. d/b/a The Signature Room at the 95th ("The Signature Room") is
an Illinois corporation having its principal place of business in Chicago,
Illinois. Complainant provides
restaurant, bar and catering services as well as banquet facilities in the
greater Chicago area under the marks THE SIGNATURE ROOM AT THE 95th, THE
SIGNATURE ROOM and other related marks.
Most notably, Complainant owns and operates a restaurant called “The
Signature Room at the 95th,” located on the 95th floor of the John Hancock
Center, one of the most recognizable buildings in the world and one of the
most-visited tourist attractions in Chicago, Illinois.
Complainant has continuously used the
mark THE SIGNATURE ROOM since at least as early as 1993 for restaurant, bar and
catering services, and providing facilities for banquets. Complainant also owns a number of U.S.
Trademark Registrations incorporating its THE SIGNATURE ROOM mark, namely: (1)
U.S. Reg. No. 2,321,739 for THE SIGNATURE ROOM AT THE NINETY-FIFTH (and
Design), for restaurant, bar and catering services, and providing facilities
for banquets; (2) U.S. Reg. No. 2,326,353 for THE SIGNATURE ROOM AT THE 95TH,
for restaurant, bar and catering services, and providing facilities for
banquets; (3) U.S. Reg. No. 2,424,008 for THE SIGNATURE ROOM AT SEVEN BRIDGES,
for providing banquet facilities for banquet services; and (4) U.S. Reg. No.
2,553,191 for THE SIGNATURE ROOM AT SEVEN BRIDGES A PLACE TO CELEBRATE LIFE!
(and Design) for providing facilities for banquet services.
On July 18, 2002, Complainant filed a U.S. trademark
application for THE SIGNATURE ROOM, Ser. No. 76/431,845, for restaurant, bar
and catering services, and providing facilities for banquets.
In 1993, Complainant opened its THE SIGNATURE ROOM AT THE
95TH restaurant and lounge on the 95th and 96th floors of John Hancock
Center. Since that time, Complainant’s
restaurant has been most commonly known and referred to by the general public
as “The Signature Room.” The Signature
Room has become a premiere destination attraction for many domestic and international
visitors, and has come to be particularly well-known for its spectacular 360º
view of the Chicago skyline, as well as its gourmet menu and exceptional
service.
In 1999, Complainant opened a large banquet facility in
Woodridge, Illinois, under the mark THE SIGNATURE ROOM AT SEVEN BRIDGES. The Signature Room at Seven Bridges offers
banquet facilities and services including receptions, sit-down dinners for up
to 1,100 guests, audiovisual capabilities, flower and table settings,
personalized menus, and entertainment.
At both The Signature Room at the 95th and The Signature
Room at Seven Bridges, and via the Internet, Complainant offers for sale a
variety of goods bearing Complainant’s THE SIGNATURE ROOM marks, including
hats, shirts, pens and other souvenir items.
Respondent registered the domain name <thesignatureroom.com> on February 28, 2000.
Respondent has not acquired any trademark or service mark
rights in the domain name <thesignatureroom.com>. Respondent is not a licensee of Complainant’s
THE SIGNATURE ROOM marks and is not otherwise authorized to use Complainant’s
marks.
On May 13, 2002, Respondent offered to sell the disputed
domain name registration to Complainant for $1000, and on August 23, 2002,
offered to sell the disputed domain name registration to Complainant for $1000
and five $100 gift certificates to Complainant’s The Signature Room restaurant
in the John Hancock Center. Both of
Respondent’s offers were for amounts in excess of Respondent's out-of-pocket
costs directly related to the domain name.
On May 13, 2002, Complainant’s legal counsel contacted
Respondent’s agent Mike Lemonde by telephone, explained Complainant’s rights in
<thesignatureroom.com> and
demanded that Respondent transfer the domain name to Complainant. On May 31, 2002, Complainant’s legal counsel
sent via email to Respondent a cease and desist letter reiterating
Complainant’s rights in the domain name and demanding that Respondent transfer
the domain name registration to Complainant.
On Sept.
29, 2002, the disputed domain was purchased from Respondent by Gardensong, Inc.
with the alleged intention to begin developing a marketplace for the exchange
of collectable autographs. Gardensong
formed a subsidiary “THE SIGNATURE ROOM LIMITED” for this alleged purpose
filing the corporate Articles with the Oregon Secretary of State on Oct. 25,
2002.
Respondent
claims not to have been aware of the Complaint until Nov. 4, 2002. Respondent received a copy of the Complaint
on Nov. 6, 2002 via email from the Forum.
The domain name is currently linked to the SpeedyDomains.com
site, which does not otherwise use THE SIGNATURE ROOM.
Respondent, TCS Eugene d/b/a VNL, LLC, is
the registrant or holder of the domain name <thesignatureroom.com>.
On October 3, 2002, the Forum Case
Coordinator contacted eNom to confirm that TCS Eugene, d/b/a VNL, LLC, was the
registrant of <thesignatureroom.com>.
eNom replied to the Forum Case
Coordinator on October 8, 2002, informing her that the domain name had been
transferred to the following registrant: “The Signature Room Limited” “Harris
D”.
According to an October 10, 2002 printout
of the eNom WHOIS record for <thesignatureroom.com>,
Respondent transferred the registration
to a new registrant on October 4, 2002.
On October 16, 2002, the new registrant, The Signature Room
Limited, transferred the registration from eNom to DotRegistrar.
On October 24, 2002, the envelope
containing Respondent’s hard copy of the full Complaint with annexes,
originally sent via certified mail on October 2, 2002, was returned to
Complainant’s legal counsel unopened and marked “unclaimed.”
Prior to the filing of the Complaint, the
new registrant of <thesignatureroom.com>,
The Signature Room Limited, did not exist.
However, on October 25, 2002, more
than three weeks after the filing of the Complaint, The Signature Room
Limited was incorporated in the state of Oregon, with D. Harris as its
designated agent.
By November 6, 2002, eNom and
DotRegistrar returned the registration information for the <thesignatureroom.com> to its status on the date the
Complaint was filed. Because the
Complaint also otherwise satisfied the Rules and Supplemental Rules, this
administrative proceeding was officially commenced on November 6, 2002. The Forum sent a full hard copy of the
Complaint with annexes to the address provided by Respondent.
On November 13, 2002, D. Harris sent an
email claiming to be the owner of the “beneficial rights of registration” for <thesignatureroom.com>, and in
the alternative, to be Respondent’s designated representative in this
proceeding.
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.
Complainant
objects to the Panel’s consideration of Respondent’s Response being filed by a
third party. The objection is
overruled. Although Respondent, TCS
Eugene d/b/a VNL, LLC, is the holder of the domain name, the Panel will
consider the responses filed by the third party on behalf of Respondent since
the third party claims a beneficial interest in the domain name.
Complainant has registered marks for THE
SIGNATURE ROOM AT THE NINETY-FIFTH (and Design), THE SIGNATURE ROOM AT THE
95TH, THE SIGNATURE ROOM AT SEVEN BRIDGES, and THE SIGNATURE ROOM AT SEVEN
BRIDGES A PLACE TO CELEBRATE LIFE! (and Design). The Panel concludes that the domain name <thesignatureroom.com> is confusingly similar to
Complainant’s registered trademarks. The words THE SIGNATURE ROOM
are the dominant elements of Complainant’s mark. See Down East
Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5,
2001) (finding the domain name <downeastmagazine.com> confusingly similar
to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also
WestJet Air Center, Inc. v. West Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com>
domain name is confusingly similar to Complainant’s mark, where Complainant
holds the WEST JET AIR CENTER mark).
Having found confusing similarity with Complainant’s registered marks,
it is unnecessary to determine whether Complainant has common law rights in the
mark THE SIGNATURE ROOM for which Complainant has a pending trademark
application.
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
“Respondent
may fairly use descriptive or generic terms as a commercial domain name.” Eastbay Corp. v. VerandaGlobal.com, Inc.,
FA 105983 (Nat. Arb. Forum May 20, 2002); see also Energy Source Inc. v.
Your Energy Source, FA 96364 (Nat. Arb Forum Feb. 19, 2001) (Respondent has
rights and legitimate interests in the domain name where “Respondent has
persuasively shown that the domain name is comprised of generic and/or
descriptive terms, and, in any event, is not exclusively associated with
Complainant’s business”). The mark THE
SIGNATURE ROOM is a descriptive name in which Complainant cannot have exclusive
rights. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August
21,2000). However, Respondent is not
using the domain name <thesignatureroom.com> but has been
passively holding the domain for almost two years for the purpose of selling
the domain name registration for an amount in excess of its out-of-pocket costs
of registration. See HomeFinishers,
Inc. v. Tom Schutz, FA 123928 (Nat. Arb. Forum October 10, 2002) (The
passive holding of the domain name <homefinishers.com> for over two years
without providing any demonstrable plans or preparations to use the domain name
fails to show rights or legitimate interests).
Respondent’s only use of the domain name
since registration on February 28, 2000 has been passive use, and holding the
domain name registration for sale. In
view of the subsequent passive use and the offers to sell for more than the
registration costs, Respondent’s evidence fails to show use or demonstrable
preparations to use the domain name in connection with a bona fide offering of
goods and services. See Flor-Jon
Films v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that
Respondent’s failure to develop the site demonstrates a lack of legitimate
interest in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding Respondent’s conduct purporting to sell the domain name suggests it
has no legitimate use); see also Ritz-Carlton Hotel v. Club Car Executive,
D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the
dispute, Respondent had not used the domain names in connection with any type
of bona fide offering of goods and services); see also Melbourne IT Ltd. v.
Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate
interests in the domain name where there is no proof that Respondent made
preparations to use the domain name or one like it in connection with a bona
fide offering of goods and services before notice of the domain name dispute,
the domain name did not resolve to a website, and Respondent is not commonly
known by the domain name).
Respondent asserts the intent to use the
domain name at some unspecified time in the future. Respondent has not shown any concrete evidence in support of such
plans. See Do The Hustle, LLC v.
Tropic Web, supra. (“once the complainant has made a prima facie showing,
the burden of production shifts to the respondent to show by concrete evidence
that it has rights to or legitimate interests in the domain name at issue. . .
. ‘Concrete evidence’ constitutes more than personal assertions”). A Respondent’s “unsupported, self-serving
allegations alone are insufficient to establish that [the] Respondent has
rights or legitimate interests in respect to the domain name at issue.” Twentieth Century Fox Film Corp. v.
Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the
Respondent’s assertion that she registered the domain name
<foxstudios.biz> in order to get a website address for her planned dance
studios, without evidentiary support, was insufficient to establish that she
had rights or interests in respect to the domain name at issue); see also
Travel in A Moment, Inc. v. F.S. Janco, FA 96821 (Nat. Arb. Forum April 9,
2000) (Respondent failed to show rights or legitimate interests in
<momentsnoticetravel.com> where Respondent contended that domain name was
registered for future use in connection with an “undisclosed business
venture”); Camper, S.L. v. DPR USA a/k/a Global DNS Services, FA 118188
(Nat. Arb. Forum October 22, 2002) (Respondent failed to establish legitimate
interests in the domain name <camper.us> through mere statement of intent
to market campers). Furthermore, Respondent has
not alleged that these preparations were made before notice of the
dispute. See Wal-Mart
Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that
Respondent had no rights or legitimate interests where he decided to develop
the website for the sale of wall products after receiving Complainant’s “cease
and desist” notice).
Finally, a Respondent may demonstrate its
rights or interests in a domain name by proving that it has been commonly known
by the domain name, even if it has acquired no trademark or service mark
rights. See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark). However, Respondent is
not commonly known as THE SIGNATURE ROOM or <thesignatureroom.com>.
Respondent has failed to show rights
or a legitimate interest in the domain name.
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent
has passively held the disputed domain name for almost two years with the only
activity being entertaining offers to purchase the domain name
registration. At registration,
Respondent had constructive notice of Complainant’s well-known mark. See
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); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue,
Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla.
2001) (noting that “a Principal Register registration [of a trademark or
service mark] is constructive notice of a claim of ownership so as to eliminate
any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also
Virtual Works, Inc. v. Volkswagen
of Am., Inc., 238 F.3d 264 (4th Cir. 2001) (registration of domain with strong resemblance to
federally protected trademark with idea of selling the site to owner of mark is
not entitled to ACPA’s safe harbor provision).
Bad faith exists where Respondent
registered the domain name for the purpose of selling the domain name
registration to Complainant for an amount in excess of out of pocket costs
associated with the registration of the domain name and Respondent has made no
other use of the domain name. See
Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding
that a general offer of sale combined with no legitimate use of the domain name
constitutes registration and use in bad faith); see also Grundfos A/S
v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure
to use the domain name in any context other than to offer it for sale to
Complainant amounts to a use of the domain name in bad faith). Moreover, the passive holding of the domain
name for almost two years is bad faith use.
See DCI
S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding
that Respondent’s passive holding of the domain name satisfies the requirement
of ¶ 4(a)(iii) of the Policy); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004
(WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website
in a two year period raises the inference of registration in bad faith).
Complainant’s legal counsel’s cease and
desist letter of May 31, 2002, constituted formal notice of a dispute as to the
domain name. Respondent’s subsequent
transfer of the domain name, change of registrars, and creation of an entity
known as “The Signature Room Limited” are evidence of Respondent’s bad faith. See
Ancasta Int’l Boat Sales Ltd. v. ANC – AppleStation, D2001-0155
(WIPO April 26, 2001) (bad faith is shown where a registrant of a domain name,
upon receiving a letter of demand, transfers the domain name to a different
registrant to avoid the consequences of an ICANN UDRP proceeding).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Reverse Domain Name Hijacking
Complainant has not engaged in reverse
name hijacking.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <thesignatureroom.com>
be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: December 30, 2002
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