Vartkes V. Marjik d/b/a Zankou Chicken, Inc. v. ArmenianMatch.com
Claim Number: FA0911001292651
Complainant is Vartkes V. Marjik d/b/a Zankou Chicken, Inc. (“Complainant”), represented by Tulane
M. Peterson of Hart, Mieras & Morris, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zankou.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 2, 2009; the National Arbitration Forum received a hard copy of the Complaint November 5, 2009.
On November 3, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <zankou.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has 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 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 2009, 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 December 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <zankou.com>, is confusingly similar to Complainant’s ZANKOU CHICKEN mark.
2. Respondent has no rights to or legitimate interests in the <zankou.com> domain name.
3. Respondent registered and used the <zankou.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vartkes V.
Marjik d/b/a Zankou Chicken, Inc., operates a chain of chicken restaurants in
the state of
Respondent registered the <zankou.com> domain name May 17, 1998. The disputed domain name redirects Internet users to the website resolving from the <armenianmatch.com> domain name, where Respondent sells social networking services and related products.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established rights in the ZANKOU CHICKEN mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO (Reg. No. 3,155,529 issued October 17, 2006). See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Complainant contends that Respondent’s <zankou.com> domain name is confusingly similar to its ZANKOU CHICKEN mark. The disputed domain name differs from Complainant’s mark in two ways: (1) the term “chicken,” which describes Complainant’s products, has been deleted from the end of the mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added. The Panel finds the removal of the term “chicken,” does not distinguish the disputed domain name from the mark, because the distinctive portion “zankou” remains. Thus, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Respondent has not responded to the Complaint in this case. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known by the <zankou.com> domain name and that it has never been the owner or licensee of the ZANKOU CHICKEN mark. The WHOIS record for the disputed domain name lists Respondent as “ArmenianMatch.com.” Because of this evidence, along with the fact that Respondent has failed to show any evidence contrary to Complainant’s contentions, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant alleges that the <zankou.com> domain name redirects to a website that sells social networking services. The Panel finds that Respondent is using the disputed domain name for a purpose wholly unrelated to Complainant’s use of its ZANKOU chicken mark. Furthermore, Respondent’s registration of the disputed domain name predates Complainant’s evidenced use of the ZANKOU CHICKEN mark. Thus, the Panel finds that Respondent also has rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that the respondent could maintain rights in a similar mark as the complainant because the complainant and the respondent were not in the same field of business, and therefore not competitors); see also Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (“Respondent has a legitimate interest to use a trademark or domain name in which many persons hold an exclusive right in relation to different goods and services providing the goods or services are sufficiently far apart from the goods and services of others so as to distinguish the goods or services of Respondent.”); see also 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 respondent registered the disputed domain name for a legitimate business purpose prior to complainant’s application for registration of the mark and the complainant has not proven any earlier use of the mark).
The Panel finds that Complainant did not satisfy the elements of ICANN Policy ¶ 4(a)(ii).
Respondent registered the disputed domain name May 17, 1998,
a date in time that was prior to the time that the evidence that Complainant
submitted demonstrates that the ZANKOU CHICKEN mark had acquired sufficient
secondary meaning to confer upon Complainant common law rights in the ZANKOU
CHICKEN mark. Although the Complainant asserts that it has used the
ZANKOU CHICKEN mark since 1984, without evidence in the record supporting these
assertions, the Panel cannot find Complainant had rights prior to those
established through the registration of its mark. Therefore, based on the evidence in the
record, the Panel finds that no evidence would support a finding that
Respondent registered the <zankou.com>
domain name in bad faith. Respondent’s
registration of the disputed domain name predates Complainant’s proven rights in
the mark. Thus, the Panel finds that Respondent did not register the disputed
domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant did not satisfy the elements of ICANN Policy ¶ 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <zankou.com> domain name REMAIN with Respondent.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 23, 2009.
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