Chicago Restaurant & Entertainment Guide, Inc. and David M. Lissner v. Yucel Polat
Claim Number: FA1003001310901
Complainant is Chicago Restaurant & Entertainment Guide, Inc. and David M. Lissner (“Complainant”), represented by Lema A. Khorshid, of Fuksa Khorshid, LLC, Illinois, USA. Respondent is Yucel Polat (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chicagorestaurant.com>, registered with Godaddy.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2010.
On March 9, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <chicagorestaurant.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.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 March 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on March 11, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <chicagorestaurant.com> domain name is identical to Complainant’s CHICAGO RESTAURANT mark.
2. Respondent does not have any rights or legitimate interests in the <chicagorestaurant.com> domain name.
3. Respondent registered and used the <chicagorestaurant.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Chicago Restaurant & Entertainment Guide, Inc., and David M. Lissner, are the producers of the “Chicago’s Restaurant Guide” magazine and a television program called “Dining Chicago.” Complainant has applied for, but does not yet own, a trademark registration with United States Patent and Trademark Office (“USPTO”) for CHICAGO RESTAURANT. Complainant owned and operated the disputed domain name from1997 to 2009. Respondent obtained the <chicagorestaurant.com> domain name in October 2009. Respondent’s disputed domain name does not resolve to an active website.
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.
Preliminary Issue: Multiple Complainants
Complainant Chicago Restaurant & Entertainment Guide, Inc. states that David M. Lissner is the founder and owner of its Chicago Restaurant Guide. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” In the absence of a response, the Panel accepts Complainants as one for the purpose of this proceeding.
Complainant has applied for, but has not yet received, a trademark registration with the USPTO for CHICAGO RESTAURANT. Complainant contends that it has common law rights in the CHICAGO RESTAURANT mark through its continuous and extensive use of the mark in commerce since 1997. Governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). However, the Panel finds that the Complainant must establish common law rights through proof of sufficient secondary meaning associated with the mark. 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Here the claimed mark is comprised of two common and generic, descriptive or geographic terms, requiring very strong evidence in order to establish secondary meaning. See Snowboards-for-sale.com, Inc. v. Name Admin. Inc., D2002-1157 (WIPO Feb. 19, 2003) (finding when the alleged mark is highly descriptive the complainant must prove secondary meaning to meet the requirement of Policy ¶ 4(a)(i)); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding that when a disputed domain name, such as <187.com>, is made up entirely of generic or common terms, “good evidence will be needed to show a significant secondary meaning and, above all, one associated with Complainant.”). Complainant publishes a quarterly magazine called “Chicago’s Restaurant Guide” with a circulation of nearly 10,000 copies. Complainant also has a weekly television program called “Dining Chicago.” Complainant has used the disputed domain name since 1997 and states that it got 700,000 hits in July of 2009.
First, the Panel notes that neither the magazine nor the television program produced by Complainant uses the alleged mark “CHICAGO RESTAURANT”; the magazine also uses the word “Guide” and the television program only uses the word Chicago. Further, the Panel finds that the use of a highly descriptive domain name does not confer trademark rights. On the contrary, Complainant took a risk in choosing unprotected and, in this Panel’s view, unprotectable words to identify itself on the Internet.
The Panel finds that Complainant has not provided the evidence necessary to establish secondary meaning in CHICAGO RESTAURANT, and has failed to prove the association of those words with Complainant. Therefore, the Panel finds that Complainant has not established rights in the CHICAGO RESTAURANT mark under Policy ¶ 4(a)(i). See Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning); see also Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)).
The Panel concludes Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark, therefore the Panel declines to analyze the other two elements of the Policy. 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 Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Finding the Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Sandra J. Franklin, Panelist
Dated: April 22, 2010
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