national arbitration forum

 

DECISION

 

899401 Ontario Ltd d/b/a Mr. Jerk Restaurants v. Wizards Canada (Amalgamated) / Domain Privacy

Claim Number: FA1008001338759

 

PARTIES

Complainant is 899401 Ontario Ltd d/b/a Mr. Jerk Restaurants (“Complainant”), Hawaii, USA.  Respondent is Wizards Canada (Amalgamated) / Domain Privacy (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mrjerk.com>, registered with eNom, Inc.

 

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2010.

 

On August 4, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <mrjerk.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 August 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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 postmaster@mrjerk.com by e-mail.  Also on August 17, 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 September 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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" 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <mrjerk.com> domain name is confusingly similar to Complainant’s MR. JERK TAKE-OUT CATERING mark.

 

2.      Respondent does not have any rights or legitimate interests in the <mrjerk.com> domain name.

 

3.      Respondent registered and used the <mrjerk.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, 899401 Ontario Ltd d/b/a Mr. Jerk Restaurants, operates a small family held chain of restaurants in Toronto, Canada operating under the MR. JERK TAKE-OUT CATERING mark and specializing in West Indian Jerk products and other Caribbean dishes and pastries.  Complainant holds a trademark registration for its mark with the Canadian Patent and Trademark Office (“CPTO”) (Reg. No. TMA397782 issued June 21, 1990).

 

Respondent, Wizards Canada (Amalgamated) / Domain Privacy, registered the disputed domain name on April 22, 1998.  The disputed domain name redirects Internet users to the website of Complainant’s direct competitor, The Real Jerk Restaurant resolving from the <therealjerk.com>.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in its MR. JERK TAKE-OUT CATERING mark based on its registration of the mark with the CPTO (Reg. No. TMA397782 issued June 21, 1990).  The Panel finds that Complainant’s registration of its MR. JERK TAKE-OUT CATERING mark with a governmental trademark authority establishes Complainant’s rights in the same for the purpose of Policy ¶ 4(a)(i).  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).

 

Complainant asserts that Respondent’s <mrjerk.com> domain name is confusingly similar to Complainant’s MR. JERK TAKE-OUT CATERING.  Respondent’s disputed domain name incorporates the first two terms in Complainant’s mark, removes the period and the space between the terms, omits the terms “TAKE-OUT CATERING” and adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the removal of the space between the terms and the period do not sufficiently distinguish the disputed domain name from Complainant’s mark.  See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”).  The Panel also finds that the removal of terms from Complainant’s mark still renders the disputed domain name confusingly similar to Complainant’s mark.  See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark).  Additionally, the Panel finds that the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis as a TLD is a required element of every domain name.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  Therefore, the Panel finds that Respondent’s <mrjerk.com> domain name is confusingly similar to Complainant’s MR. JERK TAKE-OUT CATERING mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name.  Complainant must first make a prima facie case in support of its allegations, then the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”).  The Panel finds that Complainant has established a prima facie case in this instance.  Respondent has failed to submit a Response to these proceedings which allows the Panel to infer that Respondent lacks rights and legitimate interests in the <mrjerk.com> domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  Nevertheless, the Panel will examine the record in light of the factors outlined in Policy ¶ 4(c) to determine whether Respondent has any rights or legitimate interests in the disputed domain name.

 

The WHOIS information indicates that the registrant of the disputed domain name is “Wizards Canada (Amalgamated) / Domain Privacy.”  Respondent does not provide any evidence, nor is there any evidence apparent in the record, that would indicate that Respondent is commonly known by the <mrjerk.com> domain name.  Consequently, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also  St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant alleges that Respondent’s <mrjerk.com> domain name redirects Internet users to its own competing website resolving from Respondent’s <therealjerk.com> domain name.  The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to a website that directly competes with Complainant’s Caribbean food restaurants is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).

 

The Panel finds that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain name to redirect Internet users seeking Complainant’s products and services to a website to a direct competitor of Complainant in the Caribbean food and restaurant industry.  The Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).

 

The Panel finds that Respondent’s use of the disputed domain name to profit from the redirection of Internet users seeking Complainant’s goods and services to Respondent’s own competing website is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) as Respondent is intentionally attempting to attract those Internet users for commercial gain.  See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mrjerk.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  September 24, 2010

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum