national arbitration forum

 

DECISION

 

Clark Associates, Inc. v. Belize Domain WHOIS Service Lt

Claim Number: FA1010001353058

 

PARTIES

 Complainant is Clark Associates, Inc. (“Complainant”), represented by Charlie Garber, Pennsylvania, USA.  Respondent is Belize Domain WHOIS Service Lt (“Respondent”), Wisconsin, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <webstaurant.com>, registered with DirectNIC, LTD.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically October 19, 2010; the National Arbitration Forum received payment October 19, 2010.

 

On October 20, 2010, DirectNIC, LTD confirmed by e-mail to the National Arbitration Forum that the <webstaurant.com> domain name is registered with DirectNIC, LTD and that Respondent is the current registrant of the names.  DirectNIC, LTD verified that Respondent is bound by the DirectNIC, LTD registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@webstaurant.com.  Also on October 26, 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 November 22, 2010, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <webstaurant.com> domain name is confusingly similar to Complainant’s THE WEBSTAURANT STORE mark.

 

2.      Respondent has no rights to or legitimate interests in the <webstaurant.com> domain name.

 

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

 

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

 

FINDINGS

Complainant, Clark Associates, Inc., operates <thewebstaurantstore.com>, an Internet based restaurant supply company.  The Complainant’s business is conducted under its THE WEBSTAURANT STORE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,762,629 filed June 29, 2009; issued March 23, 2010).

 

Respondent registered the disputed domain name, <webstaurant.com>, August 18, 2004.

 

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."

 

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.

 

Identical to and/or Confusingly Similar

 

Complainant alleges rights in the THE WEBSTAURANT STORE mark.  Complainant bases its claim of rights in the mark on its registration of the mark with the USPTO (Reg. No. 3,762,629 filed June 29, 2009; issued March 23, 2010).  The Panel finds that a trademark registration with a governmental trademark authority such as the USPTO is sufficient to demonstrate Complainant’s rights in its THE WEBSTAURANT STORE mark under Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).  Therefore, the Panel concludes that Complainant has rights in the THE WEBSTAURANT STORE mark dating back to June 29, 2009. 

 

The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s THE WEBSTAURANT STORE mark. The differences between the disputed domain name and the mark do little to distinguish the domain name from the mark.  According to previous panels, even the largest difference in the present case, the omission of the word “store,” fails to distinguish the domain name.  See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); 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 omission of the article “the” is also largely irrelevant to this analysis. Previous panels have held that the article “the” adds little to the mark itself and is often used only for grammatical reasons.  See Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that the article "the" is "often added only for grammatical purposes, and may be superfluous to the name itself"); see also Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark).  The final difference between the mark and the domain name, the addition of the generic-top-level domain “.com,” has long been held to be irrelevant for the analysis of confusing similarity.  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also 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, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <webstaurant.com> domain name is confusingly similar to Complainant’s THE WEBSTAURANT STORE mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleges as well that Respondent does not have any rights or legitimate interests in the <webstaurant.com> domain name.  Once Complainant makes a prima facie case to support its allegations, the burden of proof shifts to Respondent to prove that it does in fact have rights or legitimate interests pursuant to 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.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”)

 

However, in this case, the Panel finds that Complainant has not made a sufficient prima facie case. Complainant has not met its evidentiary burden of proof required to transfer the burden to Respondent.  Complainant has not provided any factual evidence regarding the allegedly infringing website.  No detailed descriptions of the offending website or screen captures of the website have been provided; the Complaint is merely composed of basic assertions. For this reason the Panel declines to find that Complainant made a prima facie showing.  See Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Complainant has not alleged any facts related to Respondent's use of the disputed domain name. The Complaint merely asserts a legal conclusion. Thus, the Panel has no knowledge of Respondent's use of the domain name upon which to base a decision under Policy ¶ 4(a)(ii) and (iii).”);  see also O.C. Seacrets, Inc. v. S. TradeWINs, Inc., FA 328042 (Nat. Arb. Forum Oct. 29, 2004) (“Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests.”). 

 

The Panel finds that Complainant did not satisfy the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant also asserted that Respondent acted in bad faith.  The record shows that Respondent registered the disputed domain name August 18, 2004.  Complainant has failed to establish rights in the THE WEBSTAURANT STORE mark prior to June 29, 2009.  Previous panels have concluded that where a respondent’s disputed domain name registration predates a complainant’s rights in a mark, there can be no finding of bad faith registration absent other facts.  See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).  Accordingly, this Panel finds that Complainant did not demonstrate that Respondent acted in bad faith in its registration and use of the disputed domain name. 

 

The Panel finds that Complainant did not satisfy the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be DENIED.

 

Accordingly, it is Ordered that the <webstaurant.com> domain name REMAIN with Respondent.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: December 6, 2010.

 

 

 

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