JRD IMC, LLC, d/b/a Restaurant Depot v. Domain Administrator / Fundacion Private Whois
Claim Number: FA1206001448058
Complainant is JRD IMC, LLC, d/b/a Restaurant Depot (“Complainant”), represented by Anthony J. Palumbo of Drinker Biddle & Reath LLP, Washington, D.C., USA. Respondent is Domain Administrator / Fundacion Private Whois (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <restaurantdepot.org>, registered with Internet.bs Corp.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2012; the National Arbitration Forum received payment on June 11, 2012.
On June 14, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <restaurantdepot.org> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2012 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@restaurantdepot.org. Also on June 18, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 July 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
· Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its RESTAURANT DEPOT mark (e.g., Reg. No. 1,830,713 registered April 12, 1994).
· Complainant uses the RESTAURANT DEPOT mark in connection with grocery, restaurant supply, and equipment distribution services.
· Respondent registered the <restaurantdepot.org> domain name on August 11, 2011.
· Respondent’s <restaurantdepot.org> domain name is identical to Complainant’s RESTAURANT DEPOT mark.
· Respondent is not commonly known by the <restaurantdepot.org> domain name.
· The <restaurantdepot.org> domain name resolves to a website that contains Complainant’s RESTAURANT DEPOT mark and a copyright notice that reads “Restaurant Depot New York, NY.”
· Respondent is attempting to cause confusion among Internet users and to divert traffic away from Complainant’s website for Respondent’s own commercial benefit.
· Respondent had constructive and actual knowledge of Complainant’s rights in the RESTAURANT DEPOT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds registered trademarks for the RESTAURANT DEPOT mark. Respondent did not submit a Response in this proceeding
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."
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.
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.”).
Complainant has shown that it owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its RESTAURANT DEPOT mark (e.g., Reg. No. 1,830,713 registered April 12, 1994). Based on these trademark registrations, the Panel holds that Complainant sufficiently established rights in the RESTAURANT DEPOT mark under Policy ¶ 4(a)(i). See 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); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant claims that Respondent’s <restaurantdepot.org> domain name is identical to Complainant’s RESTAURANT DEPOT mark. Complainant notes that the disputed domain name simply contains a combination of Complainant’s RESTAURANT DEPOT mark with the generic top-level domain (“gTLD”) “.com.” Although the disputed domain name does not contain the space found in Complainant’s mark, the Panel nevertheless concludes that Respondent’s <restaurantdepot.org> domain name is identical to Complainant’s RESTAURANT DEPOT mark pursuant to Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent is not commonly known by the <restaurantdepot.org> domain name. Complainant argues that Respondent is not connected or affiliated with Complainant and that Complainant did not grant Respondent a license to use Complainant’s RESTAURANT DEPOT mark. Moreover, the WHOIS information lists “Domain Administrator / Fundacion Private Whois” as the registrant of the disputed domain name, which is not similar to the domain name. Consequently, the Panel holds that Respondent is not commonly known by the <restaurantdepot.org> domain name for the purpose of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that the <restaurantdepot.org> domain name resolves to a website that contains Complainant’s RESTAURANT DEPOT mark and a copyright notice that reads “Restaurant Depot New York, NY.” Complainant provides a screenshot of the resolving website. The resolving website contains a list of hyperlinks offering restaurant supply services. Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <restaurantdepot.org> domain name under Policy ¶ 4(c)(iii). See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is attempting to cause confusion among Internet users and is attempting to divert traffic away from Complainant’s website to Respondent’s own commercial benefit. Complainant claims that the <restaurantdepot.org> domain name resolves to a website that contains Complainant’s RESTAURANT DEPOT mark and a copyright notice that reads “Restaurant Depot New York, NY.” Complainant claims that Respondent’s use of the mark and the copyright notice create the impression that Respondent is associated with Complainant. As noted above, the resolving website contains competing hyperlinks, which the Panel may assume Respondent benefits from through receipt of click-through fees. Because Respondent is profiting presumably from click-through fees and is attempting to create confusion by using Complainant’s mark and the copyright notice, the Panel holds that Respondent registered and uses the <restaurantdepot.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the RESTAURANT DEPOT mark. Complainant argues that Complainant’s trademark registrations ensure Respondent had constructive notice and that Respondent’s registration of the identical disputed domain name is evidence of actual knowledge. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <restaurantdepot.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 23, 2012
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