Firkin
Hospitality Group Inc. v. Firkin Development Group a/k/a Samut Prakaan a/k/a
Pete Smith
Claim
Number: FA0302000145205
Complainant is
Firkin Hospitality Group Inc., Toronto, ON, Canada (“Complainant”) represented by Barry E. Hutsel,
of Moffat & Co.. Respondent is Firkin Development Group a/k/a
Samut Prakaan a/k/a Pete Smith, Bankok, Thailand
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <firkin.com>, registered with eNom, Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 7, 2003; the Forum received a hard copy of the
Complaint on February 10, 2003.
On
February 7, 2003, eNom, Inc. confirmed by e-mail to the Forum that the domain
name <firkin.com> 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
February 17, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 10, 2003 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 postmaster@firkin.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 13, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <firkin.com>
domain name is identical to Complainant’s FIRKIN mark.
2. Respondent does not have any rights or
legitimate interests in the <firkin.com> domain name.
3. Respondent registered and used the <firkin.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds several Canadian trademark registrations or pending applications that
incorporate the FIRKIN mark, including Reg. No. TMA573,956 registered on
January 17, 2003 with the Canadian Intellectual Property Office. Complainant
uses the marks in relation to the operation of licensed restaurants and pubs
throughout Canada since as early as 1987.
Respondent
registered the <firkin.com> domain name on June 20, 2002. The
website at the disputed domain name resolves to a portal website that offers
links to financial services, shopping opportunities and entertainment. The
website reads, “This Site is Planned for Development.”
After being
contacted by a party working for Complainant’s affiliate about the availability
of the <firkin.com> domain name, Mr. Pete Smith indicated that he
was in the process of selling the disputed domain name. On January 10, 2003,
Complainant advised Mr. Smith of Complainant’s trademark rights and requested
the transfer of the disputed domain name to Complainant. From January 11, 2003
to January 13, 2003, Mr. Smith advised Complainant three times that Mr. Smith
would be selling the disputed domain name. On January 13, 2003, the WHOIS
registration contact name information was changed to Samut Prakaan. On January
24 and 29, 2003, Complainant wrote to Mr. Prakaan to confirm that Mr. Prakaan
was renting the <firkin.com> domain name from Pete Smith, which
information Mr. Prakaan confirmed.
On February 11,
2003, after this proceeding was commenced, Mr. Smith indicated to Complainant
that Mr. Smith had received an improved offer for the <firkin.com>
domain name from the “Thai group.” In the e-mails exchanged between Mr. Smith
and Mr. Prakaan on February 11, 2003, Mr. Prakaan expressed his anger about the
Complaint filed against him by Complainant. Mr. Smith assured Mr. Prakaan that the
disputed domain name had been sold to Mr. Prakaan in good faith. All of the
e-mail messages exchanged between Mr. Smith and Mr. Prakaan originated from the
same computer, which connected to the Internet through the same IP address.
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.
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.
Complainant has
established rights in the FIRKIN mark through registration with the Canadian
Intellectual Property Office and continuous use of the mark in commerce since
at least 1987.
Respondent’s <firkin.com>
domain name is identical to Complainant’s FIRKIN mark because the disputed
domain name incorporates Complainant’s entire mark and merely adds the generic
top-level domain (gTLD) “.com” to the end of the mark. The addition of a gTLD
does not distinguish a domain name from a mark because gTLDs are required for
domain names on the Internet. See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Blue Sky Software Corp. v.
Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to Complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not submitted a Response in this proceeding. Therefore, the Panel may accept
that all reasonable allegations and inferences in the Complaint are true. See 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Furthermore,
since Complainant has asserted a prima facie case against Respondent, the
burden shifts to Respondent to show that it has rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, Respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name).
Respondent has failed to provide the Panel with any circumstances that could
demonstrate Respondent’s rights or legitimate interests in the <firkin.com>
domain name.
Respondent is
not currently using the disputed domain name. The <firkin.com> domain
name resolves to a website that reads, “This Site is Planned for Development.”
The failure to use a website is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint and had made no
use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the Respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before notice
of the domain name dispute, the domain name did not resolve to a website, and
the Respondent is not commonly known by the domain name).
Respondent has
not offered the Panel any proof and there is no evidence on the record to establish
that Respondent is commonly known by FIRKIN or <firkin.com>.
Therefore, Respondent has failed to establish that it has rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has
provided the Panel with extensive evidence through e-mail communications with
both Samut Prakaan and Pete Smith that Respondent registered the <firkin.com>
domain name solely for the purpose of selling the disputed domain name to
Complainant, which is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(i). See Am. Online,
Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar.
16, 2000) (finding bad faith where Respondent offered domain names for sale); see
also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see also Grundfos A/S v. Lokale, D2000-1347
(WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any
context other than to offer it for sale to Complainant amounts to a use of the
domain name in bad faith).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <firkin.com> domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch , Panelist
Dated:
March 17, 2003
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