The One Group LLC v. Liquorstore Nightclub
Claim Number: FA1208001457217
Complainant is The One Group LLC (“Complainant”), represented by Jonathan M. Doloff of Gilman Pergament LLP, New Jersey, USA. Respondent is Liquorstore Nightclub (“Respondent”), represented by Wing T. Yan of Nelligan O'Brien Payne LLP, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stkbar.com>, Registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2012; the National Arbitration Forum received payment on August 8, 2012.
On August 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <stkbar.com> domain name is Registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@stkbar.com. Also on August 10, 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.
A timely Response was received and determined to be complete on August 29, 2012.
Complainant’s Additional Submission was received on September 4, 2012 and deemed compliant with Supplemental Rule 7.
On September 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant contends that:
B. Respondent contends that:
C. Additional Submissions – Complainant further contends that:
1) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is identical or confusingly similar to a Trademark in which Complainant has rights.
2) Complainant has not met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been Registered and is being used in bad faith.
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;
(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 owns a trademark registration for the STK mark with the USPTO (Reg. No. 3,188,230 Registered December 19, 2006) and with the CIPO (Reg. No. TMA722,923 Registered September 4, 2008) and several trademark registrations with other national trademark authorities. While there is a pending dispute regarding Complainant’s CIPO trademark registration, no decision has been made regarding the dispute and Complainant’s CIPO registration is still in effect until the dispute is resolved.
The Panel finds that these trademark registrations sufficiently establish Complainant’s rights in the STK mark for the purpose of Policy ¶ 4(a)(i). See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO). Even if the CIPO registration were insufficient to establish rights, Complainant’s USPTO trademark registration is sufficient under Policy ¶ 4(a)(i), regardless of Respondent’s location. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has Registered its trademark in the country of the respondent’s residence).
Respondent’s disputed domain name combines Complainant’s STK mark with the generic term “bar” and the generic top-level domain (“gTLD”) “.com.” As Complainant alleges that it uses the STK mark in connection with bar services and restaurants, the Panel finds that the term “bar” is descriptive of Complainant’s business. The Panel finds that the additions of a descriptive term and a gTLD both fail to remove a disputed domain name from the realm of confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel concludes that Respondent’s <stkbar.com> domain name is confusingly similar to Complainant’s STK mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <stkbar.com> domain name is comprised of a common abbreviation and as such cannot be found to be confusingly similar to Complainant’s mark, in Complainant’s Additional Submission, Complainant argues that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. The Panel agrees. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent did not present any evidence that it is commonly known by the disputed domain name or that it is known by “STK,” or “STK Bar.” The Panel finds that Respondent is not commonly known by <stkbar.com>. 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).
However, Respondent claims that it is preparing a website for the <stkbar.com> domain name that Respondent will use for the bar side of its restaurant. Respondent claims that it is currently working on the food side of the business, which Respondent argues is the reason it has not yet developed the website. As proof of its business plan, Respondent contends that Respondent also owns the <stklounge.com> domain name in connection with its business. Although the evidence is not substantial and the domain name was registered several years ago, Respondent does have a legitimate business operation that is reasonably related to the domain name and its claims are more than plausible. The Panel finds that Respondent is making demonstrable preparations to make a legitimate use of the <stkbar.com> domain name. The Panel determines that Respondent owns rights and legitimate interests in the domain name under Policy ¶ 4(c)(i). See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent Registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel finds that Respondent has not Registered or used the <stkbar.com> domain name in bad faith since it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent Registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent alleges that it does not intend to sell, rent, or otherwise transfer the disputed domain name to Complainant. As Complainant did not make any allegations under Policy ¶ 4(b)(i), the Panel finds that Respondent did not register or use the <stkbar.com> domain name in bad faith under Policy ¶ 4(b)(i).
Respondent also claims that it did not engage in a pattern of bad faith registration and use. In light of Complainant’s failure to make any arguments under Policy ¶ 4(b)(ii), the Panel again finds that Respondent did not register or use the <stkbar.com> domain name under Policy ¶ 4(b)(ii).
Under Policy ¶ 4(b)(iii), Respondent argues that it is not a competitor of Complainant because Complainant does not operate a bar or restaurant in Canada, where Respondent resides. The Panel finds that Respondent is not competing with Complainant, the Panel concludes that Respondent did not register or use the <stkbar.com> domain name in bad faith according to Policy ¶ 4(b)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant).
Respondent contends that it Registered and intends to use the <stkbar.com> domain name for a legitimate business: Respondent’s steakhouse. Respondent alleges that it plans to operate a website at the disputed domain name in connection with the bar section of Respondent’s restaurant. The Panel determines that Respondent has a legitimate business purpose and that no confusion was intended. The Panel concludes that Respondent did not register or use the <stkbar.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Vidiots Delight, Inc. v. Digitellum, Inc., D2000-1086 (WIPO Oct. 18, 2000) (finding no bad faith where the respondent was using the domain name in connection with its business even though no website was yet developed) ; see also Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent Registered the domain name in connection with a fair business interest and no likelihood of confusion was created).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <stkbar.com> domain name REMAIN WITH Respondent.
M. Kelly Tillery, Esquire, Panelist
Dated: September 18, 2012
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