The One Group LLC v. GOUVERNEUR INC. / Manon Goudreau
Claim Number: FA1208001460010
Complainant is The One Group LLC (“Complainant”), represented by Jonathan M. Doloff of Gilman Pergament LLP, New Jersey, USA. Respondent is GOUVERNEUR INC. / Manon Goudreau (“Respondent”), represented by ROBIC, LLP, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The disputed domain names are <grilladesstk.com>, <steakhousestk.com>, <stk-otl.com>, <stkgrillades.com>, <stkotl.com>, <stkrestaurantbar.com>, <stkresto.com>, and <stkrestobar.com>, registered with Webnames.ca Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Fernando Triana, Esq. as Chair of the Panel
Honorable Judge Charles K. McCotter Jr., (Ret.) as Co-Panelist
Mark Van Buren Partridge, Esq. as Co-Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2012; the National Arbitration Forum received payment on August 27, 2012.
On August 28, 2012, Webnames.ca Inc. confirmed by e-mail to the National Arbitration Forum that the <grilladesstk.com>, <steakhousestk.com>, <stk-otl.com>, <stkgrillades.com>, <stkotl.com>, <stkrestaurantbar.com>, <stkresto.com>, and <stkrestobar.com> domain names are registered with Webnames.ca Inc. and that Respondent is the current registrant of the names. Webnames.ca Inc. has verified that Respondent is bound by the Webnames.ca Inc. 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 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 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@grilladesstk.com, postmaster@steakhousestk.com, postmaster@stk-otl.com, postmaster@stkgrillades.com, postmaster@stkotl.com, postmaster@stkrestaurantbar.com, postmaster@stkresto.com, and postmaster@stkrestobar.com. Also on August 29, 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 September 18, 2012.
Complainant’s Additional Submission was received by the Forum on September 24, 2012 and deemed to be in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received by the Forum on September 29, 2012 and deemed to be in compliance with Supplemental Rule 7.
On September 19, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. Chair of the Panel, Honorable Judge Charles K. McCotter Jr., (Ret.) and Mark Van Buren Partridge, Esq., as Panelists.
Having reviewed the communication 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
This complaint is based upon Complainant’s long time use in the United States and ownership worldwide of the STK marks since at least 2006. Complainant alleges it holds numerous trademark registrations for bar service and restaurants, duly proved under the Exhibits enclosed in the Complaint (see Annexes 1 to 7), which it deems sufficient enough to invoke protection.
Complainant’s main contentions are as follows:
i. United States Patent and Trademark Office ("USPTO") (Reg. No. 3,188,230 registered December 19, 2006);
ii. Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA722,923 registered September 4, 2008);
iii. European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 4599197 January 9, 2006);
iv. Instituto Mexicano de la Propiedad Industrial (“IMPI”) (Reg. No. 1,219,788 January 21, 2011);
v. World Intellectual Property Organization (“WIPO”) (Reg. No. 1,074,024 April 4, 2011); and
vi. Department of Trade and Industry Companies and Intellectual Property Commission (“CIPC”) (Reg. No. 2009/15863 August 19, 2009).
The filing dates for these registrations and the others enclosed in the Complaint predate the registration of the disputed domain names.
i. Respondent had notice of this dispute years before it registered the disputed domain names.
ii. Respondent does not use and has not prepared to use the disputed domain names.
iii. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s famous STK trademark in any manner, including not in any domain name.
iv. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain names.
v. Respondent is using the disputed domain names to resolve to a website that displays third-party links to Respondent’s registrar’s services without Complainant’s authorization.
i. Respondent acquired the disputed domain names with knowledge of Complainant’s STK trademarks.
ii. Respondent’s registration and use of the eight disputed domain names containing the STK mark and eight “.ca” domain names containing the STK mark is evidence of bad faith under Policy ¶ 4(b)(ii).
iii. Respondent’s diversion of Internet users who are searching for Complainant has resulted in a disruption of Complainant’s business and is evidence of bad faith registration and use.
iv. Respondent’s registration and use of the disputed domain names results in commercial gain for Respondent through the confusion of Internet users that are searching for Complainant.
Respondent owns and manages several first class hotels in Quebec, Canada and owns several trademarks and domain names related to its business.
Respondent’s main contentions are as follows:
1. Respondent has registered and applied for numerous trademarks in association with the offered services in Canada.
2. In Spring 2011, Respondent saw the opportunity to start a new brand of hotels and revamp some of its establishments under the OTL trademark.
3. Respondent was looking for short-length trademarks to adopt for the spas and steakhouse restaurants that would be integrated to the OTL hotels and came up with the idea of STK for the restaurants.
4. Complainant owns a STK trademark registration in Canada against which Respondent initiated a Section 45 proceeding on October 3, 2011.
5. Complainant has rights to the STK trademark and Respondent has pending rights over the same expression, consequently, this UDRP proceeding should be denied so that the parties can proceed with court proceedings regarding the trademark.
6. Respondent does not challenge the validity of Complainant’s registrations of the STK mark in this proceeding and leaves to the Panel whether the domain names are identical or confusingly similar to the mark.
i. Respondent notes that the <stk-otl.com> and <stkotl.com> disputed domain names not only contain the “stk” term and terms that are generic or descriptive of the nature of the services or business but they also contain the “otl” term, to which Respondent owns a Canadian trademark for.
ii. At least respect of those two specific disputed domain names the Panel should conclude that there is no confusing similarity between them.
7. Respondent has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
i. Respondent has filed an expungement proceeding against Complainant’s STK trademark registration in Canada.
ii. The expungement proceeding against Complainant’s STK trademark is a demonstrable preparation to use the disputed domain names.
iii. Respondent applied for the registration of STK trademark in Canada which is a demonstrable preparation to use the disputed domain names.
iv. The disputed domain names resolve to the registrar’s default page that is automatically enabled by the registrar when a domain name is registered. The resolving websites say “under development [domain name] is under development Please check back later for updates.” The information below that statement merely relates to the services offered by the registrar and does not contain sponsored links.
v. Respondent has purposely not used the disputed domain names until the trademark expungement proceeding is concluded.
vi. Respondent is deliberately not using the disputed domain names at this time.
8. Respondent has not registered and is not using the disputed domain names in bad faith.
i. Complainant did not provide any argument or evidence in support of bad faith argument.
ii. Respondent did not register the disputed domain names to prevent the owner of the trademark from reflecting its mark in a domain name, thereby preventing a finding of bad faith under Policy ¶ 4(b)(ii).
iii. Respondent’s domain names were not registered “primarily for the purpose of disrupting the business of a competitor, but quite simply to secure the Respondent’s rights in domain names corresponding to a name (i.e. the STK trademark) for which the Respondent made demonstrable preparations to use in connection with a bona fide offering of goods or services.
iii. Respondent is merely holding the disputed domain names until the trademark expungement proceeding with the CIPO is concluded and has therefore not registered the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
iv. Respondent is not a cybersquatter who registered disputed domain names confusingly similar to a trademark owned by a complainant, but a dispute that is far more complex between competing rights and interests in the term “STK,” as a trademark in Canada.
1. Complainant
a. Respondent has admitted and shown the Panel that it is a sophisticated trademark owner who is now working to “use whatever back-alley trick and legal loophole is available to it, to steal Complainant’s famous brand for itself in Canada.”
b. Because of the nature of Complainant’s STK restaurants it is difficult for Complainant to find suitable locations that will fit the urban, woman-centric character of the STK brand. This makes the process of selecting and developing a location “anything but straightforward or easy.”
c. Respondent admits to knowledge of Complainant’s STK trademark and brand before filing its own domain names incorporating the STK trademark.
d. Respondent cannot hold domain names pending disputes with trademark holders.
e. Passively holding or parking a domain name without actually using the disputed domain name is not a bona fide offering of goods or services and actually evidences both a lack of a legitimate right or interest in the disputed domain names.
f. Even if the Panel agrees with Respondent that it has made generic preparations to use the domain names and trademark, Respondent has not shown demonstrable preparations to use the disputed domain names for a bona fide offering of goods or services. Respondent has not provided any evidence of its future use of the domain names.
g. Respondent wastes the Panel’s time in focusing on the contested Section 45 proceedings with the CIPO because such a proceeding is irrelevant until there is a final ruling, and Complainant continues to hold rights in the STK trademark elsewhere.
h. Respondent admits that it registered the disputed domain names to disrupt the business of a competitor because it has undertaken a path to rip Complainant’s rights in the STK trademark away from Complainant in Canada so that it can operate a directly competing business.
i. Complainant’s STK trademark is well known in Canada, despite Respondent’s assertions to the contrary.
j. Respondent has not provided any evidence that it is not profiting from the resolving websites, and Respondent continues to benefit from the parking of the domain names because it does not have to pay hosting fees.
k. Respondent has produced no evidence that it is known by the disputed domain names.
l. One instance of registering several infringing domain names is sufficient to satisfy Policy ¶ 4(b)(ii).
2. Respondent
a. The UDRP proceedings are not the appropriate means and forum to litigate a dispute that, at its core, is not about an allegedly abusive registration and use of the disputed domain names.
b. Respondent would have tried to register and use the trademark STK in Canada whether or not there would have been an obstacle to overcome.
c. The purpose for which Respondent registered the disputed domain names is simply to secure its rights in them in view and anticipation of Respondent’s carefully planned registration, adoption, and use of its own STK trademark in Canada.
d. Respondent intends to use and will use the disputed domain names in connection with a website to promote its steakhouse restaurants, but only once they will be ready to be opened.
e. Respondent can and does have current rights or legitimate interests in the disputed domain names.
f. The term “OTL” is not descriptive of Complainant’s business, but rather distinctive and suggestive of Respondent’s hotel services.
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
Complainant asserts and proves that it owns trademark registrations for the STK mark with the USPTO (Reg. No. 3,188,230 registered December 19, 2006), CIPO (Reg. No. TMA722,923 registered September 4, 2008), and OHIM (Reg. No. 4599197 January 9, 2006), among others (Complaint Annexes 1 to 7).
Complainant claims that its trademark has become famous as it operates bars and restaurants in the following cities of the United States of America: New York City, Los Angeles, Miami, Las Vegas, and Atlanta. Complainant also notes that it will be opening a new location in London, England soon.
On October 3, 2011, Respondent initiated a Section 45 proceeding in Canada, to cancel Complainant’s Canadian STK registration, but that Respondent has not obtained a final ruling in its favor from CIPO.
Complainant contends that any arguments that Respondent makes regarding such proceedings are irrelevant because the UDRP is not the correct forum to determine the validity of a trademark. Further, Complainant asserts that Respondent’s trademark applications for the STK and STK OTL marks in Canada are not relevant to these proceedings, because Respondent has not actually been granted registration for either of these marks.
On the other hand, Respondent contends that this UDRP proceeding should be denied so that the parties can proceed with court proceedings regarding the trademark.
Respondent claims that it has filed an expungement proceeding against Complainant’s STK trademark registration in Canada and that it has applied for trademark registrations with CIPO for the STK (App. No. 1,544,452) and STK OTL trademarks (App. No. 1,580,245). Respondent argues that this dispute is much more complex than a simple cybersquatter issue under the UDRP, and that this case should be decided outside of the UDRP.
This Panel is allowed to determine its own jurisdiction and it has jurisdiction only from the facts and arguments presented to it[1].
The facts are that (i) Complainant owns several STK trademark registrations as proved in Annexes 1 to 7 of the Complaint and that (ii) there is an alleged abusive registration of domain names since Respondent owns sixteen (16) domain names registrations including the trademark STK as proved by Complainant in Annex 11 of the Complaint.
Consequently, this Panel considers that despite the Section 45 proceeding against the STK trademark registration in Canada, this proceeding falls within its scope, since the Uniform Domain-Name Dispute Resolution Policy is clear stating that:
“Dispute proceedings arising from alleged abusive registrations of domain names (for example, cybersquatting) may be initiated by a holder of trademark rights”.
Thus, this dispute arises from an alleged abusive registration of domain names (sixteen (16) domain names registrations including the trademark STK) and it is initiated by a holder of trademark rights (Complainant owns several trademark registrations as proved in Annexes 1 to 7 of the Complaint).
Therefore, the UDRP procedure is appropriate to solve this dispute.
1. Complainant owns the STK trademark in the United States of America, Canada, Mexico, the European Community, and other jurisdictions since before the disputed domain names were registered by Respondent.
2. Respondent was aware of the Complainant’s rights in the trademark STK, yet it incorporated the trademark in disputed domain names. Thus, Respondent used the STK trademark to create a likelihood of confusion aimed to divert consumers to Respondent’s services.
3. Respondent has never been commonly known by the disputed domain names or the STK trademark, but by GOUVERNEUR.
4. Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed, or otherwise permitted Respondent to use the STK trademark, nor is Respondent an authorized vender, supplier, or distributor of Complainant’s services.
5. Before any notice of this dispute, Respondent neither used the disputed domain names nor demonstrated that preparations had been made in connection with a bona fide offering of goods or services.
6. Complainant and Respondent offer competitive services. Therefore, Complainant and Respondent are competitors in the hospitality services.
7. Respondent chose an identical trademark to identify identical services as the Complainant and, once it was aware of the existence of a legitimate owner of the trademark, insisted in its endeavor of appropriating Complainant’s trademark and disrupting Complainant’s business.
8. Respondent registered several domain names combining the STK trademark with both “.com” and “.ca” generic top-level domains (“gTLD”) and country-code top-level domains (“ccTLD”), respectively.
9. Respondent has the intention to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademark.
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.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all, the Panel will determine whether or not the disputed domain names are identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain names; and thirdly, the Panel will establish whether or not the disputed domain names have been registered and are being used in bad faith by Respondent.
Complainant contends to be the owner of the trademark STK in the United States of America, Canada, Mexico, and the European Community, among other jurisdictions, which has been continuously used since 2006 to identify bar services and restaurants.
a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[2] and thus it is well-stablished that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant proved its rights in the STK trademark. Annexes 1 to 7 to the Complaint include:
i. United States Patent and Trademark Office ("USPTO") (Reg. No. 3,188,230 registered December 19, 2006) (bar services; restaurants);
ii. Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA722,923 registered September 4, 2008) (bar services; restaurants);
iii. European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 4599197 January 9, 2006) (nightclubs; and restaurant, bar, cafeteria, lounge and nightclub services);
iv. Instituto Mexicano de la Propiedad Industrial (“IMPI”) (Reg. No. 1,219,788 January 21, 2011) (bar services; restaurants services);
v. World Intellectual Property Organization (“WIPO”) (Reg. No. 1,074,024 April 4, 2011) (bar services; restaurants); and
vi. Department of Trade and Industry Companies and Intellectual Property Commission (“CIPC”) (Reg. No. 2009/15863 August 19, 2009) (Services for providing food and drink; temporary accommodation; restaurants; bars; cafes; cocktail lounges; wine bars; spa services, including providing temporary accommodation and meals to clients of a health or beauty spa; and hotels).
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the stated services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive[3].
Thus, Complainant established its rights in the STK trademark[4].
Therefore, the Panel concludes that Complainant has demonstrated rights in the STK trademark for purposes of Paragraph 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark
Complainant alleges that the disputed domain names incorporate the STK trademark, adding only the generic or descriptive terms such as “grillades”, “steakhouse”, “resto”, “restobar”, “restaurantbar,” and “otl” and the gTLD “.com”. According to Complainant, these changes are not sufficient to avoid a likelihood of confusion with the STK trademarks.
In the first place, before establishing whether or not the domain names <grilladesstk.com>, <steakhousestk.com>, <stk-otl.com>, <stkgrillades.com>, <stkotl.com>, <stkrestaurantbar.com>, <stkresto.com>, and <stkrestobar.com> are confusingly similar to the Complainant’s STK trademark, the Panel wants to point out that the addition of gTLDs, i.e., “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[5]. Neither the addition of ccTLD, i.e., “.ca,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD have a distinctive function[6].
UDRP panels have unanimously accepted that the inclusion of the “.com” (gTLD) in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the panel stated that:
“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”
Furthermore, the Panel considers that the likelihood to create confusion should be analyzed separately. First, we will proceed to study the disputed domain names <grilladesstk.com>, <steakhousestk.com>, <stkgrillades.com>, <stkrestaurantbar.com>, <stkresto.com>, and <stkrestobar.com>. Secondly, we will approach the likelihood to create confusion of the disputed domain names <stk-otl.com> and <stkotl.com>.
i) Likelihood to create confusion between the STK trademark and the disputed domain names <grilladesstk.com>, <steakhousestk.com>, <stkgrillades.com>, <stkrestaurantbar.com>, <stkresto.com>, and <stkrestobar.com>
The reproduction of the STK trademark by the domain names <grilladesstk.com>, <steakhousestk.com>, <stkgrillades.com>, <stkrestaurantbar.com>, <stkresto.com>, and <stkrestobar.com>, respectively, is sufficient grounds to establish that the disputed domain names are confusingly similar to the trademarks[7]. Especially since the disputed domain names reproduce entirely the Complainant’s marks without any other distinctive elements. Consequently, consumers will assume that the owner of the domain name is the Complainant.
In addition, the Panel agrees with the Complainant on the conclusion that including the terms “grillades”, “steakhouse”, “restaurantbar”, “resto,” and “restobar” are not sufficient to make the disputed domain names different from the STK trademarks.
In fact, the expression “grillades” is a French word which means grilled meat[8], “resto” is a French familiar expression for restaurant[9], “restaurantbar” and “restobar”, are the combination of the expressions “restaurant”, “resto” which, as stated before, means restaurant and “bar”, and “steakhouse” is a restaurant whose specialty is beefsteak[10]. Hence, the terms “grillades”, “steakhouse”, “restaurantbar”, “resto” and “restobar” are all generic or descriptive of the bar services and restaurants[11], thus, the aforementioned expressions do not add distinctiveness or a source of origin to the domain names.
Consequently, the disputed domain names are confusingly similar to the Complainant’s trademarks.
Respondent merely adds a generic or descriptive expression such as “grillades”, “steakhouse”, “restaurantbar”, “resto,” and “restobar” to distinctive trademarks STK. This addition rather than distinguishing the domain names from the Complainant’s trademarks makes them confusingly similar to the trademarks. Hence, the domain names should be deemed as confusingly similar to the registered trademarks[12]. This conclusion is not disputed by Respondent.
ii) Likelihood to create confusion between the STK trademark and the disputed domain names <stk-otl.com> and <stkotl.com>
The disputed domain names <stk-otl.com> and <stkotl.com> reproduce the STK trademark. The mere total reproduction of a registered trademark requires a highly thorough review of the likelihood to create confusion between the trademark and the disputed domain names.
However, both disputed domain names include the expression OTL. Hence, it is necessary to determine whether or not the expression OTL provides the disputed domain names with enough distinctiveness with regards to STK trademark. Especially whether or not consumers would understand that the disputed domain names <stk-otl.com> and <stkotl.com> do not have an obvious relationship with Complainant’s business and trademark.
According to Complainant’s assertions the expression OTL is presumably a phonetic play on the word “hotel” or “motel”. Given the Respondent’s “short-length approach to branding”, and its prior trademarks (i.e., LUX to identify a luxury residency), Complainant’s conclusion regarding OTL is appropriate. Moreover, in its additional submission Respondent states that “the term “OTL” is not descriptive of the Complainant’s business, but rather distinctive and suggestive of the Respondent’s hotel services”, confirming Complainant’s initial assertions.
Furthermore, the expression OTL could be easily understood as “out to lunch” as used in chats and other means of written conversation.
Hence, it is possible that a consumer understands that OTL stands for “out to lunch”, “hotel” or “motel,” all of the above, descriptive or generic expressions related to hospitality services including bar services and restaurants.
For this reason, the OTL expression does not add distinctiveness or a source of origin to the domain names. Consequently, the disputed domain names are confusingly similar to Complainant’s trademarks.
Generic and descriptive terms, with an obvious relationship to Complainant’s business operation, i.e., hospitality services including bar services and restaurants, derive in likelihood to create confusion between the disputed domain names and the marks[13]. In this case, the consumer creates an obvious relationship between the trademarks and the domain names that contain them since the expressions “grillades,” “steakhouse,” “restaurantbar,” “resto,” “otl,” and “restobar” relates to hospitality services including bar services and restaurants. Thus, by registering the disputed domain names, Respondent creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the disputed domain names.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain names are confusingly similar to the Complainant’s marks and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[14].
In Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”
Therefore, a complainant is required to make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to the respondent, who must come forward with concrete evidence of its rights or legitimate interests[15]. If respondent fails to do so, the complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the domain names <grilladesstk.com>, <steakhousestk.com>, <stk-otl.com>, <stkgrillades.com>, <stkotl.com>, <stkrestaurantbar.com>, <stkresto.com>, and <stkrestobar.com>: i) Respondent is not commonly known by the disputed domain name; ii) Respondent has not been authorized by Complainant to use the STK trademark in any manner; iii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, because the disputed domain names are parked websites that offer registrar’s services, hence, Respondent is not making a legitimate noncommercial or fair use of the domain names; iv) Respondent chose Complainant’s STK famous trademark to identify the same services as its rightful owner, thus, creating a linkage between Complainant’s service’s and the disputed domain names; and v) Respondent had notice of the dispute for years before registering the disputed domain names.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As stated by previous Panels the notice of the dispute is not only the notice of this UDRP procedure, it is the knowledge of the existence of a trademark[16].
Consequently, the Panel finds that Respondent had notice of the dispute as of the effective date of Complainant’s United States trademark registration No. 3,188,230, which far predated the earliest registration of the disputed domain names. It is clear that Respondent knew about this registration at least since October 3, 2011 date on which Respondent filed the Section 45 proceeding against Complainant’s trademark in Canada (see Annexes 3.3 and 3.11 of the Response). In fact, Canadian trademark registration benefits from the United States’ priority application date.
Respondent states that it had notice of this dispute on August 27, 2012 and that before that date it has filed an expungement proceeding against Complainant’s STK trademark registration in Canada. According to the Respondent the expungement proceeding against Complainant’s STK trademark is a demonstrable preparation to use the disputed domain names. Respondent, also before August 27, 2012, applied for the registration of STK trademark in Canada which Respondent’s contents it is a demonstrable preparation to use the disputed domain names. Respondent has purposely not used the disputed domain names until the trademark expungement proceeding is concluded. Respondent is deliberately not using the disputed domain names at this time.
Notwithstanding, all of the Respondent proceedings, i.e., trademark applications and Section 45 proceeding, were initiated far after Respondent had knowledge of Complainant’s registration. Moreover, as stated in Respondent’s additional submission, Respondent would have tried to register and use the STK trademark in Canada whether or not there would have been an obstacle to overcome. Consequently, this Panel may conclude that Respondent knew about the existence of a previous trademark and despite a previous and rightful registration, registered several domain names reproducing that trademark.
Hence, Respondent did not use the disputed domain names or a name corresponding to the disputed domain names nor made demonstrable preparations to use them in connection with a bona fide offering of goods or services before any notice because Respondent knew about Complainant’s trademark registration before October 3, 2011, registrations that predate the disputed domain names registrations.
Furthermore, a trademark application and the initiation of a Section 45 proceeding do not constitute demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services because to use a domain name it is not necessary to own a trademark or to expunge one from a third party.
On the other hand, Respondent has not been commonly known by the disputed domain names. On the contrary, as shown in Annexes 3.6 and 3.7 of the Response, Respondent is commonly known as GOUVERNEUR.
Finally, Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. The disputed domain names resolve to a site which promotes domain name registrations. Consequently, the disputed domain names are being used to promote a service once the consumers have already been misled.
This Panel believes that Respondent failed to prove his rights or legitimate interests in the domain names <grilladesstk.com>, <steakhousestk.com>, <stk-otl.com>, <stkgrillades.com>, <stkotl.com>, <stkrestaurantbar.com>, <stkresto.com>, and <stkrestobar.com>. Simply stating that the domain names are going to be used as a promotional site for a steakhouse, holding a trademark application, and initiating an expungement procedure is not evidence of Respondent’s rights or legitimate interest in them. Since their registration, Respondent has had enough time to prepare and use the website of the disputed domain names; notwithstanding, it has not use them or prove that it has been preparing them to be used.
Accordingly, Respondent failed to prove that before receiving the written notice of the Complaint it was using or preparing a website to use the disputed domain names in connection with a bona fide offering of goods.
The Panel conducted searches Ex Officio in the search engines Google and BING to confirm that Respondent is not commonly known by the disputed domain names <grilladesstk.com>, <steakhousestk.com>, <stk-otl.com>, <stkgrillades.com>, <stkotl.com>, <stkrestaurantbar.com>, <stkresto.com>, and <stkrestobar.com>[17], concluding that the Respondent was not and has never been commonly known by the disputed domain names, which fails to comply with the defense set forth under Policy ¶ 4(c)(ii).
Respondent has not used the disputed domain names, each of them revert to a site which promotes domain name registrations, but according to Respondent’s assertions the domains are inactive. Consequently, Respondent is not making a legitimate noncommercial or fair use of the domain names. Failing to actively use the disputed domain names does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)[18].
Therefore, the second requirement of paragraph 4(b) of the Policy is met.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant contends that Respondent’s registration and use of the eight disputed domain names containing the STK trademark and eight “.ca” domain names containing the STK trademark are evidence of bad faith under Policy ¶ 4(b)(ii). Complainant contends that “Respondent’s pattern of conduct in passively holding/‘warehousing’ the eight subject domain names” and their “eight corresponding domain names having ‘.ca’ extensions” further supports the presumption of bad faith on Respondent’s part (Annex 11 to the Complaint).
As stated by the panel in State Farm Mut. Auto. Ins. Co. v. Sotelo d/b/a Toltec[19], the requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action.
The mere failure to make an active use of the <grilladesstk.com>, <steakhousestk.com>, <stk-otl.com>, <stkgrillades.com>, <stkotl.com>, <stkrestaurantbar.com>, <stkresto.com>, and <stkrestobar.com> domain names is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)[20].
The passive holding of the <grilladesstk.com>, <steakhousestk.com>, <stk-otl.com>, <stkgrillades.com>, <stkotl.com>, <stkrestaurantbar.com>, <stkresto.com>, and <stkrestobar.com> disputed domain names in sum with Respondent’s registration of multiple domain names incorporating Complainant’s trademarks, establishes a pattern of bad faith registration[21].
Complainant also contends that Respondent’s intended use of the disputed domain names will disrupt Complainant’s business. Complainant states that Respondent’s intended use will falsely suggest a sponsorship and/or endorsement by Complainant of Respondent’s website and use of the disputed domain names. Complainant also states that Respondent is a competitor in the hospitality services because Respondent owns hotels and most of Complainant’s restaurants are within hotels.
Since Complainant’s trademarks are used along with the generic and descriptive terms “grillades”, “steakhouse”, “resto”, “restobar”, “restaurantbar,” and “otl” “it is reasonable to conclude that many Internet users would suppose that the website, to which the disputed domain name resolves, has a connection with the Complainant”[22]. This conclusion might disrupt Complainant’s business, especially since Complainant and Respondent are competitors in the hospitality services.
Respondent’s assertion regarding the trademark availability search (Annex 3.23) concerning the STK trademark and its statement concerning trying to register and use the trademark STK in Canada whether or not there would have been an obstacle to overcome indicates bad faith, because it shows that Respondent knew about the existence of a previously registered trademark and instead of waiting until the Canadian proceeding was over, it decided to register the disputed domain names. On the other hand, Respondent could have simply changed the trademark STK since it was a recently created brand. Hence, it is possible to conclude that Respondent registered the disputed domain names primarily for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii).
Consequently, the registration of the eight disputed domain names incorporating Complainant’s trademarks along with the generic and descriptive terms “grillades”, “steakhouse”, “resto”, “restobar”, “restaurantbar,” and “otl”, being currently inactive and the possible disruption of Complainant’s business, evidenced bad faith registration and use pursuant to Policy ¶¶ 4(b)(ii) and (iii).
Therefore, the three elements of the Policy 4(a)(iii) are satisfied in the present case in respect to Respondent of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grilladesstk.com>, <steakhousestk.com>, <stk-otl.com>, <stkgrillades.com>, <stkotl.com>, <stkrestaurantbar.com>, <stkresto.com>, and <stkrestobar.com> domain names be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq.
Chair of the Panel
______________________________ ______________________________
Honorable Judge
Charles K. McCotter Jr., (Ret.) Mark Van Buren Partridge, Esq.
Co-Panelist Co-Panelist
Dated: October 17, 2012
COLO 1380 0960 55810/SÁG
4290210255281
[1] See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction”).
[2] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000).
[3] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[4] 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 Royal Bank of Scot. Grp. plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum November 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum August 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).
[5] See Altec Industries, Inc. v. I 80 Equip., FA 1437753 (Nat. Arb. Forum May 18, 2012).
[6] See YottaMark, Inc. v. Lukasz Chudy, FA 1392357 (Nat. Arb. Forum July 15, 2011).
[7] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[8] “grillades.” WordReference.com. 2012. <http://www.wordreference.com/fren/grillades>.
[9] “resto.” WordReference.com. 2012. <http://www.wordreference.com/fren/resto>.
[10] “steak house.” Merriam-Webster, Inc. 2012. <http://www.merriam-webster.com/dictionary/steakhouse>.
[11] See F. Hoffmann-La Roche AG v. MedCenter Canada, D2005-1291 (WIPO January 19, 2006); see also Sanofi-Aventis v. Darko, D2005-1357 (WIPO February 24, 2006); see also Minn. Mining & Mfg. Co. v. Overbey, D2001-0727 (WIPO October 15, 2001).
[12] See Forest Labs., Inc. v. candrug, D2008-0382 (WIPO April 24, 2008) (“when a respondent merely adds generic or descriptive terms to a distinctive trademark, the domain name should be considered confusingly similar to the registered trademark”.); see also Bayer Aktiengesellschaft v. Monseen, D2003-0275 (WIPO May 30, 2003).
[13] See Liberty Mut. Ins. Co. v. Kanter Assocs. SA a/k/a Admin, FA1299743 (Nat. Arb. Forum February 22, 2010).
[14] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO April 24, 2012).
[15] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 1, 2000).
[16] See Ideal Prods., LLC v. Manila Indus., Inc., FA 819490 (Nat. Arb. Forum November 26, 2006) (“As of April 30, 2002 (the filing date of the application for U.S. registration of SANI-TRED), Respondent was on notice of Complainant's trademark rights. Respondent cannot say that its preparation to use the domain name was without notice of the dispute, or that its use of the domain name was a bona fide offering of goods or services, given that notice”).
[17] See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006).
[18] See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”); see also Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum November 7, 2000) (“holding that the respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan”).
[19] See State Farm Mut. Auto. Ins. Co. v. Sotelo d/b/a Toltec, FA1008269 (Nat. Arb. Forum July 17, 2007).
[20] See State Farm Mut. Auto. Ins. Co. v. Sotelo, FA 1008269 (Nat. Arb. Forum July 17, 2007); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000).
[21] See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO February 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
[22] See Forest Labs., Inc. v. candrug, D2008-0382 (WIPO April 24, 2008).
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