Dockeast LLC. v Richard Jurmark
Claim Number: FA0303000149147
PARTIES
Complainant
is Dockeast, LLC, New York, NY (“Complainant”)
represented by Daniel Blumenstein, of The Law Office of Daniel G. Blumenstein. Respondent is Richard
Jurmark, Bronx, NY (“Respondent”) represented by Charu Narang.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <docksoysterbar.com>,
registered with Network Solutions, Inc.
PANEL
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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 10, 2003; the Forum received a hard copy of the
Complaint on March 11, 2003.
On
March 14, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <docksoysterbar.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, 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
March 14, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 3,
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@docksoysterbar.com by e-mail.
A
timely Response was received and determined to be complete on April 2, 2003.
Complainant’s
timely Additional Submission was received and determined to be complete on
April 7, 2003.
Respondent’s
timely Additional Submission was received and determined to be complete on
April 9, 2003.
On April 16, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed James A.
Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Respondent’s <docksoysterbar.com> domain name is confusingly similar to
Complainant’s DOCKS OYSTER BAR & SEAFOOD GRILL service mark.
2. Respondent does not have any rights or
legitimate interests in the domain name at issue.
3. Respondent has registered and uses the
domain name at issue in bad faith.
B.
Respondent
1. Respondent alleges that Complainant has
disclaimed any right to use its registered mark apart from its design logo and
suggests that it cannot therefore protect the mark from a confusingly similar
domain name.
2. Respondent does not appear to claim that
it has any rights or legitimate interests in the domain name at issue.
3. Respondent denies that he registered the
domain name at issue in bad faith.
C. Complainant’s Additional Submission
1. Complainant points out that Respondent
only registered the domain name at issue in his capacity as an employee of
Complainant.
Complainant argues that
Respondent furnished false information in connection with registration and
renewal of the domain name at issue.
D. Respondent’s Additional Submission
1. Respondent denies that he intentionally
furnished false information in connection with registration or renewal of the
domain name at issue.
2. Respondent alleges that Complainant did
not properly document its acquisition of the restaurant from its predecessor in
interest if it now claims the domain name at issue.
FINDINGS
Since 1988, Complainant and its
predecessor in interest have operated DOCKS OYSTER BAR & GRILL which has been a premier seafood
restaurant in New York City. Its primary
service mark, DOCKS OYSTER BAR & SEAFOOD GRILL, (hereinafter “Mark”) is used in word and logo
formats and is registered with and by the United States Patent and Trademark Office under serial No. 73744568 and
Registration No. 1682271. The
continuous use of the Mark in connection with two restaurants has included prominent placement of the Mark on menus, restaurant awnings, and in a
variety of advertising and
promotional materials for its restaurant services.
The
Complainant, DockEast LLC, purchased the restaurants and all of their assets on
January 31, 2002 from 633 Seafood
Restaurant Incorporated. The Mark is owned separately
by 2427-2429 Seafood Restaurant Corp. and was licensed to the Complainant at the time of the acquisition pursuant to a
License Agreement.
The
Respondent, Richard Jurmark, was a restaurant general manager for one of the restaurants prior to the acquisition
and was an inherited employee of the Complainant from January 31, 2002 through June 3, 2002, when he ceased
to be an employee under circumstances
which are not explained.
It
appears that Respondent, in his capacity as an employee, or at least during his
employment by DOCKS OYSTER BAR &
SEAFOOD GRILL, and prior to the acquisition,
registered the domain name at issue in December of 2000.
According
to the WHO IS database, the original registrant of the domain name was not Richard Jurmark, but DOCKS OYSTER BAR &
SEAFOOD GRILL, although it listed Jurmark’s
address and phone number. After Respondent’s employment, apparently in late December of 2002 but before the end
of January, 2003, Respondent renewed the registration
of the domain name at issue and changed the name of the registered owner to himself, personally.
There is no
suggestion that Respondent has used the domain name in connection with a bona
fide offering of goods and services or that he has been known by the domain
name at issue. There is no suggestion that his employer has ever licensed
Respondent to use the Mark or the domain name at issue.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
Respondent’s <docksoysterbar.com> domain name is confusingly similar to Complainant’s mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO
Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to Complainant’s “Asprey
& Garrard” and “Miss Asprey” marks); see also WestJet Air
Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the
<westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET
AIR CENTER mark).
Based on the submissions and the
authority above, I find that Paragraph 4(a)(i) of the Policy has been satisfied by the Complainant.
Respondent
candidly admits in his Supplemental Response that he has no interest in the
domain name at issue. In any event, his failure to use the domain name
evidences that he lacks rights or legitimate interests in the domain name. See
Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(finding that “merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy”); see also Chanel,
Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or
legitimate interests where “Respondent registered the domain name and did
nothing with it”).
Based on the submissions and the
authority above, I find that Paragraph 4(a)(ii) of the Policy has been satisfied by the Complainant.
It appears clear that Respondent
originally registered the domain name at issue as the employee agent of his
employer as the imputed act and deed of his employer.
Some months after his employment was
terminated, he renewed/re-registered the domain at issue and in the process
changed the registered ownership from that of his employer to himself. His refusal to transfer <docksoysterbar.com> on the basis of the record presented
appears to amount to the tort of conversion.
Further, since Respondent was aware that it had no rights in the DOCKS
OYSTER BAR & SEAFOOD
GRILL, its renewal/re-registration of the disputed domain name was effected in bad faith. See
Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith
registration and use where Respondent was employed
by Complainant’s business, was fully aware of the name of her employer, and made no use of the infringing domain
name); see also Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000) (finding that because Respondent
was hired by Complainant to help
design and register Complainant’s websites, Respondent had intimate knowledge of Complainant’s business and use of its
TEENFLO mark. Therefore, Respondent’s registration of <teenflo.com> was in bad
faith).
Respondent’s passive
holding of the domain name amounts to bad faith use of the domain name at issue. See
Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (finding
that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name
being used in bad faith”); see also Alitalia
– Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the
domain name in question and there
are no other indications that Respondent could have registered and used the domain name in question for any
non-infringing purpose).
Based on the submissions and the
authority above, I find that Paragraph 4(a)(iii) of the Policy has been satisfied by the Complainant.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <docksoysterbar.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 24, 2003
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