David Lissner v. Michael Snell
Claim Number: FA1103001380965
Complainant is David Lissner (“Complainant”), represented by Mark E. Wiemelt of Law Offices of Mark E. Wiemelt, P.C., Illinois, USA. Respondent is Michael Snell (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestofthebestdiningchicago.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. O'Connor as Panelist.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2011; the National Arbitration Forum received payment on March 29, 2011.
On March 31, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bestofthebestdiningchicago.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy,
On April 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2011 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@bestofthebestdiningchicago.com. Also on April 1, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 April 18, 2011.
On April 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O'Connor as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark
Complainant, by and through himself and his licensees, has been marketing and providing restaurant review services and entertainment services, namely, production of television programs featuring restaurant reviews, using the trade name and trademark/service mark DINING CHICAGO (“the Mark”) since January of 1994. Continuously since January of 1994, Complainant has used and displayed the Mark as his trade name and trademark/service mark in connection with his services. Since January 30, 1994, Complainant has produced approximately 300 half-hour television programs which have run weekly on Channel 62 WJYS and on cable systems throughout the Chicagoland area. The DINING CHICAGO® television program has generated in excess of $1,000,000.00 in revenues since January 30, 1994. The DINING CHICAGO® television program received the resolution from the City Council of the City of Chicago in February of 1996. As the resolution indicates, the DINING CHICAGO® television program has been nominated for numerous Emmy Awards. To clarify, it has not actually won any Emmy Awards. However, Complainant and his DINING CHICAGO® television program was honored for exemplary culinary journalism by Bocuse d'Or 1996 USA Concours, as indicated in a January 1997 Ad age magazine. In doing so, Complainant has expended substantial time and money in the development and promotion of the Mark and has used the Mark in commerce in connection with his services, including as the domain name for his website located at <diningchicago.com> and displayed the Mark on said website since 1997. Complainant's prior and exclusive use of the Mark gives him exclusive proprietary interests in the use of the Mark to denote his services nationwide. As a result of the extensive advertising and effort expended to maintain the highest standards of services, the Mark has come to be so distinctive and well recognized that the vast majority of consumers nationwide, upon seeing the Mark, identify it with Complainant.
On July 21,1998, the United States Patent and Trademark Office (“USPTO”) granted Complainant Registration No. 2,174,180 for the Mark DINING CHICAGO in connection with "entertainment, namely, production of television programs." By virtue of the registration and under Lanham Act 15 U.S.C. §§ 1057(b) and 1115, Complainant has the exclusive right to use his DINING CHICAGO Mark in connection with the listed services, as well as in connection with related products and services. The registration has become incontestable under the Lanham Act, 15 U.S.C. § 1065, and serves as conclusive evidence of the validity of the mark, Complainant's ownership of the mark, and Complainant's exclusive right to use the registered mark. See Lanham Act, 15 U.S.C. § 1115(b). Accordingly, Complainant has established rights in the DINING CHICAGO mark through registration of the mark with the USPTO.
Confusing similarity
The disputed Domain Name <bestofthebestdiningchicago.com> (“Domain Name”) is confusingly similar to Complainant's DINING CHICAGO Mark. The Domain Name <bestofthebestdiningchicago.com> has been formed by [i] co-opting Complainant's well known and famous DINING CHICAGO mark in its entirety, [ii] adding a laudatory prefix, and [iii] adding the ".com" generic top-level domain. The DINING CHIGACO Mark is the dominant element in the disputed Domain Name. The phrase "best of the best" is merely a laudatory phrase, which does not create a sufficient distinction for the purpose of determining whether the Domain Name is identical or confusingly similar.
Rights or legitimate interest
Respondent does not possess any rights to or otherwise have a legitimate interest in the Domain Name. Respondent's use of the Mark is unauthorized. Respondent is not and has never been a licensee of Complainant, nor has Respondent ever been otherwise authorized by Complainant to use Complainant's Mark. Respondent's name is Michael Snell. Respondent is not and has never been known by the Domain Name.
In addition, Respondent has made no use of the Domain Name in connection with a bona fide offering of goods or services. Respondent's website uses the Domain Name <bestofthebestdiningchicago.com> in connection with the offering of restaurant review services and related services in competition with Complainant.
Respondent is using the Domain Name in connection with his website located at <bestofthebestdiningchicago.com> to divert Internet users, seeking restaurant review services and related services at Complainant's popular web site located at www.diningchicago.com, to Respondent's web site for the purpose of Respondent's financial gain. Because Complainant markets his restaurant review services and related services through his website located at <diningchicago.com>, each Respondent sale of a competing services by means of this diversion results in a corresponding financial loss to Complainant.
Respondent's use of the Domain Name is neither a non-commercial use nor in any respects a fair one.
Bad faith
Respondent is not the original registrant of the Domain Name, but instead recently acquired the disputed Domain Name. Complainant's rights in the DINING CHICAGO Mark easily predate Respondent's acquisition of the disputed domain name in or around March 2011. In this sense the relevant registration date in the disputed Domain Name is when Respondent acquired the Domain Name. Therefore, the Respondent's registration of the disputed domain name does not predate Complainant's rights in the DINING CHICAGO Mark.
Furthermore, Complainant's Mark was well known and famous long prior to the date upon which Respondent registered and used the confusingly similar Domain Name incorporating the Mark. In significant use since 1994, Complainant's Mark has become well known and famous in the United States and abroad as a symbol of the source and quality of his services long prior to the date upon which Respondent registered and used the confusingly similar Domain Name incorporating the Mark. The WHOIS records of domain name registrar Respondent demonstrates that the Domain Name was not created until February 3, 2007, long after Complainant's exclusive use of the mark DINING CHICAGO began in 1994. In addition, the domain name <diningchicago.com> was registered as a domain name by Complainant in 1997, and use of the <diningchicago.com> domain name began on the website located at <diningchicago.com> in 1997. Furthermore, the Domain Name was not created until February 3, 2007, well after Complainant's U.S. Registration No. 2,174,180 for the mark DINING CHICAGO in connection with "entertainment, namely, production of television programs" was registered and became incontestable. Respondent's belated registration and use of the Domain Name incorporating Complainant's well known and famous Mark in connection with the marketing of competing services readily establishes Respondent's bad faith.
By using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of his website. For Internet users seeking to find and consume restaurant review and related services at Complainant's popular website, the mere composition of the Domain Name is likely to create initial confusion with respect to the source, sponsorship and affiliation of Respondent's web site. This initial confusion is sufficient to permit Respondent to divert Internet users seeking to find and consume restaurant review and related services from Complainant's consumer website to Respondent's website. It is irrelevant that Internet users may discover upon arriving at Respondent's web site that they have not reached Complainant's website. Once the Internet user has been diverted to Respondent's website, the user may elect to abandon his or her search for Complainant's website and find and consume restaurant review and related services offered by Respondent.
Respondent's bad faith in registering and using the Domain Name is manifest from his intent to profit by creating confusion with Complainant's well known and famous Mark as to the source, sponsorship or affiliation of Respondent's website, to divert business from Complainant by means of creating that confusion, and to damage Complainant's business conducted under Complainant's Mark as the result.
Additionally, Respondent's actual knowledge of Complainant's Mark further supports an inference of bad faith registration and use. It is inconceivable that Respondent could have registered, renewed, acquired, or used the Domain Name without knowledge of Complainant's rights in his Mark.
Furthermore, Complainant's federal registration of the DINING CHICAGO mark constitutes constructive notice to Respondent of Complainant's Mark rights. See 17 U.S.C. § 1072. Respondent therefore both registered and used the Domain Name in bad faith.
Complainant has submitted evidence and arguments to show that Respondent is using the disputed Domain Name to promote directly competing services. Panels infer that such use disrupts a complainant's business, and is evidence of bad faith registration and use.
B. Respondent
Confusing similarity
Since this matter of possible confusion by similarity had been brought to Respondent’s attention on March 31, 2011, Respondent immediately decided to clearly state on <bestofthebestdiningchicago.com> that Respondent is in fact not connected to or affiliated with the popular TV show DiningChicago.com and Complainant’s site <diningchicago.com> in any way. Matter of fact, Respondent has generously posted a sizeable ad additionally promoting DiningChicago.com so that anyone can easily find and click through to <diningchicago.com>. Therefore, Respondent does not understand how there can be any confusion or deception to a reader if Respondent is in fact freely linking to, promoting, and advertising DiningChicago.com from Respondent’s site.
The <bestofthebestdiningchicago.com> domain name does not compete with DiningChicago.com and willingly promotes traffic to Complainant’s site and TV show. The website at <bestofthebestdiningchicago.com> does not rate, solicit or take money for reviews or critique restaurants. It never has and it never will. BestoftheBestDiningChicago does not produce video in any way, shape or form. BestoftheBestDiningChicago is not a commercial business offering bonafide goods and services. To date the site has generated $0 revenue.
According to Google's listings, “DiningChicago.com: Dining Chicago Restaurant Guide” features restaurants, menus, ratings and reviews, and streaming videos. Whereas “BestoftheBestDiningChicago.com: Best of the Best Dining in Chicago” provides a guide to Chicago food, restaurants, chefs, recipes, and food news. In examination of our Google Analytics for <bestofthebestdiningchicago.com>, "DINING CHICAGO" is not even in the top 10 list of organic keyword searches helping readers find our site through search. Respondent’s readers are not Googling DINING CHICAGO to find Respondent.
Rights or legitimate interest
Respondent and Derrick Sorles have lived in Illinois since 2002. Neither Respondent nor Derrick Sorles had any knowledge of a television program called DINING CHICAGO prior to meeting Complainant at a networking event at ZED451 in the fall of 2010. By no means was the creation of <bestofthebestdiningchicago.com> in January 2007 in bad faith. Quite the opposite, as the site was a result of a brainstorming session in late 2006 regarding building a "BestOffheBest" series of websites for several industries Respondent and Derrick Sorles interested in working within.
As stated, in the fall of 2006, Respondent along with Derrick Sorles became part of a team of blogging and social media consultants with Melissa Giovagnoli, President of Networlding.com, in Chicago that also included Laura Hansen and Kerry LaCoste. Respondent and Derrick Sorles launched a number of sites on their own in 2006 and 2007, including <InsideYourChicago.com>, <NewGayTravelGuide.com>, and <OfficialLifeByDesign.com>.
In January 2007, Melissa Giovagnoli had the idea to start launching a BEST OF THE BEST series of sites. And she began creating artwork for BEST OF THE BEST logos with artist Kerry LaCoste of LaCoste Designs in Chicago. Being a former pastry chef and wine connoisseur, Respondent came up with the idea to do a site on <bestofthebestdiningchicago.com>, with no knowledge whatsoever of the DINING CHICAGO TV SHOW. The initial outline for the site was to pick and choose select restaurants to highlight following a dining experience, cover dessert and pastry shops, share recipes and wine knowledge and exciting food news from in and around Chicago and its suburbs. All five of people were expected to contribute content to the site on a regular basis.
In February 2007, Melissa Giovagnoli purchased the domain name with her GoDaddy.com account and dropped the "In" from the final domain selection leaving simply "BestoftheBestDiningChicago.com." Had Respondent wanted to infringe on DINING CHICAGO's televison name, there are many domains available that are much more similar to DINING CHICAGO than the domain Respondent selected. These domains are still available now, as of April 2011.
Respondent and Derrick Sorles began building their BEST OF THE BEST DINING CHICAGO site in February 2007, and coaching longtime friend Laura Hansen about how to publish content properly working within the back-end constructs of the website.
Respondent and Derrick Sorles had published about 25 articles on the site. Kerry and Melissa had contributed little content and after six months or so into the project, Respondent and Derrick Sorles decided to take a step back and let Laura manage the site. At some point in time, Melissa transferred ownership of the domain name and website from herself to Laura.
Respondent and Derrick Sorles began launching more of their own websites under a modified BestoftheBest concept, which had now become a "BEST GAY" series including <BestGayChicago.com>, <BestGayNewYork.com>, <BestGayPalmSprings.com>, <BestGayCities.com>, <BestGayLasVegasTravel.com>, <TheBestGayTraveIGuide.com>, <BestGayToronto.com>, etc.
From time to time Respondent and Derrick Sorles still published articles to <bestofthebestdiningchicago.com>, but it was really up to Laura Hansen to keep it running. As far as Respondent knows, the site never generated any money, via paid advertisers or cross selling any type of goods or services, nor was that ever the intent. Laura loved great food and wine. The site was an informational blog site and Laura may have received some perks along the way, but commercialization or monetization of the site was never her intent, nor Respondent’s. The ad spots that appear on the site currently are not paid ads. They are free ads, given to restaurants Respondent frequents and wants to help promote.
In March 2010, Laura Hansen passed away suddenly. She was a dear friend of Respondent and Derrick Sorles and they had thought it would be terrific to keep the site alive in her loving memory and spirit. Innocently, Respondent investigated WHOIS and discovered the domain would expire in early 2011. At which time Respondent placed a bid for the domain through GoDaddy.com and ultimately won the domain back.
In March 2011, Respondent painstakingly began rebuilding the site, restoring most of the articles and photograph folders back to their original date of post. Respondent also began adding new content around the site’s original mission, which was to focus on food, wine and news in a general context around Chicago and its suburbs.
The Complaint shows web pages from <bestofthebestdiningchicago.com> captured sometime in March 2011, while the site was still undergoing additions and changes. Respondent does not offer restaurant review services, but will discuss restaurants and their offerings from time to time, with the main focus being on food news in general in and around Chicago.
Respondent is not trying to divert or deceive readers and Internet users and feels it offers a totally different online experience than DiningChicago.com and it offers very different information. There are over 6,000 registered food establishments in the Greater Chicago area. Respondent talks about a handful of them, the chefs, and food in the news in and around Chicago.
Again, in examination of Respondent’s Google Analytics for <bestofthebestdiningchicago.com>, "DINING CHICAGO" is not even in the top 10 list of organic keyword searches helping readers find Respondent’s site through search. Respondent’s readers are not Googling DINING CHICAGO to find Respondent. Therefore, how is Respondent trying to confuse, deceive or divert anyone? By reviewing the analytics, the Panel can clearly see Respondent’s readers are looking for BEST FOOD CHICAGO, BEST RESTAURANTS CHICAGO, TOP RESTAURANTS CHICAGO and GREAT RESTAURANTS CHICAGO ... Respondent’s readers are NOT looking for DINING CHICAGO.
Bad faith
Respondent denies each contention of Complainant.
Complainant has established trademark rights in DINING CHICAGO (the "Mark"). The disputed domain name is confusing similar to the Mark. Respondent has not established that it has legitimate rights to or interests in the disputed domain name. Respondent's adoption and use of the disputed domain name has been 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; 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.
The Panel finds that Complainant has established rights in the Mark.
First, U.S. Registration No. 2,174,180 protects the Mark for "entertainment, namely production of television program." This registration, granted under the provisions of § 2(f) of the U.S. Trademark Act, was issued after Complainant established, to the satisfaction of the United States Patent and Trademark Office, secondary meaning or common law trademark rights in the descriptive term DINING CHICAGO.
Second, Complainant's common law trademark rights have been extended to "entertainment services provided via the Internet" by reason of its exclusive use of the Mark at Complainant's website <www.diningchicago.com> since 1997.
Third, even if Complainant had not established that extension of common law trademark rights, its rights under the Mark would extend to entertainment services provided via the Internet because such services are closely related to those provided via a television medium.
The Panel also finds that the domain name at issue is confusingly similar to the Mark. Respondent has not attempted to establish, and the record does not otherwise establish, that Respondent has trademark rights in "best of the best." Consequently, that term can be viewed only as a descriptive term, as is the top level domain ".com." The elimination of a space between "dining" and "chicago" is immaterial. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that Complainant has carried its burden of proof under Policy
¶ 4(a)(i).
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 Policy ¶ 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 interests 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.”)
The Panel finds that Complainant has made such a prima facie showing. The restaurant and food information provided via Respondent's website is squarely within the ambit of the entertainment services for which Complainant has established rights in the Mark.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interests of a domain name registrant to a domain name, for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice of the dispute, the 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 and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial 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.
Regarding ¶ 4(c)(i), the record establishes that Respondent did not have notice of this dispute until the filing of the Complaint on March 29, 2011. Respondent claims use of the domain name in dispute since at least as early as March 2007 (by its previous owner) and since March 2011 (by Respondent as owner). Were those uses bona fide?
Regarding ¶ 4(c)(iii), the use must be a "legitimate non-commercial or fair use of the domain name, without intent for commercial gain..."
The use until March 2011 was as a "blog site relating to food and wine." The recent use has been as a "guide to Chicago food, restaurants, chefs, recipes and food news.” That recent use is precisely the same as, or very similar to, the activities being carried by Complainant under the Mark on its television show and on its website.
Respondent disclaims any knowledge of Complainant or its Mark prior to meeting Complainant "in the fall of 2010." The Panel is not persuaded that Respondent did not have actual knowledge of the Mark prior to that meeting, which Mark had been in use for about 15 years in the same city in which Respondent and its predecessor have operated. In any event, Complainant's rights in the Mark predate the registration and acquisition dates of the domain name at issue.
Respondent's website show numerous promotional cuts for various restaurants that appear to be and that are admitted by Respondent to be ads. Respondent's website also show reviews of various restaurants. Many of these reviews are accompanied by reproductions of the restaurant's trademark or logo. These ads and reviews mimic the similar presentations used on Complainant's website for its ads and reviews. Whether or not Respondent takes money for its ads and reviews is immaterial - the presentations that it uses cannot do anything but divert business from Complainant to Respondent to the advantage of Respondent and the detriment of Complainant. Simply stated, Respondent is in direct competition with Complainant. See Black Grouper, Inc. v Paradise Promotions, FA94870 (Nat. Arb. Forum July 20, 2000) (domain holder has no rights or legitimate interests if domain name holder offers goods or services on web site that compete with those of the trademark owner); Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) ("Respondent's appropriation of [Complainant's] SAFLOK mark to market products that compete with Complainant's goods does not constitute a bona fide offering of goods and services."); see also DU Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) ("Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.").
Respondent's activities are neither bona fide nor a legitimate noncommercial or fair use of the domain name at issue.
Regarding ¶ 4(c)(ii), Complainant has not authorized or licensed Respondent to use the Mark. Furthermore, the WHOIS information lists “Michael Snell” as the registrant of the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The Panel finds that Complainant has carried its burden of proof under ¶ 4(a)(ii) of the Policy.
The circumstances of Paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy ¶ 4(a)(iii) can be established.
Paragraph 4(b) reads:
[T] he 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:
i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
In each of the circumstances listed in Policy ¶ 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the domain name at issue for the purpose of causing injury to the Complainant. And Respondent must have known or should have known of Complainant's mark.
Lack of rights or legitimate interests under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii).
Proof of Policy ¶ 4(a)(iii) generally requires more than assertions of bad faith. 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 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 is using the disputed domain name primarily for the purpose of disrupting Complainant’s business. Any user viewing Respondent's website is struck by its commercially done layout, appearance, and content, that are in some aspects superior to those of Complainant’s website. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Also, the Panel has found that the disputed domain name is confusingly similar to Complainant’s Mark. As a result, the Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s DINING CHICAGO mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Given the length of use and apparent notoriety of the Mark (due to Complainant’s long running television program on a channel in Chicago), it is improbable that Respondent and its predecessor did not know of the Mark prior to adoption of the domain name at issue, by Respondent's predecessor in 2007, and by Respondent in 2011. The Panel thus does not need to consider whether the constructive notice to be afforded to the Mark by Complainant's prior U.S. registration is evidence of bad faith on the part of Respondent. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel also finds that Respondent’s use of a disclaimer on the resolving website does not mitigate a finding of bad faith. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
The Panel finds that Complainant has carried its burden of proof under ¶ 4(a)(iii) of the Policy.
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bestofthebestdiningchicago.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. O'Connor, Panelist
Dated: May 4, 2011
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