Cowgirl Café Restaurants, Inc. v. Michael L Shelton
Claim Number: FA1107001397189
Complainant is Cowgirl Café Restaurants, Inc. (“Complainant”), represented by Sharon D. Armstrong of Winthrop & Weinstine, P.A., Minnesota, USA. Respondent is Michael L Shelton (“Respondent”), represented by Mike Tolleson, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <patsyscowgirlcafe.com>, registered with Melbourne IT Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2011; the National Arbitration Forum received payment on July 6, 2011.
On July 6, 2011, Melbourne IT Ltd confirmed by e-mail to the National Arbitration Forum that the <patsyscowgirlcafe.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 July 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@patsyscowgirlcafe.com. Also on July 7, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications 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, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <patsyscowgirlcafe.com> domain name is confusingly similar to Complainant’s COWGIRL CAFÉ mark.
2. Respondent does not have any rights or legitimate interests in the <patsyscowgirlcafe.com> domain name.
3. Respondent registered and used the <patsyscowgirlcafe.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cowgirl Café Restaurants, Inc., owns and operates four restaurants under the COWGIRL CAFÉ marks. Complainant owns trademark registrations for the COWGIRL CAFÉ mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 2,740,589 registered July 22, 2003 and
Reg. No. 2,740,599 registered July 22, 2003.
Respondent, Michael L Shelton, registered the <patsyscowgirlcafe.com> domain name on December 5, 2006. The disputed domain name has been used to resolve to the commercial website for Respondent’s Patsy’s Cowgirl Café, to redirect consumers to the <patsyscafe.com> domain name, to a website stating that the URL was no longer in use and promoting both Respondent’s Patsy’s Café business and Complainant’s Cowgirl Café business. The disputed domain name currently resolves to a blank web page.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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’s trademark registrations for the COWGIRL CAFÉ mark with the USPTO establishes Complainant’s rights in the COWGIRL CAFÉ mark for the purposes of Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant argues that Respondent’s <patsyscowgirlcafe.com> domain name is confusingly similar to Complainant’s COWGIRL CAFÉ mark as the only differences between the two are the omission of the space between terms, the addition of the term “patsys,” and the attachment of the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a term prior to Complainant’s mark in the disputed domain name does not differentiate the disputed domain name according to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The Panel also finds that neither the deleted space nor the attached gTLD have any effect on a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel thus concludes that Respondent’s <patsyscowgirlcafe.com> is confusingly similar to Complainant’s COWGIRL CAFÉ mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant puts forth a prima facie case, it becomes the responsibility of Respondent to demonstrate its rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately presented a prima facie case and that Respondent, in failing to respond, has failed to meet its burden in showing rights and legitimate interests. Accordingly, the Panel may assume that Respondent lacks rights and legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth . . . as true.”); see also Banco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested the allegation . . . that the Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of Complainant’s mark BANCO DO BRASIL.”). The Panel elects, however, to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine if Respondent has rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent was not commonly known by the <patsyscowgirlcafe.com> prior to the registration of the disputed domain name as the WHOIS information indicates that the registrant is “Michael L Shelton.” Complainant also argues that, to the extent Respondent generated rights in the <patsyscowgirlcafe.com> domain name by virtue of its infringing use of the COWGIRL CAFÉ mark, Respondent has now abandoned all other use of the name “Patsy’s Cowgirl Café,” and currently operates simply as “Patsy’s Café.” The Panel concludes that Respondent is not commonly known by the disputed domain and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant asserts that Respondent has used the <patsyscowgirlcafe.com> domain name in a variety of ways since its registration. Complainant states that Respondent first used the disputed domain name to host Respondent’s commercial website for its restaurant, “Patsy’s Cowgirl Café.” After being contacted by Complainant, Complainant alleges Respondent began using the disputed domain name to redirect consumers from the <patsyscowgirlcafe.com> domain name to the <patsyscafe.com> domain name. Soon after, Complainant argues that the disputed domain name resolved to a page that advertised both Complainant and Respondent’s restaurants by name after stating that the URL was no longer in use. As all of these uses promote and advertise—under Complainant’s mark—a restaurant for Respondent’s profit that competes with Complainant’s restaurant, the Panel holds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See 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 DLJ 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.”).
Complainant alleges that Respondent’s <patsyscowgirlcafe.com> domain name now resolves to a blank page. The Panel holds that this failure to actively use the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that, in a variety of ways, Respondent has used the <patsyscowgirlcafe.com> domain name to promote and advertise its own competing restaurant while using Complainant’s COWGIRL CAFÉ mark. Complainant asserts that Respondent first used the disputed domain name to host the commercial site for Respondent’s restaurant, then used it to redirect to Respondent’s new restaurant website, and then used it to advertise both Complainant and Respondent’s restaurants. The Panel finds that these uses of the disputed domain name advertise and promote Complainant’s competitor, which disrupts Complainant’s business. The Panel thus concludes that these activities demonstrate Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). 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 Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Complainant argues that all of Respondent’s uses of the <patsyscowgirlcafe.com> domain name have been intended for Respondent’s profit because they have all advertised, promoted, and related to Respondent’s competing restaurant. Complainant asserts that Respondent’s use of the COWGIRL CAFÉ mark in the disputed domain name creates confusion for consumers between Complainant and Respondent and tends to attract consumers who may be seeking Complainant to Respondent’s business instead. As a result, the Panel finds that Respondent’s registration and use of the <patsyscowgirlcafe.com> domain name shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); 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).
Complainant contends that the <patsyscowgirlcafe.com> domain name currently resolves to a blank website. The Panel finds that failure to use the disputed domain name to display active content is additional evidence of Respondent’s bad faith evidence and use according to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <patsyscowgirlcafe.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 15, 2011
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