The Chefs’ Warehouse, Inc. v. Registration Private / Domains By Proxy, LLC
Claim Number: FA1503001608699
Complainant is The Chefs’ Warehouse, Inc. (“Complainant”), represented by Eric Adler of Adler Vermillion LLP, New York, USA. Respondent is Registration Private / Domains By Proxy, LLC (“Respondent”), represented by Samuel A. Kavathas of Kavathas and Castanes, Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chefwarehaus.com>, registered with GoDaddy.com, LLC.
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.
Jaime Delgado as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2015; the Forum received payment on March 9, 2015.
On March 9, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <chefwarehaus.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2015 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@chefwarehaus.com. Also on March 10, 2015, 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 March 26, 2015.
A timely Additional Submission was received from Complainant on March 31, 2015.
On April 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jaime Delgado as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant owns the THE CHEFS’ WAREHOUSE through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,539,456, registered December 2, 2008).
ii. Complainant additionally owns the THE CHEFS’ WAREHOUSE mark through common law rights.
iii. Complainant uses the THE CHEFS’ WAREHOUSE mark to sell, market and distribute food and related products.
i. Policy ¶ 4(a)(i)
1. The <chefswarehaus.com> domain name is confusingly similar to Complainant’s THE CHEFS’ WAREHOUSE mark, because Respondent has simply removed the word “the” and the apostrophe from the mark, has removed the spaces from the mark, has changed the word “house” to “haus” which are phonetically similar, and has added the generic top-level domain (“gTLD”) “.com.”
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights and legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the disputed domain name. Further, Complainant has neither licensed nor authorized Respondent to use its THE CHEFS’ WAREHOUSE mark.
3. Respondent has not provided any bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name as a parked page that offers pay per click advertisements.
5. Respondent has placed a large offer to sell the disputed domain name on the website.
iii. Policy ¶ 4(a)(iii)
1. Respondent has placed a general offer of sale of the disputed domain name on the website.
2. Respondent’s use of the disputed domain name disrupts Complainant’s business by intentionally diverting Internet users to its own website that offers advertisements to competitors of Complainant.
3. Respondent intentionally diverts Internet users to its own commercial gain.
4. Respondent had either actual or constructive knowledge of Complainant and its rights in the THE CHEFS’ WAREHOUSE mark.
B. Respondent
1.Respondent submitted the following Response:
i. The disputed domain name is not confusingly similar to Complainant’s mark, because the disputed domain name is made up of common terms. Respondent does business in the United States, the German spelling of “warehouse” does not make the disputed domain name confusingly similar.
ii. Further, if Complainant believed the disputed domain name was so confusingly similar, then Complainant should have also registered the disputed domain name, as it has been available long before Respondent registered the disputed domain name in 2013.
i. Respondent has provided a bona fide offering of goods and services. Respondent has been in the business of selling garlic spices and oils for over 15 years. Respondent intends to use the disputed domain name for this business in the future.
ii. Respondent is not offering pay-per-click websites, nor is Respondent offering to sell the disputed domain name.
i. Respondent has not used or registered the disputed domain name in bad faith. Respondent is an ongoing business and registered the disputed domain name with the intent to use it with its business.
C. Additional Submissions.
Complainant submitted the following Additional Submission
i. Respondent has admitted that it is not commonly known by Complainant’s mark, but is commonly known by “Galena Garlic Company”.
ii. Respondent admits that it plans to use the disputed domain name to sell food products in direct competition with Complainant.
1. Respondent has offered no evidence to support its claim that it will provide a bona fide offering of goods and services.
i. Respondent has asserted that it is not running a pay-per-click website and is not offering the disputed domain name for sale, but has provided no evidence in support of these claims.
ii. Respondent must have had actual or constructive knowledge of Complainant’s mark due to the fame of the mark.
The additional submission submitted by Complainant cannot be taken into consideration as it does not comply with the Forum Supplemental Rule #7.
1. Complainant owns the THE CHEFS’ WAREHOUSE through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,539,456, registered December 2, 2008).
2. Respondent <chefwarehaus.com> domain name is registered with GoDaddy.com, LLC
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.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant has registered the THE CHEFS’ WAREHOUSE with the USPTO (Reg. No. 3,539,456, registered December 2, 2008). The mark is used on or in connection with the sale and distribution of food and related products. The Panel finds registration with the USPTO is sufficient to establish rights in a trademark. See VivendiUniversal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues the <chefwarehaus.com> domain name is confusingly similar to the THE CHEF’S WAREHOUSE mark for four reasons: first, Respondent has simply removed the word “the” and the apostrophe from the mark; second, Respondent has removed the spaces from the mark; third, Respondent has changed the word “house” to “haus” which is phonetically similar; and fourth, Respondent has added the gTLD “.com.” As a general rule, gTLDs such as “.com,” cannot distinguish a domain name from the mark at issue. See 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 omission of the apostrophe and spaces is also insignificant. 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.”). Prior panels have also found that changing the mark by deleting certain words will result in a confusing similarity. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).
Lastly, prior panels have held that a domain name that is similar in sound to the mark at issue (i.e. phonetically similar) will be confusingly similar. See Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, D2001-1216 (WIPO Mar. 25, 2002) (“The Panel further finds that the domain name <bunsandnoble.com> is confusingly similar to the BARNES & NOBLE marks in so far as the domain name is similar in sound to Complainant’s marks.”). Therefore, the Panel finds the <chefwarehaus.com> domain name is confusingly similar to the THE CHEF’S WAREHOUSE mark under Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). Complainant claims that Respondent is neither commonly known as the <chefwarehaus.com> domain name nor in possession of licensing rights. The Panel notes “Registration Private” is listed as the registrant of record for this domain name. The Panel further notes the record is void of evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent can have no rights or legitimate interests under Policy ¶ 4(a)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant argues that Respondent uses the domain name as a parked page that offers pay-per-click advertisements. The Panel sees that Respondent’s resolving website displays links such as “Warehouse Storage Racks,” “Printable Recipe,” and “Wholesale Steel Buildings.” See Compl., at Attached Ex. D. Panels have frequently found that displaying third-party links on a resolving website does not amount to rights or legitimate interests in a domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)).
Complainant further claims that Respondent has placed a large offer to sell the domain name on the resolving webpage. The Panel notes the domain name resolves to a parked webpage with a message from the registrar offering to contact the domain name’s owner if interested in purchasing. See Compl., at Attached Ex. D-E. As a general rule, the respondent is always responsible for the content of a parked webpage. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Prior panels have found that use of a domain name for purposes of auctioning it to the highest bidder cannot be a bona fide offering or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate non commercial or fair use of domains.”). The Panel therefore agrees with prior panels and find that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant first argues that Respondent has engaged in bad faith by placing an ad to sell the domain name on the resolving webpage. The Panel again notes that the resolving webpage contains a message from the registrar offering to contact the domain name’s owner if interested in purchasing. See Compl., at Attached Ex. E. A Panel may find bad faith under Policy ¶ 4(b)(i) if it finds that the domain name is being offered for sale and Respondent registered the domain name for the purpose of selling it to Complainant or one of Complainant’s competitors. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Complainant also argues that Respondent has engaged in bad faith under Policy ¶ 4(b)(iii) by attempting to disrupt Complainant’s business by diverting Internet users to the resolving webpage which displays advertisement for Complainant competitors. The Panel notes that the resolving webpage contains links reading “Warehouse Storage Racks,” “Printable Recipe,” and “Recipes.” See Compl., at Attached Ex. D which amounts to bad faith use and registration under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv) by attempting to commercially benefit from a likelihood of confusion. Complainant argues that Internet users who view the resolving webpage will believe it is sponsored by or affiliated with Complainant, and that Respondent receives pay-per-click fees from the advertisement links. The Panel again notes the resolving webpage contains links reading “Warehouse Storage Racks,” “Printable Recipe,” and “Recipes.” See Compl., at Attached Ex. D. Prior panels have found that registration and use of a confusingly similar domain name to redirect Internet users to a webpage containing advertisements, which the respondent presumably profits from, consists of bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). The Panels finds that Respondent is displaying such advertisements on the resolving webpage, and finds bad faith under the Policy.
Complainant alleges that Respondent must have had actual notice of Complainant's rights in the THE CHEF’S WAREHOUSE mark prior to registration of the domain name because of Complainant's use of the mark, its trademark registrations with the USPTO, and because Respondent included so much of the mark in the domain name. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of 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)."
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <chefwarehaus.com> domain name be TRANSFERRED from Respondent to Complainant
JAIME DELGADO Panelist
Dated: April 24, 2015
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