The Chefs’ Warehouse, Inc. v. Nabil Nakawah
Claim Number: FA1503001609680
Complainant is The Chefs’ Warehouse, Inc. (“Complainant”), represented by Eric Adler of Adler Vermillion LLP, New York, USA. Respondent is Nabil Nakawah (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dallaschefswarehouse.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 15, 2015; the Forum received payment on March 15, 2015.
On March 17, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dallaschefswarehouse.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 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@dallaschefswarehouse.com. Also on March 19, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant contends as follows:
Complainant owns the registered trademark THE CHEFS’ WAREHOUSE (US Reg. No. 3,539,456) for “Wholesale distributorship featuring food items and ingredients.” Complainant’s ‘456 trademark was registered on 12/2/2008. Complainant also owns US registered trademark 4,380,052 for the mark THE CHEFS’ WAREHOUSE for “online retail store services featuring groceries; retail grocery stores.” Complainant has been using the mark THE CHEFS’ WAREHOUSE and related marks since at least as early as 1997, and has owned common-law rights to the trademark THE CHEFS’ WAREHOUSE since at least as early as December 1997.
In forming the domain name, Respondent merely added the word “Dallas” to the front of Complainant’s trademark. The domain name is confusingly similar to Complainant’s registered trademark.
Respondent is not authorized to use the Complainant’s trademark. Complainant has never authorized or licensed Respondent to use Complainant’s mark in any way. Complainant does not have any relationship, affiliation or association whatsoever with the Respondent.
Respondent is not commonly known by the Domain Name. Respondent is not commonly known as DallasChefsWarehouse. Respondent chose this domain name in attempt to siphon users from Complainant’s website and divert them to Respondent’s pay-per-click advertisements.
Respondent has not made a bona fide offering of goods or services in connection with the domain name. Respondent is not commonly known by the domain name (4(c)(ii)), and Respondent is not making a legitimate noncommercial or fair use of the domain name (4(c)(iii)). The website at <dallaschefswarehouse.com> is no more than a parked “pay per click” landing page.
Respondent registered the Domain Name in bad faith, and continues to use it in bad faith. Respondent uses its cybersquatting to advertise pay-per-click services, and to offer to sell the domain back to legitimate trademark owners. The domain is apparently being offered for sale at a steep markup. GoDaddy.com offers to register “.com” domain names for a mere $0.99. Here, however, it is charging “$69.99 + commission” just to contact the owner and broker a sale of the disputed domain name. This constitutes bad faith under Policy ¶ 4(b)(i).
Respondent’s registration of <dallaschefswarehouse.com> indicates that it was intended to prevent Complainant from reflecting the use of its trademark in a corresponding domain name under Policy ¶ 4(a)(ii) since it inhibits using the trademark in connection with Dallas based sales.
Respondent’s activity demonstrates an “intent to disrupt” under 4(b)(iii). As pay-per-click parked domain landing page, it does not provide any useful information or content. Instead, Respondent is attempting to capitalize on Complainant’s goodwill and brand recognition by diverting away users who were intending to go to Complainant’s authentic <chefswarehouse.com> website, and then serving them pay-per-click advertisements.
Moreover, the pay-per-click advertisements provided on Respondent’s landing page relate to sources for competitive products and services in the culinary and food service industries.
Further, the evidence suggests that Respondent was aware of Complainant’s trademark. The combination of elements to form a single domain name is an indicator of bad faith knowledge of Complainant’s trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the THE CHEFS’ WAREHOUSE mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a landing page related to products and services in the culinary and food service industries that compete with Complainant’s offerings.
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the THE CHEFS’ WAREHOUSE trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
In forming the at-issue domain name Respondent substitutes the mark’s first term “the” in Complainant’s THE CHEFS’ WAREHOUSE trademark with the geographically descriptive term “dallas,” deletes the mark’s spaces and then appends the top-level domain name “.com” to the resulting string. These alterations to Complainant’s THE CHEFS’ WAREHOUSE trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the <dallaschefswarehouse.com> domain name is confusingly similar to Complainant’s THE CHEFS’ WAREHOUSE mark. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Nabil Nakawah” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <dallaschefswarehouse.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain name to address a landing page related to products and services in the culinary and food service industries that compete with Complainant’s offerings. The page contains pay-per-click links. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (2009) (“While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.”)
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s use of the confusingly similar domain name to address a pay-per-click webpage shows that Respondent registered and uses the at-issue domain name in bad faith. See, Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (2009) (“While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.”)
Furthermore, Respondent’s attempt to capitalize on Complainant’s trademark by diverting users seeking Complainant to Respondent’s <dallaschefswarehouse.com> website where Respondent may compete with Complainant, disrupts Complainant’s business and demonstrates bad faith under Policy ¶4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). Likewise, such use of the confusingly similar domain name shows Respondent’s bad faith under Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Finally, it appears Respondent registered the <dallaschefswarehouse.com> domain name knowing that Complainant had trademark rights in the THE CHEFS’ WAREHOUSE mark. Respondent’s prior knowledge is evident from the from Respondent’s combination of a geographical suggestive element with Complainant’s trademark to form the at-issue domain name. See TVS Motor Company Limited v. Vistaprint Technologies Limited, WIPO Case No. DCO2014-0007 (July 8, 2014). (“The registration of the two elements together suggests that the Respondent very well knew of the Complainant and the Complainant’s trademarks when registering the disputed domain names.”) Given the forgoing, it further appears that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <dallaschefswarehouse.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dallaschefswarehouse.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 19, 2015
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