White Castle Management Co. v. San Giovanni
Claim Number: FA1611001704288
Complainant: White Castle Management Co. of Columbus, Ohio, United States of America.
Complainant Representative: Porter Wright Morris & Arthur LLP of Columbus, Ohio, United States of America.
Respondent: San Giovanni of Kept Private, NA, International, LY.
Respondent Representative: N/A
REGISTRIES and REGISTRARS
Registries: DotSpace Inc.
Registrars: eNom, 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 Examiner in this proceeding.
Flip Jan Claude Petillion, as Examiner.
Complainant submitted: November 22, 2016
Commencement: November 23, 2016
Default Date: December 8, 2016
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant is active in the restaurant and food product industry and uses its WHITE CASTLE trademark in commerce for its restaurant chain. Complainant holds trademark registrations for its WHITE CASTLE trademark in the United States. Respondent registered the disputed domain name on October 27, 2016. The disputed domain name is used to redirect to some kind of blog containing political views.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS
1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark:
(i) for which the Complainant holds a valid national or regional registration
and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the
time the URS complaint is filed.
Determined: Finding for Complainant
Complainant shows to be the holder of valid national registrations in the WHITE CASTLE trademark and that the trademark is in current use. Examiner finds that the disputed domain name <whitecastle.space> is identical to the Complainant’s WHITE CASTLE trademark. Moreover, the new gTLD “.SPACE" is generic as compared to the distinctive sign "WHITE CASTLE", and therefore does not eliminate the likelihood of confusion with the Complainant’s WHITE CASTLE trademark. Respondent does not contest this.
Therefore, Examiner finds that the first element for Complainant to obtain the suspension of a domain name under URS 1.2.6.1 has been proven.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Respondent
Complainant has not authorized Respondent to use its registered WHITE CASTLE trademark. Respondent has not submitted any evidence to prove that he is commonly known as WHITE CASTLE or under the disputed domain name. However, Examiner notes that the dominant word elements of the Complainant are descriptive. Examiner considers that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent's aim in registering the disputed domain name was to profit from and exploit the complainant's trademark (See Harvard Lampoon, Inc. v. Reflex Publishing Inc., WIPO Case No. D2011-0716; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424).
The Complainant does not provide clear and convincing evidence indicating that the Respondent’s aim in registering the disputed domain name was to profit from and exploit the Complainant's trademark. The Respondent does not use the disputed domain name for commercial purposes and does not refer to the Complainant or its business on the website linked to the disputed domain name.
The Complainant claims that the Respondent registered the domain name on September 18, 2014 in light of being put on notice that they were attempting to register a second-level domain encompassing a registered trademark. However, Examiner notes that the disputed domain name was registered on October 27, 2016. Moreover, the Complainant does not provide evidence of any notice sent to the Respondent.
Therefore, Examiner finds that the second element for Complainant to obtain the suspension of a domain name under URS 1.2.6.2 has not been proven.
[URS
1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or 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 documented out-of pocket costs directly related to the domain name;
or
b. Registrant has registered the domain name in order to prevent the trademark
holder or service mark from reflecting the mark in a corresponding domain name,
provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract
for commercial gain, Internet users to Registrant’s 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 Registrant’s web
site or location or of a product or service on that web site or location.
Determined: Finding for Respondent
Given Examiner’s finding on the issue of rights and legitimate interests, it is unnecessary to consider the issue of bad faith registration or use. However, Examiner considered the issue, and finds that no bad faith is shown. Examiner considers that Respondent was at liberty to register the disputed domain name as a common term. There is no evidence that in making the registration the Respondent targeted the Complainant or Complainant’s trademark.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
<whitecastle.space>
Flip Jan Claude Petillion, Examiner
Dated: December 13, 2016
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