Landry's Restaurants, Inc. & Landry's
Trademark, Inc. v. LaPorte Holdings, Inc.
Claim
Number: FA0502000414654
Complainants are
Landry's Restaurants, Inc. &
Landry's Trademark, Inc. (collectively, “Complainant”), represented by H. Lisa Calico, of Wong Cabello, L.L.P., P.O. Box 685108, Austin, TX
78768-5108. Respondent is LaPorte Holdings, Inc. (“Respondent”),
ATTN: joescrabshak.com, landryrestaurants.com, landryrestaurant.com, c/o
Nameking, Inc., 2202 S. Figueroa St., Suite 721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <joescrabshak.com>, <landryrestaurants.com>
and <landrysrestaurant.com>, registered with Nameking.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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
2, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 4, 2005.
On
February 4, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <joescrabshak.com>, <landryrestaurants.com>
and <landrysrestaurant.com> are registered with Nameking.com, Inc.
and that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that
Respondent is bound by the Nameking.com, Inc. registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
February 8, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 28, 2005 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@joescrabshak.com,
postmaster@landryrestaurants.com and postmaster@landrysrestaurant.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 6, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <joescrabshak.com>,
<landryrestaurants.com> and <landrysrestaurant.com>
domain names are confusingly similar to Complainant’s LANDRY’S and JOE’S CRAB
SHACK marks.
2. Respondent does not have any rights or
legitimate interests in the <joescrabshak.com>, <landryrestaurants.com>
and <landrysrestaurant.com> domain names.
3. Respondent registered and used the <joescrabshak.com>,
<landryrestaurants.com> and <landrysrestaurant.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Landry’s Restaurants, Inc., owns and operates over 300 restaurants in the
United States. Complainant, Landry’s
Trademark, Inc., obtains and holds trademark registrations associated with its
various marks.
Since 1980,
Complainant has offered quality restaurant and bar services and related
paraphernalia in the United States under the LANDRY’S mark. Since 1991, Complainant has offered
restaurant and bar services and related paraphernalia under the JOE’S CRAB
SHACK mark. Complainant’s chain of
JOE’S CRAB SHACK restaurants is one of the fastest growing seafood chains in
the United States and has approximately 144 restaurants in 32 states.
Complainant has
registered the LANDRY’S (Reg. No. 1,588,264 issued March 20, 1990) and JOE’S
CRAB SHACK (Reg. No. 1,972,218 issued May 7, 1996) marks with the United States
Patent and Trademark Office (“USPTO”).
Respondent
registered the <landrysrestaurant.com> domain name on April 10,
2003, the <landryrestaurants.com> domain name on November 18, 2003
and the <joescrabshak.com> domain name on March 11, 2004. Respondent’s domain names resolve to
competing restaurant and catering websites.
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.
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 LANDRY’S and JOE’S CRAB SHACK
marks through registration with the USPTO.
See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark; see also Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”).
Respondent’s <joescrabshak.com>
domain name is confusingly similar to Complainant’s JOE’S CRAB SHACK mark. Respondent’s domain name incorporates
Complainant’s mark in its entirety and merely omits the apostrophe from the
term “Joe’s” and the letter “c” from the word “shack.” Such minor changes are not enough to overcome
a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See
Chi-Chi’s, Inc. v. Rest.
Commentary, D2000-0321 (WIPO June 29, 2000) finding the domain name
<chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite
the omission of the apostrophe and hyphen from the mark; see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the trademark
where the trademark is highly distinctive.
Respondent’s <landryrestaurants.com>
and <landrysrestaurant.com> domain names are confusingly similar
to Complainant’s LANDRY’S mark. The
domain names incorporate Complainant’s mark fully and merely omit the
apostrophe from the Complainant’s mark and add the words “restaurant” or
“restaurants,” which describe Complainant’s business. Respondent’s <landryrestaurants.com> domain name
additionally omits the letter “s” from the term “landry’s” in Complainant’s
mark. Such minor changes are
insufficient to negate the confusing similarity between Complainant’s mark and
Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See
Daddy’s Junky Music Stores, Inc. v. Kausar, FA
140598 (Nat. Arb. Forum Feb. 11, 2003) (“The
lack of an apostrophe in the domain name is not a distinguishing difference
because punctuation is not significant in determining the similarity of a
domain name and a mark.”); see also
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) finding
confusing similarity where Respondent’s domain name combines Complainant’s mark
with a generic term that has an obvious relationship to Complainant’s business;
see also Universal
City Studios, Inc. v. HarperStephens,
D2000-0716 (WIPO Sept. 5, 2000) finding that deleting the letter “s” from
Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall
impression of the mark and thus made the disputed domain name confusingly
similar to it.
Furthermore, the
addition of the generic top-level domain “.com” and the omission of the spaces
in between the terms of Complainant’s JOE’S CRAB SHACK mark are irrelevant in
making a confusing similarity determination under Policy ¶ 4(a)(i). See
Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”); see
also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7,
2001) finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces
are impermissible in domain names and a generic top-level domain such as ‘.com’
or ‘.net’ is required in domain names”.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable assertions and allegations set
forth by Complainant as true and accurate.
See 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.”); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) drawing two inferences based on Respondent’s
failure to respond: (1) Respondent does not deny the facts asserted by
Complainant, and (2) Respondent does not deny conclusions which Complainant
asserts can be drawn from the facts.
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain names, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may interpret
Respondent’s failure to respond as evidence that Respondent lacks rights and
legitimate interests in the disputed domain names pursuant to Policy ¶
4(a)(ii). See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) finding that by not submitting
a Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name; see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the <joescrabshak.com>, <landryrestaurants.com>
and <landrysrestaurant.com> domain names, which are confusingly
similar to Complainant’s JOE’S CRAB SHACK and LANDRY’S marks, to operate a
website that features links to competing restaurant and catering websites. Such use is not a use in connection with a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the domain names pursuant to Policy ¶
4(c)(iii). See 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.”); see
also Ameritrade
Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) finding that Respondent’s use of the
disputed domain name to redirect Internet users to a financial services
website, which competed with Complainant, was not a bona fide offering of goods
or services.
Furthermore,
nothing in the record indicates that Respondent is commonly known by the
disputed domain names or authorized to register domain names featuring
Complainant’s marks. Thus, the Panel
finds that Respondent lacks rights and legitimate interests in the disputed
domain names pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply; see also Compagnie
de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interests where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name.
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <joescrabshak.com>, <landryrestaurants.com>
and <landrysrestaurant.com> domain names, which feature
confusingly similar versions of Complainant’s marks, to operate a website that
features links to competing restaurant and catering websites. Such use constitutes disruption and is
evidence that Respondent registered and used the domain names in bad faith
pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) finding that
Respondent registered and used the domain name <eebay.com> in bad faith
where Respondent has used the domain name to promote competing auction sites; see
also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business.
Additionally,
the Panel infers that Respondent receives click-through fees for diverting
Internet users to these competing websites.
Since Respondent’s domain names are confusingly similar to Complainant’s
marks, consumers accessing Respondent’s domain names may become confused as to
Complainant’s affiliation with the resulting website. Respondent’s commercial use of the disputed domain names
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see
also Kmart
v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) finding that if Respondent profits from its
diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv).
Furthermore,
Respondent registered the disputed domain names with actual or constructive
knowledge of Complainant’s rights in the LANDRY’S and JOE’S CRAB SHACK marks
due to Complainant’s registration of the marks with the USPTO. Moreover, the Panel infers that Respondent
had actual knowledge of Complainant’s mark due to the obvious connection
between the content advertised on Respondent’s website and Complainant’s
business. Thus, Respondent registered
and used the disputed domain names in bad faith pursuant to Policy ¶
4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum
Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register
of the USPTO, a status that confers constructive notice on those seeking to
register or use the mark or any confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) finding that because the link between
Complainant’s mark and the content advertised on Respondent’s website was
obvious, Respondent “must have known about the Complainant’s mark when it
registered the subject domain name”.
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <joescrabshak.com>, <landryrestaurants.com>
and <landrysrestaurant.com> domain names be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 21, 2005
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