National Arbitration Forum

 

DECISION

 

VICORP Restaurants, Inc. v. Anastasios Triantafillos

Claim Number: FA0505000485933

 

PARTIES

Complainant is VICORP Restaurants, Inc. (“Complainant”), represented by Miriam Trudell, of Sheridan Ross P.C., 1560 Broadway, Suite 1200, Denver, CO 80202.  Respondent is Anastasios Triantafillos (“Respondent”), represented by Timothy Walton, 407 South California Avenue, Suite 8, Palo Alto, CA 94306.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bakersquare.com>, registered with Register.com.

 

PANEL

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.

 

David A. Einhorn appointed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 27, 2005.

 

On May 29, 2005, Register.com confirmed by e-mail to the National Arbitration Forum that the domain name <bakersquare.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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 June 2, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 22, 2004 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@bakersquare.com by e-mail.

 

A timely Response was received and determined to be complete on June 22, 2005.

 

A timely Additional Submission was received from Complainant on June 24, 2005.

 

On June 30, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

                        A.   Complainant

[a.]              Complainant, VICORP Restaurants, Inc., is the owner of seven federal registrations incorporating the BAKERS SQUARE mark as shown in the table below.  Certified copies of the federal registration certificates were enclosed with the Complaint.  Complainant further notes that its trademarks (with the exception of U.S. Trademark Registration No.2,717,922) are incontestable.   

 

MARK	STATUS	GOODS/SERVICES
BAKERS SQUARE	REGISTERED U.S. Service Mark Registration No. 1,394,423 Filed:  November 28, 1983 Registered: May 20, 1986	Restaurant services
BAKERS SQUARE	REGISTERED U.S. Trademark Registration No. 1,394,236 Filed:  April 2, 1984 Registered: May 20, 1986	Pastries and bakery goods, namely, pies and cakes, for consumption on or off the premises
BAKERS SQUARE (and design)	REGISTERED U.S. Trademark Registration No. 1,403,328 Filed:  April 4, 1984 Registered:  July 29, 1986	Pastries and baked goods – namely, pies and cakes for consumption on or off the premises
BAKERS SQUARE (and design)	REGISTERED U.S. Service Mark Registration No. 1,394,428 Filed:  April 26, 1984 Registered:  May 20, 1986	Restaurant services
BAKERS SQUARE RESTAURANT AND PIES (and design)	REGISTERED U.S. Trademark Registration No. 2,002,503 Filed: May 8, 1995 Registered: September 24, 1996	Pies
BAKERS SQUARE BEST PIE IN AMERICA	REGISTERED U.S. Trademark Registration No. 2,213,980 Filed:  May 29, 1997 Registered: December 29, 1998	Pies
BAKERS SQUARE YUKON MOUNTAIN ICE CREAM PIE	REGISTERED U.S. Trademark Registration No. 2,717,922 Filed: May 14, 2001 Registered: May 20, 2003	Pies

 

[b.]             Complainant has been using the BAKERS SQUARE mark in connection with restaurant services, pastries, and bakery goods for consumption on or off the BAKERS SQUARE premises since 1983. 

 

[c.]              Complainant operates or franchises approximately 150 BAKERS SQUARE restaurants throughout the United States.  In 2004, Complainant had revenues of approximately $217,685,424 from their BAKERS SQUARE restaurants and spent approximately $4,164,642 on television, print, and radio advertising for its restaurant services advertising the BAKERS SQUARE brands. Complainant had similar revenues/advertising expenditures in 2003.  Declarations regarding the same signed by Gary Burke, the Secretary/Corporate Attorney of VICORP Restaurants, Inc., were attached to the Complaint.

           

[d.]             The <bakersquare.com> domain name is virtually identical and confusingly similar to the BAKERS SQUARE trademark and service mark in which the Complainant has rights, under ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i), because the domain name incorporates Complainant’s entire mark.  Respondent’s removal of the “s” from “bakers”, removal of a space between “baker” and “square” and addition of the top level domain (TLD) “.com” do not distinguish the domain name from Complainant’s registered trademark.  It has been repeatedly held that a domain name that contains obvious misspellings of the trademark owner’s mark is considered identical or confusingly similar.  Respondent has omitted an “s” in Respondent’s <bakersquare.com> domain name as compared to Complainant’s BAKERS SQUARE mark. The omission of an “s” between a Complainant’s mark and Respondent’s domain name resulting in a slight misspelling of Complainant’s mark does nothing to alleviate the confusing similarity to Complainant’s mark.  Thus, Respondent’s <bakersquare.com> domain name is confusingly similar to Complainant’s BAKERS SQUARE mark despite the omission of the “s” from the element “bakers.”  This argument is strengthened by the fact that the first letter of the next element, “square”, begins with an “s,” causing the visual impression of the telescoped words in the <bakersquare.com> domain name and Complainant’s BAKERS SQUARE mark to be nearly identical.

 

[e.]              As recently as February 2005, Respondent has used the domain name to misdirect Internet users to a pornographic web site, realbjs.com, which features explicit pornographic images as well as links to pornographic Web site memberships and further explicit pornographic images. 

 

[f.]               Respondent is not commonly known by the domain name, under ICANN Policy  ¶ 4(c).  This domain name is registered to Anastasios Triantafillos.  There is nothing in the WHOIS record that indicates that Respondent is commonly known by “BAKER” and/or “BAKERS” and/or “SQUARE”.  In addition, merely registering the domain name is not sufficient to establish rights or legitimate interests.  Complainant further notes that there is no relationship between the parties giving rise to any license, permission, or other right by which the Respondent could own or use any domain names incorporating Complainant’s mark.  

   

[g.]              Respondent 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 for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.  Respondent has requested payment for e-mail forwarding services and also has offered to sell the domain name to Complainant.  Respondent contacted Complainant requesting payment for email forwarding services for emails meant for Complainant and received by Respondent as webmaster of the <bakersquare.com> domain name.  Upon refusal by Complainant to pay Respondent’s fees, Respondent ceased forwarding these misdirected emails.  Complainant submits that Respondent, by offering to forward correspondence for a fee, demonstrates bad faith.  See Wake Forest Univ. v. Needham, FA125751 (Nat. Arb. Forum Nov. 27, 2002) (bad faith found for the respondent who offered to sell domain name and/or forward misdirected emails in excess of documented out-of-pocket costs.)       

 

[h.]              Complainant also submits that Respondent’s registration and use of the <bakersquare.com> domain name was in bad faith, for the reason that Respondent had, at the time of registration, actual and/or constructive knowledge of Complainant’s mark.  Respondent’s actual or at least constructive knowledge of the mark can be legally inferred from the fame of Complainant’s mark, as evidenced by long-standing trademark registrations and the number of BAKERS SQUARE restaurants, as well as Complainant’s advertising expenses for BAKERS SQUARE restaurants and revenues.  Complainant further asserts that Respondent has actual knowledge that many Internet users were confusing Respondent’s <bakersquare.com> domain name with Complainant’s BAKERS SQUARE trademark. 

 

                        B.   Respondent

                       [a.]               VICORP Restaurants, Inc. (hereinafter "Complainant") claims rights in seven marks.  No claim is made regarding a mark of BAKERSQUARE or BAKER SQUARE, so the domain name is not identical to any mark in which the Complainant has rights.

 

                       [b.]               Respondent's intention has always been to provide a free database of recipes. Respondent has had other plans for the other domain names Respondent registered.

 

                       [c.]               In January, 2005, Respondent's firewall malfunctioned due to a power surge and was inoperable, resulting in multiple security threats and hindering operations for over a week.  Respondent had to go back to a tape for a complete system restore.  In the investigation, Respondent noticed that the Web sites were not routing properly. Traffic had been re-routed, without his authorization, by the intruder who had taken over his systems.  Respondent immediately improved both software and hardware firewall protection to prevent such a thing from happening again. Respondent terminated the unlawful re-routing long before the instant arbitration commenced.

 

                       [d.]               Respondent is not trying to "pass itself off as Complainant." He is trying to create a directory of recipes and discussion about baking techniques. Respondent believes that Complainant has no desire to provide either recipes or discussion about baking techniques. Respondent has no desire to sell pies.

 

                       [e.]               Complainant has provided no evidence to indicate that the Respondent was deliberately intending to divert the Complainant’s customers or otherwise disrupt its business.  Respondent has never had any desire to harm Complainant in any way.

 

                        C.   Additional Submissions

[a.]              According to the Response, Respondent registered the domain name in June 2000.  Respondent has had years to develop a web site for the domain name containing a directory or database of recipes, but has not done so.  Complainant notes that Respondent only recently, after Complainant refused to pay Respondent to continue to forward misdirected emails that were intended for Complainant, did Respondent put the content on the site that currently appears to visitors.  The current content of the domain name indicates that recipes are “Coming Soon.”

 

[b.]             Prior Panels have clearly held that passively holding a domain name since registration without development of the same does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and thus does not constitute rights or legitimate interests in the domain name or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 

[c.]              Complainant operates or franchises approximately 150 BAKERS SQUARE restaurants throughout the United States, 45 of which are in Illinois, the state that appears in Respondent’s address in the WHOIS record.  Further, there are two of Complainant’s restaurants within five miles of Respondent’s address.  Thus, Respondent chose the <bakersquare.com> domain name with actual knowledge of Complainant’s mark.

 

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

i.        Identical and/or Confusingly Similar

Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

Complainant argues that the <bakersquare.com> domain name is confusingly similar to Complainant’s BAKERS SQUARE mark because the only differences between the mark and the domain name are the omission of the letter “s” from the word “bakers”, the omission of the space between the words “bakers” and “square,” and the addition of the generic top-level domain “.com.”  The Panel finds that these minor omissions and additions to Complainant’s registered mark are insufficient to negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark); 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”).  This Panel, therefore, finds that Complainant has met its burden of proof regarding the Policy requirement.     

ii.      Rights or Legitimate Interests

Respondent registered its domain name five years ago.  Nevertheless, Respondent’s web site consists of “COMING SOON” notices under NEWS and RECIPES headings, and a Community Forum section which has not been working to date.  Mere passive holding of a name creates no rights or legitimate interests in a domain name.  See TruServ Corp. v. TrueValue.net, FA 214460 (Nat. Arb. Forum June 21, 2004) (finding no rights or legitimate interests with respect to the respondent’s long held web site with a “COMING SOON” notice); see also The Am. Nat’l Red Cross v. Universal Translator, Inc., FA 237440 (Nat. Arb. Forum Mar. 31, 2004) (finding no rights or legitimate interests where the respondent was “using the disputed domain name to host a “Coming Soon” web page with no evidence that any page will be “coming soon” to the domain names”).

Accordingly, this Panel finds that Respondent does not have rights or legitimate interests in the <bakersquare.com> domain name under Policy ¶ 4(a)(ii).

iii.    Registration and Use in Bad Faith

This Panel finds that Respondent registered the <bakersquare.com> domain with actual or constructive notice of the BAKERS SQUARE mark in light of Complainant’s several registrations of the mark with the United States Patent and Trademark Office.  See MIPS Tech., Inc. v. Int’l Cyber Bar Servs., Inc., FA 463134 (Nat. Arb. Forum May 14, 2005) (“Complainant’s trademark registration on the Principal Register of the United States Patent and Trademark Office gave Respondent constructive notice of Complainant’s mark.”).

Moreover, the Panel further infers that Respondent registered the domain name with actual knowledge of Complainant’s rights due to the connection between the content featured at Respondent’s web site as “coming soon” and Complainant’s business.  The inference is particularly strong because two of Complainant’s BAKERS SQUARE restaurants are within five miles of Respondent’s address in the WHOIS record.  See Dayton Mill Venture, LLC v. Sherif Hadazat, FA 097047 (Nat. Arb. Forum May 18, 2001) (The complainant’s business was six miles from the address listed for the respondent.  In light of said proximity, an inference could be drawn that the respondent was aware of the complainant’s marks upon registration).

Still further, Respondent’s offer to sell misdirected emails to Complainant constitutes additional evidence of bad faith.  See Wake Forest Univ. v. Needham, FA 125751 (Nat. Arb. Forum Nov. 27, 2002) (finding evidence of bad faith where the respondent offered to forward misdirected emails in excess of documented out-of-pocket costs).

Accordingly, this Panel finds that Complainant has satisfied ¶ 4(a)(iii) of the Policy.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bakersquare.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David A. Einhorn, Panelist
Dated: July 14, 2005

 

 

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