Vapiano AG v. Sex-Escort
Claim Number: FA0610000829126
Complainant is Vapiano AG (“Complainant”), represented by Karl
Wm. Means, of Shulman,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vapiano.com>, registered with Tucows Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his or knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 31, 2006.
On October 31, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <vapiano.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 November 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 2006 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@vapiano.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2006, the National Arbitration Forum received a timely and complete Additional Submission from Complainant pursuant to Supplemental Rule 7.
On November 30, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vapiano.com> domain name is identical to Complainant’s VAPIANO mark.
2. Respondent does not have any rights or legitimate interests in the <vapiano.com> domain name.
3. Respondent registered and used the <vapiano.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vapiano AG, operates a chain of award-winning
fast casual restaurants under the VAPIANO mark in
Complainant has registered the VAPIANO mark in
Respondent registered the <vapiano.com> domain
name on May 20, 2002. Upon Complainant’s
information and belief, Respondent is in the sex-for-hire escort industry
within
In its Additional Submission, Complainant alleges that on November 9, 2006, after receiving notice of the Complaint filed against it, Respondent offered to sell the <vapiano.com> domain name to Complainant for “100.000 euros,” which Complainant translates to around $131,489. Specifically, Respondent stated in its email:
[T]ake back now legal case, we talk on price for vapiano.com but not take vapiano.com with no paying money to me, you make very [sic] angri me. I come to your country to make business with you for vapiano.com, ok?
Respondent did not respond to the Complainant.
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. 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.”).
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.
Complainant has registered the VAPIANO mark in
The only difference between Respondent’s <vapiano.com> domain name and Complainant’s VAPIANO mark is the addition of the generic top-level domain (“gTLD”) “.com.” The mere addition of a gTLD is insufficient to differentiate the disputed domain name from Complainant’s registered mark. As a result, the <vapiano.com> domain name is identical to Complainant’s VAPIANO mark pursuant to Policy ¶ 4(a)(i). See Treeforms, Inc. v. Cayne Indus. Sales, Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark); see also W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and
legitimate interests in the <vapiano.com> domain name. Complainant must first make a prima facie case
in support of its allegations, and the burden then shifts to Respondent to show
it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also Document Tech., Inc. v.
Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although
Paragraph 4(a) of the Policy requires that the Complainant prove the presence
of this element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <vapiano.com>
domain name. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
There is no evidence in the record that Respondent is
commonly known by the <vapiano.com> domain name. Respondent has registered the domain name
under the name “Sex-Escort” and links the
domain name to its own website, and Complainant has not authorized or licensed
Respondent to register a domain name incorporating its VAPIANO mark. Consequently, Respondent has not established
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See
Great
S. Wood Preserving, Inc. v. TFA Assocs., FA
95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that the respondent was not
commonly known by the domain name <greatsouthernwood.com> where the
respondent linked the domain name to <bestoftheweb.com>); see also
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).
In addition, Respondent’s <vapiano.com> domain name, which includes Complainant’s VAPIANO mark, resolves to Respondent’s own sex escort website at the <sexescort.ru> domain name. In Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel found that respondent’s diversionary use of the <isleworthcountryclub.com> website to misdirect Internet users seeking the complainant’s ISLEWORTH mark to adult-oriented websites did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Because Respondent is also using Complainant’s VAPIANO to divert unsuspecting Internet users to a website displaying adult-oriented content, Respondent’s use of the disputed domain name does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with pornographic material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the <vapiano.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain name includes
Complainant’s VAPIANO mark and resolves to Respondent’s own adult-oriented
website at the <sexescort.ru> domain name. The Panel finds that Respondent is taking
advantage of the confusing similarity between Complainant’s VAPIANO mark and
the <vapiano.com> domain name and profiting from the goodwill
associated with the mark. Respondent’s
diversionary use of the disputed domain name for its own commercial gain
provides evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Nat’l
Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL,
D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers
rely on misleading domain names to attract users by confusion, in order to
generate revenue from click-through advertising, mouse-trapping, and other
pernicious online marketing techniques.”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding
that absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith).
Moreover, instead of responding to the Complaint, Respondent
apparently e-mailed Complainant and offered to sell the <vapiano.com>
domain name registration for “100.000 euros,” or around $131,489.” The Panel infers that this amount is far in
excess of Respondent’s out-of-pocket costs in registering the disputed domain
name. As a result, Respondent has
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(i) by offering to sell the disputed domain name to
Complainant for such a large amount of money.
See Matmut v. Tweed,
D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where
the respondent stated in communication with the complainant that it would be
ready to sell the <matmut.com> domain name registration for $10,000); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000)
(finding that bad faith existed where the respondent offered the domain name
for sale to the complainant for $125,000).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vapiano.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 13, 2006
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