NATIONAL ARBITRATION FORUM

 

DECISION

 

Jetro Holdings, Inc. v. UniOne

Claim Number: FA0705000995656

 

PARTIES

Complainant is Jetro Holdings, Inc., Flushing, NY (“Complainant”), represented by Amy E. Carroll, of Drinker Biddle & Reath LLP, 1500 K Street, N.W., Suite 1100, Washington, D.C. 20005.  Respondent is UniOne, Valencia, CA (“Respondent”), of UniOne 29807 Mirada Circulo, Valencia, CA 91354.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <restaurantdepot.us>, registered with Go Daddy Software, Inc.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 30, 2007; the Forum received a hard copy of the Complaint on May 31, 2007.

 

On May 31, 2007, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the <restaurantdepot.us> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On June 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 25, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 3, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.      Respondent’s <restaurantdepot.us> domain name is identical to Complainant’s RESTAURANT DEPOT mark.

 

2.      Respondent does not have any rights or legitimate interests in the <restaurantdepot.us> domain name.

 

3.      Respondent registered and used the <restaurantdepot.us> domain name in bad faith.

 

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Jetro Holdings, Inc., is a leading cash and carry wholesale grocery and food service distributor.  Through its forty-seven stores across the United States, Complainant sells a full range of foodservice groceries, fresh meat and produce, frozen food, glassware and china, food service equipment, and cleaning supplies.  Complainant, through its subsidiary JRD IMC, LLC, owns two trademark registrations for the RESTAURANT DEPOT mark filed with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,830,713 issued April 12, 1994; Reg. No. 2,904,434 issued November 23, 2004).

 

Respondent registered the <restaurantdepot.us> domain name on May 1, 2002.  Respondent’s domain name resolves to a website that sells competing food service equipment and uniforms over the Internet. 

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the RESTAURANT DEPOT mark through registration with the USPTO.  The Panel finds that Complainant’s registration and continuous subsequent use satisfies the rights requirement for Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bin g Glu, FA 874496 (Nat Arb. Forum Feb. 13, 2007) (finding rights in the METLIFE mark as a result of its registration with the United States federal trademark authority); see also Auto. Racing Prods., Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration establishes rights under UDRP ¶ 4(a)(i)).

 

Respondent’s <restaurantdepot.us> domain name is identical to Complainant’s REATAURANT DEPOT mark.  Respondent’s domain name contains Complainant’s mark in its entirety and merely adds the country-code top-level domain “.us.”  The Panel finds that the addition of a top-level domain such as “.us” is irrelevant in determining whether a domain name is identical or confusingly similar to a trademark under Policy ¶ 4(a)(i).  See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also 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.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have rights or legitimate interests in the <restaurantdepot.us> domain name.  Past panels have held that in certain circumstances, a complainant’s assertions may be sufficient to establish a prima facie case under Policy ¶ 4(a)(ii).  This Panel finds that Complainant’s submission establishes a prima facie case, shifting the burden onto Respondent to set forth evidence of rights or legitimate interests pursuant to the Policy.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).

 

Complainant contends that Respondent is using the <restaurantdepot.us> domain name to operate a website that sells food service equipment and uniforms in direct competition with Complainant’s products.  The Panel finds that the use of a domain name identical to Complainant’s mark for the purpose of offering competing services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

 

Complainant contends that Respondent is not commonly known by the disputed domain name nor licensed to register domain names featuring Complainant’s marks.  Moreover, Respondent has failed to submit evidence of any trademark rights associated with the <restaurantdepot.us> domain name.  The WHOIS information for the <restaurantdepot.us> domain name lists the registrant as “UniOne.”  Without evidence suggesting otherwise, the Panel finds that Respondent has not established rights or legitimate interests in the <restaurantdepot.us> domain name pursuant to Policy ¶ 4(c)(i) or pursuant to Policy ¶ 4(c)(iii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent is using the <restaurantdepot.us> domain name to operate a website that sells competing food service equipment and uniforms.  The Panel finds that Respondent’s competing use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

Moreover, Respondent’s commercial use of the <restaurantdepot.us> domain name is likely to cause confusion among Internet users as to the source and affiliation of the disputed domain name.  As such, the Panel finds this to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

 

DECISION

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

 

Accordingly, it is Ordered that the restaurantdepot.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: July 9, 2007

 

 

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page