Fum Machineworks Inc. v.
Tomov c/o Plamen Tomov
Claim
Number: FA0706000997925
PARTIES
Complainant is Fum Machineworks Inc. (“Complainant”), represented by Pallavi Mehta Wahi,
of Kirkpatrick & Lockhart Preston Gates Ellis LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <recipezaar.us>, registered with Enom, 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.
David A. Einhorn appointed as panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on June 1, 2007;
the Forum received a hard copy of the Complaint on June 4, 2007.
On June 4, 2007, Enom, Inc. confirmed by e-mail to the Forum
that the <recipezaar.us>
domain name is registered with Enom, Inc.
and that the Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 11, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 2, 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”).
A timely Response was received and determined to be complete on June 28, 2007.
An Additional Submission by Complainant was received and determined to
be complete on July 2, 2007.
An Additional Submission by Respondent was received and determined to
be complete on July 3, 2007.
On July 5, 2007, 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 makes the following assertions:
1. Complainant, Fum Machineworks Inc., owns a federal service mark registration for RECIPEZAAR for “computer services, namely providing online recipes, cooking instructions and grocery shopping lists in the field of food preparation.” (U.S. Registration No. 2,475,952, issued on August 7, 2001). Complainant further contends that Respondent’s <recipezaar.us> domain name is confusingly similar to Complainant’s Mark.
2. Complainant contends that Respondent does not have any rights or legitimate interests in the <recipezaar.us> domain name.
3. Complainant contends that Respondent registered and used the <recipezaar.us> domain name in bad faith.
B. Respondent
Respondent states, in an unsigned and uncertified
response, that it has a pending trademark application in
C. Additional Submissions
In its Additional Submission, Complainant argues that even if Respondent could prove that it filed a trademark application, a pending application is not sufficient to establish rights or legitimate interests in a domain name.
In Respondent’s Additional Submission, Respondent adds no additional evidence or arguments.
FINDINGS AND 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.”
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;
(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.
Complainant alleges that it has registered the RECIPEZAAR mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 2,475,952 issued August
7, 2001) in connection with computer services, including the posting of
recipes, cooking instructions, and grocery shopping lists online. This sufficiently demonstrates Complainant’s
rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum
Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through
registration of the mark with the USPTO.”).
Because the <recipezaar.us> domain name contains Complainant’s entire RECIPEZAAR mark and only adds the country code “.us” top-level domain, the Panel finds the disputed domain name to be identical to the mark according to Policy ¶ 4(a)(i). See Munestree Inc. v. Hustmaster Parkers Corp., FA 811689 (Nat. Arb. Forum Nov. 13, 2006) (ordering transfer of the domain name <moneytreeloans.us>.).
Therefore, Complainant has satisfied ¶ 4(a)(i) of the
Policy.
Complainant alleges that Respondent is redirecting Internet users who enter the
<recipezaar.us> domain name to
its own website at the <recipes.bgkuliner.net> domain name, which
Complainant claims provides similar recipes and food services as Complainant
does at its <recipezaar.com> domain name.
Respondent does not contest that allegation. The Panel finds that Respondent’s diversion
of Internet users to a competing website does not represent 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 Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007) (“The Panel finds that Respondent’s
operation of a website virtually identical to Complainant’s website to offer
competing travel reservation services does not fall within the parameters of a bona fide offering of goods or services
pursuant to [UDRP] ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to [UDRP] ¶ 4(c)(iii).”).
Respondent alleges, without any supporting evidence, that
it has a pending trademark application in
Respondent also states that he intends to “offer services”
in the
Therefore, Complainant has satisfied ¶ 4(a)(ii) of the
Policy.
Complainant asserts that Respondent offered to sell the disputed registration
to Complainant if Complainant would make an offer. Respondent does not deny that assertion. The Panel finds that Respondent’s conduct is
indicative of bad faith registration and use according to Policy ¶
4(b)(i). See Am. Anti-Vivisection Soc’y v.
“Infa dot Net” Web Serv., FA
95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the
domain name, even if no certain price is demanded, are evidence of bad faith”);
see also Elsevier Inc. & Reed Elsevier U.S. Holdings Inc. v. BoyanStoyanovic
IngeHaayer, FA 547892 (Nat. Arb. Forum Oct. 12, 2005) (offer to sell <elsevier.us> constituted bad faith pursuant to UDRP
¶ 4(b)(i)); see also Am. Express Co. v. McWilliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (offer
to sell <americanexpresstravel.us> demonstrated Respondent’s bad faith
registration and use of domain name).
Complainant alleges that the domain name in dispute, <recipezaar.us>, resolves to a
website in direct competition with Complainant.
Respondent does not deny that assertion.
The Panel finds that Respondent has registered and is using this domain
name in order to disrupt Complainant’s business under the RECIPEZAAR mark, and
that this conduct establishes bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See Spark Networks PLC v.
Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that
the respondent’s registration of a domain name substantially similar to
Complainant’s AMERICAN SINGLES mark in order to operate a competing online
dating website supported a finding that respondent registered and used the
domain name to disrupt the complainant’s business under UDRP ¶ 4(b)(iii)); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat.
Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates
in the same business as the Complainant. The parties can therefore be considered as
competitors. The Panel thus finds that
the Respondent registered the domain name primarily for the purpose of
disrupting the business of a competitor, which constitutes evidence of
registration and use in bad faith under [UDRP ¶] 4(b)(iii).”).
Finally, this Panel also finds that by using the disputed domain name in a competitive manner, Respondent is taking advantage of the likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website at the disputed domain name and Complainant’s RECIPEZAAR mark. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to respondent’s website offering competing travel services violated UDRP ¶ 4(b)(iv)).
For the above reasons, Complainant has satisfied ¶
4(a)(iii) of the Policy.
DECISION
Having established all three elements required under the U.S.
Department of Commerce’s usTLD Policy, the Panel concludes that relief shall be
GRANTED.
Accordingly, it is Ordered that the <recipezaar.us> domain name be TRANSFERRED
from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 19, 2007
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