NATIONAL ARBITRATION FORUM
URS DEFAULT DETERMINATION
Moe’s Franchisor LLC v. Gary Cowgill
Claim Number: FA1408001576456
DOMAIN NAME
<moes.catering>
PARTIES
| Complainant: Moe’s Franchisor LLC of Atlanta, GA, United States of America | |
|
Complainant Representative: Fross Zelnick Lehrman & Zissu, P.C.
Todd Martin of New York, NY, United States of America
|
| Respondent: Gary Cowgill of North Royalton, OH, US | |
REGISTRIES and REGISTRARS
| Registries: New Falls. LLC | |
| Registrars: Godaddy LLC |
EXAMINER
| 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 Examiner in this proceeding. | |
| Saravanan Dhandapani, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: August 22, 2014 | |
| Commencement: August 22, 2014 | |
| Default Date: September 8, 2014 | |
| Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Procedural Findings: | ||
| Multiple Complainants: No multiple Complainants are involved in this proceeding. This Complaint and findings relate to the domain name <moes.catering>. No domain name is dismissed from this Complaint. | ||
| Multiple Respondents: No multiple Respondents are involved in this proceeding. This Complaint and findings relate to the domain name <moes.catering>. No domain name is dismissed from this Complaint. | ||
| Findings of Fact: Complainant states inter-alia that they opened the first Moe’s Southwest Grill restaurant in Atlanta, Georgia in 2000 and has used the MOE’S and the federally registered MOE’S SOUTHWEST GRILL trademarks continuously ever since; Complainant has obtained numerous registrations for its MOE’S SOUTHWEST GRILL trademark, including U.S. Reg. No. 2,650,129, which has also been registered with the Trademark Clearinghouse (“TMCH”);` Complainant owns additional trademark registrations, including U.S. Reg. Nos. 2,699,371; 3,762,299 and 3,989,089, and registrations covering at least five other jurisdictions, as evidenced in Annex A; Complainant also owns and operates a website at www.moes.com; On August 4, 2014, shortly after registering the <moes.catering> domain on July 27, 2014, Complainant received an email from the Respondent, describing himself as a software engineer from Cleveland, Ohio wherein while the Respondent admitting that he registered the <moes.catering> domain name with Complainant in mind, well aware of Complainant’s catering services, as one of Complainant’s restaurants had catered the Respondent’s graduation party, offered to sell the domain to Complainant for $30,000; Complainant never granted any license or other permission to Respondent to use the MOE’S or MOE’S SOUTHWEST GRILL trademarks, nor has Respondent been authorized by the Complainant to register or use any domain name incorporating the Complainant’s trademarks; Respondent is not named or commonly known as “Moe” nor does he have any affiliation with Complainant or its restaurants. Respondent is not using the Domain Name, but has merely “parked” it on a page that features an image of the popular movie character “Moe” of The Three Stooges fame; there is no disclaimer at the website that would indicate that the website is unaffiliated with and has not been endorsed by the Complainant; Respondent’s registration also blocks Complainant from reflecting its mark in a .menu domain name and could be used to disrupt Complainant’s business; it also will cause confusion as to source and sponsorship for any visitors to the website; Respondent’s request for $30,000 in exchange for the domain name is a clear violation of § 1.2.6.3(a) of the URS Policy, in that Respondent appears to have registered the Domain Name primarily to profit from its sale; Respondent registered a domain name that is identical to the most prominent and distinguishable portion of Complainant’s MOE’S SOUTHWEST GRILL trademark, after receiving notice of Complainant’s rights in the mark, and despite having no legitimate interest in the Domain Name; and Respondent’s only use of the Domain Name has been to try to sell it at a massive profit one short week after registering the domain for less than $50. Complainant therefore requests that the Domain Name be suspended for the duration of the registration. |
|
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The Complainant has proved by documentary evidences under Annexure `A’ that they are the registered owner of trademark i.e., MOE’S SOUTHWEST GRILL”. That apart, the Complainant themselves had registered the very same domain name <moes.com>. As noted, the Disputed domain Name <moes.catering>, composes of “moes” and “.catering”. “MOES” is identical to the most prominent and distinguishable portion of Complainant’s “MOE’S SOUTHWEST GRILL” trademark. “.catering” is a generic code top-level domain name (gTLD) suffix. It is non-distinctive and is incapable of differentiating the Disputed Domain Name from the Complainant’s registered trademark. Based on the “MOE’S” being a registered trademark of the Complainant, the Examiner finds that URS 1.2.6.1 (i) covers the domain name at issue in this case. [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant The fact that the Complainant’s adoption and first use of the registered trademark predates the Respondent’s Disputed Domain Name has the practical effect of shifting the burden of proof to the Respondent in establishing that the Respondent has legitimate rights and/or interests in the Disputed Domain Name. The Respondent is in default and has not filed any Response. Although, the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Arbitral Tribunal can however and does draw evidentiary inferences from the failure of the Respondent to respond. The Complainant has established a prima facie case of lack of rights and legitimate interest and the Respondent has failed to rebut the presumption of absence of rights or legitimate interests. Based on the record, the Respondent does not have rights or legitimate interests in the disputed domain name. Hence, the Examiner finds that URS 1.2.6.2 covers the domain name at issue in this case and that the Respondent has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant It is well established that the Respondent’s registration and use of the Disputed Domain Name must involve malafides where the registration and use of it was and continues to be made in the full knowledge of the Complainant’s prior rights in the “MOE’S” trademark, and in circumstances where the Respondent did not seek permission from the Complainant, as the owner of the trademark, for such registration and use. The Panel Examiner finds that due to the facts that (i) the Disputed domain Name is identical to the most prominent and distinguishable portion of Complainant’s “MOE’S SOUTHWEST GRILL” trademark; (ii) the Respondent’s name does not correspond to the Disputed Domain Name; (iii) that the Respondent was aware of the Complainant and its trademark when it registered the Disputed Domain Name; (iv) Respondent’s registration of Disputed Domain Name blocks Complainant from reflecting its mark in a .menu domain name; (v) Respondent’s registration of Disputed Domain Name could be used to disrupt Complainant’s business; (vi) there is no indication of any authorization to use the Complainant’s mark; and (vii) the Respondent himself offered to sell the domain name at a massive profit to the Complainant, it is lawful to infer that the Disputed Domain Name was registered and is being used in bad faith. Hence, the Examiner finds that URS 1.2.6.3 (a) covers the domain name at issue in this case and that the Respondent has no legitimate right or interest to the domain name. FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ submissions, the Examiner determines that the Complainant
has demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for
the duration of the registration:
|
Saravanan Dhandapani Examiner
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page