The Chefs’ Warehouse, Inc. v kian forouzesh / master chef warehouse
Claim Number: FA1501001599565
Complainant is The Chefs’ Warehouse, Inc. (“Complainant”), represented by Eric Adler of Adler Vermillion LLP, New York, USA. Respondent is kian forouzesh / master chef warehouse (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is <masterchefwarehouse.com>, registered with GoDaddy.com, LLC.
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 Panelist in this proceeding.
Mrs. Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2015; the National Arbitration Forum received payment on January 13, 2015.
On January 14, 2015, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <masterchefwarehouse.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@masterchefwarehouse.com. Also on January 15, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 3, 2015.
On February 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mrs. Antonina Pakharenko-Anderson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
4(a)(i). Complainant has registered the THE CHEFS’ WAREHOUSE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,539,456, registered Dec. 12, 2008). The mark is used in connection with the wholesale distributorship of food items and ingredients. The <masterchefwarehouse.com> domain name encompasses the Complainant’s mark and replaces “THE” with the generic descriptive term “master,” along with the generic top-level domain (“gTLD”) “.com.”
Complainant has been using the mark THE CHEFS’ WAREHOUSE and related marks since at least as early as 1997, and owns common-law rights to the trademark THE CHEFS’WAREHOUSE since at least as early as December 1997. Between December 26, 2000 and September 29, 2007, Complainant owned US Trademark Reg. No. 2416637 for THE CHEFS’ WAREHOUSE for “Wholesale distributorship featuring food items and ingredients.”
Thus, Complainant asserts trademark rights in THE CHEFS’ WAREHOUSE and alleges that the disputed domain name is confusingly similar to its trademark.
4(a)(ii) Respondent has no rights or legitimate interests in the <masterchefwarehouse.com> domain name. Respondent has never been licensed to use the THE CHEFS’ WAREHOUSE mark in domain names. Respondent has also failed to show that it has any right to be commonly known by any words encompassed in Complainant’s mark. Further, Respondent’s sale of similar and/or competing services fails to consist of a bona fide offering of goods or services or a noncommercial or fair use.
Thus, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
4(a)(iii) Respondent has registered and is using the domain name in bad faith. Respondent has registered the domain name for the purpose of disrupting Complainant’s business by trading on the goodwill the THE CHEFS’ WAREHOUSE mark has acquired. Respondent is also attempting to attract Internet users to its web site, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of the products or services on Respondent’s web site.
Thus, Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
4(a)(i) Complainant does not own “Master Chef Warehouse” as a trade mark. The Respondent’s legal name, which is granted by the state of New York and also federally registered, is “Master Chef Warehouse”
The <masterchefwarehouse.com> domain name is not confusingly similar to the mark THE CHEFS’ WAREHOUSE. The goods being offered under the mark are not in competition with those offered under the domain name. In addition the term “master,” as placed at the beginning of the domain name, serves to distinguish the domain name from the mark. The word “THE” as used in the mark also distinguishes the mark from the domain name, thus voiding any possibility of a confusing similarity.
4(a)(ii) Respondent has rights or legitimate interests in the domain name. Respondent has done business as “Master Chef Warehouse” since 2009. Since the disputed domain name is distinguishable from the mark, Respondent does not need licensing rights issued by Complainant in order to use the <masterchefwarehouse.com> domain name. Respondent has used the domain name since 2009 to sell properly licensed goods that do not compete with the goods or services offered under Complainant’s mark. Thus, Respondent has made a bona fide offering of goods or services and demonstrated rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii).
4(a)(iii) As the goods offered under the domain name do not compete with those offered under Complainant’s mark, Respondent has not registered or used the mark with the purpose of disrupting Complainant’s business. Respondent has never created confusion with Complainant’s mark. Respondent has its own sources and affiliations and sponsorship with national corporations of which none of them is affiliated with the Complainant. Since the goods do not compete and the domain name is distinguishable from the mark, Respondent is not intending to profit from a likelihood of confusion.
Therefore, Respondent contends that he has not registered or used the domain name in bad faith.
As established based on evidences provided in Exhibits B, C, D to the Complaint, Complainant is the holder of the trademark THE CHEFS’ WAREHOUSE under U.S. trademark registration no. 3,539,456 for “wholesale distributionship featuring food and items and ingredients’. According to the disclaimer, no claim is made to the exclusive right to use “warehouse” apart from the mark as shown.
Based on the records of the case and pursuant to the provisions of the Lanham Act, the Panel finds that the Complainant has benefited from exclusive rights to its THE CHEFS’ WAREHOUSE mark since August 27, 2007 (the application filing date) (US reg. no. 3,539,456, registered December 2, 2008).
Earlier, the trademark THE CHEFS’ WAREHOUSE was recorded in the Supplemental Register which is reserved for non-distinctive marks which are capable of acquiring distinctiveness (i.e. the secondary meaning) under U.S. reg. no. 2,416,637 in the name of Dairyland (New York Corporation).
According to the records of the Federal Trademark Register Complainant has been using the mark THE CHEFS’ WAREHOUSE and related marks since at least as early as 1997, and owns common-law rights to the trademark THE CHEFS’ WAREHOUSE since at least as early as December 1997.
Complainant operates the website owns the domain name <chefswarehouse.com> and uses this domain name to sell, market and distribute food and related products.
The disputed domain name was registered on July 2, 2009 and resolves to a website that promotes Respondent’s business, as a restaurant and hospitality durable goods dealer. According to the WHOIS records, the registrant’s name is kian forouzesh and master chef warehouse is indicated as the registrant organization.
There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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; 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.
Complainant provides evidence of two United States Patent and Trademark Office trademark registrations for the word mark THE CHEFS’ WAREHOUSE. One is a current registration from December 2008 on the Principal Registrar; the other a lapsed registration on the Supplemental Register, extant from 2000 to 2007. For the purposes of determining rights premised on registration it is only the current registration which is relevant. Panel notes that registration is not in the name of Complainant. Nonetheless, absent contest from Respondent, Panel is prepared to find that ownership is more likely than not to rest with a company in the same corporate structure as Complainant. Panel therefore finds that Complainant has rights in a trademark (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
In terms of the question of confusing similarity, the relevant comparison is THE CHEFS’ WAREHOUSE with the term “master chef warehouse” (see discussion of non-distinctive elements in the following cases - Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; previous Panels also have found that since spacing is not acceptable in domain names and all of them require some form of TLD, omission of spacing and addition of gTLD to the trademark does not affect the confusing similarity analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
According to the comparative analysis, the disputed domain name <masterchefwarehouse.com> retains the dominant portion of the mark despite of replacing the article “the” by the noun “master” which might be regarded by an average consumer as a descriptor to the noun “chef” and omitting the “s”. Addition of non-distinctive elements may not preclude confusion of the disputed name with the Complainant’s mark at a domain name level. Therefore the disputed domain name is confusingly similar to the Complainant’s mark pursuant to Policy ¶ 4(a)(i). see Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) finding that <utahwedding.com> was confusingly similar to the complainant’s UTAHWEDDINGS.COM trademark in spite of the trivial omission of the letter “s”); see Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Based on the evidence, the Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
The publicly available WHOIS information identifies Respondent as “kian forouzesh” of Master Chef Warehouse. Based on the Response, Respondent is Master Chef Warehouse, corp. located at 750 Stewart Avenue, unit-B, Garden City, NY 11530. Kian Forouzesh is respondent partner and CEO. According to the Exhibit E attached to the Complaint, the domain name resolves to the Respondent’s website promoting the Respondent’s business under the name Master Chef Warehouse.
Thus, the Panel finds that Respondent operates under the “Master Chef Warehouse” name. Panels have been especially prepared to assume that a respondent is ‘commonly known’ by a name where the evidence indicates that the name has been used in a business context. See, e.g., IKB Deutsche Indus. AG v. Larkin, D2002-0420 (WIPO Jul. 23, 2002) (finding that use of the name in connection with a proposed business interest was sufficient to establish that the respondent was commonly known by the domain name). See, e.g., Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (holding that the respondent had rights or legitimate interests in the disputed domain name where its business name was “Anytime OnLine Traffic School” and that it was therefore not far-fetched to use <aoltrafficschool.com> as a domain name for its business); See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”).
According to the website and the Response, the Respondent is in the business under the “Master Chef Warehouse” name since 2009 selling only Durable goods to Hospitality Industry. The Respondent registered the domain masterchefwarehouse.com for its online presence. The Respondent has picked this domain name because it is the natural extension of its name by just adding .com to its legal name. Respectively, Respondent argues that it is both making a bona fide offering or goods or services and making fair use of the disputed domain name. Additionally, Respondent is in the different segment of hospitality industry by selling only durable goods unlike the Complainant which only sells food and perishable goods.
Thus, the Panel concludes that the parties operate in different sectors of the market and their businesses are not competitive.
In this context the Panel takes due note that the Complainant’s mark THE CHEFS’ WAREHOUSE is the mark which acquired the secondary meaning through its use and is registered and used for wholesale distribution featuring food items and ingredients.
Since the Respondent is using its own name Master Chef Warehouse for selling only durable goods to hospitality industry, there was no need for him to obtain authorization from the Complainant to use the trademark.
Finally, the Panel notes that “weak” trademarks, like the ones which inherently do not possess the sufficient level of distinctiveness, may be entitled to only limited protection against use of identical or closely similar trademarks on identical or closely related goods or services. Thus, the legal protection of the Complainant’s mark THE CHEFS’ WAREHOUSE is very limited.
The Panel does not, because the UDRP does not require it, engage in further analysis as to whether there is an actionable claim for trademark infringement. A court of law or a mutually agreed arbitration tribunal is the appropriate venue for such an analysis. The questions that this Panel must address are carefully circumscribed by the Policy. Policy, ¶ 5.
Factoring that the disputed domain name had been registered and used well before the Complaint was brought, the Panel finds that the Respondent, before any notice of the dispute, used the domain name and the trade name corresponding to the domain name in connection with a bona fide offering of goods or services, and the Respondent as a business has been commonly known by the domain name.
The Panel believes that Respondent was justified in using this domain name, and finds that Respondent made a Policy ¶ 4(c)(i) bona fide offering of goods and services through its promotion of his business under the domain name which corresponds to his trade name. Panels have found rights or legitimate interests where a respondent has shown use of the domain name to operate an established business. See, e.g., Downstream Exch. Co. v. Downstream Energy, FA 96304 (Nat. Arb. Forum Feb. 2, 2001) (finding that the respondent established rights in the <downstreamexchange.com> domain name pursuant to Policy ¶ 4(c)(i) by obtaining “the domain name in contemplation of creating and operating an Internet auction exchange” and showing demonstrable preparations for such use). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name). The Panel finds that Respondent is making a bona fide offering of goods or services, and thus has rights or legitimate interests under Policy ¶ 4(a)(ii).
In light of the Panel’s finding in favor of Respondent with respect to the existence of rights and legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii), there is no need to reach an analysis of the third element. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name). See also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Nevertheless, as the Panel here found the Respondent’s services not to compete with Complainant’s good or services, the Panel finds that Respondent is not disrupting the business of the Complainant. Panels have found no Policy ¶ 4(b)(iii) disruption when the goods or services offered under a domain name do not compete with the goods are services offered under the mark at issue. See Gorstew Ltd. & Unique Vacations v. Twinsburg Travel, FA 94944 (Nat. Arb. Forum July 7, 2000) (finding no bad faith under Policy ¶ 4(b)(iii) because the respondent and the complainant are not truly competitors . . . ”).
Respondent argues that it is not attempting to profit from a likelihood of confusion. Respondent contends that Internet users are not likely to be confused as to the source or sponsorship of its <masterchefwarehouse.com> domain name. The Panel agrees that even though the domain name and trademark contain some of the same words, a likelihood of confusion as to the source or sponsorship does not necessarily result. See Springsteen v. Burgur, D2000-1532 (WIPO Jan. 25, 2001) (finding no likelihood of confusion between common law mark BRUCE SPRINGSTEEN and <brucespringsteen.com> because even the relatively unsophisticated Internet user would realize that not every domain bearing the name Bruce Springsteen is an official site). The Panel finds no likelihood of confusion to exist, and that Respondent has not engaged in bad faith under Policy ¶ 4(b)(iv) or Policy ¶ 4(a)(iii).
Finally, the Panel finds that since the Complainant operates his own website <chefswarehouse.com> in the same gTLD as the disputed domain name, the Respondent has not registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
Upon a review of the totality of the circumstances, the Panel here agrees that Complainant has failed to adequately show that this domain name, registered before Complainant made any protests to Respondent, was registered in Policy ¶ 4(a)(iii) bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <masterchefwarehouse.com> domain name REMAIN WITH Respondent.
Antonina Pakharenko-Anderson, Panelist
Dated: February 26, 2015
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