Eggspectation Canada Inc v. Amsterdam Vallon
Claim Number: FA0610000828944
PARTIES
Complainant is Eggspectation Canada Inc (“Complainant”), represented by Pradeep Anand, of Eggspectation Canada Inc, 6830 Park Avenue Suite 206, Montreal, PQ H3N 1W7, Canada. Respondent is Amsterdam Vallon (“Respondent”), represented by Manpreet Bali 25700 Bruford Blvd., Land O Lakes, FL 34639.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eggspectation.com>,
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 27, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 31, 2006.
On October 27, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <eggspectation.com>
domain name is registered with Go Daddy Software, Inc. and that the 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 ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 9, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 29, 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@eggspectation.com by
e-mail.
A timely Response was received and determined to be complete on November
17, 2006.
A timely Additional Submission from Complainant was received and
determined to be complete on November 21, 2006.
A timely Additional Submission from Respondent was received and
determined to be complete on November 21, 2006.
On November 27, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., 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. Respondent’s <eggspectation.com> domain name is confusingly similar to Complainant’s EGGSPECTATION registered mark.
2. Respondent does not have any rights or legitimate interests in the <eggspectation.com> domain name.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent
1. Respondent does not deny that the domain
name at issue is identical or confusingly similar to Complainant’s EGGSPECTATION
mark.
2. Respondent asserts that it has rights and
legitimate interests in the domain name at issue which it registered on January
4, 1998 before the existence of the UDRP.
3. After contact by Complainant, Respondent
suggested sale of the domain name at issue for more than out of pocket costs to
Complainant which he had a right to do. Respondent has not registered and used
the domain name at issue in bad faith.
C. Additional Submissions
Both parties filed
additional submissions and they were taken into consideration by the Panel for
all purposes.
FINDINGS
Complainant operates nine restaurants in
Canada, four in the U.S.A. and two in India.
It appears that the first restaurant was opened in 1993 in Quebec,
Canada and the Canadian trademark registration for EGGSPECTATION reflects a
date of first claimed use in 1993. A
U.S.P.T.O. registration of this mark was issued on April 19, 2005 and priority
was claimed under the original Canadian registration. Currently, Complainant has nine domain name registrations,
including <eggspectations.ca>, which embody the EGGSPECTATION mark. When it became clear to Complainant that it
wanted to expand its chain of restaurants to the U.S.A., Claimant investigated
the availability of <eggspectation.com>,
the domain name at issue. Although
communication with registered Respondent was difficult, several telephone
conversations were had between Complainant and Respondent. Complainant was told that Respondent was
using and intended further use of <eggspectation.com>
in connection with a website devoted to new parents and the joy of
children. Respondent told the Claimant
that he expected an offer for transfer of the domain name in excess of the cost
of registration, but the record before this Panel does not reflect details of
any demand. Written and telephonic
communications continued from 2000 to 2006 without resolution of the
dispute. Complainant further notes
that, at various times over the years, the website associated with <eggspectation.com> has afforded
links to a Canadian restaurant competitor of Complainant, Chez Cora, and thus
the domain name at issue has been used in bad faith by Respondent.
Respondent notes that the domain was
registered by him almost two years prior the existence of the UDRP and that he
had no actual knowledge of Complainant’s Canadian registration of
EGGSPECTATION. Respondent describes the
planned use of a website to be associated with the domain name at issue as
follows:
“The registering of eggspectation.com was conceived based upon two mutual concepts:
1. That parents-to-be (either natural or via adoption) had a grand “eggspectation” that their baby would “hatch” into the world as a miracle to share with family and friends, and
2. That the site’s logo would have been a play on words with a newborn crawling out of, or still sitting in, a half-cracked open eggshell.
Lastly, plans were being worked on to allow visitors of members to purchase gifts for the new baby and/or mother (flowers, stuffed animals, baby-care products, etc) and the ability to select pictures for downloading and/or printing (developing) services.”
Respondent alleges that, in 2004,
his Florida residence was burglarized and several computers were stolen. He says that the thieves apparently used the
computers to hack into the website associated with <eggspectation.com> and must have added the hyperlink to
Complainant’s competitor, Chez Cora.
It appears that, for a substantial period of time following registration of <eggspectation.com>, the domain has not been associated with a developed website.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 rights in the EGGSPECTATION mark through trademark registrations with the Canadian Intellectual Property Office (Reg. No. TMA 467459 issued December 10, 1996) and the United States Patent and Trademark Office (Reg. No. 2,941,030 issued April 19, 2005). Complainant has established rights in the EGGSPECTATION mark through these registrations under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <eggspectation.com> domain
name is identical to Complainant’s EGGSPECTATION
mark as it is comprised of Complainant’s mark in its entirety with the addition of the generic top-level domain
(“gTLD”) “.com.” The addition of a gTLD
does not distinguish the identical nature of the disputed domain name and
Complainant’s mark. See 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.”); see also
Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb.
Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is
identical to the complainant’s TERMQUOTE
mark).
Respondent neither confirms nor denies that the <eggspectation.com>
domain name is identical or
confusingly similar to Complainant’s EGGSPECTATION mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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).
Respondent is not commonly known by the <eggspectation.com> domain name pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name and Complainant has asserted that Respondent is not authorized to use Complainant’s mark. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent has demonstrated neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent has used the disputed domain name previously to display information and content related to babies, but currently the disputed domain name resolves to the website of a direct competitor of Complainant. Such use indicates a lack of rights or legitimate interests in the disputed domain name. See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Respondent has demonstrated a lack of rights and legitimate interests in the <eggspectation.com> domain name by offering to sell the disputed domain name to Complainant for more than out of pocket expenses of registration, something Respondent admits to doing. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <eggspectation.com> domain
name to redirect Internet users to a
competitor of Complainant constitutes disruption under Policy ¶ 4(b)(iii) and
thus is evidence of bad faith
registration and use. See Puckett, Individually v. Miller, D2000- 0297 (WIPO June 12, 2000) (finding
that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); 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).
Respondent’s offer to sell the disputed domain name to
Complainant for more than out of pocket
expenses is further evidence of bad faith registration and use under 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 Little Six, Inc. v. Domain
For Sale, FA 96967 (Nat. Arb.
Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad
faith).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eggspectation.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 8, 2006
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