WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chi-Chi�s, Inc. v. Restauran Commentary (Restaurant Commentary)
Case No. D2000-0321
1. The Parties
The Complainant is:
Chi-Chi�s, Inc.
18831 Von Karman
Irvine, California 92612
United States of America
Represented by:
Charles C. Fowler, Esq.
Lyon & Lyon LLP
1900 Main Street, Sixth Floor
Irvine, California 92614
United States of America
The Respondent is:
Restauran Commentary
(Restaurant Commentary)
c/o Internet Services
Dunn Loring, Virginia 22027
P.O. Box 286
United States of America
Represented by:
Thomas P. Liniak, Esq.
Liniak, Berenato, Longacre & White, LLC
6550 Rock Spring Drive
Bethesda, Maryland 20817
United States of America
2. The Domain Name and Registrar
The domain name in dispute is , and the Registrar is Network Solutions, Incorporated (NSI) of Herndon, Virginia.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center�s Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on May 1, 2000. On May 2, 2000, the Center requested that the Registrar NSI check and report back on the registrant for the domain name . On May 3, 2000, NSI reported to the Center that the registrant was the Respondent:
Restaurant Commentary
c/o Internet Services
PO Box 286
Dunn Loring, Virginia 22027
On May 8, 2000, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this Proceeding officially began. Respondent�s Response, filed in the name of Restaurant Commentary, was received by the Center on May 26, 2000.
The Administrative Panel submitted a Declaration of Impartiality and Independence on June 12, 2000, and the Center proceeded to appoint the Panel on June 15, 2000. This Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by June 29, 2000.
4. Factual Background
Complainant is the owner of numerous trademarks and service marks using some form of the name "Chi-Chi�s", which have been registered on the principal register in the United States and in many other countries of the world (Complaint Exhibits D, E and F). Complainant uses these trademarks and service marks in running a chain of restaurants located in the United States. Complainant registered the domain name during 1997. Subsequently in 1997, Respondent registered the disputed domain name . Availing itself of the Registrar NSI�s administrative dispute resolution procedure in force at that time, in September 1997 Complainant succeeded in placing the disputed domain name on hold by sending to NSI proof of Complainant�s ownership of valid and subsisting trademarks using the name "Chi-Chi�s". Complainant now seeks to have the disputed domain name transferred to itself through this ICANN Administrative Proceeding. Respondent would like to keep the domain name for its own stated use of public comment on the internet.
5. The Parties� Contentions
Complainant�s Contentions:
· The Complainant is the owner of United States federal principal register trademarks and service marks for "CHI-CHI�s" restaurant services dating back to 1976 (Complaint p.5). These marks also are registered in numerous other countries such as Germany, Kuwait, South Africa, Japan etc.
· Respondent�s domain name, , is identical or confusingly similar to the Complainant�s service mark.
· Respondent has no rights or legitimate interests in the disputed domain name .
· Given the international notoriety of Complainant�s service mark, Respondent was aware of Complainant�s trademark rights when Respondent registered the disputed domain name. Hence, Respondent�s registration and use of the disputed domain are in bad faith.
· Respondent only registered the disputed domain name to prevent Complainant from doing so, and to sell the name to Complainant.
Respondent�s Contentions
· Respondent registered a similar, but not identical or confusingly similar, domain name for the purpose of providing public commentary (Response p.1).
· Respondent has full intention of making non-infringing, legitimate non-commercial use of the domain name.
· Respondent does not intend to sell or transfer the domain name.
· Respondent�s proposed web page has a disclaimer stating it is not the web page of "Chi-Chi�s Restaurants".
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):
· the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
· the Respondent has no rights or legitimate interests in respect of the domain name; and
· the domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
Respondent�s disputed domain name differs from Complainant�s trade and service marks by the absence of a hyphen and an apostrophe. This Panel believes traditional trademark law would find Respondent�s trademarks identical to Complainant�s, and this Panel adheres to this view in this Decision. Other Center Panels have found so (see for example Case No. D2000-0012), while still other Panels have found that varying only punctuation leaves trademarks, at best, confusingly similar. Also, it is now general knowledge that, on the internet, search engines often would include a name like Respondent�s when the searcher was looking for Complainant using Complainant�s famous trademark as a search guide.
Legitimate Rights or Interests
Claimant contends Respondent has no rights in the trademarks and service marks using "CHI-CHI�S", and therefore no rights in the domain name.
Respondent, on the other hand, says that it intends to use the disputed domain name for "public comment" on the internet. Respondent has left this Panel entirely up in the air regarding the subject matter or nature of this public comment. No license or fair use of the trademark is apparent. This Panel only sees Respondent�s infringing use of the trademark to coin a domain name with the vague stated purpose of "public comment." This is far too little. This Panel finds Respondent has no legitimate rights or interests in the disputed domain name .
Registered and Used in Bad Faith
Under the Policy 4(b), this Panel is also empowered to consider other evidence of bad faith in addition to what is enumerated in the Policy. Respondent had constructive notice of Complainant�s service mark ownership dating back to 1976, and actual notice because of the notoriety of the trademark when Respondent adopted the disputed domain in 1997.
Respondent�s disclaimer at the domain name website disavowing any connection with Complainant is insufficient to cure an infringing trademark use. This is well-settled at U.S. law and this Panel is empowered to notice appropriate national law under the Rules 15(a).
Furthermore, again pursuant to the Policy 4(b), and looking at this case as a whole, this Panel is of the opinion that Respondent�s very Response is indicative of its bad faith in registering the disputed domain name . Respondent states that it adopted the famous service mark "Chi-Chi�s" for the disputed domain name for the purpose of "public comment" and that this is a "legitimate non-commercial use" (Response pp.2-3 and the Policy 4(c)(iii). This Panel finds it disconcerting that Respondent does not reveal the topics of this public comment, nor why the famous trademark "Chi-Chi�s" was chosen as the domain name for the site for comment. Certainly, Respondent�s name "Restaurant Commentary" leads this Panel to infer the comment would be about restaurants. Perhaps Respondent thought this inference would make its case weaker and therefore decided to leave the nature of the "public comment" as vague as possible.
The internet is an alternative public medium as are television, newspapers and the radio. It is inconceivable to this Panel that Respondent, without license or permission, would be able to use the famous service mark of a restaurant chain like "CHI-CHI�s" for a restaurant public commentary production on television, in the newspapers, or on the radio. This would infringe the famous restaurant service mark. This Panel believes this same reasoning is valid for internet domain names in general, and for the disputed domain name in this Case in particular.
This Panel finds Respondent�s registration and attempted use of the domain name is in bad faith principally because Respondent was well aware it was infringing a famous service mark (see Case No. D2000-0018). And, this Panel�s finding of bad faith is reinforced by Respondent�s studious refusal in its Response to enlighten this Panel on what its intentions were when it registered the disputed domain name .
7. Decision
Pursuant to ICANN Policy para 4(i) and Rule 15, this Panel orders that the disputed domain name be turned over to Complainant. This domain name is identical or at best confusingly similar to Complainant�s service mark "Chi-Chi�s", the Respondent has no rights or legitimate interests in this domain name, and Respondent registered and used the domain name in bad faith.
Dennis A. Foster
Sole Panelist
Dated: June 29, 2000
Full & Egal Universal Law Academy