WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hamburger Hamlets, Inc. v. Hallee Wachsmuth
Case No. D2000-1548 (see: ADDENDUM)
1. The Parties
The Complainant in this administrative proceeding is Hamburger Hamlets, Inc., a California corporation, having its principal place of business located at 18831 Von Karman, Irvine, California 92612, U.S.A.
The Respondent is Hallee Wachsmuth. As set forth in Respondent's December 18, 2000, e-mail to WIPO, Respondent's mailing address is P.O. Box 2417, Newport Beach, California 92659, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is as follows: . The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on March 29, 1999.
3. Procedural Background
On November 10, 2000, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999, ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on November 23, 2000.
Respondent did not file a Response, and a "Notification of Respondent Default," dated December 15, 2000, was forwarded by WIPO to Respondent.
The decision of the Panel was due to WIPO on or before January 18, 2001.
4. Factual Background
Since 1981, Complainant has provided restaurant services under the mark PORTNER'S. Complainant is the owner of U.S. Trademark Registration No. 1,524,937 for the mark PORTNER'S. See Complaint, Annex D.
As noted above, Respondent registered the domain name in dispute with NSI on March 29, 1999. No goods or services are currently provided at Respondent's web site. Respondent's web site informs the public that, "Our Web site will be online soon. Thank you for your patience while we build our site." See Complaint Annex F.
On October 11, 2000, Complainant's representative attempted to contact Respondent by phone and by e-mail, using the telephone number and e-mail address provided by Respondent to NSI. The person who answered the phone was not Respondent and did not know of Respondent; the e-mail was returned as undeliverable.
5. Parties' Contentions
Complainant contends that the domain name in issue is identical or confusingly similar to Complainant's registered mark PORTNER'S, in that the only difference is the apostrophe in the registered mark and the inclusion of ".com" in the domain name. It further argues that Respondent has no rights or legitimate interests in the domain names, as evidenced by the fact that: (1) Respondent does not operate a business or other organization under the disputed domain name; (2) Respondent does not own any trademark or related rights in the domain name; (3) Respondent is not making a legitimate noncommercial or fair use of the domain name; and (4) neither Respondent nor anyone associated with Respondent has been commonly known by the names PORTNERS or "".
In support of its contention that the domain name was registered and is being "used" in "bad faith," Complainant notes and argues that: (1) Respondent's web site does not advertise or offer any information, goods, or services; (2) Respondent was aware of Complainant's mark at the time Respondent registered the disputed domain name; (3) given the inherent distinctiveness of Complainant's PORTNER'S mark and Respondent's lack of noncommercial or fair use of the mark, Respondent's only or primary intention in registering the domain name was either to attempt to sell the domain name registration to Complainant or its competitors and/or to otherwise prevent Complainant from using the domain name as its proper right; and (4) Respondent provided false contact information to NSI.
6. Discussion and Findings
The Panel has carefully weighed the evidence presented and determines that Complainant clearly has met the requirements set forth in �4.a. of the Policy.
There is no question that the domain name in dispute is confusingly similar to Complainant's PORTNER'S mark. As argued by Complainant, the fact that the domain name does not include the apostrophe that appears in Complainant's mark and the addition in the domain name of the top-level domain ".com" are without legal significance.
It is also clear that Complainant, through its long use of, and registration covering, the PORTNER'S mark, has rights in the mark.
There also is no evidence that Respondent has rights or legitimate interests with respect to the domain name.
Finally, the evidence supports a determination of "bad faith" registration and use. While none of the circumstances set forth in �4.b. of the Policy appears applicable, this panel, as others (see, for example, Chernow Communications v. Kimball, WIPO Case No. D2000-0119; Mondich and American Wine Biscuits, Inc. v. Brown, WIPO Case No. D2000-0004), concludes that Respondent's passive holding of the disputed domain name and the providing of false contact information to NSI are sufficient grounds upon which to establish the requisite "bad faith."
7. Decision
In view of the above, the Panel GRANTS Complainant's request for transfer to it of the domain name
Jeffrey M. Samuels
Sole Panelist
Dated: January 21, 2001
ADDENDUM TO ADMINISTRATIVE PANEL DECISION
Hamburger Hamlets, Inc. v. Hallee Wachsmuth
Case No. D2000-1548
This is an Addendum to the Administrative Panel Decision ("Decision"), dated January 21, 2001, with regard to the domain name dispute between the parties involving the domain name "".
Further Procedural History
On February 5, 2001, Respondent, Hallee Wachsmuth, directly contacted the Panel to indicate that she had filed a Response. Upon receipt of the telephone call, the Panel contacted WIPO and learned that a Response, dated January 9, 2001 had been filed with WIPO. However, pursuant to the relevant Rules [1], a response was due on December 12, 2000. The Response was not included with the hard copy of the file forwarded by WIPO to the Panel, as it was not received by the Center prior to the forwarding of the case file. The hard copy was received by the Center on January 30, 2001. A copy of the electronic version of the response was provided by WIPO to the Panel on February 7, 2001. While WIPO�s records indicate that the Center forwarded an electronic version of the Response to the Panel on January 12, the Panel was not in receipt of such response at the time it issued its January 21, 2001 decision.
Further Discussion and Findings
Reciting earlier procedural history of this case, the Panel notes that in an e-mail message dated December 18, 2000, Respondent informed WIPO that she had not received any information regarding the Notification of Complaint. On December 20, WIPO e-mailed Respondent that the Notification of Complaint and Complaint were mailed to Respondent on November 27, 2000, via Federal Express to the address listed with Network Solutions, Inc., i.e., PO Box 9436, Arlington, Virginia 22219. WIPO also informed Respondent that "should you wish to submit a response based on the failure to receive the Notification, you should submit a request, outlining your reasons, to the Center. The request will then be sent to the panelist who will make a determination and submit an order based on that request." In her e-mail response of December 20, Respondent indicated that, "[a]s a rule, Fed Ex will not deliver to PO Box addresses."
Upon review of all the facts and circumstances, the Panel declines on its own motion [2] to extend the period of time fixed by the Rules for the filing of a Response and, therefore, declines to consider Respondent's late-filed Response.
First, it is not correct that Federal Express will not deliver to a Post Office Box. It will do so when there is a phone number for the recipient. In this case, there was a phone number listed for Respondent, and this number was provided by WIPO to Federal Express. However, the telephone number provided by Respondent to the registrar, Network Solutions, Inc., was not correct. The returned Federal Express package had a short note indicating that the phone number belonged to a "Maria." Thus, it appears that, but for Respondent's inaccurate listing of its phone number, the Federal Express package with the Notification of Complaint and Complaint would have been delivered in a timely manner.
Further, and more importantly, the evidence suggests that Respondent received all communications, including the Notification of Complaint and Complaint, via e-mail. The Panel notes that the e-mail address to which all communications were sent is the same address from which Respondent communicated her late Response. One must, therefore, presume that Respondent received the Notification of Complaint, together with the Complaint, in a timely manner. [3]
In sum, while this Panel prefers to decide administrative proceedings involving domain names based on the merits, the facts and circumstances set forth above do not support a determination that this is an "exceptional case" under Rule 10(c). Therefore, there is no basis to take into account the untimely Response.
Decision
The Panel, accordingly, reaffirms its decision in favor of Complainant and reaffirms the requirement that the domain name "" be transferred to Complainant.
Jeffrey M. Samuels
Sole Panelist
Dated: February 12, 2001
Footnotes:
1. Pursuant to Rule 5, a response is due within 20 days of the commencement of the administrative proceeding. The instant administrative proceeding was commenced on November 23, 2000.
2. Pursuant to Rule 10, the Panel may, at the request of a party or on its own motion, extend, in "exceptional cases," a period of time fixed by these Rules�." The Panel notes that WIPO informed the Respondent of her right to submit a request to file a late Response and that Respondent, in her December 20 e-mail message, indicated she would do so. However, the Panel is not aware that any such request was filed.
3. It appears that the Notification of Complaint and Complaint were sent by WIPO via e-mail on November 22, 2000.
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