WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NUBECO, LLC v.
Case No. D2008-1056
1. The Parties
The Complainant is NUBECO, LLC, Concord, California, United States of America, represented by Thelen Reid Brown Raysman & Steiner LLP, San Francisco, California, United States of America.
The Respondent is , Chicago, Illinois, United States of America.
2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2008. On July 14, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On July 14, 2008, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2008. The Respondent has not submitted a Response. Accordingly, the Center notified the Respondent of its default on August 8, 2008.
The Center appointed Sally M. Abel as the sole panelist in this matter on August 14, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, NUBECO, LLC, is the owner and operator of the Trader Vic's restaurants and bar services. The Complainant has used the TRADER VIC'S mark since at least 1934. The Complainant operates restaurants and bar services under the TRADER VIC'S mark in many countries around the world and in eight United States of America (“U.S.”) cities, including a soon to be re-opened TRADER VIC'S of Chicago.
The Complainant registered its domain name in 1997, and has been marketing its restaurant and bar services under the TRADER VIC'S mark via the domain name since that year. The Complainant also has a collection of “.com” domain names for TRADER VIC'S restaurants, which combine the TRADER VIC'S mark with the respective city of the restaurant – e.g., , and .
The Complainant owns various U.S. federal trademark registrations for TRADER VIC'S including the following: (1) Reg. No. 384,083, issued January 7, 1938 for rums; (2) Reg. No. 502,788, issued October 12, 1948 for food products; (3) Reg. No. 629,234, issued June 19, 1956 for food products; and (4) Reg. No. 693,619, issued February 23, 1960 for restaurant, catering and banquet services.
On February 9, 2008, the Respondent registered the domain names and , (the “Domain Names”). The Domain Names are currently parked through the domain name registrar GoD, Inc. Each of the Domain Names provides sponsored links to the web pages of various companies.
On September 24, 2007 the Complainant sent a letter by email and Federal Express to the Respondent, at the administrative email address and mailing address listed in the Respondent's domain name registration, which demanded that the Respondent immediately cancel the Domain Names or transfer them to the Complainant. The Complainant received no response to its September 24, 2007 letter. On July 11, 2008 the Complainant filed a Complaint with the Center. And on July 10, 2008 the Complainant sent a copy of the Complaint by email and Federal Express to the Respondent. The Respondent did not respond to the Complaint.
5. Parties' Contentions
A. Complainant
The Complainant alleges that the Domain Names are identical or confusingly similar to its federally registered and incontestable mark TRADER VIC'S, and identical or confusingly similar to its own domain names including .
The Complainant alleges that the Respondent possesses no rights or legitimate interests in the Domain Names since the Respondent is not related to, licensed by, or affiliated with the Complainant and the Complainant has never authorized or granted permission to the Respondent to use its mark TRADER VIC'S or to obtain Domain Names identical or confusingly similar to it. The Complainant further alleges that the Respondent has no rights or legitimate interests in the Domain Names since the Respondent is not known by either of the Domain Names. Instead, the Respondent refers to itself as “ ”. The Complainant also alleges that the Respondent is not making a legitimate noncommercial or fair use of the Domain Names. Instead, by parking the Domain Names and providing sponsored links to the web pages of various other companies, the Respondent acquired the Domain Names to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with the Complainant's marks. The Complainant further alleges that such misleading diversion is evidence of bad faith rather than bona fide use.
The Complainant alleges that the timing of Respondent's registration of the Domain Names evidences the Respondent's bad faith. The Complainant alleges that on February 7, 2006, published news reports and public ceremonies held by the Complainant announced that the Complainant planned to re-open a TRADER VIC'S restaurant in Chicago. The Complainant further alleges that the very next day after these published news reports and public ceremonies, February 8, 2006, the Respondent registered the Domain Names. The registrar, GoD, Inc. confirmed this date of registration. Finally, the Complainant alleges that the Respondent's failure to make an effort to use the Domain Names in connection with a bona fide offering of goods or services is evidence of bad faith.
B. Respondent
The Respondent did not file a Response or otherwise reply to the Complainant's contentions.
6. Discussion and Findings
The Rules provide: “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint.” Rules, paragraph 5(e). See also Rules, paragraph 14. The Respondent has filed no Response in this case and there are no exceptional circumstances presented. The Complaint establishes that the Complainant has met its burden of proof on each of the required elements.
A. Identical or Confusingly Similar
The Complainant unquestionably owns trademark rights in the TRADER VIC'S mark. While the Domain Names in question are not identical to the mark, they are confusingly similar. The and Domain Names differ from the Complainant's mark only in adding the geographic designation of the commercial business. Such a distinction is without a difference, particularly where as here, the Complainant offers restaurant and bar services in cities throughout the U.S. and countries around the world. Inter-IKEA Systems B.V. v. Evezon Co. Ltd.WIPO Case No. D2000-0437 (August 11, 2000) (finding that the addition of a geographical term to the Complainant's mark creates a likelihood of confusion); eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633 (January 18, 2001) (accord). Moreover, the Complainant has demonstrated a pattern and practice of registering “.com” domain names for its TRADER VIC'S restaurants by adding the name of geographic location for its restaurants to its mark – e.g., , , . It is therefore beyond question that the Domain Names are confusingly similar to the Complainant's mark.
The Complainant has met its burden on this element of the Policy.
B. Rights or Legitimate Interests
There is nothing in the record to suggest that the Respondent has any rights or legitimate interests in the Domain Names. The Complainant has made a prima facie case in this respect as set out in Section 5 above. The Respondent has not filed a Response or otherwise attempted to rebut this showing.
The Complainant has met its burden on this element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds the Respondent's registration and use of the Domain Names in question are in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The mark TRADER VIC'S has long and extensive use associated with the Complainant, and is the subject of a long-standing federal registration relating to restaurant and bar services. It is reasonable to infer, given the allegations of the Complainant and the Respondent's silence, that the Respondent was aware of the Complainant's mark and plans to re-open a restaurant in Chicago when it registered and started use of the Domain Names. Based on the record presented, it further appears that the Domain Names was registered and used for the sole purpose of diverting users looking for the Complainant's website. Therefore, in the absence of evidence to the contrary, the Panel concludes the timing of Respondent's registration of the Domain Names and the Respondent's use of the Domain Names to misleadingly divert Internet users to its website for commercial gain constitutes bad faith registration and use in violation of the Policy.
The Complainant has met its burden on this element of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Sally M. Abel
Sole Panelist
Dated: August 28, 2008
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