The Complainant is Nextbite Brands, LLC, United States of America (“United States”), represented by Novian & Novian LLP, United States.
The Respondent is Jon M. Register, United States, / Jon Register, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2021. On July 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 20, 2021. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2021. The Respondent had sent two emails on July 20, 2021 but no further communication was received by August 15, 2021. The Center informed the Parties of its commencement of Panel appointment on August 18, 2021. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 23, 2021. 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 owns United States Registered Trademark No. 6,030,397, NEXTBITE, which was registered on April 7, 2020, in respect of: (a) Business management consulting services in the field of online ordering, transportation and delivery in the delivery-only restaurant industry; Restaurant development, namely, providing business development consulting services for the conceptualization, franchising and branding of delivery-only restaurants in International Class 35; and (b) Consulting in the field of restaurant menu development in International Class 43. The trademark is registered in the Principal Register. The registration claims first use in commerce (in the United States) in August 2019. According to the WhoIs record, the disputed domain name was registered on November 24, 2020. The disputed domain name does not currently resolve to a website and it is not clear from the Complaint or the Respondent’s email communications whether it ever did. The second of the Respondent’s emails received by the Center on July 20, 2021, however, stated that the Respondent was contacting, or would contact, Google to update the registration address in some way. The address provided to the Registrar by the Respondent is “Fort Myers, United Kingdom”. There does not appear to be a “Fort Myers” in the United Kingdom. The postcode provided is for a non-residential area of Liverpool. There is, however, a Fort Myers in Florida in the United States. Also, a Jon M Register is the Managing Member of Ghostaurant LLC, both of Fort Myers in Florida in the United States and both having the same street number and street name as the address of the Respondent confirmed by the Registrar. Ghostaurant LLC appears to have been incorporated in February 2020. On February 21, 2021, it applied to register a trademark in the United States, Serial Number 90537885, VIRTUANT, in respect of food delivery services in International Class 39. It also has a website at “www.virtuant.com”, which resolves to a website headed “The Easiest Way to Open a Virtual Restaurant”. According to further information on the website, it provides “Chef-created delivery-only restaurant brands you can run out of your existing kitchen. Our delicious menus are easy to prepare and deliver what online customers are ordering”. In these circumstances, the Panel considers it is appropriate to proceed on the basis that the Respondent is in fact located in Florida in the United States and is the principal of Ghostaurant LLC. The Panel is reinforced in that conclusion by the text message referred to in Section 5C below. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it considers appropriate. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the registered trademark NEXTBITE identified in section 4 above. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademark. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.71 . In undertaking that comparison, it is permissible in the present circumstances to disregard the country code Top Level Domain (“ccTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. Disregarding the “.io” ccTLD, the disputed domain name consists solely of the Complainant’s registered trademark and the plain word “brands”. As this requirement under the Policy is essentially a standing requirement, the addition of such a term does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains clearly recognisable both visually and aurally within the disputed domain name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. As far as the record shows, the Respondent does not own any trademark rights from which the disputed domain name could be derived. Nor does the Respondent make any claims along these lines. The Complainant further contends that the Respondent registered the disputed domain name to redirect it to Ghostaurant’s “virtuant” business. According to the Complainant, therefore, the Respondent registered the disputed domain name to divert customers and potential customers from the Complainant’s business to the Respondent’s competing business. Having regard to the Respondent’s apparent involvement in Ghostaurant LLC and its “Virtuant” business, the Panel finds that the Complainant has established a clear prima facie case the Respondent does not have rights or a legitimate interest in the disputed domain name. The Respondent claims that he registered the disputed domain name for a new project in a different sector with the name “nextbite”. He also says that the disputed domain name does not in fact re-direct to a competitor site to the Complainant. The Respondent has not provided any information about the claimed new project. Nor has he provided any objective evidence to support the existence of such a project. Indeed, having regard to the text message referred to in Section 5C below, it does not seem very likely that any such plan existed at all. Accordingly, the Panel is not prepared to accept the Respondent’s claim as demonstrating prior use or preparations for a good faith offering of goods or services. See e.g. WIPO Overview 3.0, section 2.2. It is not clear to the Panel whether the Respondent’s second point is that the disputed domain name has not resolved to any website or that the business being promoted at the website did not compete with the Complainant’s business. Neither assists the Respondent in the present case. First, for the reasons already noted, the Panel is unable to accept the Respondent’s claim that he registered the disputed domain name for some new project in a different sector. In addition, the question under this requirement is whether or not the Respondent has a right or legitimate interest in the disputed domain name not whether the Respondent has in fact used the disputed domain name. Secondly, even if the “virtuant” business is not on all fours with the service provided by the Complainant, the two are so similar that someone looking for the Complainant’s business could very well mistake the “virtuant” business for the Complainant’s. Given the failure of the Respondent’s claimed purpose in registering the disputed domain name, therefore, the Complainant’s prima facie case that the Respondent has no rights or legitimate interests stands unrebutted. Accordingly, the Complainant has established the second requirement under the Policy. C. Registered or Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been registered or used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered or is being used in bad faith requires an inference to be drawn that the respondent in question has registered or is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. As already noted, the Complainant contends that the Respondent registered the disputed domain name to divert potential customers from the Complainant to the Respondent’s Ghostaurant LLC business. The expression “next bite” can be wholly descriptive in some contexts. For example, “before I take my next bite from my sandwich, I shall just get a drink”. In the context of both the Complainant’s and the Respondent’s services, however, the term is not directly descriptive. In particular, the Panel does not think the expression is a plain description of the Respondent’s services. On the other hand, in Annex C to the Complaint, the Complainant has provided a text message from a Jon Register to the Complainant’s CEO which lists a number of “nextbite” domain names - “Virtuant - Virtual Restaurants I Virtual Restaurant Brands Virtuant helps restaurants & commercial kitchens generate additional revenue with virtual restaurant brands.” At the very least, this shows an awareness of the Complainant and its trademark. Further, the text message conveys the implied threat that the Respondent would use the disputed domain name and the other identified names in connection with the rival “virtuant” business. The Panel considers that constitutes use in bad faith in the absence of any right or legitimate interest in the disputed domain name. Moreover, as the Complainant contends, it demonstrates a pattern of conduct constituting registration and use in bad faith. See paragraph 4(b)(ii) of the Policy. A further indicator of bad faith is the Respondent’s provision of an address falsely claimed to be in the United Kingdom. In all the circumstances, therefore, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith. Accordingly, the Complainant has established all three requirements under the Policy. 6. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, Warwick A. Rothnie 1 Noting the similarities between the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) and the Policy, the Panel has referred to prior UDRP cases and the WIPO Overview 3.0, where appropriate.
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
Sole Panelist
Date: September 6, 2021
Full & Egal Universal Law Academy