M&T
Quality Restaurant Supply v UPI, Inc.
Claim Number: FA0008000095475
PARTIES
The Complainant is M&T Quality Restaurant Supply, Los Angeles, CA, USA ("Complainant"). The Respondent is UPI, Inc., Commerce, CA, USA ("Respondent").
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is "chefsdepot.net" registered with Register.com.
PANELIST
The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.
Hon. James A. Carmody, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on August 23, 2000; The Forum received a hard copy of the Complaint on August 23, 2000.
On August 25, 2000, Register.com confirmed by e-mail to the Forum that the domain name "chefsdepot.net" is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On August 28, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 18, 2000 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@chefsdepot.net by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On September 22, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant asserts the following:
1) The domain name, “chefsdepot.net” is identical to Complainant’s mark, in which the Complainant has trademark and trade name rights.
2) The Respondent has no rights or legitimate interest in the domain name “chefsdepot.net.” The Respondent has no prior business name or trade name that is anything like “Chef’s Depot.”
3) The Respondent registered the domain name in bad faith in order to prevent the Complainant from reflecting the mark in a corresponding domain name, or in order to disrupt Complainant’s business, or in order to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that person’s web site or location.
B. Respondent
The Respondent submitted no response in this matter. Because Respondent has failed to submit a response, based on the Policy, the Panel accepts as true all reasonable allegations of fact set for the Complaint. ICANN Rule 14(b).
FINDINGS
Complainant operates a store offering restaurant equipment and supplies at wholesale and also at retail to the general public. The Complainant’s brick-and-mortar store is located in Los Angeles, California. Complainant is organized under the laws of California, and is currently doing business under the name “Chef’s Depot,” for which it filed a Fictitious Business Name Statement in August 1999. Complainant uses the “Chef’s Depot” mark in yellow pages, catalog, mail, print and television advertisements.
Respondent registered the domain name “chefsdepot.net” on December 10, 1999.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“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.
Identical and/or
Confusingly Similar
The domain name “chefsdepot.net” incorporates entirely, the name under which Complainant is currently doing business. Complainant submitted evidence that it has established common law rights in the name “Chef’s Depot,” through use of the mark in commerce. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the Complainant have rights in a registered trademark and that it is sufficient to show common law rights).
Therefore, the Complainant has shown both that “[the] domain name is identical or confusingly similar to a trademark or service mark…” and that the trademark or service mark is one “in which the complainant has rights.” See ICANN Policy ¶ 4(a)(i)
Rights or
Legitimate Interests
The Respondent asserts no rights or legitimate interest in the domain name in question. The failure of Respondent to produce evidence sufficient to rebut Complainant’s allegations entitles the Panel to conclude that Respondent has no such rights or legitimate interests with respect to the domain name at issue. See Parfumes Christian Dior v. QTR Corp., No. D2000-0023 (WIPO Mar. 9, 2000).
Registration and
Use in Bad Faith
The Complainant’s
Fictitious Business Name Statement was filed over 3 months before Respondent
registered the domain name at issue. Complainant submitted a declaration
alleging that the Respondent, UPI Inc. is also a wholesale supplier. This panel
finds that, based on Complainant’s complaint, supplemental evidence, and
supporting declaration, that Respondent
registered the domain name “chefsdepot.net”
in bad faith. Specifically, under ICANN Policy 4(b)(iii), Respondent registered
the domain name primarily for the purpose of disrupting the business of a
competitor. See EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from the Complainant's marks
suggests that the Respondent, the Complainant’s competitor, registered the
names primarily for the purpose of disrupting the Complainant's business). See also Franpin SA v. Paint Tools S.L., D2000-0052
(WIPO May 25, 2000) (also finding bad faith where the Respondent, a company
financially linked to the Complainant’s main competitor, registered and used
the domain name in question to disrupt the Complainant’s business). The Panel further notes that both the
Complainant and Respondent list addresses in Southern California. It is a reasonable assumption that
advertising efforts documented by the Complainant may have come to the
attention of Respondent prior to registration of the domain name at issue,
additionally suggesting Respondent’s bad faith.
DECISION
Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.
Accordingly, for all of the forgoing reasons, it is ordered that the domain name “chefsdepot.net” be transferred from the Respondent to the Complainant.
Hon. James A.
Carmody, Panelist
Dated: September 27, 2000
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