Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Rock Bottom Restaurants, a Colorado corporation located in Denver, Colorado, United States of America (USA).

Respondent is Duane Reade Inc., a corporation located in New York, USA.

The domain names at issue are <rockbottomrestaurant.com> and <rockbottomrestaurants.com>.

The registrar is Network Solutions, Inc., located in Herndon, Virginia, USA.

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

The complaint was submitted on August 11, 2000. The response was submitted on October 1, 2000. Mark V.B. Partridge was appointed as single panelist on November 8, 2000.

Complainant operates restaurants and breweries in various parts of the country under the name ROCK BOTTOM, ROCK BOTTOM BREWERY, ROCK BOTTOM RESTAURANT and ROCK BOTTOM RESTAURANT BREWERY. Complainant is the owner of two federal registrations for its marks, the earliest being Reg. No. 1,8511,179 for ROCK BOTTOM BREWERY issued August 23, 1994, with an effective date of January 26, 1993, claiming first use on November 30, 1991. Complainant also has pending applications for versions of its name that include the word "restaurant," but it claims no exclusive right in that word apart from the mark as a whole.

Respondent is the largest drug store chain in New York. It appears that respondent’s predecessor in interest, Rock Bottom Stores, Inc., adopted the mark ROCK BOTTOM for retail drug store services in 1978. Rock Bottom obtained a federal registration for the mark, Reg. No. 1,500,884, dated August 16, 1988, several years prior to Complainant’s first use of its mark. In 1998, Respondent acquired the operating assets of Rock Bottom Stores, Inc., including 38 ROCK BOTTOM stores. Respondent registered the disputed domain names on April 29, 1999.

On September 30, 1999, Complainant wrote Respondent to express concern over the registration of the disputed domain names. So after, Respondent’s CEO contacted Complainant’s legal department to discuss the matter. The parties discussed the possibility of exchanging Complainant’s registration of <rockbottom.com> for Respondent’s registration of the disputed domain names. On October 12, 1999, Complainant wrote Respondent stating it was not disposed to make the exchange. On October 18, 1999, Respondent replied stating, in part:

"[Let me] remind you the Rock Bottom Stores Inc. has been selling not only pharmacy products but general merchandise, grocery, convenience and ready to eat foods for over forty years. Accordingly, we hold the rockbottomrestaurant.com domain as very much a property which we own and intend to enjoy the fruits of."

Complainant respondent through counsel alleging that the offering of restaurant services under the ROCK BOTTOM mark would infringe upon the long standing trademark rights of Rock Bottom Restaurants, Inc. Complainant renewed its request that Respondent voluntarily relinquish the domain name.

Complainant contends that Respondent has no right or legitimate interest in the disputed domain names. It also contends Respondent has registered and used the domain names in bad faith because it intends to sell them for profit and seeks to injure Complainant by preventing it from having a domain name that corresponds to its company name. As further evidence of bad faith, Complainant notes that Respondent has not registered domain names such as <rockbottomstores.com> that more closely resemble its alleged name.

Respondent contends that it has a legitimate interest in the ROCK BOTTOM name and has registered the disputed domain names in good faith and has not used them in any bad faith manner.

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interest in the domain name; and

(iii) that the domain name has been registered and used in bad faith.

The disputed domain names are identical or confusingly similar to Complainant’s registered marks and company name. Complainant’s rights are prior to the registration of the disputed domain names. Therefore, I find that Complainant has satisfied the requirements of Paragraph 4(a)(i).

B. Respondent’s Legitimate Interest in Domain Names.

Here, Respondent has submitted no evidence of any demonstrable plan to use the domain name in connection with a bona fide offering of goods or services. Further, it is admitted that Respondent has made no bona fide commercial, non-commercial or fair use of the disputed domain names. Nevertheless, it does appear that Respondent’s predecessor in interest was commonly known by the ROCK BOTTOM name long before the advent of this dispute and was the owner of registrations for that name that predate Complainant’s rights. See Credit Management Solutions v. Collex Resource Management, D2000-0029 (WIPO March 17, 2000); Avnet v. Aviation Network, Inc., D2000-0046 (WIPO March 24, 2000)(finding prior legitimate interests)

The evidence on Respondent’s rights as successor in interest is not clear. There is no evidence that Respondent acquired the trademark rights. However, there is evidence in the form of a news article indicating that Respondent acquired the business associated with the ROCK BOTTOM mark, including 38 operating stores. It is regrettable that Respondent did not make a better showing on this point. Nevertheless, its prior interest in the ROCK BOTTOM mark does not appear to be disputed.

Accepting that Respondent has a legitimate interest in the ROCK BOTTOM mark, the question is whether that is sufficient to create a legitimate interest in the disputed domain names. Respondent claims "the potential exists" for Respondent to expand into the food service business and cites evidence Kmart’s expansion into "K Cafes" as an example of such expansion in the industry. Again it is regrettable that Respondent did not present any specific evidence of its intent when it registered the disputed domains names. All we have in evidence, is the rather ambiguous statement of its CEO quoted above.

It seems plausible that Respondent did contemplate an expansion into the restaurant field. Indeed, many drug stores in the United States operate restaurants within their facilities. It also seems plausible that Respondent had no such plan and instead registered the disputed domain names as a bargaining chip to obtain the <rockbottom.com> registration held by Complainant. The evidence is not clear on either point. What does seem clear is that Respondent had a legitimate prior interest in the ROCK BOTTOM name based on its acquisition of Rock Bottom Stores. The addition of the generic "restaurant" can be explained, as Respondent alleges, by the potential for Respondent to build on the legitimate interest and expand into restaurant services.

Based on the record before, I find that Complainant has failed to show by a preponderance of the evidence that Respondent lacks any legitimate interest in the disputed domain names as required under Paragraph 4(a)(ii).

I also find that Complainant has failed to show bad faith registration and use under Paragraph 4(a)(iii). I find no evidence that Respondent registered the domain names with the intent of selling them for profit. Respondent has not engaged in a pattern of conduct to prevent the owners of trademarks from obtaining matching domain names. Further, since the disputed domain names are not in use, there is no evidence that Respondent is intentionally attempting to divert Internet users to its web site based on confusion with Complainant’s mark.

I do have concern about the potential that Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of Complainant. That could be the case under the facts presented if Respondent had no legitimate prior interest in the ROCK BOTTOM name. See e.g. Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., [2000] USCA2 33; 202 F.3d 489 (2d. Cir. 2000)(finding competitor’s registration of domain name matching plaintiff’s mark to be a violation of the Anti-Cybersquatting Act). Here, however, Respondent suggests that it registered the disputed domain names primarily with the intent of using its existing rights in ROCK BOTTOM to expand in food services as others in the industry have done. There seems to be insufficient evidence to the contrary to rebut that conclusion.

In closing, I note that the intended scope of these proceedings is limited to the question of abusive domain name registration. Drew Bernstein and Kill City v. Action Advertising, Inc., D2000-0706 (WIPO September 28, 2000)(citing authority regarding limited scope of ICANN UDRP proceedings). Whether expansion by Respondent might infringe Complainant’s rights in restaurant services is beyond the scope of this proceeding and is an issue that may be addressed in the Courts. See Credit Management Solutions, supra; Adaptive Molecular Technologies, Inc. v. Pricilla Woodward & Charles R. Thornton, D2000-0006 (WIPO February 28, 2000).

I conclude that Complainant has failed to prove Respondent lacks any right or legitimate interest in the disputed domain names or that Respondent registered and used the disputed domain names in bad faith. Accordingly, I find in favor of Respondent, and deny Complainant’s prayer for transfer of disputed domain names.

Mark V B Partridge
Sole Panelist