Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

Emeril Lagasse
COMPLAINANT,

vs.

VPOP Technologies
RESPONDENT.

PANEL DECISION
Forum File No: FA0003000094373

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PROCEDURAL FINDINGS

Domain Name: emeril.com
Domain Name Registrar: Tucows.com, Inc.
Date of Domain Name Registration: March 1, 2000
Date Administrative Proceedings Commenced: April 4, 2000
Date Response Due: April 24, 2000 (No Response Filed)

After reviewing the complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the complaint to the Respondent in compliance with Rule 2(a) and the administrative proceedings commenced pursuant to Rule 4(c). The Respondent did not submit a response.

THE COMPLAINT

The Complainant is a chef, restaunteur, TV personality and businessperson. He began using his name in association with various businesses on March 23, 1990. The names "Emeril" and "Emeril Lagasse" have developed a distinct meaning and refer to products and services offered by the Complainant. There is a substantial amount of goodwill in the names "Emeril" and "Emeril Lagasse" which had been developed through hard work, time, energy, and resources. The Complainant obtained trademarks, service marks, and copyrights to the name "Emeril" or "Emeril Lagasse." According to the record, Respondent registered the name emeril.com with Tucows.com, Inc., a domain name registrant. The domain name emeril.com is an identical or confusingly similar to trademarks and service marks and other intellectual property in which the Complainant had established rights. The Complainant contacted the Respondent and requested that the rights to the domain name be obtained for a reasonable sum that would compensate the Respondent for any out of pocket expense. The Respondent refused to take up this request.

Upon information and belief, it was maintained that Respondent had no legitimate use of the domain name, that Respondent sought to profit from its registration of the domain name by trading upon the goodwill associated with the marks and intellectual property owned by the Complainant. Upon further information and belief, it was maintained the Respondent engaged in a pattern of registering domain names that infringe upon other entities’ marks. Also on information and belief, it was maintained that the Respondent registered the domain name emeril.com primarily for the purpose of selling or otherwise transferring said domain name.

It was further maintained that the registrant had no product, service, trade or business associated with the name "Emeril" and that it could show no use or demonstrable preparation to use the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services prior to receiving notice of the complaint. The Complainant also maintained that the Respondent had not commonly been known by domain name prior to receiving notice of the complaint and that there was no making of a legitimate non-commercial or fair use of the domain name. The Complainant sought transfer of the domain name emeril.com to the Complainant.

DISCUSSION

In this case the panel was satisfied that the Forum took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of the proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Forum. Evidence in the form of Fed Ex receipts and Express mail receipts and confirmations of sending of e-mail establishes that Respondent was notified of the complaint and commencement of proceedings.

Paragraph 4(a) of the Policy established three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abuse of domain name registration, and to obtain relief. These elements are that (1) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect to the domain name; and (3) Respondent’s domain name has been registered and is being used in bad faith.

Because the Respondent has defaulted in providing a response to the complaint, the Panel is directed to decide the administrative proceeding on the basis of the complaint. (Rules, 5(e) and 14(a))

The Complainant is the holder of trademarks, service marks and copyrights that have been registered and include the names "Emeril" and "Emeril Lagasse".

The Complainant has met the burden of proof that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights and it has established the first of the three elements.

Other than the fact that it has registered emeril.com as a domain name, there was no evidence in the record that would indicate the Respondent had any rights or legitimate interests with respect to the domain name. If the registration of the domain name was sufficient to establish rights or legitimate interest for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no Complainant could succeed on a claim of abuse of registration. Construing the Policy so as to avoid an illogical result, the Panel concluded that mere registration does not establish rights or legitimate interest in the disputed domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy.

Respondent has furnished no evidence of any legitimate use or preparation to use the disputed domain name. There was no evidence in the record of this proceeding of any such legitimate use or preparation for use by the Respondent. It was therefore determined by the Panel that the Respondent had no rights or legitimate interests in the disputed domain name. Thus, the Complainant has established the second element necessary to prevail in its claim.

The Complainant has alleged that the Respondent registered the domain name emeril.com for the purpose of offering or selling it to the Complainant or its competitor for consideration in excess of Respondent’s out of pocket cost of registration. There was no evidence in the record of any offer by the Respondent to sell the disputed domain name to the Complainant or another party. According to the Complainant, an offer to buy the domain name did not receive a response from the Respondent.

It is alleged "upon information and belief" that the Respondent sought to profit from its registration of the domain name by trading upon the good will associated with the marks and other intellectual property of the Complainant and also that Respondent engaged in a pattern of registering domain names that infringe upon other entities’ marks. A statement or allegation "upon information and belief" standing alone is insufficient to support a finding. The Complainant had presented no evidence to suggest that the Respondent has attempted to use the domain name emeril.com to attract customers to its website or to another online location.

Since the Respondent did not answer to the complaint, it has presented no good faith rationale for the registration of the disputed domain name. Though a showing of legitimate use might well be possible, the Panel will not speculate as to what legitimate uses Respondent might have for the domain name that is substantially similar or identical to the Complainant’s trademark and service mark.

The Complainant’s own first and last names are the foundation of his trade and service mark. The names and marks are used in connection with Complainant’s businesses in providing products and services associated with his name and mark. The Respondent’s registration of emeril.com prevented Complainant from using his trademark in a corresponding domain name.

Complainant presented no evidence other than the allegation "upon information and belief" to the effect that the Respondent may have engaged in a pattern of conduct in regard to similar preclusive registrations. Respondent’s actions therefore do not fall within the express terms of paragraph 4(b)(ii) of the Policy. However, in this case the Panel determined that the Respondent’s registration of the domain name emeril.com which correspond to Complainant’s many established trade and service marks was an act of bad faith in respect to Complainant’s interest, in that such registration prevented the Complainant from using its mark in a corresponding domain name, even though no other preclusive registrations by the Respondent had been demonstrated.

The Complainant’s trademark has an exclusive connection to various commercial products and services and has limited potential utility, if any, apart from this association. The Complainant has gone to the time, energy, and expense to establish a trademark and service marks associated with his own name and personality as chef, writer and entertainer. It would stretch the imagination to conceive how the domain name emeril.com could be used by the Respondent in a manner that would not infringe on Complainant’s rights as a trademark holder. Further, the Respondent has made no showing that it might intend to use the mark for a legitimate purpose. It is therefore concluded that the Complainant established the third and final element necessary for a finding that the Respondent engaged in abusive domain name registration.

CONCLUSIONS

The undersigned certified that he has acted independently and has no none conflict of interest to serve as a Panelist in this proceeding. Having been duly selected in being neutral, the undersigned makes the following conclusions; (1) the domain name emeril.com registered by the Respondent, March 1, 2000, is nearly identical or confusingly similar to the mark in which the Complainant had rights; (2) the Respondent had no rights or legitimate interests in respect to the domain name: and (3) Respondent registered and used the domain name on bad faith.

ORDER

It is therefore ordered pursuant to Rule 4(i) that the domain name emeril.com registered with the Respondent be transferred to the Complainant.

Dated: May 8, 2000 James Alan Crary