DECISION

CKM Investment Group, LLC. d/b/a Ole Madrid & Onyx Room, LLC. v Dushan Mitrovich

Claim Number: FA0105000097301

PARTIES

Complainant is CKM Investment Group, LLC. d/b/a Ole Madrid & Onyx Room, LLC, San Diego, CA, USA (“Complainant”) represented by Stephen G. Cline.  Respondent is Dushan Mitrovich, San Diego, CA, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain names at issue are <olemadrid.com> and <onyxroom.com> registered with Network Solutions.

PANEL

On June 20, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.The undersigned certifies that he has acted independently and impartially and to the best of hir knowledge, has no known conflict in serving as Panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 21, 2001; the Forum received a hard copy of the Complaint on May 21, 2001.

On May 23, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names <olemadrid.com> and <onyxroom.com> are registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 12, 2001 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@olemadrid.com and postmaster@onyxroom.com 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.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant’s Ole Madrid Café is located at 755 Fifth Avenue in the historic San Diego Gaslamp District in San Diego, California.  It is a large three level restaurant/nightclub housed in two huge historic theatre buildings.  It initially opened at this location in roughly 1991 and has since remained an anchor attraction for the San Diego Gaslamp District with popular Spanish Mediterranean cuisine, a three level nightclub with four large bars, and two dance areas that play a variety of music.  Complainant purchased the business in April of 1999 and by August of 1999, was sharing management staff with The Onyx Room.

2. Complainant’s The Onyx Room is located at 852 Fifth Avenue (roughly a block away from Complainant’s Ole Madrid Café) in the historic San Diego Gaslamp District in San Diego, California.  It is a large lounge/nightclub that was opened August 28, 1999.  The Onyx Room derives its name from both the fact that it is located in the basement of the Onyx Business Center (multi-floor office complex) and its interior décor that includes actual Onyx stone inlays over the entire main bar area.  Initially when it was opened, The Onyx Room shared management staff with Ole Madrid.  By the end of 1999, The Onyx Room had become a very popular attraction in the San Diego Gaslamp District that drew thousands of patrons each week.

3. The <olemadrid.com> and <onyxroom.com> domain names are identical and/or confusingly similar to Complainant’s marks.

4. Respondent has no rights or legitimate interests in the <olemadrid.com> and <onyxroom.com> domain names.

5. Respondent registered and used the <olemadrid.com> and <onyxroom.com> domain names in bad faith.

B. Respondent

No response was received from Respondent.

FINDINGS

1. Respondent is a resident of San Diego per his Network Solutions domain name registration information.  On November 5, 1999, Respondent registered the domain name <onyxroom.com> with Network Solutions.  On that same date, Respondent also registered the domain name <olemadrid.com> with Network Solutions.  As of December 10, 1999 both domain names depicted “under construction” notification when the sites were accessed. 

2. On January 6, 2000, a letter was mailed regarding both domain names by Complainant to Respondent and also transmitted to the email address shown on the domain name registrations.  On January 15, 2000, Respondent replied to Complainant’s letter and suggested that although he was working on setting up an “e-commerce based jewelry wholesale website as well anchoring a Latin shopping mall in Europe for novelty T-shirts”, he would consider selling both domain names for an unspecified price.

3. On or about January 17, 2000, Complainant again emailed Respondent regarding the domain names and requested a specific price for their transfer to Complainant.  On January 18, 2000, Respondent replied via email that he would transfer the two domain names for “$6250.00 by January 24 or $6750.00 thereafter.”  On January 25, 2000, Respondent again emailed Complainant seeking confirmation of receipt of his price for the domain names and notification of the fact that his deadline for the lower price had expired and he would only accept the higher price of $6750.00.  Complainant responded via email that it would not pay that price and would, instead, seek legal action to recover the domain names.

4. As of March 8, 2000, both domain names remained “under construction” when accessed.  During the period between March of 2000 and April 1, 2001, Complainant has been repeatedly approached at both businesses by persons representing that they were authorized by the holder of both the disputed domain names to inquire about whether Complainants were interested in purchasing the rights to those domain names.

5. As of April 2, 2001, both of the disputed domain names reveal the same status of “under construction” that has gone unchanged since registration by Respondent in November of 1999. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the 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

Due to the popularity of Complainant’s restaurants in the San Diego area, the Panel finds that Complainants have acquired common law marks in the terms OLE MADRID and ONYX ROOM.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).  Thus, Respondent’s domain names are identical to marks in which Complainant has rights.  See Steamboat Chamber Resort Ass’n Inc. v. Mooney, FA 96662 (Nat. Arb. Forum Mar. 30, 2001) (finding that Respondent’s domain name <steamboatchamber.com> is identical to Complainant’s STEAMBOAT-CHAMBER common law mark); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the complaint in the first place).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to develop a website for either of the domain names.  Therefore, the Panel concludes that Respondent has not used the domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or made a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the disputed domain names.  Therefore the Panel finds that Respondent is not commonly known by the disputed domain names, pursuant to the Policy ¶ 4(c)(ii).  See Systima Ltd. v. Byrne, D2001-0300 (WIPO Apr. 23, 2001) (finding “[t]here is no indication from the evidence before this Administrative Panel that the Respondent has ever been known by the said domain name so as to claim rights or a legitimate interest in accordance with Paragraph 4(c)(ii) of the Policy”).

The Panel finds that Policy ¶ 4(a)(ii) has been satisified.

Registration and Use in Bad Faith

Because Respondent has not developed an active website since registering the domain names in November of 1999, it is apparent that Respondent’s only true purpose for registering both domain names was, in fact, to sell them to Complainant for a considerable sum of money.  Respondent’s attempt to profit from Complainant’s common law mark is bad faith under Policy ¶ 4(b)(i).  See Corinthians Licenciamentos LTDA v. Sallen, D2000-0461 (WIPO July 17, 2000) (finding bad faith where Respondent’s claimed use for the domain name was “most likely an excuse for camouflaging the purpose of trafficking with the domain name”); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <olemadrid.com> and <onyxroom.com> domain names be transferred from Respondent to Complainant.

James P. Buchele, Panelist

Dated:  June 25, 2001

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