Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is Hamburger Hamlets, Inc., a California corporation, having its principal place of business located at 18831 Von Karman, Irvine, California 92612, U.S.A.

The Respondent is Hallee Wachsmuth. As set forth in Respondent's December 18, 2000, e-mail to WIPO, Respondent's mailing address is P.O. Box 2417, Newport Beach, California 92659, U.S.A.

The domain name in dispute is as follows: portners.com. The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on March 29, 1999.

On November 10, 2000, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999, ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).

The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.

The instant Administrative Proceeding was commenced on November 23, 2000.

Respondent did not file a Response, and a "Notification of Respondent Default," dated December 15, 2000, was forwarded by WIPO to Respondent.

The decision of the Panel was due to WIPO on or before January 18, 2001.

Since 1981, Complainant has provided restaurant services under the mark PORTNER'S. Complainant is the owner of U.S. Trademark Registration No. 1,524,937 for the mark PORTNER'S. See Complaint, Annex D.

As noted above, Respondent registered the domain name in dispute with NSI on March 29, 1999. No goods or services are currently provided at Respondent's web site. Respondent's portners.com web site informs the public that, "Our Web site will be online soon. Thank you for your patience while we build our site." See Complaint Annex F.

On October 11, 2000, Complainant's representative attempted to contact Respondent by phone and by e-mail, using the telephone number and e-mail address provided by Respondent to NSI. The person who answered the phone was not Respondent and did not know of Respondent; the e-mail was returned as undeliverable.

Complainant contends that the domain name in issue is identical or confusingly similar to Complainant's registered mark PORTNER'S, in that the only difference is the apostrophe in the registered mark and the inclusion of ".com" in the domain name. It further argues that Respondent has no rights or legitimate interests in the domain names, as evidenced by the fact that: (1) Respondent does not operate a business or other organization under the disputed domain name; (2) Respondent does not own any trademark or related rights in the portners.com domain name; (3) Respondent is not making a legitimate noncommercial or fair use of the domain name; and (4) neither Respondent nor anyone associated with Respondent has been commonly known by the names PORTNERS or "portners.com".

In support of its contention that the domain name was registered and is being "used" in "bad faith," Complainant notes and argues that: (1) Respondent's web site does not advertise or offer any information, goods, or services; (2) Respondent was aware of Complainant's mark at the time Respondent registered the disputed domain name; (3) given the inherent distinctiveness of Complainant's PORTNER'S mark and Respondent's lack of noncommercial or fair use of the mark, Respondent's only or primary intention in registering the domain name was either to attempt to sell the domain name registration to Complainant or its competitors and/or to otherwise prevent Complainant from using the domain name as its proper right; and (4) Respondent provided false contact information to NSI.

The Panel has carefully weighed the evidence presented and determines that Complainant clearly has met the requirements set forth in ¶4.a. of the Policy.

There is no question that the domain name in dispute is confusingly similar to Complainant's PORTNER'S mark. As argued by Complainant, the fact that the domain name does not include the apostrophe that appears in Complainant's mark and the addition in the domain name of the top-level domain ".com" are without legal significance.

It is also clear that Complainant, through its long use of, and registration covering, the PORTNER'S mark, has rights in the mark.

There also is no evidence that Respondent has rights or legitimate interests with respect to the domain name.

Finally, the evidence supports a determination of "bad faith" registration and use. While none of the circumstances set forth in ¶4.b. of the Policy appears applicable, this panel, as others (see, for example, Chernow Communications v. Kimball, WIPO Case No. D2000-0119; Mondich and American Wine Biscuits, Inc. v. Brown, WIPO Case No. D2000-0004), concludes that Respondent's passive holding of the disputed domain name and the providing of false contact information to NSI are sufficient grounds upon which to establish the requisite "bad faith."

In view of the above, the Panel GRANTS Complainant's request for transfer to it of the domain name portners.com

Jeffrey M. Samuels
Sole Panelist