Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Personal Chefs Network, Inc., Zebulon, NC, USA ("Complainant") represented by Wendy L. Perry, of Personal Chefs Network, Inc. The Respondent is American Personal Chef Association, San Diego, CA, USA ("Respondent") represented by Marion Wallace, of the American Personal Chef Association.

The domain name at issue is <personalchefnetwork.com>, registered with Tucows, Inc.

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Judge Ralph Yachnin as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on June 4, 2001; the Forum received a hard copy of the Complaint on June 4, 2001.

On June 5, 2001, Tucows. Inc. confirmed by e-mail to the Forum that the domain name <personalchefnetwork.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 June 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 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@personalchefnetwork.com by e-mail.

A timely response was received and determined to be complete on June 21, 2001.

On June 25, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

That the Respondent’s domain name is identical or confusingly similar to the Complainant’s Trademark/Service mark; the Respondent has no rights or legitimate interests in respect to the said domain name; and the Respondent has registered and is using the domain name in bad faith.

B. Respondent

That Complainant has no legal right to the servicemark as it has only submitted an application to the United States Patent and Trademark Office after the complaint was filed, and that office has registered no servicemark to it. Respondent had first use of the term personalchefnetwork. The stated missions of the two parties are dissimilar, and if there is confusion between the sites, it is as a result of the Complainant’s action.

Respondent admits that it makes commercial use of the domain name, but does not misleadingly divert consumers. Respondent also agrees that it has not been known by the domain name, but the words of the name have been used in the Respondent’s marketing materials and at other places.

The Complainant Personal Chefs Network, Inc. sells educational materials and provides Network membership and professional affiliation to those seeking to operate a personal chef service. It has submitted a Trademark/Sevicemark application to the United States Patent and Trademark Office; however, this was on June 5, 2001, one day after the complaint was filed. On the other hand, Complainant registered its domain name <personalchefsnetwork.com> on January 23, 2000 and Personal Chefs Network, Inc. was incorporated on February 29, 2000.

The Respondent was founded in 1995 to provide education through its sister organization the American Personal Chef Institute, which was created for those seeking to become personal chefs. On August 5, 2000 it registered the subject domain name <personalchefnetwork.com> with Domain Direct (aka Tucows, Inc.). Because the Complainant’s mark and the Respondent’s domain name are so similar (other than endings of "Inc." and " .com" it should be noted that if the domain name had the letter "s" it would be exactly the same as the Complainant’s mark.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

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.

The <personalchefnetwork.com> domain name is confusingly similar to Complainant’s PERSONAL CHEFS NETWORK trademark. See Universal City Studios, Inc. v. HarperStephens, D 2000-0716 (WIPO Sept 5, 2000) (finding that deleting the letter "s" from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark, and thus is confusingly similar to Complainant’s mark).

Although Complainant’s trademark application was not filed until June 5, 2001, and thus after the complaint in the matter was filed, the Complainant has been operating under the PERSONAL CHEFS NETWORK name since January 2000. 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"). The ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark ‘in which the complainant had rights’ means that ownership of a registered mark is not required. Unregistered or common law trademark or servicemark rights will suffice" to support a domain name complaint under the policy. (McCarthy on Trademarks and Unfair Competition, Sect. 25:74.2, Vol. 4 (2000)).

In addition, the domain name is so confusingly similar a reasonable Internet user would assume that the domain name is somehow affiliated with Complainant. See Treeforms, Inc. v. Cayne Indus Sales Corp., FA 95856 (Nat. Arb. Forum Dec 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between Complainant and the Respondent, when in fact, no such relationship would exist).

Therefore, the Panel concludes that Complainant has satisfied paragraph 4(a)(i) of the Policy.

Respondent registered the disputed domain name after the registration of Complainant’s <personalchefsnetwork.com> domain name. Respondent is not commonly known by the disputed domain name, as their homepage indicates that they are known as "American Personal Chef Institute." (See Gallup Inc. v. Amish Country Store, FA 96209 ( Nat. Arb. Forum Jan 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Therefore, the Panel concludes that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s Website by creating a likelihood of confusion with Complainant’s mark. See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent’s use of the domain name at issue to resolve is a website where similar services are offered to Internet users. It is likely to confuse the user into believing that Complainant is the source of, or is sponsoring the services at the site).

Further, the Respondent’s registration and use of the disputed domain name was done to disrupt the business of Complainant and is a registration and use in bad faith. See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with intent to disrupt Complainant’s business and create user confusion).

Therefore, the Panel concludes that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <personalchefnetwork.com> domain name be transferred from the Respondent to Complainant.