Generic Top Level Domain Name (gTLD) Decisions

Complainant is Ambisco, Inc., Somerville, MA, USA ("Complainant") represented by James J. Foster, of Wolf, Greenfield & Sacks PC. Respondent is Tradeware Corporation, Salt Lake City, UT, USA ("Respondent").

The domain name at issue is <redbones.com> registered with Network Solutions.

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

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 7, 2001; the Forum received a hard copy of the Complaint on March 13, 2001.

On March 12, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <redbones.com> is 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 5.0 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 March 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 3, 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@redbones.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.

On April 12, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.

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.

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

A. Complainant

The domain name <redbones.com> is substantially identical to the REDBONES trademark owned by Complainant.

Respondent has no interest or legitimate interest in the domain name. The current name for Respondent’s restaurant is The Sugarhouse Barbecue Company, Inc. and it does not currently sell any goods under any version of "REDBONES."

Before moving to Utah approximately four years ago, Respondent lived in Maine. Respondent had meetings with a consultant firm in the restaurant and hospitality industry in which Respondent stated that he would open a restaurant in Utah and that he would call it "Redbones." Respondent was told by the consultant that, although "Redbones" was the best name in barbecue, it was already being used by Complainant’s restaurant in Somerville, Massachusetts. Respondent replied that he thought he could use it because his restaurant was a considerable distance from Massachusetts.

Respondent then opened a restaurant at the above address in Salt Lake City and operated it as Redbones Restaurant. After learning that REDBONES had been registered by Complainant with the United States Patent & Trademark Office, Respondent changed the name of his restaurant in 1999 to The Sugarhouse Barbeque Company.

Because Respondent had known of the prominence of the Massachusetts Redbones restaurant before establishing his Utah restaurant and because Respondent had expressed an intention to trade off the good will of the Complainant, the decision to name his restaurant Redbones and to register a domain name identical to the name of the Complainant was clear evidence of bad faith.

B. Respondent

Respondent did not submit a Response to this matter.

REDBONES is a registered trademark of Complainant. The mark was registered for "restaurant services" with the United States Patent and Trademark Office on December 6, 1988 as Registration No. 1,516,033, on an application filed April 18, 1988.

Complainant operates a restaurant in Somerville, Massachusetts named Redbones. That restaurant has operated under that name since 1987 and has become prominently known as a leading barbecue restaurant in New England.

Complainant’s trademark REDBONES is in full force and there have been no challenges to that registration or to Complainant’s right to use that mark. The trademark has been used in the Somerville, Massachusetts area since 1987 and the trademark is widely known in the restaurant business and among the public.

On September 17, 1996, Respondent registered the domain name <redbones.com>.

The <redbones.com> domain name is now a portal to Respondent’s <sugarhousebbq.com> web site, which advertises restaurant services in Utah substantially identical to those provided by Complainant in Massachusetts.

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.

The domain name <redbones.com> is identical to Complainant’s REDBONES service mark. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

Therefore, the domain name <redbones.com> is identical and confusingly similar to the Complainant’s mark, and Complainant has met their burden set forth under Policy 4(a)(i).

Because Complainant federally registered the REDBONES mark for restaurant services many years prior to Respondent’s use of the term, Respondent has not achieved any rights or legitimate interests in the domain name. Respondent holds no license, permission or authorization to use the domain name, and because Respondent did not rebut Complainant’s allegations, Complainant has successfully alleged that Respondent had prior knowledge of Complainant’s service mark and services. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint"). Therefore, Respondent has not used the domain name in connection with a bona fide offering of goods, nor has Respondent made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Respondent traded off the goodwill of Complainant’s mark and could not fairly be commonly known by the name "redbones" or by the domain name <redbones.com>. In fact, the records show that Respondent has changed the name of the restaurant to The Sugarhouse Barbeque Company. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from Complainant to use the trademarked name).

Therefore, the Panel determines that Complainant has established their burden set forth under Policy 4(a)(ii).

Registering a domain name with actual notice of Complainant’s business, which offers similar goods and services, shows bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

Respondent’s use of the domain name to promote products and services confusingly similar to Complainant’s business is evidence of bad faith. See Gorstew Ltd. & Unique Vacations, Inc. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (finding bad faith exists when Respondent uses Complainant’s trademark in the domain name, thereby creating the inference that the web site and products listed thereon emanate from Complainant).

Therefore, the Panel concludes that the elements of Policy 4(a)(iii) have been satisfied.

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

Accordingly, it is Ordered that the domain name <redbones.com> be transferred from Respondent to Complainant.