DECISION

Club Gene & Georgetti v. Gulf South Limited

Claim Number: FA0208000123925

PARTIES

Complainant is Club Gene & Georgetti, Chicago, IL (“Complainant”) represented by Timothy T. Patula, of Patula & Associates, P.C.  Respondent is Gulf South Limited, Roswell, GA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <geneandgeorgetti.com>, registered with Stargate Communications, Inc.

PANEL

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

G. Gervaise Davis III, Esq., as single Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 29, 2002; the Forum received a hard copy of the Complaint on September 3, 2002.

On September 3, 2002, Stargate Communications, Inc. confirmed by e-mail to the Forum that the domain name <geneandgeorgetti.com> is registered with Stargate Communications, Inc. and that the Respondent is the current registrant of the name.  Stargate Communications, Inc. has verified that Respondent is bound by the Stargate Communications, 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 September 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 24, 2002 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@geneandgeorgetti.com by e-mail.

A timely Response was received and determined to be complete on September 24, 2002.

On October 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed G. Gervaise Davis III, Esq., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

(1) Disputed Domain Name is Identical to Complainant’s Federal Trademarks.

The disputed domain name registered by Respondent, <geneandgeorgetti.com> is identical to the business name used by Complainant, Gene & Georgetti, for more than sixty years.  The disputed domain name is identical to Complainant’s federally registered trademarks, GENE & GEORGETTI and CLUB GENE AND GEORGETTI, Reg. Nos. 1,950,503 and 1,948,304, respectively.  Further, the disputed domain name is confusingly similar to Complainant’s federally registered trademark “GEORGETTI,” Reg. No. 1,992,410.  Respondent’s unauthorized use of Complainant’s federally registered trademarks in its domain name erroneously leads Complainant’s customers to believe that the domain name is somehow associated with Complainant.

(2) Respondent Has No Rights or Legitimate Interest in Disputed Domain Name.

Respondent has no rights or legitimate interests with respect to the disputed domain name.  Complainant has used the business name Gene & Georgetti since 1941, and owns federal trademark registrations for GENE & GEORGETTI, GEORGETTI, and CLUB GENE AND GEORGETTI, Reg. Nos. 1,950,503, 1,992,410, and 1,948,304, respectively.  Respondent has never been licensed or authorized in any other way to use any one of Complainant’s federally registered marks. 

Respondent is not commonly known by the domain name and cannot claim that it is making a noncommercial or fair use of the domain name.  Complainant has located no evidence that Respondent offers or intends to offer any bona fide goods or services under the disputed domain name.

Respondent registered the domain name on January 26, 1999.  In the three years since Respondent registered the disputed domain name, Respondent has made no demonstrative attempt or preparation to use it.  Furthermore, the disputed domain name is not connected to any web or mail servers and is not used with any active site.

Not only does Respondent not currently have rights or a legitimate interest in the disputed domain name, it can never obtain such rights or interest.  Complainant has been using the mark GENE & GEORGETTI for more than sixty years.  Through Complainant’s continuous and exclusive use of this and related marks, the mark has obtained secondary meaning, not only in the United States, but also throughout the world.  Therefore, Complainant would oppose any attempt by Respondent to use the disputed domain name and would claim service mark infringement and dilution.

 (3)       Disputed Domain Name Was Registered and Is Being Used in Bad Faith.

Respondent’s bad faith is evidenced by the fact that it has a pattern of registering domain names that are identical or confusingly similar to famous marks.  In fact, Complainant has located three domain name dispute complaints, filed by three separate complainants, involving Respondent: (1) Toyota Motor Sales, U.S.A. Inc., et al v. Gulf South Ltd., D2001-0698 (WIPO July 25, 2001);  (2) Emory Healthcare, Inc. v. Gulf South Ltd., FA 94892 (Nat. Arb. Forum July 5, 2000);  (3) Ford’s Fancy Fruits, Inc. v. Gulf South Ltd., FA 95898 (Nat. Arb. Forum Dec. 14, 2000).  These previous complaints, to which Respondent failed to reply and which resulted in the domain names being transferred to complainants, demonstrate a pattern of bad faith conduct by Respondent.  Copies of the decisions in the above-cited complaints were attached to the Complaint herein.

The significant goodwill and value of Complainant’s marks are undoubtedly what prompted Respondent’s registration of the disputed domain name.  Use of Complainant’s business name and trademarks by any other person would suggest purposeful registration to infringe upon Complainant’s marks.  Respondent registered the domain name in order to prevent Complainant from registering it.  Respondent calculatedly registered a name that Complainant would need for its business.  As stated earlier, Respondent has an established pattern of conducting such bad faith activities.  Furthermore, Respondent’s use of the disputed domain name creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.

Respondent’s registration and use of the disputed domain name in bad faith is further evidenced by Respondent’s offering, when contacted by Complainant, to sell the disputed domain name <geneandgeorgetti.com> to Complainant for $5,000, a sum well in excess of the registration fee paid by Respondent for this domain name.

Finally, Respondent registered the disputed domain name more than three years ago and is not yet operating any web site in connection with it.  ICANN Panels have in the past found bad faith where a party has passively “warehoused” a domain name while fully aware the name contained another party’s trademark. See Toyota Motor Sales USA v. Hamid, D2001-0032 (WIPO March 28, 2001); see also ISL Mktg. AG and the Fed’n Internationale de Football Ass’n v. J.Y. Chung, Worldcup 2002.com, D2000-0034 (WIPO Apr. 3, 2000).

B. Respondent

Respondent operates a website <undergroundatlanta.com>. Undergroundatlanta.com is an information publication for the greater Atlanta metropolitan area including such diverse activities as dining, entertainment, special events, local attractions, and travel information.

Respondent intends to offer a free Internet directory for dining, travel, entertainment and special events which provides consumer information and allows consumers the opportunity to critique establishments as protected by the First Amendment of the U.S. Constitution.  Respondent has acquired many travel, entertainment and dining related domain names and in the future plans to link all domains to the directory.  The purpose is not for commercial gain.  The domain names will be used to link consumers and the general public to Respondent’s web site. The site’s contents will consist of constitutionally protected non-commercial materials used in the exercise of Respondent’s fundamental rights under the First Amendment of the U.S. Constitution.  In the case of Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (USDC C.D. Cal. 1998) (the Court found that criticism of the Bally fitness company did not infringe the company’s trademark because it amounted to non-commercial expression protected by the First Amendment of the U.S. Constitution, did not tarnish the underlying trademark and was unrelated to the goods and services involved) it was concluded that the Claimants web site consisted of non-commercial First Amendment protected materials.

Respondent registered the domain name <geneandgeorgetti.com> on January 26,1999.   Respondent has never attempted to create any likelihood of confusion with usage of the domain name.  Respondent has not disrupted the business of Complainant nor wrongfully attracted Internet users by creating confusion that Respondent’s website is actually the official website of Complainant.

Respondent plans to make a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent contends that the domain name <geneandgeorgetti.com> was registered in good faith. Respondent claims no intent to deceive Internet users, to cause confusion with Complainant’s website or mark, or to prevent Complainant from using its mark in a domain name.

Respondent contends that there is no evidence (1) that Respondent registered the domain name primarily for the purpose of transferring the domain name to Complainant (2) that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (3) that Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s web site by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

C. Additional Submissions

Complainant submitted a Supplemental Response which argues, among other things:

(1) Respondent’s pleading does not deny or even suggest that the domain name at issue is substantially identical to the registered marks of Complainant, which is tantamount to an admission of this element of Complainant’s case.

(2) Respondent’s alleged “undergroundatlanta” website is not an active website in that it goes nowhere at this time, merely stating what its eventual purpose is, without any links, and that in any event, a website relating to businesses in Atlanta, Georgia, has no relationship to Complainant’s business which is in Chicago, Illinois.

(3) Respondent’s argument that it is protected under the First Amendment is irrelevant and groundless because there is no speech on the site and what is there has nothing to do with the use of the trademark of Complainant or with Complainant’s business.

(4) The rest of Respondent’s denials of bad faith are unsubstantiated and erroneous in light of Respondent’s past record of registering the trademarks of other businesses without any reason or legitimate interest therein, and the fact that Respondent does not even attempt to defend its effort to sell the domain name to Complainant for a sum substantially in excess of its cost to Respondent.

There was no further Response from Respondent, which is appropriate since there is no contemplated Response expected.

FINDINGS

(1) The domain name in question is identical and confusingly similar to the registered trademark “Gene & Georgetti” and is substantially identical to the other two marks claimed by Complainant;

(2) The Respondent has presented no legally significant basis for any legitimate use of the name by it or nor established any rights in the trademarks or the name by Respondent; and,

(3) The Respondent registered and is using the domain name in bad faith, for the reasons expressed herein.

DISCUSSION

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.

Identical and/or Confusingly Similar

As noted by Complainant in its Supplemental Response, even Respondent does not claim that the domain name is not identical and confusingly similar to Complainant’s registered marks.  The domain name and the mark “Gene & Georgetti” are identical except for the ampersand (in lieu of the word “and”) and the “.com” extension, both of which are ignored for purposes of all domain name cases. Under the circumstances it is also confusingly similar since it does not lead anywhere except a black home page with scrolls and the name with no further information, and it thus prevents customers from arriving at the expected business of the owner of the mark.

Thus, Complainant satisfies Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel agrees with Complainant that Respondent’s argument that it owns and operates a website under the domain name <undergroundatlanta.com> does not provide any conceivable basis for its claim that it has a legitimate claim or right to use of the registered mark as a domain name.  Simply stated, Respondent provides no rational basis for its registration or its claim to a right to use the trademarked name.  This mark is not its name, it has no claim to use of the name, and it does not need to have a domain name with this mark in it in order to refer to the business of Complainant.

Assuming, arguendo, that the website in question were operative and even that there were a Gene & Georgetti Club or restaurant in Atlanta, the mere desire of the website operator to list and comment on facilities and businesses in that City does not give such website operator the right to appropriate registered marks as domain names.  This is a specious argument,  because registration of a mark as a domain name is not necessary in this case to refer to the business.  The website could, within the First Amendment rights of the operator, refer to the business on the webpage and provide phone numbers, addresses and favorable or adverse commentary about the business, all without objection from the trademark owner.  Federal courts have consistently held that this right to use a reference to a trademarked business is available, since there is often no other practical means of referring to a business except to use its trademarked name.  See, e.g., New Kids on the Block v. News Am. Publ’g Inc. [1992] USCA9 2148; 971 F 2d 302 (9th Cir. 1992).  However, as other UDRP Panels have held, this “fair use” right does not extend to use of a trademark as a domain name where there is no reason for its use other than to prevent the use of it by the owner or where it has been registered to sell the domain name registration.  See, Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, D2000-0869 (WIPO 2000 UDRP LEXIS 656) (one of many such cases).

Based on this logic, Complainant has also met the second requirement to prevail here.

Registration and Use in Bad Faith

Finally, Complainant’s allegations of bad faith registration and use appear to be substantiated both because of the facts, and the fact that Respondent offers no reason for its registration or use of the domain name beyond that rejected above.  The fact that Respondent fails to comment on, or explain, its offer to sell the domain name to the trademark owner for $5,000 would suggest that Respondent, itself, recognizes that this step is fatal to its case under existing UDRP case law.  Respondent’s offer to sell, under these circumstances, is clear evidence that Respondent initially registered the domain name with an intent to sell its rights to the trademark owner and to prevent its use by the logical person or business who would have a right to use it.  While we do not agree with Complainant that merely registering generic or common word domain names to “warehouse” them for later sale is in and of itself improper under the UDRP, it is clear beyond the need for citation of cases that registering unique trademarks as domain names and then offering them for sale to the trademark owner is, in fact, cause under the UDRP for transfer of the name to the trademark owner.  Several of the cases cited by Complainant involved such facts.

Furthermore, where as here Respondent has already been the subject of previous domain name cases, which found improper registration and use of the domain names in question, there is further justification for a finding of bad faith registration and use of the instant domain name.  This is evidence of trafficking in domain names for the purpose of sale and is part of the pattern of the classical cybersquatter.  As this Panel has pointed out in previous decisions, the principal purpose of the UDRP is to provide a simple and cost effective means of preventing “abusive” registrations of trademarks as domain names.  This case is, in the judgment of the Panel, exactly that.

DECISION

Complainant, having established its case on all three points, is entitled to have the domain name <geneandgeorgetti.com> transferred to it, and it is ordered that Stargate Communications, Inc. as the Registrar effect the TRANSFER as provided in the UDRP and under its own supplemental rules.

G. Gervaise Davis III, Esq., Panelist
Dated: October 18, 2002

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