DECISION

Infusion Management Group d/b/a the Signature Room at the 95th v. Mike Lemonde d/b/a TCS Eugene d/b/a VNL, LLC

Claim Number: FA0210000126833

PARTIES

Complainant is Infusion Management Group d/b/a The Signature Room at the 95th, Chicago, IL (“Complainant”) represented by Melissa Masiello, of Bell, Boyd, & Lloyd LLC.  Respondent is TCS Eugene d/b/a VNL, Eugene, OR (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <thesignatureroom.com>, registered with eNom.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 2, 2002; the Forum received a hard copy of the Complaint on October 4, 2002.

On November 6, 2002, eNom confirmed by e-mail to the Forum that the domain name <thesignatureroom.com> is registered with eNom and that the Respondent is the current registrant of the name.  eNom has verified that Respondent is bound by the eNom 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 November 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 26, 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@thesignatureroom.com by e-mail.

A timely Response was received on November 26, 2002.

Complainant’s additional submission was received on December 2, 2002.  Respondent’s untimely additional submission was received on December 12, 2002.  Although Respondent’s additional submission was untimely, the Panel has considered it.

On November 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.  Respondent requests a finding that Complainant has engaged in reverse domain name hijacking.

PARTIES’ CONTENTIONS

A. Complainant

1.         Respondent’s <thesignatureroom.com> domain name is identical and confusingly similar to Complainant’s THE SIGNATURE ROOM marks.

2.         Respondent does not have any rights or legitimate interests in respect of the <thesignatureroom.com> domain name.

3. Respondent registered the <thesignatureroom.com> domain name in bad faith.

B. Respondent

Respondent, TCS Eugene d/b/a VNL, LLC, contends that the mark THE SIGNATURE ROOM is generic and that Complainant does not have exclusive rights in the mark.  Respondent contends that Complainant does not have registered or common law rights in THE SIGNATURE ROOM.  Respondent contends that it has a legitimate interest in the domain name as it intends on using the domain name to begin developing a marketplace for the exchange of collectable autographs.

C. Additional Submissions

Complainant objects to the Response because it was filed by a third party with some alleged interest in the domain name.  Complainant alleges that Respondent transferred the domain name after the initiation of these proceedings.  Respondent claims to have been unaware of these proceedings when the domain name was transferred.  Complainant’s objection is overruled.   

FINDINGS

Complainant, Infusion Management Group, Inc. d/b/a The Signature Room at the 95th ("The Signature Room") is an Illinois corporation having its principal place of business in Chicago, Illinois.  Complainant provides restaurant, bar and catering services as well as banquet facilities in the greater Chicago area under the marks THE SIGNATURE ROOM AT THE 95th, THE SIGNATURE ROOM and other related marks.  Most notably, Complainant owns and operates a restaurant called “The Signature Room at the 95th,” located on the 95th floor of the John Hancock Center, one of the most recognizable buildings in the world and one of the most-visited tourist attractions in Chicago, Illinois.

Complainant has continuously used the mark THE SIGNATURE ROOM since at least as early as 1993 for restaurant, bar and catering services, and providing facilities for banquets.  Complainant also owns a number of U.S. Trademark Registrations incorporating its THE SIGNATURE ROOM mark, namely: (1) U.S. Reg. No. 2,321,739 for THE SIGNATURE ROOM AT THE NINETY-FIFTH (and Design), for restaurant, bar and catering services, and providing facilities for banquets; (2) U.S. Reg. No. 2,326,353 for THE SIGNATURE ROOM AT THE 95TH, for restaurant, bar and catering services, and providing facilities for banquets; (3) U.S. Reg. No. 2,424,008 for THE SIGNATURE ROOM AT SEVEN BRIDGES, for providing banquet facilities for banquet services; and (4) U.S. Reg. No. 2,553,191 for THE SIGNATURE ROOM AT SEVEN BRIDGES A PLACE TO CELEBRATE LIFE! (and Design) for providing facilities for banquet services.

On July 18, 2002, Complainant filed a U.S. trademark application for THE SIGNATURE ROOM, Ser. No. 76/431,845, for restaurant, bar and catering services, and providing facilities for banquets.  

In 1993, Complainant opened its THE SIGNATURE ROOM AT THE 95TH restaurant and lounge on the 95th and 96th floors of John Hancock Center.  Since that time, Complainant’s restaurant has been most commonly known and referred to by the general public as “The Signature Room.”  The Signature Room has become a premiere destination attraction for many domestic and international visitors, and has come to be particularly well-known for its spectacular 360º view of the Chicago skyline, as well as its gourmet menu and exceptional service.

In 1999, Complainant opened a large banquet facility in Woodridge, Illinois, under the mark THE SIGNATURE ROOM AT SEVEN BRIDGES.  The Signature Room at Seven Bridges offers banquet facilities and services including receptions, sit-down dinners for up to 1,100 guests, audiovisual capabilities, flower and table settings, personalized menus, and entertainment.

At both The Signature Room at the 95th and The Signature Room at Seven Bridges, and via the Internet, Complainant offers for sale a variety of goods bearing Complainant’s THE SIGNATURE ROOM marks, including hats, shirts, pens and other souvenir items.

Respondent registered the domain name <thesignatureroom.com> on February 28, 2000.

Respondent has not acquired any trademark or service mark rights in the domain name <thesignatureroom.com>.  Respondent is not a licensee of Complainant’s THE SIGNATURE ROOM marks and is not otherwise authorized to use Complainant’s marks.

On May 13, 2002, Respondent offered to sell the disputed domain name registration to Complainant for $1000, and on August 23, 2002, offered to sell the disputed domain name registration to Complainant for $1000 and five $100 gift certificates to Complainant’s The Signature Room restaurant in the John Hancock Center.  Both of Respondent’s offers were for amounts in excess of Respondent's out-of-pocket costs directly related to the domain name. 

On May 13, 2002, Complainant’s legal counsel contacted Respondent’s agent Mike Lemonde by telephone, explained Complainant’s rights in <thesignatureroom.com> and demanded that Respondent transfer the domain name to Complainant.  On May 31, 2002, Complainant’s legal counsel sent via email to Respondent a cease and desist letter reiterating Complainant’s rights in the domain name and demanding that Respondent transfer the domain name registration to Complainant.

On Sept. 29, 2002, the disputed domain was purchased from Respondent by Gardensong, Inc. with the alleged intention to begin developing a marketplace for the exchange of collectable autographs.  Gardensong formed a subsidiary “THE SIGNATURE ROOM LIMITED” for this alleged purpose filing the corporate Articles with the Oregon Secretary of State on Oct. 25, 2002.

Respondent claims not to have been aware of the Complaint until Nov. 4, 2002.  Respondent received a copy of the Complaint on Nov. 6, 2002 via email from the Forum.

The domain name is currently linked to the SpeedyDomains.com site, which does not otherwise use THE SIGNATURE ROOM.

Respondent, TCS Eugene d/b/a VNL, LLC, is the registrant or holder of the domain name <thesignatureroom.com>.

On October 3, 2002, the Forum Case Coordinator contacted eNom to confirm that TCS Eugene, d/b/a VNL, LLC, was the registrant of <thesignatureroom.com>.

eNom replied to the Forum Case Coordinator on October 8, 2002, informing her that the domain name had been transferred to the following registrant: “The Signature Room Limited” “Harris D”.

According to an October 10, 2002 printout of the eNom WHOIS record for <thesignatureroom.com>, Respondent transferred the registration to a new registrant on October 4, 2002.  On October 16, 2002, the new registrant, The Signature Room Limited, transferred the registration from eNom to DotRegistrar.

On October 24, 2002, the envelope containing Respondent’s hard copy of the full Complaint with annexes, originally sent via certified mail on October 2, 2002, was returned to Complainant’s legal counsel unopened and marked “unclaimed.” 

Prior to the filing of the Complaint, the new registrant of <thesignatureroom.com>, The Signature Room Limited, did not exist.  However, on October 25, 2002, more than three weeks after the filing of the Complaint, The Signature Room Limited was incorporated in the state of Oregon, with D. Harris as its designated agent. 

By November 6, 2002, eNom and DotRegistrar returned the registration information for the <thesignatureroom.com> to its status on the date the Complaint was filed.  Because the Complaint also otherwise satisfied the Rules and Supplemental Rules, this administrative proceeding was officially commenced on November 6, 2002.  The Forum sent a full hard copy of the Complaint with annexes to the address provided by Respondent. 

On November 13, 2002, D. Harris sent an email claiming to be the owner of the “beneficial rights of registration” for <thesignatureroom.com>, and in the alternative, to be Respondent’s designated representative in this proceeding.

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.

Complainant’s Objection

Complainant objects to the Panel’s consideration of Respondent’s Response being filed by a third party.  The objection is overruled.  Although Respondent, TCS Eugene d/b/a VNL, LLC, is the holder of the domain name, the Panel will consider the responses filed by the third party on behalf of Respondent since the third party claims a beneficial interest in the domain name.

Identical and/or Confusingly Similar

Complainant has registered marks for THE SIGNATURE ROOM AT THE NINETY-FIFTH (and Design), THE SIGNATURE ROOM AT THE 95TH, THE SIGNATURE ROOM AT SEVEN BRIDGES, and THE SIGNATURE ROOM AT SEVEN BRIDGES A PLACE TO CELEBRATE LIFE! (and Design).  The Panel concludes that the domain name <thesignatureroom.com> is confusingly similar to Complainant’s registered trademarks.  The words THE SIGNATURE ROOM are the dominant elements of Complainant’s mark.  See Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark).  Having found confusing similarity with Complainant’s registered marks, it is unnecessary to determine whether Complainant has common law rights in the mark THE SIGNATURE ROOM for which Complainant has a pending trademark application.

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

“Respondent may fairly use descriptive or generic terms as a commercial domain name.”  Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb Forum Feb. 19, 2001) (Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”).  The mark THE SIGNATURE ROOM is a descriptive name in which Complainant cannot have exclusive rights. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21,2000).  However, Respondent is not using the domain name <thesignatureroom.com> but has been passively holding the domain for almost two years for the purpose of selling the domain name registration for an amount in excess of its out-of-pocket costs of registration.  See HomeFinishers, Inc. v. Tom Schutz, FA 123928 (Nat. Arb. Forum October 10, 2002) (The passive holding of the domain name <homefinishers.com> for over two years without providing any demonstrable plans or preparations to use the domain name fails to show rights or legitimate interests). 

Respondent’s only use of the domain name since registration on February 28, 2000 has been passive use, and holding the domain name registration for sale.  In view of the subsequent passive use and the offers to sell for more than the registration costs, Respondent’s evidence fails to show use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services.  See Flor-Jon Films 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); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

Respondent asserts the intent to use the domain name at some unspecified time in the future.  Respondent has not shown any concrete evidence in support of such plans.  See Do The Hustle, LLC v. Tropic Web, supra. (“once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by concrete evidence that it has rights to or legitimate interests in the domain name at issue. . . . ‘Concrete evidence’ constitutes more than personal assertions”).  A Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue.”  Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue); see also Travel in A Moment, Inc. v. F.S. Janco, FA 96821 (Nat. Arb. Forum April 9, 2000) (Respondent failed to show rights or legitimate interests in <momentsnoticetravel.com> where Respondent contended that domain name was registered for future use in connection with an “undisclosed business venture”); Camper, S.L. v. DPR USA a/k/a Global DNS Services, FA 118188 (Nat. Arb. Forum October 22, 2002) (Respondent failed to establish legitimate interests in the domain name <camper.us> through mere statement of intent to market campers).  Furthermore, Respondent has not alleged that these preparations were made before notice of the dispute.  See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that Respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving Complainant’s “cease and desist” notice).

Finally, a Respondent may demonstrate its rights or interests in a domain name by proving that it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights.  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).  However, Respondent is not commonly known as THE SIGNATURE ROOM or <thesignatureroom.com>.

Respondent has failed to show rights or a legitimate interest in the domain name. 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.  

Registration and Use in Bad Faith

Respondent has passively held the disputed domain name for almost two years with the only activity being entertaining offers to purchase the domain name registration.  At registration, Respondent had constructive notice of Complainant’s well-known mark.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Virtual Works, Inc. v. Volkswagen of Am., Inc., [2001] USCA4 9; 238 F.3d 264 (4^th Cir. 2001) (registration of domain with strong resemblance to federally protected trademark with idea of selling the site to owner of mark is not entitled to ACPA’s safe harbor provision).

Bad faith exists where Respondent registered the domain name for the purpose of selling the domain name registration to Complainant for an amount in excess of out of pocket costs associated with the registration of the domain name and Respondent has made no other use of the domain name.  See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a 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).  Moreover, the passive holding of the domain name for almost two years is bad faith use.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

Complainant’s legal counsel’s cease and desist letter of May 31, 2002, constituted formal notice of a dispute as to the domain name.  Respondent’s subsequent transfer of the domain name, change of registrars, and creation of an entity known as “The Signature Room Limited” are evidence of Respondent’s bad faith. See Ancasta Int’l Boat Sales Ltd. v. ANC – AppleStation, D2001-0155 (WIPO April 26, 2001) (bad faith is shown where a registrant of a domain name, upon receiving a letter of demand, transfers the domain name to a different registrant to avoid the consequences of an ICANN UDRP proceeding).

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

Reverse Domain Name Hijacking

Complainant has not engaged in reverse name hijacking.

DECISION

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

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 30, 2002

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