DECISION

Chef2Chef, LLC v RealTimeInternet.com, Inc.

Claim Number: FA0212000137710

PARTIES

Complainant is Chef 2 Chef, LLC, Englewood, CO (“Complainant”) represented by Fred Roosli, of Chef 2 Chef, LLC.  Respondent is RealTimeInternet.com, Inc., Fort Wayne, IN (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cheftochef.com>, registered with BulkRegister.com, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 23, 2002; the Forum received a hard copy of the Complaint on December 27, 2002.

On December 24, 2002, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <cheftochef.com> is registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name. BulkRegister.com, Inc. verified that Respondent is bound by the BulkRegister.com, 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 January 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 22, 2003, 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@cheftochef.com by e-mail.

The Forum received no Response by the Response Due Date. On January 27, 2003, the Forum received a timely Additional Submission from Respondent. Respondent had twenty days from the Commencement Date to file a timely Response; the Additional Submission was received within the time period allotted for Additional Submissions, in accordance with Forum Supplemental Rule 7. The Arbitrator has considered the Additional Response. See BPI Communications, Inc. et al v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum, Apr. 30, 2002) (finding that Additional statement filed after response deadline “considered the substantive Response in th[e] proceeding.”).

On January 31, 2003, Complainant filed a timely Additional Submission.

On February 12, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the follow allegations in the case:

1. The domain name registered by Respondent is identical to or confusingly similar to a mark belonging to Complainant.

2. Respondent has no rights to or legitimate interests in the mark included in the disputed domain name.

3. Respondent registered and used the disputed domain name in bad faith.

B. Respondent makes the following allegations in its Additional Submission:

1. That although Respondent did not file a timely Response, the Panel should

consider Respondent’s timely filed Additional Submission.

2. That the domain name registered by Respondent is not identical to or confusingly similar to Complainant’s mark because Complainant’s Chef2Chef mark is generic and has substantial secondary meaning and widespread use by many in the culinary arts community.

3. That Respondent has rights in the domain name; and

4. That Respondent did not register and use the domain name in bad faith.

C. Complainant’s Additional Response makes the following allegations in reply:

1. Contrary to Respondent’s contention, Complainant urges that Complainant had common law rights in chef2chef, a distinctive mark that Complainant used, sought patent rights for, spent substantial funds to develop beginning in 1999; and to which Complainant ultimately received legal rights in the mark from the United States Patent and Trademark Office.

2. Respondent registered the disputed domain name in 2001, two years after Complainant’s use and rights began.

3. Complainant’s mark was famous and distinctive before Respondent filed the disputed domain name.

4.  Respondent has not been active in the culinary arts community for fifteen years; and

5.  Respondent’s sole reason for registering and holding the domain name would be to lure unsuspecting Internet users seeking the services of Complainant in Complainant’s area of commerce. 

FINDINGS

Complainant is Chef2Chef, LLC, which operates as a limited liability company.  Complainant’s mark, Chef2Chef, is confusingly similar to the domain name registered by Respondent, cheftoChef, because spelling “2” as “to” does not affect a claim of confusing similarity.

Complainant offered proof that it registered the Chef2Chef mark with the United States Patent and Trademark Office, holding registration number 2,659,411.

Complainant established that Respondent has been refused a trademark for cheftochef due to its confusing similarity with Complaint’s mark.  Complainant’s registration includes the right to use “words, letters and/or numbers.”

Not only did Respondent fail to acquire a license to use Complainant’s mark, Respondent is known to the Panel only as RealTimeInternet.com, Inc. Respondent brought forth no evidence that it has ever been known as Chef2Chef or ChefToChef.

Complainant alleges that Respondent registered the domain name to attract for commercial gain, Internet users to its website, by creating the likelihood of confusion with Complainant’s mark as the source, sponsorship, affiliation or endorsement of Respondent’s website.  Further Complainant urges that Respondent acted to prevent Complainant from being able to reflect its mark in an Internet offering, both of which constitute bad faith.

On April 2, 2002, Complainant wrote a formal Cease and Desist Request for cheftochef.com, setting out that Respondent was infringing on Complainant’s trademark rights.

Respondent avers that it registered the disputed domain name as an informational website and concedes that it has not yet developed the site but merely posts general advertisements on it. 

Respondent urges that “chef to chef” is a common term with substantial third party use that is not associated with Complainant. Respondent maintains that more than 600 third-party web pages contain the term Chef to Chef.

Respondent denied acting under any of the grounds cited by Complainant as an example of bad faith and notes that its registration of the domain name on November 13, 2001, preceded the date Complainant obtained its trademark. Respondent cites to a line of cases that hold that Complainant’s trademark rights must precede the date that Respondent files the domain name in order to prevail.

In its Additional Response, Complainant notes that its common law rights in the mark began at least by October of 1999 and that Complainant registered the domain name chef2chef.com with Network Solutions December 8, 1999, nearly two years before Respondent registered the cheftochef.com domain name. Complainant’s trademark application was filed in September 2000, more than one year before Respondent registered the cheftochef.com domain name.

Complainant cites to a line of cases recognizing protection for common law rights in a mark from a subsequently filed domain name.

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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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 to and/or Confusingly Similar

Complainant urges that use of the CHEF2CHEF mark in commerce since 1999 and trademark registration for the mark show Complainant’s rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a governmental authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

Complainant argues that the <cheftochef.com> domain name registered by Respondent is confusingly similar to its CHEF2CHEF mark. See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name, which is phonetically identical to Complainant’s mark, satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to the Complainant’s YAHOO mark).

In its Additional Submission Complainant maintains that it has rights in its distinctive and famous mark by virtue of long and exclusive use in commerce. 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”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant show a bona fide basis for making the Complaint in the first place).

Respondent argues in its Additional Submission that its registration of the disputed domain name came over a year after Complainant registered its CHEF2CHEF mark but that Complainant’s mark provides no enforceable rights under the UDRP. See Amsec Ent. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (finding that Complainant’s pending trademark applications do not establish any enforceable rights to the mark until a trademark registration is issued); see also Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (stating that “We are of the unanimous view that the trademark must predate the domain name”).  In fact, Complainant obtained trademark rights in the Chef2Chef mark and Respondent was denied such rights due to the similarity of cheftochef to Complainant’s mark. Further, Complainant’s mark includes the right to use “words, letters and/or numbers.”

Having found that the domain name is confusingly similar to a mark in which Complainant has rights, the Panel finds that ICANN Policy ¶ 4(a)(i) requiring a showing of “confusing similarity” has been satisfied.

Rights to or Legitimate Interests

Complainant has established that it has common law and legal rights to the Chef2Chef mark.  Complainant urges that Respondent’s nominal use of the infringing domain name does not create rights to or legitimate interests in the domain name because the use that Respondent made of the domain name in dispute is not a legitimate or bona fide use. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

Complainant maintains in its Additional Submission that Respondent could have implemented its proposed culinary website in the time that has passed since the domain name was registered but has chosen not to develop the site.  Passive holding does not create rights to or legitimate interests in the domain name absent some presentation by a Respondent that a plan is in place, that preparations have been made to develop the site, and that some development of the site have been made prior to notice of the dispute. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”). Respondent presented no demonstrable evidence supporting any plan for the website.

Complainant argues that the term “chef to chef” is not a common term but is a distinctive trademark, rebutting Respondent’s allegation that the disputed domain name is generic, and available on a first come, first served basis.  Respondent argues that the generic nature of the term “chef to chef” lessens Respondent’s burden of establishing rights and legitimate interests in the disputed domain name. See Philippe Tenenhaus v. Telepathy, Inc., FA 94355 (Nat. Arb. Forum May 17, 2000) (finding that Respondent has rights and legitimate interests where Complainant failed to show that he should be granted exclusive use of the domain name, <daf.com>, as many other organizations use the generic term "DAF" and that it was not available to him at the time he commenced business utilizing the name); see also Tough Traveler, Ltd. v. Kelty Pack, Inc, D2000-0783 (WIPO Sept. 28, 2000) (finding that Respondent had a legitimate interest in the domain name, <kidcarrier.com>, as a generic term for a class of products that Respondent sells).  Respondent further urges that Respondent’s current use of the domain name also evidences rights and legitimate interests. See First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest).  This case is distinguishable from those cases refusing to protect generic terms. Here Complainant had common law rights through use and a pending application with the United States Patent and Trademark Office for trademark rights prior to Respondent’s registration.  Complainant’s application was thereafter granted. Respondent knew of those rights by the notice given by public filing of the application and also by the fact that Respondent filed to protect the mark cheftochef but was denied trademark rights based on the confusing similarity with Complainant’s mark.

The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii)’s requirement of showing that Respondent has “no rights or legitimate interests” in the disputed name.

Registration and Use in Bad Faith

Complainant argues that Respondent registered and used Complainant’s mark in bad faith.  Complainant first urges that Respondent is using Complainant’s mark for commercial gain by posting advertisements on a website that is confusingly similar to Complainant’s mark, and that such use does not constitute a legitimate use but instead is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website <iwin.com>, presumably, the Respondent received a portion of the advertising revenue from site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain).

Respondent’s Additional Submission argues that, due to the generic nature of the domain name, Respondent could not have registered the domain name in bad faith. See Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where Respondent was using the descriptive domain name <thelowestfare.com> to lead consumers to a source of lowest fares in good faith); see also Loris Azzaro BV, SARL v. Asterix & De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence”).

In its Additional Submission, Complainant also alleged that Respondent has exhibited a pattern of preventing trademark holders from reflecting their marks on the Internet, which is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names, which infringe upon others’ famous and registered trademarks); see also America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of conduct where Respondent registered many domain names unrelated to its business which infringe on famous marks and websites).

Further, Respondent had actual or constructive notice of Complainant’s prior use before registering and passively holding the confusingly similar domain name, contrary to the circumstances set out in those authorities that look to the date of filing of the domain name in which the Complainants had made no prior use. Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the Respondent registered the domain prior to the Complainant’s use of the mark).

Complainant had used the mark and applied for federal protection of its trademark rights prior to the registration of the domain name by Respondent. see  Collegetown Relocation, LLC v. Concept Software & Tech. Inc., FA 96555 (Nat. Arb. Forum Mar. 14, 2001) (distinguishes prior decisions by clarifying that a Complainant’s Federal trademark registration speaks to constructive notice for bad faith use, not bad faith registration).

Taking into consideration the full circumstances presented, as it must, the Panel finds that ICANN Policy ¶ 4(a)(iii) requiring a showing of “bad faith” has been satisfied.

DECISION

Having determined that all three of the required elements have been satisfied, the Panel finds that the domain name, <cheftochef.com>, should be TRANSFERRED. 

Accordingly, it is hereby ORDERED that the domain name,<cheftochef.com>, be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist
Dated: February 26, 2003.

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