DECISION

Firkin Hospitality Group Inc. v. Firkin Development Group a/k/a Samut Prakaan a/k/a Pete Smith

Claim Number:  FA0302000145205

PARTIES

Complainant is Firkin Hospitality Group Inc., Toronto, ON, Canada (“Complainant”) represented by Barry E. Hutsel, of Moffat & Co.. Respondent is Firkin Development Group a/k/a Samut Prakaan a/k/a Pete Smith, Bankok, Thailand (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

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

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 7, 2003; the Forum received a hard copy of the Complaint on February 10, 2003.

On February 7, 2003, eNom, Inc. confirmed by e-mail to the Forum that the domain name <firkin.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 February 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 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@firkin.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 March 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <firkin.com> domain name is identical to Complainant’s FIRKIN mark.

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

3. Respondent registered and used the <firkin.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds several Canadian trademark registrations or pending applications that incorporate the FIRKIN mark, including Reg. No. TMA573,956 registered on January 17, 2003 with the Canadian Intellectual Property Office. Complainant uses the marks in relation to the operation of licensed restaurants and pubs throughout Canada since as early as 1987.

Respondent registered the <firkin.com> domain name on June 20, 2002. The website at the disputed domain name resolves to a portal website that offers links to financial services, shopping opportunities and entertainment. The website reads, “This Site is Planned for Development.”

After being contacted by a party working for Complainant’s affiliate about the availability of the <firkin.com> domain name, Mr. Pete Smith indicated that he was in the process of selling the disputed domain name. On January 10, 2003, Complainant advised Mr. Smith of Complainant’s trademark rights and requested the transfer of the disputed domain name to Complainant. From January 11, 2003 to January 13, 2003, Mr. Smith advised Complainant three times that Mr. Smith would be selling the disputed domain name. On January 13, 2003, the WHOIS registration contact name information was changed to Samut Prakaan. On January 24 and 29, 2003, Complainant wrote to Mr. Prakaan to confirm that Mr. Prakaan was renting the <firkin.com> domain name from Pete Smith, which information Mr. Prakaan confirmed.

On February 11, 2003, after this proceeding was commenced, Mr. Smith indicated to Complainant that Mr. Smith had received an improved offer for the <firkin.com> domain name from the “Thai group.” In the e-mails exchanged between Mr. Smith and Mr. Prakaan on February 11, 2003, Mr. Prakaan expressed his anger about the Complaint filed against him by Complainant. Mr. Smith assured Mr. Prakaan that the disputed domain name had been sold to Mr. Prakaan in good faith. All of the e-mail messages exchanged between Mr. Smith and Mr. Prakaan originated from the same computer, which connected to the Internet through the same IP address.

DISCUSSION

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(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 and/or Confusingly Similar

Complainant has established rights in the FIRKIN mark through registration with the Canadian Intellectual Property Office and continuous use of the mark in commerce since at least 1987.

Respondent’s <firkin.com> domain name is identical to Complainant’s FIRKIN mark because the disputed domain name incorporates Complainant’s entire mark and merely adds the generic top-level domain (gTLD) “.com” to the end of the mark. The addition of a gTLD does not distinguish a domain name from a mark because gTLDs are required for domain names on the Internet. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

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

Rights or Legitimate Interests

Respondent has not submitted a Response in this proceeding. Therefore, the Panel may accept that all reasonable allegations and inferences in the Complaint are true. 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, since Complainant has asserted a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Respondent has failed to provide the Panel with any circumstances that could demonstrate Respondent’s rights or legitimate interests in the <firkin.com> domain name.

Respondent is not currently using the disputed domain name. The <firkin.com> domain name resolves to a website that reads, “This Site is Planned for Development.” The failure to use a website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); 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 the 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 the Respondent is not commonly known by the domain name).

Respondent has not offered the Panel any proof and there is no evidence on the record to establish that Respondent is commonly known by FIRKIN or <firkin.com>. Therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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); see also 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).

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

Registration and Use in Bad Faith

Complainant has provided the Panel with extensive evidence through e-mail communications with both Samut Prakaan and Pete Smith that Respondent registered the <firkin.com> domain name solely for the purpose of selling the disputed domain name to Complainant, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of 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).

DECISION

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

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

John J. Upchurch , Panelist

Dated:  March 17, 2003

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