DECISION

Dockeast LLC. v Richard Jurmark

Claim Number: FA0303000149147

PARTIES

Complainant is Dockeast, LLC, New York, NY (“Complainant”) represented by Daniel Blumenstein, of The Law Office of Daniel G. Blumenstein.  Respondent is Richard Jurmark, Bronx, NY (“Respondent”) represented by Charu Narang.

REGISTRAR AND DISPUTED DOMAIN NAME 

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

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 10, 2003; the Forum received a hard copy of the Complaint on March 11, 2003.

On March 14, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <docksoysterbar.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 3, 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@docksoysterbar.com by e-mail.

A timely Response was received and determined to be complete on April 2, 2003.

Complainant’s timely Additional Submission was received and determined to be complete on April 7, 2003.

Respondent’s timely Additional Submission was received and determined to be complete on April 9, 2003.

On April 16, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

           

      A.  Complainant

1. Respondent’s <docksoysterbar.com> domain name is confusingly similar to Complainant’s DOCKS OYSTER BAR & SEAFOOD GRILL service mark.

2. Respondent does not have any rights or legitimate interests in the domain name at issue.

3. Respondent has registered and uses the domain name at issue in bad faith.

     

      B.  Respondent

1. Respondent alleges that Complainant has disclaimed any right to use its registered mark apart from its design logo and suggests that it cannot therefore protect the mark from a confusingly similar domain name.

2. Respondent does not appear to claim that it has any rights or legitimate interests in the           domain name at issue.

3. Respondent denies that he registered the domain name at issue in bad faith.

        C. Complainant’s Additional Submission

1. Complainant points out that Respondent only registered the domain name at issue in his capacity as an employee of Complainant.

       Complainant argues that Respondent furnished false information in connection with registration and renewal of the domain name at issue.

        D. Respondent’s Additional Submission

1. Respondent denies that he intentionally furnished false information in connection with registration or renewal of the domain name at issue.

2. Respondent alleges that Complainant did not properly document its acquisition of the restaurant from its predecessor in interest if it now claims the domain name at issue.

FINDINGS

            Since 1988, Complainant and its predecessor in interest have operated DOCKS OYSTER             BAR & GRILL which has been a premier seafood restaurant in New York City.  Its       primary service mark, DOCKS OYSTER BAR & SEAFOOD GRILL^, (hereinafter             “Mark”) is used in word and logo formats and is registered with and by the United States         Patent and Trademark Office under serial No. 73744568 and Registration No. 1682271.         The continuous use of the Mark in connection with two restaurants has included    prominent placement of the Mark on            menus, restaurant awnings, and in a variety of           advertising and promotional materials for its restaurant services.

            The Complainant, DockEast LLC, purchased the restaurants and all of their assets on        January 31, 2002 from 633 Seafood Restaurant Incorporated. The Mark is owned      separately by 2427-2429 Seafood Restaurant Corp. and was licensed to the Complainant    at the time of the acquisition pursuant to a License Agreement.

            The Respondent, Richard Jurmark, was a restaurant general manager for one of the          restaurants prior to the acquisition and was an inherited employee of the Complainant            from January 31, 2002 through June 3, 2002, when he ceased to be an employee under      circumstances which are not explained.

            It appears that Respondent, in his capacity as an employee, or at least during his     employment by DOCKS OYSTER BAR & SEAFOOD GRILL, and prior to the           acquisition, registered the domain name at issue in December of 2000.

            According to the WHO IS database, the original registrant of the domain name was not    Richard Jurmark, but DOCKS OYSTER BAR & SEAFOOD GRILL, although it listed            Jurmark’s address and phone number. After Respondent’s employment, apparently in late            December of 2002 but before the end of January, 2003, Respondent renewed the        registration of the domain name at issue and changed the name of the registered owner to     himself, personally.

There is no suggestion that Respondent has used the domain name in connection with a bona fide offering of goods and services or that he has been known by the domain name at issue. There is no suggestion that his employer has ever licensed Respondent to use the Mark or the domain name at issue.

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

            Respondent’s <docksoysterbar.com> domain name is confusingly similar to                        Complainant’s mark. See Asprey & Garrard Ltd v. Canlan             Computing, D2000-1262          (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly             similar to Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); 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).

           

            Based on the submissions and the authority above, I find that Paragraph 4(a)(i) of the         Policy has been satisfied by the Complainant.

Rights or Legitimate Interests

Respondent candidly admits in his Supplemental Response that he has no interest in the domain name at issue. In any event, his failure to use the domain name evidences that he lacks rights or legitimate interests in the domain name. See 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”); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”). 

            Based on the submissions and the authority above, I find that Paragraph 4(a)(ii) of the        Policy has been satisfied by the Complainant.

Registration and Use in Bad Faith

It appears clear that Respondent originally registered the domain name at issue as the employee agent of his employer as the imputed act and deed of his employer. 

Some months after his employment was terminated, he renewed/re-registered the domain at issue and in the process changed the registered ownership from that of his employer to himself.  His refusal to transfer <docksoysterbar.com> on the basis of the record presented appears to amount to the tort of conversion.

            Further, since Respondent was aware that it had no rights in the DOCKS OYSTER BAR              & SEAFOOD GRILL, its renewal/re-registration of the disputed domain name was           effected in bad faith. See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399    (WIPO Dec. 19, 2000) (finding bad faith registration and use where Respondent was             employed by Complainant’s business, was fully aware of the name of her employer, and             made no use of the infringing domain name); see also Canada, Inc. v. Ursino, AF-0211         (e-Resolution July 3, 2000) (finding that because Respondent was hired by Complainant         to help design and register Complainant’s websites, Respondent had intimate knowledge   of Complainant’s business and use of its TEENFLO mark. Therefore, Respondent’s   registration of <teenflo.com> was in bad faith).

            Respondent’s passive holding of the domain name amounts to bad faith use of the domain            name at issue. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18,   2000) (finding that “it is possible, in certain circumstances, for inactivity by the        Respondent to amount to the domain name being used in bad faith”); see also Alitalia –            Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000)             (finding bad faith where Respondent made no use of the domain name in question            and there are no other indications that Respondent could have registered and used the     domain name in question for any non-infringing purpose).

            Based on the submissions and the authority above, I find that Paragraph 4(a)(iii) of the       Policy has been satisfied by the Complainant.

DECISION

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

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

James A. Carmody, Esq., Panelist
Dated: April 24, 2003

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