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Café Intermezzo, Incorporated v. R. Smith [2004] GENDND 1133 (13 August 2004)

1. The Parties

The Complainant is Café Intermezzo, Incorporated of Atlanta, Georgia, United States of America, represented by Kilpatrick Stockton, LLP of Atlanta, Georgia, United States of America.

The Respondent is R. Smith of Roswell, Georgia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cafeintermezzo.com> is registered with eNom, Inc..

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2004. On May 21, 2004, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On May 21, 2004, eNom, Inc. transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom, Inc.’s partial response, the Center made a WHOIS printout, which showed that the disputed Domain Name was registered with eNom Inc., and that the registrant of the domain name at issue was different from the Respondent as set out in the Complaint. On June 10, 2004, the Center notified the Complainant of the deficiency and subsequently extended the deadline for filing an Amended Complaint. An Amended Complaint was received by the Center on June 22, 2004. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the Amended Complaint, and the proceedings commenced on June 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2004.

The Center appointed Gregory N. Albright as the Sole Panelist in this matter on July 30, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant’s CAFÉ INTERMEZZO service mark for restaurant services in Class 42 was registered in the United States Patent and Trademark Office on January 25, 1983, (Reg. No. 1,225, 542). Complainant also owns a federal registration for the CAFÉ INTERMEZZO service mark in Class 43 (Reg. No. 2,686,472) which issued on February 11, 2003.

5. Parties’ Contentions

A. Complainant

1. Identical Or Confusingly Similar

Complainant’s president, Brian Olson, began his career as a coffee house proprietor and espresso machine importer in the early 1970s, and is recognized as one of the first to popularize espresso and cappuccino in the United States. In 1979, Complainant opened a European coffeehouse and restaurant called CAFÉ INTERMEZZO on Ashford-Dunwoody Road in Atlanta, Georgia, United States of America. The CAFÉ INTERMEZZO restaurant was one of the first in the Southeast to serve espresso and cappuccino, and quickly became one of Atlanta’s most noteworthy destinations. Over the next several years, Complainant’s CAFÉ INTERMEZZO coffeehouse/restaurant continued to grow in popularity and, in 1987, Complainant opened a second CAFÉ INTERMEZZO on Peachtree Street, Atlanta’s most prominent and well-known address.

With the addition of the Peachtree Street location, CAFÉ INTERMEZZO became a true Atlanta institution, and its popularity and goodwill is evidenced by the nationwide press attention it has received.

The disputed domain name fully incorporates the CAFÉ INTERMEZZO mark, and is therefore confusingly similar to it.

2. Rights Or Legitimate Interests

The Respondent has no rights or legitimate interests with respect to the disputed domain name for several reasons. First, Complainant’s first use of the CAFÉ INTERMEZZO mark predates Respondent’s registration of the disputed domain name by over 20 years. Complainant’s and Respondent’s close geographical proximity is evidence that Respondent had knowledge of the mark before registering the domain name. Second, Respondent has not been commonly known, or done business, “Café Intermezzo.” Third, Respondent has not made any use of the disputed domain name in connection with a bona fide attempt to offer goods or services; indeed, no content has ever been displayed on the web site to which the disputed domain name resolves. Fourth, Respondent has made no attempt to communicate via the disputed domain name, through noncommercial speech or otherwise. Finally, Complainant has not authorized Respondent’s use of the CAFÉ INTERMEZZO mark.

3. Bad Faith

The disputed domain name was registered and is being used in bad faith for the following reasons. First, because of the mark’s renown in the greater Atlanta area, and Respondent’s close geographical proximity to Complainant’s businesses, Complainant believes Respondent was aware of Complainant’s mark and registered the domain name in the hope he could sell it to Complainant or a third party for profit. Second, Respondent has not made any use of the disputed domain name; he has simply “warehoused” it. Third, Respondent is informed and believes that R. Smith is an alias of Lou Ashcraft, who has engaged in a substantial pattern of bad faith domain registration in the past. Mr. Ashcraft has operated under the fictitious name “mywebaddress.com,” and he controls a fictitious entity named “Gulf South Limited,” through which Mr. Ashcraft has registered many domain names in bad faith.

B. Respondent

The Respondent did not file a response to the Complainant’s contentions, and is in default in this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires Complainant to prove all of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and; (ii) the Respondent has no rights or legitimate interests in respect of the domain name, and; (iii) the domain name has been registered and is being used in bad faith.

A Respondent may demonstrate that it has rights or legitimate interests in respect of the domain name by proving those circumstances identified in Paragraph 4(c) of the Policy.

Evidence of bad faith registration and use of a domain name may be proven by, among other things, the circumstances identified in Paragraph 4(b) of the Policy.

A. Identical or Confusingly Similar

The Complainant has carried its burden of proof under Paragraph 4(a)(i) of the Policy.

Complainant has adduced evidenced that it has rights in the mark CAFÉ INTERMEZZO, including certificates of Complainant’s two registrations of the CAFÉ INTERMEZZO mark on the Principal Register of the United States Patent and Trademark Office: Reg. No. 1,225,542 (registered January 25, 1983), and Reg. No. 2,686,472 (registered February 11, 2003).

The disputed domain name fully incorporates Complainant’s mark, and thus is confusingly similar to it.

B. Rights or Legitimate Interests

The second element Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the domain name.

A principal issue in this matter is whether the Respondent, R. Smith, is an alias of Lou Ashcraft, and whether Complainant’s evidence regarding Mr. Aschraft is probative of R. Smith’s lack of rights or interests in the domain name (and R. Smith’s registration and use of the domain name in bad faith, discussed below).

Complainant has submitted a copy of eNom Inc.’s WHOIS database search results for the disputed domain name, dated April 30, 2004, which shows the Registrant, Administrative Contact, and Technical Contact as follows:

Mywebaddress.com

Lou Ashcraft

[Contact details]

In its process of verifying that the Complaint satisfied all formal requirements, the Center printed registrar verification results from eNom’s WHOIS on May 27, 2004, which showed the Registrant, Administrative Contact, and Technical Contact as follows:

R. Smith

[Identical address and telephone number as prior registrant]

The Center asked eNom to advise of the date when the name of the registrant changed. eNom responded in a rather unilluminating June 9, 2004, email, as follows: “Our records indicate that the current whois is the same that was listed when the domain name was originally transferred to eNom on January 27, 2004.” eNom’s email suggests that R. Smith was the registrant on January 27, 2004 and June 9, 2004. If that is correct, Complainant’s evidence that Lou Aschraft was the registrant between those two dates – i.e., on April 30, 2004, – is somewhat puzzling.

Although the registration history of the disputed domain name is not completely clear, the unconflicting evidence is this: R. Smith and Lou Ashcraft both have been registrants of the disputed domain name, and they share a telephone number and post office box in Roswell, Georgia. Thus, the Panel finds that R. Smith and Lou Ashcraft have enough in common to make evidence regarding the latter relevant to the issues in this proceeding. Indeed, the evidence strongly suggests that R. Smith is Lou Ashcraft’s alias. (The Center notified both R. Smith and Lou Ashcraft of this proceeding, and neither of them responded.)

Complainant has adequately demonstrated the Respondent’s lack of rights or legitimate interests with respect to the disputed domain name. The Respondent’s close geographical proximity to Complainant’s businesses, and Complainant’s registration of its trademark over 17 years before Respondent registered the domain name, are evidence that Respondent had actual or constructive knowledge of Complainant’s rights in its mark. Complainant has also submitted the results of a search of the Georgia Secretary of State’s corporate and trademark database that shows no data suggesting that Mr. Ashcraft has been known, or done business, as “Café Intermezzo.” Complainant’s evidence also shows that Respondent has made no use of the disputed domain name, either for noncommercial speech or to sell goods or services. Finally, Complainant has shown that it did not authorize Respondent to use the CAFÉ INTERMEZZO mark in a domain name.

The Panel concludes that the Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Complainant has carried its burden of showing that Respondent registered and is using the disputed domain name in bad faith, for the following reasons.

Complainant’s evidence shows that Respondent resides in the greater Atlanta area, and therefore is likely familiar with Complainant’s well-known restaurants. The evidence also shows that Respondent has merely “warehoused” the domain name, and made no use of it. See Toyota Motor Sales, U.S.A. Inc., Gulf States Toyota, Inc. and Price Leblanc, Inc. dba Price Leblanc Toyota v. Gulf South Limited, WIPO Case No. D2001-0698) (July 25, 2001) (“other ICANN Panels have found bad faith where a party has passively ‘warehoused’ a domain name fully aware the name contained another party’s … trademark”). Taken together, this is evidence that Respondent has registered the domain name for no purpose other than selling it to Complainant, or a third party.

Complainant has also submitted evidence that Mr. Ashcraft, through his alias Gulf South Limited, has engaged in a substantial pattern of bad faith domain name registration in the past. See Emory Healthcare, Inc. v. Gulf South Limited, FA94892 (National Arbitration Forum, July 5, 2000); Toyota Motor Sales, U.S.A. Inc., Gulf States Toyota, Inc. and Price Leblanc, Inc. dba Price Leblanc Toyota v. Gulf South Limited, WIPO Case No. D2001-0698) (July 25, 2001) (Gulf South Limited “has registered almost 400 domain names, including many famous trademarks”); Club Gene & Georgetti v. Gulf South Limited, FA 123925 (National Arbitration Forum, October 18, 2002). Mr. Ashcraft also was involved in litigation in the United States District Court for the Northern District of Georgia regarding allegations that domain names he had registered infringed the trademark rights of Disney Enterprises, Inc., adidas-Salomon AG, Anheuser-Busch, Incorporated, H-D Michigan, Inc. (Harley-Davidson), and AMC, Inc. A pattern of registering infringing domain names is evidence of bad faith. See Big Dog Holdings, Inc. v. Frank Day, FA93554 (National Arbitration Forum, March 9, 2000).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cafeintermezzo.com> be transferred to the Complainant.

Gregory N. Albright
Sole Panelist

Dated: August 13, 2004