DECISION

Zagat Survey, LLC. v. Friedmans Construction Inc. a/k/a J HF

Claim Number: FA0311000210304

PARTIES

Complainant is Zagat Survey, LLC (“Complainant”) represented by Chad J. Doellinger of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is Friedmans Construction Inc. a/k/a J HF, 1075 D North Rail Road Ave., Suite 252, Staten Island, NY 10306 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zagatsurveys.com> registered with Go Daddy Software, 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 November 13, 2003; the Forum received a hard copy of the Complaint November 17, 2003.

On November 13, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <zagatsurveys.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has 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 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 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@zagatsurveys.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 December 23, 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.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. The domain name registered by Respondent, <zagatsurveys.com>, is confusingly similar to Complainant’s ZAGAT SURVEY mark.

2. Respondent has no rights to or legitimate interests in the <zagatsurveys.com> domain name.

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

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

FINDINGS

Complainant produces a wide variety of restaurant guides based on surveys of restaurant customers. Complainant holds a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ZAGAT SURVEY mark (Registration Number 1,948,630, registered January 16, 1996) in relation to restaurant, hotel and travel guides. Complainant uses the <zagat.com> and <zagatsurvey.com> domain names to direct Internet users to its primary website.

Respondent registered the <zagatsurveys.com> domain name May 21, 2003. Respondent has not associated the disputed domain name with an active website. Respondent asked Complainant during a telephone conversation to make an offer for the domain name registration. Complainant offered to reimburse Respondent’s out-of-pocket expenses related to the domain name. Respondent rejected the offer.

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant has demonstrated in this proceeding that it has rights in the ZAGAT SURVEY mark through registration with the USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).

Complainant contends that the domain name registered by Respondent, <zagatsurveys.com>, is confusingly similar to Complainant’s ZAGAT SURVEY mark because the disputed domain name appropriates Complainant’s entire mark and simply adds the letter “s” to the end of the mark. The addition of the letter “s” fails to sufficiently distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”); see also Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark).

Accordingly, the Panel finds that Complainant established Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established its rights to and legitimate interests in the mark contained in its entirety in the domain name registered by the Respondent, who has not come forward to challenge this extrinsic proof or the contentions in the Complaint. Therefore, the Panel accepts all reasonable allegations and inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); 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, based on Respondent’s failure to respond, the Panel presumes Respondent lacks all rights to and legitimate interests in the disputed domain name in accord with Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Respondent has not associated the <zagatsurveys.com> domain name with an active website. Moreover, Respondent asked Complainant during a telephone conversation to make an offer for the domain name registration in excess of Respondent’s out-of-pocket expenses. Respondent’s request for an offer for the domain name registration is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See America Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that Respondent lacked rights or legitimate interests in the disputed domain name after Respondent sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of Complainant’s stock); see also American Nat’l Red Cross v. Domains a/k/a Best Domains a/k/a Barry, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”).

Respondent produced no evidence and nothing in the record suggests that Respondent is commonly known by ZAGAT SURVEYS or <zagatsurveys.com>. Thus, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name under 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

The Panel finds that Complainant established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s request of Complainant to make an offer for the <zagatsurveys.com> domain name registration in excess of Respondent’s out-of-pocket expenses establishes that the disputed domain name registration was acquired primarily for the purpose of selling it to Complainant, which constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (“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).

Furthermore, the Panel presumes that Respondent had actual or constructive knowledge of Complainant’s rights in the ZAGAT SURVEY mark at the time Respondent registered the <zagatsurveys.com> domain name. The registration of a domain name that is confusingly similar to a registered trademark, despite actual or constructive knowledge of the mark holder’s rights in its mark, demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also 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).

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

DECISION

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

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

Hon. Carolyn Marks Johnson, Panelist

Dated: January 2, 2004.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/132.html