DECISION

The Dinex Group, LLC and Daniel Boulud v. Undici Design

Claim Number: FA0401000231668

PARTIES

Complainant is The Dinex Group, LLC and Daniel Boulud, New York, NY (collectively, “Complainant”) represented by Alexandre A. Montagu P.C., 1060 Park Avenue, Apt. 10C, New York, NY 10128.  Respondent is Undici Design, 99 Bank Street, #5A, New York, NY 10014 (“Respondent”) represented by Mark Deutsch.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <danielboulud.com>, registered with Bulkregister, Llc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Clive Elliott as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 24, 2004; the Forum received a hard copy of the Complaint on January 30, 2004.

On January 28, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the domain name <danielboulud.com> is registered with Bulkregister, Llc. and that the Respondent is the current registrant of the name.  Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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 3, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 23, 2004 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@danielboulud.com by e-mail.

A timely Response was received and determined to be complete on February 23, 2004.

On March 15, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant runs and asserts it is known for internationally renowned restaurants and food related services.  Daniel Boulud is also a a world-renowned chef who is the proprietor of the Daniel and Café Boulud restaurants and has authored seven books. The  Dinex Group asserts it has invested substantial sums of money in developing and marketing its restaurant services and marks. Evidence of repute was provided and is not contested.

Complainant asserts rights in the CAFÉ BOULUD mark as a result of its registration of the mark with the United States Patent and Trademark Office on July 8, 2003 (Reg. No. 2734459).  The registration was filed on August 12, 2002 (Ser. No. 76/441821).  It also relies on continuous use in connection with its restaurant, bar and café services since 1998.

Complainant also asserts rights in the D DANIEL and DANIEL BOULUD CONNOISSEUR marks as a result of registration applications filed, respectively, on July 31, 2003 (Ser. No. 78/281308) and July 29, 2003 (78/280413).  The former mark has been used since 1998 in connection with Complainant’s restaurant services while the latter has been used since 1997 to identify food products, mainly caviar and smoked salmon.

Complainant states that Respondent has no relationship with Complainant or permission for the use of its name or mark.

Complainant states Respondent has held the contested domain name for at least one year without creating a website, therefore Respondent submits it is merely passively holding the domain name and has not sufficiently demonstrated its preparations to use the name.

Complainant further asserts that Respondent registered and used the disputed domain name in bad faith by attempting to piggy-back on the goodwill and brand recognition associated with Complainant’s famous mark and any use of the name would merely confuse consumers.

B. Respondent

The Respondent develops websites.  It alleges that the disputed domain name was registered for the purpose of hosting an open forum that relates to Complainant’s restaurants. 

Respondent argues that Complainant has not established rights in the DANIEL BOULUD mark because the mark is not registered with any government agency and mere trademark applications are insufficient to establish rights in the mark.

Respondent concedes that some similarity exists between the domain name and Complainant’s marks, but states the disputed domain name still fails to reach the requisite level of confusing similarity.

Respondent claims the filing dates for Complainant’s marks, except the CAFÉ BOULUD mark, postdate the registration of the disputed domain name.

Respondent contends that Complainant had equal opportunity to purchase the disputed domain name registration, but neglected to do so and instead chose to register the <danielnyc.com> domain name.

Respondent notes that one-year is a short period of time for an entity run by one person to conceptualize, create content, design and program a web site.

FINDINGS

Having reviewed all of the papers and submissions, the Panel finds that:

(1)        the domain name registered by the Respondent is identical to and confusingly similar to a trademark 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.

Having established all three elements required under the ICANN Policy, the Panel concludes that the Complaint is made out and that the < danielboulud.com > domain name should be transferred from Respondent to Complainant.

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 or Confusingly Similar: Policy ¶ 4(a)(i).

Complainant alleges rights in the CAFÉ BOULUD mark as a result of its registration of the mark with the United States Patent and Trademark Office on July 8, 2003 (Reg. No. 2734459).  The registration was filed on August 12, 2002 (Ser. No. 76/441821) and continuously used in connection with its restaurant, bar and café services since 1998. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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 also alleges rights in the D DANIEL and DANIEL BOULUD CONNOISSEUR marks as a result of registration applications filed, respectively, on July 31, 2003 (Ser. No. 78/281308) and July 29, 2003 (78/280413).  The former mark has been used since 1998 in connection with Complainant’s restaurant services while the latter has been used since 1997 to identify food products, mainly caviar and smoked salmon. 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 government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

Complainant claims and relies on long standing use and reputation. The Panel may find that the mark DANIEL BOULUD has acquired secondary meaning as a result of continuous and extensive use in the United States and worldwide, effectively confering rights to Complainant in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

The Respondent does not dispute Complainant’s use of and identification with the disputed domain name and indeed seeks to utilize its repute, supposedly to further its own interests (see comments below). It is clear that Complainant ‘has rights’ under the Policy.

Given the lack of connection in fact between the Complainant and Respondent, the domain name is likely to confuse and is thus confusingly similar to a trademark in which the Complainant has rights and is one falling within the contemplation of the Policy ¶ 4(a)(i).

It is found that the domain name registered by Respondent is identical to and confusingly similar to a trademark in which the Complainant has rights. The ground is thus made out.

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

Complainant states, “Respondent has held the Infringing Domain for at least one year without creating a website.” Complaint at 7. Therefore, the Panel may find that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent is merely passively holding the domain name and has not sufficiently demonstrated its preparations to use the name. See 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 Respondent made preparations to use the domain name 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 Respondent is not commonly known by the domain name).

Complainant further states, “Respondent is not known by the Infringing Domain and has no relationship with or permission from Complainant for the use of his name or mark.” Complaint at 7.  Therefore, the Panel may find that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply applied for a license or permission from Complainant to use the trademarked name); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant).

Respondent’s position is that it is not in competition in any way with Complainant and asserts it simply wished to create a “blog” to post reviews of DANIEL BOULUD restaurants. However, this argument sits uneasily with the evidence that Complainant has long traded under the mark and is known by and claims rights in the DANIEL BOULUD trademark and name. 

On this basis, it is found that the Respondent has no rights or legitimate interests in the domain name. The ground is thus made out.

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

Complainant asserts that Respondent is passively holding the disputed domain name, which is evidence that Respondent registered and used the domain name in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”).

In response to Complainant’s charge of passive holding, Respondent notes that the law is silent in regard to any time frame in which a domain name registrant is required to create a website at the domain name. Likewise, Respondent notes that “one year is a short period of time to [sic] for one person to conceptualize, create content, design and program a web site.” Response at 4. See Sports Authority Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (noting that holding a domain name for less than a year is normally insufficient to find passive holding).

This is not an area where a “tariff” type approach is appropriate. Each case depends on its facts. Here, there is no evidence to support Respondent’s asserted wish to set up a “blog” or like activity. Complainant has done enough to meet its burden and Respondent has done little to rebut it. Indeed, with the widespread use of relatively simple modern web site development tools it is hard to believe that at least some steps could not have been taken to at least initiate the project within a year.

Complainant further asserts that Respondent registered and used the disputed domain name in bad faith by attempting to piggy-back on the goodwill and brand recognition associated with Complainant’s famous mark and any use of the name would merely confuse consumers. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “[i]t makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

In addition, Complainant points to Respondent’s own statement that Respondent intended to create a “blog” to post reviews of DANIEL BOULUD restaurants in order to establish that Respondent had actual knowledge of Complainant’s rights in the DANIEL BOULUD mark.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”). Actual knowledge of the Complainant’s rights or claim to such rights exists, by Respondent’s own admission, having previously eaten in one of Daniel Boulud’s restuarants.

The Panel may also find that Respondent registered and used the disputed domain name in bad faith because any use of the disputed domain name <danielboulud.com> would lead people to believe that the website was somehow associated with Complainant. See Harrods Ltd. v. Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so obviously connected with well-known products, its very use by someone with no connection to these products can evidence opportunistic bad faith). Here, there is an obvious connection with the Complainant and no satisfactory rebuttal of the Complainant’s assertion that a mistaken association is the likely outcome.

The ground is thus also made out.

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 <danielboulud.com> domain name be TRANSFERRED from Respondent to Complainant.

Clive L Elliott, Panelist
Dated: March 24, 2004

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