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Ruth's Chris Steak House, Inc. v. Texas Internet [2005] GENDND 778 (17 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ruth's Chris Steak House, Inc. v. Texas Internet

Case No. D2005-0292

1. The Parties

The Complainant is Ruth's Chris Steak House, Inc., Metairie, Los Angeles, United States of America represented by Hardy, Carey & Chautin, LLP, United States of America.

The Respondent is Texas Internet, Dallas, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ruthchris.com> is registered with Intercosmos Media Group d/b/a directNIC.com (“directNIC.com”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2005. On March 22, 2005, the Center transmitted by email to directNIC.com a request for registrar verification in connection with the domain name at issue. On March 23, 2005, directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the 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 proceedings commenced on March 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2005.

The Center appointed Andrew Mansfield as the sole panelist in this matter on May 3, 2005. 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.

The Panel has accepted and reviewed further information submitted by Complainant on May 3, 2005, indicating that Respondent is now engaged in a practice called “skip-linking.” The advertisement or information linked to from the disputed domain name periodically changes.

4. Factual Background

Complainant Ruth’s Chris Steak House, Inc. is the owner of the following registered service marks: (1) RUTH’S CHRIS, Federal Registration No. 2374574, issued August 8, 2000; (2) RUTH’S CHRIS STEAK HOUSE, U.S. PRIME, Federal Registration No. 1164124, issued August 4, 1981; and, (3) THE EXPERIENCE RUTH’S CHRIS STEAK HOUSE US PRIME, Federal Registration No. 2868284, issued August 3, 2004.

Complainant operates a website related to the services provided under the above marks at the domain name <ruthschris.com>.

Respondent operates a website at the domain name < ruthchris.com> which is the subject of this proceeding.

5. Parties’ Contentions

A. Complainant

Complainant and its predecessors, affiliates and licensees have adopted and used the marks identified in section 4, above, for more than three decades. Complainant owns, operates and franchises a chain of fine dining steak houses. There are more than eighty Ruth’s Chris Steak House restaurants in the United States, Canada, Mexico, Puerto Rico, Taiwan, and the People’s Republic of China where the RUTH’S CHRIS marks are also registered.

Complainant alleges that the domain name at issue is confusingly similar to Complainant’s marks. The Domain Name consists entirely of the distinctive term “Ruth’s Chris” with the deletion of the characters apostrophe, “s”, and space. Complainant alleges that a casual Internet user might type “www.ruthchris.com” when searching for a website related to Complainant’s services.

Complainant also asserts that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent’s use of the Domain Name is not in connection with a bona fide offering of goods or services. Respondent has never been known by the name “ruthchris”. Respondent is making commercial use of the Domain Name by advertising adult websites.

Complainant alleges that the Domain Name was registered and is being used in bad faith because it constitutes an example of “typosquatting.” Complainant cites several WIPO UDRP panels for the proposition that typosquatting violates the Policy.

In addition to this general assertion, Complainant brings to the attention of this Panel the fact that Respondent has been involved in two prior WIPO UDRP disputes. In both cited examples, Respondent registered slight variations of trademarks and exposed diverted Internet traffic to unsolicited advertising. In both cited examples, the domain name was ordered transferred.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used by the Respondent in bad faith.

The Panel proceeds to deal with each of these elements in turn.

A. Identical or Confusingly Similar

The question of whether “typosquatting” on a famous mark creates a domain name that is confusingly similar to the trademark has been addressed by many WIPO UDRP panels. While the question is always an individual question of fact unique to a particular proceeding, a successful typosquatting effort usually results in a domain name that is confusingly similar to the relevant mark. The typosquatter is driven by the desire to obtain Internet traffic from the mistaken typing of a domain name based on the correct spelling of a trademark.

This Panel takes note of the following from Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713:

“The Panel considers that it should approach each of the domain names and consider whether each is confusingly similar on their face. Whether or not, letters differ between the mark KAZAA and the domain name complained upon is merely part of the test which the Panel has to decide, i.e. is the domain name confusingly similar? The Panel does however agree with the Complainant that confusing similarity must turn “on the similarity of sound, appearance and idea suggested by the mark and the domain name” among other factors. The Panel therefore proceeds to consider confusing similarity on this basis.

The Panel takes into account previous UDRP decisions relating to the practice of “typosquatting” which arises where the domain name is a slight alphabetical variation from a famous mark, e.g. Deutsche Bank AG v. New York TV Tickets Inc., WIPO Case No. D2001-1314, and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201. In these cases the Panel has found the circumstances of “typosquatting” to constitute confusing similarity.”

There is a high degree of similarity between “ruthchris” and RUTH’S CHRIS. The difference between the Domain Name and the mark is only a slight alphabetical variation.

The Panel finds that the domain name is confusingly similar to the trademark RUTH’S CHRIS in which Complainant has rights.

B. Rights or Legitimate Interests

The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Respondent filed no response in this matter. The Panel is unable to discern any rights or legitimate interests that Respondent has in “ruthchris”.

Based on the case file, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Respondent used the Domain Name to advertise adult websites. Respondent also has a history documented in other WIPO UDRP Panel decisions of engaging in typosquatting. See BellSouth Intellectual Property Corporation v. Texas Internet, WIPO Case No. D2002-0559, and UPIB, Inc. v. Texas Internet, WIPO Case No. D2004-0073.

The only apparent reason for the registration of the disputed domain name was its confusing similarity to the RUTH’S CHRIS mark. Respondent then apparently profited from misdirecting Internet users to advertisements for adult websites. The Panel concludes that Respondent registered and is using the domain name in question in bad faith.

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 <ruthchris.com> be transferred to the Complainant.

Andrew Mansfield
Sole Panelist

Dated: May 17, 2005