WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DFO, Inc. v. Christian Williams
Case No. D2000-0181
1. The Parties
203 East Main Street
Spartanburg, South Carolina 29319
Scott A. Zebrak, Esq.
Venable, Baetjer, Howard & Civiletti, LLP
1201 New York Avenue, N. W.
Washington, D.C. 20005
1917 Teel Avenue
Lansing, Michigan 48910
Respondentís new address is: 685 Constitutions Dr., Apt 4, Palatine, Illinois 60073, USA.
2. The Domain Name and Registrar
The disputed domain name is: <DENNYS.NET>. The registrar for this domain name is Network Solutions Incorporated (NSI), Herndon, Virginia, USA.
3. Procedural History
This domain name dispute is to be decided under the International Corporation for Assigned Names and Numbers (ICANN) Policy and Rules (the Policy and the Rules) and the Supplemental Rules of the World Intellectual Property Organizationís Arbitration and Mediation Center (the Center). The Complaint was filed on March 17, 2000. On March 22, 2000, the Center requested that NSI check and report back on who the registrant was for the domain name <DENNYS.NET>. On March 24, 2000, NSI reported to the Center that the registrant was the Respondent:
1917 Teel Avenue
Lansing, Michigan 48910
On March 27, 2000, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail. Although at one point it appeared Respondent might be in default, on April 18, 2000, the Center received a written Response by courier that had been timely sent. The Administrative Panel submitted a Declaration of Impartiality and Independence on April 28, 2000, and the Center proceeded to appoint the Panel on April 29, 2000.
This Panel agrees that the Center thus far has adhered to the Policy and the Rules in administering this Case.
This Decision is due by May 14, 2000.
4. Factual Background
Complainant is the owner of a service mark , "DENNYíS", which it has used for its family restaurants since the 1950ís, and which it first registered in the United States in 1962. There are now some 2,000 "DENNYíS" family restaurants in forty-nine of the fifty United States and abroad.
Respondent registered the domain name <DENNYS.NET> in early 1998. Respondent used this domain name until January, 1999 to: (a) provide a website where he could post his diary about his frequent trips to his local DENNYíS in Lansing, Michigan; and (b) post letters and comments from other DENNYíS restaurant aficionados. It was, in sum, a kind of chat group website where DENNYíS restaurant habituees could exchange news and views.
At various times during 1998 and 1999 (Complaint Exhibits G, I and J), Complainant contacted Respondent to assert service mark infringement and to attempt to convince him to turn over the domain name to Complainant. Under NSI proceedings before the ICANN Policy and Rules were adopted, NSI placed this domain name on hold on January 22, 1999. The parties never reached an agreement, and Complainant now seeks resolution of the dispute through this Administrative Proceeding pursuant to the Policy and the Rules.
5. Partiesí Contentions
Complainant contends the following:
- Respondentís domain name <DENNYS.NET> is identical or confusingly similar to Complainantís registered service mark "DENNYíS".
- The "DENNYíS" service mark is famous throughout the United States.
- The public will be confused by Respondentís domain name and will believe Respondentís website is affiliated with or sponsored by Complainant.
- Respondent has no rights or legitimate interests in the domain name <DENNYS.NET>.
- Respondent used the domain name to post "vulgar, sexist and racist language" on its website (Complaint p.7 and Exhibit H), which tarnished Complainantís service mark.
- The domain name was registered and is being used in bad faith because, among other things, Respondent had notice of Complainantís service mark when he registered his domain name during 1998.
- Respondent attempted to sell back the domain name to Complainant for financial gain (Complaint p.8).
- Remedy Requested: Complainant requests that the disputed domain name, <DENNYS.NET>, be turned over to Complainant.
6. Respondentís Contentions
- Respondent contends his domain name <DENNYS.NET> is not identical to Complainantís service mark "DENNYíS" because of the apostrophe in the latter which is not found in the former.
- Respondent contends he did have a legitimate interest in the disputed domain name, which interest was creating a website functioning as a chat group for DENNYíS restaurant patrons.
- Respondent contends there could not be confusion between his website and those of DENNYíS restaurants because of the prominent disclaimer he began showing on his website no later than April 7, 1998 (Complaint Exhibit H ).
- Respondent contends he did not register and use the disputed domain name in bad faith because his motive was not money, and because he did not register other domain names in hopes of selling them.
- Finally, Respondent states that, if the domain name <DENNYS.NET> were returned to him, he would no longer use it to run his DENNYíS internet chat group because he no longer has time to frequent DENNYíS restaurants.
7. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <DENNYS.NET> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):
(i) the 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 was registered and is being used in bad faith.
8. Identical or Confusingly Similar
Complainant has provided an exemplary copy of its "DENNYíS" service mark (United States Trademark no. 0740359, Complaint Exhibit C) which was first registered on the principal register in the United States on November 6, 1962 in international category 42 (coffee shops and similar). Complainant also registered a number of related service marks on the United Statesí principal register connected with various international categories of services or products (29, 30 and 32, Complaint Exhibit D). These service marks have been renewed periodically and are currently valid. They are all related to the restauration business and to Complainantís core service mark "DENNYíS".
Respondent contends his domain name <DENNYS.NET> is neither identical nor confusingly similar to Complainantís service mark because of the difference of an apostrophe. We find Respondentís response disingenuous on this point: the public is unlikely to retain in mind the difference of the apostrophe if it sees Respondentís service mark after seeing Complainantís and vice versa. In their documents (Exhibits G, I and J, Complaint p.7, Response p.1), both Respondent and Complainant allude to the public actually having been confused.
This Panel finds that, at a minimum, Respondentís domain name is confusingly similar to Complainantís service mark.
9. Legitimate Rights or Interests
Respondent was not using the disputed domain name <DENNYS.NET> to run a business. Instead, Respondent used this domain name to run a chat group of DENNYíS restaurant habituees.
But even though Respondentís main argument for being able to use the "DENNYíS" service mark is, in effect, a "fair use" argument (the Policy para 4 (c ) (iii)), Respondent did not choose a domain name that made fair use of the DENNYíS service mark to identify his website for what it was, ie, a DENNYíS restaurant chat group with no official affiliation with DENNYíS restaurants. Any number of ways of styling such a fair use domain name come readily to mind.
The Rules 15 (a) allow this Panel to advert to relevant jurisdiction law where this Panel finds it appropriate. Therefore, just as this Panel finds Respondent failed to make a fair and non-infringing use of Complainantís service mark when registering the domain name <DENNYS.NET> , this Panel also finds it appropriate to follow the general United Statesí consensus that a disclaimer such as Respondentís does not remedy Respondentís confusing and therefore infringing use of Complainantís service mark, particularly in view of the fact that the confused public would have been drawn to the <DENNYS.NET> domain name and, only after clicking on that name, would have read the disclaimer:
"This is not the official Dennyís site. But what the hell, it may as well be. I have no connections to Dennyís management (except for my fake Dennyís business card) so donít piss and moan over how your food wasnít cooked all the wayÖ.."
Finally, but not least importantly, Respondent states he no longer frequents Dennyís restaurants and that, if the domain name were returned to him, he would not use it for a Dennyís chat group (Response p.2).
Accordingly, this Panel finds Respondent does not have a right or legitimate interest in the disputed domain name <DENNYS.NET>.
10. Registered and Used in Bad Faith
Complainant has shown that its service mark was registered in 1962 (Complaint Exhibit D). This provided constructive notice to Respondent that the domain name he registered during 1998 was infringing. Moreover, with nearly 2,000 restaurants in the U.S., and with Respondent himself being an assiduous patron of the DENNYís restaurant in Lansing, Michigan, Respondent also had actual notice of Complainantís service mark when he registered his domain name <DENNYS.NET>. The Policy (para 4(b)) states that this Panel is empowered to find bad faith based on evidence additional to that specifically enumerated at para 4(b) of the Policy.
Respondentís registration of the disputed domain name <DENNYíS.NET> with full knowledge the name belonged to Complainant and Respondentís subsequent use of the website to publish sexually explicit language and racial epithets (Complaint Exhibit H) which tarnished Complainantís service mark are to this Panel strong evidence of bad faith.
The evidence on Respondentís attempts to sell the disputed domain name to Complainant for more than he paid for it is unclear but, in view of the already discussed indicia of bad faith, this Panel does not feel the need to delve into Respondentís possible motives for attempting to sell the disputed domain name back to Complainant (Complaint Exhibit I).
This Panel finds the Respondent registered and used the domain name <DENNYS.NET> in bad faith.
This decision is based on the foregoing findings that Respondentís domain name is at a minimum confusingly similar to Complainantís service mark, that Respondent has no legitimate interest in the domain name, and that Respondent registered and was using the domain name in bad faith. Pursuant to ICANN Policy para 4(i) and Rule 15, this Panelís decision is that the disputed domain name, <DENNYS.NET> be transferred from the Respondent, Christian Williams, to the Complainant, DFO, Inc.
Dennis A. Foster
May 14, 2000