WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Birinyi Associates, Inc. v. Convert

Case No. D2001-0395

 

1. The Parties

The Complainant is Birinyi Associates, Inc., a private company, with its principal place of business in Westport, Connecticut 06881, United States of America ("Complainant"). The Complainant is represented by Sandra Edelman and Marc S. Reiner of Dorsey & Whitney, LLP of 250 Park Avenue, New York, New York 10177, United States of America.

The Respondent is Convert, an entity with a mailing address of 24 Richmond Hill Avenue, Suite 420, Stamford, Connecticut 06901, United States of America ("Respondent"). The administrative contact for Respondent is Steve Seefeld of 14 Duck Pond Road, East Norwalk, Connecticut 06855, United States of America. His e-mail address is <postmaster@convertbond.com>.

 

2. The Domain Name and Registrar

The disputed domain name is <birinyi.com> (the "Disputed Domain Name"), registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America (the "Registrar").

 

3. Procedural History

Complainant filed a complaint (the "Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 19, 2001.

The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

A Request for Registrar Verification was issued by the Center to the Registrar on March 23, 2001, and a response by the Registrar was received by the Center on March 28, 2001.

A Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was communicated by the Center to the Respondent by e-mail, facsimile, and courier on March 29, 2001. The Panel has seen the courier receipt and is satisfied that the delivery of the Commencement Notification is in conformity with the relevant requirements under Paragraph 2 and Paragraph 4 of the Uniform Rules and the relevant provisions of the Supplemental Rules.

No Response was received by the Center from Respondent on or before April 17, 2001, which was the last date for Respondent to submit a Response under Paragraph 5 of the Uniform Rules and the relevant provisions of the Commencement Notification. A Notification of Respondent Default (the "Default Notification") was communicated by the Center to Respondent by e-mail on April 25, 2001. The Panel is satisfied that the Default Notification was effectively delivered to Respondent as required by relevant provisions of the Uniform Rules and the Supplemental Rules.

Complainant has elected to designate a single-member Administrative Panel in accordance with Paragraph 3(b)(iv) of the Uniform Rules. By failing to submit a Response on time, Respondent waived the right to designate a three-member Administrative Panel under Paragraph 5(b)(iv) of the Uniform Rules. Based on a Statement of Acceptance and Declaration of Impartiality and Independence, duly signed by the Panelist and dated May 21, 2001, the Administrative Panel (the "Panel") was duly appointed by the Center on June 6, 2001. A Notification of Appointment of Administrative Panel and Projected Decision Date was communicated by the Center to both Complainant and Respondent on June 6, 2001. There have been no further submissions thereafter. The date scheduled for the issuance of the Panelís decision is June 20, 2001.

 

4. Factual Background

Under Paragraph 5(e) of the Uniform Rules, "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the complaint."

Since Respondent failed to submit a Response before the date of this decision, and in the absence of any exceptional circumstances, the Panel adopts here the following asserted facts in the Complaint as undisputed facts, and decides the dispute between Complainant and Respondent based on the following undisputed facts:

(i) Complainant is a research and money management firm founded in 1989. Complainant began offering financial research services under the BIRINYI service mark in 1989 and money management services under the Birinyi service mark in 1993. Complainant currently offers three main areas of financial related services under the BIRINYI trademark.

(ii) Complainant registered and owns the following trademark registration:

United States Trademark Registration No. 2,412,151, dated December 12, 2000, for the mark BIRINYI for financial services, namely, investment advice, financial and money management and financial research, in International Class 36, with a first use in commerce date of July 25, 1989.

(iii) Complainant owns and operates the domain name <lbirinyi.com>, which provides access to a website providing financial information and services to users of the website.

(iv) The administrative contact for Respondent, Mr. Steven Seefeld, manages a hedge fund that seeks investment funds from high net worth individuals and institutional investors. Mr. Seefeld is well acquainted with Complainant and its founder, Mr. Laszlo Birinyi.

(v) Respondent registered the Disputed Domain Name on October 5, 1998, shortly after a quarrel between Mr. Seefeld and Mr. Birinyi regarding Complainantís employment of one of Mr. Seefeldís former employees. Respondent had at one time offered to transfer the Disputed Domain Name to Complainant, but the negotiation broke down because the price asked by Respondent was unacceptable to Complainant. Respondent gave no response to Complainantís further request to transfer the Disputed Domain Name.

 

5. Partiesí Contentions

Complainant asserts:

(i) The Disputed Domain Name is identical or confusingly similar to Complainantís name and registered trademark. The commercial impression conveyed by Respondentís Disputed Domain Name and Complainantís name and trademark are one and the same. Accordingly, Respondentís chosen domain name suggests a false sense of origin or sponsorship for any associated goods and services, and was chosen by Respondent to take a free ride on the goodwill associated with Complainantís name and distinguished trademark.

(ii) Respondent does not demonstrate any legitimate interests in the Disputed Domain Name. Respondent has not used or made any demonstrable preparations to use the Disputed Domain Name, or a name corresponding to the Disputed Domain Name, in connection with a bona fide offering of goods or services. Respondent does not make a legitimate noncommercial or fair use of the Disputed Domain Name. The BIRINYI trademark is distinctive and unique to Complainant, and Complainant has never authorized Respondent to use the trademark in any manner.

(iii) The Disputed Domain Name has been registered and is used by Respondent in bad faith. Respondentís registration of the Disputed Domain Name is an attempt to capitalize unfairly on the fame and goodwill of Complainantís name and trademark. Under Paragraph 4(b) of the Uniform Policy, Respondentís bad faith in using the Disputed Domain Name should be easily established.

Pursuant to Paragraph 5(e) of the Uniform Rules, in the absence of a Response from the Respondent, "the Panel shall decide the dispute based on the complaint." The Panel will independently determine the merits of the Complaint on the basis of all evidences available.

 

6. Discussion and Findings

The Disputed Domain Name is identical to the trademark in which Complainant has rights.

The Disputed Domain Name is identical to Complainantís registered trademark.

Even though the Complainant has asserted that the trademark is distinctive and popular, there is no other evidence to lead the Panel to regard Complainantís trademark as a famous mark. Therefore, the Panel does not consider in this decision the question whether there is any dilution to Complainantís trademark caused by Respondentís registration and use of the Disputed Domain Name.

Nevertheless, the Panel finds that Complainant has proved that the Disputed Domain Name is identical to Complainantís trademark under Paragraph 4(a)(i) of the Uniform Policy.

Respondent has no rights or legitimate interests in respect to the Disputed Domain Name.

Except for having registered and maintained the Disputed Domain Name, there is no evidence to suggest Respondent has ever used, or demonstrated preparations to use, the Disputed Domain Name, or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods and services. There is no evidence that Respondent has been commonly known by the Disputed Domain Name. There is also no evidence that Respondent is making or intends to make a legitimate non-commercial or fair use of the Disputed Domain Name.

Based on the above, the Panel concludes that Respondent fails the tests set out in Paragraph 4(c) of the Uniform Policy and cannot claim rights or a legitimate interests in the Disputed Domain Name thereunder.

The Panel notices that Respondent appeared to only intend to use the Disputed Domain Name to transfer the domain name registration to Complainant in return for a price unacceptable to Complainant. This intended use of the Disputed Domain Name is not a honest commercial practice on Respondentís behalf and cannot prove that Respondent has acquired rights or legitimate interests in the Disputed Domain Name. In fact, the offering of a domain name for sale to the owner of a trademark that is identical to or confusingly similar to the domain name for more than the cost to register and possibly maintain that domain name is evidence of bad faith.

The Panel therefore concludes that Complainant has proved that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name under Paragraph 4(a)(ii) of the Uniform Policy.

The Disputed Domain Name has been registered and is being used in bad faith.

There is no evidence to challenge Complainantís assertion that the Disputed Domain Name was registered by Respondent shortly after an oral dispute between Complainant and Respondent, and that at one time Respondent had tried to sell the Disputed Domain Name to Complainant for a price unacceptable to Complainant.

Under Paragraph 4(b)(i) of the Uniform Policy, in the absence of any evidence that Respondent has ever used, or intended to use, the Disputed Domain Name for any legitimate purposes, the Panel finds that Respondent has registered the Disputed Domain Name primarily for the purpose of selling the domain name registration to Complainant for more than the cost of registering and maintaining the domain name.

However, the Panel finds untenable Complainantís contention that, under Paragraph 4(b)(iii) of the Uniform Policy, Respondent registered the Disputed Domain Name primarily for the purpose of disrupting Complainantís business. Although potentially a direct competitor of Complainantís, there is no evidence that Respondent intended to or has disrupted Complainantís business by registering the Disputed Domain Name. There is also no evidence that Respondent has used or intends to use the Disputed Domain Name to engage in any activities, which directly or indirectly disrupt Complainantís business.

Although not specifically asserted by Complainant as a factor in finding Respondentís bad faith, under Paragraph 4(b)(ii) of the Uniform Policy Complainantís asserted facts prove that Respondent registered the Disputed Domain Name in order to prevent Complainant from reflecting its trademark in a corresponding domain name. The Panel notices that the domain name currently used by Complainant for its commercial website is <lbirinyi.com>, which does not reflect Complainantís trademark, but the personal name of its founder, Mr. L. Birinyi. The direct effect of Respondentís registration of the Disputed Domain Name is to prevent Complainant from using the Disputed Domain Name to exactly reflect Complainantís trademark.

The Panel therefore finds that Complainant has proved Respondentís bad faith in registering and using the Disputed Domain Name under Paragraph 4(a) of the Uniform Policy.

Having reached the above conclusion, the Panel finds that it is unnecessary to consider Complainantís further contention that Respondentís bad faith in registering and using the Disputed Domain Name can also be established by factors not elaborated in Paragraph 4(b) of the Uniform Policy.

 

7. Decision

In light of the foregoing, the Panel hereby determines that the Disputed Domain Name is identical or confusingly similar to the trademark of Complainant, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name has been registered and is being used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Uniform Policy, the Panel hereby orders that the Disputed Domain Name <birinyi.com> be transferred to Complainant.

 


 

Timothy D. Casey
Panelist

Dated: June 20, 2001