WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dinosaur Restaurants L.L.C. v. Eighty Business Names

Case No. D2010-1421

1. The Parties

The Complainant is Dinosaur Restaurants L.L.C. of New York, New York, United States of America, represented by Hiscock & Barclay LLP, United States of America.

The Respondent is Eighty Business Names of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <dinobbq.com> is registered with Rebel.com Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2010. On August 24, 2010, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed domain name. On August 24, 2010, Rebel.com Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on August 25, 2010.

The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2010.

The Center appointed James Bridgeman as the sole panelist in this matter on September 22, 2010. 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.

4. Factual Background

While in the absence of a Response or other communication from the Respondent there are no uncontested facts as such, on the balance of probabilities, this Panel makes the following findings of fact relating to the registration of disputed domain name and the rights relied upon by the Complainant:

The Complainant is the owner of trademark registrations in a number of jurisdictions throughout the world including the United States of America, Canada, Australia, and the European Union for the trademarks DINOSAUR and DINOSAUR BAR-B-QUE in connection with its restaurant and food sales business.

In the United States of America, the Complainant’s trademark registrations for the DINOSAUR BAR-B-QUE and DINOSAUR marks include:

Federal Registration No. 2,288,066, dated October 19, 1999, in Class 30;

Federal Registration No. 2,359,586, dated June 20, 2000, in Class 30;

Federal Registration No. 3,018,007, dated November 22, 2005, in Class 30; and

Federal Registration No. 3,075,881, dated April 4, 2006, in Classes 25, 29 and 43.

In Canada, where the registrar is located, the Complainant filed Canadian Trademark Application No. 1442473 for DINOSAUR BAR-B-QUE (and Design) on June 23, 2009, which was advertised in the Canadian Trade-Marks Journal on June 23, 2010. This was subsequent to the registration of the disputed domain name <dinobbq.com> on May 5, 2004.

The Complainant also owns the following domain names: <dinosaurbarbque.com>, <dinosaurbarbq.com>, <dinosaurbar-b-que.com>, <dinosaurbarbecue.com> and <dinosaurbbq.com>.

The Complainant registered the domain name <dinosaurbarbque.com> in 1998 and the Complainant established an active website at that address in April of 1999.

5. Parties’ Contentions

A. Complainant

The Complainant requests that this Panel issue a decision that the domain name <dinobbq.com> be transferred to the Complainant.

The Complainant submits that its business was started in 1983 by a group of motorcycle enthusiasts travelling to various fairs, festivals and motorcycle events across the United States of America selling barbecued meats and prepared accompaniments for patrons of the events. After building a substantial reputation in the business they established a restaurant in Syracuse, New York in 1990 under the name the Dinosaur Bar-B-Que.

The Complainant has provided evidence that after having significant success with the first restaurant, a second restaurant was opened in Rochester, New York in April 1998, and a third location was opened in New York, New York in December 2004. The Complainant now operates a world-wide business, primarily by selling its flavored sauces through a network of authorized distributors in various countries, including the United States, Germany, the Netherlands, Japan, Taiwan, Province of China and Canada.

Based on the reputation and success of the business, The Complainant has received significant media attention in the United States of America as a result of its success and the Complainant has furnished evidence of some of the media coverage to demonstrate the extent of the reputation and goodwill that it has established.

The Complainant submits that it also promotes its restaurant and catering services, branded sauces and merchandise through its online store. The Complainant refers to its portfolio of domain names described above and has submitted as an annex to the Complaint printouts of search results from “www.archive.org” to demonstrate that it has an established presence on the Internet since April 1999. The Complainant explains that some of the listed domain names were recently acquired as a result of enforcement of the Complainant’s trademarks rights.

The Complainant submits that it has for many years sold and continues to sell its DINOSAUR BAR-B-QUE brand products through its website, restaurants and a network of authorized distributors and resellers. Printouts from “www.archive.org” from 1999-2004 showing examples of the Complainant's advertisements of services and online sales promotions have been submitted as an annex to the Complaint.

The Complainant spends significant time and money on advertising its products and services resulting in the Complainant developing and obtaining significant goodwill in and to the DINOSAUR, DINOSAUR BAR-B-QUE, and DINO BBQ trademarks. In the year 2009, The Complainant spent over USD 156,000.-- in the United States of America in advertising its DINOSAUR and DINOSAUR BAR-B-QUE brand products and services. Examples of use and promotion of the Complainant’s DINOSAUR and DINOSAUR BAR-B-QUE brand products and services have been furnished to the Panel as an annex to the Complaint.

The Complainant refers to its above trademark registrations in support of its claim to ownership of rights in the trademarks DINOSAUR and DINOSAUR BAR-B-QUE.

The Complainant submits that since at least as early as 1999, and continuously thereafter, it has used the term the “dino” to refer to the business and restaurant. The Complainant states that it also uses the word “dino” on its storefront and has furnished the Panel with printouts from the Complainant’s website from 1999-2010 showing use of the term “dino” in relation to its business. The Complainant asks the Panel to note that the term the “dino” is commonly known as an abbreviation of the term “dinosaur” and has provided a dictionary definition in support of this assertion in an annex to the Complaint.

The Complainant states that it also often abbreviates the term BAR-B-QUE within its trademark to BBQ and has submitted evidence showing use of the letters BBQ as an abbreviation in an annex to the Complaint. Additionally, the Complainant submits that the terms “barbeque” and “bar-b-que” are commonly abbreviated as “BBQ” within American vernacular and has submitted a dictionary definition for the term “BBQ” in support of this assertion in an annex to the Complaint.

The Complainant submits that abbreviations of a trademark can be protected under trademark law, citing J. Thomas McCarthy, McCarthy On Trademarks And Unfair Competition? §7:18 (4th ed. 2009) citing “HO-JO” as a recognized and protectable abbreviation of the HOWARD JOHNSON mark. The Complainant also refers to the decision of the panel in Credit Suisse Group v. Credit Suisse Group, WIPO Case No. D2005-0213. The Complainant has demonstrated that the public has and continues to identify its business by the name DINO BBQ and submits that the abbreviated term acts as a source identifier originating solely with the Complainant. The Complainant submits that it has therefore established common law trademark rights in the United States of America in the DINO BBQ mark.

The Complainant submits that the disputed domain name <dinobbq.com> is confusingly similar to the Complainant’s DINOSAUR, DINOSAUR BAR-B-QUE and DINO BBQ trademarks.

The Complainant submits that in evaluating the similarities of trademarks in domain name disputes the “.com” gTLD extension of the disputed domain names must be disregarded when comparing a domain name with a trademark to determine whether the marks are identical or confusingly similar.

The Complainant submits that in previous decisions under the Policy, panels have held that abbreviations, regardless of whether there are trademark rights to such abbreviations, can be confusingly similar to the unabbreviated trademark: citing Research In Motion Limited v. Fred Potter / Berrystore / Mill River Labs, WIPO Case No. D2009-0370; Swinburne University of Technology v. Swinner a/k/a Benjamin Robert Goodfellow, WIPO Case No. DAU2004-0003 and Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656. The Complainant has set forth above that DINO BBQ is an abbreviation of its registered trademark DINOSAUR BAR-B-QUE citing the decision of the panel in K2r Produkte AG v. Jeremie Trigano, WIPO Case No. D2000-0622.

Furthermore, the Complainant submits that it is well-established that abbreviations of trademarks and publicly-created nicknames are entitled to individual protection, citing J. Thomas McCarthy, McCarthy On Trademarks And Unfair Competition, §7:18 (41th ed. 2009).

Additionally, the Complainant submits that abbreviations of a registered trademark in a disputed domain name have been held to be confusingly similar to registered trademarks thereby, resulting in transfer of such domain names to the complaining party: citing Research In Motion Limited v. Fred Potter / Berrystore / Mill River Labs, WIPO Case No. D2009-0370; Swinburne University of Technology v. Swinner a/k/a Benjamin Robert Goodfellow, WIPO Case No. DAU2004-0003 and Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656.

The Complaint submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asks this Panel to note that the Respondent registered the disputed domain name on May 5, 2004, and that the date of registration was well after (a) the dates on which the Complainant’s first used the trademarks DINOSAUR, DINOSAUR BAR-B-QUE and DINO BBQ; (b) the dates of registration of the Complainant’s DINOSAUR and DINOSAUR BAR-B-QUE trademarks in the United States of America: and (c) the registration date and date of first use by the Complainant of the domain name <dinosaurbarbque.com>.

The Complainant submits that DINOSAUR, DINOSAUR BAR-B-QUE, and DINO BBQ are each coined trademarks, and which have not been abandoned.

The Complainant states that it has not licensed, permitted, or otherwise authorized the Respondent or any third party to use or register the term DINO BBQ as a domain name, trade name, service mark or other trade symbol. In fact, the Complainant has never authorized any third party to use or register any domain or trademark on its behalf in any country or territory, thereby retaining sole control and ownership of its trademarks and goods and services sold and provided thereunder.

Additionally, the Complainant submits that the disputed domain name <dinobbq.com> is not a nominative or descriptive use of the Complainant’s trademarks. Moreover, the disputed domain name is not the personal name of the Respondent, as the domain name is owned by a corporate entity with a different name.

The Complainant submits that upon information and belief, the Respondent owns no trademark or service mark registrations for DINOSAUR, DINOSAUR BAR-B-QUE, DINO BBQ or any similar term in any country or territory. The Complainant further submits that the Respondent does not display a trademark registration notice next to the word DINO BBQ on its website, nor does it appear to make any legitimate trademark usage of the term the DINO BBQ. In support of this assertion the Complainant refers to printouts of the Respondent’s webpage provided an annex to the Complaint.

The Complainant submits that rather than having any pre-existing rights or legitimate interest in the words DINO BBQ, the Respondent has deliberately adopted a trading symbol which is identical and confusingly similar to the Complainant’s unique trademark, and which will cause worldwide confusion among persons who visit the Respondent’s website with the expectation that it is operated by, sponsored by, or otherwise associated with the Complainant. The Complainant submits that the Respondent’s prominent use of the word the DINO BBQ in the disputed domain name constitutes infringement of the Complainant’s DINOSAUR, DINOSAUR BAR-B-QUE and DINO BBQ marks. The Complainant submits that the Respondent is not making fair use of said trademarks. The Complainant submits that the Respondent’s bad faith registration and use of the disputed domain name does not establish rights or legitimate interests in the names: citing the decision of the panel in N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387.

The Complainant submits that the disputed domain name was registered and is being used in bad faith.

The Complainant asks this Panel to note that it originally registered its the DINOSAUR and DINOSAUR BAR-B-QUE marks in the United States of America in 1999 and 2000, respectively, claiming use in interstate commerce at least as early as January, 1999, and the disputed domain name was subsequently registered only in 2004 without the consent, license or authorization of the Complainant.

The Complainant submits that it has never acquiesced expressly or impliedly, in the use or registration of the disputed domain name by the Respondent.

The Complainant submits that the Respondent registered the disputed domain name with constructive notice of the Complainant’s aforementioned U.S. trademark registrations of the DINOSAUR and DINOSAUR BAR-B-QUE registrations: citing 15 U.S.C. § 1072.

The Complainant further submits that the disputed domain name was registered after the Complainant had established an Internet presence with the website established at the <dinosaurbarbque.com> domain name. The Complainant argues that it is accordingly highly unlikely that the Respondent had no actual and/or constructive knowledge of the Complainant’s DINOSAUR, DINOSAUR BAR-B-QUE and DINO BBQ marks all of which appear on the Complainant’s website.

The Complainant argues that bad faith has been found where a respondent knew or should have known of the registration and use of the copied trademark prior to registering the domain name: citing SportSoft Golf, Inc. v. Hale Irwin's Golfers' Passport, NAF Case No. FA94956 in which Complainant holds was reasoned that a business person must be presumed to have knowledge of the existence of the Trade Mark Register of his own country, and, as a prudent businessperson, should make a search of such register before embarking on a business endeavor involving a domain name.

The Complainant submits that it is clear that the Respondent failed to undertake any effort to search whether or not the term the DINO BBQ infringed upon the rights of any third party prior to registering the disputed domain name.

The Complainant argues that such a simple search would have disclosed the Complainant’s DINOSAUR and DINOSAUR BAR-B-QUE trademark registrations. Moreover, even a basic Internet search would have disclosed that DINO BBQ is used by and associated with the Complainant, printouts of searches from Internet search engines, showing searches for “DINO BBQ” yield the Complainant’s website as the top result. In support of this argument search examples have been provided as annex to the Complaint.

The Complainant submits that the Respondent’s use of the disputed domain name is nothing more than an effort to divert traffic from the Complainant’s website.

The website to which the disputed domain name resolves provides click-through advertisements for barbeque sauces, restaurants, catering services, grills, cookbooks, etc., which are identical, if not related to the goods and services identified by the Complainant in its above trademark registrations. In this regard the Complainant refers to print outs of the Respondent’s website furnished with the Complaint. The Complainant argues that the printouts from the Respondent’s site show that the Respondent’s use and registration of the disputed domain name is meant to obtain and divert traffic for its own commercial gain. The Complainant further complains that the Respondent’s website further fails to use any disclaimers on the website or otherwise advise the public that it is not affiliated with or sponsored by the Complainant. The home page also includes linked phrases such as: Dinosaur Eggs, Walking with Dinosaurs, Dinosaur Skeletons, Culinary School, etc. The Complainant states that it is not involved in these businesses, and the connection to these businesses will tarnish the pre-existing goodwill of the Complainant in its trademarks. Clicking on any of the linked phrases in the Respondent’s website brings the user to other pages featuring links to retailers or service providers of the linked phrase, none of which are related to or used in a manner to direct consumers back to the Complainant.

The Complainant submits that the Respondent is using the Complainant’s trademark to draw confused Internet searchers to these retail websites for non-DINOSAUR BAR-B-QUE, branded products and services, in a the bait and switch operation.

The Complainant submits that the Respondent’s use of DINO BBQ in the disputed domain name also prevents the Complainant from reflecting its DINO BBQ trademark in the domain.

The Complainant submits that the Respondent’s actions are disruptive of the Complainant’s business activities on the World Wide Web because it is prevented from selling its products online through websites with the “.com” Internet address that is best suited to identify its online business. Also, the words “DINO BBQ” are a term most likely to be inputted into a search engine by members of the public who seek to buy the Complainant’s DINOSAUR sauces and other merchandise from the Complainant’s online store, as well as seeking information on the Complainant’s restaurant and catering services.

The Complainant argues that the Respondent’s use of the disputed domain name <dinobbq.com> to lead the public to websites selling non-DINOSAUR BAR-B-QUE branded products constitutes an intentional attempt to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and goods.

The Complainant states that on April 29, 2010, the Complainant provided the Respondent with actual notice of the Complainant’s trademark rights and requested that it cease and desist from engaging in such activity. The Respondent failed to take any action to cease use of the disputed domain name or transfer the infringing domain name to the Complainant. After several attempts to follow up and otherwise contact the Respondent, to no avail, the Complainant had no choice but to institute the current proceedings against the Respondent. Copies of the Complainant’s letters requesting transfer of the disputed domain name to the Complainant are provided in an annex to the Complaint.

Moreover, the Complainant submits that the Respondent has had a history of registering domain names in bad faith, requiring transfers of such domain names: citing the decisions of the panels in Russell Frey d/b/a edHelper v. Eighty Business Names c/o Domain Administrator, NAF Case No. FA1293862 and BAB, Inc. v. Eighty Business Names, WIPO Case No. D2010-0478.

The Complainant concludes by arguing that considering the prior use and registration of the DINOSAUR and DINOSAUR BAR-B-QUE trademarks and the prior registration of the <dinosaurbarbque.com> domain name, it is inconceivable that the Respondent could make any prominent use of the term DINO BBQ in a domain name without creating a false impression of association with the Complainant and its business: citing St. Baldrick's Foundation Inc. v. Wan-Fu China, Ltd., WIPO Case No. D2007-0705. Any such use of such a domain name would be in bad faith because the Respondent would be trading on the goodwill of one of the Complainant’s trademarks for nothing more than commercial gain via click through sites, which has been held as use in bad fait. Id. The U.S. Federal Court of Appeals for the Ninth Circuit has held that the use of another’s trademark in a domain name that causes initial interest confusion constitutes trademark infringement. Brookfield Comm. Inc, v. West Coast Entert. Corp., 174 F.3d 1036 (9th Cir. 1999).

In casu, the Respondent did not innocently adopt the subject domain name, but rather it intentionally chose a domain name which would trade on the established goodwill of the Complainant’s DINOSAUR, DINOSAUR BAR-B-QUE, and DINO BBQ trademarks, and the Respondent continues to so use the disputed domain name to the present day. Moreover the Complainant argues that the Respondent has a history of registering domain names in bad faith and failed to take any action once it was placed on formal notice of its infringement of the Complainant’s trademark rights. The Respondent’s conduct with respect to the disputed domain name violates the Policy, and Section 43(d) of the U.S. Trademark Act, 15 U.S.C. §1125(d), the Anticybersquatting Consumer Protection Act, in that the Respondent has a bad faith intent to profit from the Complainant’s aforementioned trademarks and the Respondent registers, traffics in or uses a domain name that is identical or confusingly similar to the Complainant’s aforementioned trademark.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in respect of each of the disputed domain names to obtain an order that a domain name should be cancelled or transferred:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

On the evidence submitted, this Panel finds that the Complainant has established rights in the DINOSAUR and DINOSAUR BAR-B-QUE trademarks though it’s above referenced trademark registrations and at common law through use in commerce as claimed. The Complainant has also established common law rights in the DINO BBQ mark through use in commerce in the United States of America.

In making the comparison the “.com” gTLD extension may be ignored in each case. The word “dino” is a commonplace abbreviation of the word “dinosaur” and the letters “BBQ” are commonplace abbreviations of the word “barbeque” often spelt “bar-b-que”.

This Panel finds that the disputed domain name <dinobbq.com> is identical to the Complainant’s common law DINO BBQ mark and confusingly similar to each of the Complainant’s DINOSAUR and DINOSAUR BAR-B-QUE trademarks.

The Complainant has therefore satisfied the first element of the test in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name.

On unchallenged evidence the Complainant has asserted that it has rights in the above trademarks and has not licensed, permitted, or otherwise authorized the Respondent or any third party to use or register DINO BBQ as a domain name, trade name, service mark or other trade symbol.

There is no evidence or indication that the Respondent has ever used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The manner in which the Respondent has been using the disputed domain name does not constitute a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy. There is no indication that the Respondent, as an individual, business, or other organization has been commonly known by the domain name and the use to which the Respondent is putting the disputed domain name is clearly for commercial gain as distinct from a noncommercial use as contemplated by paragraph 4(c)(iii) of the Policy.

It is well established under the Policy that once a complainant has made out a prima facie case that a respondent has no rights or legitimate interest in a domain name, the onus of proof under the second element of the test in paragraph 4(a) of the Policy shifts to the respondent.

In casu the Respondent has failed to discharge the burden of proof imposed by paragraph 4(a) of the Policy. This Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name and the Complainant has succeeded in the second element of the test in paragraph 4(a) (ii) of the Policy.

C. Registered and Used in Bad Faith

Ignoring the gTLD “.com” extension, the disputed domain name consists of either a string of meaningless letters or two separate elements having a meaning separately and in combination: viz. the word “dino” being an abbreviation for the word “dinosaur” and the letters “bbq” being an abbreviation for the word “barbeque”. The word “barbeque” in turn is commonly more fancifully spelt “bar-b-que” as well as being represented commonly by the letters “bbq” as in this case.

The combination of the words “dinosaur” or “dino” and “barbeque” or “bar-b-que” or “bbq” as adopted by the Complainants as its trademark and service mark is unique and distinctive. It is highly unlikely that the combination was chosen by the registrant of the disputed domain name by chance.

This Panel finds on the balance of probabilities that the disputed domain name was chosen and registered because of its reference specifically to the Complainant’s trademarks, business and goodwill and because of its similarity in concept to the domain name <dinosaurbarbque.com> which resolves to the Complainant’s website.

This Panel finds that the disputed domain name was registered in bad faith in order to take predatory advantage of the Complainant’s rights and goodwill by attempting to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and goods.

On the evidence before this Panel, the Respondent is continuing to use the disputed domain name as the address of a website containing links which, on the balance of probabilities, are providing click through revenue for the Respondent. In doing so the Respondent is therefore taking unfair and bad faith advantage of the Complainant’s goodwill and reputation in what the Complainant aptly describes as a “bait and switch operation”.

For completeness the jurisdiction of this Panel is limited to making a determination under the Policy and this Panel has no jurisdiction to determine the Complainant’s allegations that the Respondent violated Section 43(d) of the U.S. Trademark Act, 15 U.S.C. §1125(d) and the Anticybersquatting Consumer Protection Act.

This Panel finds that on the balance of probabilities the disputed domain name was registered and is being used in bad faith and the Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a)(iii) of the Policy and is entitled to succeed in its application.

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 disputed domain name <dinobbq.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: October 3, 2010