WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paschals’ Concessions, Inc. v. Solutions Networks
Case No. D2012-2105
1. The Parties
The Complainant is Paschals’ Concessions, Inc. of Atlanta, Georgia, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Solutions Networks of Stockbridge, Georgia, United States of America, represented by LaTonya M. Paschal.
2. The Domain Names and Registrar
The disputed domain names: <paschalbrothersrestaurant.com>, <paschals-atlanta.com>, <paschals.com>, <paschalsfoods.com>, <paschalsrestaurantatcastleberryhill.com>, <paschalsrestaurant.com>, <paschalsrestaurant.net>, <paschalsrestaurants.com> and <thepaschalrestaurantgroup.com> are registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2012. On October 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 23, 2012 and November 1, 2012, the Registrar 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 disputed domain names. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 31, 2012.
The Center verified that the Complaint together with the amendment to the 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 November 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2012. The Response was filed with the Center on November 22, 2012.
The Center appointed William R. Towns as the sole panelist in this matter on December 3, 2012. 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 Complainant filed with the Center on December 6, 2012, an unsolicited supplemental submission. The Panel determined to accept the Complainant’s supplemental submission, and provided the Respondent an opportunity to reply on or before December 18, 2012. The Respondent submitted a reply on December 18, 2012. In view of the supplemental submissions of the Parties, the date for the Panel’s decision to be forwarded to the Center was extended to December 29, 2012.
4. Factual Background
The Complainant is the owner and operator of the Paschal’s Restaurant in Atlanta, Georgia, and holds a United States trademark registration for PASCHAL’S for restaurant services. The Registration was issued by the United States Patent and Trademark Office (USPTO) on August 27, 2002. The Complainant also is the holder of a federally registered design mark in the form of a stylized “P” for restaurant services, issued by the USPTO on September 14, 2004:
The registration certificates for both marks reflect the Complainant’s use of the marks in commerce since 1979. The Complainant was formed in 1979 by the founders of the Paschal’s Restaurant, the brothers James and Robert Paschal. Since that time the Complainant has held all rights and title to the Paschal’s restaurant business.1
Paschal’s Restaurant has a storied history. The first Paschal’s, a luncheonette, was opened by the Paschal brothers in 1947, serving fried chicken and southern food. In 1957 the brothers expanded, opening a full-service Paschal’s restaurant nearby, which also included a jazz lounge and motor lodge. The Paschal’s Restaurant and Motor Lodge (hereinafter the “original Paschal’s”) received national attention during the civil rights movement of the 1960s, and became a popular dining spot graced by celebrities, entertainers and other public figures. The original Paschal’s Restaurant eventually closed its doors in 1996, shortly before Robert Paschal’s death in 1997. Before that closing, the Complainant in a joint venture with Dobbs House, Inc. had opened two food concessions at the Atlanta airport. Then, in 2002, the Complainant in a joint venture with Paschal’s Restaurant, LLC,2 opened Paschal’s Restaurant and La Carousel (hereinafter the “Paschal’s Restaurant”) in the Castleberry Hill area of Atlanta, within walking distance of the original Paschal’s. The Complainant maintains a website at “www.paschalsatlanta.com” to promote restaurant events and includes a link where customers can make online dining reservations and reserve banquet facilities.
The Respondent Solution Networks appears to be a sole proprietorship owned by Curtis Paschal, the son of the late James Paschal. The term “Respondent” is used interchangeably herein when referring to Curtis Paschal and Solutions Networks. According to the Response, Curtis Paschal was employed directly by the Complainant from 1979 to 2008, and also provided Internet, web design and web hosting services to the Complainant (apparently through Solutions Networks). The Complainant terminated the Respondent’s services in 2008, shortly after the death of James Paschal. While employed by the Complainant, the Respondent registered or acquired seven (7) of the disputed domain names: <paschals.com> (created May 27, 1998); <paschalsrestaurant.com> (created May 22, 2002); <paschalsrestaurantatcastleberryhill.com> (May 22, 2002); <paschalsfoods.com> (April 23, 2003); <paschalsrestaurant.net> (December 12, 2002); <thepaschalrestaurantgroup.com> (August 31, 2006); <paschals-atlanta.com> (May 19, 2007). Two of the disputed domain names, <paschalsrestaurants.com> (September 4, 2009) and <paschalbrothersrestaurant.com> (June 29, 2010), were registered by the Respondent following his separation from the Complainant.
The Complainant in March 2006 brought a civil action in a Georgia state court in which a temporary restraining order was issued regarding the Respondent’s use of the disputed domain name <paschalsrestaurant.net>. The subject domain name had been registered in 2002 by the general manager of Paschal’s Restaurant, and used with the restaurant’s website at “www.paschalsrestaurant.net”. It appears that the Respondent manipulated the transfer of this domain name in February 2006, and redirected the domain name to a webpage on which the Respondent posted a notice that Paschal’s Restaurant had been “closed” due to mismanagement, diversion of profits, “overpriced tasteless food”, and “pathetic music”, among other purported shortcomings. The lawsuit was voluntarily dismissed by the Complainant after the Respondent removed the content from the website.
The Respondent is using the disputed domain names to direct Internet users to a series of linked websites, which give the appearance of belonging to the owners or operators of the Paschal’s restaurants. The textual and visual content of many of the websites is reminiscent of the Complainant’s website, and the Respondent’s websites prominently feature the Complainant’s stylized “P” mark or colorable imitations thereof. Each of the websites contains a copyright notice by “The Paschal Restaurant Group”, and a link to the home page of The Paschal Restaurant Group. The Paschal Restaurant Group purports to have “a collective 50+ years in the restaurant business” (an apparent reference to the 50 year history of the Paschal’s restaurants), and solicits potential Paschal’s Restaurants franchisees on the website. The Respondent is the listed contact. Most of the Respondent’s websites include a contacts web page, on which the email address cpaschal@paschals.com” is provided as a means of contacting both the Complainant and the Paschal’s Restaurant at Castleberry Hill. This is an email address that the Respondent claims to have used personally and professionally for fourteen years, and not an email address used either by the Complainant or by Paschal’s Restaurant.
In addition, the following is posted on the ostensible website for the Paschal’s Restaurant at Castleberry Hill: “Due to an attempted Hostile Takeover” by a Joint Venture Partner, and subject to Copyright and Trademark Law, there is now a permanent moratorium on any new Paschal’s Restaurants save those created by the Paschal Family.” Internet visitors with trademark and license queries are directed to email their inquiries to cpaschal@paschals.com.
5. Parties’ Contentions
A. Complainant
The Complainant asserts trademark rights in PASCHAL’S by virtue of registration on the USPTO’s principal registrar as well as use of the mark dating back to the first Paschal’s luncheonette opened by James and Robert Paschal, who conveyed all title and interest in the PASCHAL’S trademark and restaurants to the Complainant in 1979. The Complainant submits that, Curtis Paschal has acquired no rights in the PASCHAL’S mark, despite his familial connection and surname, and that consequently Solutions Networks, owned and operated by Curtis Paschal, has no rights in the mark.
The Complainant asserts that neither Curtis Paschal or Solutions Networks have any ownership interest in the Complainant and have never been authorized to use the PASCHAL’S mark in connection with restaurant services or any related goods or services. According to the Complainant, while Curtis Paschal was once an employee of the Complainant, he was never authorized to register or use any domain names incorporating the Complainant’s PASCHAL’S mark to promote restaurant services or to maintain websites purporting to be the official website for Paschal’s Restaurant.
The Complainant maintains that the disputed domain names are virtually identical or confusingly similar to the PASCHAL’S mark, and that such confusing similarity is not dispelled by the combination of the mark with generic or descriptive terms such as “restaurant”, “brothers restaurant”, “Atlanta”, or “Castleberry Hill”. The Complainant further submits that the inclusion of such terms in the disputed domain names serve only to heighten the Internet user confusion because they call to mind the Complainant’s restaurant services and the history of the PASCHAL’S brand.
The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant submits that the Respondent has engaged in a practice of registering domain names to prevent the Complainant from leveraging its mark on the Internet, to disrupt the Complainant’s business, and divert the Complainant’s customers to the Respondent’s websites by passing these sites off as those of the Complainant. The Complainant reiterates that the Respondent has not been authorized to use the PASCHAL’S mark for restaurant services or related goods and services, and is not commonly known by the disputed domain names. To the extent that the Respondent is making a commercial use of the disputed domain names to promote licensing and franchising services, such use according to the Complainant constitutes trademark infringement and unfair competition. Thus, the Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain names, but instead is misleading consumers and attempting to derive financial benefit by using the confusingly similar domain names to free-ride on the goodwill associated with the Complainant’s PASCHAL’S mark.
The Complainant contends that the Respondent registered the disputed domain names in bad faith because they were acquired by the Respondent long after the PASCHAL’S mark became well-known, if not famous. According to the Complainant, such blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith. The Complainant submits that the Respondent’s surname does not give him or any associated entity an unfettered right to use the Complainant’s registered mark to lure customers into believing that the Respondent owns the mark, has authority to license the mark or to use the mark in connection with competitive restaurant services.
The Complainant urges that the Respondent’s bad faith is further evidenced, notwithstanding the absence of any relationship or affiliation between the Respondent and the Complainant, by the Respondent’s attempts to create an “aura of affiliation, endorsement or sponsorship” with the Complainant through various actions, including:
- displaying the PASCHAL’S mark with a “tm” symbol on the websites to which the disputed domain names resolve
- using a colorable imitation of the Complainant’s federally registered stylized “P” mark on the Respondent’s websites
- combining the use of such marks with use of the phrase “Paschal’s Official Website”
- copying photographs and text from the Complainant’s website
- offering on the Respondent’s websites to sell PASCHAL’S franchises
- associating the Respondent’s websites with “Paschal’s historic significance and 50+ years reputation”
The Complainant argues that the Respondent’s bad faith is manifested in the “false takeover reference” posted on the Respondent’s “www.paschalsrestaurantatcastleberryhill.com” website. The Complainant further submits that the record demonstrates the Respondent’s bad faith registration and use of the disputed domain names in an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s PASCHAL’S mark as to the source, affiliation endorsement of the Respondent’s websites.
B. Respondent
The Response identifies Solutions Networks as a sole proprietorship owned by Curtis Paschal. According to the Response, Curtis Paschal was an employee of the Complainant from 1979 to 2008, serving in the capacity of Accounting Controller and maintaining the Complainant’s computer systems and websites. The Response also asserts that Solutions Networks was hired in 2002 by Paschal’s Restaurant LLC to manage the restaurant’s IT infrastructure and website.
According to the Respondent, James Paschal acquired total control of the Complainant after Robert Paschal’s death, and shortly before his death James Paschal revised his will to make his sister-in-law, Marion Johnson, the executor and beneficiary of his estate. As a result, according to the Respondent, Ms. Johnson is now in control of the Complainant. The Respondent submits that Ms. Johnson previously had no interest or involvement in the Complainant’s business, and that Curtis Paschal’s employment with the Complainant was terminated without cause by Ms. Johnson in December 2008, shortly after James Paschal’s death.
The Response submits that Curtis Paschal registered the disputed domain name <paschals.com> in 1998 “in an effort to preserve his family’s business identity and record his family’s history in the restaurant business.” The Response confirms that Curtis Paschal registered the additional disputed domain names between 2002 and 2010. According to the Response, the Complainant used <paschals.com> as its main website and the Complainant “benefited from the positive publicity these websites generated for many years”.
The Respondent does not dispute that the domain names in question may seem confusingly similar to the PASCHAL’S mark. However, the Response asserts that the Complainant’s endorsement of the Respondent’s activities involving the use of the disputed domain names constituted an implied permission to use the PASCHAL’S service mark. According to the Response, in 2003 Curtis Paschal formed “Paschal’s Foods, Inc.”, and began producing, marketing and selling three (3) ounce packages of chicken batter mix based on Robert Paschal’s secret fried chicken recipe. The package design made use of the PASCHAL’S mark and displayed the web address “www.paschals.com”, and also the tag line “History, Hospitality and Home Cooking”, which the Respondent claims to have penned. According to the Response, 1000 packages of the chicken batter mix were purchased by the Complainant, and sold at Paschal’s Restaurant at Castleberry Hill, online, and through a local grocery store.
The Respondent asserts rights and legitimate interests in all of the disputed domain names. Rights are asserted in the disputed domain name <thepaschalrestaurantgroup.com> based on the Respondent’s purported offering of restaurant consulting services under this name at “www.thepaschalrestaurantgroup.com”. The Respondent asserts that he has personally and professionally used <paschals.com> as his email address and has been commonly known as “cpaschal@paschals.com” for fourteen (14) years. The Respondent further submits that he has spent thousands of man hours and tens of thousands of dollars developing the websites of the domain names in question, and that he has a right to: (a) document his family name; (b) operate business enterprises that bear his name; and (c) be able to pass that legacy on to his son.
The Respondent denies registering and using the disputed domain names in bad faith. According to the Response, each of the disputed domain names has consistently been used to document his family’s history in the restaurant business and its role as the “kitchen” of the civil rights movement. The Respondent avers that he has never offered to sell any of the disputed domain names, and that none of his businesses associated with the disputed domain names sell competing goods or services. As to as the “false takeover reference” objected to by the Complainant, the Respondent does not disagree, but demurs that the Complainant must prove both bad faith registration and use.
The Respondent also invokes the equitable doctrine of laches as a defense, asserting that the Complainant by inactivity encouraged the Respondent to use the disputed domain names in ways that the Complainant knew the domain names were being used. The Respondent submits that prior to this proceeding he was never contacted by the Complainant regarding the use of any of the disputed domain names. The Respondent alleges that the persons behind the Complainant lack familial ties except for one by marriage, and that given their “aggressive and repetitive posturing to strip Respondent of his rights”, this is a case of reverse domain name hijacking.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that for purposes of paragraph 4(a)(i) of the Policy the disputed domain names are confusingly similar to the Complainant’s PASCHAL’S mark, in which the Complainant has established rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy serves essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
There are differing views as to what is meant by “confusingly similar” in this context. In Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662, the panel applied a test which expressly disavowed any call for likelihood of Internet user confusion; by contrast in SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648, the panel took a diametrically opposed view. The range of views is discussed in Apple Inc. v. Fred Bergstrom, LottaCarlsson, Georges Chaloux and Marina Bianchi, WIPO Case No. D2011-1388.
In this instance, the disputed domain names all incorporate the Complainant’s mark (or a slight variation of the mark) in its entirety, and the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, whichever test is applied.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s mark. The Respondent notwithstanding has registered nine disputed domain names, each of which incorporates and is confusingly similar to the Complainant’s mark, and which the Respondent has linked to websites that create the impression of being sponsored, endorsed by or affiliated with the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain names, even if they the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel is not persuaded that the Respondent has been commonly known by any of the disputed domain names. While the Respondent claims to have been commonly known by the email address cpaschal@paschals.com, the Panel notes that “www.paschals.com”, according to the Response, was the Complainant’s main website. Further, the Panel notes that the Respondent did not use cpaschal@paschals.com as his email contact information when registering any of the disputed domain names.
The record before the Panel, on balance, does not reflect the Respondent’s use or demonstrable preparations to use of any of the disputed domain names in connection with a bona fide offering of goods or services, prior to any notice of this dispute. That is to say, the Respondent has not provided credible evidence of the use of the disputed domain names to promote any goods or services other than those of the Complainant, which the Respondent has attempted to pass off as his goods and services. Even with respect to the disputed domain name <paschalfoods.com>, the packaged PASCHAL’S Chicken Batter Mix was sold at Paschal’s Restaurant, or online at “www.paschals.com”. The <paschalsfoods.com> domain name does not appear on the product packaging provided by the Respondent, and there is no indication in the record that <paschalsfoods.com> was used in connection with the offering of the packaged product. In any event, the use of the PASCHAL’S mark in this context clearly was not a designation of source for Paschal Foods, Inc.; the mark instead conveyed to consumers that this was the very chicken batter mix used in the secret recipe PASCHAL’S fried chicken.
Nor is the Panel persuaded from the totality of the circumstances in the record that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy. To the extent that the Respondent claims to be providing consulting restaurant services as The Paschal’s Restaurant Group, the Respondent is making a commercial use of the disputed domain names. Further, while the Respondent asserts that the disputed domain names were registered in order to record his family’s history in the restaurant business, it is clear that the family’s history in the restaurant business for many years has been an integral part of the marketing strategy of Paschal’s restaurants.
The Respondent to date has registered at least nine domain names incorporating the Complainant’s PASCHAL’S mark, including seven during his employment with the Complainant and two thereafter. The Panel has difficulty accepting in the overall circumstances of this case that the recounting of the Respondent’s family history justifies the Respondent’s registration of nine domain names, particularly given that the Respondent’s use of the disputed domain names appears to be calculated to disrupt the Complainant’s business and to mislead and deceive the public regarding the Complainant’s ownership and control of the Paschal’s restaurants. For all of the foregoing reasons, the Panel finds that the Respondent has not come forward with credible evidence of rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel finds that the Respondent registered and has used the disputed domain names in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the relevant circumstances that the Respondent was aware of the Complainant and the Complainant’s mark when registering each of the disputed domain names. Over the years, while employed by the Complainant and thereafter, the Respondent stockpiled domain names incorporating the Complainant’s mark. The Respondent maintained control of all of the disputed domain names, which strongly suggests in Panel’s view a pattern of conduct by the Respondent aimed at preventing the Complainant from registering its mark in a corresponding domain name – including but not limited to the precluding the Complainant from directly registering the desirable <paschals.com>, <paschalsrestaurant.com>, and <paschalsrestaurantatcatleberryhill.com> domain names.
The circumstances in the record before this Panel evince that the Respondent had no compunction, even while employed by the Complainant, in using the domain names in a manner inimical to the Complainant, as exemplified by the Respondent’s bad faith acquisition and use of the disputed domain name <paschalsrestaurant.net> in 2006, a use discontinued by the Respondent only upon being taken to court by the Complainant. During the same year, and while employed by the Complainant, the Respondent also registered <thepaschalrestaurantgroup.com>, which the Respondent now maintains he uses with his own restaurant management consulting business. The Panel is skeptical whether the Respondent in fact is offering such services, but if this is so it severely strains the credulity of the Respondent’s claim not to be offering services that compete with or are related to those provided by the Complainant under the PASCHAL’S mark.
Insofar as the record before this Panel reflects, the Respondent at all material times was aware of the Complainant’s rights in the PASCHAL’S mark, and acted with disregard for those rights when registering each of the disputed domain names in his name. The Respondent further disregarded the Complainant’s rights when choosing to use the disputed domain names in a manner calculated to disrupt the Complainant’s business and to mislead Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. In view of all of the foregoing, the Panel concludes that the Respondent registered and has used the disputed domain names in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
In the overall circumstances of this case, the Panel finds unpersuasive the Respondent’s assertion of laches or the contention that the Complainant acquiesced in the Respondent’s registration of the disputed domain names. This Panel, in accord with other UDRP panels, generally has declined to apply the doctrine of laches in proceedings under the Policy. The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057. See, e.g., Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011; Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393. The Panel recognizes that lengthy delays in seeking legal or administrative remedies can have the effect of eroding the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using a domain name. See Mile, Inc. v. Michael Burg, supra. In this instance, however, the Panel finds the Complainant has met its burden of proof.
Accordingly, the Panel is finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is defined under the Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name". In light of the Panel’s findings above, there is no support in the record for the Respondent’s claim of reverse domain name hijacking.
8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the below listed domain names be transferred to the Complainant:
<paschalbrothersrestaurant.com>
<paschals-atlanta.com>
<paschals.com>
<paschalsfoods.com>
<paschalsrestaurantatcastleberryhill.com>
<paschalsrestaurant.com>
<paschalsrestaurant.net>
<paschalsrestaurants.com>
<thepaschalrestaurantgroup.com>
William R. Towns
Sole Panelist
Date: December 31, 2012
1 The record reflects that the Paschal brothers remained involved in the operation of the restaurants for a number of years after the formation of the Complainant. Robert Paschal died in 1997. James Paschal died in 2008.
2 Paschal’s Restaurant, LLC is a limited liability corporation formed under Georgia law by James Paschal and Herman Russell, who also were the owners of the LLC. The restaurant was part of an overall redevelopment of the Castleberry Hill area, of which Mr. Russell was the developer.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ( “WIPO Overview 2.0”), paragraph 1.2.