WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Oberweis Group, Inc. (Delaware Corporation) v. Tamar Pauley / Hampton Roads AR
Case No. D2016-0746
1. The Parties
Complainant is The Oberweis Group, Inc. (Delaware Corporation) of North Aurora, Illinois, United States of America, represented by Banner & Witcoff, Ltd., United States of America.
Respondent is Tamar Pauley / Hampton Roads AR of Norfolk, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thatburgerjoint.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2016. On April 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 17, 2016.
The Center appointed Robert A. Badgley as the sole panelist in this matter on May 31, 2016. 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
Complainant owns and operates a restaurant chain called That Burger Joint. Complainant began using the trademark THAT BURGER JOINT on October 22, 2012, and on January 1, 2013, Complainant obtained a registration with the United States Patent and Trademark Office for the mark THAT BURGER JOINT. Complainant also operates a website at "www.tbjburgers.com" to advertise its restaurant offerings and services.
The Domain Name was registered on February 2, 2006. The Domain Name resolves to a parking page supplied by the Registrar. The website includes several sponsored listings, including hyperlinks to "Free Meal Planner," "Bobby's Burger Palace," "Menus Chicken," "Krispy Kreme Coupons," "1 Tip of a flat belly," and others. The parking page also has a link next to the phrase "Would you like to buy this domain?" The "Bobby's Burger palace" hyperlink resolves to a website selling hamburgers. There is no indication in the record of any relationship between Respondent and "Bobby's Burger Palace."
On April 11, 2012, an agent for Complainant sent an email to the address listed as the registrant's email address at the time. (That email address is identical to Respondent's current address as reflected in the WhoIs record, and hence the Panel presumes that the recipient of the April 11, 2012 email was Respondent.) The agent asked Respondent if he had any interest in selling the Domain Name, and, if so, at what price.
According to the affidavit of Complainant's agent, on April 13, 2012 she spoke with "Lee Pauley." (The Panel notes that Respondent here is identified as Tamar Pauley, not Lee Pauley, but on this limited record the Panel presumes that Lee Pauley and Respondent are either one and the same person or they are closely associated.) During the April 13, 2012 call, Complainant's agent asked whether there was a price Respondent would consider. Respondent stated that he wanted to hold onto the Domain Name, and, after saying "Money talks, you know," said he would not consider an offer less than USD 10,000.
On May 7, 2012, Complainant's agent offered USD 3,000, which was declined. On May 18, 2012, it appears (the affidavit is not altogether clear) that Complainant's agent offered an additional USD 2,000, which was also declined. Negotiations ceased that day.
5. Parties' Contentions
Complainant contends that it has satisfied the three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant clearly has rights, through registration and use, in the mark THAT BURGER JOINT. The Domain Name is identical to that mark. Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
In view of the Panel's decision below on the "bad faith" issue, a decision on the "rights or legitimate interests" issue is not necessary.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The major hurdle that Complainant faces in this case is the simple fact that Respondent registered the Domain Name six and a half years before Complainant ever began to use the THAT BURGER JOINT trademark in any manner. In such circumstances, it is impossible to conclude that Respondent actually had Complainant or its trademark in mind at the time he registered the Domain Name. Section 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") addresses the question "Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?" The consensus view of the WIPO Overview 2.0 states in relevant part:
Generally speaking, (…) when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.
Section 3.1 goes on to cite some discrete exceptions, which do not appear relevant in this case, and adds that some panels have relied on various arguments upon which further exceptions to the general rule may be considered.
The Panel further concludes from the foregoing facts and gaps in the record that the entire discussion about the potential sale of the Domain Name – during which discussion Respondent said "Money talks" and refused to consider an offer below USD 10,000 – occurred before Complainant had the slightest of trademark rights. Indeed, it is clear from the record that, at the time Complainant first used its THAT BURGER JOINT mark in commerce, Complainant had known for six months that another party already owned the Domain Name and wanted at least USD 10,000 to give it up. Notwithstanding this knowledge, Complainant went ahead with its apparent plan of using THAT BURGER JOINT as its trademark.
Under these circumstances, this Panel is not inclined to seek out a path around the general rule set forth in section 3.1 of the WIPO Overview 2.0. The facts of this case do not yield a ripe occasion for circumventing the principle that a domain name registration cannot be in bad faith if it predates the relevant trademark to which it is said to be confusingly similar.
The Complaint fails.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: June 2, 2016