WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Restaurant Management Group, LLC v. Fred Latsko / Ideology Entertainment, LLC
Case No. D2016-1291
1. The Parties
The Complainant is Chicago Restaurant Management Group, LLC of Chicago, Illinois, United States of America (“USA” or “US”), represented by Patzik, Frank & Samotny Ltd., USA.
The Respondent is Fred Latsko / Ideology Entertainment, LLC of Chicago, Illinois, USA, represented by Perl & Goodsnyder, Ltd, USA.
2. The Domain Names and Registrar
The disputed domain names, <chicagocutblackhawks.com>, <chicagocut.com>, and <thechicagocut.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2016. On June 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 the Respondent of the Complaint, and the proceedings commenced on June 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2016. At the Respondent’s request, the due date for Response was extended to July 24, 2016. The Response was timely filed with the Center on July 25, 2016.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 4, 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
The Complainant is an Illinois limited liability company based in Chicago, Illinois, USA. Since September 2010, the Complainant and its subsidiary Chicago Cut Steakhouse, LLC (collectively, the “Complainant”) have owned and operated an upscale steak restaurant in Chicago. The Complainant operates a website at “www.chicagocutsteakhouse.com” and social media sites using the names “Chicago Cut” or “Chicago Cut Steakhouse” on Facebook, Twitter, and Instagram. The Complainant claims common law rights in CHICAGO CUT as a service mark, as discussed further below.
The Respondent also opened a restaurant in Chicago earlier in 2010, called “Chicago Q”. The record demonstrates that the Respondent’s menu includes a “Chicago Cut Steak”, as do several other restaurants and mail-order meat suppliers’ offerings. In January 2016, the Respondent obtained a license from one of these, SJL Management Holdings, LLC, which has featured bone-in “Chicago Cut” rib-eye steaks on its menus since 1989. The license allows the Respondent to use the licensor’s claimed CHICAGO CUT mark in the Respondent’s restaurant business, subject to certain quality conditions.
The Respondent individual established Chicago Cut LLC as an Illinois limited liability company in February 2012, showing the Respondent’s postal address as its principal office.
In 2015 the Complainant hired a barbeque chef, Ms. Whippen, from the Respondent’s Chicago Q restaurant to serve as the head chef in another restaurant owned by the Complainant, “The Local Chicago”. The Respondent sent the Complainant a letter in September 2015 warning that Ms. Whippen had contractual obligations not to compete within a certain radius of the Respondent’s restaurant. The Complainant asked for details, which the Respondent declined to provide, and the issue did not escalate to a legal dispute.
The Respondent subsequently posted a sign with the words “The Cut Chicago” on LaSalle Street in Chicago in front of a closed bar and restaurant.
In April 2016, the Respondent registered the Domain Names, as follows:
<thechicagocut.com>, April 7, 2016;
<chicagocut.com>, April 8, 2016; and
<chicagocutblackhawks.com>, April 14, 2016.
The Domain Names <chicagocut.com> and <chicagocutblackhawks.com> redirect Internet users to the Respondent’s website advertising the Chicago Q restaurant. There is no evidence in the record that the other Domain Name, <thechicagocut.com>, has ever been put to use by the Respondent, and at the time of this Decision it resolves to a landing page operated by the Registrar with third-party, pay-per-click (“PPC”) advertising links and the heading “This Web page is parked for FREE, courtesy of GoDaddy.com”, along with an invitation to develop or purchase the domain.
5. Parties’ Contentions
The Complainant does not hold any registered trademarks but implicitly asserts common law rights to CHICAGO CUT as an unregistered service mark for restaurant services in the Chicago area. This claim is based on the Complainant’s online presence, paid advertising in print and broadcast media, restaurant reviews and media stories, and restaurant awards. The Complainant asserts that all three Domain Names are confusingly similar to its common law CHICAGO CUT service mark, and that the Respondent has no rights or legitimate interests in the Domain Names.
The Complainant infers that the Respondent, a competitor in the Chicago restaurant business, registered and used the Domain Names in bad faith, in an effort to disrupt the Complainant’s business and to misdirect Internet users to the Respondent’s own website for commercial gain. The Complainant believes that the Respondent’s actions were triggered by the Complainant’s hiring of the Respondent’s barbeque chef, Ms. Whipple, and are part of a pattern of retaliation, consistent with placing a sign reading “The Cut Chicago” in front of a closed restaurant to give passers-by the impression that the Complainant had gone out of business.
The Respondent challenges the Complainant’s trademark claim, pointing out that the United States Patent and Trademark Office (“USPTO”) recently rejected the Complainant’s application to register CHICAGO CUT STEAKHOUSE as a mark because “Chicago cut” is a descriptive term for a cut of steak.
The Respondent claims rights in the Domain Names based on its own offering of Chicago cut steaks, its licensing of a third party’s CHICAGO CUT mark, its relations with a limited liability company named Chicago Cut LLC, and its actual and planned sales of cigars with distinctive “cuts” named after various cities.
The Respondent denies bad faith in the registration and use of the Domain Names, observing that it does not directly compete with the Complainant (the Respondent’s menu includes two steak dishes, but it essentially operates a barbeque restaurant) and arguing that the Respondent has legitimate reasons to use “Chicago cut” and the name of the local hockey team (the “Blackhawks”) in the Domain Names. The Respondent indicates that the signage in front of its property on LaSalle Street had to do with the contemplated expansion of its cigar business on that property.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant has no registered CHICAGO CUT trademark, so the preliminary question is whether the Complaint is grounded on an unregistered service mark in which the Complainant has demonstrated acquired distinctiveness giving rise to common law rights. The consensus view on common law or unregistered marks is summarized as follows in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys, and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit the complainant’s rights in a common law trademark.”
On October 7, 2015, the Complainant applied to the USPTO to register CHICAGO CUT STEAKHOUSE as a standard character trademark (Serial No. 86780674), claiming first use in commerce on September 20, 2010. The application was subsequently amended, asserting acquired distinctiveness based on five years of use in commerce. In an Office Action dated February 4, 2016, the USPTO examining attorney expressly rejected that claim:
“However, as the attached evidence demonstrates, the allegation of five years’ use is insufficient to show acquired distinctiveness because the applied-for mark is highly descriptive of a cut of steak featured by applicant’s restaurant services. […] In the present case, applicant’s claim of acquired distinctiveness based on five years’ use in commerce is insufficient to show acquired distinctiveness of the proposed mark because the wording ‘Chicago Cut’ refers to a bone-in Rib Eye Chop. As such, it is highly descriptive of a specialty steak that is served at applicant’s restaurant and other restaurants.”
The Panel finds no reason to disregard this conclusion or find that it would be materially altered by continued use of the name in the six months since the USPTO office action was issued. If USPTO does not consider CHICAGO CUT STEAKHOUSE sufficiently distinctive to achieve trademark protection, then CHICAGO CUT, the shorter version claimed as an unregistered mark in this proceeding, would certainly not be.
The Panel concludes that the Complainant has not established the first element of the Complaint, which therefore fails.
B. Rights or Legitimate Interests
Given the insufficiency of the first element of the Complaint, it is not necessary to examine the Respondent’s claims of rights or legitimate interests.
C. Registered and Used in Bad Faith
Again, it is not necessary to rule on this aspect of the Complaint, as it fails on the first element of the Complaint, lacking evidence of a trademark or service mark on which to ground the UDRP proceeding.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: August 18, 2016