WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sam’s Flaming Grill Inc. v. Perfect Privacy LLC / Jan Everno, The Management Group II
Case No. D2019-2135
1. The Parties
Complainant is Sam’s Flaming Grill Inc., United States of America (“United States”), represented by Roger Doumanian, Attorney at Law, APC, United States.
Respondent is Perfect Privacy LLC, United States / Jan Everno, The Management Group II, United States.
2. The Domain Name and Registrar
The disputed domain name <samsflaminggrill.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 11, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 17, 2019.
The Center verified that the Complaint, together with 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 8, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 14, 2019. 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 operates an unspecified number (characterized in the Complaint as “numerous”) of “Mediterranean restaurants,” apparently predominantly or exclusively in the State of California. Between 2007 and late 2016, Complainant owned the Domain Name and used it in connection with its restaurant business. Screenshots of Complainant’s website at the Domain Name from 2007 are annexed to the Complaint.
In March 2019, Complainant obtained a registration (Reg. No. 5,689,195) with the United States Patent and Trademark Office (“USPTO”) for the word mark SAM’S FLAMING GRILL in connection with “restaurant services.” The USPTO registration indicates a date of first use in commerce of June 1, 2002.
On March 11, 2017, several months after Complainant’s marketing manager accidentally forgot to renew the Domain Name, Respondent registered the Domain Name. The Domain Name resolves to a largely undeveloped parking page, which contains a few hyperlinks to topics such as “takeout menu,” “menu restaurant,” “delivery restaurant,” and the like. Some of the links, material annexed to the Complaint shows, are to restaurants who are, according to the Complaint, Complainant’s competitors.
Complainant’s counsel sent Respondent a letter dated March 20, 2019 asserting Complainant’s rights vis-à-vis the Domain Name. Respondent did not reply to this letter. On April 26, 2019, Complainant offered to buy the Domain Name for USD 500, but the offer was rejected.
The Complaint also identifies five prior UDRP cases in the past three years in which Respondent Jan Everno was held to have registered and used a Domain Name in bad faith.
5. Parties’ Contentions
Complainant asserts that it has established 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
The Panel concludes that Complainant has rights in the mark SAM’S FLAMING GRILL registration and use demonstrated in the record. The Panel also finds, on an undisputed record containing some screenshots of Complainant’s website using the Domain Name years before Respondent registered it, that Complainant has at least some measure of common law rights in the mark SAM’S FLAMING GRILL. The Panel also finds the Domain Name to be confusingly similar to that mark. The Domain Name incorporates the entire mark, except an apostrophe which could not have been included in the Domain Name.
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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding (or earlier, in response to Complainant’s communications) to articulate why it registered the Domain Name or otherwise explain its bona fides. As such, the undisputed record in this case indicates that Respondent registered the Domain Name with knowledge of Complainant and its SAM’S FLAMING GRILL mark, and used the Domain Name to resolve to a website featuring links to other restaurants and related services. Such use, without any explanation, does not qualify as legitimate under the UDRP.
Complainant has established Policy paragraph 4(a)(ii).
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 online 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 Panel concludes that Respondent has registered and used the Domain Name in bad faith under, at a minimum, the above-quoted Policy paragraph 4(b)(ii). Respondent plainly has made a preclusive registration of the Domain Name (it was, after all, Complainant’s chosen Domain Name for its website for several years before the registration accidentally lapsed), and Respondent has shown a pattern of such preclusive registrations. As noted above, Respondent has been found in bad faith under the UDRP at least five times in the past three years.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <samsflaminggrill.com> be transferred to Complainant.
Robert A. Badgley
Date: October 28, 2019