WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sarpino’s USA, Inc. v. Whois Privacy Services Pty Ltd

Case No. D2011-1236

1. The Parties

The Complainant is Sarpino’s USA, Inc. of Lincolnshire, United States of America, represented by Neal & McDevitt of United States of America.

The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Australia.

2. The Domain Name and Registrar

The disputed domain name <sarpinospizza.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint (brought against Whois Privacy Services Pty Ltd) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2011. On the same date the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Domain Name. On July 21, 2011, Fabulous.com 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 (identifying Quantec LLC and Novo Point LLC as the relevant registrant of record). The Center sent an email communication to the Complainant on July 28, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant refused to amend the complaint due to fact that the Domain Name was subject to an Order Appointing Receiver, as explained below. The Center informed the Complainant that Complaint Notification would be formally processed on this basis, noting that any resultant issues of proper Respondent identity would in any case need to be considered at the discretion of the Panel (when appointed).

On July 25, 2011, the Center received and email communication from Joshua Cox, Attorney at Law, informing that the Domain Name was at that moment subject to an Order Appointing Receiver entered by the United States District Court Judge Royal Ferguson in the lawsuit styled Netsphere v. Ondova, Case No. 3:09-cv-0988, pending in the United States District Court for the Northern District of Texas. In response, the Complainant’s authorized representative informed the Center about Sarpino’s USA, Inc willingness to consent to an administrative stay during the pendency of said receivership.

The Center, on July 28, 2011 informed the parties that the administrative proceeding would continue forthwith as well as the appointment of a Panel. In this regard, the Center indicated the parties that their communication and attachments would be drawn to the Panel’s attention (on appointment), so determination of the matter, including any appropriate procedural steps, (including in light of any suspension or termination that would be appropriate in light of legal proceeding) would then be a matter for the Panel.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2011.

The Center appointed Michelle Brownlee as the sole panelist in this matter on September 16, 2011. 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.

On October 11, 2011, the Center notified the Administrative Panel Procedural Order No. 1 to the parties, informing the Complainant that the Panel noted that the evidence of identity of the Respondent was a printout of a WhoIs record that was printed five days before the Complaint was filed, and invited the Complainant either to amend the Complaint to name the current owner of record or to submit evidence that the Respondent was the owner of record on the date the Complaint was filed. The Administrative Panel Procedural Order required that any response be submitted by October 12, 2011. On October 17, 2011, the Center notified the Panel that no response had been received.

4. Factual Background

The Complainant owns United States Trademark Registration No. 2,828,230 for the mark SARPINO’S in classes 29, 30 and 42 for soups, salads except macaroni, rice and pasta salad; pizza, deli wrap sandwiches, pita sandwiches, macaroni, rice and pasta salad, bakery desserts, coffee; and restaurant and café services. The Complainant also owns United States Trademark Registrations No. 2,821,275 for SARPINO’S PIZZERIA (& design) in class 43 for restaurant and café services, and 2,861,689 in classes 30 and 42 for pizza, deli wrap sandwiches, pita sandwiches, macaroni, rice and pasta salad, bakery desserts and coffee; restaurant and café services.

The Domain Name was registered on February 4, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant Sarpino’s USA, Inc. operates a restaurant business with numerous locations across the United States, offering pizza, soups, salads, sandwiches and desserts with dine-in, delivery and carry-out services. The Complainant and its predecessor in interest have been using the SARPINO’S mark since at least as early as 1972. The SARPINO’S mark is known throughout the United States as denoting the source of the high quality products and services offered and sold by the Complainant through its franchisees.

As a result of the Complainant’s extensive and long standing use of its family of SARPINO’S marks, the marks have become distinctive and well known in the restaurant industry throughout the United States.

The Complainant states that the Respondent operates a web site at the Domain Name that posts hypertext links that divert consumers to web sites owned and/or operated by competitors of the Complainant. The Respondent is using the website to derive revenues from “click-throughs” featuring products and services from competitors of the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identity of Respondent

The Complaint, which was filed on July 20, 2011, named Whois Privacy Services Pty Ltd as the Respondent, and attached a printout from the WhoIs database dated July 15, 2011 that listed the registrant for the Domain Name at that time as Whois Privacy Services Pty Ltd. On July 28, 2011, the Center notified the Complainant that the Domain Name registrant that was identified by the Registrar, that is Quantec LLC and Novo Point LLC, was different from the Respondent that was named in the Complaint and invited the Complainant to file an Amended Complaint to name the registrant that was identified by the Registrar. The invitation from the Center included the following text:

“Please be advised that this invitation is not being issued by the Center as a formal deficiency under the Rules for Uniform Domain Name Dispute Resolution Policy (Rules), and that (although the Center generally recommends such amendment, as indicated also at the end of this email) you are not being (formally) required as such by the Center to file an amendment to the Complaint (or an Amended Complaint) in light of the same in order to proceed with the Complaint as filed.

If you choose not to accept this invitation to file an amendment to the Complaint (or Amended Complaint), we would ask that you confirm your election to proceed with your Complaint without amendment by August 2, 2011, on the basis that any resultant (or related) issues of proper Respondent identity would in any case need to be considered at the discretion of the (to be) appointed panel in due course. If you should choose to accept the invitation and file an amendment to the Complaint (or an Amended Complaint) in light of the provided information, we would ask that you do so by August 2, 2011.

If you so choose to amend the Complaint, with a view to notification of the Complaint and implementation of any Decision under the Policy and Rules, we suggest that any such amendment should at a minimum contain the additional information which has been provided by the Registrar (as provided above). While such amendment is commonly made by the simple addition of the newly identified registrant to the Complaint (i.e., in addition to the original named Respondent), any final determination as to the proper identity of the Respondent(s) will be at the sole discretion of the Panel to be appointed in this case.”

On August 3, 2011, the Complainant’s representative responded by email that “[a]t this time, and in an abundance of caution based on the receivership status of the domain name, the Complainant elects not to amend its Complaint at this time. If WIPO requires that the Complaint be amended at a later stage, the Complainant will adhere to that request and hereby expressly reserves its right to do so.”

It is commonplace for domain name registrants to register domain names through proxy services that hide their identity. When a proxy service is named as the respondent in a complaint, and the Center asks for confirmation of identity of the respondent from the registrar, the registrar will usually provide the name of the true owner of the domain name at that time. Typically, when the Center notifies a complainant that the registrar has identified a respondent different from the one named in the complaint, the complainant will respond by amending its complaint to list the current owner as identified by the registrar. In a few cases, complainants have refused to amend the complaint and have argued that they have named the correct respondent because they have named the party who was listed in the WhoIs records on the date the complaint was filed. See, e.g., Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324. In this case, the Complainant took neither of these actions.

It appeared to the Panel that the Complainant’s representative may have misunderstood the situation with respect to Respondent’s identity, though the Panel did note the Complainant’s earlier communication to the Center of August 3, 2011 (discussed under paragraph 6.A above), indicating, inter alia, that the Complainant would if necessary adhere to a later request to amend its Complaint and reserving its right to do so if necessary. Accordingly, the Panel asked the Center to issue an Administrative Panel Procedural Order No. 1 requesting the Complainant either to amend the Complaint to reflect the current owner of record of the Domain Name or to provide evidence that the Respondent was the party that was shown in the WhoIs records on the date the Complaint was filed. The Center issued such an Administrative Panel Procedural Order on October 11, 2011 that requested that such amendment or evidence be provided by October 12, 2011. On October 17, 2011 the Center notified the Panel that no response from the Complainant to the Panel’s Order had been received.

Numerous panels have found that it is proper to name the respondent that was listed in the WhoIs records on the date that the complaint was filed. See, e.g., The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057, Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886; Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324; Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. This Panel is in agreement with the proposition that it is proper to name the respondent who is listed in the WhoIs records at the time the complaint is filed.

In this case, however, there was some question as to whether the proper Respondent was named at the time the Complaint was filed, since the WhoIs records submitted with the Complaint were printed five days before the Complaint was filed. The Panel gave the Complainant an opportunity to clarify this either by submitting evidence demonstrating that the Respondent that was named in the Complaint was the registrant of record on the date the Complaint was filed or by amending the Complaint to name the current registrant in the WhoIs records, as confirmed by the responsible registrar. The Complainant did not take advantage of either of these options, and has not otherwise advanced any persuasive argument as to why Whois Privacy Services Pty Ltd should be regarded as the proper Respondent given the registrar’s seemingly timely disclosure of Quantec LLC and Novo Point LLC as the registrant of record, including in the public WhoIs database.

Under the circumstances, this Panel finds it has no choice but to deny the Complaint on procedural grounds. Because of this, the Panel will not make findings regarding the substantive merits of the Complaint. Because the present decision is being made on procedural aspects of the Complaint only, it does not preclude the Complainant from filing a subsequent Complaint with the Center in respect of the disputed domain name. See e.g. ECCO sko A/S v. Protected Domain Services/ Phalanx SEO Services, WIPO Case No. D2010-1469.

7. Decision

For the foregoing reasons, the Complaint is denied.

Michelle Brownlee
Sole Panelist
Dated: November 14, 2011