WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Il Fornaio America Corporation v. Contact Privacy Inc., Customer 0139740651 / Garrett Martinez, Garrett's Bicycle

Case No. D2016-0932

1. The Parties

The Complainant is Il Fornaio America Corporation of Corte Madera, California, United States of America ("United States"), represented by Hitchcock Evert LLP, United States.

The Respondent is Contact Privacy Inc., Customer 0139740651 of Toronto, Ontario, Canada / Garrett Martinez, Garrett's Bicycle of Davenport, Illinois, United States.

2. The Domain Name and Registrar

The disputed domain name <ilfornaio.net> is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 10, 2016. On May 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 13, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 17, 2016. The Complainant filed a second amended Complaint on May 18, 2016.

The Center verified that the Complaint together with the amended Complaint and the second 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 the Respondent of the Complaint, and the proceedings commenced on May 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 13, 2016.

The Center appointed William R. Towns as the sole panelist in this matter on June 28, 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 the owner of multiple United States trademark registrations for IL FORNAIO, used extensively in connection with the "Il Fornaio" restaurants operated by the Complainant and its predecessors-in-interest since 1981. The earliest of these trademarks was registered in 1984. The IL FORNAIO marks are registered for use with restaurant, bar, catering, and retail store services, and with food and beverages such as olive oil, breads and baked goods, pasta, rice, coffee, and wine.

The Respondent registered the disputed domain name on March 30, 2015. As recently as May 2, 2016 the disputed domain name resolved to a parking page featuring advertising links to restaurant and catering services. Subsequently, the disputed domain name was listed for auction on the SnapNames website. The disputed domain name presently does not resolve to an active website.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the Complainant's IL FORNAIO mark. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, but rather registered the disputed domain name either to divert Internet traffic to a pay-per-click parking page offering advertisements related to the Complainant's restaurants, or to profit from the goodwill associated with the Complainant's mark by selling the disputed domain name. The Complainant maintains such use constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant asserts that the Respondent is not commonly known by the disputed domain name and has acquired no trademark or service mark rights in the disputed domain name.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits the Respondent's registered and has used the disputed domain name in bad faith to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark. The Complainant further asserts that Respondent registered the disputed domain name in bad faith to divert traffic from the Complainant's website in order to solicit offers to purchase the disputed domain name. The Complainant also submits that the Respondent deliberately provided fictitious contact information when registering the disputed domain name.

B. Respondent

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

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. See 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". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also 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 disputed 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 the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, 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) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed 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 for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant's IL FORNAIO mark, in which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement¹. The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Applying this standard, the disputed domain name is confusingly similar to the Complainant's mark. Disregarding the generic Top-Level Domain ("gTLD") ".net", the disputed domain name is identical to the Complainant's IL FORNAIO mark.²

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 finds that the Complainant has made a prima facie showing. The Respondent without the Complainant's authorization or consent has registered the disputed domain name, which is confusingly similar if not identical to the Complainant's IL FORNAIO mark, and which the Respondent has used with a pay-per-click parking page with links to restaurant and catering services similar to those of the Complainant. The Respondent also made the disputed domain name available for auction.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name 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 domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.

Based on the record in this proceeding, the Panel concludes that the Respondent was aware of the Complainant and the Complainant's IL FORNAIO mark when registering the disputed domain name, which the Respondent has used to attract Internet visitors to a pay-per-click parking page and also made available for auction. In the absence of any reply by the Respondent, the Panel considers that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant's mark. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.

The record before the Panel does not reflect the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor, in the circumstances of this case, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. It is undisputed that the Respondent has not been commonly known by the disputed domain name for purposes of paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds 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 the 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 circumstances where the registrant seeks to profit from and exploit the trademark of another. See 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 considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent was aware of the Complainant and had the Complainant's mark in mind when registering the disputed domain name. The Panel concludes that the Respondent's primary motive in registering and using the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights, whether by creating a likelihood of confusion with the Complainant's mark to attract Internet users to the Respondent's pay-per-click page, or by attempting to sell the disputed domain name at auction for an amount in excess of the out-of-pocket costs directly related to the domain name.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ilfornaio.net> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: July 11, 2016

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.

² Although gTLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.