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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Omelette Chefs, Inc. t/a The Omelette Chefs v. Egg-O-Mania, Inc. t/a Mr. Omelette
Case No. D2001-1247
1. The Parties
1.1 The Complainant is The Omelette Chefs, Inc., a corporation organized having its principal place of business at 7699 Chestnut Lane, Bowie, Maryland, United States of America.
1.2 The Respondent Egg-O-Mania, Inc., a corporation having an address at 10425 Glen Road, Potomac, Maryland, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <omelettechefs.com>, which domain name is registered with Register.com, Inc., based in New York, New York ("Register.com").
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 15, 2001, and the signed original together with four copies forwarded by express courier was received on October 25, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated October 19, 2001.
3.2 On October 19, 2001, a Request for Registrar Verification was transmitted to the registrar, Register.com requesting it to: (1) confirm that the domain name at issue is registered with Register.com; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On October 29, 2001, Register.com confirmed by reply e-mail that the domain name at issue is registered with Register.com, is currently in active status, and that David Model, an associate of Respondent, is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on October 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Register.com, and ICANN), setting a deadline of November 19, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.6 A Response was received on November 20, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on November 20, 2001.
3.7 On November 20, 2001, the WIPO Center received by email Complainant's Supplemental Filing.
3.8 On November 26, 2001, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was December 11, 2001.
4. Factual Background
4.1 Complainant attached to the complaint a registration certificate of the United States Patent Office ("USPTO") showing that on May 18, 1993, Complainant registered the service mark THE OMELETTE CHEFS (using a stylized chef's toque to represent the "O" in "omelette") in connection with breakfast caterers specializing in omelettes. Complaint, Annex 3.
4.2 Respondent submitted a search of the USPTO web site, which indicated that a registration had been filed with the USPTO on April 18, 2001, in which Complainant applied for registration of THE OMELETTE CHEFS & Design service mark. Response, Annex 1. The application is an "intent to use" application, which does not give a date of first use in commerce, but only an intent to use the mark at some future use. The application has not yet been published for opposition.
4.3 A review of the USPTO web site by the Panel shows that the service mark attached as an annex to the Complaint was cancelled by the United States Patent Office on December 23, 2000.
4.4 Respondent registered the domain name at issue on January 30, 2000. The domain name at issue resolves to the web site of Respondent, "Mr. Omelette," a direct competitor of Complainant.
4.5 Complainant and Respondent are competitors in the breakfast catering business and frequently advertise in the same yellow pages. Complaint, Annex 4. Annex 4 shows a copy of a yellow pages edition in which the advertisements for the parties appear side by side.
4.6 Complainant's yellow pages advertisement displays a URL of www.omelettechef.com. Respondent's advertisement displays a URL of www.mromelettemd.com.
4.7 Respondent contends that the copy of the Complaint served upon him lacked the annexes.
4.8 Complainant contends that Respondent has engaged in deceptive advertising vis-à-vis another competitor, and submits a copy of a yellow page advertisement illustrating such conduct. Complaint, Annex 6.
4.9 On August 23, 2001, Complainant wrote Respondent, alleging ownership of the trademark THE OMELETTE CHEFS and requesting termination of the registration of the domain name at issue. There was no indication of any response.
4.10 Respondent contends that he registered the domain name at issue, consisting of common descriptive words, to enable others to locate his Mr. Omelette catering business.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered a domain name which is identical or confusingly similar to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that Complainant does not have rights in a registered service mark, that Respondent has the legitimate interest in aiding parties to locate it through an alternative descriptive domain name, and that Complainant applied for registration of the service mark after respondent had registered the domain name at issue.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that 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,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.4 First, regarding the Supplemental Filing by the Complainant, the Uniform Rules provide only for the filing of a Complaint and Response. See, Uniform Rules, Rules 3 and 5. Rule 12 provides that further statements may be received by the Panel at its discretion. Complainant did not seek leave of the Panel to file an additional submission. Therefore, the Panel will not consider Complainant's Supplemental Filing.
6.5 Respondent contends that Plaintiff does have a valid trademark, but that Complainant has only a pending service mark application made on an "intent to use" basis. For the Complainant to succeed, it must at a minimum establish that it "has rights" in a trademark or service mark. Policy, ¶ 4(a)(i).
6.6 Respondent has failed to demonstrate that it has any rights or legitimate interests in respect of the domain name. Respondent, a direct competitor of Complainant, was obviously aware that Complainant operated under the trade name, "The Omelette Chefs," since Complainant and Respondent competed in the same geographic areas and advertised in the same publications. Complaint, Annex 4. Respondent was obviously aware that Complainant had registered the domain name <omelettechef.com>, since an advertisement placed by Complainant in the yellow pages appearing immediately adjacent to an advertisement placed in the yellow pages by Respondent displayed the domain name prominently. Such evidence undercuts any claim to rights or legitimate interests in respect of the domain name on the part of Respondent.
6.7 Thus, Respondent has failed to produce evidence sufficient to rebut Complainant's allegations. This entitles the Panel to conclude that Respondent has no such rights or legitimate interests in respect of the domain name at issue. Ronson plc v. Unimetal Sanayai ve Tic.A.S., Retail Florist's Business, ICANN Case No. D2000-0011; Parfums Christian Dior v. QTR Corporation, ICANN Case No. D2000-0023.
6.8 However, Respondent argues that since it registered the domain name at issue on January 30, 2000, and that Complainant did not apply for registration of the service mark THE OMELETTE CHEFS until April 18, 2001, there is no evidence of bad faith registration or use.
6.9 However, Respondent ignores the fact that at the time Respondent registered the domain name at issue, Complainant had an existing registered service mark to which <omelettechefs.com> is identical or substantially similar. Massachusetts Medical Society v. Michael Karle, ICANN Case No. D2000-0282 ("The article 'the' is inconsequential and does not prevent a finding that the names are identical or confusingly similar"). A review of the USPTO web site shows that Complainant's registered mark was not cancelled until December 23, 2000, almost eleven months after Respondent had registered and begun use of the domain name in question . The Response demonstrates that Respondent had the capability to determine this, since Respondent readily determined that Complainant does not currently have a registered mark by visiting the USPTO web site.
6.10 Moreover, Respondent is using the domain name at issue to resolve to a web site, which offers services, which directly compete with the services offered by Complainant. The Panel finds that all of the above-referenced facts constitutes bad faith registration and use. Policy, ¶ 4(b)(iii). Expedia Inc. v. European Travel Network, ICANN Case No. D2000-0137.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical or substantially similar to the mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <omelettechefs.com> be transferred to the Complainant.
M. Scott Donahey
Dated: December 5, 2001
1. Reviewing USPTO information and viewing the web site to which the domain name at issue resolves is tantamount to the taking of Judicial Notice by a United States Federal Court. See, Federal Rules of Evidence, Rule 201. Indeed, the Panel questions the position taken by some panelists that the Panel should never reference information outside the pleadings. See, e.g., Dissent, Chernow Communications, Inc. v. Jonathan D. Kimball, ICANN Case No. D2000-0119. To limit oneself to the submissions in this case would have resulted in the Panel's acceptance of Respondent's representations, which were readily determined to be misleading. Such an approach does not lead to a just result.