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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pizza Shoppe, Inc. v. Randy AufderHeide d/b/a netSpinners

Case No. D2001-1353

 

1. The Parties

1.1 The Complainant is Pizza Shoppe, Inc., a corporation organized and existing under the laws of the State of Missouri, United States of America, having its principal place of business at 6638-40 N.W. 9 Highway, Kansas City, Missouri, United States of America.

1.2 The Respondent is Randy AufderHeide d/b/a netSpinners, an individual having an address at 5715 Meadowlark Drive, Shawnee, Kansas, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <pizzashoppe.com>, which is registered with Tucows, Inc., based in Toronto, Ontario, Canada ("Tucows").

 

3. Procedural History

3.1 A Complaint was submitted in hardcopy to the World Intellectual Property Organization Arbitration Center (the "WIPO Center") on November 13, 2001. On November 19, 2001, the WIPO Center transmitted an Acknowledgement of Receipt of Complaint. On November 21, 2001, not yet having received an electronic copy of the Complaint, the WIPO Center transmitted to the Complainant a Notice of Deficiency. On the same date, Complainant submitted the Complaint in electronic form, curing the deficiency.

3.2 On November 20, 2001, a Request for Registrar Verification was transmitted to the registrar, Tucows, requesting it to, among other things: (1) confirm that the domain name at issue is registered with Tucows; (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 November 20, 2001, Tucows confirmed by reply e-mail that the domain name at issue is registered with Tucows, is currently in active status, and that the Respondent is the current registrant of the domain 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 satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the WIPO 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 further formal deficiencies having been recorded, on November 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Tucows, and ICANN), setting a deadline of December 13, 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 December 13, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on December 14, 2001. At the same time a Notification of Deficiency was sent to the Respondent, notifying the Respondent that he had failed to make the certification required by Uniform Rules, Rule 5(b)(viii). Respondent never attempted to cure this deficiency.

3.7 On December 28, 2001 the WIPO Center received a fax purportedly from Smith & Leonard LC, stating that the domain name at issue had been registered by the Respondent for J&J Inc., a company which allegedly owns two Pizza Shoppe restaurants and questioning the jurisdiction of WIPO over the dispute. WIPO responded by email to the parties and by fax to Smith & Leonard LC that the basis for the jurisdiction was set out in the cover sheet to the Complaint.

3.8 On January 8, 2002, 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 January 22, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.

 

4. Factual Background

4.1 Complainant registered the service mark PIZZA SHOPPE AND PUB and design in connection with restaurant franchising with the United States Patent Office ("USPTO") on September 24, 1996. (Complaint, Annex 4)

4.2 Complainant has used the PIZZA SHOPPE AND PUB and design mark in connection with its restaurant franchising operation since 1967, and has franchisees of its "Pizza Shoppe & Pub" restaurants in Missouri, Kansas, Oklahoma, and Nebraska. (Complaint, Annex 3)

4.3 Franchisees use the service mark in connection with the restaurants, and the service mark is used on menus, coupons, and in print and Internet advertising. (Complaint, Annex 3)

4.4 Complainant maintains a web site at www.pizzashoppeandpub.com, where it advertises its franchise operations. The domain name <pizzashoppeandpub.com> was registered by Complainant on September 18, 2000.

4.5 One of Complainant's franchisees in Kansas is Joe Walker ("Walker"), who apparently is a principal of J&J, Inc. He operates two restaurant franchises.

4.6 In 1998, Walker, with Complainant's knowledge, wanted to create an Internet web site to advertise his two "Pizza Shoppe & Pub" franchises.

4.7 At that time Respondent was employed by Walker as a cook at one of Walker's restaurants. Respondent informed Walker that Respondent was also a web site developer and offered to develop and maintain the web site for Walker for a monthly fee.

4.8 On April 30, 1998, Respondent registered the domain name at issue for the benefit of Walker and Walker reimbursed Respondent for the costs of registration.

4.9 The facts set forth in paragraphs 4.6 through 4.8 above were all within Complainant's knowledge.

4.10 In early 2000, Complainant decided to create a web site for its Pizza Shoppe restaurants. Complainant was aware that Walker had contracted with Respondent to develop a web site for Walker's two franchise restaurants and that the domain name <pizzashoppe.com> was used to resolve to the web site. (Complaint, Annex 3)

4.11 The web site developed for Walker displays a picture of one of Walker's two franchise restaurants displaying the service mark "Pizza Shoppe" design and displays the addresses and telephone numbers of Walker's two franchise restaurants. There is also a link to a reproduction of a restaurant menu, which also displays the service mark "Pizza Shoppe" design. There is also a link to coupons, each of which feature the service mark "Pizza Shoppe" design.

4.12 Complainant did not know at the time, but discovered, that Respondent had registered the domain name in Respondent's name, and not Walker's. (Complaint, Annex 3)

4.13 On October 13, 2000, almost one month after having registered <pizzashoppeandpub.com>, Complainant's counsel sent Respondent a certified letter, asserting Complainant's trademark rights. Complainant's counsel asserted that Respondent had a legal obligation to hold title to the domain name on behalf of the franchisee, Walker. Complainant further asserted that Walker's rights to the use of the name "Pizza Shoppe" were limited by the franchise agreement. Therefore, Respondent was obligated to transfer the domain name at issue to the Complainant. Complainant offered to purchase the domain name at issue for US $300.

4.14 On May 21, 2001, Complainant's counsel again wrote to Respondent, threatening to file a claim under the UDRP if Respondent did not agree to sell Complainant the domain name for US $300 by June 11, 2001.

4.15 At some point in time, which is not made clear in the Complaint, Respondent allegedly demanded US $4000 for the transfer of the domain name registration.

 

5. Parties’ Contentions

5.1 Complainant contends that Respondent has registered a domain name which is identical 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 he registered the domain name in good faith for use by Walker in connection with his franchisee operations and that the domain name was registered and is being used in good faith.

 

6. Discussion and Findings

Rule 5(b)(viii) of the Uniform Rules provides as that a response must:

"Conclude with the following statement followed by the signature of the Respondent or its authorized representative:

‘Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.’"

Respondent, a non-lawyer, concluded with the following statement followed by his signature: "The Respondent certifies that the information contained in this Response is to the best of the Respondent's knowledge complete and accurate, that this response is not being presented for any improper purpose."

While the above recitation is not a verbatim rendering of the required language, the substance of Respondent's concluding paragraph constitutes a sufficient certification for a non-lawyer. Therefore, the Panel exercises its discretion to waive the formal deficiency of the Response.

Paragraph 15(a) of the Uniform 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."

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.

The Complaint is all form and no substance. Complainant's franchisee had a domain name registered for its use to advertise the Complainant's franchisee's two restaurants. Respondent, an employee of Complainant's franchisee at the time, handled the registration of the domain name at issue and constructed the web site. This was done with the full knowledge of Complainant. It was not until two and one half years after Complainant's franchisee had been using the domain name at issue to resolve to a web site advertising Complainant's franchisee's business, that Complainant first sent Respondent a letter, demanding that the web site be turned over to him. Respondent, as the agent of Complainant's franchisee, has rights and legitimate interests in respect of the domain name at issue. (See Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, ICANN WIPO Case No. D2000-0006.)

The threat letter made a vague reference to provisions of the franchise agreement that were apparently being violated. However, Complainant produced evidence that franchisees routinely use the Complainant's registered service mark on the franchisee's premises, its menus, and its coupons, among other uses. These are precisely the uses displayed on Complainant's franchisee's web site. Complainant failed to produce the franchise agreement.

Complainant was fully aware that Respondent was acting on behalf of Complainant's franchisee when Respondent registered the domain name at issue and that Complainant's franchisee reimbursed Respondent for the costs of such registration. Since, to Complainant's knowledge, Respondent was maintaining the web site for Complainant's franchisee for a monthly fee, it is completely understandable that Respondent would maintain the registration in Respondent's name. In this way, Respondent could make any necessary modifications to server use, etc. The Panel finds that Respondent registered and is using the domain name at issue in good faith. (See, e.g., Draw-Tite, Inc. v. Plattsburgh Spring, Inc., ICANN WIPO Case No. D2000-0017; Cellular One Group v. Vanguard Cellular Systems, Inc., ICANN WIPO Case No. D2000-0268.)

If Complainant has any disputes, it is clearly with its franchisee, and not with Respondent. Although Respondent has not requested this Panel to make such a finding, the Panel finds that, by filing this Complaint against Respondent, Complainant has engaged in bad faith reverse domain name hijacking.

 

6. Decision

For all of the foregoing reasons, the Panel dismisses the Complaint. The Panel finds that Complainant is engaged in bad faith reverse domain name hijacking.

 


 

M. Scott Donahey
Sole Panelist

Dated: January 11, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-1353.html

 

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