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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NutriSystem Fresh, Inc. d/b/a NuKitchen v. Kitchen & Bath Source LLC

Case No. D2008-1558

1. The Parties

Complainant is NutriSystem Fresh, Inc. d/b/a NuKitchen of Horsham, Pennsylvania, United States of America, represented by the law firm High Swartz LLP, United States of America.

Respondent is Kitchen & Bath Source LLC of White Plains, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nukitchen.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2008. On October 14, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue.

On October 14, 2008, Network Solutions, LLC transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an appropriate amendment to the Complaint.

Complainant filed an amended Complaint on October 21, 2008.¹ The Center verified that the amended Complaint (for convenience, referred to in this decision as 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 Respondent of the Complaint, and the proceedings commenced on October 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2008. Respondent did not submit any response. Accordingly the Center notified Respondent’s default on November 13, 2008.²

The Center appointed Richard G. Lyon as the sole panelist in this matter on November 18, 2008. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On November 24, 2008, almost two weeks after the date a Response was due and five weeks after the first email communication from Respondent to the Center (see n.2 below), Respondent, through counsel, submitted a letter to the Center requesting that Respondent’s default be vacated and Respondent given a thirty-day extension of time to file a Response. Following its customary practice when such requests are received after a Panel has been appointed, the Center advised that Respondent’s request would be referred to the Panel for a determination in the Panel’s sole discretion.

Respondent’s request is denied. Not only are the Policy, Rules, and Supplemental Rules clear on the deadline for a Response, and after almost a decade of existence and thousands of decisions under the UDRP, practitioners should be aware of it. Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. They should also be aware that the Policy and the Rules are intended to facilitate expeditious consideration of a limited class of cases, and adherence to their deadlines is a necessary corollary of this objective. Union Square Partnership, Inc., Union Square Partnership District Management Association, Inc. v. unionsquarepartnership.com Private Registrant and unionsquarepartnership.org Private Registrant, WIPO Case No. D2008-1234; The Knot, Inc. v. Julia Bitton, The Nest, WIPO Case No. D2006-0377. The Center’s communications are clear enough, and the Center makes its staff available by telephone and email to answer inquiries about routine procedural matters such as this. While Respondent here cites one out-of-the ordinary reason for missing the deadline,³ and (unlike the Union Square case, supra) the circumstances here do not suggest intentional stalling, the “exceptional” standard in the cases cited above has not been met or seriously approached. The Panel will proceed to determine this matter on the basis of the Complaint, public information readily available to the Panel, and appropriate principles of law and Policy precedent.

4. Factual Background

The Panel finds the following facts to be established from the evidence in the record or public information readily available to the Panel.

A company named Power Chow LLC (or Powerchow LLC) sells high-quality food that is ordered, prepared, and delivered to customers, in the northeastern region of the United States, particularly the New York City metropolitan area. Power Chow LLC owns a trademark for NUKITCHEN registered in the United States Patent and Trademark Office (“USPTO”) in December 2007, for international class 43 (catering of foods and drinks, among other things). USPTO records indicate that Power Chow LLC has an address in Long Island City, New York. Power Chow’s principal website address is “www.nu-kitchen.com”. A visit to this webpage indicates ownership (at least as of 2008) of the site by Power Chow LLC.

Complainant is a Delaware corporation that has its principal office in Horsham, Pennsylvania.

Respondent is a company based in White Plains, New York that apparently provides design and installation services for kitchens and bathrooms. Respondent registered the disputed domain name in August 2008. When the Panel tried to access the disputed domain name, he received a “This Page Cannot Be Found” error message.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

Complainant claims ownership of the NUKITCHEN mark since July 2008, alleging that it acquired the assets of Power Chow LLC at that time. Citing a Google search for “nukitchen” that yields many immediate hits for Power Chow and its services, Complainant asserts that this mark is “famous” and that it has been used by Complainant and its “predecessor in interest” Power Chow LLC since 2004. The disputed domain name is identical to this mark except for the generic top level domain “.com”.

Respondent registered the disputed domain name in August 2008, subsequently to the date the NUKITCHEN mark was federally registered. Respondent thus had constructive notice of this “famous” mark and likely actual notice as well. Its use of that mark, therefore, is not bona fide under the Policy for a number of reasons. There is no showing that Respondent has ever been commonly known by the domain name; Complainant or Power Chow LLC has not licensed Respondent to use the mark; Respondent has made no use of the disputed domain name; and there is no showing of fair or noncommercial use. To quote from the Complaint, paragraph 28, “Respondent will never be capable of using the disputed domain name for a legitimate purpose, as the fame of the NUKITCHEN Mark is such that members of the public will necessarily assume that there is an association between the Respondent and the Complainant, and/or between the Respondent and the NUKITCHEN Mark”.

Respondent’s constructive and actual knowledge of the NUKITCHEN mark indicate that its registration of the disputed domain name in August 2008 was in bad faith, and its non-use of the mark constitutes use in bad faith. Respondent’s ownership of the disputed domain name prevents Complainant from “controlling the presentation of its NUKITCHEN Mark on the Internet”.

B. Respondent

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

6. Discussion and Findings

To succeed in a Policy proceeding, Complainant must establish each of the three subsections of paragraph 4(a) of the Policy:

(i) The disputed 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 to the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith.

Nine years’ of precedents have established another basic principle of Policy disputes: “The Policy requires the Complainant to prove each of the three [Policy] elements”, Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004-0755 (emphasis in original); see also Rules, paragraphs 3(b)(xv) and 10(b) (referring to “evidence”). Unlike civil litigation in the United States of America, failure to file a response in a Policy proceeding does not constitute an admission of any matter pleaded in the complaint or result in the Policy equivalent of a default judgment, and a default does not require the Panel to accept as true any matter pleaded but not proven. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 4.6; Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172; Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

There is no proof in this proceeding that Complainant has rights in the NUKITCHEN mark. Both the page submitted as an exhibit to the Complaint and the Panel’s examination of the USPTO data base indicate that Power Chow LLC is the mark’s owner. The website that Complainant cites as offering its services has at the bottom of each page “Powerchow LLC”, and its “The Team” page identifies three individuals with no listed connection to Complainant. The Panel found no reference at all to Complainant on this website.

As noted, Complainant does allege that “Complainant is the owner of all right, title, and interest in and to the NUKITCHEN trademark” (paragraph 11) and that Complainant “purchased the NUKITCHEN trademark and other assets from Power Chow LLC” (paragraph 13). As this Panel has stated on many occasions,⁴ counsel’s allegations are not proof. Especially is that so when the matter at issue is an objective fact (and not a subjective matter such as a party’s state of mind) and available proof, if it exists, is entirely within a party’s control and not dependent upon access to the opposing party’s records that may not be available in a Policy proceeding.

Paragraph 4(a)(i) of the Policy requires that the domain name at issue be “identical or confusingly similar to a trademark or service mark in which the complainant has rights” (emphasis supplied). Without proof of proper authority to do so Complainant may not prosecute this proceeding based upon Power Chow LLC’s mark. Divex Limited v. ZJ, Sam Chang and Tim NG, WIPO Case No. D2007-0861. Proof of such authority, like proof of ownership, if it exists, could readily have been obtained and offered by Complainant without any recourse to Respondent or Respondent’s records: a power of attorney; a copy of the relevant acquisition agreement; a pending assignment in the USPTO; some proof of affiliation between Complainant and the mark owner. Complainant, however, has provided nothing.

As there is no proof in the record that Complainant owns the NUKITCHEN trademark (registered or otherwise), Complainant has not carried its burden under paragraph 4(a)(i) of the Policy. The Policy elements are conjunctive, so the Panel need not consider paragraphs 4(a)(ii) and 4(a)(iii).⁵

7. Decision

For these reasons the Complaint is denied.

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Richard G. Lyon
Sole Panelist

Dated: November 26, 2008

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ADDENDUM TO ADMINISTRATIVE PANEL DECISION

Following notice of the Panel’s decision on November 27, 2008, Complainant's counsel wrote to the Center, pointing out that Annex 7 to the Complaint did include a USPTO Trademark Assignment Abstract of Title for the NUKITCHEN mark indicating that Complainant in fact is that mark's owner. The Panel reviewed the materials sent to him and verified that this was included in the electronic version of the Complaint filed with the Center, though not in the hard copy used by the Panel in preparing his decision. A possible explanation for this discrepancy is that this particular page had become detached or misplaced at some point prior to or during the Panel’s consideration of the case file. Whatever the reason there is nothing to indicate that Complainant is to blame.

The Panel believes that it is appropriate in these circumstances to revise his Decision. The Panel finds that Complainant has established that it has rights in the NUKITCHEN mark. Since the NUKITCHEN mark is identical to the disputed domain name <nukitchen.com>, Complainant in this case has on the provided record thus satisfied the first element of the Policy.

The Panel therefore turns to the remaining Policy requirements, under which Complainant must establish that Respondent lacks rights or legitimate interests in the disputed domain name and registered and has used the disputed domain name in bad faith.

Complainant’s case under the separate requirements of paragraphs 4(a)(iii) depends ultimately upon its assertion that Respondent had actual or constructive notice of the NUKITCHEN mark. The doctrine of constructive notice in United States trademark law has rarely been applied to Policy proceedings. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4; Dr. Mitchell Mandel and Ms. Jill Slater v. CSC Laboratories, Inc., WIPO Case No. D2006-0719 (“While some panels have relied upon the doctrine of constructive notice in UDRP proceedings, most panels have declined to do so.”) Most of the cases in which a panel has found bad faith registration without proof or a reasonable inference of actual knowledge of complainant’s mark involved either a distinctive mark or some additional indication of cybersquatting. Where as here the mark is not obviously distinctive panels tend more often to decline to find registration in bad faith based upon a claim of constructive notice, even when the parties are both American.

The normal rule for establishing registration in bad faith is that the respondent must have actual knowledge of the mark in question, and have actively targeted that mark in order to benefit from the mark’s value.⁶ While these matters may be proven inferentially, there is little evidence in this proceeding from which that inference could be made. In the language of Policy decisions, there is an inadequate showing that the mark consisting of a variant of common words is associated exclusively or primarily with its owner. What must be demonstrated with competent evidence are facts from which the Panel could make this conclusion under the Policy.

The NUKITCHEN mark is a variant spelling of “new kitchen”, two common words that are to a certain extent descriptive of both parties’ businesses. The NUKITCHEN mark has been registered less than two years and been in active use for four years, which is little time to achieve “fame” in the trademark sense. Popularity in a Google search, the principal evidence of renown submitted with the Complaint, does not alone show that the mark was “famous”. More to the point, there is no evidence from which the Panel could infer that Respondent knew of the mark and registered the disputed domain name for a free ride on Power Chow LLP’s or Complainant's good name or good will. The website at the disputed domain name contains no indication of that. Complainant does not allege any prior relationship or competition with Respondent or any other facts from which actual knowledge could be inferred. Complainant has thus failed on the present record to demonstrate registration in bad faith.

Respondent has made no use of the disputed domain name during the three months it has owned it. As noted in footnote 5 of the Panel’s decision this is too short a period for non-use to become use in bad faith. There is no allegation and no proof that Respondent has tried to sell the disputed domain name to Complainant or anyone else. A search of the Center’s data base indicated that Respondent has not been a party to any other Policy proceeding. Respondent is not (and not alleged to be) a domain name aggregator, to which special rules might apply. There simply is no dispositive proof of cyberquatting. And, contrary to Complainant’s contention, this is not a case where it is impossible or even difficult to imagine permissible uses of the disputed domain name. Complainant has similarly failed to establish use in bad faith.

For these reasons the Panel adheres to its earlier decision that the Complaint be denied. The Panel notes further that nothing in this decision, as revised, is binding upon the parties in subsequent litigation. A lawsuit, if commenced, would proceed on a full record developed during discovery (including whatever defenses Respondent sought to assert in its belated request for an extension) and different legal standards.

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Richard G. Lyon
Sole Panelist

Dated: December 4, 2008

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¹ Respondent had registered the disputed domain name using the Registrar’s privacy service. Upon receipt of the information in the Registrar’s verification response, Complainant changed the name of Respondent accordingly.

² Respondent did contact the Center by email on October 16, 2008, acknowledging receipt of the Center’s invitation to Complainant to amend the Complaint, and in such email confirmed its contact information. There is thus no question that Respondent received notice of this proceeding.

³ Respondent’s counsel claims that he was misled by Complainant’s counsel, with whom he had spoken in an effort to resolve the matter.

⁴ E.g., Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com, WIPO Case No. D2008-0103; American Appraisal Associates Inc. v. R Hagar, Kinja LLC, WIPO Case No. D2006-1556.

⁵ The Panel does note that the Complaint is deficient, and probably fatally so, under these latter two sections as well. The doctrine of constructive notice is ordinarily not applied in a Policy proceeding; the complainant is usually required to show respondent’s actual knowledge of the mark or prove facts from which the panel may infer such knowledge. WIPO Overview, paragraph 3.4. Respondent has made no use of the disputed domain name since registering it, and a mere three months of non-use is, without more, insufficient to demonstrate use in bad faith under the “warehousing” doctrine of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Since there is no evidence that the NUKITCHEN mark is “famous”, in the trademark sense or otherwise, there is no basis for a finding that Respondent registered the disputed domain name in bad faith.

⁶ E.g., Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com, WIPO Case No. D2008-0103; Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902; Janet E. Sidewater v. Worldwide Media Inc., WIPO Case No. D2006-1281.