Hamburger Hamlets, Inc. v. Hallee Wachsmuth

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hamburger Hamlets, Inc. v. Hallee Wachsmuth

Case No. D2000-1548 (see: ADDENDUM)

1. The Parties

The Complainant in this administrative proceeding is Hamburger Hamlets, Inc.,

a California corporation, having its principal place of business located at

18831 Von Karman, Irvine, California 92612, U.S.A.

The Respondent is Hallee Wachsmuth. As set forth in Respondent's December 18, 2000,

e-mail to WIPO, Respondent's mailing address is P.O. Box 2417, Newport Beach,

California 92659, U.S.A.

2. The Domain Name and Registrar

The domain name in dispute is as follows: portners.com. The domain name was

registered by Respondent with Network Solutions, Inc. (NSI) on March 29, 1999.

3. Procedural Background

On November 10, 2000, the WIPO Arbitration and Mediation Center received from

Complainant via e-mail a complaint for decision in accordance with the Uniform

Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation

of Assigned Names and Numbers (ICANN) on August 26, 1999, ("Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN

on October 24, 1999, ("Rules"), and the WIPO Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy (Supplemental Rules).

The Complaint was filed in compliance with the requirements of the Rules and

the Supplemental Rules, payment was properly made, the administrative panel

was properly constituted, and the panelist submitted the required Statement

of Acceptance and Declaration of Impartiality and Independence.

The instant Administrative Proceeding was commenced on November 23, 2000.

Respondent did not file a Response, and a "Notification of Respondent Default,"

dated December 15, 2000, was forwarded by WIPO to Respondent.

The decision of the Panel was due to WIPO on or before January 18, 2001.

4. Factual Background

Since 1981, Complainant has provided restaurant services under the mark PORTNER'S.

Complainant is the owner of U.S. Trademark Registration No. 1,524,937 for the

mark PORTNER'S. See Complaint, Annex D.

As noted above, Respondent registered the domain name in dispute with NSI on

March 29, 1999. No goods or services are currently provided at Respondent's

web site. Respondent's portners.com web site informs the public that, "Our Web

site will be online soon. Thank you for your patience while we build our site."

See Complaint Annex F.

On October 11, 2000, Complainant's representative attempted to contact Respondent

by phone and by e-mail, using the telephone number and e-mail address provided

by Respondent to NSI. The person who answered the phone was not Respondent and

did not know of Respondent; the e-mail was returned as undeliverable.

5. Parties' Contentions

Complainant contends that the domain name in issue is identical or confusingly

similar to Complainant's registered mark PORTNER'S, in that the only difference

is the apostrophe in the registered mark and the inclusion of ".com" in the

domain name. It further argues that Respondent has no rights or legitimate interests

in the domain names, as evidenced by the fact that: (1) Respondent does not

operate a business or other organization under the disputed domain name; (2)

Respondent does not own any trademark or related rights in the portners.com

domain name; (3) Respondent is not making a legitimate noncommercial or fair

use of the domain name; and (4) neither Respondent nor anyone associated with

Respondent has been commonly known by the names PORTNERS or "portners.com".

In support of its contention that the domain name was registered and is being

"used" in "bad faith," Complainant notes and argues that: (1) Respondent's web

site does not advertise or offer any information, goods, or services; (2) Respondent

was aware of Complainant's mark at the time Respondent registered the disputed

domain name; (3) given the inherent distinctiveness of Complainant's PORTNER'S

mark and Respondent's lack of noncommercial or fair use of the mark, Respondent's

only or primary intention in registering the domain name was either to attempt

to sell the domain name registration to Complainant or its competitors and/or

to otherwise prevent Complainant from using the domain name as its proper right;

and (4) Respondent provided false contact information to NSI.

6. Discussion and Findings

The Panel has carefully weighed the evidence presented and determines that

Complainant clearly has met the requirements set forth in ¶4.a. of the Policy.

There is no question that the domain name in dispute is confusingly similar

to Complainant's PORTNER'S mark. As argued by Complainant, the fact that the

domain name does not include the apostrophe that appears in Complainant's mark

and the addition in the domain name of the top-level domain ".com" are without

legal significance.

It is also clear that Complainant, through its long use of, and registration

covering, the PORTNER'S mark, has rights in the mark.

There also is no evidence that Respondent has rights or legitimate interests

with respect to the domain name.

Finally, the evidence supports a determination of "bad faith" registration

and use. While none of the circumstances set forth in ¶4.b. of the Policy appears

applicable, this panel, as others (see, for example, Chernow Communications

v. Kimball, WIPO Case No. D2000-0119; Mondich

and American Wine Biscuits, Inc. v. Brown, WIPO

Case No. D2000-0004), concludes that Respondent's passive holding of the

disputed domain name and the providing of false contact information to NSI are

sufficient grounds upon which to establish the requisite "bad faith."

7. Decision

In view of the above, the Panel GRANTS Complainant's request for transfer to

it of the domain name portners.com

Jeffrey M. Samuels

Sole Panelist

Dated: January 21, 2001

ADDENDUM TO ADMINISTRATIVE PANEL DECISION

Hamburger Hamlets, Inc. v. Hallee Wachsmuth

Case No. D2000-1548

This is an Addendum to the Administrative Panel Decision ("Decision"), dated

January 21, 2001, with regard to the domain name dispute between the parties

involving the domain name "portners.com".

Further Procedural History

On February 5, 2001, Respondent, Hallee Wachsmuth, directly contacted the Panel

to indicate that she had filed a Response. Upon receipt of the telephone call,

the Panel contacted WIPO and learned that a Response, dated January 9, 2001

had been filed with WIPO. However, pursuant to the relevant Rules [1],

a response was due on December 12, 2000. The Response was not included with

the hard copy of the file forwarded by WIPO to the Panel, as it was not received

by the Center prior to the forwarding of the case file. The hard copy was received

by the Center on January 30, 2001. A copy of the electronic version of the response

was provided by WIPO to the Panel on February 7, 2001. While WIPO’s records

indicate that the Center forwarded an electronic version of the Response to

the Panel on January 12, the Panel was not in receipt of such response at the

time it issued its January 21, 2001 decision.

Further Discussion and Findings

Reciting earlier procedural history of this case, the Panel notes that in an

e-mail message dated December 18, 2000, Respondent informed WIPO that she had

not received any information regarding the Notification of Complaint. On December

20, WIPO e-mailed Respondent that the Notification of Complaint and Complaint

were mailed to Respondent on November 27, 2000, via Federal Express to the address

listed with Network Solutions, Inc., i.e., PO Box 9436, Arlington, Virginia

22219. WIPO also informed Respondent that "should you wish to submit a response

based on the failure to receive the Notification, you should submit a request,

outlining your reasons, to the Center. The request will then be sent to the

panelist who will make a determination and submit an order based on that request."

In her e-mail response of December 20, Respondent indicated that,

"[a]s a rule, Fed Ex will not deliver to PO Box addresses."

Upon review of all the facts and circumstances, the Panel declines on its own

motion [2] to extend the period of time fixed

by the Rules for the filing of a Response and, therefore, declines to consider

Respondent's late-filed Response.

First, it is not correct that Federal Express will not deliver to a Post Office

Box. It will do so when there is a phone number for the recipient. In this case,

there was a phone number listed for Respondent, and this number was provided

by WIPO to Federal Express. However, the telephone number provided by Respondent

to the registrar, Network Solutions, Inc., was not correct. The returned Federal

Express package had a short note indicating that the phone number belonged to

a "Maria." Thus, it appears that, but for Respondent's inaccurate listing of

its phone number, the Federal Express package with the Notification of Complaint

and Complaint would have been delivered in a timely manner.

Further, and more importantly, the evidence suggests that Respondent received

all communications, including the Notification of Complaint and Complaint, via

e-mail. The Panel notes that the e-mail address to which all communications

were sent is the same address from which Respondent communicated her late Response.

One must, therefore, presume that Respondent received the Notification of Complaint,

together with the Complaint, in a timely manner. [3]

In sum, while this Panel prefers to decide administrative proceedings involving

domain names based on the merits, the facts and circumstances set forth above

do not support a determination that this is an "exceptional case" under Rule

10(c). Therefore, there is no basis to take into account the untimely Response.

Decision

The Panel, accordingly, reaffirms its decision in favor of Complainant and

reaffirms the requirement that the domain name "portners.com" be transferred

to Complainant.

Jeffrey M. Samuels

Sole Panelist

Dated: February 12, 2001

Footnotes:

1. Pursuant to Rule 5, a response is due

within 20 days of the commencement of the administrative proceeding. The instant

administrative proceeding was commenced on November 23, 2000.

2. Pursuant to Rule 10, the Panel may, at

the request of a party or on its own motion, extend, in "exceptional cases,"

a period of time fixed by these Rules…." The Panel notes that WIPO informed

the Respondent of her right to submit a request to file a late Response and

that Respondent, in her December 20 e-mail message, indicated she would do so.

However, the Panel is not aware that any such request was filed.

3. It appears that the Notification of Complaint

and Complaint were sent by WIPO via e-mail on November 22, 2000.