Birinyi Associates, Inc. v. Convert

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Birinyi Associates, Inc. v. Convert

Case No. D2001-0395

1. The Parties

The Complainant is Birinyi Associates, Inc., a private company, with its principal

place of business in Westport, Connecticut 06881, United States of America ("Complainant").

The Complainant is represented by Sandra Edelman and Marc S. Reiner

of Dorsey & Whitney, LLP of 250 Park Avenue, New York, New York 10177, United

States of America.

The Respondent is Convert, an entity with a mailing address of 24 Richmond

Hill Avenue, Suite 420, Stamford, Connecticut 06901, United States of America

("Respondent"). The administrative contact for Respondent is Steve

Seefeld of 14 Duck Pond Road, East Norwalk, Connecticut 06855, United States

of America. His e-mail address is <postmaster@convertbond.com>.

2. The Domain Name and Registrar

The disputed domain name is <birinyi.com> (the "Disputed Domain

Name"), registered with Network Solutions, Inc., 505 Huntmar Park Drive,

Herndon, Virginia 20170, United States of America (the "Registrar").

3. Procedural History

Complainant filed a complaint (the "Complaint") with the World Intellectual

Property Organization Arbitration and Mediation Center (the "Center")

on March 19, 2001.

The Center verified that the Complaint satisfied the formal requirements of

the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"),

the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform

Rules"), and the WIPO Center Supplemental Rules for Uniform Domain Name

Dispute Resolution Policy (the "Supplemental Rules").

A Request for Registrar Verification was issued by the Center to the Registrar

on March 23, 2001, and a response by the Registrar was received by the

Center on March 28, 2001.

A Notification of Complaint and Commencement of Administrative Proceeding (the

"Commencement Notification") was communicated by the Center to the

Respondent by e-mail, facsimile, and courier on March 29, 2001. The Panel has

seen the courier receipt and is satisfied that the delivery of the Commencement

Notification is in conformity with the relevant requirements under Paragraph

2 and Paragraph 4 of the Uniform Rules and the relevant provisions of the Supplemental

Rules.

No Response was received by the Center from Respondent on or before April 17,

2001, which was the last date for Respondent to submit a Response under Paragraph

5 of the Uniform Rules and the relevant provisions of the Commencement Notification.

A Notification of Respondent Default (the "Default Notification")

was communicated by the Center to Respondent by e-mail on April 25, 2001. The

Panel is satisfied that the Default Notification was effectively delivered to

Respondent as required by relevant provisions of the Uniform Rules and the Supplemental

Rules.

Complainant has elected to designate a single-member Administrative Panel in

accordance with Paragraph 3(b)(iv) of the Uniform Rules. By failing to submit

a Response on time, Respondent waived the right to designate a three-member

Administrative Panel under Paragraph 5(b)(iv) of the Uniform Rules. Based on

a Statement of Acceptance and Declaration of Impartiality and Independence,

duly signed by the Panelist and dated May 21, 2001, the Administrative

Panel (the "Panel") was duly appointed by the Center on June 6, 2001.

A Notification of Appointment of Administrative Panel and Projected Decision

Date was communicated by the Center to both Complainant and Respondent on June

6, 2001. There have been no further submissions thereafter. The date scheduled

for the issuance of the Panel’s decision is June 20, 2001.

4. Factual Background

Under Paragraph 5(e) of the Uniform Rules, "[i]f a Respondent does not

submit a response, in the absence of exceptional circumstances, the Panel shall

decide the dispute based on the complaint."

Since Respondent failed to submit a Response before the date of this decision,

and in the absence of any exceptional circumstances, the Panel adopts here the

following asserted facts in the Complaint as undisputed facts, and decides the

dispute between Complainant and Respondent based on the following undisputed

facts:

(i) Complainant is a research and money management firm founded in 1989. Complainant

began offering financial research services under the BIRINYI service mark in

1989 and money management services under the Birinyi service mark in 1993. Complainant

currently offers three main areas of financial related services under the BIRINYI

trademark.

(ii) Complainant registered and owns the following trademark registration:

United States Trademark Registration No. 2,412,151, dated December 12, 2000,

for the mark BIRINYI for financial services, namely, investment advice, financial

and money management and financial research, in International Class 36, with

a first use in commerce date of July 25, 1989.

(iii) Complainant owns and operates the domain name <lbirinyi.com>, which

provides access to a website providing financial information and services to

users of the website.

(iv) The administrative contact for Respondent, Mr. Steven Seefeld, manages

a hedge fund that seeks investment funds from high net worth individuals and

institutional investors. Mr. Seefeld is well acquainted with Complainant and

its founder, Mr. Laszlo Birinyi.

(v) Respondent registered the Disputed Domain Name on October 5, 1998, shortly

after a quarrel between Mr. Seefeld and Mr. Birinyi regarding Complainant’s

employment of one of Mr. Seefeld’s former employees. Respondent had at one time

offered to transfer the Disputed Domain Name to Complainant, but the negotiation

broke down because the price asked by Respondent was unacceptable to Complainant.

Respondent gave no response to Complainant’s further request to transfer the

Disputed Domain Name.

5. Parties’ Contentions

Complainant asserts:

(i) The Disputed Domain Name is identical or confusingly similar to Complainant’s

name and registered trademark. The commercial impression conveyed by Respondent’s

Disputed Domain Name and Complainant’s name and trademark are one and the same.

Accordingly, Respondent’s chosen domain name suggests a false sense of origin

or sponsorship for any associated goods and services, and was chosen by Respondent

to take a free ride on the goodwill associated with Complainant’s name and distinguished

trademark.

(ii) Respondent does not demonstrate any legitimate interests in the Disputed

Domain Name. Respondent has not used or made any demonstrable preparations to

use the Disputed Domain Name, or a name corresponding to the Disputed Domain

Name, in connection with a bona fide offering of goods or services. Respondent

does not make a legitimate noncommercial or fair use of the Disputed Domain

Name. The BIRINYI trademark is distinctive and unique to Complainant, and Complainant

has never authorized Respondent to use the trademark in any manner.

(iii) The Disputed Domain Name has been registered and is used by Respondent

in bad faith. Respondent’s registration of the Disputed Domain Name is an attempt

to capitalize unfairly on the fame and goodwill of Complainant’s name and trademark.

Under Paragraph 4(b) of the Uniform Policy, Respondent’s bad faith in using

the Disputed Domain Name should be easily established.

Pursuant to Paragraph 5(e) of the Uniform Rules, in the absence of a Response

from the Respondent, "the Panel shall decide the dispute based on the complaint."

The Panel will independently determine the merits of the Complaint on the basis

of all evidences available.

6. Discussion and Findings

The Disputed Domain Name is identical to the trademark in which Complainant

has rights.

The Disputed Domain Name is identical to Complainant’s registered trademark.

Even though the Complainant has asserted that the trademark is distinctive

and popular, there is no other evidence to lead the Panel to regard Complainant’s

trademark as a famous mark. Therefore, the Panel does not consider in this decision

the question whether there is any dilution to Complainant’s trademark caused

by Respondent’s registration and use of the Disputed Domain Name.

Nevertheless, the Panel finds that Complainant has proved that the Disputed

Domain Name is identical to Complainant’s trademark under Paragraph 4(a)(i)

of the Uniform Policy.

Respondent has no rights or legitimate interests in respect to the Disputed

Domain Name.

Except for having registered and maintained the Disputed Domain Name, there

is no evidence to suggest Respondent has ever used, or demonstrated preparations

to use, the Disputed Domain Name, or a name corresponding to the Disputed Domain

Name in connection with a bona fide offering of goods and services. There is

no evidence that Respondent has been commonly known by the Disputed Domain Name.

There is also no evidence that Respondent is making or intends to make a legitimate

non-commercial or fair use of the Disputed Domain Name.

Based on the above, the Panel concludes that Respondent fails the tests set

out in Paragraph 4(c) of the Uniform Policy and cannot claim rights or a legitimate

interests in the Disputed Domain Name thereunder.

The Panel notices that Respondent appeared to only intend to use the Disputed

Domain Name to transfer the domain name registration to Complainant in return

for a price unacceptable to Complainant. This intended use of the Disputed Domain

Name is not a honest commercial practice on Respondent’s behalf and cannot prove

that Respondent has acquired rights or legitimate interests in the Disputed

Domain Name. In fact, the offering of a domain name for sale to the owner of

a trademark that is identical to or confusingly similar to the domain name for

more than the cost to register and possibly maintain that domain name is evidence

of bad faith.

The Panel therefore concludes that Complainant has proved that Respondent has

no rights or legitimate interests in respect of the Disputed Domain Name under

Paragraph 4(a)(ii) of the Uniform Policy.

The Disputed Domain Name has been registered and is being used in bad faith.

There is no evidence to challenge Complainant’s assertion that the Disputed

Domain Name was registered by Respondent shortly after an oral dispute between

Complainant and Respondent, and that at one time Respondent had tried to sell

the Disputed Domain Name to Complainant for a price unacceptable to Complainant.

Under Paragraph 4(b)(i) of the Uniform Policy, in the absence of any evidence

that Respondent has ever used, or intended to use, the Disputed Domain Name

for any legitimate purposes, the Panel finds that Respondent has registered

the Disputed Domain Name primarily for the purpose of selling the domain name

registration to Complainant for more than the cost of registering and maintaining

the domain name.

However, the Panel finds untenable Complainant’s contention that, under Paragraph 4(b)(iii)

of the Uniform Policy, Respondent registered the Disputed Domain Name primarily

for the purpose of disrupting Complainant’s business. Although potentially a

direct competitor of Complainant’s, there is no evidence that Respondent intended

to or has disrupted Complainant’s business by registering the Disputed Domain

Name. There is also no evidence that Respondent has used or intends to use the

Disputed Domain Name to engage in any activities, which directly or indirectly

disrupt Complainant’s business.

Although not specifically asserted by Complainant as a factor in finding Respondent’s

bad faith, under Paragraph 4(b)(ii) of the Uniform Policy Complainant’s asserted

facts prove that Respondent registered the Disputed Domain Name in order to

prevent Complainant from reflecting its trademark in a corresponding domain

name. The Panel notices that the domain name currently used by Complainant for

its commercial website is <lbirinyi.com>, which does not reflect Complainant’s

trademark, but the personal name of its founder, Mr. L. Birinyi. The direct

effect of Respondent’s registration of the Disputed Domain Name is to prevent

Complainant from using the Disputed Domain Name to exactly reflect Complainant’s

trademark.

The Panel therefore finds that Complainant has proved Respondent’s bad faith

in registering and using the Disputed Domain Name under Paragraph 4(a) of the

Uniform Policy.

Having reached the above conclusion, the Panel finds that it is unnecessary

to consider Complainant’s further contention that Respondent’s bad faith in

registering and using the Disputed Domain Name can also be established by factors

not elaborated in Paragraph 4(b) of the Uniform Policy.

7. Decision

In light of the foregoing, the Panel hereby determines that the Disputed Domain

Name is identical or confusingly similar to the trademark of Complainant, that

Respondent has no rights or legitimate interests in respect of the Disputed

Domain Name, and that the Disputed Domain Name has been registered and is being

used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Uniform Policy, the Panel hereby

orders that the Disputed Domain Name <birinyi.com> be transferred to Complainant.

Timothy D. Casey

Panelist

Dated: June 20, 2001