The Omelette Chefs, Inc. T/A The Omelette Chefs v. Egg-O-Mania, Inc. (T/A Mr. Omelette / David Model)

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 [1].

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.

7. Decision

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

Sole Panelist

Dated: December 5, 2001

Footnote:

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.