Habit Holding Co., L.L.C. v. Michael Pimentel

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Habit Holding Co., L.L.C. v. None / Michael Pimentel

Case No. D2004-1009

1. The Parties

The Complainant is Habit Holding Co., L.L.C., Santa Barbara, California, United States of America, represented by Lyon & Harr, LLP, United States of America.

The Respondent is None / Michael Pimentel, Newbury Park, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <hamburgerhabit.com> and <hamburgerhabit.net>

are registered with Tucows Inc. (“Tucows” or the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on December 1, 2004, and in hardcopy on December 20, 2004. On December 2, 2004, the Center by email formally acknowledged receipt of the Complaint.

On December 2, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On December 2, 2004, Tucows transmitted by email to the Center its verification response indicating that no name was provided for the registrant, although an address in California was provided, confirming that Respondent is listed as the administrative contact and that his address was the same as the registrant’s address, and providing the contact details for the technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 December 28, 2004. As required by the Rules, the Center sent a copy of the Complaint, along with a Notification of Complaint and Commencement of Administrative Proceeding, to Respondent by Federal Express to his street address and to all of Respondent’s known email addresses, including for his administrative and technical contacts. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 17, 2005. Respondent did not submit any Response. Accordingly, the Center issued a Notification of Respondent Default on January 19, 2005.

The Center appointed David H. Bernstein as the Sole

Panelist in this matter on February 2, 2005. The Panel finds that it was properly

constituted. The Panel has submitted the Statement of Acceptance and Declaration

of Impartiality and Independence, as required by the Center to ensure compliance

with the Rules, paragraph 7.

4. Factual Background

Because Respondent failed to file a Response, the

Panel accepts as true all statements of fact made by Complainant in its submission.

See EAuto, L.L.C. v. EAuto Parts, WIPO

Case No. D2000-0096 (April 9, 2000).

Complainant, a California corporation, provides restaurant services in the state of California. Complainant owns U.S. Trademark Registration No. 1,557,088 for the mark HAMBURGER HABIT for “Prepared meat sandwiches for consumption on or off the premises.” The HAMBURGER HABIT mark was registered on September 19, 1989 and claims a date of first use of December 20, 1988. The registration became incontestable on May 23, 1996.

Respondent1 registered the <hamburgerhabit.com> and <hamburgerhabit.net> domain names (the “Domain Names”) on January 27, 2004. Since then, Complainant attempted to contact Respondent, mailing three letters to Respondent’s address. One of these letters was returned to Complainant unopened. Complainant also tried to contact Respondent using the telephone number listed in Respondent’s registration application, but found that the number (which also served as Respondent’s fax number) was disconnected.

On November 19, 2004, Complainant’s counsel

sent an email message to the address provided by Respondent in his WHOIS listing.

In this email, Complainant’s counsel stated that Respondent was violating

Complainant’s rights and requested that Respondent immediately transfer

the Domain Names to Complainant. In return, Complainant would reimburse Respondent

for the registration fees he had paid in registering the Domain Names. Respondent

replied to this email message on November 24, 2004 and stated that he would

like $50,000 in exchange for the Domain Names. Respondent also suggested that

he would ask for more than $50,000 if he obtained a lawyer to resolve this matter.

In addition, Respondent claimed that he had received other offers for the Domain

Names.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Names are identical to Complainant’s HAMBURGER HABIT mark because the Domain Names merely add “.com” or “.net” to the end of the trademark.

Complainant contends that Respondent lacks any rights or legitimate interests in the Domain Names. Complainant alleges that, prior to any notice to Respondent of this dispute regarding the Domain Names, Respondent had not used or made any demonstrable preparations to use the Domain Names or a name corresponding to the Domain Names in connection with the bona fide offering of goods, nor has Respondent been commonly known by the Domain Names. Complainant states that, in response to Complainant’s request for a transfer of the Domain Names, Respondent stated, “I have no current plans in using either of the domain names.” Complainant asserts that Respondent is not making any legitimate non-commercial or fair use of the Domain Names and that the Domain Names merely point to the default placeholders provided for websites hosted by Web.com.

Complainant alleges that the Domain Names were registered and used in bad faith. Complainant argues that Respondent registered the Domain Names in order to sell, rent or otherwise transfer them for valuable consideration well in excess of his documented out-of-pocket expenses, as evidenced by Respondent’s offer to sell the Domain Names to Complainant for $50,000 even though Complainant offered to reimburse Respondent for the registration fees he incurred in registering the Domain Names. Complainant contends that Respondent has suggested that he would sell the Domain Names to a third party, either a web reseller or an advertiser, if Complainant would not pay the $50,000, and that Respondent threatened to raise the amount demanded if he decided to hire an attorney in order to settle this dispute.

Complainant further alleges that Respondent is disrupting Complainant’s business by leaving a default placeholder webpage for each Domain Name, which may cause consumers to believe that no webpage exists for Complainant’s services offered under the HAMBURGER HABIT mark. Complainant argues that Respondent has sought to prevent Complainant from reflecting its mark in a corresponding domain name by registering both the .com and .net versions of the mark. Complainant alleges that Respondent plans to use the Domain Names to intentionally divert Internet users to his websites by creating a likelihood of confusion with Complainant and its mark as to the affiliation of Respondent’s websites. Finally, Complainant alleges that Respondent failed to provide accurate contact information during the registration of the Domain Names.

B. Respondent

Respondent did not reply to Complainant’s contentions.2

6. Discussion and Findings

The burden for Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

There can be no question but that the Domain Names are identical to Complainant’s

HAMBURGER HABIT mark for the purposes of the Policy. The Domain Names incorporate

in their entirety the HAMBURGER HABIT mark, which is registered with the U.S.

Patent and Trademark Office and thus is entitled to a presumption of validity.

EAuto L.L.C. v. Triple S. Auto Parts, WIPO

Case No. D2000-0047 (March 24, 2000). The addition of a gTLD such as “.com”

or “.net” and/or the elimination of spaces are without legal significance

in determining identity or similarity. See, e.g., J.P. Morgan v. Resource

Marketing, WIPO Case No. D2000-0035

(March 23, 2000). The Panel thus finds that Complainant has satisfied the requirements

of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has made a prima facie showing that Respondent lacks any rights

or legitimate interests in the Domain Names. The Domain Names do not appear

to be in use for any bona fide purpose and there is no indication that

Respondent was known by the name HAMBURGER HABIT prior to registration of the

Domain Names. Respondent is not authorized or licensed to use Complainant’s

mark. Respondent, having submitted no Response, has failed to rebut this showing.

See Document Technologies, Inc. v. International Electronic Communications,

Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Accordingly, the Panel finds that Complainant has satisfied the requirements

of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant has made a prima facie showing that Respondent registered the Domain

Names primarily for the purpose of selling or otherwise transferring the Domain

Names to Complainant for valuable consideration in excess of Respondent’s

out-of-pocket costs directly related to the Domain Names. The evidence demonstrates

that, although Complainant offered to reimburse Respondent for the registration

fees he paid in registering the Domain Names, Respondent offered instead to

sell the Domain Names to Complainant for $50,000, an amount obviously far in

excess of the registration costs. The Panel finds that the above evidence is

sufficient to establish registration and use in bad faith under paragraph 4(b)

of the Policy. See, e.g., Bank of Ireland Securities Services Ltd. v. Boissonnault,

WIPO Case No. D2004-0352 (August 17, 2004) (finding

bad faith where respondent offered to sell domain names to complainant even

though respondent did not ask for a specific amount of money for the domain

names). Accordingly, Complainant has satisfied the requirements of paragraph 4(a)(iii)

of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <hamburgerhabit.com> and <hamburgerhabit.net> be transferred to Complainant.

David H. Bernstein

Sole Panelist

Date: February 9, 2005

1 The Registrar verification lists the registrant as “none.” Presumably, the registrant failed to list any name as registrant when he registered these domain names. The administrative contact was listed as Michael Pimentel. Because the address listed for the registrant is the same as Mr. Pimentel’s, the Panel finds that Mr. Pimentel is, in fact, the registrant and thus the proper Respondent in this proceeding.

2 Given the absence of

a Response, the Panel has scoured the record to ensure itself that Respondent

received fair notice of the Complaint. See Kidman v. Zuccarini, WIPO

Case No. D2000-1415 (January 23, 2001). A Federal Express package containing

the Complaint was delivered to Respondent’s street address on December 30, 2004.

However, Respondent indicated in his November 24, 2004 email to Complainant’s

counsel that he was planning to move to Spain by the end of the year. It thus

is possible that Respondent did not receive the Federal Express package that

was delivered to his California address, although the Panel notes that it is

Respondent’s obligation as a domain name registrant to keep his contact

information current Id. It also appears that Respondent did not receive

notice by fax. At the time the Center issued its notice commencing the proceeding,

it did not fax a copy of the Notification of Complaint and Commencement of Administrative

Proceeding to Respondent at the fax number listed in his WHOIS information,

as disclosed in the Registrar verification. That may have been because Complainant

indicated in the Complaint that Respondent’s fax number was not working.

Nevertheless, and to ensure that due process has been followed in this case,

the Panel directed the Center to again try to reach Respondent by fax. The Center

has done so on two separate occasions, and has confirmed that Respondent’s

fax number is not operational. In any event, the Panel is persuaded that Respondent

received fair notice of the Complaint via email. One of the email addresses

used by the Center for its notification was the same as the email address used

by Respondent on November 24, 2004 when he wrote to Complainant’s counsel.

Moreover, the Center did not receive any bounce back notice indicating that

its emails to this address (including both the Notification of Complaint and

Commencement of Administrative Proceeding and the Notification of Respondent

Default) were not delivered. Thus, the Panel finds that WIPO discharged its

obligations to provide fair notice, as required by paragraph 2(a) of the Rules.