Chi?Chi's, Inc.
v.
Restauran Commentary (Restaurant Commentary)
[Indexed as: Chi-Chi's v. Restauran Commentary]
[Indexed as: chichis.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000?0321
Commenced: 1 May, 2000
Judgment: 29 June, 2000
Presiding Panelist: Dennis A. Foster
Domain name - U.S. Trademark - U.S. Service mark - Identical -Confusingly
similar - Legitimate interests - Bad faith registration - Bad faith use.
Complainant is owner of numerous trademarks and service marks using
some form of the name "Chi-Chi's," which have been registered in the United
States and in many other countries. These trademarks and service
marks are used for a chain of restaurants in the United States.
Respondent registered the disputed domain name, chichis.com.
Held, Name Transferred to Complainant.
Respondent's trademark is identical to Complainant's trademark.
The only difference is the absence of a hyphen and an apostrophe.
Respondent has no legitimate rights or interests in the disputed
domain name, chichis.com, because Respondent's infringing use of the trademark
to coin a domain name with the vague stated purpose of "public comment"
is far too little.
The Panel is empowered to take notice of appropriate national law.
Well-settled U.S. Law states that Respondent's disclaimer at the domain
name website disavowing any connection with Complainant is insufficient
to cure an infringing trademark use.
Respondent's registration and attempted use of the domain name, chichis.com,
is in bad faith because Respondent was aware it was infringing a
famous service mark, and Respondent's studious refusal in its Response
to enlighten the Panel on what its intentions were when it registered the
disputed domain name, chichis.com.
Registration Agreements referred to
International Corporation for Assigned Names and Numbers (ICANN) Policy
and Rules
Supplemental Rules of the World Intellectual Property Organization's
Arbitration and Mediation Center
Panel Decision referred to
- Foster, Panelist: -
1. The Parties
The Complainant is:
Chi?Chi's, Inc.
18831 Von Karman
Irvine, California 92612
United States of America
Represented by:
Charles C. Fowler, Esq.
Lyon & Lyon LLP
1900 Main Street, Sixth Floor
Irvine, California 92614
United States of America
The Respondent is:
Restauran Commentary
(Restaurant Commentary)
c/o Internet Services
Dunn Loring, Virginia 22027
P.O. Box 286
United States of America
Represented by:
Thomas P. Liniak, Esq.
Liniak, Berenato, Longacre & White, LLC
6550 Rock Spring Drive
Bethesda, Maryland 20817
United States of America
2. The Domain Name and Registrar
The domain name in dispute is <chichis.com>, and the Registrar is
Network Solutions, Incorporated (NSI) of Herndon, Virginia.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy
for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved
by the Internet Corporation for Assigned Names and Numbers (ICANN) on October
24, 1999, and the World Intellectual Property Organization Arbitration
and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute
Resolution (the Center, the Supplemental Rules).
The Complaint was filed on May 1, 2000. On May 2, 2000, the Center requested
that the Registrar NSI check and report back on the registrant for the
domain name <chichis.com>. On May 3, 2000, NSI reported to the Center
that the registrant was the Respondent:
Restaurant Commentary
c/o Internet Services
PO Box 286
Dunn Loring, Virginia 22027
On May 8, 2000, the Center forwarded a copy of the Complaint to Respondent
by registered mail and by e?mail and this Proceeding officially began.
Respondent's Response, filed in the name of Restaurant Commentary, was
received by the Center on May 26, 2000.
The Administrative Panel submitted a Declaration of Impartiality and
Independence on June 12, 2000, and the Center proceeded to appoint the
Panel on June 15, 2000. This Panel finds the Center has adhered to the
Policy and the Rules in administering this Case.
This Decision is due by June 29, 2000.
4. Factual Background
Complainant is the owner of numerous trademarks and service marks using
some form of the name "Chi?Chi's", which have been registered on the principal
register in the United States and in many other countries of the world
(Complaint Exhibits D, E and F). Complainant uses these trademarks and
service marks in running a chain of restaurants located in the United States.
Complainant registered the domain name <Chi?Chis.com> during 1997. Subsequently
in 1997, Respondent registered the disputed domain name <chichis.com>.
Availing itself of the Registrar NSI's administrative dispute resolution
procedure in force at that time, in September 1997 Complainant succeeded
in placing the disputed domain name on hold by sending to NSI proof of
Complainant's ownership of valid and subsisting trademarks using the name
"Chi?Chi's". Complainant now seeks to have the disputed domain name transferred
to itself through this ICANN Administrative Proceeding. Respondent would
like to keep the domain name for its own stated use of public comment on
the internet.
5. The Parties' Contentions
Complainant's Contentions:
· The Complainant is the owner of United States federal principal
register trademarks and service marks for "CHI?CHI's" restaurant services
dating back to 1976 (Complaint p.5). These marks also are registered in
numerous other countries such as Germany, Kuwait, South Africa, Japan etc.
· Respondent's domain name, <chichis.com>, is identical or
confusingly similar to the Complainant's service mark.
· Respondent has no rights or legitimate interests in the disputed
domain name <chichis.com>.
· Given the international notoriety of Complainant's service
mark, Respondent was aware of Complainant's trademark rights when Respondent
registered the disputed domain name. Hence, Respondent's registration and
use of the disputed domain are in bad faith.
· Respondent only registered the disputed domain name to prevent
Complainant from doing so, and to sell the name to Complainant.
Respondent's Contentions
· Respondent registered a similar, but not identical or confusingly
similar, domain name for the purpose of providing public commentary (Response
p.1).
· Respondent has full intention of making non?infringing, legitimate
non?commercial use of the domain name.
· Respondent does not intend to sell or transfer the domain name.
· Respondent's proposed web page has a disclaimer stating it
is not the web page of "Chi?Chi's Restaurants."
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name
<chichis.com> transferred to it, Complainant must prove the following
(the Policy, para 4(a)(i?iii):
· the domain name is identical or confusingly similar to a trademark
or service mark in which the
Complainant has rights; and
· the Respondent has no rights or legitimate interests in respect
of the domain name; and
· the domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
Respondent's disputed domain name <chichis.com> differs from Complainant's
trade and service marks by the absence of a hyphen and an apostrophe. This
Panel believes traditional trademark law would find Respondent's trademarks
identical to Complainant's, and this Panel adheres to this view in this
Decision. Other Center Panels have found so (see for example Case
No. D2000?0012), while still other Panels have found that varying only
punctuation leaves trademarks, at best, confusingly similar. Also, it is
now general knowledge that, on the internet, search engines often would
include a name like Respondent's when the searcher was looking for Complainant
using Complainant's famous trademark as a search guide.
Legitimate Rights or Interests
Claimant contends Respondent has no rights in the trademarks and service
marks using "CHI?CHI'S", and therefore no rights in the domain name.
Respondent, on the other hand, says that it intends to use the disputed
domain name <chichis.com> for "public comment" on the internet. Respondent
has left this Panel entirely up in the air regarding the subject matter
or nature of this public comment. No license or fair use of the trademark
is apparent. This Panel only sees Respondent's infringing use of the trademark
to coin a domain name with the vague stated purpose of "public comment."
This is far too little. This Panel finds Respondent has no legitimate rights
or interests in the disputed domain name <chichis.com>.
Registered and Used in Bad Faith
Under the Policy 4(b), this Panel is also empowered to consider other
evidence of bad faith in addition to what is enumerated in the Policy.
Respondent had constructive notice of Complainant's service mark ownership
dating back to 1976, and actual notice because of the notoriety of the
trademark when Respondent adopted the disputed domain in 1997.
Respondent's disclaimer at the domain name website disavowing any connection
with Complainant is insufficient to cure an infringing trademark use. This
is well?settled at U.S. law and this Panel is empowered to notice appropriate
national law under the Rules 15(a).
Furthermore, again pursuant to the Policy 4(b), and looking at this
case as a whole, this Panel is of the opinion that Respondent's very Response
is indicative of its bad faith in registering the disputed domain name
<chichis.com>. Respondent states that it adopted the famous service
mark "Chi?Chi's" for the disputed domain name for the purpose of "public
comment" and that this is a "legitimate non?commercial use" (Response pp.2?3
and the Policy 4(c)(iii). This Panel finds it disconcerting that Respondent
does not reveal the topics of this public comment, nor why the famous trademark
"Chi?Chi's" was chosen as the domain name for the site for comment.
Certainly, Respondent's name "Restaurant Commentary" leads this Panel to
infer the comment would be about restaurants. Perhaps Respondent thought
this inference would make its case weaker and therefore decided to leave
the nature of the "public comment" as vague as possible.
The internet is an alternative public medium as are television, newspapers
and the radio. It is inconceivable to this Panel that Respondent, without
license or permission, would be able to use the famous service mark of
a restaurant chain like "CHI?CHI's" for a restaurant public commentary
production on television, in the newspapers, or on the radio. This would
infringe the famous restaurant service mark. This Panel believes this same
reasoning is valid for internet domain names in general, and for the disputed
domain name <chichis.com> in this Case in particular.
This Panel finds Respondent's registration and attempted use of the
domain name chichis.com>is in bad faith principally because Respondent
was well aware it was infringing a famous service mark (see Case No. D2000?0018).
And, this Panel's finding of bad faith is reinforced by Respondent's studious
refusal in its Response to enlighten this Panel on what its intentions
were when it registered the disputed domain name <chichis.com>.
7. Decision
Pursuant to ICANN Policy para 4(i) and Rule 15, this Panel orders that
the disputed domain name <chichis.com> be turned over to Complainant.
This domain name is identical or at best confusingly similar to Complainant's
service mark "Chi?Chi's", the Respondent has no rights or legitimate interests
in this domain name, and Respondent registered and used the domain name
in bad faith.
Dennis A. Foster
Sole Panelist
Dated: June 29, 2000
Domain
Name Transferred
