Domain Name - Domain Name Dispute - Uniform Domain Name Dispute Resolution Policy - Trademark - Registration - Service Mark - Bad Faith Registration - Bad Faith Use - Under Construction - Identical Name - Confusingly similar - Distinctive Service mark - Secondary Meaning.

Complainant is registrant of trademark <HAMBURGER HAMLET>.  Respondent is registrant of domain name <HAMBURGERHAMLET.COM>.  Complainant alleges that given the distinctiveness of its mark particularly in where the Respondent resides, the Respondent was aware of Complainant's mark at time Respondent registered domain name.   Complainant alleges that Respondent's domain name is identical or confusingly similar with Complainant's registered mark, that Respondent has no rights or legitimate interests in respect of domain name and that domain name has been registered and is being used in bad faith. Respondent did not provide to Complainant's contentions.

Held:  Name Transferred to Complainant.

Domain Name is confusingly similar to Complainant's service mark, the latter of which is inherently distinctive as well as famous, as it has been used in conjunction with Complainant's restaurant business since 1954.

Respondent has no rights or legitimate interests in respect of domain name, other than it has registered the domain name, and registration alone does not function to evade the application of the Policy.

Respondent has registered and used domain name in bad faith. Given the inherent distinctiveness of the Complainant's service mark and the Respondent's lack of non-commercial or fair use of the mark, Respondent's only or primary intention in registering and using domain name was to either sell the name registration and or to otherwise prevent Complainant from using name as is its proper right. 

Policies Referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Reports Referred to

WIPO, The Management of Internet Names and Addresses:   Intellectual Property Issues, Report of the WIPO Internet Domain Name Process, http://wipo2.int, Apr.30, 1999, WIPO Pub. 439 (E)

Registration Agreements Referred to

U.S. Patent and Trademark Office service mark, dated January 16, 1973

Network Solutions Inc. Domain Name Registration Agreement, effective February 13, 2000

Cases referred to

Avery v. Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. LEXIS 19954

Educational Testing Service v. TOEFL, Case D2000-0044, decided March 16, 2000

1. The Parties

The Complainant is The Hamlet Group, Inc., a corporation organized in the State of California, United States of America (USA), with place of business in Irvine, California, USA.

The Respondent is James Lansford, with address in Encino, California, USA.

2. The Domain Name(s) and Registrar(s)

The disputed domain name is "hamburgerhamlet.com".

The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

1. The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on February 17, 2000, and by courier mail received by WIPO on February 22, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On February 23, 2000, WIPO completed its formal filing compliance requirements checklist. 

2. On February 23, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to the Respondent via telefax and e-mail. On February 24, 2000,WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via courier mail 1. On February 23, 2000, WIPO transmitted notification of the complaint to ICANN, Network Solutions and Complainant's authorized representative. 

3. On March 14, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint by e-mail. 

4. On March 15, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On March 15, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

5. On March 17, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by March 31, 2000. On March 17, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. On March 27, the Panel received a hard copy of the file in this matter via telefax from WIPO. 2

4. Factual Background

Complainant has provided a copy (Complaint, Annex D) of its U.S. Patent and Trademark Office service mark registration dated January 16, 1973, and its renewal dated January 16, 1993, for "HAMBURGER HAMLET", number 951,007, on the Principal Register. Complainant states that the "HAMBURGER HAMLET" service mark is in use with respect to its restaurant services business in the United States. The validity of Complainant's service mark registration for "HAMBURGER HAMLET" has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of a valid service mark registration for "HAMBURGER HAMLET" in the United States.

Complainant has provided certain evidence (Complaint, Annex E) with respect to trademark and service mark registrations for Benelux (No. 0057444), Canada (No. 173,875), Germany (No. 921,294), Great Britain (No. 944,770), Japan (No. 2024737 and 2067007) and Italy (No. 249,806), for "HAMBURGER HAMLET", and indicates that it is the owner of those marks. Evidence of renewals submitted with respect to the Benelux and Canada registrations is sufficient to establish that those registrations remain effective. Evidence of renewal for the remaining registrations was not transmitted with the complaint. The Panel accepts as an undisputed fact that Complainant is the holder of valid trademark registrations for "HAMBURGER HAMLET" in Benelux and Canada, and (without prejudice to the interests of the Complainant) makes no determination as to the marks in Germany, Great Britain, Japan or Italy.

Network Solutions' WHOIS database query response (Complaint, Annex A) indicates that LANSFORD, JAMES, with Administrative Contact at "LANSFORD, JAMES" is the registrant of the domain name "HAMBURGERHAMLET.COM". The record of this registration was created on May 1, 1999, and was last updated on October 15, 1999.
Complainant has provided a printed copy of the Network Solutions' standard form "Under Construction" web page that it found when it entered the "hamburgerhamlet.com" Internet address on February 14, 2000 (Complaint, Annex F).

The Service Agreement in effect between Respondent and Network Solutions as of February 13, 2000 (Complaint, Annex A) subjects Respondent to Network Solutions' dispute settlement policy, which as of that date is the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

5. Parties' Contentions

1. Complainant

Complainant states and provides evidence that it is the owner of a registered service mark in the United States for "HAMBURGER HAMLET", and further indicates that "[t]he mark is inherently distinctive as well as famous, as it has been used in conjunction with Complainant's restaurant services since 1954. Complainant's Hamburger Hamletâ restaurants are internationally known, and Complainant has invested substantial amounts of time and money in developing and marketing the Hamburger Hamletâ restaurants, their businesses, and goodwill in the HAMBURGER HAMLETâ mark" (Complaint, para. 12(A)).
Complainant states that it is the owner of trademark and service mark registrations for Benelux, Canada, Germany, Great Britain, Japan and Italy for "HAMBURGER HAMLET", and provides certain evidence with respect to such registrations (id., para. 12(B)) (see Factual Background, supra).

Complainant states that the mark "HAMBURGER HAMLET" is distinctive, has acquired secondary meaning, and "has come to signify the Complainant as the source of restaurant services and other goods and services bearing the name" (id., para. 12(C)).

Complainant states that the domain name, "hamburgerhamlet.com", registered by Respondent, is identical or confusingly similar to its "HAMBURGER HAMLET" service mark (id., para. 12(D)).

Complainant indicates, "Respondent has no rights or legitimate interests in respect of the HAMBURGERHAMLET.COM domain name. As evidence of Respondent's lack of rights or legitimate interests in respect of the HAMBURGERHAMET.COM domain name, Complainant is informed and believes and thereon alleges that: (1) Respondent has no trademark or intellectual property rights in the domain name HAMBURGERHAMLET.COM. (2) Respondent made no use of the domain name HAMBURGERHAMLET.COM in connection with the bona fide offering of any goods or services prior to his notice of this dispute, and, in fact, has not made any such use of the domain name to the date of this Complaint, nor, in fact, does the Respondent maintain any company or contact information on his web site. … (3) Neither the Respondent, nor anyone associated with the Respondent, has been commonly known by the names HAMBURGER HAMLET or HAMBURGERHAMLET.COM. (4) Respondent has made no bona fide noncommercial or fair use of the domain name or the 
Complainant's service mark" (id, para. 12(E)).

Complainant states that "(2) Given the notoriety of the Complainant's mark, particularly in the Southern California geographical area where the Respondent resides, the Respondent was aware of the Complainant's mark at the time the Respondent registered the domain name. (3) Given the inherent distinctiveness of the Complainant's service mark HAMBURGER HAMLETâ , and the Respondent's lack of noncommercial or fair use of the mark, the Respondent's only or primary intention in registering and using the domain name was either to attempt to sell the domain name registration to the Complainant or its competitors, and/or to otherwise prevent the Complainant from using the domain name as is its proper right. (4) The foregoing information, belief, facts, and circumstances demonstrate the Respondent's bad faith registration and use of the domain name HAMBURGERHAMLET.COM" (id, para 12(F)).

Complainant recites the history of its efforts to compel Respondent to cease and desist from use of the disputed domain name prior to the adoption of the Policy by ICANN and its implementation by Network Solutions (id., para. 16 and Annex G).

Complainant requests that the domain name "hamburgerhamlet.com" be transferred to it (id., para. 13).

2. Respondent

Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 3. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

1. Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

2. Respondent has no rights or legitimate interests in respect of the domain name; and

3. Respondent's domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules). 

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts and confirmations of the sending of e-mail transmissions that the party designated as the Administrative Contact for the Respondent was notified of the Complaint and commencement of the proceedings (see Procedural History, supra). 

Because the Respondent, James Lansford, has defaulted in providing a response to the allegations of Complainant, The Hamlet Group, Inc., the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant's undisputed representations (id., para. 14(b)).

Complainant is the holder of a registered service mark for "HAMBURGER HAMLET" in the United States and is using that mark in commerce (see Factual Background, supra) 4. Complainant's registration of the service mark on the Principal Register at the PTO establishes a presumption of validity of the mark in U.S. law 5, and Respondent has not challenged this presumption. The Panel determines that Complainant has rights in the service mark "HAMBURGER HAMLET". Based on the January 16, 1973, date of Complainant's registration of the service mark "HAMBURGER HAMLET", the Panel determines that Complainant's rights in the service mark arose prior to Respondent's registration, on May 1, 1999, of the disputed domain name.

Respondent has registered the domain name "hamburgerhamlet.com". This name is identical to Complainant's service mark "HAMBURGER HAMLET", except that (1) the domain name eliminates the space between the two words constituting the mark, (2) the domain name adds the generic top-level domain name ".com", and (3) the domain name employs lower case letters, while the service mark is generally used with an initial capital letter on each word (see Complaint, Annex G). For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondent's domain name is "identical" to Complainant's service mark, since Respondent's domain name "hamburgerhamlet.com" is without doubt confusingly similar to Complainant's service mark "HAMBURGER HAMLET".

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "hamburgerhamlet.com", other than that it has registered the domain name, and has used it in connection with the posting of a Network Solutions' standard form "Under Construction" web page. If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy.

Respondent has furnished no evidence of any legitimate use or preparation to use the disputed domain name. There is no evidence on the record of this proceeding of any such legitimate use or preparation to use by Respondent, other than Respondent's posting of a standard form "Under Construction" page at the address identified by the disputed domain name. The Panel does not regard this limited use as of legal significance for the purpose of deciding this proceeding. Using the domain name registration materials routinely provided by Network Solutions 6, the posting of an "Under Construction" web page is effectively no more than a part of the registration process, and for the purpose of this proceeding the Panel treats it as such 7. Registration, standing alone, does not establish rights or legitimate interests in a domain name in the sense of paragraph 4(a)(ii) of the Policy.

On the record of this proceeding, the only use of the domain name by Respondent involves circumstances that are hereafter determined to be in bad faith within the meaning of paragraph 4(b)(i) of the Policy. Such use does not, standing alone, establish rights or legitimate interests in the domain name.

The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The third element that must be proven by Complainant to establish Respondent's abusive domain name registration is that Respondent has registered and is using the domain name in bad faith.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Complainant has suggested that Respondent's actions (or inactions) are circumstantial evidence of bad faith in two contexts referred to by the Policy. Complainant said:

Given the inherent distinctiveness of the Complainant's service mark HAMBURGER HAMLETâ , and the Respondent's lack of noncommercial or fair use of the mark, the Respondent's only or primary intention in registering and using the domain name was either to attempt to sell the domain name registration to the Complainant or its competitors, and/or to otherwise prevent the Complainant from using the domain name as is its proper right. (Complaint, para. 12(F)) 

Regarding the suggestion that Respondent registered and used the disputed domain name to prevent Complainant from reflecting its service mark in a domain name, the Policy expressly states that such action will constitute bad faith "provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)). The Complainant has furnished no evidence that the Respondent has engaged in a "pattern" of conduct such as would bring it within the express language of paragraph 4(b)(ii) of the Policy. The Panel cannot, in this context, find that the Respondent has acted in bad faith within the specific meaning of paragraph 4(b)(ii) of the Policy (recalling that the Policy's express listing of circumstances evidencing bad faith is not exclusive).

Complainant has not alleged that Respondent engaged in the kind of bad faith conduct expressly referred to in paragraph 4(b)(iii) (registration for primary purpose of disrupting the business of a competitor) or paragraph 4(b)(iv) (use to attract, for commercial gain, Internet users to a web site by creating likelihood of confusion). Likewise, the Panel does not find circumstances that would establish these grounds for a determination adverse to Respondent.

Regarding the express terms of the Policy, the remaining grounds that may constitute evidence of bad faith are "circumstances indicating that [the respondent] has registered or … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent's] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)).

There is a specific set of factors that in the circumstances of this case leads the Panel to infer that the Respondent has acted in bad faith within the meaning of paragraph 4(b)(i) of the Policy. These factors are that (1) the potential for legitimate commercial use of the disputed domain name by the Respondent appears tightly limited, and (2) the likelihood that the Respondent registered the disputed domain name in contemplation of legitimate noncommercial use is very small. Although the Respondent might in theory have presented the Panel with evidence that would have established an intention to use the name for a legitimate commercial or noncommercial purpose, on the specific facts of this case the Panel is unwilling to infer such intention without guidance from the Respondent. 8

Regarding potential legitimate commercial use of the disputed domain name: the service mark "HAMBURGER HAMLET" is one that, because of its use of the descriptive term "hamburger" (referring to a kind of food) combined with another descriptive term "hamlet" (referring to a kind of place) is likely to be connected with a restaurant. Respondent could not legitimately use the disputed domain name to advertise his own restaurant in the United States since the Complainant is presumed to have exclusive rights to use the name "HAMBURGER HAMLET" in such a commercial setting 9. Respondent is located in the geographic area in which a number of Complainant's restaurants are situated. The Complainant's mark is presumed to be distinctive. It is reasonable to infer that Respondent was aware of it, and did not independently conceive of the mark in connection with an unrelated commercial enterprise. In sum, the factual circumstances are such that the Panel considers it reasonable to infer that the Respondent did not register the domain name with the intention to use it in connection with a commercial enterprise in a manner that would not infringe upon Complainant's rights in its service mark.

Regarding potential legitimate noncommercial use of the disputed domain name: the Policy and law applicable to service marks and domain names without doubt makes allowance for good faith use of marks in ways that do not infringe upon a mark holder's commercial rights 10. For example, and without limitation, use of a mark in the context of news reporting or commentary, and use of a mark identical to the name of a person or his/her family pet, are generally accepted as forms of legitimate noncommercial use. The Panel does not regard the legitimate noncommercial use of the distinctive service mark "HAMBURGER HAMLET" as sufficiently likely to cause it to infer that this is the purpose that Respondent intended in registering the disputed domain name, "hamburgerhamlet.com". The Respondent might have provided evidence sufficient to persuade the Panel of its good faith intention in this regard, but he did not do so. In light of the more remote prospects for legitimate noncommercial use of the name, the Panel does not consider it appropriate to engage in speculation about what the Respondent might have intended. 

Under these circumstances, the Panel considers it appropriate to draw the inference that Respondent registered the mark for the purpose of offering it for sale to the Complainant for valuable consideration in excess of Respondent's out-of-pocket costs. If Respondent intended otherwise, it should have made this purpose known to the Panel.
The Panel determines that Respondent has registered and used the domain name "hamburgerhamlet.com" in bad faith within the meaning of paragraph 4(b)(i) of the Policy. Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration. 
The Panel will therefore request the registrar to transfer the domain name "hamburgerhamlet.com" to the Complainant.`
 

7. Decision

Based on its finding that the Respondent, James Lansford, has engaged in an abusive registration of the domain name "hamburgerhamlet.com" within the meaning of paragraph 4(a) of the Policy, the Panel determines that the domain name should be transferred to the Complainant, The Hamlet Group, Inc.

1. Paragraphs 2(a) and 4(c) of the Rules for Uniform Domain Name Dispute Resolution Policy require that the Provider send the complaint to the Respondent via postal-mail, facsimile and e-mail to commence the proceeding. The courier mail from WIPO to Respondent did not technically originate until February 24, 2000 (per its Fedex waybill). However, the Rules provide WIPO with discretion to extend the period of time for filing a response to a complaint (Rules, para. 5(d)), and in the absence of any such request by the Respondent, the panel considers it reasonable for WIPO to have considered the date on which it transmitted the complaint to Respondent by e-mail and fax as the date on which these proceedings commenced.

2 Air courier transmission of the file from WIPO to the Panel was mishandled by the courier.

3. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000. 

4. For purposes of deciding this proceeding, the Panel need not inquire into the legal significance of Complainant's trademark and service mark registrations outside the United States.

5. 15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. LEXIS 19954.

6. See http://www.networksolutions.com/catalog/dotcombizcard and http://www.networksolutions.com/catalog/dotcombizcard/samples/uc.html (visited by the Panel on March 29, 2000).

7. This is by no means to suggest that the posting of an "Under Construction" web page is indicative of a wrongful intention, either by Respondent or by any other party that may choose to post one. In the context of this proceeding, it is an act without legal significance.

8. In an earlier administrative panel proceeding, this sole panelist declined to infer that a respondent had acquired a domain name primarily for the purposes of selling it to the "owner" of a trademark or its "competitor" in circumstances in which the disputed domain name was posted for sale on a public Internet web site. That domain name ("toefl.com") incorporated a trademark used on a product widely employed for educational purposes. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000. The sole panelist in that specific context considered that there was a substantial possibility that the disputed domain name might have been purchased by parties other than the trademark holder or a competitor, and that such third parties might have had legitimate good faith use for the domain name at issue. Thus, the conduct of the Respondent in that case did not fall within the express terms of paragraph 4(b)(i) of the Policy, though it did constitute bad faith on other grounds. 

9. The Panel considers it appropriate to refer to the law of the United States that is applicable to the Complainant and Respondent by virtue of their residence and activities in this matter. See, e.g., WIPO, The Management of Internet Names and Addresses: Intellectual Property Issues, Report of the WIPO Internet Domain Name Process, http://wipo2.wipo.int, Apr. 30, 1999, WIPO Pub. No. 439 (E), at para. 177 [hereinafter WIPO Report]. For purposes of this decision, the Panel does not consider it necessary to determine whether the Complainant's mark is "well known" within the meaning of the Paris Convention or U.S. anti-dilution law. The Panel acknowledges that it is not addressing the potential use of the mark and disputed domain name by the Respondent in connection with operating a restaurant in a third country in which the Complainant, in theory (and without deciding), does not hold trademark or service mark rights. In light of Respondent's default in providing any explanation for its registration of the disputed domain name, whatever legal issues might be raised by such potential use are too remote to require consideration here.

10. See, e.g., WIPO Report, id., para. 172.