WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Café Intermezzo, Incorporated v. R. Smith
Case No. D2004-0372
1.
The Parties
The Complainant is Café Intermezzo, Incorporated of Atlanta, Georgia,
United States of America, represented by Kilpatrick Stockton, LLP of Atlanta, Georgia,
United States of America.
The Respondent is R. Smith of Roswell, Georgia, United States of America.
2.
The Domain Name and Registrar
The disputed domain name <cafeintermezzo.com> is registered with eNom, Inc..
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on May 20, 2004. On May 21, 2004, the Center transmitted by email to
eNom, Inc. a request for registrar verification in connection with the domain name at
issue. On May 21, 2004, eNom, Inc. transmitted by email to the Center a partial
verification response confirming that the language of the proceedings is English and
that the domain name would remain under Registrar Lock throughout the proceeding.
In addition to eNom, Inc.’s partial response, the Center made a WHOIS printout, which
showed that the disputed Domain Name was registered with eNom Inc., and that the
registrant of the domain name at issue was different from the Respondent as set out in
the Complaint. On June 10, 2004, the Center notified the Complainant of the
deficiency and subsequently extended the deadline for filing an Amended Complaint.
An Amended Complaint was received by the Center on June 22, 2004. The Center
verified that the Amended 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”).
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In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the
Respondent of the Complaint and the Amended Complaint, and the proceedings
commenced on June 28, 2004. In accordance with the Rules, paragraph 5(a), the due
date for Response was July 18, 2004. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on July 30, 2004.
The Center appointed Gregory N. Albright as the Sole Panelist in this matter on
July 30, 2004. 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
Complainant’s CAFÉ INTERMEZZO service mark for restaurant services in Class 42
was registered in the United States Patent and Trademark Office on January 25, 1983,
(Reg. No. 1,225, 542). Complainant also owns a federal registration for the CAFÉ
INTERMEZZO service mark in Class 43 (Reg. No. 2,686,472) which issued on
February 11, 2003.
5.
Parties’ Contentions
A.
Complainant
1.
Identical Or Confusingly Similar
Complainant’s president, Brian Olson, began his career as a coffee house proprietor and
espresso machine importer in the early 1970s, and is recognized as one of the first to
popularize espresso and cappuccino in the United States. In 1979, Complainant opened
a European coffeehouse and restaurant called CAFÉ INTERMEZZO on AshfordDunwoody Road in Atlanta, Georgia, United States of America. The CAFÉ
INTERMEZZO restaurant was one of the first in the Southeast to serve espresso and
cappuccino, and quickly became one of Atlanta’s most noteworthy destinations. Over
the next several years, Complainant’s CAFÉ INTERMEZZO coffeehouse/restaurant
continued to grow in popularity and, in 1987, Complainant opened a second CAFÉ
INTERMEZZO on Peachtree Street, Atlanta’s most prominent and well-known
address.
With the addition of the Peachtree Street location, CAFÉ INTERMEZZO became a
true Atlanta institution, and its popularity and goodwill is evidenced by the nationwide
press attention it has received.
The disputed domain name fully incorporates the CAFÉ INTERMEZZO mark, and is
therefore confusingly similar to it.
2.
Rights Or Legitimate Interests
The Respondent has no rights or legitimate interests with respect to the disputed
domain name for several reasons. First, Complainant’s first use of the
CAFÉ INTERMEZZO mark predates Respondent’s registration of the disputed domain
name by over 20 years. Complainant’s and Respondent’s close geographical proximity
is evidence that Respondent had knowledge of the mark before registering the domain
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name. Second, Respondent has not been commonly known, or done business,
“Café Intermezzo.” Third, Respondent has not made any use of the disputed domain
name in connection with a bona fide attempt to offer goods or services; indeed, no
content has ever been displayed on the web site to which the disputed domain name
resolves. Fourth, Respondent has made no attempt to communicate via the disputed
domain name, through noncommercial speech or otherwise. Finally, Complainant has
not authorized Respondent’s use of the CAFÉ INTERMEZZO mark.
3.
Bad Faith
The disputed domain name was registered and is being used in bad faith for the
following reasons. First, because of the mark’s renown in the greater Atlanta area, and
Respondent’s close geographical proximity to Complainant’s businesses, Complainant
believes Respondent was aware of Complainant’s mark and registered the domain name
in the hope he could sell it to Complainant or a third party for profit. Second,
Respondent has not made any use of the disputed domain name; he has simply
“warehoused” it. Third, Respondent is informed and believes that R. Smith is an alias
of Lou Ashcraft, who has engaged in a substantial pattern of bad faith domain
registration in the past. Mr. Ashcraft has operated under the fictitious name
“mywebaddress.com,” and he controls a fictitious entity named “Gulf South Limited,”
through which Mr. Ashcraft has registered many domain names in bad faith.
B.
Respondent
The Respondent did not file a response to the Complainant’s contentions, and is in
default in this proceeding.
6.
Discussion and Findings
Paragraph 4(a) of the Policy requires Complainant to prove all of the following: (i) the
disputed domain name is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights, and; (ii) the Respondent has no rights or
legitimate interests in respect of the domain name, and; (iii) the domain name has been
registered and is being used in bad faith.
A Respondent may demonstrate that it has rights or legitimate interests in respect of the
domain name by proving those circumstances identified in Paragraph 4(c) of the Policy.
Evidence of bad faith registration and use of a domain name may be proven by, among
other things, the circumstances identified in Paragraph 4(b) of the Policy.
A.
Identical or Confusingly Similar
The Complainant has carried its burden of proof under Paragraph 4(a)(i) of the Policy.
Complainant has adduced evidenced that it has rights in the mark CAFÉ
INTERMEZZO, including certificates of Complainant’s two registrations of the
CAFÉ INTERMEZZO mark on the Principal Register of the United States Patent and
Trademark Office: Reg. No. 1,225,542 (registered January 25, 1983), and
Reg. No. 2,686,472 (registered February 11, 2003).
The disputed domain name fully incorporates Complainant’s mark, and thus is
confusingly similar to it.
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B.
Rights or Legitimate Interests
The second element Complainant must prove is that the Respondent has no rights or
legitimate interests in respect of the domain name.
A principal issue in this matter is whether the Respondent, R. Smith, is an alias of
Lou Ashcraft, and whether Complainant’s evidence regarding Mr. Aschraft is probative
of R. Smith’s lack of rights or interests in the domain name (and R. Smith’s registration
and use of the domain name in bad faith, discussed below).
Complainant has submitted a copy of eNom Inc.’s WHOIS database search results for
the disputed domain name, dated April 30, 2004, which shows the Registrant,
Administrative Contact, and Technical Contact as follows:
Mywebaddress.com
Lou Ashcraft
[Contact details]
In its process of verifying that the Complaint satisfied all formal requirements, the
Center printed registrar verification results from eNom’s WHOIS on May 27, 2004,
which showed the Registrant, Administrative Contact, and Technical Contact as
follows:
R. Smith
[Identical address and telephone number as prior registrant]
The Center asked eNom to advise of the date when the name of the registrant changed.
eNom responded in a rather unilluminating June 9, 2004, email, as follows: “Our
records indicate that the current whois is the same that was listed when the domain
name was originally transferred to eNom on January 27, 2004.” eNom’s email suggests
that R. Smith was the registrant on January 27, 2004 and June 9, 2004. If that is
correct, Complainant’s evidence that Lou Aschraft was the registrant between those
two dates – i.e., on April 30, 2004, – is somewhat puzzling.
Although the registration history of the disputed domain name is not completely clear,
the unconflicting evidence is this: R. Smith and Lou Ashcraft both have been
registrants of the disputed domain name, and they share a telephone number and post
office box in Roswell, Georgia. Thus, the Panel finds that R. Smith and Lou Ashcraft
have enough in common to make evidence regarding the latter relevant to the issues in
this proceeding. Indeed, the evidence strongly suggests that R. Smith is Lou Ashcraft’s
alias. (The Center notified both R. Smith and Lou Ashcraft of this proceeding, and
neither of them responded.)
Complainant has adequately demonstrated the Respondent’s lack of rights or legitimate
interests with respect to the disputed domain name. The Respondent’s close
geographical proximity to Complainant’s businesses, and Complainant’s registration of
its trademark over 17 years before Respondent registered the domain name, are
evidence that Respondent had actual or constructive knowledge of Complainant’s rights
in its mark. Complainant has also submitted the results of a search of the Georgia
Secretary of State’s corporate and trademark database that shows no data suggesting
that Mr. Ashcraft has been known, or done business, as “Café Intermezzo.”
Complainant’s evidence also shows that Respondent has made no use of the disputed
domain name, either for noncommercial speech or to sell goods or services. Finally,
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Complainant has shown that it did not authorize Respondent to use the
CAFÉ INTERMEZZO mark in a domain name.
The Panel concludes that the Complainant has satisfied the requirements of
Paragraph 4(a)(ii) of the Policy.
C.
Registered and Used in Bad Faith
The Panel finds that Complainant has carried its burden of showing that Respondent
registered and is using the disputed domain name in bad faith, for the following
reasons.
Complainant’s evidence shows that Respondent resides in the greater Atlanta area, and
therefore is likely familiar with Complainant’s well-known restaurants. The evidence
also shows that Respondent has merely “warehoused” the domain name, and made no
use of it. See Toyota Motor Sales, U.S.A. Inc., Gulf States Toyota, Inc. and Price
Leblanc, Inc. dba Price Leblanc Toyota v. Gulf South Limited, WIPO Case No. D20010698) (July 25, 2001) (“other ICANN Panels have found bad faith where a party has
passively ‘warehoused’ a domain name fully aware the name contained another party’s
… trademark”). Taken together, this is evidence that Respondent has registered the
domain name for no purpose other than selling it to Complainant, or a third party.
Complainant has also submitted evidence that Mr. Ashcraft, through his alias Gulf
South Limited, has engaged in a substantial pattern of bad faith domain name
registration in the past. See Emory Healthcare, Inc. v. Gulf South Limited, FA94892
(National Arbitration Forum, July 5, 2000); Toyota Motor Sales, U.S.A. Inc., Gulf
States Toyota, Inc. and Price Leblanc, Inc. dba Price Leblanc Toyota v. Gulf South
Limited, WIPO Case No. D2001-0698) (July 25, 2001) (Gulf South Limited
“has registered almost 400 domain names, including many famous trademarks”); Club
Gene & Georgetti v. Gulf South Limited, FA 123925 (National Arbitration Forum,
October 18, 2002). Mr. Ashcraft also was involved in litigation in the United States
District Court for the Northern District of Georgia regarding allegations that domain
names he had registered infringed the trademark rights of Disney Enterprises, Inc.,
adidas-Salomon AG, Anheuser-Busch, Incorporated, H-D Michigan, Inc.
(Harley-Davidson), and AMC, Inc. A pattern of registering infringing domain names is
evidence of bad faith. See Big Dog Holdings, Inc. v. Frank Day, FA93554
(National Arbitration Forum, March 9, 2000).
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 name <cafeintermezzo.com> be
transferred to the Complainant.
Gregory N. Albright
Sole Panelist
Dated: August 13, 2004
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