WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tarheel Take-Out, LLC v. Versimedia, Inc.

Case No. D2012-1668

1. The Parties

Complainant is Tarheel Take-Out, LLC of Chapel Hill, North Carolina, United States of America (“U.S.”), represented internally.

Respondent is Versimedia, Inc. of Wilton, Connecticut, U.S., represented by William F. Herbert, U.S.

2. The Domain Name and Registrar

The disputed domain name <takeout.com> is registered with GoDaddy.com, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2012. On August 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response September 13, 2012. The Response was filed with the Center September 12, 2012.

On September 13, 2012, Complainant requested via an email to the Center that its Complaint be withdrawn with prejudice. On September 14, 2012, the Center communicated Complainant’s request to withdraw to Respondent via an email and asked for comments on or before September 17, 2012. On the same day, Respondent asked that the Center deny Complainant’s request to withdraw.

The Center appointed Michael A. Albert, Christopher S. Gibson and Frederick M. Abbott as panelists in this matter on October 5, 2012. The Panel finds that it was properly constituted. Each member of 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 asserts that it has used TARHEELTAKEOUT.COM in connection with its software for restaurant delivery services since November of 1999 in North Carolina. A review of the Internet Archive Wayback Machine indicates that TARHEEL TAKE-OUT EXPRESS was used at <tarheeltakeout.com> in November of 1999.

The disputed domain name was registered on April 22, 1999.

In April of 2004, Respondent obtained <takeout.com>.

On November 2, 2008, Complainant emailed Respondent offering to purchase <takeout.com>. Respondent replied with an email stating “We have plans to develop the name but are always open to offers… for us to consider changing our plans however it would have to be mid 7 figures.”

On March 4, 2010, Complainant began using TAKEOUT.COM in connection with its online ordering services in the field of restaurant takeout and delivery. On March 9, 2010, Complainant filed trademark application Serial No. 77/954,702 for TAKEOUT.COM for “[o]n-line ordering services in the field of restaurant take-out and delivery, in Class 35,” “food delivery, in Class 39,” and “[s]oftware as a services (SAAS) services, namely, hosting software for use by others for use in the RDS (Restaurant Delivery Service) industry as an on-line point-of-sale, dispatching, and reporting system, in Class 42.” This application was signed by Wesley S. Garrison (“Garrison”), a managing member of Complainant.

On June 16, 2010, an Office Action issued to Garrison against the application for TAKEOUT.COM, which refused the mark as merely descriptive and contained an advisory that the mark was “possibly generic.” This Office Action also refused the disclaimer of TAKEOUT due to the unitary nature of the mark.

On December 16, 2010, an attorney with offices in North Carolina filed a Response to this Office Action on behalf of Complainant deleting the services in Classes 35 and 39 and amending the Class 42 services to “[s]oftware as a service (SAAS) services, namely, hosting software for use by others as an on-line point-of-sale, dispatching, management, and reporting system.” On February 2, 2011, the Examining Attorney issued a second Office Action maintaining the descriptiveness refusal and rejecting the new identification.

On February 28, 2011, Complainant’s application was amended to the Supplemental Register and the identification was amended to “[s]oftware as a service (SAAS) services, namely, hosting software for use by others for use in the RDS (Restaurant Delivery Service) industry as an on-line point-of-sale, dispatching, and reporting system” by way of an Examiner’s Amendment. On April 12, 2012, Complainant obtained Registration No. 3,946,428 for TAKEOUT.COM on the Supplemental Register.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant alleges:

(i) that the disputed domain name <takeout.com> is identical to Complainant’s trademark TAKEOUT.COM;

(ii) that Respondent had no rights or legitimate interests in respect of the disputed domain name, because:

(a) the disputed domain name was not used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial use;

(b) the disputed domain name redirected to an Amazon store, which did not offer any products for sale, and did not relate to restaurant delivery services software;

(c) Respondent had only used the disputed domain name to generate revenue from referral traffic, and Respondent either planned to sell the disputed domain name for a sum in excess of the acquisition cost or use it to generate revenue in an illegitimate manner; and

(d) Respondent is not known by the name “Takeout” or “Takeout.com.”

(iii) Respondent registered the domain in bad faith for the following reasons:

(a) after obtaining the disputed domain name, Respondent pointed the disputed domain name to <dinner.com>, <penny.com>, and other domains associated with <domainearners.com>, which was founded by Respondent to generate revenue through typo-squatting various domains;

(b) Respondent has a history of typo-squatting, which includes using the domain name <ScotsTrade.com> to divert traffic from <ScotTrade.com>, the domain name <RiversSongs.com> to divert traffic from <RiverSongs.com>, the domain names <AngleEyes2.com> and <AngelEys2.com> to divert traffic from <AngelEyes2.com>, the domain names <123Greeting.com>, <123Greeetings.com>, and <123Greetins.com> to divert traffic from <123Greetings.com>, the domain <Greetin-Cards.com> to divert traffic from <Greeting-Cards.com>, the domain name <MotoGranPrix.com> to divert traffic from <MotoGrandPrix.com>, and the domain name<PsycoTronic.com> to divert traffic from <PsychoTronic.com>;

(c) until recently, Respondent hosted “at least 66 domains” for the cash-parking site for “earning revenue from domains”; and

(d) Respondent owns at least 158 domain names.

B. Respondent

In its Response, Respondent alleges:

(i) Complainant has no legitimate rights in TAKEOUT.COM because the mark is not distinctive for the following reasons:

(a) Complainant’s Supplemental Registration, without more, is not sufficient evidence that its mark is distinctive;

(b) Complainant initially filed its Application for TAKEOUT.COM with a disclaimer of TAKEOUT;

(c) in two Office Actions, the United States Patent and Trademark Office refused registration on the grounds that TAKEOUT.COM was merely descriptive of the services at issue, and possibly even generic;

(d) a prior application for TAKEOUT.COM was abandoned after the Examining Attorney refused the mark because it did “not function as a service mark”;

(e) the phrase “take out” is consistently disclaimed in registrations for marks including the phrase;

(f) the evidence given by Complainant does not show use of TAKEOUT.COM as a trademark;

(g) Complainant stated under oath that its first use of TAKEOUT.COM as a trademark was March 4, 2010; and

(h) Complainant cannot establish any trademark rights in the generic or merely descriptive term ”Takeout”.

(ii) Respondent has legitimate interests in <takeout.com> as evidenced by:

(a) Respondent’s creation as an incubator for Internet businesses that initially included “a bundling of restaurant/food businesses” involving <dinner.com>, <takeout.com>, and <sono.com>;

(b) Respondent’s use of the disputed domain name to point to its own websites;

(c) UDRP precedent showing that “parking” can be a legitimate use of a domain name if the domain name is comprised of a generic or merely descriptive phrase;

(d) UDRP precedent showing that use of a domain name for third party advertising is not per se illegitimate use; and

(e) Respondent’s relationship with Amazon as an affiliate retailer;

(iii) Respondent did not register the disputed domain name in bad faith as evidenced by:

(a) Respondent’s intent to use the disputed domain name for its bundling restaurant/food business and its subsequent use of the disputed domain name in connection with an offer of goods to consumers in connection with its Amazon retailer website;

(b) Respondent’s lack of knowledge that Complainant existed prior to being contacted by Complainant with an offer to purchase the disputed domain name;

(d) the fact that Respondent is not currently using the disputed domain name to link to any website owned by Complainant or any of Complainant’s competitors;

(e) UDRP precedent holding that the stockpiling of commercially viable “dictionary word” names is a legitimate business practice; and

(f) Respondent’s lack of involvement in any prior UDRP proceedings.

(iv) A finding of Reverse Domain Name Hijacking (“RDNH”) is warranted based on the following:

(a) Complainant failed to note that its registration for TAKEOUT.COM was on the Supplemental rather than the Principal Register;

(b) Complainant failed to note that its initial application for TAKEOUT.COM voluntarily disclaimed TAKEOUT;

(c) Respondent registered the disputed domain name several years prior to the filing date of Complainant’s trademark application for TAKEOUT.COM;

(d) Complainant knew or should have known when it filed its Complaint that it lacked sufficient rights in TAKEOUT.COM;

(e) Complainant typo-squats on several domain names and registered several slight variations of <takeout.com>, which it has not disclosed to the Panel;

(f) Complainant knew of Respondent at least as early as 2008, but stated in its trademark application for TAKEOUT.COM in 2010 that “to the best of [its] knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce”;

(g) Complainant’s claim is barred by laches as it waited at least four years from when it became aware of Respondent’s domain name registration to file its Complaint; and

(h) Complainant stated in its trademark application that its first use of TAKEOUT.COM was March 4, 2010, which contradicts its Complaint in this matter.

6. Discussion and Findings

Complainant bears the burden of proof in a Policy proceeding. All elements set out in paragraph 4(a) of the Policy must be proven. Since paragraph 4(a)(i) requires Complainant to prove that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights,” and such rights have not been proven here, the Panel need not address any issues under paragraphs 4(a)(ii) or 4(a)(iii) of the Policy.

It is well-settled that a Supplemental Registration in the U.S. is not sufficient in itself to establish that a Complainant has rights to a mark for the purposes of the Policy. See Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com, WIPO Case No. D2008-1475 (holding that a Supplemental Registration for RELIGION NEWS SERVICE did not provide sufficient rights under the Policy to confer standing); PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437 (holding that a Supplemental Registration for MOBILE MALL did not provide sufficient rights under the Policy to confer standing); Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (holding that a Supplemental Registration for SCUBADIVING.COM did not provide sufficient rights under the Policy to confer standing); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) section 1.1.

In this case, the website provided by Complainant as evidence of use of TAKEOUT.COM in November of 1999, <tarheeltakeout.com>, only shows use of TARHEEL TAKE-OUT EXPRESS as a trademark. Complainant itself notes in the Complaint that this mark was used only in North Carolina. Complainant has not shown that this use of <tarheeltakeout.com> and TARHEEL TAKE-OUT EXPRESS conferred any trademark rights for the merely descriptive TAKEOUT.COM on Complainant.

Garrison, who submitted the Complaint on behalf of Tarheel Take-Out, LLC as well as the initial trademark application for TAKEOUT.COM, conceded this lack of rights by disclaiming TAKEOUT in the application. The prosecution history for the application indicates that Garrison received the initial Office Action, which included a refusal of the mark on the grounds that it was merely descriptive of the identified services as well as an advisory that the mark was likely generic. This application also states that the first use of TAKEOUT.COM occurred in 2010, roughly eleven years after the first use claimed in this Complaint. The Panel notes that the application relied on by Complainant ultimately registered on the Supplemental Register. However, Respondent had obtained the disputed domain name <takeout.com> approximately six years prior to the filing date of Complainant’s application for TAKEOUT.COM.

Finally, the Panel notes that there is substantial third party use of TAKEOUT.COM as well as the generic or commonly descriptive phrase “takeout.” “Takeout” is a term commonly used to describe food or a meal to be consumed away from its place of preparation. See, e.g., http://www.merriam-webster.com/dictionary/takeout. It is sufficiently commonly used in that sense that the term also functions as a standalone noun, as in “I will go pick up some takeout”. The Panel finds that Complainant has no rights in TAKEOUT.COM as a service mark that could serve as the basis for this Complaint under the Policy.

For the foregoing reasons, the Complaint is denied.

7. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at [RDNH] or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See WIPO Overview 2.0, section 4.17. The respondent generally bears the burden of demonstrating that a complainant brought a complaint in bad faith. Id. “WIPO panels have declined to find [RDNH] in circumstances including where: [. . .] the complainant’s argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint.” Id.

“[A] finding of [RDNH] is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy. [. . .] [S]uch a finding is particularly appropriate where the Respondent’s registration of the domain name predates the very creation of the Complainant’s trademark.” carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047 citing Futureworld Consultancy (Pty) Limited v. Online advice, WIPO Case No. D2003-0297. Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH. See Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598 (finding RDNH where the Claimant alleged its first use of the mark was four years after the domain name had been registered). However, a finding of RDNH is always within the panel’s discretion. See Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081 (April 18, 2005) (finding that the facts justified RDNH but panel determined “to leave the parties as it found them” because both parties made misrepresentations to the panel).

Finally, “[i]t is no excuse that a party or its representative is unfamiliar with clear Policy precedent, much less the clear language of the Policy and the Rules themselves.” Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555.

In this case, the only alleged rights in TAKEOUT.COM that could have arisen prior to Respondent’s registration of the disputed domain name stem from Complainant’s use of TARHEEL TAKE-OUT EXPRESS at the domain name <tarheeltakeout.com> for services rendered in North Carolina. In its trademark application, filed roughly six years after Respondent registered the generic or commonly descriptive term “takeout” as a domain name, Complainant alleges that its first use of TAKEOUT.COM occurred in 2010. Given the record, it strains credulity to believe that Complainant did not know or should not have known that it had no trademark rights in TAKEOUT.COM that could serve as the basis for this Complaint. It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules.

For the foregoing reasons, the Panel makes a finding of Reverse Domain Name Hijacking.

While the Panel recognizes that Complainant attempted to withdraw its Complaint after learning that the Respondent acquired the disputed domain name for a legitimate use, the Panel does not believe that the Respondent should in the circumstances have been forced to present such evidence in light of Complainant’s previously disclosed lack of rights in “takeout.com” in combination with the commonly descriptive nature of that term. For Complainant to have brought these meritless UDRP proceedings in the first place is such circumstances and to have put the Respondent to the not insignificant cost of having to mount a defense to a baseless claim should be discouraged.

Michael A. Albert
Presiding Panelist

Christopher S. Gibson
Panelist

Frederick M. Abbott
Panelist

Dated: October 18, 2012