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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Artuso Pastry Foods Corp. v. Idearc Media Corp. / Idearc Media LLC and Anna Artuso, Inc.

Case No. D2008-1936

1. The Parties

The Complainant is Artuso Pastry Foods Corp. of Mount Vernon, New York, United States of America, represented internally.

The Respondents are Idearc Media Corp. / Idearc Media LLC of Coppell, Texas, United States of America, represented by Hitchcock Evert LLP, United States of America, and Anna Artuso, Inc. of Yonkers, New York, United States of America, represented by Canter Law Firm P.C., United States of America.

2. The Domain Name and Registrar

The disputed domain name <artusopastryshop.com> is registered with Register.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2008. On December 18, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 18, 2008, the Registrar transmitted by email to the Center its verification response verifying that the Respondent Idearc Media Corp. is listed as the registrant and providing the contact details. 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 the Respondent of the Complaint, and the proceedings commenced on January 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2009.

The Respondent Idearc Media LLC, formerly Idearc Media Corp., filed a request on January 26, 2009 for an extension of time to file a Response, to transfer the Domain Name registration, and to substitute the transferee as respondent. The proposed transferee, the Respondent Anna Artuso, Inc., submitted a Response on January 28, 2009.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 5, 2009. 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

The Complainant is a New York corporation based in Mount Vernon, New York, United States of America. According to the Complaint and the Complainant’s website at “www.artusopastry.com”, the Complainant operates a pastry shop in the Bronx, New York City, which was originally purchased by Vincent Artuso in 1946 and renamed “Artuso Pastry”. In addition to the pastry shop, the Complainant provides pastries to local and national customers including Yankee Stadium, the Whole Foods chain of grocery stores and Hyatt Hotels. The Complainant also takes orders through its website and ships its “mini cannoli” product internationally.

The Complainant owns United States of America Trademark Registration No. 3338329 for the standard-character mark ARTUSO PASTRY. The mark was registered on November 20, 2007, claiming first use in commerce in 1946. The mark is displayed at the shop, on product labeling, on the Complainant’s website, and in advertising and promotional materials. The Complainant’s products have also been reviewed in national publications such as the Zagat Survey and Inc. Magazine.

According to the request for extension of time, transfer, and substitution filed with the Center, the Respondent Idearc Media LLC was “formerly Idearc Media Corp.”, which is listed as the registrant of the Domain Name. Idearc Media LLC (“Idearc”) is an advertising and marketing company based in Texas. It has a national clientele and publishes print and online telephone directories and advertising, the latter largely through its website at “www.superpages.com”.

Idearc also provides website design services, as it did for the Respondent Anna Artuso, Inc. It was in connection with that work that Idearc registered the Domain Name on August 23, 2005. According to Idearc’s request for extension, transfer, and substitution, “it was always understood” that the Domain Name would be owned and used by the Respondent Anna Artuso, Inc. and that legal title would be transferred to Anna Artuso, Inc. That did not happen, however, before the current Complaint was filed and the registration was locked. Idearc’s request is accompanied by a signed and notarized agreement by Anna Artuso, Inc. to be bound by the decision in this UDRP proceeding if the Domain Name is transferred to it.

The Respondent Anna Artuso, Inc. is a New York corporation that operates “Anna Artuso’s Pastry Shop” in Yonkers, New York. The company operates a website at “www.annaartusoinc.com”. Anna Artuso Puma, recently deceased, was Vincent Artuso’s sister. She worked with him at Artuso Pastry and then opened her own shop in Yonkers in 1965, incorporating the business in 1966. Anna Artuso, Inc. is now headed by her grandson, while descendants of Vincent Artuso direct the Complainant’s company. The Respondent Anna Artuso, Inc. claims to be the “true owner and user” of the Domain Name and the party that paid for its registration.

The Internet Archive’s Wayback Machine reveals that in late 2007 and early 2008 the Domain Name resolved to the website of Anna Artuso’s Pastry Shop. The Domain Name does not currently resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its ARTUSO PASTRY trademark and that the Respondent Idearc had no rights or legitimate interests in the Domain Name.

The Complainant argues that the Domain Name was registered with an awareness of the Complainant’s well-known and long-established mark. The Complainant observes that the Domain Name has been used only to direct Internet users to a website offering directly competing products and contends that the intent was to mislead consumers for commercial gain. The Complainant further contends that the Domain Name was registered and used primarily to disrupt the Complainant’s business.

B. Respondent

The Respondent Anna Artuso, Inc. argues that any potential confusion is the result of the two companies, devolving from the same family business, using similar names for decades.

The Respondent asserts a legitimate interest in using a Domain Name based on its company name and the long-time name of its pastry shop.

The Respondent points out that the Domain Name was registered before the Complainant applied for trademark registration. The Respondent denies any bad-faith intent to trade on the Complainant’s mark.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(i) the 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.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Request for Extension of Time, Transfer, and Substitution

The Respondent Idearc seeks an extension of time to submit a Response but denies knowledge relevant to the dispute and any “real interest” in continuing to own the Domain Name. Hence, there does not appear to be any utility in extending the proceedings to allow Idearc to submit a formal Response, and the Panel accordingly denies the request for an extension of time.

Idearc also asks the Panel to approve the transfer of the Domain Name to Anna Artuso, Inc., citing paragraph 8(a) of the Policy. That paragraph forbids the registrant from transferring a domain name during a pending administrative proceeding under the Policy or for fifteen days after the proceeding is concluded. The reference to transfers that may be made with the written agreement of the transferee is to pending court proceedings or arbitration, not to UDRP administrative proceedings. The Panel has the authority only to cancel the Domain Name, order its transfer to the Complainant, or deny the Complaint (see Policy, paragraph 4(i)). Therefore, the request to transfer the Domain Name to a third party is denied.

Finally, Idearc asks the Panel to substitute Anna Artuso, Inc. as the Respondent in this proceeding. To avoid any possible objection in the event that the Panel orders the Registrar to cancel the Domain Name or transfer it to the Complainant, the decision will, as is customary, retain the name of the registrant as currently listed in the Registrar’s WhoIs database. However, the Panel has added Anna Artuso, Inc. as a Respondent, because this entity is evidently the beneficial owner or real party in interest with respect to the Domain Name. Anna Artuso, Inc. has submitted a timely Response in this proceeding, and the Response will be considered in this Decision.

B. Identical or Confusingly Similar

The Domain Name <artusopastryshop.com> differs from the Complainant’s ARTUSO PASTRY mark only by the addition of the generic, and apparently relevant, word “shop”. (The “.com” extension, like the “www” prefix, is a necessary feature of Internet addressing and is not distinctive for purposes of paragraph 4(a)(i) of the Policy). The family name Artuso, especially associated with “pastry”, is distinctive, and it is likely that at least some Internet users would be led to believe that the Domain Name referred to the Complainant’s mark and business.

The Policy requires only a comparison of the Domain Name with a mark that the Complainant currently holds, essentially to establish the Complainant’s standing to bring a Complaint. For this element of the Complaint, it is irrelevant whether or not the mark was established before the Domain Name was registered.

The Panel finds, therefore, that the Domain Name is confusingly similar to the Complainant’s mark for purposes of paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including the following:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.”

The Respondent Anna Artuso, Inc. does not claim a relevant trademark, but it does establish that it has been known by a name similar to the Domain Name, “Anna Artuso’s Pastry Shop”, for more than 40 years. That name appears on that Respondent’s shop, advertising and on its website. A shortened form of that name, without the words “pastry shop”, comprises the company name. The Domain Name <artusopastryshop.com> is quite close to the name the Respondent has been using for decades in commerce, “Anna Artuso’s Pastry Shop”. It is not surprising that the Respondent would choose a shortened version of the name for an Internet address, especially since the possessive apostrophe cannot be included in a domain name.

The Complainant insists, nonetheless, that there is no legitimate or bona fide commercial purpose for the Domain Name, because the selection of the Domain Name was motivated by a bad-faith intent to mislead consumers and disrupt the Complainant’s business. That argument is better addressed below, in connection with the third element of the Complaint.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy gives a non-exhaustive list of instances of bad faith, including the following:

“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

It is not disputed that the Respondent Anna Artuso, Inc. is a direct competitor of the Complainant and was aware of the Complainant’s business and products when the Domain Name was registered in August 2005. The Complainant did not furnish detailed evidence in this proceeding to support its claim to a common-law ARTUSO PASTRY trademark dating from 1946, and the Domain Name was registered more than a year before the Complainant applied for trademark registration. Nevertheless, it appears from the available record that the mark was in fact well established by August 2005, and the Panel will assume as much for present purposes.

The question is whether the Respondent Anna Artuso, Inc. selected the Domain Name to capitalize on the Complainant’s mark and disrupt its business, or rather to represent its own name and the name of the shop it operates.

To review, here are the relevant names associated with these two family businesses:

Complainant’s company name: Artuso Pastry Foods Corp.

Complainant’s shop name: Artuso Pastry

Complainant’s mark: ARTUSO PASTRY

Respondent’s company name: Anna Artuso, Inc.

Respondent’s shop name: Anna Artuso’s Pastry Shop, Inc.

Disputed Domain Name: <artusopastryshop.com>.

The disputed Domain Name does not include the first name “Anna” habitually used by the Respondent. However, it differs from the Complainant’s trademark in adding the word “shop”, which does appear in the name by which the Respondent’s shop is known. Thus, the Domain Name is not identical to names used by either the Respondent or the Complainant, but it is quite similar to names used by both. This is not surprising, since all of these names derive from the same original family business.

It is possible, as the Complainant infers, that the Domain Name is deliberately a hybrid, designed to misdirect Internet users to a competitor’s website. It is at least as plausible that the Domain Name is a legitimate, if slightly shortened, version of the name under which the Respondent has traded for many years. In the face of those competing and similarly equally plausible claims, and absent other evidence of bad faith, the Panel finds that the Complainant has not on balance met its burden of persuasion on the third element of the Complaint.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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W. Scott Blackmer
Sole Panelist

Dated: February 25, 2009