Panel finds pizza chain filed cybersquatting complaint in bad faith.
A small pizza chain in Los Angeles has been found guilty of reverse domain name hijacking (pdf).
El Centro Foods, Inc., which operates four pizza restaurants under the Pizza Man name, filed the dispute against PizzaMan.com. The company uses the domain PizzaManPizzeria.com.
The pizza chain had trademarks that predated the 1998 registration of the domain name by domain investment firm SyncPoint, Inc.
However, SyncPoint argued the domain was descriptive or generic. It pointed to many other pizza businesses that use a similar name.
The Complainant attempted to buy the domain name in 2023, 25 years after SyncPoint registered it, but was unhappy with the $70,000 asking price.
World Intellectual Property Organization panelist David Bernstein found that El Centro Foods didn’t show that SyncPoint lacked rights or legitimate interests in the domain, noting:
A complainant may, of course, have trademark rights in a descriptive or otherwise common term, but if a respondent is using that term for its dictionary meaning rather than for its trademark meaning, that can be a legitimate use. The fact that a complainant owns a trademark in that descriptive term does not automatically transform a respondent’s use into one that is illegitimate. Here, the Respondent registered the disputed domain name more than a quarter century ago for its value as a common and descriptive term as part of the Respondent’s business of registering and selling domain names.
He also found that it didn’t show that the domain was registered and used in bad faith.
In finding reverse domain name hijacking, Bernstein wrote:
As the Complainant acknowledged, it filed the Complaint only after it attempted to buy the disputed domain name but did not want to meet the Respondent’s asking price. The Complainant had to be aware that its use of the PIZZA MAN mark is not exclusive, as the Respondent identified several other restaurants with PIZZA MAN in their business name or domain name when it corresponded with the Complainant about the possible sale of the disputed domain name…
…Although the Complainant believed the price quoted by the Respondent for the disputed domain name was unreasonable, the Respondent was well within its rights to demand whatever price that it could command in the market. The Complainant should have known the Respondent had the right to do so, but, rather than meet the Respondent’s price, the Complainant sought to use the Policy to wrest the disputed domain name from its owner. That is an abuse of the Policy and constitutes bad faith.
Beitchman & Zekian, P.C., represented the Complainant, and Syncpoint was internally represented.
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