DECISION

 

Ottomanelli Bros. Ltd. v. Mary Ottomanelli / S. OTTOMANELLI & SONS INC

Claim Number: FA1504001614337

 

PARTIES

Complainant is Ottomanelli Bros. Ltd. (“Complainant”), represented by Charles P. LaPolla of Ostrolenk Faber LLP, New York, New York, USA.  Respondent is Mary Ottomanelli / S. OTTOMANELLI & SONS INC (“Respondent”), represented by Erica Doran of Law Offices of Erica Doran, Syosset, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ottomanelli.nyc> (the “Disputed Domain Name”), registered with Network Solutions Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Douglas M. Isenberg as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 13, 2015; the Forum received payment on April 13, 2015.

 

On April 14, 2015, Network Solutions Inc. confirmed by e-mail to the Forum that the <ottomanelli.nyc> domain name is registered with Network Solutions Inc. and that Respondent is the current registrant of the name.[1]  Network Solutions Inc. has verified that Respondent is bound by the Network Solutions Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ottomanelli.nyc.  Also on April 22, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on May 12, 2015.

 

Complainant submitted a timely Additional Submission, which was received on May 18, 2015.

 

Respondent submitted a timely Additional Submission, which was received on May 26, 2015.

 

 

                                            

On May 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg as Panelist.

 

On May 27, 2015, Complainant sent additional correspondence to NAF.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant states that it “has been in the food business in Manhattan since the early part of the 1900s”; that “[s]ince at least 1917, Complainant has been a recognized processor, wholesaler, and purveyor of fine quality meats”; that it “also actively advertises, promotes and sells its meat products and related goods over the Internet”; and that it “operates an Internet web site at <nycotto.com> and <ottomanellibros.com>.”

 

Complainant states, and provides evidence to support, that it is the registrant of U.S. Reg. No. 3,470,131 for the trademark OTTOMANELLI (first used in commerce 1949; registered July 22, 2008) for use in connection with, among other things, “[m]eat; beef; poultry; chicken; lamb; veal; pork; sausages”; and U.S. Reg. No. 3,470,137 for the trademark OTTOMANELLI BROTHERS (first used in commerce 1964; registered July 22, 2008) for use in connection with, among other things, “[m]eat; beef; poultry; chicken; lamb; veal; pork; sausages.”  These registrations are collectively referred to hereafter as the OTTOMANELLI Trademark.

 

Complainant argues the following:

 

·        The Disputed Domain Name is identical or confusingly similar to the OTTOMANELLI Trademark.

·        Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “Respondent's web site resolves to a placeholder home page”; and “Respondent is not commonly known by the domain name.”

·        Respondent has registered and is using the Disputed Domain Name in bad faith because “Respondent's failure to use the domain name also demonstrates bad faith under the Policy”; “[t]he registration of an infringing domain name despite the fame of Complainant's distinct and registered marks qualifies as evidence of bad faith registration”; Respondent’s use of a privacy service “is often indicative of bad faith registration and use”; “[b]ad faith can also be attributed to Respondent by virtue of its relationship to Mr. Frank Ottomanelli, who is identified in Whois records as the domain’s ‘New York City’ contact person”;[2] “Complainant’s principal, Mr. Nicolo Ottomanelli, and Mr. Frank Ottomanelli are cousins”; following litigation, “Mr. Frank Ottomanelli and his company Ottomanelli Gourmet Foods, Inc. entered into a Consent Decree with Mr. Nicolo Ottomanelli and Complainant in May 2005”; the consent decree prohibits Mr. Frank Ottomanelli from registering any domain name that contains “ottomanelli” unless, among other things, the word “ottomanelli” is “directly and ‘immediately preceded by the first name ‘Frank" or the first initial letter ‘F’”; “[a]lthough Respondent is not a named party to the Consent Decree, the terms of the Consent Decree make it clear that other parties can be bound by it”;[3] “[u]pon information and belief, Mr. Frank Ottomanelli is an officer, shareholder and/or exercises control in the day-to-day operations of Respondent S. Ottomanelli & Sons Inc.”;[4] “[a]t the very least, the fact that Mr. Frank Ottomanelli provided his name as the New York City or ‘NYC’ contact person for the <ottomanelli.nyc> domain establishes that he participated in the registration of the <ottomanelli.nyc> domain name and has acted in concert or participation with Respondent Mary Ottomanelli I S. Ottomanelli & Sons Inc.”; and “[s]ince Respondent acted in concert or participation with Mr. Frank Ottomanelli in the registration of the domain name, Respondent is bound by the terms of the Consent Decree and is prohibited from registering the domain name <ottomanelli.nyc> because the name ‘Frank’ or the initial letter ‘F’ do not precede ‘ottomanelli.’”

 

B. Respondent

 

Respondent states that “Complainant's businesses are not the only New York­ area businesses in the food industry bearing the name Ottomanelli”; “[m]uch of this usage by family members of the family name in the food industry predated Complainant's trademark registrations in 2008, and has continued for the seven years since the trademark registrations were issued”; and a “meat store in Woodside, New York” known as “S. Ottomanelli & Sons” “has been operating, in this same location , continuously for over 55 years” and is owned by “Mary Ottomanelli, who is also the owner of the disputed domain name, <ottomanelli.nyc>, which she will be using in connection with her business, S. Ottomanelli & Sons.”

 

Respondent argues the following:

 

·        “Given the co-existence of… various establishments and websites, many of which have been in operation simultaneously using the Ottomanelli name for decades, it is disingenuous for Complainant to now assert that the use of <ottomanelli.nyc> will create confusion.”

·        Respondent has rights or legitimate interests in respect of the Disputed Domain Name because “Mary Ottomanelli and her business are commonly known by the domain name, OTTOMANELLI”; “[t]herefore, she has a valid, legitimate interest in the domain name representing her business of the same name”; and “Mrs. Ottomanelli is working with a team of professionals and is in the process of creating a high quality website that will provide information to the public regarding the goods offered by her business.”

·        The Disputed Domain Name “was not done in bad faith” because “[i]t was not registered to interfere with or disrupt Complainant's business”; “[i]t was not registered for the purpose of reselling it to Complainant at a later time”; “[i]t was not registered to gain from Complainant or its business in any way”; and “[i]t was registered to be used in connection with a legitimate, long-standing business operating under the owner's surname, Ottomanelli.”

 

C. Additional Submissions

 

In its additional submission, Complainant states that Respondent’s arguments about consumer confusion “are irrelevant for purposes of determining whether the domain name registered by Respondent is identical and confusingly similar to Complainant’s registered marks”; “a respondent cannot obtain rights under [the]  Policy… if they fail to make an active use of the domain name at issue”; “Respondent has failed to demonstrate that it made any preparations to use the domain name prior to the filing date of Complainant’s Complaint”; “Respondent's  arguments fail to take into account that Respondent, by virtue of its relationship to Mr. Frank Ottomanelli, is contractually and judicially prohibited from having any interest in the disputed <ottomanelli.nyc> domain name”; “[b]ased upon New York State Department of State records, Mr. Frank Ottomanelli is an officer of Respondent S. Ottomanelli & Sons Inc.”; and “Mary Ottomanelli is the ‘owner and operator’ of Respondent S. Ottomanelli & Sons Inc.”

 

In its additional submission, Respondent states that Complainant’s “widespread failure to police the [OTTOMANELLI] mark has led to a substantial dilution of the mark; these marks have lost whatever distinctiveness they may have had through the widespread use of the Ottomanelli family name by other family members for other businesses”; “Respondent began the process of planning and designing the website within a few days of purchasing the website, and the creation of the website was underway prior to April13, 2015, the date on which Complainant submitted its original Complaint in this matter”; “Respondent was not a party to any such consent decree”; and “Respondent has not received a copy of the Consent Decree referenced by Complainant.”

 

FINDINGS

 

The Panel finds that the Disputed Domain Name is identical to a trademark in which Complainant has rights; and that the Respondent has rights or legitimate interests in respect of the Disputed Domain.  Accordingly, for the reasons set forth below, the Panel makes no findings with respect to whether Respondent registered and is using the Disputed Domain Name in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(3)  the domain name has been registered and is being used in bad faith.

 

Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy.  Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc., WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,… it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter, WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”).  Therefore, given that the Panel in the instant case finds, as discussed below, that the Complainant has failed to prove the second element of the Policy – that is, paragraph 4(a)(ii) – the Panel makes no findings with respect to the third element of the Policy.

 

Identical and/or Confusingly Similar

 

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the OTTOMANELLI Trademark.

 

As to whether the Disputed Domain Name is identical or confusingly similar to the OTTOMANELLI Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “ottomanelli”), as it is well-established that the top-level domain (i.e., “.nyc”) may be disregarded for this purpose.  See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).

 

Given that the second-level portion of the Disputed Domain Name is identical to the OTTOMANELLI Trademark, it is self-evident that the Disputed Domain Name is identical or confusingly similar to the OTTOMANELLI Trademark for purposes of the Policy.

 

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

 

Rights or Legitimate Interests

 

Under the UDRP, a domain name registrant can establish that it has rights or legitimate interests in a disputed domain name if the registrant has “been commonly known by the domain name, even if [the registrant] has acquired no trademark or service mark rights” (UDRP, para. 4(c)(ii)).

 

Here, it is apparent that the Respondent is known by the “Ottomanelli” name.  Whether Respondent had the right to register and use the Disputed Domain Name is, in light of the consent decree, much less apparent.  On the one hand, Respondent has argued that it is not bound by the consent decree because neither Mary Ottomanelli nor S. Ottomanelli & Sons Inc. is a party to the consent decree.  On the other hand, Complainant has argued that the consent decree does apply to the Respondent because of broad language in the consent decree, such as that referring to “all persons or companies acting in concert or in participation with” Frank Ottomanelli and Ottomanelli Gourmet Foods, Inc., and the relationship between Frank Ottomanelli and Respondent.

 

This is an unusual case, given the consent decree and the relationship among the parties.  Further, given the limited scope of UDRP proceedings, it is not a case that is well-suited for this policy.  In particular, and despite Complainant’s strong factual and legal arguments, it is nevertheless unclear whether Respondent acted “in concert or in participation with” Frank Ottomanelli with respect to the Disputed Domain Name, given that the record is devoid of any information or evidence from Frank Ottomanelli.  The Policy and the Rules do not provide the Panel with any authority to ascertain further information on this issue given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process.  See, e.g., Thump Records, Inc. v. WebPros, FA 446911 (Nat. Arb. Forum May 11, 2005) (referring to “[t]he limited scope of the Policy”); and Shedrick v. Princeton, FA 236575 (Nat. Arb. Forum Apr. 2, 2004) (referring to “the very narrow scope of the UDRP procedure”).

 

Furthermore, even were the Panel to conclude that Respondent acted “in concert or in participation with” Frank Ottomanelli with respect to the Disputed Domain Name, it is unclear how this would impact a UDRP proceeding given that Respondent nevertheless has “been commonly known by the domain name” – a defense under paragraph 4(c)(ii) of the UDRP.  In other words, while Respondent may be contractually prohibited from registering the Disputed Domain Name, the UDRP is not necessarily an appropriate legal procedure for Complainant to pursue to remedy this wrong.  See, e.g., Jumblatt v. SlantMedia, D2012-1011 (WIPO June 28, 2012) (“The Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names”).

 

Accordingly, in light of the above, the Panel cannot conclude that the Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name as defined by the UDRP.  The Panel notes that “[i]t may be that Complainant could develop evidence of bad faith and lack of legitimate interest in a legal proceeding that would allow more evidentiary development.  The Policy, however, was not designed to transfer domain names in every case that a trademark owner might ultimately win.”  Trans Continental Records, Inc. v. Compana LLC, D2002-0105 (WIPO Apr. 30, 2002).

 

Registration and Use in Bad Faith

 

As stated above, given that the Panel in the instant case finds that Complainant has failed to prove the second element of the Policy – that is, paragraph 4(a)(ii) – the Panel makes no findings with respect to the third element of the Policy.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <ottomanelli.nyc> domain name REMAIN WITH Respondent.

 

Douglas M. Isenberg, Panelist

Dated:  June 5, 2015