John G. Balestriere v. Simon Mills / Emancipation Media
Claim Number: FA1505001618353
Complainant is John G. Balestriere (“Complainant”), represented by Jillian L. McNeil of BALESTRIERE FARIELLO, New York, USA. Respondent is Simon Mills / Emancipation Media (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johngbalestriere.com> registered with TLD Registrar Solutions Ltd.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 7, 2015; the Forum received payment on May 7, 2015.
On May 8, 2015, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <johngbalestriere.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 May 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@johngbalestriere.com. Also on May 13, 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.
Respondent submitted a response on June 3, 2015, past the deadline for filing a response. The Panel has decided to accept and consider this Response. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
A timely additional submission was submitted by Complainant on June 5, 2015 and was determined to be compliant by the Forum.
All submissions were considered by the Panel.
On June 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Complainant has common law rights in the JOHN G. BALESTRIERE mark dating back to first use in commerce on January 1, 2005. Respondent’s <johngbalestriere.com> domain name is identical to Complainant’s JOHN G. BALESTRIERE mark because it is differentiated by only the removal of spaces and punctuation, and the addition of a generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the disputed domain name as the WHOIS information lists “Simon Mills” as Registrant. Respondent fails to establish rights and legitimate interests in the disputed domain name because Respondent uses the resolving website to defame Complainant.
Respondent uses the disputed domain name to disrupt Complainant’s business. Respondent registered the disputed domain name for the purpose of defaming Complainant. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the JOHN G. BALESTRIERE mark.
Respondent
Respondent has exercised its First Amendment rights in operating and maintaining the disputed domain name. Respondent has exhibited a noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent has not used the <johngbalestriere.com> domain name in bad faith as it is performing a public service through the website.
Additional Submission from Complainant
Nothing in Respondent’s Answer changes that (1) the <johngbalestriere.com> domain name is identical to a mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in the <johngbalestriere.com> domain name; and (3) Respondent registered and is using the domain name in bad faith.
Respondent presents a misleading version of the February 13, 2015 DDC letter regarding the DDC’s private admonishment of Balestriere. Respondent’s distortion of the February 13, 2015 DDC letter and the New York action are evidence of bad faith. Respondent’s general misrepresentation of these facts further demonstrate Respondent’s bad faith registration and use of the <johngbalestriere.com> domain name.
Respondent’s repeated requests for payment of attorney fees is disingenuous and further evidence of bad faith.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.
Complainant is an attorney practicing in New York. Complainant’s JOHN G. BALESTRIERE mark is not registered with any trademark agency, however, past panels have found that registration with a trademark agency is not required if a complainant can demonstrate common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant alleges it has common law rights in the JOHN G. BALESTRIERE mark dating back to first use in commerce on January 1, 2005. Complainant claims it uses the JOHN G. BALESTRIERE mark in its legal services business and attorney advertising. To have common law rights in a mark, a complainant must show that the mark has secondary meaning. Complainant’s JOHN G. BALESTRIERE mark is Complainant’s personal name, so Complainant must show secondary meaning by demonstrating that the mark has been used as a marketable commodity, or for direct commercial purposes in marketing goods and services. See Asper v. Comm. X Inc., D2001-0540 (WIPO June 11, 2001) (surveying UDRP disputes concerning the use of personal names, the panel found that “where the complainant was successful he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services”). The Panel finds that Complainant has submitted evidence sufficient to establish secondary meaning, and finds Complainant has common law rights under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <johngbalestriere.com> domain name is identical to Complainant’s JOHN G. BALESTRIERE mark because it is differentiated by only the removal of spaces and punctuation, and the addition of the gTLD “.com.” Past panels have found that the combination of these changes is insufficient to differentiate a domain name from a mark under Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Accordingly, the Panel finds that Respondent’s <johngbalestriere.com> domain name is identical to Complainant’s JOHN G. BALESTRIERE mark.
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Simon Mills” as Registrant and Respondent has not submitted any evidence to indicate it is commonly known by the disputed domain name. Past panels have found that a lack of evidence, including WHOIS information, suffices to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, the Panel finds that Respondent is not commonly known by the <johngbalestriere.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to demonstrate rights and legitimate interests in the <johngbalestriere.com> domain name under Policy ¶ 4(a)(ii) because Respondent uses the resolving website to defame Complainant. Past panels have found that although respondents have a legitimate interest in criticizing complainants, they do not automatically have such an interest in a domain name that is identical to a complainant’s mark. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”). Therefore, the Panel finds that Respondent has failed to demonstrate rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant alleges that Respondent uses the disputed domain name to disrupt Complainant’s business. Complainant states that the resolving website contains nothing except criticism of Complainant, in an attempt to damage the goodwill of Complainant. Past panels have found that such use constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith). The Panel finds that Respondent registered and operates the <johngbalestriere.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent registered the disputed domain name for the purpose of defaming Complainant. Past panels have found that while criticism of a complainant may be a legitimate use of a domain name, doing so while using a domain name identical to a complainant’s mark is evidence of bad faith under Policy ¶ 4(a)(iii). See Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum Dec. 19, 2005) (“Even if the goal of providing a free speech forum for criticizing Complainant is commendable, that goal cannot be reached by usurping Complainant’s marks and posing as Complainant.”). The Panel finds such action here, and finds that Respondent registered and used the domain name in bad faith.
Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the JOHN G. BALESTRIERE mark. Complainant has provided correspondence which is evidence that Respondent knew of Complainant at the time of registration. Complainant also argues that, because the contents of the resolving website reference Complainant, Respondent must have been aware of Complainant’s rights in the JOHN G. BALESTRIERE mark. Past panels have found bad faith in registration when respondents are aware of a complainant’s mark. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds Respondent had knowledge of Complainant’s mark, and finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <johngbalestriere.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 11, 2015
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