Gilbert Armenta and Armenta Realty Holdings, LLC v. Attn Rob Lyons, Sea Alert Ltd / AMS Trustees Ltd
Claim Number: FA1505001621194
Complainant is Gilbert Armenta and Armenta Realty Holdings, LLC (“Complainant”), represented by Judith L. Grubner of Arnstein & Lehr LLP, Illinois, USA. Respondent is Attn Rob Lyons, Sea Alert Ltd / AMS Trustees Ltd (“Respondent”), Virgin (British) Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gilbert-armenta.com>, registered with Network Solutions, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 26, 2015; the Forum received payment on May 26, 2015.
On May 28, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <gilbert-armenta.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 June 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@gilbert-armenta.com. Also on June 5, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 1, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant asserts unregistered common law rights in the ARMENTA and GILBERT ARMENTA marks dating back to at least 2006. The marks are used in connection with the provision of real estate services and the implementation of new technologies and business ventures involving communications systems for public and private companies. “Gilbert Armenta” is also the personal name of the owner of Complainant company Armenta Realty Holdings, LLC. The <gilbert-armenta.com> domain name is confusingly similar to the ARMENTA mark because it adds a descriptive term, a hyphen and the generic top-level domain (“gTLD”) “.com.” The <gilbert-armenta.com> domain name is identical to the GILBERT ARMENTA mark because the domain name contains the entire mark and differs only by the addition of a hyphen and the gTLD “.com.”
2. Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, the disputed domain name was registered by a former employee in order to defame Complainant by posting documents related to a prior civil case in which Complainant was a party.
3. Respondent has engaged in bad faith registration and use. Respondent is a former employee of Complainant who is misappropriating marks in which Complainant has rights in order to exercise Respondent’s right to free speech.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Gilbert Armenta and Armenta Realty Holdings, LLC of Fort Lauderdale, FL, USA. Complainant states that is has been continuously doing business under the marks ARMENTA and GILBERT ARMENTA for more than 23 years as a well-known U.S. real estate developer, implementer of technologies and business ventures, real estate developer and developer of international telecommunication networks.
Respondent is Rob Lyons, Sea Alert Ltd / AMS Trustees Ltd of Tortola, British Virgin Islands. Respondent’s registrar’s address is listed as Jacksonville, FL, USA. The Panel notes that the <gilbert-armenta.com> domain name was registered on or about July 4, 2012.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts unregistered common law rights in the ARMENTA and GILBERT ARMENTA marks dating back to at least 2006. The marks are used in connection with the provision of real estate services and the implementation of new technologies and business ventures involving communications systems for public and private companies. “Gilbert Armenta” is also the personal name of the owner of Complainant company Armenta Realty Holdings, LLC. The Panel notes that registration with a governmental entity or authority is not necessary to acquire rights in a trademark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
In order to acquire common law rights, a complainant must show that its mark(s) has acquired secondary meaning. Relevant evidence of secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). In order to acquire common law rights in a trademark consisting of a personal name, the complainant must make a showing that the name was used to market the relevant goods or 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 notes that Complainant has provided the Panel with a copy of its certification of formation (dated January 20, 2006) as a limited liability company (LLC) under the name “Armenta Realty Holdings, LLC” in the state of Delaware. Complainant has also provided a copy of a commercial lease it entered into with a Florida corporation. Further, in its complaint, Complainant contends that it has spent a great deal of time, effort, and money conducting business under the ARMENTA and GILBERT ARMENTA marks.
Complainant argues that the <gilbert-armenta.com> domain name is confusingly similar to the ARMENTA mark. Complainant notes that the domain name contains the entire mark and differs only by the addition of a descriptive term, a hyphen, and the gTLD “.com.” The term “gilbert” is descriptive because it is the first name of the owner of Complainant company Armenta Realty Holdings, LLC. As a general rule, making punctuation-related alterations (such as adding hyphens) or adding a gTLD cannot distinguish the domain name from the mark at issue. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel here finds that the disputed domain name is confusingly similar to the ARMENTA mark.
Complainant argues that the disputed domain name is identical to the GILBERT ARMENTA mark. Complainant notes that the domain name contains the entire mark and differs only by the addition of a hyphen and the gTLD “.com.” Again, making punctuation-related alterations (such as adding hyphens) or adding a gTLD cannot distinguish the domain name from the mark at issue. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel here finds that the disputed domain name is identical to the GILBERT ARMENTA mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant asserts that Respondent is not commonly known as the <gilbert-armenta.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the ARMENTA or GILBERT ARMENTA marks in domain names. The Panel notes that “Attn Rob Lyons, Sea Alert Ltd” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of license to use Complainant’s marks. Because Respondent has provided no evidence in this matter Respondent cannot have rights or legitimate interests 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 <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent is one of its former employees, and that the domain name now in dispute was registered for the purpose of defaming Complainant by posting documents from a prior civil case to which Complainant was a party. The Panel notes that the disputed domain name resolves to a webpage displaying such documents. While the content displayed on the resolving webpage may be protected by the First Amendment, Respondent may not use a confusingly similar domain name to exercise those rights. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”). The Panel here finds that confusing similarity under Policy ¶ 4(a)(i) exist and that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant reiterates its argument that Respondent is a former employee and that the disputed domain name was registered in order to defame Complainant by posting documents related to a prior civil case in which Complainant was a party. The Panel again notes that the resolving webpage contains documents related to a civil case in which Complainant was a party. Complainant contends that Respondent may not exercise its free speech rights by registering a domain name that is identical or confusingly similar to a mark in which Complainant has rights. Prior panels have found bad faith where the respondent misappropriated the complainant’s mark in exercising its free speech rights. 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 here finds that Respondent has misappropriated a mark in which Complainant has trademark rights, thereby demonstrating registration and use in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <gilbert-armenta.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 15, 2015
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