Nello (Food), LLC v. Domain Vault / Domain Vault LLC
Claim Number: FA1508001633387
Complainant is Nello (Food), LLC (“Complainant”), represented by John M. Rannells of Baker and Rannells PA, New Jersey, United States. Respondent is Domain Vault / Domain Vault LLC (“Respondent”), Texas, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nello.com>, registered with Name.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2015; the Forum received payment on August 13, 2015.
On August 14, 2015, Name.com, Inc. confirmed by e-mail to the Forum that the <nello.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 August 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@nello.com. Also on August 19, 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 September 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. Respondent’s <nello.com> domain name is identical to Complainant’s NELLO mark.
2. Respondent does not have any rights or legitimate interests in the <nello.com> domain name.
3. Respondent registered and uses the <nello.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered the NELLO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,051,627, registered November 8, 2011), showing use dating back to 1990. The NELLO mark used in connection with a well-known restaurant in New York City.
Respondent did not submit a response in this proceeding. The disputed domain name was registered by another party on October 17, 2003, changed hands several times, and most recently was transferred on August 14, 2015. Respondent uses the <nello.com> domain name to display commercial links to third-party websites.
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 holds a registration for the NELLO mark with the USPTO (Reg. No. 4,051,627, registered November 8, 2011). The registration date of Complainant’s NELLO mark is after Respondent’s registration of the <nello.com> domain name. However, Complainant registration reflects a first use date of 1990. Complainant argues that it has rights in the NELLO mark based on the fame it has achieved for its New York City restaurant by that name. It is possible for a complainant to establish common law rights when a respondent’s registration of a disputed domain name predates complainant’s trademark registration. 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 argues that it has used the NELLO mark for 25 years, and the restaurant has received numerous accolades and is consistently rated among the top echelon of restaurants in the United States. Complainant is regularly featured in magazines, news articles, and online forums for its fame, success, and the quality of its services. Complainant provides the Panel with evidence of public relations and news articles for Nello. Past panels have found that a complainant established common law rights in its mark through the commercial popularity and success of the domain name operated by the complainant under its mark. See Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum Sept. 12, 2007) (“The Panel finds by virtue of the commercial popularity and success of the domain name Complainant operated under the JUNKMYCAR mark, that Complainant has established common law rights in the JUNKMYCAR mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that Complainant has provided sufficient evidence to demonstrate common law rights in the NELLO mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <nello.com> domain name is virtually identical to Complainant’s mark as it merely adds the gTLD “.com.” Past panels have found that the affixation of the gTLD “.com” does nothing to eliminate confusing similarity under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that Respondent’s <nello.com> domain name is identical to Complainant’s NELLO mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent has no rights or legitimate interests in the disputed domain name, and not commonly known by the disputed domain name or any derivative of Complainant’s mark. Complainant states that Respondent is not licensed or authorized to use Complainant’s mark. The WHOIS information lists “Domain Vault / Domain Vault LLC” as the registrant of the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant also argues that Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Complainant shows that Respondent uses the disputed domain name to display commercial links to third-party websites that compete with Complainant, through which it receives referral fees. Past panels have found that there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use when the website resolving from the disputed domain name links to products and services that compete directly with a complainant’s business. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Accordingly, the Panel finds that Respondent is not using the <nello.com>domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent has been the subject of prior UDRP proceedings that resulted in the transfer and/or cancellation of the disputed domain name, and provides copies of these prior adverse UDRP proceedings against Respondent. Past panels have held that prior adverse UDRP rulings against a respondent are evidence of bad faith under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Thus, the Panel finds that Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(ii).
Respondent is diverting Internet users from Complainant’s website to Respondent’s website featuring competing links, disrupting Complainant’s business. Past panels have concluded that a respondent’s use of a resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent has engaged in bad faith per Policy ¶ 4(b)(iii).
Respondent uses the disputed domain name to divert Internet users to its website where it presumably receives pay-per-click fees from third parties. Past panels have found bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website that offered links to third-parties competing with complainant for commercial gain. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Accordingly, the Panel finds that Respondent demonstrated bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant argues that due to the fame and extraordinary market penetration of Complainant’s mark, Respondent had actual knowledge of Complainant’s mark at the time of the registration. Past panels have found bad faith registration under Policy ¶ 4(a)(iii) where a complainant’s mark was famous and the respondent should have been aware of it. See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it). Since Complainant operated its well-known NELLO restaurant for 13 years before Respondent’s registration of the disputed domain name, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nello.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 18, 2015
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