Ottomanelli Bros., Ltd. v. Rob Velez
Claim
Number: FA0503000440427
Complainant is Ottomanelli Bros., Ltd. (“Complainant”),
represented by Peter S. Sloane, of Ostrolenk, Faber, Gerb and Soffen, LLP, 1180 Avenue of the Americas, New York, NY 10036. Respondent is Rob Velez (“Respondent”), 395 Amsterdam Ave., New York, NY 10004.
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <nycotto.com>, registered with Network
Solutions, Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
15, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 18, 2005.
On
March 16, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <nycotto.com> is registered
with Network Solutions, Inc. and that Respondent is the current registrant of
the name. Network Solutions, Inc. has
verified that Respondent is bound by the Network Solutions, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
March 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 11, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@nycotto.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 16, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <nycotto.com>
domain name is confusingly similar to Complainant’s OTTOMANELLI mark.
2. Respondent does not have any rights or
legitimate interests in the <nycotto.com> domain name.
3. Respondent registered and used the <nycotto.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Ottomanelli Bros. Ltd., has been in the food business in New York City since
1900. Since 1917, Complainant has been
a recognized processor, wholesaler and purveyor of fine quality meats.
Complainant has
registered the OTTOMANELLI mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,820,249 issued February 8, 1994).
In January 2000,
Complainant entered into a Service Agreement with electrikweb, a Dublin-based
web hosting company, governing the registration and maintenance of the <nycotto.com>
domain name and corresponding website.
Rather than register the <nycotto.com> domain name in the
name of Complainant, electrikweb registered the domain name under the name of
Respondent, Rob Velez, a former employee of electrikweb.
In late February
2005, the website at the <nycotto.com> domain name suddenly became
inactive. Upon attempting to contact
electrikweb, Complainant learned that one of its owners had died and the
company had apparently shut down.
Complainant attempted to locate Rob Velez in New York and Ireland and
has been unsuccessful in determining his location in order to retain control of
the <nycotto.com> domain name and restore its website. The domain name continues to remain inactive
to this date.
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."
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.
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
Complainant has
established rights in the OTTOMANELLI mark through registration of the mark
with the USPTO. See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
Respondent’s <nycotto.com> domain name is confusingly
similar to Complainant’s OTTOMANELLI mark.
Respondent’s domain name incorporates the dominant feature of
Complainant’s mark, “otto,” and adds the geographic term “nyc” which refers to
New York City, where Complainant operates.
Such minor changes are not enough to overcome a finding of confusing
similarity pursuant to Policy ¶ 4(a)(i).
See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001)
(finding that the <mnlottery.com> domain name is confusingly similar to
the complainant’s MINNESOTA STATE LOTTERY registered mark); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001)
(finding the domain name <ms-office-2000.com> to be confusingly similar
even though the mark MICROSOFT is abbreviated); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to the
complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s registration of
the domain name <net2phone-europe.com> is confusingly similar to the
complainant’s mark because “the combination
of a geographic term with the mark does not prevent a domain name from being
found confusingly similar”); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding
confusing similarity between the complainant’s VERISIGN mark and the
<verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the
complainant’s mark).
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to negate a
finding of confusing similarity between Complainant’s mark and Respondent’s
domain name pursuant to Policy ¶ 4(a)(i).
See Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”); see also Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(finding it is a “well
established principle that generic top-level domains are irrelevant when conducting
a Policy ¶ 4(a)(i) analysis”).
Finally,
on this element, it is obvious that the Complainant intended the domain name at
issue to conjure up an association in the mind of the public with its own well
established commercial name. Otherwise,
Complainant would never have engaged electrikweb to register the
<nycotto.com>.
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard.”); see also Vertical Solutions Mgmt., Inc. v. webnet-Mktg.,
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).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
construe Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <nycotto.com> domain name
pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
not making any use of the <nycotto.com> domain name, which is
confusing similar to Complainant’s OTTOMANELLI mark. As such, Respondent’s nonuse cannot be characterized as a use 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). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (“[M]erely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy.”).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s mark. Thus, the Panel
finds that Respondent lacks rights and legitimate interests in the <nycotto.com>
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); see also Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interests where the respondent
was not commonly known by the mark and never applied for a license or
permission from the complainant to use the trademarked name).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
trusted its now defunct agent to properly register and renew the registration
of the domain name at issue. Through
neglect or other malfeasance, electricweb permitted the domain name at issue to
be registered in the name of one of its employees who has since
disappeared. I find this breach of
trust and the agent’s duty to the principal (Complainant) sufficient to
establish registration and use in bad faith under ¶ 4(b) of the Policy which
provides that its examples of bad faith are “without limitation.” This situation is unlike those in which
there is a commercial dispute between a complainant and its webpage
designer—such disputes are usually outside the limited jurisdiction of the
UDRP. However in multiple cases similar
to this one, panelists have found sufficient grounds to grant relief.
In Map
Supply, Inc. v. On-line Colour Graphics, FA 96332 (Nat. Arb. Forum Feb. 6,
2001), the panel ordered the transfer of a domain name where respondent was
hired to register a domain name and design a website for complainant but later
refused to transfer the domain name registration to complainant. In the instant case, we do not even have the
refusal to transfer issue—the agent simply erred and improperly carried out its
duties to the Complainant. See also, Nova Banka v. Iris, WIPO Case
No. D2003-0366, and Primedia Magazine
Finance Inc. v. Next Level Productions, WIPO Case No. D2001-0616, both
cases finding bad faith on the part of the agent respondent in similar
circumstances
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <nycotto.com> domain name be TRANSFERRED from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
May 2, 2005
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