Sage Dining Services, Inc. v. Gianfranco Sancassano
Claim Number: FA1904001838278
Complainant is Sage Dining Services, Inc. (“Complainant”), represented by Lori E. Harrison of Pepper Hamilton LLP, New York, USA. Respondent is Gianfranco Sancassano (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cateringbysage.com>, registered with GoDaddy.com, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 10, 2019; the Forum received payment on April 10, 2019.
On April 15, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cateringbysage.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2019 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@cateringbysage.com. Also on April 17, 2019, 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 May 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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
Complainant is a premier provider of dining services and catering to private and public institutions since at least as early as 1990. Complainant has rights in the SAGE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,712,358, registered May 6, 2003). Respondent’s <cateringbysage.com> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the terms “catering” and “by” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <cateringbysage.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant granted Respondent permission to use the mark for any purpose. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect Internet users searching for Complainant to Respondent’s own competing website.
Respondent registered and uses the <cateringbysage.com> domain name in bad faith. Respondent disrupts Complainant’s business by intentionally attempting to attract, for commercial gain, Internet users to its competing website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the services offered on the resolving webpage associated with the domain name. Further, Respondent failed to reply to Complainant’s cease and desist letter. Additionally, Respondent had actual knowledge of Complainant’s rights in the SAGE mark given Complainant’s longstanding use of the mark in commerce, the well-established reputation of Complainant’s business, and Respondent’s use of the SAGE mark in connection with the term “catering.”
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <cateringbysage.com> domain name on October 13, 2018.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the SAGE mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,712,358, registered May 6, 2003). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the SAGE mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <cateringbysage.com> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the terms “catering” and “by” along with the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel therefore finds that the <cateringbysage.com> domain name is confusingly similar to the SAGE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in the <cateringbysage.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant granted Respondent permission to use the mark for any purpose. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Gianfranco Sancassano” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <cateringbysage.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the domain name to redirect Internet users searching for Complainant to Respondent’s own competing website. Using a confusingly similar domain name to compete with a complainant can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides a screenshot of the resolving webpage, which appears to redirect users to the site located at <bestprivatechef.com> and displays the message “Experience An Indonesian Gourmet Dinner At Home With Chef Dian” while allowing users to make dinner reservations. As such, the Panel holds that Respondent’s competing use of the domain name provides evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).
Thus, Complainant has satisfied Policy 4(a)(ii).
Complainant claims that Respondent disrupts Complainant’s business by intentionally attempting to attract, for commercial gain, Internet users to its competing website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the services offered on the resolving webpage associated with the domain name. Using a confusingly similar domain name to compete with a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products). As earlier mentioned, Complainant provides a screenshot of the resolving webpage located at the redirected <bestprivatechef.com> domain name, displaying the message “Experience An Indonesian Gourmet Dinner At Home With Chef Dian” while allowing users to make dinner reservations. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SAGE mark at the time of registering the <cateringbysage.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). Complainant contends that Respondent’s knowledge can be inferred given Complainant’s longstanding use of the mark in commerce, and Respondent’s use of the entirety of the SAGE mark in conjunction with the term “catering.” The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Thus, Complainant has also 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 <cateringbysage.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 17, 2019
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