Lifelong Learning Institute in Chesterfield v. Vince Devito / Adam Laneer
Claim Number: FA2106001949874
Complainant is Lifelong Learning Institute in Chesterfield (“Complainant”), represented by Roberto Ledesma of Lewis & Lin, LLC, New York, USA. Respondents are Vince Devito and Adam Laneer (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <llichesterfield.org>, <llichesterfield.com> and <llichesterfield.net>, registered with NameCheap, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 4, 2021; the Forum received payment on June 4, 2021.
On June 7, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <llichesterfield.org>, <llichesterfield.com> and <llichesterfield.net> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2021 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@llichesterfield.org, postmaster@llichesterfield.com, postmaster@llichesterfield.net. Also on June 14, 2021, 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 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
The disputed domain names are not owned by one party. In consequence of these proceedings the Registrar disclosed the names of the underlying domain name registrants shielded from public WhoIs enquiry by a privacy service. The holder of the domain names <llichesterfield.com> and <llichesterfield.net> is Adam Laneer and the holder of the domain name <llichesterfield.org> is Vince Devito.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant alleges that the domain names are effectively controlled by a single person or entity, operating under several aliases. The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there is reasonable evidence of a claim to actual control by one person or entity.
That common control is said to be shown by the facts that the disputed domain names were hijacked on the same day (see later), transferred to the same registrant, have the same IP address, and have been used for the same purposes. The Panel considers that this is adequate evidence of Complainant’s assertion of a single controlling entity and so allows these proceedings to continue against the named respondents, referring to them together as “Respondent”.
A. Complainant
Complainant asserts common law trademark rights in LLI CHESTERFIELD based upon use of that mark in commerce since 2004. Complainant submits that the disputed domain names are identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names since it hijacked the disputed domain names which were previously in Complainant’s name.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith for these same reasons.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a non-profit organization that provides educational opportunities for older adults;
2. Complainant previously was the registrant of the disputed domain names which were created on June 21, 2007 and June 15, 2011;
3. there is no relationship between the parties;
4. the disputed domain names have since 2017 been owned by Respondent and resolve to Complainant’s website; and
5. the names have been offered for sale.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) does not distinguish between registered and unregistered trademark rights and UDRP decisions have uniformly found that a governmental registration is not required if the complainant can, instead, establish common law rights (see, for example, Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018)).
As stated, Complainant asserts common law rights in LLI CHESTERFIELD based upon use of that mark since 2004. Common law trademark rights may be established through use and public recognition of a putative mark such that it has come to acquire secondary meaning (see, for example, Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) holding that complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”; Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”; Copper Wire Stripper Limited v. Joe Williams / BLUEDOGINTERNATIONALINC, FA 1604460 (Forum Apr. 4, 2015) finding complainant failed to establish secondary meaning where no evidence was provided with respect to sales under the mark and money spent promoting the mark; CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) finding complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.”).
These and many other similar decisions under the Policy are reflected by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview”), which asks at paragraph 1.3: What does a complainant need to show to successfully assert unregistered or common law trademark rights? In answer, the expressed consensus of opinion of UDRP panelists is that:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
…
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”
The evidence in support of the claim to common law trademark rights in this case comprises:
(i) the declaration of Rachel Ramirez, Executive Director/CEO of Complainant (“Ramirez”);
(ii) press cuttings relating to Complainant; and
(iii) results of a Google search of the Complainant’s name.
The Google search does little more than confirm the existence of Complainant. It says nothing of the public awareness of the asserted trademark and the Panel can put very little weight on it. Ramirez, on the other hand, sets out certain facts of relevance. She states that Complainant started in 2004 and that the LLI CHESTERFIELD trademark has been in continuous use for the past 17 years. Since creating a database in 2005, Complainant has had over 3,300 members, over 650 different instructors and nearly 1,000 guests have attended events it has hosted. She states that Complainant’s business has been featured in numerous publications, including Salisbury Life, Chesterfield Observer, James River Neighbors, Virginia Living and the Richmond Times Dispatch.
The Panel observes that the press cuttings confirm the nature of the business and some are dated many years ago. Taken as a whole, the evidence supports a finding that Complainant has come to be known in the Greater Richmond Region. The Panel would characterise it as having a modest reputation in that region. The Policy does not require a complainant to have a nationwide reputation and many local businesses such as car dealerships and beauty salons have succeeded in showing that they have acquired common law rights in a mark used in a limited geographical area. In this instance the Panel likewise finds that Complainant has done enough to show unregistered trademark rights in the name LLI CHESTERFIELD.
For the purposes of comparison of the disputed domain names with the trademark the gTLD can in each case be disregarded and so the Panel finds all the names to be identical with the trademark (see, for example, F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name ‘.com.’”). It follows that the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy by demonstrating that the domain names are confusingly similar to a trademark or service mark in which it has rights.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
As set out earlier, the domain name registrants are Vince Devito and Adam Laneer, which does not suggest that Respondent might be commonly known by any of the domain names. There is no evidence that Respondent has any relevant trademark rights and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. On the contrary, the evidence supports Complainant’s allegation that Respondent hacked into Complainant’s account and transferred the domain names to another registrar. Previous UDRP decisions have found a respondent lacks rights or legitimate interests in a disputed domain name when the complainant previously owned the domain name and the respondent acquired the domain opportunistically.
There is nothing else which might quality as legitimate use since the only use was to have the domain names resolve back to Complainant’s website. Clearly none of these actions constitutes a bona fide offering of goods or services or legitimate non-commercial or fair use under the Policy. Finally, some of the disputed domain names have been offered for sale.
The Panel finds that Complainant has made a prima facie case (see, for example, Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”); Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum Sept. 1, 2016) (“[The disputed domain name was] registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date… As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) where the panel found that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket acquisitional costs provided additional evidence that the respondent had no rights or legitimate interests in the contested domain name).
The onus shifts to Respondent and in the absence of a Response, the Panel finds that Respondent has not discharged the onus and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s actions clearly show registration in bad faith and use in bad faith, independently from the four scenarios outlines above (see, for example, Aurbach v. Saronski, FA 155133 (Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”); Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Accordingly, the Panel finds that the third and final element of the Policy is 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 <llichesterfield.org>, <llichesterfield.com> and <llichesterfield.net> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: July 16, 2021
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