Vincent J. Corbo, Jr. v. Madelyn Alfano
Claim Number: FA0810001230812
Complainant is Vincent J. Corbo, Jr. (“Complainant”), represented by Allan B. Gelbard, of Law Office of Allan B. Gelbard,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cookingandcursing.com>, registered with Godaddy.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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 24, 2008.
On October 24, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cookingandcursing.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 October 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 19, 2008 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@cookingandcursing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 26, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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 <cookingandcursing.com> domain name is identical to Complainant’s COOKING AND CURSING mark.
2. Respondent does not have any rights or legitimate interests in the <cookingandcursing.com> domain name.
3. Respondent registered and used the <cookingandcursing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vincent J.
Corbo, Jr., has produced and distributed a successful comedic cooking series
entitled “Cooking and Cursing” since July 2007.
Complainant markets this business by selling DVDs, and some clips of
Complainant’s productions have appeared on YouTube. Complainant indicated that the profits
collected from the sale of these DVDs are donated to “The Grandsons of Italy in
Respondent registered the <cookingandcursing.com> domain name on January 1, 2008, and uses it to promote a string of Italian restaurants.
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. 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.”).
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.
To establish rights in a mark under Policy ¶ 4(a)(i),
Complainant must provide evidence of either a registered trademark, or
secondary meaning associated with a mark used in commerce. See British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”); see also 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 claims
the latter and asserts common law rights in the COOKING AND CURSING mark. Complainant provides evidence that it markets
its DVDs in commerce using this mark, and that the mark has acquired secondary
meaning as an identifier of Complainant’s products. The clips of Complainant’s productions on
YouTube support this conclusion. Use of
the mark has also generated significant goodwill considering that Complainant’s
profits are donated to a charity.
Therefore, the Panel finds that Complainant has successfully established
common law right in the COOKING AND CURSING mark pursuant to Policy ¶
4(a)(i). See Stellar
Call Ctrs. Pty Ltd. v. Bahr,
FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant
established common law rights in the STELLAR CALL CENTRES mark because the
complainant demonstrated that its mark had acquired secondary meaning); see also George
Weston Bakeries Inc. v. McBroom, FA
933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could
establish common law rights in its GW BAKERIES mark through consistent and
continuous use of the mark, which helped the mark become distinctive and
generate “significant goodwill”).
Respondent’s <cookingandcursing.com>
domain name contains Complainant’s COOKING AND CURSING mark in its entirety but
removes the spaces between the words and adds the generic top-level domain
(“gTLD”) “.com.” The Panel finds these
changes to be insignificant under the Policy due to the inherent limitations of
domain names that do not allow for spaces, and that all domain names require
top-level domains. Therefore, the Panel
concludes that Respondent’s <cookingandcursing.com>
domain name is identical to Complainant’s COOKING AND CURSING mark under an
analysis of Policy ¶ 4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <cookingandcursing.com> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent’s <cookingandcursing.com> domain name redirects Internet users to a website promoting Italian restaurants. While this use is unrelated to Complainant’s business, Respondent presumably profits from this venture either directly or through the accrual of referral fees. Respondent’s attempt to profit by using the <cookingandcursing.com> domain name that is identical to Complainant’s mark fails to constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The WHOIS information for the <cookingandcursing.com> domain name identifies Respondent
as “Madelyn Alfano.” The Panel has no other information in the
record to rely upon with respect to Policy ¶ 4(c)(ii), so the Panel concludes
that Respondent is not commonly known by the <cookingandcursing.com>
domain name pursuant to this element of the Policy. See Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name); see also Instron Corp.
v. Kaner, FA 768859 (Nat. Arb. Forum
Sept. 21, 2006) (finding that the respondent was not commonly known by the
<shoredurometer.com> and <shoredurometers.com> domain names because
the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic
Equip’t as the registrant of the disputed domain name and there was no other
evidence in the record to suggest that the respondent was commonly known by the
domain names in dispute).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
While Respondent’s use of the <cookingandcursing.com> domain name is unrelated to Complainant’s business, the Panel still finds that Internet users may mistakenly believe that Complainant endorses or is affiliated with the Italian restaurants advertised on Respondent’s resolving website. The Panel also presumes that Respondent monetarily benefits from this use of a domain name that is identical to Complainant’s COOKING AND CURSING mark. The Panel finds that this is sufficient grounds to conclude that Respondent’s registration and use of the <cookingandcursing.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also GMAC LLC v. WhoisGuard Protected, FA 942715 (Nat. Arb. Forum May 9, 2007) (“Under Paragraph 4(b) of the Policy, evidence that a domain name registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the complainant’s mark serves as evidence of bad faith.”).
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 <cookingandcursing.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: December 8, 2008
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