Richard Gary Enterprises d/b/a The Gary Group v. Gino Sesto
Claim Number: FA0909001284386
Complainant is Richard Gary Enterprises d/b/a The Gary
Group (“Complainant”), represented by
Gregory J. Sater, of Rutter Hobbs & Davidoff Incorporated,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thegarygroup.com>, registered with Name.com Llc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 16, 2009.
On September 16, 2009, Name.com Llc confirmed by e-mail to the National Arbitration Forum that the <thegarygroup.com> domain name is registered with Name.com Llc and that the Respondent is the current registrant of the name. Name.com Llc has verified that Respondent is bound by the Name.com Llc 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 September 18,
A Response was received on October 22, 2009. However, because a hard copy of the Response was not received by the Response deadline, this Response was not timely and has been determined to be deficient under ICANN Rule #5.
On October 27, 2009 Complainant filed an additional submission to the complaint which was timely according to The Forum’s Supplemental Rule #7.
On November 2, 2009 Respondent submitted an additional response to the complaint. It was received in a timely manner according to The Forum’s Supplemental Rule #7.
On October 29, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
In this proceeding Complainant is The Gary Group, an advertising agency
specializing in the music industry. The
Complainant is also the owner since 1998 of the domain name <garygroup.com> and the website attached to this domain name has been used since that date.
Richard Gary Enterprises d/b/a The Gary Group is the owner and the bona fide senior user in commerce of THE GARY GROUP trade name. Complainant provided as Exhibit B copies of the registration from the Los Angeles County Recorder’s Office dated May 2, 1996 confirming Richard Gary’s use of the THE GARY GROUP name in business since June 1978 and a registration dates September 2, 2009 showing the current d/b/a renewal.
Since its creation in 1978, Complainant has become a well-known advertising agency and a market leader in its sector of activity. Therefore, Complainant’s unregistered trademark THE GARY GROUP has become highly recognized by the relevant customer base, companies and individuals in the music industry. Moreover, Complainant does advertise its services under THE GARY GROUP mark online, as well as in publications.
Complainant asserts that the mark THE GARY GROUP has acquired a secondary meaning given the 32 years of public use of the mark.
Regarding the confusing similarity to Complainant’s trademark, Complainant’s finds that the domain name in dispute <thegarygroup.com> is confusingly similar to the <garygroup.com> domain name registered by Complainant. Moreover, the disputed domain name is identical to THE GARY GROUP trademark and trade name owner by Complainant.
Complainant has not licensed or otherwise permitted Respondent to use its mark THE GARY GROUP or any similar name thereto nor has it licensed or otherwise permitted Respondent to apply for or use any domain name incorporating its mark or any confusingly similar name. Moreover, Respondent’s business identity has never been known as “The Gary Group” and Respondent has never acquired trademarks or service marks in such name.
In Complainant’s opinion there is clear evidence that Respondent was trying to free ride on its goodwill by registering the disputed domain name.
The Respondent is not currently using the domain name in connection with a bona fide offer of goods and services, nor is it engaging in a legitimate non commercial or fair use.
As for registration and use in bad faith, Complainant points out that the Respondent is a former employee of The Gary Group. He has worked for Complainant for five (5) years and The Gary Group terminated its employment in May 2008 due to its unprofessionalism in his interactions with clients, its behavior towards other employees and the suspicion that he was selling promotional items given by clients.
After Respondent left The Gary Group, he offered an employee five hundred dollars ($500.00) to give him the access password to his account in order to allegedly retrieve The Gary Group contact list. The attempt failed because of the size of the data.
In the light of the above mentioned circumstances, Complainant believes that there can be no doubt as to whether the Respondent registered the disputed domain name in bad faith.
Moreover, Complainant asserts that Respondent used the domain name in bad faith because its aim was to divert Internet users to Complainant’s competitors and that this amounts to disruption of business.
The Respondent sent a late response and is therefore not in compliance with ICANN Rule #5.
In his response he puts forward the argument that Complainant has no registered trademark in the name “The Gary Group” and cannot show any rights to a common law mark.
Moreover, Respondent points out that there are numerous other entities with similar names and therefore Complainant cannot show that the name has become distinctive of this particular source.
Respondent highlights the fact that he was employed by The Gary Group for eight (8) years and that his contract was terminated for completely different reasons than the ones put forward by Complainant. He also asserts that he did not try to recover The Gary Group contact list, but was merely trying to retrieve emails and credit card details that were on his work email account.
Respondent believes that Complainant did not prove that the registration of the disputed domain name disrupted his business and that internet users have actually been confused.
C. Additional Submissions
On October 27, 2009 Complainant submitted an additional submission where he disproved Respondent’s arguments. In particular, Complainant supplied further documents in order to prove that its company has been established and has been using the trade name The Gary Group for a long time.
Moreover, Complainant points out that even though there might be plenty of other businesses bearing the same name, none of them is established in the same field of activity.
On November 1st, 2009 Respondent filed an additional submission where he rebutted several Complainants’ arguments, notably on its interpretation of the case law.
The Complainant owns an unregistered trademark THE GARY GROUP, which has acquired a secondary meaning due to its extensive use since 1978.
The disputed domain name was registered on March 20, 2009 by Respondent, a former employee of Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Preliminary Issue: Deficient Response
Respondent has provided a Response that was deficient because the National Arbitration Forum has determined that a hard copy of the Response was not received before the Response deadline. In such circumstances the Panel may decide whether or not to consider Respondent’s submission, or the amount of weight to give to the Response, because it is not in compliance with ICANN Rule 5. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist); see also Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (refusing to accept the respondent’s deficient response that was only submitted in electronic form because it would not have affected the outcome had the Panel considered it). But see Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
In this case, the Panel decided to take into account Respondent’s response even though it was not submitted in time.
Although Complainant does not have a trademark registration for the THE GARY GROUP mark, the Panel finds that a trademark registration is not required to satisfy Policy ¶ 4(a)(i). 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); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant, Richard Gary Enterprises d/b/a The Gary Group, contends that it has used the THE GARY GROUP mark continuously in commerce since at least as early as 1978. Complainant contends that it is the leading advertising agency working in the music industry, and has historically worked on two-thirds of the weekly 200 top-selling albums. The Panel believes that Complainant has established common law rights in the THE GARY GROUP mark for purposes of Policy ¶ 4(a)(i) through the secondary meaning acquired by the THE GARY GROUP mark after being used continuously in commerce since at least as early as 1978. 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 Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <thegarygroup.com>
domain name is identical to its THE GARY GROUP mark. The disputed
domain name differs from Complainant’s mark in two ways: (1) the spaces have
been removed from the mark; and (2) the generic top-level domain (“gTLD”)
“.com” has been added to the end of the mark. The Panel finds that under
Policy ¶ 4(a)(i), removing the spaces from a mark
doesn’t render the domain name sufficiently different from the mark. See
Therefore, the Panel finds that the disputed domain name is not sufficiently distinguished from, and is identical to, Complainant’s THE GARY GROUP mark pursuant to Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel believes that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. 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 Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
Complainant contends that Respondent is not commonly known by the <thegarygroup.com> domain name, nor has it ever been the owner or licensee of the THE GARY GROUP mark. The WHOIS record for the disputed domain name identifies Respondent as “Gino Sesto.” With no evidence showing that Respondent has been commonly known by any variant of the THE GARY GROUP mark, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is using the <thegarygroup.com> domain name to host a website that redirects Internet users to a website resolving from the <multiadvertising.us> domain name. Internet users then are prompted to send an e-mail to email@example.com. Complainant contends that this redirection of Internet users constitutes a diversion to a competitor of Complainant. In the Panel’s opinion this use by Respondent of the <thegarygroup.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”); see also Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that Respondent lacked rights and legitimate interests in the <jawsoflife.com> domain name where it was being used to divert Internet users to the website for Phoenix Rescue Tools, one of Complainant’s direct competitors).
Complainant contends that Respondent is using the <thegarygroup.com> domain name, registered on March 20, 2009, to confuse Internet customers and divert them from Complainant’s website to Respondent’s website. Complainant also contends that Respondent intends to compete with, and thereby disrupt, Complainant’s business by this diversion. The Panel finds that Respondent does disrupt Complainant’s business, and therefore did register and is using the <thegarygroup.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”).
Complainant also contends that Respondent gains commercially from this diversion of Internet users, as Respondent is redirecting Internet users to a website and an e-mail address that presumably competes with Complainant’s business. The Panel believes that Respondent is intentionally using the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of Respondent’s registration and use in bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant also contends that Respondent, as a former employee of Complainant, intentionally registered and has used the disputed domain name in a manner that disrupts Complainant’s business because of Respondent’s animosity towards his former employer. The Panel may find that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii), due to Respondent’s animus. See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding bad faith use and registration where a disgruntled former employee registered an infringing domain name to open an online business that competed with the complainant); see also Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) ("Respondent's registration of the company name of his former employer as a domain name is an act of bad faith.").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thegarygroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: November 11, 2009
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