Nuova Corporation d/b/a Trattoria La Strada v. Roberto Bernardoni
Claim Number: FA1003001313063
Complainant is Nuova Corporation d/b/a Trattoria La Strada (“Complainant”), represented by Brett
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trattorialastrada.com>, registered with The Name It Corporation.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2010.
On March 17, 2010, The Name It Corporation confirmed by e-mail to the National Arbitration Forum that the <trattorialastrada.com> domain name is registered with The Name It Corporation and that Respondent is the current registrant of the name. The Name It Corporation has verified that Respondent is bound by the The Name It Corporation 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 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2010 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@ trattorialastrada.com. Also on March 18, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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:
Complainant owns and operates
an Italian restaurant in
Complainant has operated its restaurant under its TRATTORIA LA STRADA service mark since 1991, and registered the disputed <trattorialastrada.com> domain name on April 15, 1998, in connection with the management of that restaurant.
Complainant serves more than 100,000 diners per year, with gross sales exceeding $2,000,000.00 in 2009.
Complainant regualrly promotes its restaurant through, among other means, radio, television and newspaper advertasing, spending more than $340,000.00 for this purpose in the years 2007-09 alone.
Respondent is a former employee and minority business partner of Complainant.
Subsequent to the original domain name registration by Complainant, Respondent, who had been entrusted by Complainant to administer the domain name and resolving website for the benefit of Complainant, instead registered the domain in its own name on April 7, 2008, without the knowledge or approval of Complainant.
Complainant and Respondent dissolved their business relationship, in the wake of a dispute between them, in late 2008.
The disputed domain name now resolves to a website for Respondent’s restaurant, which competes with Complainant’s business.
Respondent’s <trattorialastrada.com> domain name is identical to Complainant’s TRATTORIA LA STRADA mark.
Respondent is not commonly known by the disputed domain name.
Respondent is not making a legitimate non-commercial or fair use of the contested domain name.
Respondent does not have any rights to or legitimate interests in the domain name.
Respondent has demanded that Complainant pay $100,000.00 to recover the disputed domain name from it.
Respondent registered and uses the <trattorialastrada.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant need not establish rights in its TRATTORIA LA STRADA mark based on a registered trademark. Common law rights are sufficient to establish Complainant’s rights under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a complainant's mark be registered by a government authority for such rights to exist for purposes of the Policy); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant asserts common law rights in its TRATTORIA LA STRADA mark through its continuous use in the promotion and operation of its restaurant since 1991. It is undisputed on this record that Complainant registered the <trattorialastrada.com> domain name on April 15, 1998 to promote and advertise its restaurant. Complainant has provided sufficient evidence of continuous use and promotion of the mark in issue to support a finding of common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that a complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where that complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant alleges that Respondent’s <trattorialastrada.com> domain name
is identical to Complainant’s TRATTORIA LA STRADA mark. Respondent’s domain name is identical to
Complainant’s mark in that it incorporates the entirety of the mark and merely
adds the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is irrelevant in
distinguishing between a disputed domain name and a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation
of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see
also Jerry Damson, Inc. v.
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
Therefore, the Panel finds that Respondent’s domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
See also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name).
Complainant has established a prima facie case in support of its contentions under this head of the Policy, and Respondent has failed to submit a Response to these proceedings. In these circumstances, we are free to presume that Respondent has no rights to or legitimate interests in the contested domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because a respondent failed to submit a response:
Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations … unless clearly contradicted by the evidence.
Nonetheless, we will examine the record before us, by reference to the criteria set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that the pertinent WHOIS information lists the registrant only as “Roberto Bernardoni.” Moreover, Complainant asserts, and Respondent does not deny, that it has not authorized Respondent to use the disputed domain name or Complainant’s mark. We are therefore constrained to conclude that Respondent is not commonly known by the disputed domain name so as to demonstrate rights or interests in the contested domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the WHOIS information gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where the relevant WHOIS information failed to indicate that Respondent was so known, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We also note that Respondent does not object to Complainant’s assertion to the effect that the disputed domain name resolves to a website promoting Respondent’s competing restaurant. Respondent’s use of the identical disputed domain name to promote its competing restaurant is, in the circumstances here presented, neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that a respondent’s use of a contested domain name to advertise real estate services which competed with a complainant’s business did not 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 also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
Respondent’s appropriation of [a complainant’s] … mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.
Finally under this prong of the Complaint, Complainant alleges that Respondent is a former employee of Complainant, and that it has not authorized Respondent to register its domain name in Respondent’s own name. Respondent, as a former employee, does not have rights to or legitimate interests in Complainant’s mark under Policy ¶ 4(a)(ii) by virtue of that former status. See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Nat. Arb. Forum Mar. 14, 2006) (holding that a respondent, the chief financial officer of a complainant, was not authorized to register domain names that incorporate that complainant’s mark and therefore did not have rights to or legitimate interests in the domain name containing that mark); see also Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights to or legitimate interests in a domain name identical to the former employer's trademark).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has submitted evidence of Respondent’s offer to sell the disputed domain name to Complainant for $100,000. This offer to sell the domain name to Complainant for an amount dramatically in excess of any imaginable out of pocket expenses associated with the registration of the domain name is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent registered and was using the <gwbakeries.mobi> domain name in bad faith under Policy ¶ 4(b)(i) where it offered it for sale for far more than the estimated out-of-pocket costs it incurred in initially registering the disputed domain); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003): (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Additionally, Respondent’s undenied use of the <trattorialastrada.com> to promote Respondent’s directly competing restaurant constitutes a disruption of Complainant’s business under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that a respondent’s registration of a domain name substantially similar to a complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that that respondent registered and used the domain name to disrupt that complainant’s business under Policy ¶ 4(b)(iii)).
To this we must add that Respondent’s status as a former employee of Complainant, who registered the disputed domain name in his own name without authorization from Complainant so as to use the mark as alleged in the Complaint further evidences that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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.
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <trattorialastrada.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 20, 2010
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