Ford and Bonilla, LLC v. Jay
Rosenthal
Claim Number: FA1006001330893
PARTIES
Complainant is Ford and Bonilla, LLC (“Complainant”), represented by Rolando
Bonilla, of Ford and Bonilla,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fordandbonilla.com> (the “Domain Name”), registered with GoDaddy.com,
Inc.
PANEL
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.
Christopher Gibson as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 21, 2010.
On June 22, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <fordandbonilla.com> domain name is
registered with GoDaddy.com, Inc. and
that the 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 June 24, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of July 14, 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@fordandbonilla.com. Also on June
24, 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.
A timely Response was received and determined to be complete on July 14, 2010.
On July 15, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Christopher Gibson as Panelist.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Ford and Bonilla, LLC is a limited liability corporation
domiciled in the State of
Complainant maintains that the Domain Name <fordandbonilla.com> is identical to the name of Complainant’s
company. Thus, when an individual is attempting to seek information about Ford
and Bonilla LLC, it is likely that the first URL to be typed into a computer
will be < fordandbonilla.com>.
This will cause confusion and carry the danger that a third party not
affiliated with Complainant has the ability to put content on the website
linked to the Domain Name that is detrimental to the business interests of Complainant.
Complainant states that Respondent, Jay Rosenthal, is the owner of JMR
Strategic, which is a direct competitor of Complainant. Complainant contends that Respondent registered
the Domain Name for the purpose of misleading consumers, and, more importantly,
to tarnish the reputation of Complainant. This is evidenced by the fact that
the Domain Name has been linked to a “YOUTUBE” video which attempts to depict
Ryan Ford, a partner in the Complainant, in a negative light. Prior to the
purchase of the Domain Name, this same video was distributed to various media
outlets throughout the San Francisco Bay Area. The essence of the press release
was to direct the public to the video in attempt to embarrass Ryan Ford. Thus,
by purchasing the Domain Name, the Respondent has assured that any prospective
clients of Complainant will view the video upon accessing the firm’s name.
As a direct competitor, Complainant urges that Respondent does not have
any legitimate argument as to why he purchased the Domain Name. Neither he, nor
his public relations firm, is named Ford or Bonilla. Complainant states that this
demonstrates a very clear attempt on the part of Respondent to tarnish the
trademark, Ford and Bonilla LLC, and damage the business interests of Complainant.
Complainant explains that on June 13, 2010, The San Jose Mercury News
published a story entitled, “Nora Campos may be headed to
Complainant contends that the loss of the Domain Name has disrupted the
business of Complainant because it is not able to use its name in the domain
form that would likely be the method by which prospective client’s would
contact the firm. Furthermore, the Domain Name links to a video in an attempt
to cause great embarrassment to Complainant’s owners because the video is an
attack on the very core of their business—public relations. By not being able
to control their firm name, and in the case of Ryan Ford, his image, the
implication can have devastating effects on their overall business.
Complainant asserts that due to the secretive nature of the Domain Name
purchase, it is evident that Respondent’s only intention was to act with malice
towards his competitor, the Complainant. Furthermore, Complainant’s primary
prospective clientele are individuals and organizations in the San Francisco
Bay Area political spectrum. This prospective clientele is the exact same as that
of the Respondent. This is important to note because the secretive nature of
the purchase is common practice in the political spectrum when attacking the
reputation of political and business opponents. Respondent’s firm specializes
in political strategy and public relations and is well versed in these types of
tactics. The timing of the purchase,
coupled with the negative impact on Complainant, demonstrates clear bad faith on
the part of Respondent.
B. Respondent
In the Response, Respondent denies the Complainant’s allegations that Respondent
intended to cause or did cause any harm to the Complainant. Nonetheless,
Respondent has no objection and has consented to the relief that Complainant
seeks – that is, transfer of the Domain Name to the Complainant. Respondent advised the Complainant of this both
verbally and in writing prior to receipt of the Complaint. Respondent also
proposed that Complainant suspend the case so that the registrar could unlock
the Domain Name and redirect it away from the YouTube video.
FINDINGS
The Domain Name was registered on June 13,
2010.
DISCUSSION
In this case the Panel considers that, on the
one hand, the Complainant has not provided evidence, as required by the Policy,
that it has yet acquired any registered or unregistered trademark rights in its
recently established company name, Ford and Bonilla LLC. On the other hand, Respondent’s behavior in
targeting a competitor’s company name when registering the disputed Domain Name
would appear to be in bad faith.
In any event, the Respondent in this case has consented to the remedy requested by Complainant: that the Domain Name be transferred to the Complainant. Therefore, in the interests of efficiency and a sensible settlement of this dispute, where Respondent has agreed to transfer the Domain Name to the Complainant, the Panel decides to forego the traditional UDRP analysis and order an immediate transfer of the <fordandbonilla.com> Domain Name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
DECISION
Accordingly, it is Ordered that the <fordandbonilla.com> Domain Name be TRANSFERRED
from Respondent to Complainant.
Christopher Gibson, Panelist
Dated: August 2, 2010
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