Fandango, Inc. v. Gioacchino Zerbo
Claim Number: FA 1358962
Complainant is Fandango, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Gioacchino Zerbo (“Respondent”), Italy, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fadango.com>, registered with Fabulous.com Pty Ltd.
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 November 17, 2010; the National Arbitration Forum received payment on November 17, 2010.
On November 18, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <fadango.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 November 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@fadango.com. Also on November 22, 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 December 16, 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 (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 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 provides theater and showtime information and sells movie tickets over the Internet and telephone.
Complainant also entertains and informs customers with exclusive film clips, trailers, celebrity interviews, fan reviews, and news.
Complainant owns trademark registrations for the FANDANGO mark with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 2,769,579, filed June 13, 2000, issued September 30, 2003.
Respondent registered the <fadango.com> domain name on April 23, 2003.
The disputed domain name redirects Internet users to a generic website displaying pay-per-click links to the websites of third parties, some of which compete with the business of Complainant.
Respondent has been the respondent in numerous other UDRP proceedings in which disputed domain names were transferred to the respective complainants.
Respondent’s <fadango.com> domain name is confusingly similar to Complainant’s FANDANGO mark.
Respondent is not sponsored by or affiliated with Complainant, and Complainant has not given Respondent permission to use Complainant’s mark in the disputed <fadango.com> domain name.
Respondent’s registration of a domain name differing by only a single letter from Complainant’s mark is an example of typo-squatting because it correlates with a common typographical error made by Internet users searching for the website of Complainant.
Respondent does not have any rights to or legitimate interests in the <fadango.com> domain name.
Respondent registered and uses the <fadango.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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’s USPTO trademark registrations are sufficient to demonstrate its rights in the FANDANGO trademark dating from June 13, 2000, the filing date of the mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
See also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that a complainant’s rights in the KISSES trademark, obtained through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant’s USPTO trademark registrations establish its rights under the Policy notwithstanding Respondent’s residence or business location in a different country than that in which the mark is registered. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of the respondent’s residence, it being sufficient that it has such rights in some jurisdiction).
Respondent’s <fadango.com> domain name is confusingly similar to Complainant’s FANDANGO mark. The only difference between them is the omission of the first letter “n” in the disputed domain name. This modification does not set the disputed domain name apart from Complainant’s mark. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to a complainant’s registered G GRANAROLO mark); see also Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to a complainant’s MYSPACE mark and the slight difference in spelling did not avoid confusing similarity).
Similarly the presence of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. 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).
Thus the Panel finds that Respondent’s <fadango.com> domain name is confusingly similar to Complainant’s FANDANGO mark for purposes of Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires Complainant to make out a prima facie case on the point of Respondent’s rights to or legitimate interests in the contested domain name. Once this is done, the burden to demonstrate rights and legitimate interests shifts to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if a complainant satisfies its prima facie burden, “then the burden shifts to the 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 a complainant must first make a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights to or legitimate interests in a domain name).
Complainant has met this burden in the instant proceeding. Owing to its default Respondent has failed to satisfy its obligation to prove that it has rights to or legitimate interests in the disputed domain name. We may therefore conclude that Complainant’s allegations are true and that Respondent lacks rights to or legitimate interests in the disputed domain name. See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000):
Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.
See also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent had no rights to or legitimate interests in a domain name because that respondent never submitted a response to the complaint filed in a proceeding conducted under the Policy).
Nonetheless, the interest of fairness, we elect to examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine if 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 Complainant argues, and Respondent does not deny, that Respondent is not sponsored by or affiliated with Complainant, and that it has not given Respondent permission to use its mark in the <fadango.com> domain name. Moreover, the WHOIS information for the disputed domain name lists the registrant only as “Gioacchino Zerbo,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the <fadango.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).
We also note that Complainant contends, without objection from Respondent, that Respondent uses the <fadango.com> domain name to operate a pay-per-click website featuring links to the websites of third parties, some of which compete with Complainant in the movie and entertainment industry. Such a use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a contested domain name was not 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that a respondent had no rights to or legitimate interests in a contested domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii) where it used a domain name which was confusingly similar to a complainant’s mark to operate a website featuring links to websites offering goods and services unrelated to the business of that complainant).
Finally under this head of the Policy, Complainant alleges that Respondent’s registration of a domain name differing by only one letter from Complainant’s mark is an example of typo-squatting because it correlates with a common typographical error made by Internet users searching for Complainant. We agree. Typo-squatting itself indicates that Respondent does not possess rights to or legitimate interests in the <fadango.com> domain name under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):
Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.
See also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to and legitimate interests in disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been a respondent in other UDRP proceedings in which disputed domain names were transferred to various complainants. See, for example, AOL Inc. v. Zerbo, FA 1346202 (Nat. Arb. Forum Oct. 28, 2010); see also Liberty Mut. Ins. Co. v. Zerbo, FA 1299744 (Nat. Arb. Forum Feb. 3, 2010); further see The Travel Channel, L.L.C. v. Zerbo, FA 1333952 (Nat. Arb. Forum Aug. 17, 2010). These UDRP decisions against Respondent reveal that it has a history of domain name registrations which appropriate others’ marks. Respondent has thus shown a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003):
Respondent has a history of registering domain names that infringe on other trademark holders' rights; therefore, Respondent's registration and use of the … domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name is identical to Complainant's … mark and prevents Complainant from reflecting its mark on-line.
See also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a pattern of bad faith conduct where a respondent registered many domain names unrelated to its business which infringed on famous marks and websites).
Respondent’s <fadango.com> domain name advertises the websites of Complainant’s business competitors on the resolving website through pay-per-click links. This disrupts Complainant’s business by diverting Internet users seeking Complainant’s services to the websites of Complainant’s competitors. Respondent’s registration and use of the <fadango.com> domain name in this fashion thus represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a commercial search engine with links to a complainant’s commercial competitors); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This Panel concludes that by redirecting Internet users seeking information on Complainant … to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
It is evident that Respondent registered the <fadango.com> domain name to take advantage of the goodwill associated with Complainant’s mark. In so doing, Respondent has created a likelihood of confusion as to the possible affiliation of Respondent’s website with Complainant, profiting from pay-per-click fees received from the visits of Internet users to the websites resolving from the carried links. This indicates bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iv). See 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).
See also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that a respondent’s use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because that respondent presumably benefited commercially by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Respondent is engaged in the practice of typo-squatting, which is evidence that Respondent registered and is using the <fadango.com> domain name in bad faith under Policy ¶ 4(a)(iii). See, for example, Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding that a respondent registered and used a domain name in bad faith because that respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004):
By engaging in typosquatting, Respondent has registered and used the … domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
For all of 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 <fadango.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 30, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page