Party Booths, LLC v. Cornelius Angsuco
Claim Number: FA1107001398420
Complainant is Party Booths, LLC (“Complainant”), represented by Austen P. Zuege, Minnesota, USA. Respondent is Cornelius Angsuco (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <envypartybooths.com>, registered with GoDaddy.com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2011; the National Arbitration Forum received payment on July 14, 2011.
On July 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <envypartybooths.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2011 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@envypartybooths.com. Also on July 18, 2011, 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 August 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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" 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <envypartybooths.com> domain name is confusingly similar to Complainant’s PARTYBOOTHS mark.
2. Respondent does not have any rights or legitimate interests in the <envypartybooths.com> domain name.
3. Respondent registered and used the <envypartybooths.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Party Booths, LLC, owns the PARTYBOOTHS mark which it uses in connection with its photo booth rental services. The mark has been registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,949,815 filed January 13, 2010; registered April 26, 2011).
Respondent, Cornelius Angsuco, registered the disputed domain name on September 9, 2009. The <envypartybooths.com> domain name resolves to a website which offers photo booth rental services in competition with those Complainant provides.
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.
Complainant contends that it has established its rights in the PARTYBOOTHS mark. Complainant, in support of this assertion, has provided evidence of its registration of the PARTYBOOTHS mark with the USPTO (Reg. No. 3,949,815 filed January 13, 2010; registered April 26, 2011). The registration of a mark with a federal trademark authority has been found to be a sufficient basis on which to demonstrate rights in a mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Further, it has been found by previous panels, that the effective date of rights in a mark held with the USPTO is the original filing date of the mark. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant has established rights in its PARTYBOOTHS mark under Policy ¶ 4(a)(i) that date back to the original filing date of the mark with the USPTO of January 13, 2010.
Complainant further contends that the <envypartybooths.com> domain name is confusingly similar to its PARTYBOOTHS mark. Panels have consistently found that the addition of a generic top-level domain (“gTLD”) is an insubstantial change for the purposes of a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Additionally, panels have previously found in cases such as Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) and Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) that the addition of a generic term fails to distinguish a domain name from the mark incorporated within it. As such, the Panel finds that Respondent’s <envypartybooths.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Once having made a prima facie case in support of an assertion, the burden shifts to the respondent to demonstrate that the assertions are incorrect. See 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 the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant has made a prima facie case in support of its allegations. Respondent has not submitted a response to the Complaint. As a result of this, the Panel may infer that Respondent does not wish to contradict those claims laid against it. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel will, however, review the record for information suggesting that Respondent does have rights or legitimate interests in the <envypartybooths.com> domain name.
A respondent who is found to be commonly known by a disputed domain name may be found also to have rights or legitimate interests in said domain name. This determination is made by the review of the information available on the record, including the WHOIS listing for the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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). Complainant contends that Respondent is not commonly known by the <envypartybooths.com> domain name. The WHOIS information for the disputed domain name lists “Cornelius Angsuco” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that the use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <envypartybooths.com> domain name resolves to a website which solicits photo booth rentals. This is precisely the same service which Complainant offers through its own website. The Panel therefore finds that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent has registered and used the <envypartybooths.com> domain name in bad faith under Policy ¶ 4(a)(iii). The Panel notes that Respondent registered and began using the disputed domain on September 9, 2009. Whereas Complainant’s PARTYBOOTHS mark was filed with the USPTO on January 13, 2010 and registered on April 26, 2011. Both of these actions were taken after the disputed domain name had been registered. Although Complainant claims that the mark had been used prior to the registration of the <envypartybooths.com> domain name, Complainant provides no evidence of such use and fails to state in what way it was used prior to its filing with the USPTO. Therefore, the Panel finds that Respondent could not have registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because its registration of the disputed domain name predated the registration of Complainant’s mark. See Reid v. Chao, FA 154587 (Nat. Arb. Forum May 29, 2003) (finding that the respondent could not have registered the disputed domain name in bad faith where its registration came months before the complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the panel); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <envypartybooths.com> domain name REMAIN WITH Respondent.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 10, 2011
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