Frank Onofrio Galasso v. Wolfgang Sauer
Claim Number: FA1107001398537
Complainant is Frank Onofrio Galasso (“Complainant”), represented by Alexander Franklin Galasso, California, USA. Respondent is Wolfgang Sauer (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <batteryrecycler.com>, registered with eNom, Inc.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2011; the National Arbitration Forum received payment on July 13, 2011.
On July 14, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <batteryrecycler.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@batteryrecycler.com. Also on July 20, 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.
A timely Response was received and determined to be complete on August 2, 2011.
On August 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that he holds a trademark registration of the mark BATTERY RECYCLER issued by the United States Patent and Trademark Office (“USPTO”) on April 9, 1996. He contends that Respondent’s disputed domain name <batteryrecycler.com> is identical to his BATTERY RECYCLER mark. Complainant asserts that Respondent is not known by the disputed domain name but that he has parked it and rented it to a third party who uses it to provide hyperlinks to sites that offer services that compete with those of Complainant. He also asserts that Respondent offered to sell the disputed domain name when his current rental arrangement ends. Complainant alleges Respondent holds the disputed domain name in bad faith.
B. Respondent
Respondent contends he did not register and use the disputed domain name in bad faith and was unaware of any issue regarding the domain name until July 2011. He accuses Complainant of reverse domain name hijacking.
Complainant holds a USPTO registration of the BATTERY RECYCLER mark issued April 9, 1996. Respondent registered the disputed domain name <batteryrecycler.com> in October 2000. Respondent is not known by the domain name and has rented it to a third party who uses it to host hyperlinks to sites providing services similar to those provided by Complainant. The current controversy arose when Complainant decided to register a domain name using his BATTERY RECYCLER mark. When he learned of Respondent’s registration of the disputed domain name, he contacted Respondent regarding a possible purchase. Respondent replied that he had rented the domain name to another party and that he could sell the domain name to Complainant after the rental expired next March. The parties had an acrimonious e-mail exchange after which Complainant filed the present Complaint. The record does not contain any evidence that Respondent had actual knowledge of Complainant’s trademark registration prior to July 2011.
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."
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.
No dispute exists that the disputed domain name incorporates and is identical to Complainant’s registered mark except for the addition of the generic top-level domain “.com.” The “.com” is insufficient to differentiate them. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001). Respondent’s <batteryrecycler.com> domain name is identical to Complainant’s mark within the meaning of Policy ¶4(a)(i).
Respondent is not commonly known by the disputed domain name, and the burden is on Respondent to establish he has rights and legitimate interests in it. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Moreover, leasing a domain name to a third party for the purpose of hosting hyperlinks to sites offering services similar to those of Complainant is not a bona fide offering of goods or services or legitimate noncommercial fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007). Respondent is responsible for the third party’s conduct. See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007). The record establishes that Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of Policy ¶4(a)(ii).
Complainant has neither alleged nor established that Respondent registered the domain name in bad faith. Respondent denies actual knowledge of Complainant’s trademark registration until July 2011. For bad faith registration to exist, it must be targeted at the Complainant. See Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003). Without actual knowledge of Complainant’s rights, Respondent cannot be found to have registered the domain name in bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008). Complainant has failed to establish that Respondent registered the disputed domain name in bad faith within the meaning of Policy ¶4(a)(iii).
Respondent has offered no evidence in support of his assertion of reverse domain name hijacking.
Because Complainant did not establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <batteryrecycler.com> domain name REMAIN WITH Respondent.
Mark McCormick, Panelist
Dated: August 22, 2011
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