American Career College, Inc. v. Gioacchino Zerbo, a/k/a Vincenzo Dinoia
Claim Number: FA1108001404659
Complainant is American Career College, Inc. (“Complainant”), represented by Michelle Hon Donovan of Duane Morris, LLP, California, USA. Respondent is Vincenzo Dinoia (“Respondent”), represented by Safenames Ltd [Legal], Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americancareercollege.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2011; the National Arbitration Forum received payment on August 25, 2011.
On August 25, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <americancareercollege.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 September 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@americancareercollege.com. Also on September 1, 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 September 16, 2011. Each of the parties timely filed Additional Submissions which were presented to the Panel for consideration.
On September 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americancareercollege.com> domain name is confusingly similar to Complainant’s AMERICAN CAREER COLLEGE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the <americancareercollege.com> domain name in bad faith.
4. Respondent is guilty of cyber flight to avoid or delay this proceeding.
B. Respondent
1. Complainant does not have exclusive rights in its AMERICAN CAREER COLLEGE mark because it has disclaimed “Career College” in its USPTO registration.
2. Complainant has not established the existence of a common law trademark by proving a secondary meaning in the mind of the public, and the mark is composed of common generic terms.
3. Respondent has rights or legitimate interests in the domain name at issue because it has a pay-per-click (PPC) business associated with the site.
4. Respondent did not register and use the domain name at issue in bad faith.
5. Respondent is not guilty of cyber flight.
C. Additional Submissions (only Complainant filed an Additional Submission)
1. Complainant asserts that Respondent has transferred the domain to other individuals during the pendency of the controversy over the domain name at issue and that additional parties Respondent should be added.
2. Complainant had been using its AMERICAN CAREER COLLEGE mark in commerce at least ten years prior to registration of the domain name at issue.
3. Respondent’s pay per click use of the site associated with the domain name at issue is not a legitimate use because it redirects users to competitors of Complainant.
4. Respondent has a history of bad faith registration and use of the domain name system and his cyber flight actions are consistent with such bad faith.
Preliminary Issue: Identity of Respondent and Cyberflying
At the time of the filing of the Complaint in this matter, the WHOIS information for the disputed domain name, <americancareercollege.com>, identified the registrant as “Gioacchino Zerbo.” However, after Respondent received the Complaint, but before it was verified, it changed the registrant name to Vincenzo Dinoia in order to avoid another adverse finding under the UDRP. Gioacchino Zerbo should be the named Respondent in this matter. The “practice of changing the registrant information for a domain name before or during a UDRP proceeding in an attempt to disrupt the proceeding and circumvent the Policy is called ‘cyberflying.’” In a situation such as this, where cyberflying occurs, the caption should be amended to identify the correct Respondent. Therefore, the Panel has elected to amend the caption to reflect Gioacchino Zerbo as the Respondent in this matter and Vincenzo Dinoia as his alias. See Microsoft Corp. v. Mishal, FA 1370342 (Nat. Arb. Forum March 16, 2011) (finding that a “simple transfer of a domain name to another party after a UDRP proceeding has been instituted, so that the registrant can avoid the UDRP” is “classic cyberflight.”); see also BOSU Fitness, LLC v. Kolombo Networks, FA 1266587 (Nat. Arb. Forum July 22, 2009) (Where complainant provided evidence that the WHOIS information was changed to reflect another party name after the initiation of the UDRP proceeding, such a change constitutes cyberflying).
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.
Complainant has rights in the AMERICAN CAREER COLLEGE mark that it uses to market its educational institution. Complainant has submitted the following trademark certificates that it owns with the United States Patent and Trademark Office ("USPTO"):
AMERICAN CAREER COLLEGE and Design (Reg. No. 3,210,986 filed March 24, 2006; registered February 20, 2007);
AMERICAN CAREER COLLEGE (Reg. No. 3,208,284 filed March 24, 2006; registered February 13, 2007);
AMERICAN CAREER COLLEGE and Design (Reg. No. 3,816,671 filed June 22, 2009; registered July 13, 2010; and
AMERICAN CAREER COLLEGE and Design (Reg. No. 3,730,885 filed May 1, 2009; registered December 29, 2009).
Such trademark registrations are sufficient to prove that Complainant has established rights in the AMERICAN CAREER COLLEGE mark. Such rights date back to the original filing date with the USPTO, which in this case, the earliest filing date is March 24, 2006. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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”). Complainant need not own a trademark registration within the country of Respondent’s residence for its rights to attach under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant also has common law rights dating back to at least as early as 1993 when it was founded as the American College of Optics on January 11, 1978, and then changed its name to AMERICAN CAREER COLLEGE in 1993 and has continually used that name and mark since that time. Excerpts from Complainant’s school catalogs from the years 2000 through 2003 show use of the name and mark prominently. Further, Complainant registered the <americancareer.com> domain name on June 23, 1997, and the <americancareercollege.edu> domain name on February 2, 2007. Complainant has presented sufficient evidence for it to establish common law rights in the AMERICAN CAREER COLLEGE mark under Policy ¶ 4(a)(i), that date back to its first use of the mark in 1993. 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 Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
The <americancareercollege.com> domain name is identical to its AMERICAN CAREER COLLEGE mark. In previous UDRP cases such as, Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), and Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the respective panels found that eliminating spaces and adding generic top-level domains (“gTLDs”) are not sufficient changes to prevent a finding that the domain name is identical to the asserted mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not connected or affiliated with Complainant and has not received any license or consent to use the AMERICAN CAREER COLLEGE mark. The Panel notes that the WHOIS information for the disputed domain name identifies “Vincenzo Dinoia” as the registrant of the domain name. This new registrant name is apparently an alias for Gioacchino Zerbo, who was the listed registrant at the commencement of this proceeding, as noted above. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent previously used the disputed domain name to resolve to a website that featured advertisements and third-party hyperlinks to competing and unrelated companies. Complainant’s screen shot evidence appears to show that the links are presented under headings, such as “American Career College,” “Medical Billing School,” “ITT Tech School,” and “Credit Cards.” The Panel finds that Respondent’s previous use of the disputed domain name 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Further, Respondent now redirects the domain name to a website located at <healthwealthfreedom.com>, which also features advertisements and sponsored third-party links to sites competing with Complainant and companies unrelated to Complainant. Respondent presumably profits from such use through the receipt of click-through or affiliate fees. The Panel finds that Respondent’s current use is also 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), supra; see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), supra.
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant presented evidence that Respondent, “Gioacchino Zerbo,” has been the respondent in several previous UDRP proceedings in which he was ordered to transfer the respective domain names to the complainant’s. See ExxonMobil Oil Corp. v. Zerbo, D2008-0046 (WIPO Feb. 27, 2008); see also Terroni Inc., v. Zerbo, D2008-0666 (WIPO July 1, 2008); see also Recreational Equip., Inc. v. Zerbo, FA 1220450 (Nat. Arb. Forum Sept. 26, 2008). The Panel finds that the correctly named Respondent is in fact Gioacchino Zerbo, and that Respondent, Gioacchino Zerbo, has registered and uses the <americancareercollege.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).
Complainant has submitted evidence to show that in both his previous and current use of the disputed domain name that Respondent has posted several third-party links to competing businesses on its resolving website. The Panel finds that such use of an identical domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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 the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent registered and is using the disputed domain name with commercial gain in mind. Respondent collects click-through or affiliate fees from the businesses advertised and linked-to on its website and does so by implying some sort of sponsorship or affiliation with Complainant’s mark by prominently using the mark within the domain name at issue. The Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Finally, Respondent has engaged in cyberflying by changing the WHOIS registrant information after it received notice of this UDRP proceeding. Cyberflying is evidence of Respondent’s bad faith registration and use of the disputed domain name. This Respondent did engage in cyberflying, and the Panel finds that, as such, Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See BOSU Fitness, LLC v. Kolombo Networks, FA 1266587 (Nat. Arb. Forum July 22, 2009), supra; see also Marian Keyes v. Old Barn Studios Ltd., D2002-0687 (WIPO Sept. 23, 2002) (finding bad faith registration and use where “Respondent has tried to conceal the name of the true owner of the disputed domain name.”).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americancareercollege.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 26, 2011
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