Gary Regan v. foley, jw
Claim Number: FA1202001427967
Complainant is Gary Regan (“Complainant”), represented by Gary M. Schuster of Jacobowitz and Gubits, LLP, New York, USA. Respondent is foley, jw (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <garyregan.com> and <gazregan.com>, registered with Network Solutions, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2012; the National Arbitration Forum received payment on February 6, 2012.
On February 7, 2012, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <garyregan.com> and <gazregan.com> domain names are registered with Network Solutions, LLC. and that Respondent is the current registrant of the names. Network Solutions, LLC. has verified that Respondent is bound by the Network Solutions, LLC. 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 February 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2012 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@garyregan.com, postmaster@gazregan.com. Also on February 21, 2012, 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 March 21, 2012, , pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <garyregan.com> and <gazregan.com> domain names are identical to Complainant’s GARY REGAN and GAZ REGAN marks.
2. Respondent does not have any rights or legitimate interests in the <garyregan.com> and <gazregan.com> domain names.
3. Respondent registered and used the <garyregan.com> and <gazregan.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a nationally famous author, expert, and consultant on alcoholic beverages, bartending, mixology, and related matters. Complainant markets himself under his name, GARY REGAN, and his nickname, GAZ REGAN, and owns common law rights in the GARY REGAN and GAZ REGAN marks.
Respondent is a competitor of Complainant and the disputed domain names formerly resolved to Respondent’s competing website, <bartender.com>.
The disputed domain names currently resolve to an “Under Construction” page.
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.
(4) 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.”).
Complainant does not provide any evidence that he owns a trademark registration with a national trademark authority for his GARY REGAN and GAZ REGAN marks. However, a trademark registration is not necessary under Policy ¶ 4(a)(i) if Complainant demonstrates that it owns common law rights in the marks. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant argues that he has acquired common law rights in the GARY REGAN and GAZ REGAN marks. Complainant states that GARY REGAN is his actual name and GAZ REGAN is his nickname. Complainant uses both names and marks in connection with his business as an author, expert, and consultant on alcoholic beverages, bartending, mixology, and related matters. Complainant contends that both GARY REGAN and GAZ REGAN represent his brand and have become famous. Complainant writes “The Cocktailian,” a bi-weekly column, for The San Francisco Chronicle and also writes columns in The Malt Advocate, Nation’s Restaurant News, Cheers Magazine, and The Wine Enthusiast. Complainant has been featured in Food Arts, Food & Wine, Wine & Spirits, Imbibe, and various other publications. Complainant states that he “travels the world holding workshops, judging cocktail competitions, and making public appearances.” Complainant asserts that he published his first book, The Bartender’s Bible, in 1991; co-wrote The Book of Bourbon and Other Fine American Whiskey, The Bourbon Companion, New Classic Cocktails, and The Martini Companion between 1995 and 1998; and wrote The Joy of Mixology in 2003. Based on this evidence, the Panel finds that Complainant owns common law rights in his GARY REGAN and GAZ REGAN marks under Policy ¶ 4(a)(i). See Kaino v. Fix, FA 699578 (Nat. Arb. Forum June 19, 2006) (finding common law rights where the complainant has been “…creating and displaying artwork under the GLENN KAINO mark since 1999, and that Complainant’s mark has been recognized as associated with Complainant’s artwork by several publications and the national media.”); see also Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum Apr. 3, 2006) (“The Panel concludes Complainant has proved that the RICK BAYLESS mark has become sufficiently connected to Complainant’s career as a chef and the public associates that career with Richard L. Bayless and the RICK BAYLESS mark.”).
In each disputed domain name Respondent simply removes the space found in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the disputed domain names are identical to Complainant’s marks under Policy ¶ 4(a)(i) as these changes are insignificant. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
The WHOIS information identifies “foley, jw” as the registrant of the <garyregan.com> and <gazregan.com> domain names, which is not similar to either of the disputed domain names. There is no evidence in the record to show that Respondent is commonly known by the disputed domain names for the purposes of Policy ¶ 4(c)(ii). 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims that Respondent’s <garyregan.com> and <gazregan.com> domain names formerly resolved to the <bartender.com> domain name which hosted a website that offers information and services that compete with Complainant’s offerings. Such a prior use of the disputed domain names demonstrates that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
Complainant alleges that Respondent’s <garyregan.com> and <gazregan.com> domain names currently fail to resolve to active websites. The Panel finds that the inactive use of the disputed domain names 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 of the <garyregan.com> and <gazregan.com> domain names. See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent owns 375 domain names and some of the domain names include the names or marks of third parties, but did not substantiate the allegation. Complainant does not allege bad faith registration and use under any other paragraphs of Policy ¶ 4(b). However, the Panel finds that Respondent’s registration and prior use of the disputed domain names to resolve to the competing <bartender.com> website constitutes a disruption of Complainant’s business, bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Respondent’s failure to make an active use of the disputed domain names also demonstrates bad faith registration and use under Policy ¶ 4(a)(iii). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) ("Respondent's unsupported statement that a potentially legitimate [genealogy] website will be coming soon will not suffice to demonstrate rights or interests under Policy ¶ 4(a)(ii)" where the respondent provided no evidence that it actually planned to host a genealogy site and misspelled the only instance of the word "genealogy" on its website); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant claims that Respondent had actual knowledge of Complainant’s GARY REGAN and GAZ REGAN marks because Respondent has worked with Complainant prior to registering the disputed domain names and because Respondent is a competitor of Complainant. The Panel finds that Respondent had actual knowledge of Complainant’s rights in his marks prior to registration of the domain names, and determines that Respondent also registered the <garyregan.com> and <gazregan.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <garyregan.com> and <gazregan.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 28, 2012
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