Antonio Casola, Kim Casola, and AKC Inc.
v. James Noble
Claim
Number: FA0303000147307
Complainant is
Antonio Casola, Kim Casola and AKC Inc., Holmdel, NJ (“Complainant”)
represented by Anthony J. Sposaro. Respondent is James Noble,
Shrewsbury, NJ (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <casolafarms.com>, registered with Bulkregister.
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 (the "Forum")
electronically on February 28, 2003; the Forum received a hard copy of the
Complaint on March 11, 2003.
On
March 3, 2003, Bulkregister confirmed by e-mail to the Forum that the domain
name <casolafarms.com> is registered with Bulkregister and that
Respondent is the current registrant of the name. Bulkregister has verified
that Respondent is bound by the Bulkregister registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
March 13, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 2, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@casolafarms.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 11, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents submitted
and in accordance with the ICANN Policy, ICANN Rules, the 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:
1. Respondent’s <casolafarms.com>
domain name is confusingly similar to Complainant’s CASOLA FARMS mark.
2. Respondent does not have any rights or
legitimate interests in the <casolafarms.com> domain name.
3. Respondent registered and used the <casolafarms.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
done business under the CASOLA FARMS, ANTONIO CASOLA FARMS and A.CASOLA FARMS
marks for twenty years. Complainant
advertises in local and regional publications as CASOLA FARMS, as well as on
area radio stations. Complainant’s
business generates annual revenues around 3.5 million and employs forty people
during an average year. Complainant
holds U.S. Patent and Trademark Reg. No. 2,649,572 for the A. CASOLA FARMS
registered on November 12, 2002.
Complainant is
dissatisfied with Respondent’s website design services because the website at
the disputed domain name contains inaccurate information regarding
Complainant’s goods and services.
Respondent,
James Noble, contracted with Complainant in August 2001 to design and host
Complainant’s website. Respondent
designed and has been hosting a website that is proffered as Complainant’s at
the <casolafarms.com> domain name. Respondent initially registered the domain in or about August of
2001 as an agent of Complainant in Complainant’s name. During the initial year
of registration, the parties became embroiled in a dispute over Respondent’s
performance of web design services. In or about August of 2002, Respondent allowed the initial
registration in Complainant’s name to lapse and re-registered the domain name
at issue in his own name. Respondent is demanding payment from Complainant of
the remaining balance of the contract price in exchange for transfer of the
<casolafarms.com> domain name registration back to Complainant.
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.
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 established that it has rights in CASOLA FARMS mark through allegations of
20 years continuous use of that mark and proof of use at least since 1996. Complainant has also shown its registration
of A. CASOLA FARMS with the U.S. Patent and Trademark Office in connection with
its farming, entertainment and educational
operations.
Respondent’s
<casolafarms.com> domain name is confusingly similar to
Complainant’s mark because it merely omits the “A” portion of Complainant’s
registered mark. The omission of one
letter does not create a distinct characteristic capable of overcoming a Policy
¶ 4(a)(i) analysis. See State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> is confusingly similar to the Complainant’s
STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the
domain name does not significantly change the overall impression of the mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations
and inferences in the Complaint as true.
See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant 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”).
Moreover,
Respondent has failed to invoke any circumstances that could demonstrate rights
and legitimate interests in the domain name.
When Complainant asserts a prima facie case against Respondent,
the burden of proof shifts to Respondent to show that it has rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
Respondent has failed to invoke any circumstance that could demonstrate any
rights or legitimate interests in the domain name).
Respondent has
no rights or legitimate interests in the <casolafarms.com> domain
name pursuant to Policy ¶ 4(c)(i), or ¶ 4(c)(iii) because it is not using the
domain name for a legitimate business purpose or fair use. Respondent, a former independent contractor
of Complainant, reregistered the <casolafarms.com> domain name in
his own name after the original registration had expired. Respondent is not using the domain name in
relation to the sale of any goods or services.
Respondent is merely using the <casolafarms.com> domain
name as collateral for disputed contract fees from Complainant. The Panel does not find this 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 Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint and had made no use of the domain name in
question); see also Vinidex Pty.
Ltd. v. Auinger, AF-0402
(eResolution Oct. 18, 2000) (finding
that as a former employee, Respondent knew or should have known Complainant’s
mark was in use as an integral part of the corporate name and as a trademark
and that the Respondent understood the legitimate interests and rights of
Complainant and, by contrast, its own lack of interest or right. This is sufficient for Complainant to
establish that Respondent had no rights or interest in the domain name).
Respondent is
known to this Panel as James Noble, not CASOLA FARMS or <casolafarms.com>. The disputed domain name displays a website
Respondent designed for Complainant and there is nothing on the website
relating to Respondent’s own business or activities. Thus, the Panel finds that Respondent does not have rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4 (c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
Moreover, the
facts presented by Complainant make it clear that any rights or interests in <casolafarms.com> which could
possibly be claimed by Respondent, had he filed a response in this proceeding,
would have been created in his capacity as an agent for the Complainant in the
course of web design services. An agent
may not set up superior title to his principal in such circumstances. See,
generally, Annot., Rights and Remedies Where Broker or Agent, Employed to
Purchase Personal Property, Buys It for Himself, 20 ALR2d 1140.
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Paragraph 4(a)
of the UDRP describes four situations that give rise to evidence of bad faith
registration and use. These four
situations are not meant to be exhaustive.
Thus, the Panel may find bad faith based on the totality of
circumstances. See Educ. Testing Serv. v. TOEFL,
D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its
listing of bad faith factors is without limitation”); see also Cellular One Group v. Brien, D2000-0028
(WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy
is not an exhaustive list of bad faith evidence); see also Home Interiors & Gifts, Inc. v. Home
Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s
conduct does not fall within the ‘particular’ circumstances set out in ¶4(b),
does not mean that the domain names at issue were not registered in and are not
being used in bad faith”).
Respondent, a
former independent contractor of Complainant, had knowledge of Complainant’s
rights in the A. CASOLA FARMS mark when it registered the <casolafarms.com>
domain name. Respondent designed and
registered the domain name for Complainant originally; thus when it chose to
register the domain name under its own name and address, Respondent acted in
bad faith pursuant to Policy ¶ 4(a)(iii).
See Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000)
(finding that because Respondent was hired by Complainant to help design and
register Complainant’s websites, Respondent had intimate knowledge of
Complainant’s business and use of its TEENFLO mark. Therefore, Respondent’s
registration of <teenflo.com> was in bad faith); see also Savino
Del Bene Inc. v. Gennari,
D2000-1133 (WIPO Dec. 12, 2000) (finding "Respondent's registration of the
company name of his former employer as a domain name is an act of bad
faith").
Moreover, Respondent is using the <casolafarms.com> domain
name to display a website that conveys incorrect information about Complainant
to coerce Complainant into giving Respondent money Respondent feels it is owed
by Complainant. The holding of a domain
name registration as a tool of coercion evidences bad faith use pursuant to
Policy ¶ 4(a)(iii). See Twentieth Century Fox Film
Corp. v. Risser, FA
93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain
name has been registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Great
Am. Knitting Mills Res. Corp. v. Sock Co., FA 95841 (Nat. Arb. Forum Dec.
7, 2000) (Respondent’s acquisition of the domain names after its authorization
as a retailer was terminated raises a presumption of bad faith); see also
Albrecht v. Natale, FA 95465 (Nat.
Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain
name which uses the Complainant’s name.
There is no reasonable possibility that the name karlalbrecht.com was
selected at random. There may be
circumstances where such a registration could be done in good faith, but absent
such evidence, the Panel can only conclude that the registration was done in
bad faith”).
Thus, the Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <casolafarms.com> domain name be TRANSFERRED
from Respondent to Complainant. The
argument between the parties over web design and contract will have to be
resolved in a different proceeding with appropriate jurisdiction.
James A. Carmody, Esq., Panelist
Dated:
April 17, 2003
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