Arrigo Enterprises, Inc. v. PortMedia Domains
Claim Number: FA1304001493536
Complainant is Arrigo Enterprises, Inc. (“Complainant”), represented by Christopher J. Ryan of Law Office of Clyatt & Richardson, P.A., Florida, USA. Respondent is PortMedia Domains (“Respondent”), represented by Ari Goldberger of ESQwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arrigo.com>, registered with eNom, Inc.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Calvin A. Hamilton, Honorable John J. Upchurch (Ret.), Honorable Neil Anthony Brown, Q.C. as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2013; the National Arbitration Forum received payment on April 8, 2013.
On April 8, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <arrigo.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 April 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2013 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@arrigo.com. Also on April 9, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Response was received and determined to be deficient on April 29, 2013. A notice of the deficiency was sent to the Panel on April 30, 2013, explaining that the Response submitted totals twenty-two (22) pages, and is thus in excess of the fifteen (15) page limit mandated under UDRP Rule 5(b)(i).
On May 14, 2013, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton, the Honorable John J. Upchurch (Ret.) and the Honorable Neil Anthony Brown, Q.C. as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s Rights & Confusing Similarity of Domain Name
Complainant has rights to the ARRIGO mark by way of registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,271,171, filed April 15, 2012, registered on Jan. 8, 2013). Complainant uses this mark in association with automobile dealerships, automobile financing, repair or maintenance of automobiles, and the leasing of automobiles.
Respondent registered the <arrigo.com> domain name on August 8, 2001.
Complainant has used the mark in commerce since December 1989. The mark is used specifically in furtherance of Complainant’s automobile dealership. Complainant’s dealership is one of the largest Chrysler/Jeep/Dodge dealerships in the United States.
Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests
Respondent has no rights or legitimate interests in this domain name. Respondent has used the domain name for almost twelve years as merely a landing page where Internet users are presented with an array of random hyperlinks.
Respondent has made a thinly veiled attempt to sell this domain name. The domain name’s content page explicitly tells the Internet user: “To purchase this domain name, click here.” The fact that Respondent is willing to give up ownership to any buyer is evidence that Respondent lacks rights and legitimate interests.
Policy ¶ 4(a)(iii): Respondent Registered and Used the Domain Name in Bad Faith
Respondent’s attempt to sell this domain name is bad faith.
Respondent’s bad faith is shown by the fact that Respondent has held onto the <arrigo.com> domain name for nearly 12 years and has not once put the domain name to any use other than as a place to host hyperlinks.
B. Respondent
Policy ¶ 4(a)(i): Complainant Has Failed to Show Rights / Generic Domain Name
Complainant cannot base its rights in a trademark that was registered over 11 years after the domain name was registered.
Complainant’s evidence of the use of the ARRIGO mark in the sale of automobiles in South Florida does not in itself establish sufficient common law rights in the mark. Complainant has not provided evidence to suggest the mark would be known beyond the locales of Southern Florida.
Policy ¶ 4(a)(ii): Respondent’s Rights & Legitimate Interests
Respondent owns thousands of generic-term and other brand-potential domain names. Respondent’s rights and legitimate interests rest in the fact that it holds onto this “brandable” domain name because of its value on resale. Respondent is careful to choose possibly brandable names, but names which have no existing trademark registrations. Respondent in no way registered this domain name in an attempt to target Complainant and its ARRIGO mark.
Complainant’s mark is not exclusively used in Complainant’s business. The ARRIGO mark is actually a common Italian surname. Respondent’s decision to register this domain name reflects Respondent’s interest in devising, and later selling, valuable domain names.
Respondent’s rights are in fact bolstered by the fact that Respondent receives pay-per-click advertising revenues. Respondent’s advertising services are bona fide, and Respondent is far from alone in using hyperlink advertisements on its domain name content pages.
Respondent’s offer to sell common/generic term domain names is itself a bona fide offering of goods. There is no evidence that Respondent ever intended to register and offer to sell the domain name because it hoped to extort Complainant and its ARRIGO mark.
Policy ¶ 4(a)(iii): No Evidence of Bad Faith
Respondent’s offer to sell a common/generic domain name for significant profit is not improper and is itself an accepted practice in the domain name resale industry. Many domain names are sold between parties, sometimes in excess of $1,000,000.00. The important question that Complainant has failed to answer is whether Respondent register this domain name primarily to sell the domain name to Complainant or its competitors? Respondent did not, and Complainant provides absolutely no evidence to suggest otherwise.
Respondent could not have known of Complainant’s local usage of the ARRIGO mark in the regions of Southern Florida. Complainant only registered the mark less than a year ago. Respondent simply could not have had the requisite knowledge of Complainant’s rights to make the registration of the domain name be in bad faith. Respondent has provided a sworn statement that it had no knowledge whatsoever of any ARRIGO mark, or that Complainant could have rights in such a mark.
Complainant’s failure to pursue this domain dispute for over twelve years is evidence that Complainant did not truly believe that Respondent had acted in bad faith. Twelve years is an eternity in “Internet time,” and it is suspicious that Complainant supposedly has such clear rights in a mark that it has failed to protect for over a decade.
Respondent is a Hong Kong entity that had no knowledge as of 2001 of Complainant’s car dealership that operates strictly within the confines of the South Florida geographic region.
Doctrine of Laches
Previous panels have found that the doctrine of laches should be considered in evaluating all claims under the UDRP. Complainant delayed the filing of this Complaint for nearly twelve years following the domain name’s registration. Complainant’s inaction should be grounds for denying Complainant’s claim, under the doctrine of laches.
Reverse Domain Name Hijacking
Complainant should have known that it had no basis for filing this claim prior to submitting the Complaint. Complainant went into this proceeding with knowledge that it would fail to prove bad faith registration, an essential element under the Policy. This claim is not only an abuse of the Policy; it is an attempt to hijack the domain name from Respondent. Complainant rests on its less-than-year-old trademark registration, hoping that this Panel will overlook all of the facts in the case and decide this dispute based on a single trademark registration. Complainant cannot use the UDRP as a venue of “last resort” when Complainant fails in obtaining domain names through the accepted business practices of negotiation.
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.
Preliminary Issue: Deficient Response
The Panel notes that on April 29, 2013, Respondent submitted a Response that exceeds the fifteen page limit mandated under UDRP Rule 5(b)(i). The formal Response ends at eighteen pages, with four additional pages of exhibits. The Response is not in complete compliance with ICANN Rule 5. However, the Panel, at its discretion, chooses to accept and consider this Response. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Complainant has rights to the ARRIGO mark by way of registration of the mark with the USPTO (Reg. No. 4,271,171, filed April 15, 2012, registered on Jan. 8, 2013). See Complainant’s Exhibit II. Complainant claims that it uses this mark in association with automobile dealerships, automobile financing, repair or maintenance of automobiles, and the leasing of automobiles.
The Panel finds that Complainant’s showing of Policy ¶ 4(a)(i) rights, by way of trademark, dates its rights in the ARRIGO mark as far back as the April 14, 2012 filing date of the trademark registration with the USPTO. 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”).
Complainant further argues that it has used the mark in commerce since December 1989. Complainant asserts that the mark is used specifically in furtherance of Complainant’s automobile dealership in Florida. Complainant avers that its dealership is one of the largest Chrysler/Jeep/Dodge dealerships in the United States. However, Complainant has not provided evidence to suggest the mark would be known beyond Southern Florida.
Accordingly, the Panel does not consider this account to provide a sufficient basis for secondary meaning in the ARRIGO mark and finds, for the purposes of Policy ¶ 4(a)(i) and the present case, that Complainant’s rights in the mark does not date back to at least December 31, 1989. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
The Panel also notes that the <arrigo.com> domain name is formed by combining the ARRIGO mark and the generic top-level domain (“gTLD”) “.com.” The Panel agrees that the domain name is thus identical to the ARRIGO mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
While Respondent argues that its registration of the <arrigo.com> domain name predates Complainant’s alleged rights in the ARRIGO mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
While Respondent contends that the <arrigo.com> domain name is comprised of a common and generic term derived from a “common Italian surname” that has no relationship with prior and known trademarks, the Panel finds that a determination of the domain name’s identical nature to Complainant’s mark is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant must first make a prima facie showing 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.”).
The Panel notes that Respondent has identified itself as “PortMedia Domains,” and observes that the WHOIS information also reflects that “PortMedia Domains” is recorded as the domain name registrant. The Panel further notes that Respondent makes no contentions regarding whether or not it is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The Panel therefore concludes that Respondent is not commonly known by the <arrigo.com> domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant argues that Respondent has no rights or legitimate interests in this domain name. Complainant asserts that Respondent has used the domain name for almost twelve years as merely a landing page where Internet users are solicited through an array of random hyperlinks.
The Panel notes that Complainant does not provide evidence of the content of the disputed domain name, but the Response includes an image purporting to show that the domain name is used to host hyperlinks.
The Respondent admits to pay-per-click advertising revenues. Respondent argues that its rights are in fact bolstered by the fact that Respondent receives such revenues. Respondent claims that its advertising services are bona fide, and Respondent is not alone in using hyperlink advertisements on its domain name content pages.
The Panel agrees that the hosting of a hyperlink website can, under the right set of circumstances, constitute a Policy ¶ 4(a)(i) bona fide offering of goods and services. See Accetta v. Domain Admin, FA 826565 (Nat. Arb. Forum Jan. 2, 2007) (finding the respondent’s use of the disputed domain name to operate a pay-per-click search engine was a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because the terms of the disputed domain name were of common usage and did not refer to the complainant or its products).
Complainant argues that Respondent has made a thinly veiled attempt to sell this domain name. Complainant contends that the domain name’s content page explicitly tells the Internet user: “To purchase this domain name, click here.” Complainant believes that the fact that Respondent is willing to give up ownership to any buyer is evidence that Respondent lacks rights and legitimate interests.
Respondent states that its offer to sell this specific common/generic term domain name is in itself a bona fide offering of goods. Respondent insists that there is no evidence that Respondent ever intended to register and offer the domain name for sale specifically to extort Complainant and its ARRIGO mark.
Respondent notes that it owns thousands of generic-term and other brand-potential domain names. Respondent claims that its rights and legitimate interests rest in the fact that it holds onto “brandable” domain names, such as the <arrigo.com> domain name, because of the value on resale. Respondent states that it is careful to choose possibly brandable names, but makes sure that these names have no existing trademark registrations. Respondent avows that it in no way registered this domain name in an attempt to target Complainant and its ARRIGO mark.
Previous panels have found that the holding of a domain name for resale can in some circumstances constitute a Policy ¶ 4(c)(i) bona fide offering of goods and services. See Allocation Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 24, 2000) (holding that under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the ICANN policy).
The Panel agrees that Respondent’s Policy ¶ 4(a)(ii) rights and legitimate interests rests on the fact that it registers and sells generic domain names—an arrangement practiced by many business entities. See Alphalogix Inc. v. DNS Servs., FA 491557 (Nat. Arb. Forum. July 26, 2005) (“Respondent is in the business of creating and supplying names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.”).
The Panel accordingly finds that under the present circumstances, Respondent’s offer to sell this specific common/generic term domain name is in itself a bona fide offering of goods.
Respondent further argues that Complainant’s mark is not exclusively used in Complainant’s business. Respondent claims that the ARRIGO mark merely embodies a common Italian surname. Respondent states that its decision to register this domain name reflects Respondent’s interest in obtaining generic terms, but not because these generic terms are a particular party’s intellectual property.
The Panel agrees that when the term “arrigo” has been long used as a mere surname of Italians, the registration of a domain name including that term gives Respondent rights and legitimate interests in the generic value of embodying a generic term in the domain name. See Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Nat. Arb. Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”).
The Panel holds that Complainant has failed to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds to the contrary, that Respondent does have rights and legitimate interests in the disputed domain name under policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
In light of the Panel’s finding in favor of Respondent with respect to the existence of any rights and legitimate interests in the disputed domain names pursuant to Policy 4(a)(ii), there is no need to reach an analysis of the third element. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name).
The Panel nevertheless finds that Complainant failed to meet its burden of proving bad faith registration and use under Policy 4(a)(iii). See 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 the 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)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Because Respondent has rights or legitimate interests in the <arrigo.com> domain name pursuant to Policy 4(a)(ii), it is axiomatic that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”). Indeed, having found that the ARRIGO mark is comprised of generic terms, the Panel finds that Respondent is free to register domain names consisting of such common terms.
Accordingly, the Panel finds that Respondent did not register the <arrigo.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Doctrine of Laches
The Panel finds that while the doctrine of laches does not apply as a defense, and correspondingly chooses to disregard Respondent’s assertions, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem. See Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”); see also Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
As a matter of course, the Panel chooses to disregard Respondent’s assertions of a defense based on laches.
Reverse Domain Name Hijacking
Even though the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. In order for reverse domain hijacking to exist, there must be a showing of bad faith on the part of the Complainant. There is no evidence of bad faith on the part of the Claimant. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Consequently, the Panel does not find that Claimant has engaged in reverse domain name hijacking in this case.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <arrigo.com> domain name REMAIN WITH Respondent.
Calvin A. Hamilton (Chair), Honorable John J. Upchurch (Ret.) (Panelist), Honorable Neil Anthony Brown, Q.C. (Panelist), Panelists
Dated: May 21, 2013
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