Barry Fast v. Riccardo Machiavelli
Claim Number: FA1401001541778
Complainant is Barry Fast (“Complainant”), New York, USA. Respondent is Riccardo Machiavelli (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <seagullcontrolsystems.com> and <seagullcontrolsystem.com>, registered with GoDaddy.com, LLC.
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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2014; the National Arbitration Forum received payment on January 31, 2014.
On January 31, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <seagullcontrolsystems.com> and <seagullcontrolsystem.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2014 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 contacts, etc, and to postmaster@seagullcontrolsystems.com and postmaster@seagullcontrolsystem.com. Also on February 3, 2014, 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 billing contacts.
A timely Response was received and determined to be complete on February 24, 2014.
Complainant submitted an Additional Submission which was received and found to be compliant on February 28, 2014.
On March 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i):
Complainant uses the SEAGULL CONTROL SYSTEMS mark in connection with the design of pest control systems, namely to prevent seagulls from residing on the roofs, docks, outdoor dining areas, solar panels, and other areas where seagulls may be a nuisance to Complainant’s customers. Complainant registered the SEAGULL CONTROL SYSTEMS mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,381,435 filed on Jan. 18, 2013 registered on Aug. 6, 2013). Complainant has used the SEAGULL CONTROL SYSTEMS mark in connection with its business since 2007. Complainant uses the <seagullcontrol.com> domain name to market and sell its services. Respondent, a former supplier of Complainant, registered the <seagullcontrolsystems.com> and <seagullcontrolsystem.com> domain names in January 2012. Both domain names are identical or nearly identical to the SEAGULL CONTROL SYSTEMS mark.
Policy ¶ 4(a)(ii):
Respondent is “Riccardo Machiavelli” and his business is “Martech Design.” Neither of these names brings to mind the SEAGULL CONTROL SYSTEMS mark or either of the disputed domain names, and thus Respondent is not known by the domain names. Respondent is using the <seagullcontrolsystems.com> and <seagullcontrolsystem.com> domain names to send Internet users to Respondent’s competing business at the <seagullx.com> domain name.
Policy ¶ 4(a)(iii):
Respondent is disrupting Complainant’s business by using the domain names to promote Respondent’s own business in bad faith. Respondent seeks to intentionally confuse and mislead Internet users who are seeking SEAGULL CONTROL SYSTEMS services. Respondent is using identical or confusingly similar domain names to send Internet users through a redirect page to Respondent’s own competing <seagullx.com> domain name. Respondent is using testimonials from Complainant’s customers to further enhance the likelihood that Internet users will confuse Complainant with Respondent. Respondent is a former supplier of Complainant and was thus fully aware of Complainant’s interest in the SEAGULL CONTROL SYSTEMS mark when registering both of these infringing domain names.
B. Respondent
Policy ¶ 4(a)(i)
Respondent claims that Complainant could not have rights dating back to 2007 because Complainant’s company was not organized at that time. Complainant was a service provider for Respondent’s seagull repellent systems, and all products sold were made by Respondent. Respondent claims that effective December 2010 he owns 5% of Complainant’s company, as his family gave him a 5% interest.
C. Complainant’s Additional Submissions
Policy ¶ 4(a)(i)
Originally Complainant owned 50% of the Seagull Control Systems, LLC, business, and Respondent’s wife owned the other 50%. In 2010 there were financial troubles for Seagull Control Systems, LLC, and Respondent’s wife sold 45% of her interest to Complainant, giving Complainant a 95% ownership interest. Respondent’s spouse would not be able to sell her shares to Respondent without approval of the entire company. Respondent is thus providing the panel with a material misrepresentation in claiming he has any interest, as Complainant never approved the transfer of any shares between Respondent’s wife and Respondent.
Policy ¶ 4(a)(ii)
Respondent makes a substantial misrepresentation by claiming he originally registered all domain names associated with Complainant’s mark. The <seagullcontrol.com> domain name merely listed Respondent as the administrative contact because Complainant was paying Respondent’s company $600 for services, including web marketing, telephone, office space, etc. Complainant has always paid for the registration fees for the <seagullcontrol.com> domain name from 2007 to present.
Policy ¶ 4(a)(iii):
Respondent is offering to forfeit his rights in the disputed domain names in exchange for various concessions and offerings from Complainant. This evidences bad faith.
Respondent’s intent to confuse Internet users for its own gain is evidenced by the fact that several consumers have called Complainant after being redirected to Respondent’s domain name. Respondent is including fraudulent and fake endorsements on the disputed domain names purporting to lend United States military endorsement to the goods offered.
The <seagullcontrolsystems.com> and <seagullcontrolsystem.com> domain names were registered on January 14, 2012.
On March 18, 2014, one day before the due date of this Decision, the Panel received several submissions from Respondent and one from Complainant (responding thereto). The Forum views these submissions as untimely filed. The Panel agrees and did not consider them.
1) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
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.
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.
Identical and/or Confusingly Similar (Policy ¶ 4(a)(i))
Complainant argues that it registered the SEAGULL CONTROL SYSTEMS mark with the USPTO (Reg. No. 4,381,435 filed on January 18, 2013, registered on Aug. 6, 2013). Regardless of Respondent’s contentions aimed at the validity of the USPTO registration, countless panels have found that USPTO trademark registration satisfies Policy ¶ 4(a)(i) rights dating back to the filing date of the trademark. See, e.g., Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007).
Complainant argues further however that it has used the SEAGULL CONTROL SYSTEMS mark in connection with its business since 2007. Complainant notes that it uses the <seagullcontrol.com> domain name to market and sell its services, and has used the domain name since 2007. In Complainant’s Additional Submission, more details as to the history of the business underlying the mark, Seagull Control Systems, LLC (the “Company”), are provided. Originally Complainant owned 50% of the Company and Respondent’s wife owned the other 50%. In 2010, financial troubles arose for the Company and Respondent’s wife sold all of her interest to Complainant, except for 5%, thus giving Complainant a 95% ownership interest and leaving the wife with only a 5% interest. Respondent’s spouse would not be able to sell her shares to Respondent without approval of the entire company, which approval was not given. Complainant claims that Respondent is providing the panel with a material misrepresentation in claiming he has any interest in the Company. In sum, Complainant claims that it has been the majority shareholder in the Company since 2010 and that Respondent has never owned shares in the Company. Previous panels focused upon the use of a mark in trade through data such as sales figures, marketing materials, and brand awareness, in construing the extent to which a mark has gained secondary meaning. See, e.g., Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). The Panel finds that Complainant has used its SEAGULL CONTROL MARK in such a way so as to give it secondary meaning back to 2007, and the Panel finds Policy ¶ 4(a)(i) rights in Complainant dating back to that time.
Complainant claims that Respondent, a former supplier of Complainant, registered the <seagullcontrolsystems.com> and <seagullcontrolsystem.com> domain names in January 2012. Complainant argues that both domain names are identical or nearly identical to the SEAGULL CONTROL SYSTEMS mark. The Panel notes that both domain names remove the spacing from the mark, add the generic top-level domain (“gTLD”) “.com,” with the <seagullcontrolsystem.com> domain name removing the “s” from the term “systems.” The Panel finds that the <seagullcontrolsystems.com> domain name is identical to the SEAGULL CONTROL SYSTEMS mark under Policy ¶ 4(a)(i). See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark). The Panel also finds that the <seagullcontrolsystem.com> domain name is confusingly similar to the SEAGULL CONTROL SYSTEMS mark. See Warner Bros. Entm’t Inc.; New Line Prods., Inc. & DC Comics v. Procount Bus. Servs., FA 360942 (Nat. Arb. Forum Dec. 22, 2004).
Rights or Legitimate Interests (Policy ¶ 4(a)(ii))
The Panel notes that 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).
Complainant argues that Respondent is “Riccardo Machiavelli” and his business is “Martech Design.” Complainant asserts that neither of these names brings to mind the SEAGULL CONTROL SYSTEMS mark or either of the disputed domain names, and thus Respondent is not known by the domain names. The Panel notes that Respondent largely agrees that it is known by the names “Riccardo Machiavelli” and “Martech Design,” while claiming an unsubstantiated 5% interest in Complainant’s Company. The Panel agrees that there is no evidence provided to give rise to a belief that Respondent is known by either of the <seagullcontrolsystems.com> and <seagullcontrolsystem.com> domain names pursuant to Policy ¶ 4(c)(ii). See, e.g., PetroSkills, LLC v. Domain Privacy Service, FA1302001484744 (Nat. Arb. Forum April 5, 2013). It is clear that Respondent’s wife holds a 5% interest in SEAGULL CONTROL SYSTEMS, and that Respondent has none. The Respondent does not dispute this.
Complainant claims that Respondent is using the <seagullcontrolsystems.com> and <seagullcontrolsystem.com> domain names to send Internet users to Respondent’s competing business at the <seagullx.com> domain name. The Panel infers from Respondent’s statements that Respondent does operate some type of competing business, albeit from Respondent’s point of view its actions are justified. In its Additional Submission Complainant claims that Respondent provides a substantial misrepresentation to this panel by claiming he originally registered all domain names associated with Complainant’s mark. The <seagullcontrol.com> domain name merely listed Respondent as the administrative contact because Complainant was paying Respondent’s company $600 for services, including web marketing, telephone, office space, etc. Complainant has always been the one to pay for the registration fees for the <seagullcontrol.com> domain name from 2007 to present. The Panel agrees that Respondent has no right to use Complainant’s trademarks in the <seagullcontrolsystems.com> and <seagullcontrolsystem.com> domain names to send Internet users to Respondent’s competing business at the <seagullx.com> domain name and that this use does not qualify as being either a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See, e.g., Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006).
Complainant argues that Respondent is disrupting Complainant’s business by using the domain names to promote Respondent’s own business. The Panel notes that there is no evidence as to the content of any of the disputed domain names, but the Panel accepts Respondent’s allegations that it provides its own seagull repellent services through the <seagullx.com> domain name. Therefore, the Panel finds that the use of the <seagullcontrolsystems.com> and <seagullcontrolsystem.com> domain names to send Internet users to Respondent’s competing business evidences Policy ¶ 4(b)(iii) bad faith as Respondent is appropriating a competitor’s mark in order to send Internet users to its own business. See, e.g., 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)).
Complainant next claims that Respondent seeks to intentionally confuse and mislead Internet users who are seeking SEAGULL CONTROL SYSTEMS services. Complainant suggests that Respondent is using identical or confusingly similar domain names to send Internet users through a redirect page to Respondent’s own competing <seagullx.com> domain name. Complainant also claims that Respondent is using testimonials from Complainant’s customers to further enhance the likelihood that Internet users will confuse Complainant with Respondent. Complainant argues that Respondent’s intent to confuse Internet users for its own gain is evidenced by the fact that several consumers have called Complainant after being redirected to Respondent’s domain name. Complainant notes that these customers were unsure as to whether Complainant was now associated with Respondent. In Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002), the panel found Policy ¶ 4(b)(iv) bad faith when the respondent appropriated a confusingly similar domain name to host a website for respondent’s independent and competing business. The Panel finds that using the <seagullcontrolsystems.com> and <seagullcontrolsystem.com> domain names to host a competing business is illustrative of Policy ¶ 4(b)(iv) bad faith.
Prior panels have found Policy ¶ 4(b)(iv) bad faith when the respondent endeavored to make the representation on the domain name’s website confusing as to whether or not the complainant was the source or origin of the goods or services. See, e.g., Mason Companies, Inc. v. Chris Byno, FA 1527163 (Nat. Arb. Forum Nov. 27, 2013) (holding that use the complainant’s marks on the domain name’s website to promote competing goods and gain consumer trust was evidence of Policy ¶ 4(b)(iv) bad faith).
Complainant also claims that Respondent is a former supplier of Complainant and was thus fully aware of Complainant’s interest in the SEAGULL CONTROL SYSTEMS mark when registering both of these infringing domain names. The Panel agrees that the record provided clearly shows that Respondent was intimately aware of Complainant and the SEAGULL CONTROL SYSTEMS mark when registering the domain names. Therefore, the Panel infers Policy ¶ 4(a)(iii) bad faith registration. 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).
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <seagullcontrolsystems.com> and <seagullcontrolsystem.com> domain names be TRANSFERRED from Respondent to Complainant .
Richard DiSalle, Panelist
Dated: March 19, 2014
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