Carvel Corporation v. Dominic milano
Claim Number: FA1411001588309
Complainant: Carvel Corporation of Atlanta, Georgia, United States of America.
Complainant Representative:
Complainant Representative: Fross Zelnick Lehrman & Zissu, P.C. of New York, New York, United States of America.
Respondent: Dominic milano of bayside, New York, United States.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: The City of New York by and through the New York City Department of Information Technology & Telecommunications
Registrars: GoDaddy.com, 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 Examiner in this proceeding.
Luz Helena Villamil Jimenez, as Examiner.
Complainant submitted: November 4, 2014
Commencement: November 4, 2014
Default Date: November 19, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Procedural Findings:
No multiple complainants or respondents and no extraneous domain names require dismissal.
Findings of Fact:
Complainant is the owner of the trademark CARVEL, registered with the USPTO under Reg. No. 716227. The respective application was filed on January 18, 1960 and it was registered on May 30, 1961. In addition, the Complainant’s trademark CARVEL is also registered in several countries outside the U.S. according to the documentation submitted with the complaint.
Moreover, the Complainant’s mark was registered with the Trademark Clearinghouse, and therefore said trademark was made known to the Respondent by the TMCH when he applied for the domain name <carvel.nyc>.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
Legal Findings and Conclusions:
URS Procedure 1.2.6 requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended:
1. [URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The Examiner finds that Respondent obtained registration of a domain name which is identical to a trademark which is registered and in use, and that was made known to him during the registration process of the domain name. Given the fact that the domain name does consist of a registered trademark, the identical nature of the names does create confusion and adversely affects the trademark owner, who has taken care of registering it on multiple jurisdictions to secure its protection.
The Examiner finds that Respondent obtained registration of a domain name which is identical to a trademark registered and in use, which was made known to him during the registration process of the domain name. Given the fact that the domain name does consist of a registered trademark, the identical nature of the names does create confusion and adversely affects the trademark owner, who has taken care of registering it on multiple jurisdictions to secure its protection.
According to URS Procedure, current use of the trademark can be demonstrated with a relevant SMD (signed Mark Data) from the Trademark Clearinghouse. Satisfactory evidence of use of the trademark CARVEL was submitted with the claim, including the relevant SMD, and therefore the Examiner finds that the claim meets the requirement of 1.2.6.1. of the URS Procedure.
2. [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Considering that the Respondent is in default, no arguments were submitted to explain the reasons for having registered the disputed domain name. On the contrary, since it was demonstrated use of the domain name by the Respondent to redirect traffic to http://doms718.com/ where he has solicited offers to purchase the domain name, such fact does demonstrate his lack of legitimate right or interest to the domain name <carvel.nyc>. In light of this fact, the Examiner finds that the claim meets the requirement of 1.2.6.2. of the URS Procedure.
3. [URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Evidence was submitted with the claim to demonstrate that the Respondent requested the amount of $16,000 to transfer the domain to the Complainant. There is no doubt, therefore, that the domain name was registered and used in bad faith, since it was registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark.
The Examiner, therefore finds that the claim meets the requirement of 1.2.6.3. of the URS Procedure.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration:
<carvel.nyc>
Luz Helena Villamil Jimenez, Examiner
Dated: November 24, 2014
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