Gilbert R. Armenta and Armenta Realty Holdings, LLC v. Robert Andre
Claim Number: FA1505001621195
Complainant is Gilbert R. Armenta and Armenta Realty Holdings, LLC (“Complainant”), represented by Judith L. Grubner of Arnstein & Lehr LLP, Illinois, USA. Respondent is Robert Andre (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gilbertrarmenta.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 26, 2015; the Forum received payment on May 26, 2015.
On May 27, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gilbertrarmenta.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2015 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@gilbertrarmenta.com. Also on May 29, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" 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 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
Complainant is a well-known real estate developer and business venturer with interests in communications systems and wireless networks, doing business under its personal name and mark, GILBERT R. ARMENTA.
Complainant has devoted more than 23 years, as well as substantial funds and efforts, toward the development of its name and mark in the real estate and communications industries, so that consumers associate the name and mark with real estate investment and communications systems.
As a result, Complainant has common law rights in the ARMENTA, GILBERT ARMENTA and GILBERT R. ARMENTA marks (“ARMENTA marks”) dating from their first use in commerce in 1991.
Respondent registered the domain name <gilbertrarmenta.com> on or about October 30, 2010.
The domain name is confusingly similar to Complainant’s ARMENTA marks.
Respondent has not been commonly known by the domain name.
Respondent is not authorized to use Complainant’s ARMENTA marks.
Respondent fails to make a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name.
The website resolving from the domain name displays Complainant’s marks and operates to divert Internet users away from, and thus to disrupt, Complainant’s business by displaying outdated and misleading documents relating to a lawsuit connected to a business venture in which Complainant was once involved.
Respondent lacks rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the ARMENTA marks when it registered the domain name.
Respondent is a former business associate, and a current competitor, of Complainant who seeks to achieve commercial advantage from its operation of the website resolving from the domain name.
Respondent registered the domain name using a fictitious name in order to disguise its identity.
Respondent’s use of Complainant’s entire personal name and mark in the domain name deprives Complainant of the opportunity to use its name in a similar domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
The Complaint in this proceeding identifies two named Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Complaint asserts that the individual Complainant, Gilbert R. Armenta, is the owner of the enterprise Complainant, Armenta Realty Holdings, LLC. On the uncontested facts recited in the Complaint, there is a sufficient nexus between the individual and enterprise Complainants, and their connection to the subject matter of the Complaint, to justify treating them a single Complainant. See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel there finding that:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
Accordingly, and there being no opposition to our doing so from Respondent, the individual and enterprise Complainants will for all purposes be considered as a single Complainant in this proceeding.
(1) the domain name registered by Respondent is substantively identical, and therefore confusingly similar, to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel may decide this 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 as it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
In order to advance its claim for relief in this proceeding, Complainant must establish that it has rights in its mark which are recognizable under Policy ¶ 4(a)(i). Complainant does not have a registration for the ARMENTA marks on file with a national trademark authority. However, Policy ¶ 4(a)(i) does not require that a Complainant have registered its mark if it can demonstrate common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a UDRP complainant can show common law rights in its mark).
In order to have common law rights in its marks, Complainant must show that the mark has acquired secondary meaning. Relevant evidence of secondary meaning includes continuous and ongoing use, use of a mark prior to the registration of a disputed domain name, length of use of the mark, advertising and media recognition. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). See also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding common law rights in the BOND DIAMONDS mark because a UDRP complainant had used the mark in commerce for twelve years before a respondent registered the <bonddiamond.com> domain name).
Complainant alleges that it has rights in the ARMENTA marks dating from its first use in commerce in 1991. Complainant also asserts that it has devoted more than 23 years, as well as substantial funds and efforts, toward the development of its name and mark in the real estate and communications industries, so that consumers associate the name and mark with real estate investment and communications systems. Respondent does not dispute any of this.
We therefore conclude that Complainant has adequately shown that it has common law rights in the ARMENTA marks sufficient to satisfy the requirements of Policy ¶ 4(a)(i).
Turning to the central question posed by ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <gilbertrarmenta.com> domain name is substantively identical, and, therefore, confusingly similar, to Complainant’s GILBERT R. ARMENTA mark. The domain name contains the mark in its entirety, adding only the generic Top-Level Domain (“gTLD”) “.com.” See Fitness Anywhere, Inc. v. Mode Athletics, FA 1320667 (Nat. Arb. Forum May 20, 2010):
Respondent’s … domain name is confusingly similar to Complainant’s … marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com.”
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must first make a prima facie showing that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). 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 … 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 … domain names.
We will therefore examine the record before us, in light of this principle and the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent has not been commonly known by the <gilbertrarmenta.com> domain name, and that Respondent is not authorized to use Complainant’s ARMENTA marks. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Robert Andre,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See, for example, Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and therefore failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <gilbertrarmenta.com> domain name to divert Internet users away from Complainant’s business, thus to gain competitive advantage in the marketplace. This employment of the domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s … intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
We are mindful, in this connection, that the content displayed on the website resolving from the contested domain name is material in the public domain which can be interpreted as critical of Complainant and its business practices, and which Respondent may have the right to publish. It cannot do so, however, by appropriating Complainant’s mark in a domain name. This is especially true where, as here, the domain name is substantively identical to Complainant’s personal and business name and marks. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), finding that a:
[respondent’s showing that it] has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark].
See also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding, under Policy ¶ 4(a)(ii), that creating a website containing criticism was not a legitimate use of a domain name because the domain name was confusingly similar to a UDRP complainant's mark).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent is a commercial competitor of Complainant who has registered and uses the <gilbertrarmenta.com> domain name to disrupt Complainant’s business. Under ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding, under Policy ¶ 4(b)(iii), that, given the competitive relationship between a UDRP complainant and a respondent, that respondent registered a contested domain name with the intent to create user confusion and disrupt the complainant's business).
It is also evident that Respondent knew of Complainant and its rights in the ARMENTA marks when it registered the disputed domain name. This too is proof of Respondent’s bad faith in registering the domain name. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding bad faith registration of a disputed domain name where, because the link between a UDRP complainant's mark and the content advertised on a respondent's resolving website was obvious, that respondent "must have known about the Complainant's mark when it registered the subject domain name.").
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <gilbertrarmenta.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 29, 2015
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