Steve Mauro v. Jonathan Whidden
Claim Number: FA1512001654408
Complainant is Steve Mauro (“Complainant”), Michigan, USA. Respondent is Jonathan Whidden (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steve-mauro.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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 29, 2015; the Forum received payment on December 29, 2015.
On December 29, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <steve-mauro.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 December 31, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2016 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@steve-mauro.com. Also on December 31, 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.
A timely Response was received and determined to be complete on January 25, 2016.
On January 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick 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" 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 has common law rights in the STEVE MAURO mark dating back to its first use in commerce in 2005. Respondent’s <steve-mauro.com> domain name is confusingly similar to the STEVE MAURO mark because it contains the mark, while only adding the generic top-level domain (“gTLD”) “.com,” and replacing the space in the mark with a hyphen.
Policy ¶ 4(a)(ii)
Respondent fails to use the <steve-mauro.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to disparage Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <steve-mauro.com> domain name in bad faith because the resolving website makes false and misleading statements about Complainant without identifying their source.
B. Respondent
Policy ¶ 4(a)(i)
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii)
Respondent does not use the <steve-mauro.com> domain name in an attempt to impersonate Complainant or to profit in any way.
Policy ¶ 4(a)(iii)
Respondent uses the <steve-mauro.com> domain name to engage in the fair use of providing publicly available information about Complainant regarding an investigation and conviction.
Complainant Steve Mauro has established common law rights in the STEVE MAURO mark by reason of his use of the mark in working as a real estate agent and broker in Berrien Springs, Michigan. He has expended a substantial amount of money on advertising the mark in the last three years, and it has acquired a secondary meaning associated with his real estate services. Respondent Jonathan Whidden registered the disputed domain name <steve-mauro.com> in order to disparage Complainant’s character by alleging he is a convicted sex offender and posting information about Complainant’s alleged conviction and related judicial proceedings and media reports about them. Respondent is not known by the mark and does not use it for any commercial purpose. He contends he registered the domain name in order “to provide information about the professional practices of Steve Mauro to the general public.”
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.
Respondent made no response to Complainant’s contentions regarding his common law rights in the STEVE MAURO mark and that the disputed domain name is confusingly similar to the mark. The panel evidence establishes that Complainant has met his burden to show that the mark has acquired secondary meaning because of Complainant’s use of the mark in his real estate business and advertising of such use for three years. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). Moreover, Complainant has also established that the disputed domain name is confusingly similar to Complainant’s mark. The domain name contains the mark, while only adding a hyphen in place of the space between his first and last names and adding the gTLD “.com.” Those differences do not demonstrate distinctiveness from Complainant’s mark. Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007). Complainant has met the requirements of Policy ¶4(a)(i).
Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Respondent thus has the burden that he has rights and legitimate interests in the domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Even though Complainant does not allege that Respondent is not commonly known by the disputed domain name, the record viewed as a whole shows that is the case. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007). Respondent denies that he has used the domain name for commercial gain but contends he uses the domain name to provide the public with information about Complainant’s conviction as a sex offender and related matters, which Respondent contends is a fair noncommercial use. The information posted on Respondent’s website could not be confused with the kind of information Complainant would be likely to post on his own website to draw customers to his real estate business. No doubt exists that Respondent is using his website to warn consumers about Complainant rather than to induce consumers to believe the website offers Complainant’s services. Even though the website does not contain a disclaimer, it is not credible to believe that a consumer would be misled into believing that it is Complainant’s website. The website is used to criticize Complainant. The situation comes within the line of cases exemplified by Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000). It constitutes legitimate and fair use within the meaning of Policy ¶4(a)(ii).
In view of Respondent’s noncommercial fair use of the disputed domain name, Complainant has failed to prove the domain name was registered and used in bad faith. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005). Complainant has not shown that Respondent’s registration and use of the domain name was in bad faith within the meaning of Policy ¶4(a)(iii).
Because Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <steve-mauro.com> domain name REMAIN WITH Respondent.
Mark McCormick, Panelist
Dated: February 10, 2016
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