Matthew Quagliano v. Johnny Vargas
Claim Number: FA1611001701172
Complainant is Matthew Quagliano (“Complainant”), represented by Jordan Walbesser of Hodgson Russ LLP, New York, United States. Respondent is Johnny Vargas (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mattquagliano.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 2, 2016; the Forum received payment on November 2, 2016.
On November 3, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mattquagliano.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 November 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@mattquagliano.com. Also on November 8, 2016, 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 December 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. 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 made the following contentions
Complainant is a prominent, licensed real estate salesperson in New York State. Complainant has registered the MATTHEW QUAGLIANO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,793,918, registered Aug. 18, 2015). See Compl., at Attached Ex. 1. Beyond that, since at least as early as 1990, Complainant has transacted business under its given names – Matthew Quagliano and Matt Quagliano. See Quagliano Declaration. Respondent’s domain name is confusingly similar and/or identical to Complainant’s MATTHEW QUAGLIANO and MATT QUAGLIANO marks as the only difference is the affixation of the “.com” generic top-level domain (“gTLD”).
Respondent should be considered as having no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, and Complainant has never authorized Respondent to use Complainant’s name for any purpose. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent initially used the domain name to house vicious information directed at Complainant and its real estate business. Id. In March 2016, the domain name did not contain any content other than to advise visitors that it is the “future home of something quite cool.” Id. At present, the domain name does not return any content.
Respondent registered and is using the domain name in bad faith. Respondent initially used the domain name to house vicious information directed at Complainant and its real estate business. Id. In March 2016, the domain name did not contain any content other than to advise visitors that it is the “future home of something quite cool.” Id. At present, the domain name does not return any content. Additionally, given the prior content of Respondent’s domain name that referred to Complainant’s real estate practice, it is clear that Respondent registered the domain name with actual knowledge of Complainant’s mark and rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent, licensed real estate salesperson in New York State.
2. Complainant has registered the MATTHEW QUAGLIANO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,793,918, registered Aug. 18, 2015).
3. Complainant has also established common law rights in the MATTHEW QUAGLIANO and MATT QUAGLIANO marks which rights have existed since at least 1990.
4. Respondent registered the domain name on January 10, 2011.
5. Respondent initially used the domain name to resolve to a website containing vicious information directed at Complainant and its real estate business , but more recently the website has carried only the advice that it is the “future home of something quite cool.”
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant is a prominent, licensed real estate salesperson in New York State. Complainant has registered the MATTHEW QUAGLIANO mark with the USPTO (e.g., Reg. No. 4,793,918, registered Aug. 18, 2015). See Compl., at Attached Ex. 1. Complainant submits, however, that it also has common law trademark rights in MATTHEW QUAGLIANO and MATT QUAGLIANO and that it has had those rights since at least as early as 1990, as it has transacted business under the given names of its principal – Matthew Quagliano and Matt Quagliano. See Quagliano Declaration. A complainant’s claim of common law rights in a mark is permitted when the complainant can show a secondary meaning in a mark based on use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant submits that its common law rights in the MATTHEW QUAGLIANO and MATT QUAGLIANO marks are made evident based on its sales of over three thousand homes, 1,500 of which were sold in the last twelve months. Id. Complainant maintains that its twenty-five years as a licensed real estate salesperson and its online advertising of its name also make it clear that Complainant owns common law rights in its marks. Id. Panels have held that continued use of a mark and advertising done to promote a mark can establish a complainant’s common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning). Therefore, as the Panel agrees that Complainant has provided sufficient evidence to establish a secondary meaning in the mark, it finds that Complainant has established common law rights in the marks under Policy ¶ 4(a)(i) and that those rights have existed since at least 1990.
The second issue that arises is whether the disputed <mattquagliano.com> domain name is identical or confusingly similar to Complainant’s MATTHEW QUAGLIANO or MATT QUAGLIANO marks. Complainant argues that Respondent’s domain name is confusingly similar and/or identical to its marks as the only difference is the affixation of the “.com” gTLD. The Panel notes that the domain name is also identical to Complainant’s MATT QUAGLIANO mark, save for the elimination of the space between the words of Complainant’s mark and the affixation of the “.com” gTLD. The Panel also notes that the domain name is confusingly similar to Complainant’s MATTHEW QUAGLIANO mark, save for the shortening of “Matthew” to “Matt,” the elimination of the space between the words of Complainant’s mark, and the affixation of the “.com” gTLD. Panels have decided that such changes do not serve to distinguish a respondent’s domain name adequately from a complainant’s mark per Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Minn. State Lottery v. Mendes, FA 96701 (Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Thus, the Panel finds that Respondent’s <mattquagliano.com> domain name is identical and/or confusingly similar to the marks.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 (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 (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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MATTHEW QUAGLIANO and MATT QUAGLIANO marks and to use them in its domain name;
(b) The <mattquagliano.com> domain name was registered on January 10, 2011;
(c) Respondent initially used the domain name to resolve to a website containing vicious information directed at Complainant and its real estate business , but more recently the website has carried only the advice that it is the “future home of something quite cool.”;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant contends that Respondent has no rights or legitimate interests in the domain name. According to Complainant, Respondent is not commonly known by the domain name, and Complainant has never authorized Respondent to use Complainant’s name for any purpose. The Panel notes that the WHOIS information merely lists “Johnny Vargas” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. The Panel notes Attached Annex I for additional WHOIS information. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(f) Complainant maintains that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant argues that Respondent initially used the domain name to house vicious information directed at Complainant and its real estate business and the Panel accepts that Respondent did so. Id. Complainant submits that in March 2016, the website to which the domain name resolved did not contain any content other than to advise visitors that it is the “future home of something quite cool.” Id. Complainant claims that at present, the domain name does not carry any content. Panels have held that a respondent’s use of a domain name either to divert Internet users seeking a complainant’s website to that of the respondent or a respondent’s failure to make any active use of a domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated 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).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent initially used the domain name to house vicious information directed at Complainant and its real estate business. Id. Panels have decided that a respondent’s use of a domain name to divert Internet users from the website of a complainant to that of the respondent constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). As the Panel accepts Complainant’s argument, it finds that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant maintains that in March 2016, the website did not contain any content other than to advise visitors that it is the “future home of something quite cool.” Id. Complainant alleges that at present, the domain name does not return any content. Panels have determined that such a use of a domain name by a respondent is evidence of bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). As the Panel agrees with Complainant, it holds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that given the prior content of Respondent’s website that referred to Complainant’s real estate practice, it is clear that Respondent registered the domain name with actual knowledge of Complainant’s mark and rights therein. Panels have decided that a respondent demonstrated bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). As the Panel finds Complainant’s contention sufficient to support a finding of actual knowledge, it finds that Respondent engaged in bad faith registration under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <mattquagliano.com> domain name using the MATTHEW QUAGLIANO and MATT QUAGLIANO marks and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mattquagliano.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 6, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page