William B. Fuccillo / Fuccillo Automotive Group v. trent silver
Claim Number: FA1803001779226
Complainant is William B. Fuccillo / Fuccillo Automotive Group (“Complainant”), represented by George R. McGuire of Bond, Schoeneck & King, PLLC, New York, USA. Respondent is trent silver (“Respondent”), represented by Philip Nicolosi of Phil Nicolosi Law, P.C., Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <billyfuccillo.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Sandra J. Franklin, David L. Kreider and Dennis A. Foster (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 27, 2018; the Forum received payment on March 27, 2018.
On March 29, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <billyfuccillo.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 April 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2018 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@billyfuccillo.com. Also on April 3, 2018, 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 April 23, 2018.
A timely Additional Submission from Complainant was received and determined to be complete on April 27, 2018.
A timely Additional Submission from Respondent was received and determined to be complete on May 2, 2018.
On May 2, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Sandra J. Franklin, David L. Kreider and Dennis A. Foster (Chair) as Panelists.
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
- Complainant owns and operates one of the largest auto groups in the United States. Complainant has used its FUCCILLO and BILLY FUCILLO trademarks in connection with the sale of automobiles throughout the United States, beginning with the New York area in the 1980's. Its operations include sales in Florida, and trade journals and newspapers have mentioned those trademarks in that state as well as elsewhere in the country.
- With 26 stores in New York and Florida and yearly revenues approaching $1 billion, Complainant has spent considerable amounts on advertising since 1989. Complainant’s advertising now falls within the range of $25 to $30 Million annually and emphasizes the FUCCILLO mark, with many references to the BILLY FUCCILLO mark. Moreover, trademark recognition is increased by Complainant's use of the website at its domain name, <fuccillo.com>, which was registered in 1997 to conduct and promote Complainant's business.
- As a result of continuous use in trade by Complainant since 1989, the Complainant's trademarks have gained a secondary meaning, conferring common law rights therein for Complainant. The disputed domain name, <billyfuccillo.com>, is identical to Complainant's marks, as both are completely incorporated in that name. One potential customer emailed Complainant to complain about confusion as to whether the disputed domain name was connected with Complainant.
- Respondent has no rights or legitimate interests in the disputed domain name. The name is not used for a bona fide offering of goods or services, since it redirects to another domain name that hosts a website offering goods and services that compete directly with those of Complainant. Moreover, such use does not constitute a legitimate noncommercial or fair use of the disputed domain name. Finally, the Respondent is not commonly known as the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. Respondent registered the name to disrupt Complainant's business operations. Moreover, Respondent uses the disputed domain name to seek commercial gain based upon the likelihood of confusion between that name and Complainant's trademarks. It is clear that Respondent had actual knowledge of Complainant's marks prior to registration of the disputed domain name, as those marks were well known throughout the automotive industry by then.
B. Respondent
- There is no demonstrable evidence presented by Complainant that the precise BILLY FUCCILLO mark has acquired secondary meaning and is distinctive. Instead, Complainant is attempting to connect the "Fuccillo Automotive Group" brand with the individual name of the founder and principal of the various Fuccillo corporations in an effort to circumvent the well-established and heightened requirements common law trademark owners face when asserting rights to an individual name.
- Four UDRP cases cited by Complainant actually fail to support its case and contentions. In those cases, there was never an attempt to claim common law rights in an individual's name based on reference to use of corporate business names.
- Complainant's use of <fuccillo.com> is also insufficient to establish rights in the precise mark BILLY FUCCILLO.
C. Complainant's Additional Submission
- Respondent's decision to register and use the disputed domain name, without any affiliation with Complainant's marks, demonstrates that Respondent was aware of the connection of those marks to the automotive goods and services provided under the marks.
- Complainant needs to demonstrate that the disputed domain name is identical or confusingly similar to Complainant's marks in order to prevail with regard to the first element required under the Policy.
D. Respondent's Additional Submission
- Complainant is erroneous in contending that because the disputed domain name contains the term "Fuccillo," that the name is confusingly similar to the mark, FUCCILLO AUTOMOTIVE GROUP, or any other mark containing the "Fuccillo" name. To sustain such a contention, Complainant must demonstrate, not merely suggest, a presumption that the "Fuccillo" name is connected to services/goods being offered by the business conducted under said marks.
With principal locations in the states of New York and Florida, Complainant operates a large automotive retail and service business in the United States. From its earliest endeavors beginning by at least 1989 in New York, Complainant has conducted business in conjunction with the trademarks FUCCILLO and BILLY FUCCILLO, which are based on the surname Fuccillo of the owner.
The disputed domain name, <billyfuccillo.com>, is owned by Respondent and was registered by him on August 29, 2006. The name now redirects Internet users to another domain name, <centurykia.com>, that hosts a website offering automotive products and services that compete directly with those of Complainant.
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) the 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 order to prevail with respect to the first element required under the Policy, Complainant must establish rights in at least one of the trademarks, FUCCILLO or BILLY FUCCILLO, upon which the Complaint is based. Complainant has presented the Panel with no evidence that Complainant has registered either of the marks with a competent authority. However, as argued by Complainant and found by prior UDRP panels, registration of a trademark or service mark is not necessary under the Policy if a complainant can establish common law rights in that mark. See Microsoft Corp. v. Story Remix, FA 1734934 (Forum July 10, 2017) (“The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007).
Complainant has contended, with ample supporting submissions and without contradiction from Respondent, that Complainant has conducted and promoted its automotive business for decades under dealerships that expressly contain Complainant's owner's surname, Fuccillo, in the respective company or dealership name (i.e., Fuccillo Automotive Group, Fuccillo Ford, Fuccillo Mitsubishi, Fuccillo Imports, etc.). Moreover, in many advertisements and print media articles, the owner's full name, Billy Fuccillo, is mentioned clearly and directly in connection with the sale and service of autos through these dealerships. As a result of long, continuous use and promotion in commerce of those names by Complainant, the Panel concludes that Complainant's trademarks, FUCCILLO and BILLY FUCCILLO, have acquired secondary meaning relating to automotive products and services, thus securing for Complainant common law rights in those marks. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”); see also Jerry Damson, Inc. v. Texas Intern'l Prop. Assoc., FA 916991 (Forum Apr. 10, 2007).
Respondent contends that Complainant cannot claim common law rights in FUCCILLO and BILLY FUCCILLO because Complainant has not demonstrated a connection between those marks and the goods and services provided by Complainant's business. However, the Panel finds that Respondent's contention lacks merit, as Complainant has submitted convincing evidence that its use of the name Fuccillo (and to a somewhat lesser extent, Billy Fuccillo) is constantly and consistently connected with the sale and service of automobiles, i.e., Complainant's main business.
Clearly the disputed domain name, <billyfuccillo.com>, is identical to the BILLY FUCCILLO trademark, as the additional gTLD, ".com," is irrelevant in such an evaluation under the Policy. Moreover, the Panel determines that the disputed domain name is confusingly similar to the FUCCILLO mark, because the addition of the common name "billy" offers only marginal distinction. That is particularly true in this case where Complainant's owner's first name is William, which gives rise commonly to the nickname "Billy." See Alfred Dunhill, Inc. v. Abdullah Altubayieb, D2017-0209 (Wipo Apr. 12, 2017) (finding <richarddunhill.com> to be confusingly similar to the DUNHILL mark); see also Bill Sizemore v. DIS, Inc. c/o Ernest Delmazzo, FA 221173 (Forum Feb. 26, 2004) (finding <billsizemore.com> and <billsizemore.org> to be identical to the common law mark, BILL SIZEMORE).
Accordingly, the Panel finds that Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
In line with prior Policy decisions, the Panel requires that Complainant make a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which Respondent must come forward with pertinent evidence of rights or legitimate interests in order to prevail on this issue. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014); see also Adv. Intern'l Marketing Corp. v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011)
Complainant has established that the disputed domain name is identical or confusingly similar to its BILLY FUCCILLO and FUCCILLO common law trademarks. In addition, the Panel accepts Complainant's contention that there is no affiliation between it and Respondent, and that there is no reason to believe that Respondent, Trent Silver, is commonly known as the disputed domain name <billyfuccillo.com> (Policy para. 4(c)(ii)). Given these circumstances, the Panel finds that Complainant has established a prima facie case.
The Response furnishes no arguments or evidence to rebut Complainant's prima facie case. Moreover, Respondent fails to contradict Complainant's contention that the disputed domain name redirects Internet users to another domain name which is attached to a website that provides automotive products and services that compete directly with those offered by Complainant under its trademarks. The Panel finds that Respondent’s use of the name constitutes neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the name pursuant to Policy ¶ 4(c)(iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) ("Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use."); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016). Consequently, the Panel concludes that Complainant's prima facie case prevails.
Accordingly, the Panel finds that Complainant has shown that Respondent has no rights or legitimate interests in the disputed domain name.
As noted above, the Panel accepts Complainant's contention that the disputed domain name resolves ultimately to a website that offers competing goods and services. As such, the Panel finds that the Respondent intends to disrupt Complainant's business and thus is guilty of bad faith registration and use of the disputed domain name per Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum Jan. 9, 2018); see also Peter Jerie v. Petr Burian, FA 795430 (Forum Oct. 30, 2006) ("By maintaining a website at the [disputed] domain name that provides...direct competition with Complainant, Respondent is disrupting Complainant’s business...The Panel finds Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶4(b)(iii).").
Furthermore, Respondent's use of the disputed domain name for redirection, as described above, is strong evidence of his intention to gain commercially due to the likelihood of confusion between the disputed domain name and Complainant's marks as to the source, sponsorship, affiliation or endorsement of the goods and services on the competing website. Complainant has submitted clear evidence that one Internet user, who sought Complainant's products, felt misled by the disputed domain name, which indeed sent him to the website of a third party. Therefore, the Panel views this diversion as registration and use of the disputed domain name in bad faith per Policy ¶ 4(b)(iv). See Xylem Inc. v. YinSi BaoHu Yi KaiQi, FA 1612750 (Forum May 13, 2015) (“...Respondent’s use of the website to display products similar to Complainant’s imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”): see also Skechers U.S.A., Inc. v. Chen Xuebing, FA 1341838 (Forum Sept. 23, 2010).
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Doctrine of Laches
Though not raised as a defense by Respondent, the Panel notes that the disputed domain name was registered on August 29, 2006, more than eleven years prior to the filing of the Complaint. While a majority of prior UDRP panels have refused to apply a doctrine of laches to their decisions, some have considered delays in bringing complaints under the Policy in rendering those decisions if they believed that a respondent was disadvantaged by a long delay before a complainant brought a UDRP proceeding. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ¶ 4.17; see also Augusta National, Inc. v. Ryan Carey, FA 1758547 (Forum Dec. 21, 2017).
In this case, the Panel finds no evidence of prejudice to Respondent's position resulting from the timing of the Complaint primarily because the disputed domain name simply redirects Internet traffic to another domain name, <centurykia,com>. That domain name hosts a website that appears to accurately represent goods and services for sale, and Respondent could and should have relied on that name without resorting to the misleading connection with the disputed domain name. In view of this circumstance, the Panel believes that a long delay in filing, or the doctrine of laches, is not a pertinent consideration in these proceedings.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <billyfuccillo.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Chair
Sandra J. Franklin, Panelist
David L. Kreider, Panelist
Dated: May 15, 2018
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