Dajani Hospitality Incorporated v. Direct Privacy / Savvy Investments, LLC Privacy ID# 13809521
Claim Number: FA1803001778596
Complainant is Dajani Hospitality Incorporated (“Complainant”), represented by Richard M. Payne, California, USA. Respondent is Direct Privacy / Savvy Investments, LLC Privacy ID# 13809521 (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theabbeycatering.com>, registered with Dnc Holdings, Inc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2018; the Forum received payment on March 23, 2018.
On March 28, 2018, Dnc Holdings, Inc. confirmed by e-mail to the Forum that the <theabbeycatering.com> domain name is registered with Dnc Holdings, Inc. and that Respondent is the current registrant of the name. Dnc Holdings, Inc. has verified that Respondent is bound by the Dnc Holdings, Inc. 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 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@theabbeycatering.com. Also on April 9, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, Dajani Hospitality Incorporated, uses the fictitious business name “The Abbey Catering” in connection with its five-star, world-renowned catering company. Complainant has used its ABBEY CATERING mark to promote its catering and wedding planning services in San Diego County, California, and internationally, since 2001. Complainant has rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,665,565, registered Jan. 6, 2015). See Amend. Compl. Ex. 3. Further, Complainant has common law rights in the mark and is the original registrant of the disputed <theabbeycatering.com> domain name. Respondent’s <theabbeycatering.com> is identical or confusingly similar to Complainant’s ABBEY CATERING mark because it merely adds the generic term “the” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <theabbeycatering.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its ABBEY CATERING mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Direct Privacy / Savvy Investments, LLC Privacy ID# 13809521” as the registrant. Further, Respondent lacks rights and legitimate interests because Respondent is Complainant’s former IT consultant and servicer, Derick Dorner, and his company, Dorner Enterprises LLP (“Dorner”). Respondent deceptively transferred Complainant’s registration of the domain name to Direct Privacy / Savvy Investments, LLC Privacy ID# 13809521 and intercepted emails to Complainant regarding the transferred domain name.
Respondent registered and is using the <theabbeycatering.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by deceptively intercepting emails.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <theabbeycatering.com>, was registered on June 15, 2005.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 Panel finds that the disputed domain name, <theabbeycatering.com>, is confusingly similar to Complainant’s valid and subsisting trademark, ABBEY CATERING. Complainant has adequately plead its rights and interests in and to the common law usage of this mark. Respondent arrives at the disputed domain name by merely adding the work “the” to the beginning of the disputed domain name and appending the gTLD “.com” to the end. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in and to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Furthermore, Respondent lacks rights and legitimate interests because Respondent is Complainant’s former IT consultant and servicer, Derick Dorner, and his company, Dorner Enterprises LLP (“Dorner”). Respondent deceptively transferred Complainant’s registration of the domain name to Direct Privacy / Savvy Investments, LLC Privacy ID# 13809521 and intercepted emails to Complainant regarding the transferred domain name. See Dajani Decl. p. 4.
As such, the Panel finds that Respondent does not have rights and legitimate interests in the disputed domain name per Policy ¶ 4(c)(i) & (iii).
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent registered and is using the <theabbeycatering.com> domain name in bad faith by using the domain name to disrupt Complainant’s business. Disruption of a complainant’s business may evidence bad faith per Policy ¶ 4(b)(iii). Complainant contends that Respondent has disrupted Complainant’s business by altering DNS settings, redirecting traffic to malicious sites, and controlling and shutting down Complainant’s email by altering or removing MX files after Complainant terminated Respondent’s employment. See Dajani Decl. p. 3-4. Therefore, the Panel finds that Respondent is using the domain name to disrupt Complainant’s business and hold that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iii).
Furthermore, given the fact that Respondent was formerly engaged or employed by Complainant and given the totality of the circumstances, the Panel finds that Respondent has actual knowledge of Complainant’s rights in and to the disputed domain name as well as the trademark ABBEY CATERING.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <theabbeycatering.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: May 7, 2018
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