Eric Brashear v. Louis Colagiovanni
Claim Number: FA1910001865464
Complainant is Eric Brashear (“Complainant”), represented by James D. Boyle of Holley Driggs Walch Fine Puzey Thompson, Nevada, USA. Respondent is Louis Colagiovanni (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ericbrashear.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.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2019; the Forum received payment on October 4, 2019.
On October 7, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ericbrashear.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 October 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2019 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@ericbrashear.com. Also on October 9, 2019, 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 October 28, 2019.
On October 31, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Magalhães Machado 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
The Complainant argues that it is a resident and businessman in Las Vegas, Nevada, owner of the Shoot Las Vegas, a recreational, mobile shooting range in Las Vegas, Nevada, USA.
The Complainant claims that it has common law rights in the ERIC BRASHEAR mark as it is a personal name used in commerce as a distinctive identifier of goods or services offered by Access Shot Tour, LLC d/b/a Shoot Las Vegas, which would be inextricably intertwined to the Complainant’s name and likeness for decades.
Moreover, the Complainant claims that Respondent has no legitimate rights or interests in the disputed domain name as the Respondent does not appear to be commonly known by the disputed domain name and is not affiliated with the Complainant nor with Complainants business.
The Complainant maintains that the Respondent has never used the disputed domain name in connection with any bona fide offering of goods or services as the Respondent’s registration and use of the disputed domain name is an attempt to injure and disparage the Complainant and its business. In this sense, the Complainant also alleges that Respondent’s use of the disputed domain name cannot be considered a legitimate non-commercial or fair use of the disputed domain name.
At last, the Complainant argues that the disputed domain name was registered and is being used by the Respondent in bad faith as it is an attempt to injure and disparage the Complainant and its business as the disputed domain name consists exclusively of the Complainant’s personal name combined with supposedly false and slanderous allegations in regard to the Complainant.
B. Respondent
In its response, the Respondent affirms that it is an investigative journalist and that the Complainant has engaged in Reverse Domain Name Hijacking (RDNH) in an effort to administratively infringe Respondent’s Constitutional rights.
The Respondent further maintains that the Complainant failed to meet the required burdens as it would have not sufficiently established its common law rights in the ERIC BRASHEAR mark.
The Respondent also argues that it is making legitimate and noncommercial use of the disputed domain name considering that it would be hosting a non-profit website commenting on information compiled about the Complainant.
Furthermore, the Respondent argues that it is not using the disputed domain name to disrupt Complainant’s business as the Respondent would not be a competitor of the Complainant because Respondent is a journalist.
The Complainant is a resident and businessman in Las Vegas, Nevada, owner of the “Shoot Las Vegas”, a recreational, mobile shooting range in Las Vegas, Nevada, USA.
The Complainant is the owner of has common law rights in the ERIC BRASHEAR mark because it is Complainant’s personal name.
The disputed domain name was registered on September 30, 2018 and currently redirects to the “Eric Brashear Exposed!” website, which contains allegations in regard to the Complainant’s actions and persona as well as related to Complainant’s business “Shoot Las Vegas”.
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 spite of not having trademark registrations for the ERIC BRASHEAR mark, the Panel finds that Complainant has demonstrated that it has common law rights in the ERIC BRASHEAR mark because it is Complainant’s personal name.
Moreover, the Complainant was able to prove that its personal name and likeness is directly associated to Complainant’s “Shoot Las Vegas” business, being Complainant’s personal name used to identify its business. In this regard, showing that one’s personal name has secondary meaning by demonstrating that the mark has been used as a marketable commodity, or for direct commercial purposes is sufficient to establish common law rights in a mark. See John G. Balestriere v. Simon Mills / Emancipation Media, FA 1618353 (Forum June 11, 2015) (finding Complainant’s JOHN G. BALESTRIERE mark is Complainant’s personal name, and Complainant showed secondary meaning by demonstrating that the mark has been used as a marketable commodity, or for direct commercial purposes in marketing goods and services by providing evidence of use in the legal services business and attorney advertising dating back to Jan. 1, 2005.). Therefore, the Panel finds that Complainant has common law rights in the ERIC BRASHEAR mark.
Furthermore, the disputed domain name is identical or confusingly similar to Complainant’s ERIC BRASHEAR mark because it wholly and exclusively incorporates Complainant’s ERIC BRASHEAR mark and personal name and merely adds the “.com” gTLD., which is insufficient to withstand a test if identity or confusing similarity. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s personal name and ERIC BRASHEAR mark per Policy ¶ 4(a)(i).
There is no evidence that the Respondent owns any rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s personal name and ERIC BRASHEAR mark. Complainant provides WHOIS information for Respondent indicating that Respondent is known as “Louis Colagiovanni” and no information of the record indicates that Respondent was authorized to use the Complainant’s ERIC BRASHEAR mark. In this sense, the Complainant has made prima facie case that the Respondent lacks legitimate interests in the disputed domain name.
Although Respondent claims to have legitimate interest in the disputed domain name and to be making noncommercial use of such, considering that Respondent is a journalist, the use of the disputed domain name to criticize and expose allegations involving Complainant cannot be considered as a legitimate use of the disputed domain name in this case.
That is because Respondent’s use of Complainant’s whole personal name and mark in the disputed domain name without the addition of any other word or term that may identify the disputed domain name as resolving to a criticism website does not constitute legitimate use of the domain name. See Mr. Michel Teman v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-0504 (In circumstances where a disputed domain name that is identical (or in the case of one domain name here confusingly similar) to a mark is being used for genuine noncommercial free speech, then panels tend to find that a respondent's right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner).
Therefore, the Panel finds that the Respondent is using the disputed domain name to falsely convey an association with the Complainant in order to divert traffic to the Respondent’s website.
In this sense, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Respondent registered and uses the disputed domain name in bad faith because Respondent engages in clear disruption of Complainant’s business by disparaging Complainant’s name and business.
Respondent’s use of Complainant’s personal name in its integrity in the disputed domain name, not including any other words or term that may distinguish the Complainant from its critics, creates an association with the Complainant before Internet users. By the time Internet users land on the Respondent website, they have already been exposed to the Respondent’s criticism and damaging allegations in regard to the Complainant.
Respondent’s activities which are in opposition to Complainant can evidence bad faith registration and use. See H-D U.S.A., LLC v. Auliya ulfiyanto, FA 1682051 (Forum Aug. 17, 2016) (adopting a broad interpretation of “compete and disrupt” in Policy ¶ 4(b)(iii), and finding bad faith where the respondent was “operating a website whose activities are in opposition to Complainant”).
In regard to Respondent’s allegation that Complainant would be engaging in “Reverse Domain Name Hijacking”, the Panel finds that Complainant has not engaged in reverse domain name hijacking as the disputed domain name reproduces, in its entirety, Complainant’s personal name, being the disputed domain name identical or confusingly similar to Complainant’s name and ERIC BRASHEAR mark. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
In this sense, considering that Complainant has legitimate interest in its personal name and ERIC BRASHEAR mark, which is entirely reproduced in the disputed domain name by the Respondent, the Panel understands that there is no “Reverse Domain Name Hijacking” by the Complainant.
Therefore, the Panel understands that Respondent engages in disruption of Complainant’s business by disparaging Complainant’s name and business, using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <ericbrashear.com> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist.
Dated: November 12, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page