D’Agostinos Markets, Inc. d/b/a D’Agostino Supermarkets v. Louise Murphy / WebSiteText
Claim Number: FA2003001889900
Complainant is D’Agostinos Markets, Inc. d/b/a D’Agostino Supermarkets (“Complainant”), represented by Nicholas C. Katsoris, New York, USA. Respondent is Louise Murphy / WebSiteText (“Respondent”), represented by Brett E. Lewis, Esq. of Lewis & Lin, LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dagostino.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 Panelist in this proceeding.
Gerald M. Levine, Esq., Chair, Steven M. Levy, Esq., and Diane Cabell, Esq. as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 26, 2020; the Forum received payment on March 26, 2020.
On March 27, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dagostino.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 March 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2020 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 email@example.com. Also on March 30, 2020, 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.
Respondent timely filed its response on April 20, 2020.
Pursuant to Respondent’s request to have the matter decided by a three-member Panel, the Forum appointed Gerald M. Levine, Chair, Steven M. Levy and Diane Cabell, Esq. 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. 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.
Complainant contends that it has been in operation since 1932. In its seventy-plus years history, the D’Agostino name and the markets that bear its namesake has become synonymous with “New York’s Grocer”. D’Agostino’s not only has multiple locations across New York City, but its stores have gained global recognition, and have served as filming locations for international films and television shows set in New York. D’Agostino Supermarkets has trademarked the word “D’Agostino” in the supermarket store niche. As part of its supermarket services, D’Agostino’s operates a website, dagnyc.com, which provides customers with the ability to purchase groceries online, search for coupons and recipes, and check store hours and locations.
Respondent contends that her full name is Louis “Lulu” D’Agostino Murphy. The domain name was registered in 1996 by her father Joseph D’Agostino, the principal and founder of Junction Computer Services, Inc, a computer support business in Bucks County, Pennsylvania. Respondent Annexed to her Response, Declarations of personal knowledge from Respondent’s father as well as from her brother John D’Agostino, the formerly listed Administrative Contact for the disputed domain name, that narrate the history of the business.
Respondent contends further that her father transferred the domain name to her in 2006.
Respondent further contends that she changed the domain name registration to her own name and used it in connection with her company name, Website Text, LLC, and for a specific project conducted for one of her clients. She further asserts that upon the completion of that project she forgot to take the website down when it was enrolled in Google AdSense for monetizing ads about printing and printers. Respondent now sees an opportunity for selling this asset, and is considering offering it for auction.
1. Complainant has satisfied ¶ 4(a)(i) that the domain name in issue is identical to its service mark.
2. Complainant has failed to satisfy ¶ 4(a)(ii) that Registrant lacks rights or legitimate interests in the domain name.
3. Complainant has failed to satisfy ¶ 4(a)(iii) that Respondent registered or is using the domain name in bad faith.
4. Respondent’s request for a declaration that Complainant abused the UDRP by filing the amended complaint is granted.
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.
Complainant has demonstrated that it owns the service mark D’AGOSTINO. It is also apparent, although Complainant does not expressly argue the point, that prior to registration of the mark it had an unregistered or common law mark dating from its entry into the marketplace in the supermarket niche in 1932. As such Complainant’s right predates the registration of <dagostino.com> by more than 60 years.
Further, it is apparent, on its face, that the disputed domain name is identical to Complainant’s D’AGOSTINO mark save for the omission of the apostrophe and the use of the “.com” gTLD.
In any case, the Panel finds that Complainant has satisfied ¶4(a)(i) of the Policy for standing to maintain this UDRP proceeding.
Complainant has the burden under UDRP ¶ 4(a)(ii) of the Policy to prove that Respondent lacks rights or legitimate interests in the <dagostino.com> domain name. This burden can be satisfied by Complainant offering a prima facie case that Respondent has neither a right nor a legitimate interest in the domain name and if it is able to make that showing Respondent has a rebuttal burden to prove that it does have a right or legitimate interest in the challenged domain name. Croatia Airline d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO August 21, 2003) (“Since it is difficult to prove a negative . . . especially where the Respondent, rather than complainant, would be best placed to have specific knowledge of such rights or interest- and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant’s burden of proof on this element is light.”)
However “light” the burden is, Complainant must offer some evidence either directly demonstrating that Respondent lacks rights or legitimate interests in <dagostino.com> or sufficient from which the Panel can draw a reasonable inference that Respondent lacks both rights or legitimate interests.
Here, Complainant submits no evidence to substantiate its contentions. It alleges that Respondent is considering selling the challenged domain name through an auction to the “highest bidder and at an exorbitant reserve price.” This assertion is not itself proof that Respondent lacks rights or legitimate interests. Neither is it proof that a respondent would lack rights and legitimate interests for planning to sell a challenged domain name which it lawfully holds. Domain names lawfully held are, in the strictest sense, an economic asset that the holder may use, passively hold, or sell as it may decide as long as it maintains the registration.
In order to make a case that a respondent lacks rights or legitimate interests a complainant must offer proof that Respondent has neither one nor the other. There are three nonexclusive circumstances that “if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)” (¶4(c)).
Two of the three circumstances are pertinent to the assessment of Respondent’s rights or legitimate interests in this case, ¶¶ 4(c)(i) and 4(c)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to uses, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.
Respondent has demonstrated that “before notice” she used the domain name in connection with her business” in the field of computer advisory services. She also demonstrates that she was “commonly known” by the domain name prior to her registration thereof. See Organic Mattresses, Inc. LifeKind Inc and Walter Bader v. Afternic Escrow, (Forum February 25, 2020) (“A respondent may have rights and legitimate interests in a disputed domain name where it registers the domain name with the intent to use it in connection with its business.”)
In addition, Respondent by competent evidence demonstrated that “D’Agostino” is her family name, that <dagostino.com> was registered in 1996 by Respondent’s father in connection with a then operating business in the computer services field, and subsequently transferred to Respondent in 2006. See Stephen L. Tucker v. Joseph Golio, FA1807001796141 (Forum July 27, 2018) (A respondent can be found to be commonly known by a domain name where it reflects a personal name), citing G.A. Modefine S.A. v Mann, D2001-0537 (WIPO July 20, 2001) (“[A] person who registers a variant of their full name has rights and legitimate interests in the domain name.”)
The family name “D’Agostino” is not uncommon. Indeed (as it appears from Annex L to Respondent’s Response which gave Complainant notice of these facts), the USPTO database lists several D’Agostino registrations (alive and dead) in various classes. Further, the fact that the registrant of the domain name was himself a “D’Agostino” is evidence enough that there are also D’Agostino’s in Pennsylvania.
That the domain name was transferred to his daughter for her business use is not evidence of a new registration. It is established under both the UDRP and the Anticybersquatting Consumer Protection Act (ACPA) that a domain name is alienable if at creation it was lawfully registered. See GOPETS Ltd. V. Hise, Digital Overture, Inc, 657 F.3d 1024, 1032 (9th Cir. 2011). See also WIPO Overview 3.0, para. 3.9 (“Where the respondent provides satisfactory evidence of an unbroken chain of possession, panels typically would not treat merely ‘formal’ changes or updates to registrants contact information as a new registration.”); Sadig Alakbarov v. Yuxue Wang, D2019-2253 (WIPO Nov. 18, 2019) (transfer of a domain name between a father and son did not create a new registration under the Policy).
Complainant submitted no evidence supporting its claim that Respondent lacks rights or legitimate interests. High Adventure Ministries v. John Tayloe /Voice of Hope, FA 1706001737678 (Forum August 9, 2017). The Panel noted that it was “unable to find that Complainant has made out a prima facie case.” Even, “if there were a prima facie case, the totality of the evidence has clear rebutted it.” That conclusion is equally the case here.
Accordingly, the Panel finds that Complainant has failed to satisfy its burden to show that Respondent lacks rights or legitimate interest in the <dagostino.com> domain name under Policy ¶ 4(c)(i) and 4(c)(ii) of the Policy.
Respondent having demonstrated it has rights or legitimate interests in <dagostino.com> it is not strictly necessary to probe into the issue of abusive registration. Vanguard Group Inc. v. Investors Fast Track, FA863257 (Forum January 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”) However, the deficiencies noted in the discussion under rights or legitimate interests carry over to this limb of the Policy and are also relevant in considering Respondent’s request for a declaration of Reverse Domain Name Hijacking.
There are four nonexclusive circumstances that can support a claim for registration and use in bad faith. Of the four circumstances, Complainant appears to be arguing violation of two of them, ¶¶ (4)(b)(i) and 4(b)(iv):
(i) circumstances indicating that you have registered or you have or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark . . . .” and
by using the
domain name, you have intentionally attempted to attract for commercial gain,
Internet users to your web site or other on-line location, by creating a
likelihood of confusion with complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of your web site or location or of a product or
service on your web site or location.
Although not in so many words, Complainant appears to believe that offering a domain name identical to its service mark at an auction violates 4(b)(i) and the mere fact of its being held violates 4(b)(iv) as a matter of law. In support of this contention, Complainant cites to U.S. statutory law and cases on trademark infringement. Neither the Trademark Act of 1946 nor case law are germane to the issue before the Panel. The applicable law is the jurisprudence developed in the thousands of UDRP decisions over the course of these past twenty years.
Under the facts in this case, <dagostino.com> was neither registered nor acquired “for the purpose of selling, renting, . . . to Claimant.” It was registered, as Respondent’s evidence shows, for an entirely different, and legitimate purpose. Respondent states under oath that she herself is in the computer servicing field and has used the domain name in her business, even though presently she is contemplating auctioning it with a floor that Complainant considers “exorbitant.”
Offering to sell a domain name lawfully registered does not violate Sub¶4(b)(i) of the Policy. What the Panel holds in Fiberstar, Inc. v. Merlin Kauffman, FA1602001663188 (Forum April 11, 2016) is equally true of a party holding a domain name lawfully registered who decides to sell it. That Complainant happens to be among the universe of businesses and individuals who would like to take possession of the domain name does not give it a right greater than others who can equally hold the domain name without infringing third-party rights.
Complainant’s argument under Sub¶4(b)(iv) is equally without merit. Claimant may have a strong commercial presence in the supermarket space but it nevertheless has a weak mark in being a well-distributed surname. Where, as here, the service mark is composed of a generic element such as a personal or surname, and where the domain name was registered in good faith, the fact that there may be some consumer confusion does not support an actionable claim for cybersquatting infringement. See BrightSign LLC v. Administrator, Domain / Vertical Axis, Inc., FA1103001370305 (Forum May 4, 2011) (“[T]he more descriptive a mark [or in this case generic] the more difficult becomes Complainant’s burden of proof to establish registration and use with Complainant’s mark as a target”). The consensus of UDRP panels is consistent with U.S. law on this issue. See KP Permanent Make-up, Inc. v. Lasting Impression I, Inc. 543 U.S. 111, 122 (2004).
Complainant does not offer any evidence that Respondent registered the domain name in bad faith or is using, or at any time in the past has used, <dagostino.com> in bad faith. This alone would be fatal to Complainant’s argument. When in addition Respondent offers material proof that the domain name was registered in connection with a noncompeting business by a “D’Agostino” it is a full and complete defense to Complainant’s allegations.
Accordingly, the Panel finds that Complainant has failed to meet its burden to show that Respondent registered or is using the <dagostino.com> domain name in bad faith Policy ¶ 4(a)(iii) of the Policy.
REVERSE DOMAIN NAME HIJACKING
Complainant has certified, as it must under UDRP Rule 4(xxiii) that “the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate . . . [and] that this Complaint is not being presented for any improper purpose.”
This certification is undermined by the facts as they have emerged through Respondent’s Response and Annexes. Complainant’s cease and desist letter was addressed “Attn: Lulu D’Agostino Murphy”. Further, Complainant was on notice in a letter authored by John Berryhill, Esq., Respondent’s then counsel in response to Complainant’s cease and desist letter setting forth in great detail the relevant facts demonstrating Respondent’s rights or legitimate interests in <dagostino.com> (Annex L to the Response). Mr. Berryhill informed Complainant that the domain name was purchased by Respondent’s father Joseph D’Agostino and used by him in connection with his computer business, and subsequently transferred to and used by Respondent in her business in the same field. Complainant was also informed that if he were to proceed with the UDRP Complaint Respondent would counterclaim Reverse Domain Name Hijacking.
Complainant knew or should have known from Mr. Berryhill’s voluminous references to cases and law and that the domain name was registered and is being held by a member of the D’Agostino family, all set forth in detail, that its Complaint had no chance of succeeding on the merits. It was, in short, a complaint that should never have been launched.
Moreover, it appears from the crafting of the Complaint that Complainant and its representative are unfamiliar with the jurisprudence of the UDRP and of its evidentiary demands. This is unacceptable. Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com /Woman to Woman Health Care / Just Us Women Health Center f/k/a Woman to Woman Health Center, D20120-1555 (WIPO September 22, 2012) (“[A]ny complainant and even more so any professional representative of a complainant should be at least minimally versed in the Policy, the Rules, their scope, and their limits. It is no excuse that a party or its representative is unfamiliar with clear Policy precedent, much less the clear language of the Policy and the Rules themselves.”)
It is evident also to the Panel from reading the Complaint with its reliance on U.S. statutory and case law that Complainant and its representative have failed entirely to appreciate the difference between trademark infringement and cybersquatting, or even the basic elements of what constitutes cybersquatting under the UDRP. All of this is a strong and compelling inference that the purpose of the Complaint was brought in an abusive attempt at Reverse Domain Name Hijacking.
For these and other reasons noted above, the Panel finds that the complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, and Respondent’s request for a declaration of Reverse Domain Name Hijacking GRANTED.
Gerald M. Levine, Chair, Steven M. Levy, Esq., and Diane Cabell, Esq., Panelists
Dated: April 29, 2020
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