Classic Memories, a general partnership; and Neil Garcia, individually, and Lisa Vertullo, individually v. DexYP Domain Support / DexYP
Claim Number: FA2104001940633
Complainant is Classic Memories, a general partnership, Neil Garcia, individually, and Lisa Vertullo, individually, (“Complainant”), represented by Gene S. Winter of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is DexYP Domain Support / DexYP (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <classicmemories.net>, registered with Tucows Domains 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 7, 2021; the Forum received payment on April 7, 2021.
On April 7, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <classicmemories.net> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2021 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@classicmemories.net. Also on April 13, 2021, 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 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are three named Complainants in this matter: Classic Memories, a general partnership, Neil Garcia, individually, and Lisa Vertullo, individually. Neil Garcia and Lisa Vertullo are the general partners of Classic Memories.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
As the named individuals are general partners in the named business entity, and Complainants’ submitted USPTO trademark registrations list the Owner Name as “Classic Memories, Composed of Neil Garcia United States citizen and Lisa Vertullo United States citizen”, the Panel accepts that the evidence presented is sufficient to establish a sufficient nexus or link between the Complainants. As such, it will treat them all as a single entity in this proceeding and henceforth refer to them collectively as “Complainant”.
A. Complainant
Complainant Classic Memories is a partnership made up of Complainants Neil Garcia and Lisa Vertullo. It offers goods and services related to the digitization of photos, video, and audio media. Complainant has rights in the trademark CLASSIC MEMORIES through use in commerce since 2011 and registration with the United States Patent and Trademark Office (“USPTO”) dating to 2012. Respondent’s <classicmemories.net> domain name, registered on October 9, 2020, is identical to Complainant’s CLASSIC MEMORIES mark as it merely adds the generic top-level domain (gTLD) ".net". On March 23, 2021 Complainant sent a demand letter to Respondent but no reply has been received.
Respondent lacks rights or legitimate interests in the <classicmemories.net> domain name. Respondent is not authorized by Complainant to use Complainant’s CLASSIC MEMORIES Mark in its domain name. Furthermore, Respondent is neither commonly known by, nor does business as the domain name or any term incorporated therein. Additionally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the name to pass itself off as Complainant and offer competing goods and services.
Respondent registered and uses the <classicmemories.net> domain name in bad faith. Respondent uses the disputed domain name to pass itself off as and compete with Complainant. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the CLASSIC MEMORIES mark prior to registering the disputed domain name based on Complainant’s trademark registrations and Respondent’s use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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 and evidence 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 and supported allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the CLASSIC MEMORIES mark through its registration on the Principal Register of the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) As Complainant has submitted into evidence copies of its USPTO registration certificates, the Panel finds that Complainant has demonstrated rights in the CLASSIC MEMORIES mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <classicmemories.net> domain name is identical to Complainant’s CLASSIC MEMORIES mark as it merely adds the ".net" gTLD. Adding a gTLD to a mark most often fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). 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.”). The Panel accepts Complainant’s argument and finds that the disputed domain name is identical to Complainant’s mark for purposes of Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the <classicmemories.net> domain name as Respondent is not authorized by Complainant to use Complainant’s CLASSIC MEMORIES mark in its domain name or its business. Furthermore, it asserts that Respondent is neither commonly known by, nor does business as, the domain name or any term incorporated therein. In considering this issue, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, the WHOIS information for the disputed domain name lists the registrant as “DexYP Domain Support / DexYP” and Complainant asserts that Respondent is not authorized to use the CLASSIC MEMORIES mark. While Respondent’s website did display the term “CLASSIC MEMORIES” at the top of its home page and stated that “Classic Memories is the premier photo-to-DVD provider…”, there is no evidence that such use resulted in Respondent becoming commonly known by this name. Furthermore, use of the mark on Respondent’s website does not, upon consideration of all of the circumstances of the present case, including Respondent’s apparent infringement upon Complainant’s registered trademark, provide any evidence that Respondent is commonly known by Complainant’s mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO Oct. 16, 2000) (“use which intentionally trades on the fame of another” should not be considered. “To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”). Finally, Respondent has not filed a Response or made any other submission in this case to demonstrate the nature of any reputation it may have with respect to the CLASSIC MEMORIES name and, as of this writing, the disputed domain name no longer resolves to any website content. Therefore, the Panel finds insufficient grounds upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <classicmemories.net> name in connection with a bona fide offering of goods or services or to make a legitimate noncommercial or fair use thereof as Respondent uses the disputed domain name in “a classic example of passing off and trademark infringement.” Infringing upon a complainant’s mark and offering competing goods and services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Craig Larsen and Male Excel, Inc. v. Gordon Freeman, FA 1940425 (Forum May 6, 2021) (“Using an infringing domain name to operate a competing website and pass off as a complainant is generally not considered a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).”); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Here, Complainant argues that the Respondent acquired the domain primarily for the purpose of passing itself off as Complainant and to operate a competing website because Respondent used the formerly resolving website for the disputed domain name to provide media digitization services that are in direct competition with Complainant. In support, it submits screenshots of Respondent’s website that displays the CLASSIC MEMORIES mark, notes its United States of America mailing address as well as a toll-free phone number for orders, and states that “[o]ur goal is to turn your digital or hard-copy photos into long-lasting, event-ready slideshow DVDs or video files that you can keep forever!” This activity directly reads on the mark and services recited in Complainant’s USPTO trademark registration and so Complainant’s claim of infringement is reasonable.
The Panel also notes that the <classicmemories.net> domain name currently resolves only to a page displaying the message “404 Site Not Found” and this non-use also does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message ‘website coming soon!’”).
Therefore, the Panel finds that Complainant has made a prima facie case which Respondent, through its non-participation in these proceedings, has failed to rebut. In view of all of the circumstances of this case and, upon a preponderance of the evidence presented, the Panel cannot find that Respondent makes a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered the <classicmemories.net> domain name with constructive and/or actual knowledge of Complainant’s rights in the CLASSIC MEMORIES mark based on Complainant’s trademark registrations and Respondent’s use of the mark. UDRP case precedent typically declines to accept the legal theory of constructive notice. However, where both parties are located in a jurisdiction that applies such a law, including the United States of America, and the complainant has obtained a federal trademark registration predating the relevant domain name registration, panels have been prepared to accept the concept. See WIPO Overview 3.0, par. 3.2.2. Also Leite’s Culinaria, Inc. v. Gary Cieara, D2014-0041 (WIPO Feb. 25, 2014) (“under 15 USC §1072, registration of Complainant’s mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name.”). As both parties to this dispute are USA-based and the doctrine of constructive notice is recognized under USA law, the Panel finds it reasonable to apply the principle in this case. Further, the Panel finds reasonable Complainant’s assertion that Respondent must have had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Both parties are in a rather specialized field (providing media digitization services) and so it seems quite likely that Respondent had actual knowledge of Complainant in light of its existence in this industry for a number of years. Further, it is well known that most businesses first seek to register the “.com” version of a given domain name and so Respondent most likely became aware of Complainant and its <classicmemories.com> domain name at the time that the <classicmemories.net> domain name was registered. Actual knowledge is an adequate foundation upon which to build a case of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) The Panel thus finds it highly likely that Respondent had both constructive and actual knowledge of Complainant’s rights in the mark at the time it registered the disputed domain name.
Next, Complainant contends that Respondent registered and uses the <classicmemories.net> domain name in bad faith because Respondent uses the disputed domain name to pass itself off as and compete with Complainant in violation of the registered rights to the CLASSIC MEMORIES trademark. Passing oneself off as a complainant and offering goods or services for sale that directly compete with and disrupt the business of that complainant may be evidence of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant provides screenshots of the formerly resolving website for the disputed domain name in which Respondent displays Complainant’s mark and provides media digitization services that are in direct competition with it. Further, this content has been taken down as of this writing and the <classicmemories.net> domain name does not resolve to any website thus suggesting that Respondent acknowledges the current dispute after receiving Complainant’s demand letter or service of the Complaint in this proceeding. Respondent has not offered any other explanation for its actions or sought to defend them thus leading the Panel to find, by a preponderance of the evidence in this case, that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <classicmemories.net> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 11, 2021
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