Robert Caro v. seoforlyfe seoforlyfe
Claim Number: FA2304002041748
Complainant is Robert Caro (“Complainant”), represented by Stacy Grossman of Levine Plotkin & Menin, LLP, New York, USA. Respondent is seoforlyfe seoforlyfe (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <robertcaro.com> (“Domain Name”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on April 26, 2023; Forum received payment on April 26, 2023.
On April 27, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <robertcaro.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 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2023 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 April 27, 2023, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On May 22, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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, Robert Caro, is a well-known journalist, author, and writer. Complainant asserts common law rights in the ROBERT CARO mark. Respondent’s <robertcaro.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the ROBERT CARO mark in its entirety and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <robertcaro.com> domain name. Respondent is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent any rights in the ROBERT CARO mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. From 2000 to 2020 Complainant owned the Domain Name and used it for a website (“Complainant’s Website”) to promote the Complainant. Following the failure to renew the registration of the Domain Name, Respondent registered the Domain Name and has used it to resolve to a website (“Respondent’s Website”) that reproduces the content including copyrighted material from Complainant’s Website.
Respondent registered and uses the <robertcaro.com> domain name in bad faith. Respondent has offered to sell the Domain Name to Complainant for a sum in excess of out-of-pocket costs. Respondent registered the Domain Name in order to take advantage of a likelihood of confusion with Complainant’s mark and divert customers for commercial gain. Finally, Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the ROBERT CARO mark given the use of the Domain Name for a website mimicking Complainant’s Website.
Respondent failed to submit a formal Response in this proceeding. On April 28, 2023 Respondent wrote to Forum indicating that it was open for discussion about a payment in exchange for the transfer of the Domain Name but did not address any of the grounds of the Complaint.
Complainant holds trademark rights for the ROBERT CARO mark. The Domain Name is identical to Complainant’s ROBERT CARO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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 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 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”).
As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the ROBERT CARO mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. The Panel notes that common law rights are not generally afforded to a mark that is a personal name for this reason alone. See Newman and Denney P.C. v David Schorr, FA 1631045 (Forum Dec. 28, 2015) (finding that “[t]he mere use of personal names by parties to reference themselves or their business is not proof of secondary meaning,” and therefore is not dispositive evidence of a complainant’s rights in a mark). However, common law rights may be found where a complainant has provided sufficient evidence to support that the mark has acquired secondary meaning. 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.).
Complainant is a legendary author and historian offering his services under the ROBERT CARO mark since the 1970s. Complainant’s work, using the ROBERT CARO mark, has gained significant recognition and accolades and his books have generated considerable sales. The Panel is satisfied from Complainant’s evidence (including evidence of the length of use, reputation and third party recognition) that Complainant’s use of the ROBERT CARO mark for his services as a journalist and author is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the ROBERT CARO mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the <robertcaro.com> Domain Name is identical to the ROBERT CARO mark as it incorporates the ROBERT CARO mark and adds the “.com” gTLD. The addition of a gTLD is not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the ROBERT CARO mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “seoforlyfe seoforlyfe” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to the Respondent’s Website which impersonates or mimics Complainant’s Website by reproducing (including reproducing many of the copyrighted materials contained on the website) Complainant’s Website as it was when Complainant failed to renew the Domain Name. Respondent’s use of the Domain Name to impersonate Complainant for the purpose of commercial gain 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 ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Domain Name was registered by the Complainant in 2000 and its registration lapsed in 2020. Respondent purchased the Domain Name following its lapsing. At the time of purchase, Respondent would have had actual knowledge of Complainant’s ROBERT CARO mark. The Domain Name was formerly owned by Complainant who let it expire in 2020. Respondent registered the Domain Name and uses it for a website that reproduces the content of the Complainant’s Website. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
With respect to use in bad faith, the facts in this case correspond closely with the facts in Lifetime Assistance, Inc. v. Domain Asset Holdings, LLC D2011-2137 (WIPO Feb. 6, 2012). In that case the panel noted that “Respondent registered the Domain Name virtually immediately after Complainant’s registration lapsed, while any trademark or Internet based search would have easily disclosed Complainant’s trademark rights and long-established use of the Lifetime Assistance term. Moreover, Respondent used the Domain Name in connection with a parked website, while demanding USD 30,000 for sale of the Domain Name to Complainant and rejecting Complainant’s offer of USD 3,000. In view of this showing, and taking into account that Respondent has not disputed Complainant’s allegations and has been found to have violated the Policy in previous cases, the Panel finds in favor of the Complainant.”
In the present case, the Respondent has offered the Domain Name for sale to Complainant for a significant sum well in excess of any likely registration costs. The Panel is satisfied that the Respondent’s actions in registering the Domain Name after expiry with the intention to resell the Domain Name back to the Complainant amounts to a use of the Domain Name in bad faith under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”); see also Aurbach v. Saronski, FA 155133 (Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”); see also Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <robertcaro.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May 23, 2023
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