DO & CO New York Catering, Inc. v. Charles Zibbel
Claim Number: FA2305002046348
Complainant is DO & CO New York Catering, Inc. (“Complainant”), represented by Alexander Kappner, US. Respondent is Charles Zibbel (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dococatering.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on May 26, 2023; Forum received payment on May 26, 2023.
On May 31, 2023, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <dococatering.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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 postmaster@dococatering.com. Also on June 1, 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 response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On June 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
A. Complainant
Complainant asserts trademark rights in DO & CO. It asserts that the domain name is confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that:
“the domain "dococatering.com" has been used in bad faith as part of a fraud campaign involving identity theft and impersonation of Complainant's officers and employees. Third parties were defrauded by the use of such domain into believing that they conducted business with Complainant, and provided valuable goods and services as a result of such fraud.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
The only factual findings pertinent to the decision in this case are that:
1. Complainant operates in the food industry; and
2. an Austrian corporation is the owner of two trademarks registered with the United States Patent & Trademark Office, one for the word mark, DO & CO, and one for a DO & CO logo.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Complainant fails on the first limb of this enquiry. Whilst it is well established that a complainant may prove either registered or unregistered trademark rights, neither is shown here. There is no evidence of reputation sufficient to establish a common law trademark, and the two registrations cited in support belong to another company, located in another jurisdiction.
Complainant states that it “presently uses, and continues to use, the trademarks under these registration for the provision of catering services as part of a license agreement with the trademark owner (which is an affiliate of Complainant)” but provides no evidence or better explanation which would enable the Panel to find Complainant to itself have trademark rights (see, for example, the requirements of ¶ 1.4 (“Does a trademark owner’s affiliate or licensee have standing to file a UDRP complaint?”) of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition).
The Panel finds that Complainant has failed to establish paragraph 4(a)(i) of the Policy.
No findings required (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
Again, no findings required for the same reason. However, the Panel would have also found the Complaint to have failed for want of proof of this element of the Policy. Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith. The Complaint provided no evidence of the assertions regarding use of the domain name set out earlier (see, for example, Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ORDERED that the <dococatering.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: July 2, 2023
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