Jeffrey Marrone LLC DBA Pizza Rita v. Matthew Michel / Old Harvester Inc.
Claim Number: FA1901001826527
Complainant is Jeffrey Marrone LLC DBA Pizza Rita (“Complainant”), represented by Robert J English of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Matthew Michel / Old Harvester Inc. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pizzarita.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 23, 2019; the Forum received payment on January 23, 2019.
On January 23, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pizzarita.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 January 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 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 email@example.com. Also on January 25, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
1. Complainant has been engaged in the business of selling wood-fired pizza from a customized antique food truck under the trade name and trademark, PIZZA RITA, since May of 2015. Complainant has common law rights in the PIZZA RITA mark through its acquisition of a secondary meaning in the pizza food truck industry. Respondent’s <pizzarita.com> domain name is identical and confusingly similar to Complainant’s mark as it merely adds the “.com” generic top-level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <pizzarita.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to automatically redirect users to Respondent’s website located at <rollingindough.com>, where it offers competing pizza truck services. See Compl. Exs. H & J.
3. Respondent registered and uses the <pizzarita.com> domain name in bad faith. Respondent’s diversion of unsuspecting Internet users to Respondent’s own competing pizza truck website will result in initial interest confusion, thereby disrupting Complainant’s business and providing commercial gain to Respondent. See Compl. Exs. H & J. Additionally, Respondent has not used the PIZZA RITA mark despite owning the domain name since 2015. Further, Respondent had actual knowledge of Complainant’s rights in the PIZZA RITA mark given the prior relationship between Complainant and Respondent, the fact that both parties operate competing pizza food trucks in the same geographic area, and the fact that Respondent registered the domain name mere weeks after Complainant first used the mark and registered its own domain name, <pizzarita.org>.
1. Respondent failed to submit a response in this proceeding.
1. Respondent registered or used the <pizzarita.com> domain name on January 31, 2001, some fourteen (14) years before Complainant was formed.
Respondent’s registration of the <pizzarita.com> domain name predates Complainant’s first claimed rights in the PIZZA RITA mark. Accordingly, Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
The Panel declines to analyze the other two elements of the Policy. See 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 element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <pizzarita.com> domain name REMAIN WITH Respondent.
John J. Upchurch, Panelist
Dated: March 1, 2019
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