Nycotto.com

The timeline behind nycotto.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Ottomanelli Bros., Ltd. v. Rob Velez Claim Number: FA0503000440427 PARTIES Complainant is Ottomanelli Bros., Ltd. (“Complainant”), represented by Peter S. Sloane, of Ostrolenk, Faber, Gerb and Soffen, LLP, 1180 Avenue of the Americas, New York, NY 10036. Respondent is Rob Velez (“Respondent”), 395 Amsterdam Ave., New York, NY 10004. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <nycotto.com>, registered with Network Solutions, Inc. PANEL 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. James A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 18, 2005. On March 16, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <nycotto.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On March 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 11, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@nycotto.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On April 16, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <nycotto.com> domain name is confusingly similar to Complainant’s OTTOMANELLI mark. 2. Respondent does not have any rights or legitimate interests in the <nycotto.com> domain name. 3. Respondent registered and used the <nycotto.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Ottomanelli Bros. Ltd., has been in the food business in New York City since 1900. Since 1917, Complainant has been a recognized processor, wholesaler and purveyor of fine quality meats. Complainant has registered the OTTOMANELLI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,820,249 issued February 8, 1994). In January 2000, Complainant entered into a Service Agreement with electrikweb, a Dublin-based web hosting company, governing the registration and maintenance of the <nycotto.com> domain name and corresponding website. Rather than register the <nycotto.com> domain name in the name of Complainant, electrikweb registered the domain name under the name of Respondent, Rob Velez, a former employee of electrikweb. In late February 2005, the website at the <nycotto.com> domain name suddenly became inactive. Upon attempting to contact electrikweb, Complainant learned that one of its owners had died and the company had apparently shut down. Complainant attempted to locate Rob Velez in New York and Ireland and has been unsuccessful in determining his location in order to retain control of the <nycotto.com> domain name and restore its website. The domain name continues to remain inactive to this date. DISCUSSION 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." 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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. 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 the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant has established rights in the OTTOMANELLI mark through registration of the mark with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark). Respondent’s <nycotto.com> domain name is confusingly similar to Complainant’s OTTOMANELLI mark. Respondent’s domain name incorporates the dominant feature of Complainant’s mark, “otto,” and adds the geographic term “nyc” which refers to New York City, where Complainant operates. Such minor changes are not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY registered mark); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar”); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark). Furthermore, the addition of the generic top-level domain “.com” is insufficient to negate a finding of confusing similarity between Complainant’s mark and Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”). Finally, on this element, it is obvious that the Complainant intended the domain name at issue to conjure up an association in the mind of the public with its own well established commercial name. Otherwise, Complainant would never have engaged electrikweb to register the <nycotto.com>. Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Respondent has failed to respond to the Complaint. Thus, the Panel may accept all reasonable allegations and assertions set forth by Complainant as true and accurate. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also Vertical Solutions Mgmt., Inc. v. webnet-Mktg., inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true). Complainant has asserted that Respondent has no rights or legitimate interests in the disputed domain name, and Respondent, in not submitting a response, has failed to rebut this assertion. Thus, the Panel may construe Respondent’s failure to respond as evidence that Respondent lacks rights and legitimate interests in the <nycotto.com> domain name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Respondent is not making any use of the <nycotto.com> domain name, which is confusing similar to Complainant’s OTTOMANELLI mark. As such, Respondent’s nonuse cannot be characterized as a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”). Furthermore, nothing in the record indicates that Respondent is either commonly known by the disputed domain name or authorized to register domain names featuring Complainant’s mark. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the <nycotto.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the respondent’s WHOIS information implies that the respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Complainant trusted its now defunct agent to properly register and renew the registration of the domain name at issue. Through neglect or other malfeasance, electricweb permitted the domain name at issue to be registered in the name of one of its employees who has since disappeared. I find this breach of trust and the agent’s duty to the principal (Complainant) sufficient to establish registration and use in bad faith under ¶ 4(b) of the Policy which provides that its examples of bad faith are “without limitation.” This situation is unlike those in which there is a commercial dispute between a complainant and its webpage designer—such disputes are usually outside the limited jurisdiction of the UDRP. However in multiple cases similar to this one, panelists have found sufficient grounds to grant relief. In Map Supply, Inc. v. On-line Colour Graphics, FA 96332 (Nat. Arb. Forum Feb. 6, 2001), the panel ordered the transfer of a domain name where respondent was hired to register a domain name and design a website for complainant but later refused to transfer the domain name registration to complainant. In the instant case, we do not even have the refusal to transfer issue—the agent simply erred and improperly carried out its duties to the Complainant. See also, Nova Banka v. Iris, WIPO Case No. D2003-0366, and Primedia Magazine Finance Inc. v. Next Level Productions, WIPO Case No. D2001-0616, both cases finding bad faith on the part of the agent respondent in similar circumstances Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <nycotto.com> domain name be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Panelist Dated: May 2, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.