DECISION

Antonio Casola, Kim Casola, and AKC Inc. v. James Noble

Claim Number:  FA0303000147307

PARTIES

Complainant is Antonio Casola, Kim Casola and AKC Inc., Holmdel, NJ (“Complainant”) represented by Anthony J. Sposaro. Respondent is James Noble, Shrewsbury, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <casolafarms.com>, registered with Bulkregister.

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 (the "Forum") electronically on February 28, 2003; the Forum received a hard copy of the Complaint on March 11, 2003.

On March 3, 2003, Bulkregister confirmed by e-mail to the Forum that the domain name <casolafarms.com> is registered with Bulkregister and that Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister 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 13, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 2003 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@casolafarms.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 Forum transmitted to the parties a Notification of Respondent Default.

On March 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, 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."  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.

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 <casolafarms.com> domain name is confusingly similar to Complainant’s CASOLA FARMS mark.

2. Respondent does not have any rights or legitimate interests in the <casolafarms.com> domain name.

3. Respondent registered and used the <casolafarms.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has done business under the CASOLA FARMS, ANTONIO CASOLA FARMS and A.CASOLA FARMS marks for twenty years.  Complainant advertises in local and regional publications as CASOLA FARMS, as well as on area radio stations.  Complainant’s business generates annual revenues around 3.5 million and employs forty people during an average year.  Complainant holds U.S. Patent and Trademark Reg. No. 2,649,572 for the A. CASOLA FARMS registered on November 12, 2002. 

Complainant is dissatisfied with Respondent’s website design services because the website at the disputed domain name contains inaccurate information regarding Complainant’s goods and services.

Respondent, James Noble, contracted with Complainant in August 2001 to design and host Complainant’s website.  Respondent designed and has been hosting a website that is proffered as Complainant’s at the <casolafarms.com> domain name.  Respondent initially registered the domain in or about August of 2001 as an agent of Complainant in Complainant’s name. During the initial year of registration, the parties became embroiled in a dispute over Respondent’s performance of web design services. In or about August of  2002, Respondent allowed the initial registration in Complainant’s name to lapse and re-registered the domain name at issue in his own name. Respondent is demanding payment from Complainant of the remaining balance of the contract price in exchange for transfer of the <casolafarms.com> domain name registration back to Complainant.

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

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established that it has rights in CASOLA FARMS mark through allegations of 20 years continuous use of that mark and proof of use at least since 1996.  Complainant has also shown its registration of A. CASOLA FARMS with the U.S. Patent and Trademark Office in connection with its farming, entertainment and educational  operations.

Respondent’s <casolafarms.com> domain name is confusingly similar to Complainant’s mark because it merely omits the “A” portion of Complainant’s registered mark.  The omission of one letter does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) analysis.  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent has no rights or legitimate interests in the <casolafarms.com> domain name pursuant to Policy ¶ 4(c)(i), or ¶ 4(c)(iii) because it is not using the domain name for a legitimate business purpose or fair use.  Respondent, a former independent contractor of Complainant, reregistered the <casolafarms.com> domain name in his own name after the original registration had expired.  Respondent is not using the domain name in relation to the sale of any goods or services.  Respondent is merely using the <casolafarms.com> domain name as collateral for disputed contract fees from Complainant.  The Panel does not find this to be 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 Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000)   (finding that as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark and that the Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right.  This is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name).

Respondent is known to this Panel as James Noble, not CASOLA FARMS or <casolafarms.com>.  The disputed domain name displays a website Respondent designed for Complainant and there is nothing on the website relating to Respondent’s own business or activities.  Thus, the Panel finds that Respondent does not have rights or legitimate interests in the disputed 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 Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Moreover, the facts presented by Complainant make it clear that any rights or interests in <casolafarms.com> which could possibly be claimed by Respondent, had he filed a response in this proceeding, would have been created in his capacity as an agent for the Complainant in the course of web design services.  An agent may not set up superior title to his principal in such circumstances.  See, generally, Annot., Rights and Remedies Where Broker or Agent, Employed to Purchase Personal Property, Buys It for Himself, 20 ALR2d 1140.

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Paragraph 4(a) of the UDRP describes four situations that give rise to evidence of bad faith registration and use.  These four situations are not meant to be exhaustive.  Thus, the Panel may find bad faith based on the totality of circumstances.  See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).

Respondent, a former independent contractor of Complainant, had knowledge of Complainant’s rights in the A. CASOLA FARMS mark when it registered the <casolafarms.com> domain name.  Respondent designed and registered the domain name for Complainant originally; thus when it chose to register the domain name under its own name and address, Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).  See Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000) (finding that because Respondent was hired by Complainant to help design and register Complainant’s websites, Respondent had intimate knowledge of Complainant’s business and use of its TEENFLO mark.   Therefore, Respondent’s registration of <teenflo.com> was in bad faith); see also Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding "Respondent's registration of the company name of his former employer as a domain name is an act of bad faith").

Moreover, Respondent is using the <casolafarms.com> domain name to display a website that conveys incorrect information about Complainant to coerce Complainant into giving Respondent money Respondent feels it is owed by Complainant.  The holding of a domain name registration as a tool of coercion evidences bad faith use pursuant to Policy ¶ 4(a)(iii).  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Great Am. Knitting Mills Res. Corp. v. Sock Co., FA 95841 (Nat. Arb. Forum Dec. 7, 2000) (Respondent’s acquisition of the domain names after its authorization as a retailer was terminated raises a presumption of bad faith); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name.  There is no reasonable possibility that the name karlalbrecht.com was selected at random.  There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith”).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <casolafarms.com> domain name be TRANSFERRED from Respondent to Complainant.  The argument between the parties over web design and contract will have to be resolved in a different proceeding with appropriate jurisdiction.

James A. Carmody, Esq., Panelist

Dated:  April 17, 2003

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