Complainant is Art By Alicia, Inc. of Orlando, Florida, United States of America (“United States” or “US”), represented by GR Lex, Venezuela (Bolivarian Republic of).
Respondent is Angel Quinapallo of Homestead, Florida, United States, represented by Marben Luis Tan, United States.
The disputed domain name <arteyfortuna.biz>, <arteyfortuna.com>, <arteyfortuna.info>, <arteyfortuna.net> and <framesandfortune.com> are registered with 1&1 Internet AG (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2017. On January 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2017. After a request from Respondent, the Center extended the due date for the Response to February 6, 2017. The Response was filed with the Center on February 6, 2017.
In emails of January 17, 2017 and February 9, 2017, the Center received further submissions from Complainant. In an email of February 16, 2017, the Center received a submission, named “Final Pleading”, from Respondent. In emails of February 20, 2017, both Complainant and Respondent submitted further materials to the Center.
The Center appointed M. Scott Donahey as the sole panelist in this matter on February 15, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is a resident of Orlando, Florida, and a professional international art dealer, representing more than 300 artists from over 30 countries in her business Art by Alicia, Inc. (Complaint, Annex 6). She is the hostess in a reality television series, Frames and Fortune, in which she travels throughout the world to discover artists whose works satisfy her aesthetic tastes and features their work in the series. (Complaint, Annexes 7, 8 and 9). Complainant was born and raised in Venezuela, is fluent in Spanish, and her show targets the Hispanic and second generation immigrants who are established in the United States. Currently it enjoys success in the central and northern Florida markets.
Complainant has a trademark registration for the mark FRAMES & FORTUNE, which mark has a registration date of December 24, 2013, with the United States Patent and Trademark Office (USPTO). Complainant also filed a trademark application with the USPTO for the mark ARTE & FORTUNA on October 21, 2015, and on July 12, 2016, received a Notice of Allowance from the USPTO. The applications for both marks show a first use in commerce on May 15, 2013. (Complaint, Annex 10).
In connection with her businesses, Complainant registered the disputed domain names: <framesandfortune.com>, <arteyfortuna.biz>, <arteyfortuna.com>, <arteyfortuna.info>, and <arteyfortuna.net>. Complainant’s intent in registering the domain names was to use them to resolve to a web site which would promote her business activities.
Respondent is a technical service expert who does website design and installation work. (Response, paragraph III,1). Complainant contracted with Respondent to develop Complainant’s “official website.” Id. “In order to accomplish this work-for-contract, Complainant provide[d] to the Respondent all the information needed, including the authorization codes of one of the disputed domain names <framesandfortune.com>.” (Response, paragraph III,2). “Complainant then reveal[ed] and inform[ed] the authorization codes of the disputed domain name <framesandfortune.com> to the Respondent, who[ ] registered <framesandfortune.com> under [his] own name, and <arteyfortuna.com>[,] <arteyfortuna.net>[,] <arteyfortuna.biz>[,] and <arteyfortuna.info> under the [name] of a privacy service.” (Response, paragraph III,3).
In his role as “Growth Engineer,” Respondent believed it was his duty and responsibility to develop the Complainant’s company’s website in such a way that it would enhance the company’s profitability, and that such work required him to register the disputed domain name <framesandfortune.com> in his own name. (Response, paragraph III,4).
Respondent concedes that Complainant did not ask Respondent to register the disputed domain names under Respondent’s name, but that he chose to do so “to protect [his] own rights and interest[s].” (Response, paragraph III, 11). The reason that Respondent registered the disputed domain names under his name was “to secure [Respondent‘s] pay for the service he [performed] for the company.” (Response, paragraph III,14). In his so-called “Final Pleading”, submitted on February 16, 2017, Respondent argues that a domain name is intangible property, and states: “Either way, whether a domain name is a contract right or a new form of intangible property, Thus, a lender can obtain a perfected security interest in a domain name. it is a property and, for secured financing purposes, will fall within that wonderful catch-all category in Article 9 of the Uniform Commercial Code--the general intangible” (emphasis of entire passage by Respondent deleted).
Complainant and Respondent soon came to a decided disagreement regarding their agreement. Complainant believed that Respondent did not keep to the required schedule, and Respondent believed he was entitled to a stated amount for the work he had performed to date and refused to proceed until he had been paid. Respondent then used the disputed domain names to resolve to a web site headed “Frames & Fortune” on which it was stated in large type: “This account has been suspended. Reason: NON-PAYMENT,” and thereafter stating “This suspension impacts the following domains,” with a list of the disputed domain names.
Thereafter, the web page to which the disputed domain names resolved to read: “Frames & Fortune. This domain is for sale. Price: $17,500. The following domains are included in the sales price:” followed by a listing of the disputed domain names.
Complainant contends that the disputed domain names are identical to or confusingly similar to her trademarks, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that Respondent has registered and is using the disputed domain names in a bad faith attempt to extort moneys for services that were both unduly delayed and not fully performed.
Respondent concedes that the disputed domain names were originally registered by Complainant and does not dispute that they correspond to Complainant’s trademarks, but contends that Respondent is entitled to them as collateral for payment for work performed by him for which he was not paid.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall 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 directs that the complainant must prove each of the following:
i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Under the UDRP Rules, updated effective July 31, 2015, the Panel is given absolute discretion to request (and therefore to accept or reject) any pleadings submitted in addition to the Complaint and the Response. UDRP Rules 3(a), 5(a), 10(d), and 12. Exercising that discretion in this matter, the Panel elects to accept and to consider the denominated “Final Pleading” submitted by Respondent on February 16, 2017. The Panel declines to accept or to consider for any purpose both the “Supplemental Filing” submitted by Complainant on February 20, 2017 and the “Supplemental Pleading” submitted by the Respondent on February 20, 2017.
There is no dispute that the disputed domain names are identical to or confusingly similar to the FRAMES & FORTUNE and ARTE & FORTUNA trademarks in which Complainant has rights.
Respondent’s assertion that he is entitled to use the disputed domain names as collateral for payment to which he is entitled, but has not received, is not only mistaken, but is contrary to Respondent’s own admissions. Respondent admitted that Complainant did not authorize Respondent to register the disputed domain names in his own name. Nor does Respondent offer any evidence that there was an agreement that the disputed domain names could be used as collateral to secure Respondent’s rights to payment for work that had yet to be well and timely performed. In general, under United States law, “security” or “collateral” is something that is given in return for a fixed sum that the recipient promises to pay back, i.e., a loan. The quote in Respondent’s “Final Pleading” says just that. Security or collateral is not given for the uncertain and yet to be determined value of work that has not yet been satisfactorily performed.
It is undisputed that Complainant does not believe that the work was well and timely performed, or that the amount claimed by Respondent is due and owing. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain names.
Respondent was never authorized to register the disputed domain names in his name or in names under his control, nor to use the disputed domain names to secure any amounts to which he believed he was entitled whether or not Complainant conceded such amounts were due and owing. Moreover, Respondent used the disputed domain names to resolve to a web site intended to embarrass Complainant and her businesses, and thereafter to resolve to a web site at which he offered the disputed domain names for sale for valuable consideration in excess of Respondent’s documented out-of-pocket costs. Therefore, the Panel finds that the disputed domain names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <arteyfortuna.biz>, <arteyfortuna.com>, <arteyfortuna.info>, <arteyfortuna.net>, and <framesandfortune.com> be transferred to Complainant.
M. Scott Donahey
Date: February 28, 2017