WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ProPark, Inc. v. Gabriella Caltagirone

Case No. D2018-2584

1. The Parties

Complainant is ProPark, Inc. of Hartford, Connecticut, United States of America (“United States”), represented by Wasserbauer Law, LLC, United States.

Respondent is Gabriella Caltagirone of Fort Lauderdale, Florida, United States.

2. The Domain Name and Registrar

The disputed domain name <proparkteam.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2018, 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 November 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 10, 2018.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 19, 2018. 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.

4. Factual Background

Complainant is the owner of registration of the word service mark PROPARK on the Principal Register of the United States Patent and Trademark Office (“USPTO”), registration number 2,061,591, registration dated May 13, 1997, in international class 39, covering “operation of vehicle parking lots and garages”. Such registration has obtained incontestable status. Complainant also is owner of registration of the word, and word and design service mark, PROPARK AMERICA on the Principal Register of the USPTO.

Complainant is a professional parking management company providing services that include management of airport parking, office parking, healthcare parking, municipal parking, etc., in various locations throughout the United States. Since 1997 Complainant has operated a commercial website at “www.propark.com”.

According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created on September 3, 2014. There is no evidence in the record of this proceeding to indicate that ownership of registration has been transferred since the creation of the record of registration.

Complainant has provided evidence that Respondent is the subject of an ongoing criminal felony prosecution, with charges including organized fraud, organized scheme to defraud and conspiracy, and white-collar criminal activity.¹ The charges arise out of Respondent’s alleged underreporting of “booting” (i.e. immobilizing) automobiles (for unpaid parking tickets) and associated collection of fees otherwise due to the City of Miami, Florida.² Complainant has provided evidence that Respondent used the disputed domain name on documentation used in connection with its fee collection activities. Such documentation includes reference to an active subdomain of the domain name, <rmcpay.com> (<proparkteam.rmcpay.com>), to which consumers are directed for payment of fees. Complainant has provided evidence that it has received inquiries from confused consumers regarding parking tickets intended for Respondent.

The registration agreement between Respondent and the Registrar subjects Respondent to dispute resolution under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it owns rights in the trademarks PROPARK and PROPARK AMERICA, and that the disputed domain name is confusingly similar to its trademarks.

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) the disputed domain name directs Internet users to a website that is merely a non-functional placeholder; (2) there is no evidence that Respondent has been commonly known by the disputed domain name, and Respondent has not been authorized by Complainant to use its trademark in association with the disputed domain name; (3) there is no evidence that Respondent has any trademark rights in PROPARK; (4) Respondent has not used the disputed domain name in connection with any legitimate noncommercial or fair use; (5) the disputed domain name is confusingly similar to Complainant’s trademark and there is no conceivable use by Respondent which would not be confusing to consumers, and; (6) Respondent appears to have used the disputed domain name in connection with a criminal enterprise.

Complainant contends Respondent registered and is using the disputed domain name in bad faith because: (1) the disputed domain name was registered in a bad faith attempt to divert web traffic to Respondent’s website based on likelihood of confusion; (2) there is evidence of actual consumer confusion between Respondent and Complainant; (3) using the disputed domain name in connection with criminal conduct constitutes bad faith; (4) using the disputed domain name to attract web traffic without any commercial activity on Respondent’s website constitutes bad faith; (5) using the disputed domain name to send fraudulent communications constitutes bad faith.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier records indicate successful delivery of the Written Notice to the address listed in Respondent’s record of registration. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of ownership of rights in the service mark PROPARK, including through registration at the USPTO and through use in commerce. See Factual Background, supra. Respondent has not contested Complainant’s rights in the PROPARK service mark. The Panel determines that Complainant owns rights in the PROPARK service mark.³

The disputed domain name directly incorporates Complainant’s PROPARK service mark, adding the noun “team”. The term “team” refers, inter alia, to a group of individuals assembled for a common purpose, which may include the pursuit of a business objective.⁴ Addition of the term “team” to Complainant’s service mark in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s service mark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel determines that the disputed domain name is confusingly similar to Complainant’s PROPARK service mark.

The Panel determines that Complainant owns rights in the service mark PROPARK and that the disputed domain name is confusingly similar to that service mark.

B. Rights or Legitimate Interests

Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.

Respondent has used the disputed domain name in connection with notices and other documentation used to solicit funds from consumers. This activity has resulted in felony criminal prosecution charges brought against Respondent. Although prosecution of Respondent is pending, Respondent has not attempted to rebut or deny the allegations in this proceeding. Such use of the disputed domain name does not establish rights or legitimate interests in favor of Respondent.

Respondent has used the disputed domain name with a subdomain that directs Internet users to a website through which payments can be made. Because such payment website is alleged to have been used in connection with criminal activity, and Respondent has not attempted to rebut such allegations, this use cannot establish rights or legitimate interests in favor of Respondent. Respondent has also used the disputed domain name in connection with a website that appears to have been non-functional. Such use does not establish rights or legitimate interests in favor of Respondent.

Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” These include: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

Respondent has used the disputed domain name in connection with solicitation of fees through email addresses and a subdomain alleged to have been used in a criminal enterprise. Respondent has not attempted to rebut that allegation. In any case, the disputed domain name is confusingly similar to Complainant’s service mark, and the services Respondent provides are in the same line of business (i.e. parking-related services) as Complainant’s services. Internet users and consumers are likely to be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s services and activities by Complainant, and Respondent is acting to attract Internet users and consumers for commercial gain. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

7. Decision

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 name <proparkteam.com> be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Date: December 27, 2018

¹ Similar felony charges are filed against Respondent’s spouse and Premier Booting Services (a legal entity associated with Respondent and her spouse).

² See Charles Rabin, “Couple scammed Miami out of $700,000 in car ‘booting’ fees, investigators say”, Miami Herald, March 15, 2018 (Panel visit of December 27, 2018).

³ The Panel does not consider it necessary to address Complainant's rights in the service mark PROPARK AMERICA.

⁴ See, e.g., “www.merriam-webster.com/dictionary/team”.