William Rittwage v. P & R Investment Group Inc.
Claim Number: FA0709001081287
Complainant is William Rittwage (“Complainant”), represented by Steven
N. Niebow, 21800 Oxnard Street, Suite 750, Woodland Hills, CA 91367. Respondent is P & R Investment Group Inc. (“Respondent”), 445 West Palmdale Blvd. Suite R,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <micasa.net>, registered with Godaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 24, 2007.
On September 25, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <micasa.net> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 October 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 2007 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent is using the <micasa.net> domain name in a manner that is identical to Complainant’s lawfully purchased service mark in the domain name, MICASA.NET.
2. Respondent does not have any rights or legitimate interests in the <micasa.net> domain name.
3. Respondent registered and used the <micasa.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding. An untimely submission was received from Robert A. Gelt, a non-party, that submission was not considered by the Panel.
Complainant, William Rittwage, lawfully purchased the <micasa.net> domain name from International Cable Channels Partnership, Ltd. (“ICCP”) on or about February 19, 2004. At that time, Mr. Rittwage was the President of California Offset Printers (“COP”), a full-service printing company. There is no evidence that the domain name registration was ever transferred to Mr. Rittwage. Mr. Rittwage authorized Robert Gelt, owner of MICASA Real Estate Advertising Magazine, COP’s primary client, to use, but not own, the <micasa.net> domain name. Apparently, Mr. Gelt became the registrant of the domain name and in 2005, Mr. Gelt transferred the <micasa.net> domain name registration to Respondent.
Complainant requested that Godaddy.com transfer the domain name to him. This request was denied because such a request can only take place with the consent of the registrant, which was not provided.
For the reasons set forth below, the Panel finds that Complainant is not entitled to relief.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, 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); 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.”).
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.
Under Policy ¶ 4(a)(i), a complainant must prove that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights. Complainant alleges that Respondent is using the <micasa.net> domain name in a manner that is identical to Complainant’s lawfully purchased service mark in the domain name, MICASA.NET. However, Complainant does not sufficiently set forth any basis by which Complainant has established rights in the MICASA.NET mark pursuant to Policy ¶ 4(a)(i). Complainant did not submit into evidence a trademark registration or application from the United States Patent and Trademark Office (“USPTO”) for the MICASA.NET mark. However, it is not necessary for Complainant to hold a registered trademark in order to establish rights in the marks; common law rights are sufficient to satisfy Policy ¶ 4(a)(i). See Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
While Complainant notes that it lawfully purchased the <micasa.net> domain name in 2004, Complainant does not state how the disputed domain name was used or that Complainant ever registered the name. Therefore, the record lacks any evidence to demonstrate that the MICASA.NET mark acquired secondary meaning through extensive commercial use as required to establish common law rights under Policy ¶ 4(a)(i). While Complainant’s purchase agreement for the <micasa.net> domain name was valid, Complainant has not established sufficient rights in the MICASA.NET mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts a contractual right to ownership of the domain name, which he claims gives him the right to have the registration transferred, but the Policy does not provide a remedy for breach of contract or specific performance of a contract.
Therefore, the Panel finds that Policy ¶ 4(a)(i) has not been satisfied.
Since the Panel concluded that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (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 Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (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)).
For the reasons stated above, the Panel declines to analyze this element of the Policy.
For the reasons stated above, the Panel declines to analyze this element of the Policy.
Having failed to establish the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 19, 2007
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