PPTP.NET,LLC v. Hoa
But
Claim Number: FA1002001310141
PARTIES
Complainant is PPTP.NET, LLC (“Complainant”), represented by Robert M. Epler, New Jersey, USA. Respondent is Hoa But (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pptp.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 24, 2010; the National Arbitration Forum received a
hard copy of the Complaint on February 26, 2010.
On February 25, 2010, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <pptp.com>
domain name is registered with Network Solutions, Inc. and that the 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 3, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 23, 2010 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@pptp.com by e-mail.
A timely Response was received and determined to be complete on March
17, 2010.
On March 30, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Timothy D. O’Leary as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
I. Complainant’s Contentions
A. Identical or
Confusingly Similar.
The PPTP.COM domain name is confusingly similar to PPTP.NET.
The letters in the domain name are identical except for the top level domain of .COM.
B. Rights and
Legitimate Interests.
The current PPTP.COM domain name holder has not established any corporation,
trademark, or service mark pertaining to or referencing the domain name.
Further, no website is currently posted at PPTP.COM .
The current domain holder is not using the domain for legitimate noncommercial fair use, and has acted in bad faith by further renewing the domain name registration after being contacted by a representative of PPTP.NET, LLC.
The respondent has ignored multiple attempts at communication regarding the domain name over the last 6 months, the most recent email is attached in the Annex of this complaint for reference.
C. Registration and Use in Bad Faith.
The current domain holder is not using the domain for legitimate noncommercial fair use, and has acted in bad faith by further renewing the domain name registration. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii); ICANN Policy ¶ 4(b):
(i.) After being contacted regarding the domain name, Respondent renewed the domain name registration into the year 2016 despite not having a website present at all.
(ii.) Respondent has registered the domain name in order to prevent PPTP.NET, LLC. from reflecting the mark in a corresponding domain name.
(iii.) Respondent has registered the domain name primarily for the purpose of disrupting the business of PPTP.NET, LLC by not allowing the business to establish operations at the unused domain name.
II Respondent’s Contentions
A. Identical or
Confusingly Similar.
The .NET top level domain
clearly separates PPTP.NET from PPTP.COM. The United
States Patent and Trademark Office (http://www.uspto.gov/) has no record of
PPTP of which Complainant claims trademark rights. No
official documents showing Complainant claims of trademark rights of PPTP prior
to November 22, 1996 exist. Registrar Network Solutions, LLC (http://www.networksolutions.com/) WHOIS records
show creation/registration date of November 22, 1996 for PPTP.COM. With
November 22, 1996 creation/registration
date Respondent clearly has prior rights of PPTP.COM over Complainant
formation dated October 28, 2009.
B. Rights and
Legitimate Interests.
PPTP.COM
is Point-to-Point Tunneling Protocol (PPTP) implementing Virtual Private Networks security to access secure
private information over public network such as the Internet. It is not
HTTP (Hypertext Transfer Protocol) which is commonly known as website. The
Internet is multiprotocol not limited to HTTP only.
PPTP.COM domain name registration renewal uses
automatic and manual intervals at registrar Network Solutions, LLC.
Aggressive, unsolicited, and initiated
emails from a representative of PPTP.NET, LLC prompted reviews of all aspects
of PPTP.COM including slight vulnerability of expiration date to prevent Domain
Name Hijacking (http://en.wikipedia.org/wiki/Domain hijacking) and to minimize
and eliminate unforseen security risks.
Out of professional courtesy selective email replies were
sent to address aggressive, unsolicited, initiated emails from a representative
of PPTP.NET, LLC.
C. Registration and Use in Bad Faith.
PPTP.COM domain name registration renewal uses
automatic and manual intervals at registrar Network Solutions, LLC.
Aggressive, unsolicited, and initiated
emails from a representative of PPTP.NET, LLC prompted reviews of all aspects
of PPTP.COM including slight vulnerability of expiration date to prevent Domain
Name Hijacking (http://en.wikipedia.org/wiki/Domain hijacking) and to minimize
and eliminate unforseen security risks.
PPTP.COM is Point-to-Point Tunneling Protocol (PPTP) implementing Virtual Private Networks
security to access secure private information over public network such as the Internet. It is not HTTP
(Hypertext Transfer Protocol) which is commonly known as website. The Internet
is multiprotocol not limited to HTTP only.
Registrar Network Solutions, LLC
(http://www.networksolutions.com/) WHOIS records show creation/registration
date of November 22, 1996 for PPTP.COM.
No official documents showing Complainant claims of trademark rights of PPTP
prior to November 22, 1996 exist. With November 22, 1996 creation/registration date Respondent clearly has
prior rights of PPTP.COM over Complainant formation dated October 28,
2009.
The United States Patent and Trademark Office
(http://www.uspto.gov/) has no record of PPTP of which Complainant
claims trademark rights.
Registrar Network Solutions, LLC
(http://www.networksolutions.com/) WHOIS records show creation/registration
date of November 22, 1996 for PPTP.COM indicating Respondent registered
PPTP.COM in November 22, 1996, about thirteen years before PPTP.NET, LLC
formation dated October 28, 2009. Clearly the November 22, 1996 PPTP.COM domain
name registration does not disrupt
any business of PPTP.NET, LLC.
PPTP.COM is Point-to-Point Tunneling Protocol (PPTP) implementing Virtual Private Networks security to access secure private information over public network such as the Internet. It is not HTTP (Hypertext Transfer Protocol) which is commonly known as website. The Internet is multiprotocol not limited to HTTP only.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
FINDINGS
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
The Panel finds the issues on this element in
favor of Respondent.
Respondent contends Complainant has not put forth sufficient evidence to demonstrate common law rights in its alleged PPTP mark under Policy ¶ 4(a)(i). Respondent asserts Complainant has not produced enough evidence to show common law rights in its trademark. Respondent contends Complainant’s evidentiary burden to demonstrate common law rights in the PPTP mark must be high due to the generic nature of the mark and the high popularity of acronym usage in the business world. Respondent contends Complainant does not submit sufficient evidence to meet this burden. The Panel agrees and finds that Complainant has not sufficiently established rights in the mark pursuant to Policy ¶ 4(a)(i). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding that when a disputed domain name, such as <187.com>, is made up entirely of generic or common terms, “good evidence will be needed to show a significant secondary meaning and, above all, one associated with Complainant.”); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness).
If the Panel concludes that Complainant has
not satisfied Policy ¶ 4(a)(i) because it has failed
to establish rights in the mark, the Panel may decline 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). However, the Panel elects to consider the remaining two elements of the
policy.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
The Panel finds the issues on this element in
favor of Respondent.
The Panel holds that Complainant has not
established a prima facie case in support of its arguments that
Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA
746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not
satisfactorily meet its burden and as a result found that the respondent had
rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
Respondent alleges it is using its disputed domain name to implement virtual private network security access to secure private information using the “point-to-point tunneling protocol,” which it differentiates from “http,” which is hypertext transfer protocol which is what websites are based off of. Had the Panel concluded that Complainant did make its case under this element, the Panel would still be of the opinion that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
Respondent asserts that its registration of the <pptp.com> predates Complainant’s use of the mark in commerce. Respondent registered the disputed domain name on November 22, 1996, nearly thirteen years before Complainant’s formation on October 28, 2009. This is another reason why the Panel finds that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the complainant had not met its burden of proof to show respondent lacked rights or legitimate interests in a domain name when respondent’s registration of that domain name occurred before the complainant had established rights in its alleged mark); see also Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because the respondent’s use of the PARACHUTE mark and the domain name in question preceded any use of the service mark by the complainant).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
The Panel finds the issues on this element in favor of Respondent.
The Panel has concluded that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), and thus finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent asserts that its registration of
the <pptp.com> domain name
predates Complainant’s use of the mark in commerce. Respondent registered the disputed domain
name on November 22, 1996, nearly thirteen years before Complainant’s formation
on October 28, 2009. The Panel finds that Respondent’s predating registration
of the disputed domain name negates a finding of bad faith registration and
use. See Interep Nat'l Radio Sales,
Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000)
(finding no bad faith where the respondent registered the domain prior to the
complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears
LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding the respondent could
not have registered or used the disputed domain name in bad faith where the
respondent registered the disputed domain name before the complainant began
using the mark).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Timothy D. O’Leary, Panelist
Dated: April 12, 2010
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