Pinnacle Financial Group, Inc. v. DETEX Agency & Associates, LLC
Claim Number: FA1008001342330
Complainant is Pinnacle Financial Group, Inc. (“Complainant”), represented by Matthew J. Franken, of Hellmuth & Johnson, PLLC, Minnesota, USA. Respondent is DETEX Agency & Associates, LLC (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pfgservice.com>, registered with GoDaddy.com, Inc..
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2010.
On August 23, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <pfgservice.com> 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 August 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pfgservice.com by e-mail. Also on August 30, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" through submission of a Written Notice, as defined in Rule 1. 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’s <pfgservice.com> domain name is confusingly similar to Complainant’s PFGSERVICES.COM mark.
2. Respondent does not have any rights or legitimate interests in the <pfgservice.com> domain name.
3. Respondent registered and used the <pfgservice.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pinnacle Financial Group, Inc., is a collection agency serving the consumer and commercial marketplace. Complainant has used the <pfgservices.com> domain name to advertise and promote its services since October 11, 1997.
Respondent, DETEX Agency & Associates, LLC, registered the <pfgservice.com> domain name on February 13, 2007.
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.
Complainant does not hold trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the PFGSERVICES.COM mark. However, federal trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Prior panels have found that a governmental registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims it has registered the PFGSERVICES.COM mark with the State of Minnesota. However, Complainant does not provide evidence of this trademark registration. Thus, the Panel finds Complainant has not proven state trademark rights.
Complainant claims it has established common law rights in the PFGSERVICES.COM mark through its continuous use of the mark in commerce. Complainant provides evidence that it first registered the <pfgservices.com> domain name on October 11, 1997. In addition, Complainant submits business licenses indicating that it does business as “PFG of Minnesota” or “PFG of Minnesota, Inc.” However, these licenses were issued after 2007. The Panel finds Complainant does not provide sufficient evidence to establish common law rights in the PFGSERVICES.COM mark that predate Respondent’s registration of the <pfgservice.com> domain name. See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)). Accordingly, the Panel finds Complainant has failed to prove common law rights in the PFGSERVICES.COM mark that predate Respondent’s registration of the <pfgservice.com> domain name under Policy ¶ 4(a)(i).
The Panel finds Complainant failed to satisfy Policy ¶ 4(a)(i).
Since Complainant has failed to establish the first element under the Policy, it is not necessary to analyze the second two elements, as Complainant cannot prevail. 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)).
Having failed to establish the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <pfgservice.com> domain name REMAIN with Respondent.
Sandra J. Franklin, Panelist
Dated: October 12, 2010
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