Richard P. Glass, Jr. v. Rutkas, Michael HiStyle Inc.
Claim Number: FA1310001522221
Complainant is Richard P. Glass, Jr. (“Complainant”), represented by Charles F. Meroni, Jr. of Meroni & Meroni, P.C., Illinois, USA. Respondent is Rutkas, Michael HiStyle Inc. (“Respondent”), represented by James P. Newman of Law Offices of James P. Newman & Associates, LLC, Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <petfinity.com>, registered with Network Solutions, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Honorable John J. Upchurch (Ret.), Honorable Karl V. Fink (Ret.) and James A. Carmody, Esq., (Chair) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2013; the National Arbitration Forum received payment on October 1, 2013.
On October 1, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <petfinity.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 2013 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 email@example.com. Also on October 7, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on November 8, 2013.
On November 19, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable John J. Upchurch (Ret.), Honorable Karl V. Fink (Ret.) and James A. Carmody, Esq., (Chair) as Panelist. as Panelists.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <petfinity.com> domain name, the domain name at issue, is confusingly similar to Complainant’s PETFINITY mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and is using the domain name at issue in bad faith.
B. Respondent makes the following assertions:
1. The Panel does not have jurisdiction of this dispute because the UDRP was enacted after the domain name at issue was registered.
2. Complainant has no protectable rights in the domain name at issue.
3. Respondent has rights and legitimate interests in the domain name at issue.
4. Respondent has not registered or used the domain name at issue in bad faith.
C. Additional Submissions: Complainant attempted to file a belated Additional Submission and the Panel declined to consider it.
Complainant claims ownership of the PETFINITY mark for use in conjunction with a wide variety of business services through the Internet and, in that connection, owns a pending application for the mark with the United States Patent and Trademark Office (“USPTO”) (Serial number 86,033,774 filed August 9, 2013). The Complaint provides no evidence of Complainant's actual use of the PETFINITY mark for any purpose anywhere. Respondent registered the <petfinity.com> disputed domain name on September 24, 1999. Respondent’s <petfinity.com> domain name is identical to Complainant’s claimed PETFINITY mark and merely adds the generic top-level domain (“gTLD”) “.com.” As of September 26, 2013, the domain name at issue redirects the web user to a Facebook social media page for “HiStyle Giant Schnauzers.” It is clear from correspondence attached to the Complainant that Complainant offered to purchase the <petfinity.com> domain name from Respondent for $1,000 on or about August 16, 2013, thus indicating a clear awareness on the part of Complainant of Respondent's rights in the domain name at issue at that time. Subsequently, Counsel for Complainant signed the original Complaint on September 30, 2013 and the Forum noted that it had been filed on October 1, 2013.
As noted, Respondent registered the <petfinity.com> domain name on September 24, 1999, which was one month before the UDRP became effective. Complainant was well aware that Respondent had 14 years of prior use of the <petfinity.com> domain name when it offered to purchase the name from Respondent and before bringing this UDRP proceeding. Respondent has used the e-mail address (firstname.lastname@example.org) for 14 years. Respondent’s primary business is running a dog kennel and breeding Giant Schnauzers. Respondent uses the <petfinity.com> domain name as a secure location for his friends and colleagues to view photos and downloads the ones that they want. Complainant’s pending trademark for the PETFINITY mark does not afford Complainant any rights to receive a transfer of the Respondent’s domain name.
This is a frivolous case which has been brought by Complainant without substantial basis in law or fact.
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."
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.
Preliminary Issue: Arbitration Jurisdiction
Respondent, in its Response, argues that Respondent has not agreed to arbitration. The Panel finds, however, that Respondent consented to be bound to the UDRP when it executed the Registration Agreement with the Registrar. The verification e-mail from Registrar reflects that the UDRP applies to Respondent’s registration of the disputed domain name. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (finding that the UDRP applied because: “[b]y virtue of its contract with NSI, Respondent agreed to be bound by NSI’s then-current domain name dispute policy, and any changes made to that policy made by NSI in the future”). While Policy ¶ 4(k) allows the parties to litigate in court, the Panel remains free to decide the instant dispute on the merits strictly under the guidelines of the Policy.
Complainant admits that Respondent has owned the <petfinity.com> domain name since September 24, 1999 and further admits that it did not file an application to register the PETFINITY mark until August 9, 2013, which was 14 years after Respondent registered the disputed domain name. Complainant has not provided the panel any evidence of a common law trademark or any use whatsoever of the claimed PETFINITY mark. This Panel agrees with previous panels which have found that a complainant’s pending trademark application does not establish rights in the mark. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Complainant’s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark.”). Accordingly, Complainant’s pending registration for the PETFINITY mark does not establish rights in the mark under Policy ¶ 4(a)(i).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) and 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)).
The Panel finds that Policy ¶ 4(a)(i) has not been established.
Reverse Domain Name Hijacking
The Panel finds that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Complainant is attempting to deprive Respondent, the rightful, registered holder of the <petfinity.com> domain name, of its rights to use the disputed domain name. Before filing the Complaint, Complainant clearly knew that the <petfinity.com> disputed domain name had been long ago registered and used by Respondent. For example, prior to bringing this proceeding, Respondent points out that Complainant registered other PETFINITY domain names including (.net and .org) on or about July 30, 2013. Thus, Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <petfinity.com> domain name or that Respondent registered and is using the disputed domain name in bad faith. Moreover, as noted above, it is clear from correspondence attached to the Complainant that Complainant offered to purchase the <petfinity.com> domain name from Respondent for $1,000 on or about August 16, 2013, thus indicating a clear awareness on the part of Complainant of Respondent's rights in the domain name at issue at that time and prior to the institution of this proceeding. Even more troubling from the perspective of an RDNH analysis, Complainant has made no case whatsoever that it has ever used the PETFINITY mark for any purpose. The Panel finds that there is sufficient evidence to find that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The Panel finds that Complainant is guilty of Reverse Domain Name Hijacking.
Accordingly, it is Ordered that the <petfinity.com> domain name be retained by Respondent.
Honorable John J. Upchurch (Ret.), Honorable Karl V. Fink (Ret.)
and James A. Carmody, Esq., (Chair) as Panelists.
James A. Carmody, Esq. (Chair) for the Panel
Dated: November 27, 2013
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