DECISION

 

Paul Petrovich and Petrovich Development Company and Petrovich, Inc. v. Barry Hinesley and Jazz Melody

Claim Number: FA0502000417765

 

PARTIES

 

Complainant is Paul Petrovich and Petrovich Development Company and Petrovich, Inc., (“Complainant”), represented by Scott M. Hervey, of Weintraub, Genshlea, Chediak, Sproul Law Corporation, 400 Capitol Mall, 11^th Floor, Sacramento, CA  95814.  Respondent is Barry Hinesley (“Respondent”), P.O. Box 253, Davis, CA  95617.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <petrovichsucks.com>, registered with Core-95.

 

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.

 

Mark McCormick as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 14, 2005.

 

On February 11, 2005, Core-95 confirmed by e-mail to the National Arbitration Forum that the domain name <petrovichsucks.com> is registered with Core-95 and that Respondent is the current registrant of the name.  Core-95 has verified that Respondent is bound by the Core-95 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 February 17, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 9, 2005 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@petrovichsucks.com by e-mail. 

 

A timely Response was received and determined to be complete on March 9, 2005.

 

On March 17, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant asserts common law trademark rights in the PAUL PETROVICH and PETROVICH DEVELOPMENT COMPANY marks.  Complainant asserts that Respondent’s <petrovichsucks.com> domain name is confusingly similar to its PETROVICH mark.

 

Complainant contends that Respondent has no rights or legitimate interests in the <petrovichsucks.com> domain name and that the disputed website contains merely maligning material about Complainant.  Complainant contends that Respondent is using the domain name to tarnish Complainant’s mark and to unfairly accuse Complainant of animal cruelty. 

 

Complainant also accuses Respondent of using the disputed domain name in bad faith because Respondent uses it primarily for the purpose of disrupting the business of Complainant.  Respondent registered the domain name six days after receiving an adverse panel decision in a prior disputed domain name proceeding initiated by Complainant. 

 

B. Respondent

 

Respondent contends Complainant has not established rights in its claimed trademark because it never registered its mark with any state or federal authority.  Respondent also contends the <petrovichsucks.com> domain name is not confusingly similar to Complainant’s PETROVICH mark because no reasonable person would conclude that a real estate developer would have any relationship with a domain name that added the word “sucks” to its mark. 

 

Respondent asserts that he has rights and legitimate interests in the <petrovichsucks.com> domain name because the First Amendment of the United States Constitution permits free speech use of such a domain name.

 

Respondent denies registering the disputed domain name in bad faith for disrupting the business of a competitor because Complainant and Respondent are not business competitors.  Respondent asserts he has not registered the disputed domain name for commercial gain but is using the disputed domain name as a complaint/gripe website where Respondent is exercising First Amendment rights. 

 

FINDINGS

 

1.      Complainant has established common law trademark rights in the PAUL PETROVICH and PETROVICH DEVELOPMENT COMPANY marks. 

2.      Respondent registered the <petrovichsucks.com> domain name and is actively using it. 

3.      Respondent has no rights or legitimate interests in the service mark PETROVICH or PETROVICH DEVELOPMENT COMPANY.

4.      Respondent is operating a website under the <petrovichsucks.com> domain name to present information that is critical of Complainant and, among other things, accuses Complainant of animal cruelty.  Respondent’s purpose appears to be one of retaliation or recrimination against Complainant as an outgrowth of litigation between the parties in which Complainant thus far has been successful. 

5.      There is no evidence that Respondent is operating his website for profit or for commercial gain. 

6.      The record does not show that Respondent has used the disputed domain name to divert internet traffic from Complainant’s website to Respondent’s website. 

7.      The <petrovichsucks.com> domain name is not confusingly similar to Complainant’s service marks. 

8.      Respondent’s use of his <petrovichsucks.com> domain name is a use that is protected by the First Amendment.

DISCUSSION

 

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;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Identical and/or Confusingly Similar

 

The Panel finds that the <petrovichsucks.com> domain name is not confusingly similar to Complainant’s PETROVICH or PETROVICH DEVELOPMENT COMPANY marks because no reasonable person would conclude that a real estate developer would use a mark of that kind to promote his services.  The obvious impression from the domain name is that it exists for the purpose of criticism of Petrovich.  See Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000); see also Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001).

 

Complainant has failed to meet his burden to establish that the disputed domain name is identical or confusingly similar to his service marks. 

 

Because this issue is dispositive, the Panel finds it unnecessary to address the issues under policy paragraph 4(a)(ii) and paragraph 4(a)(iii). 

 

DECISION

 

Relief shall be denied.

 

Accordingly, it is ordered that Complainant’s request for transfer of the <petrovichsucks.com> domain name is denied.

 

 

 

 

 

 

Mark McCormick, Panelist
Dated:  March 31, 2005