Point to Point Business Development, Inc. v. Vincent Di Lello a/k/a Point to Point Designs Inc.
Claim Number: FA0512000609360
Complainant is Point to Point Business Development, Inc. (“Complainant”), represented by Harris Turner, 11358 Talon Trace, Fishers, IN, 46037. Respondent is Vincent Di Lello a/k/a Point to Point Designs Inc. (“Respondent”), 6-27 Monarch Road, Guelph, ON N1K 1N4, Canada.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <point2point.com>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 14, 2005; the National Arbitration Forum received a hard copy of the Complaint December 19, 2005.
On December 15, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <point2point.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 20, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 9, 2006, 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@point2point.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <point2point.com>, is identical/confusingly similar to Complainant’s POINT2POINT mark.
2. Respondent has no rights to or legitimate interests in the <point2point.com> domain name.
3. Respondent registered and used the <point2point.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant claims that it has rights to the POINT 2 POINT service mark. Complainant has filed a service mark registration with the U.S. Patent and Trademark Office (“USPTO”) for POINT 2 POINT (Ser. No. 78/707539).
Respondent registered the <point2point.com> domain name November 22, 1994. Respondent is currently not using the domain name.
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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complaint has not established rights in
the POINT 2 POINT mark pursuant to Policy ¶ 4(a)(i). The record indicates that Complainant has filed a service mark
registration. The Panel finds that a
pending trademark or service mark registration, without more, is insufficient
to support a finding of rights in a mark under Policy ¶ 4(a)(i). See Wave Indus., Inc. v. Angler Supply,
FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s
pending trademark applications did not establish rights because “an application
for [a] mark is not per se sufficient to establish rights [in] a
trademark for the purposes of the [Policy]”); 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.”).
Complainant has not demonstrated or even alleged that it has
common law rights in the POINT 2 POINT mark.
See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum
May 19, 2003) (holding that prior UDRP
precedent did not support a finding of common law rights in a mark in lieu of
any supporting evidence, statements or proof (e.g., business sales figures,
revenues, advertising expenditures, number of consumers served, trademark
applications or intent-to-use applications); Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284
(eResolution Sept. 9, 2000) (finding that marks classified as descriptive
cannot be protected unless secondary meaning is proven and to establish
secondary meaning the complainant must show that the public identifies the source
of the product rather than the product itself).
Even if Complainant had registered the mark, Complainant’s rights in the POINT 2 POINT mark would relate back to the filing date of September 6, 2005. The Panel takes notice that the registration of the disputed domain name predates Complainant’s service mark filing date by nine years.
The Panel holds, in the alternative, that Complainant did
not demonstrate rights in the POINT 2 POINT mark pursuant to Policy ¶ 4(a)(i)
because the domain name registration predates the filing date of the service
mark. See Transpark
LLC v. Network Adm’r, FA 135602 (Nat. Arb.
Forum Jan. 21, 2003) (finding that the complainant failed to satisfy Policy ¶
4(a)(i) because the respondent's domain name registration predated the
complainant’s rights in its mark by nearly two years); Trujillo v. 1Soft
Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have
not shown that their rights pre-date Registrant's domain name, Complainants
have not satisfied paragraph 4(a)(i) of the Policy.”).
The Panel finds that Complainant
failed to establish Policy ¶ 4(a)(i).
Because Complaint did not
establish the first element of the Policy, the Panel finds it unnecessary to
continue the relevant analysis.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 24, 2006.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum