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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pettinaro Construction, Inc. v. Ralph Phillips/Internet Business Systems
Case No. D2001-0106
1. The Parties
The Complainant in this administrative proceeding is Pettinaro Construction, Inc., a Delaware Corporation, with a principal place of business at 234 north James Street, Newport, DE 19804, United States of America. The Respondent is Ralph Phillips/Internet Business Systems, with an address of 821 Woodchuck Pl., Bear, DE 19701, United States of America.
2. The Domain Name and Registrar
This dispute concerns the domain names <pettinaro.com> and <pettinaro.net> (each a "Domain Name" and collectively the "Domain Names"). The registrar with whom the Domain Names are registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, United States of America, (the "Registrar"). The Panel finds that the ICANN Uniform Domain Name Disputed Resolution Policy (the "Policy") is the Policy applicable to this dispute.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 18, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated January 23, 2001. The Complaint was amended on February 7, 2001.
A Formal Requirements Compliance Checklist (the "Checklist") was completed by the assigned WIPO Center Case Administrator on February 21, 2001. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy (the "WIPO Supplemental Rules"). According to the Checklist, the required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
An Amended Complaint was submitted to the WIPO Center on February 8, 2001. No formal deficiencies having been recorded, on February 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of March 12, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail, by facsimile and by express courier. Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On March 13, 2001, the Respondent submitted a Response to the WIPO Center. On March 14, 2001, the WIPO Center transmitted to the parties an Acknowledgment of Receipt of Response.
Having received Thomas D. Halket’s Statement of Acceptance and Declaration of Impartiality and Independence, on April 2, 2001, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision date was set for April 17, 2001. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
4. Factual Background
The Panel finds that the following facts appear from the Complaint and Response and documents submitted with the Complaint and Response.
The service mark on which the Complaint is based, PETTINARO, is a service mark of Complainant. Complainant was founded in 1964, and has been in continuous operation since then. Services provided by Complainant include real estate development, construction management and commercial construction in the state of Delaware and portions of the state of Maryland, New Jersey and Pennsylvania. Complainant is now one of the larger real estate developers and construction management businesses in its market area. Respondent registered the Domain Names in or about February, 2000.
The Complainant alleges that Respondent does not have the permission of the Complainant to use the name or mark "PETTINARO", that neither Respondent nor its administrative contact, Mr. Ralph Phillips, is related in any way to the Pettinaro family, and that Respondent does not operate any type of commercial enterprise that uses the Domain Names as legitimate service or trademarks. In response, Respondent contends that its use of the Domain Names was the mere selection of an available ethnic surname that would reflect an Italian flair for its proposed e-tail operation. He alleges that he registered the Domain Names when he and his wife decided to give thought to selling her business in the shipping center owned by Complainant and to opening up a retail operation on the Web to sell Italian accessories for women.
On September 20, 2000, Respondent sent a letter to Mr. Gregory Pettinaro, Vice President of Complainant, either offering to sell either of the Domain Names for $125,000, or both for $200,000. There is a dispute as to whether this letter was in response to an invitation from the Complainant. There is no dispute, however that Respondent previously attempted to sell the Domain Names via "Ebay" and "Yahoo" auctions. Respondent also offered in a letter dated November 6, 2000, to exchange one of the Domain Names as payment for a 27 month lease on a property at 46 Fox Hunt Drive. This apparently is owned by Complainant and leased to Respondent’s wife, presumably as the retail store previously mentioned.
5. Parties’ Contentions
Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the service mark and trademark registered and used by Complainant, that the Respondent has no rights or legitimate interests in respect to the domain name at issue, and that the Respondent has registered and is using the domain name at issue in bad faith.
Respondent has contested each of these the allegations of the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." Since both parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: "(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no legitimate interests in respect of the domain name; and, (iii) the domain name has been registered and used in bad faith."
The Panel finds that the Domain Names violate Paragraph 4(a)(ii) and (iii) of the Policy. They violate Paragraph 4(a)(ii) of the Policy in that (i) Respondent has not received any permission or consent to use the service mark from Complainant; (ii) other than the registration of the Domain Names, Respondent has not used the Domain Names in any site or business; and (iii) Respondent is not (either as an individual, business or other organization) commonly known by the name Pettinaro. The Panel has carefully considered the Respondent’s contentions regarding his proposed use of the Domain Names. Given that Respondent had made no such use in the approximately one year since registration and that the Domain Names are in all material respects the name of his wife’s landlord, the Panel agrees with Complainant on this point.
Paragraph 4(b) of the Policy provides guidance on Paragraph 4(a)(iii) of the Policy. It provides:
"b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
While the facts are not entirely clear that Paragraph (4b)(i) has been violated by Respondent, the Panel is inclined to agree with Complainant that the Domain Names violated paragraph 4(a)(iii) by virtue of Respondent’s attempt to sell them to Complainant and the fact that Complainant was well known to Respondent prior to the registration of the Domain Names. The Panel therefore concludes that the Domain Names violate Paragraph 4(a)(iii) of the Policy.
Whether the Domain Names violate Paragraph 4(a)(i) is a much closer call. The Panel agrees with Complainant that under United States trademark law, personal names can be entitled to protection as trade or service marks when they have acquired distinctiveness or secondary meaning. See, e.g., Larsen v. Terk Technologies Corp., 151 F.3rd 140 (4th Cir. 1998). In this case, Complainant has operated under the PETTINARO name for over 36 years, well beyond the five years required by the United States Patent and Trademark Office to establish a presumption of distinctiveness. See T.M.E.P. § 1212.05(a) The PETTINARO mark would therefore usually be entitled to a presumption that it has acquired secondary meaning, and is, therefore, entitled to protection. But this protection is limited to the scope of use of the mark, both in terms of product and geography. And the Panel notes that the Domain Names consist only of a surname and not a full name such as in the Larsen care.
Normally, under these circumstances the Panel would be concerned that a ruling here for the Complainant could be based upon a broader interpretation of Complainant’s rights than was appropriate. For example, the Panel would be inclined to view this case differently if the name in question were a more common surname or if there was any significant evidence that Respondent had a legitimate interest in the Domain Names or if there was no prior actual notice to Respondent of Complainant’s use of the mark. However, none of these factors are present here.
The Panel is also aware of 15 U.S.C. § 1129(1)(A) which provides that "Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person." While such a person could, it is true, avoid liability, if it registered the domain name in question in good faith and the name is used in connection with various copyrighted works (15 U.S.C. § 1129(1)(B), those facts are not present here.
Accordingly, the Panel finds that the Domain Names also violate Paragraph 4(a)(i) of the Policy and therefore that Respondent’s ownership of the Domain Names violates Paragraph 4(a) of the Policy.
For all of the foregoing reasons, the Panel decides that the Domain Names registered by Respondent are identical or confusingly similar to the service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent’s Domain Names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(a) of the Policy, the Panel requires that the registration of the Domain Names <pettinaro.com> and <pettinaro.net> be transferred to the Complainant.
Thomas D. Halket
Dated: April 10, 2001