PK Information Systems, dba St Pete Software v. Kevin Kurpe
Claim Number: FA1903001835258
Complainant is PK Information Systems, dba St Pete Software (“Complainant”), represented by D. Rand Peacock Jr. of The Law Office of Rand Peacock P.A., Florida, USA. Respondent is Kevin Kurpe (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stpetesoftware.com> and <saintpetersburgsoftware.com> (the “Disputed Domain Names”), registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David H. Bernstein as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 21, 2019; the Forum received payment on March 21, 2019.
On March 25, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the Disputed Domain Names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 28, 2019, the Forum notified Complainant of a deficiency and required that Complainant rectify the issue within five calendar days. Complainant complied and submitted an amended Complaint to the Forum on March 29, 2019.
On April 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2019 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@stpetesoftware.com, postmaster@saintpetersburgsoftware.com. Also on April 1, 2019, 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 April 22, 2019.
Complainant filed an Additional Submission to the Forum on April 29, 2019.
On April 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein as Panelist.
Respondent filed an Additional Submission on May 1, 2019.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 names be transferred from Respondent to Complainant.
This proceeding involves an employment relationship that has gone sour.
Respondent was employed as an Application Architect at Complainant as of October 5, 2015. On April 28, 2018, while Respondent was still in Complainant’s employ, Respondent purchased the Disputed Domain Names (as well as a third domain name which is not at issue in this dispute, <stpetesoft.com>). The Disputed Domain Names were purchased at the direction of Complainant. Specifically, Respondent had a conversation with Justin Ruzinok of Complainant in which Respondent indicated that he could acquire these domain names if Complainant would seriously consider the idea of changing its name as part of a rebranding of the company. Complainant responded in writing, directing Respondent to “[b]uy them.” Amend. Compl Annex 5.
The following month, Respondent indicated to branding experts with whom Respondent was in touch that, due to cost, Complainant was not ready to proceed with rebranding at that time. Amend. Compl. Annex 4.
Respondent‘s employment with Complainant was terminated as of October 11, 2018. Four months later, in February 2019, Complainant attempted to use the <stpetesoftware.com> domain name, only to realize that it did not own the registration because Respondent had registered the domain name in his own name rather than in the name of Complainant. Complainant requested that Respondent transfer the name to Complainant. Respondent refused.
On March 20, 2019, Complainant registered the trademark ST PETE SOFTWARE through the Florida State Division of Corporations. See T19000000304; see also Amend. Compl. Annex 1.
A. Complainant
Complainant provides software development and software consultations in St. Petersburg, Florida. Complainant operates as PK Information Systems and has intermittently considered rebranding the company to St Pete Software since April 2018. Respondent, a former employee of Complainant, was told to purchase the disputed domain names for Complainant as part of Complainant’s rebranding efforts. See Amend. Compl. Annex 5. The <stpetesoftware.com> and <saintpetersburgsoftware.com> domain names were both registered by Respondent on April 28, 2018.
With respect to the three UDRP elements, Complainant first asserts that Respondent’s <stpetesoftware.com> domain name is confusingly similar to Complainant’s ST PETE SOFTWARE state trademark registration as it includes the entire mark, deleting spaces, adds words, and a “.com” generic top-level domain (“gTLD”).
Regarding the second element, Complainant alleges that Respondent lacks rights and legitimate interests in the <stpetesoftware.com> domain name because Respondent is not commonly known by the name St. Pete Software. Additionally, Complainant asserts, Respondent has not used the <stpetesoftware.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is also not authorized to use Complainant’s mark.
With respect to the third element, Complainant argues that Respondent registered and used the <stpetesoftware.com> domain name in bad faith. Respondent was a former employee for Complainant, tasked with obtaining the <stpetesoftware.com> domain name for Complainant’s possible future use. Respondent improperly has refused to transfer control of the domain name back to Complainant. Further, Respondent has failed to actively use the <stpetesoftware.com> domain name. Finally, Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the ST PETE SOFTWARE mark prior to registering the <stpetesoftware.com> domain name.
Although Complainant does not make separate allegations with respect to the <saintpetersburgsoftware.com> domain name, the Panel understands Complainant to be making the same allegations with respect to that domain name as well.
B. Respondent
Respondent has submitted an informal Response, by email, which the Panel has considered. Respondent’s main defense is that Complainant consistently rejected Respondent’s ideas concerning rebranding. Respondent argues that he worked on a possible rebranding project on his personal time, not on company time, and that he purchased the Disputed Domain Names using personal funds. Respondent further asserts that Complainant did not begin using the ST PETE SOFTWARE mark in April 2018, and that, as recently as February 5, 2019, Complainant continued to reject the idea of rebranding the company to St. Pete Software. See Resp. Annex 1. From this, the Panel surmises that Respondent is arguing that Complainant lacks rights in the Disputed Domain Names or the underlying trademark.
Respondent indicated in his Response that, if Complainant wants to purchase the Disputed Domain Names, it can make an offer. The record does not indicate whether Complainant has accepted this invitation to make an offer to purchase the Disputed Domain Names.
C. Additional Submissions
In its Additional Submission, Complainant reiterates that Respondent was acting as its paid employee, using Complainant’s marketing and communication tools, and purchased the Disputed Domain Names at Complainant’s direction and for Complainant’s benefit. Complainant also highlights that Respondent was aware that Complainant was postponing, not abandoning, its plan to rebrand the company to the St. Pete Software name.
In its Additional Submission, Respondent argues that Complainant rejected the rebrand idea and now wants to unfairly obtain the disputed domain names from Respondent.
Although Supplemental Rule 7 provides a mechanism for the filing of supplemental submissions, under the Rules, the Panel has the discretion to decide whether to accept additional submissions. See generally Bar Products.com, Inc. v. RegisterFly.com, FA 829161 (Forum Jan. 9, 2007) (declining to consider Complainant's reply because it adds nothing of substance to the record, and does not address any arguments of Respondent that could not have been anticipated by the Complainant). Here, both parties’ additional submissions simply reargue the same points, and respond to arguments that were entirely predictable. As such, the Panel has decided to disregard the parties’ additional submissions (though the Panel notes that, even if it had considered the assertions in the additional submissions, it would not have changed the outcome of this proceeding).
The Panel finds that the disputed domain names are identical and confusingly similar to Complainant’s Florida State registration, but that Complainant has failed to prove that it actually has trademark rights in that name. As such, the Panel finds that Complainant has not satisfied the first factor. The Panel notes, however, that Respondent’s conduct hardly appears to have been in good faith – rather, based on the record submitted, Respondent appears to have violated his obligations to his employer by registering the Disputed Domain Names in his own name and by seeking to sell the Disputed Domain Names to the Complainant for a premium over Respondent’s registration costs.
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.
As a threshold matter, as this Panel has noted before, the UDRP is not designed to address all domain name disputes. Rather, the UDRP was designed as a cost-efficient, expeditious process for resolving a particular type of domain name misconduct known as abusive cybersquatting, in which a party, in bad faith, registers and uses a domain name based on the value of the corresponding trademark. See, e.g. Cincy Cuts, LLC v. Donley, Case No. FA 1809001806333 (Forum Nov. 3, 2018); Thread.com, LLC v. Poploff, WIPO Case No. D2000-1470. The UDRP is poorly suited for resolving business disputes that are based on contractual, employment, or other disputes that do not constitute cybersquatting.
For these reasons, this Panel cannot adjudicate the true dispute between these parties, which turns on whether Respondent improperly registered the Disputed Domain Names in his own name, and whether Respondent is now attempting to extort Complainant, perhaps in retribution for the parties’ failed employment relationship. Although those issues may well be ripe for adjudication in another forum, this Panel is empowered only to decide whether Respondent’s conduct constitutes cybersquatting and warrants transfer under the UDRP. As discussed below, the Panel is constrained to conclude that the Respondent’s conduct, however inappropriate it may be, is outside of the UDRP. That does not, however, mean that Complainant is barred from seeking appropriate relief in another forum.
A threshold issue in any UDRP proceeding is whether the Complainant has established trademark rights that gives the Complainant standing to file a UDRP complaint.
Complainant claims trademark rights based on a Florida state trademark registration for ST PETE SOFTWARE. As numerous Panels have held, a state trademark registration is not itself sufficient proof of “rights in a trademark” for purposes of the UDRP because state trademark applications typically are not examined on absolute grounds. In particular, in granting a state trademark registration, the Florida Department of State typically does not consider whether the applied-for term is generic or merely descriptive; rather, the Department of State will typically issue the registration as long as there are no identical registrations on the State registry. See generally Town of Easton Connecticut v. Lightning PC Inc., FA 0808001220202 (Forum Oct. 12, 2008) (explaining that no deference is due to state registrations because they are “usually granted automatically or only after a cursory review for exact matches on the State’s trademark registry.”)
In order to show that it has rights in the trademark ST PETE SOFTWARE, Complainant would need to allege facts showing that it has used the mark in commerce in connection with the sale of goods or services, and that the name is neither generic nor merely descriptive. Unfortunately, the Complainant has not included any such allegations. Not only has Complainant failed to allege any facts showing that it has actually used the mark in commerce, but also, the mark appears to be highly descriptive for a software company located in St. Petersburg, Florida (which commonly is referred to as St. Pete). Indeed, a search on the Google search engine for “ST PETE SOFTWARE” results in a page listing other tech companies in the greater St. Petersburg, Florida area; a Yelp.com posting for the best software development companies in the area; Indeed.com job postings; and a number of other general listings.
If, as the Panel believes to be the case, the name is descriptive, then the only way that Complainant could show trademark rights would be through evidence that the name has acquired distinctiveness through secondary meaning. Lacamas Shores Homeowners Association v. Arnold, WIPO Case No. D2017-0855. Complainant has not submitted any such evidence. See Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (factors that can help establish secondary meaning include the length, manner, and extent of use and advertising of the mark). Although the evidence does show that Complainant was interested in the mark since at least April 2018, Complainant has failed to allege any use of the mark sufficient to establish trademark rights, nor did Complainant apply for a federal intent-to-use trademark application.
As Complainant has failed to prove that it has trademark rights in ST PETE SOFTWARE, it has not met its burden of proof as to the first element. For this reason alone, the Complaint must fail.
In light of the Panel’s finding that there are no trademark rights, the Panel need not reach the remaining two elements. Nevertheless, because issuing a complete decision may be of assistance to the parties as they consider alternative ways of resolving their dispute, the Panel will offer brief comments on the second and third factors as well.
The documentary evidence submitted by the parties establishes that Complainant specifically directed its employee, Respondent, to “buy” the Disputed Domain Names. As such, it is apparent that the Disputed Domain Names were supposed to be purchased in the name of Complainant and for the Complainant’s benefit. By registering these domain names in his own name and then refusing to transfer them to Complainant, Respondent has violated his obligations to his employer. On these facts, the Panel rejects Respondent’s argument that he has rights or legitimate interests in the Disputed Domain Names. See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Forum Mar. 14, 2006) (respondent, the Chief Financial Officer of complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark).
Although Complainant may lack existing trademark rights, it is clear that Complainant has long contemplated adopting the trademark ST PETE SOFTWARE, and its registration with the Florida Department of State is further evidence of its intentions in that regard. Respondent has conceded that he was well aware of Complainant’s consideration of using this name. Respondent’s registration of the Disputed Domain Names in his own name, and his refusal to transfer those domain names to the Complainant, constitutes bad faith registration and use. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, Section 3.8.2 (“where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name . . . further to the respondent’s insider knowledge (e.g., a former employee). . . .”); Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (Forum Sept. 19, 2006).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <stpetesoftware.com> and <saintpetersburgsoftware.com> domain names REMAIN with Respondent.
David H. Bernstein Panelist
Dated: May 13, 2019
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