Petroleum Heat and Power Co., Inc. v. Hassan Hamze
Claim Number: FA1507001627797
Complainant is Petroleum Heat and Power Co., Inc. (“Complainant”), represented by Ian T. Clarke-Fisher of Robinson & Cole LLP, New York, USA. Respondent is Hassan Hamze (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <petro-the-scammer.com>, registered with GoDaddy.com, LLC.
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.
ROBERT T. PFEUFFER, Senior District Judge, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 7, 2015; The Forum received payment on July 9, 2015.
On July 8, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <petro-the-scammer.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 July 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2015 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@petro-the-scammer.com. Also on July 10, 2015, 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 July 13, 2015.
On, July 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed ROBERT T. PFEUFFER as Panelist.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the PETRO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 538,181, registered Feb. 20, 1951). The mark is used in connection with the sale of fuel oils for heating purposes. While Complainant does not put forth arguments as to whether the <petro-the-scammer.com> domain name is confusingly similar to its PETRO mark, the domain name contains the entire mark and differs by the addition of hyphens, the terms “the” and “scammer,” as well as the gTLD “.com.”
Respondent does not have rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant or received any type of authorization from Complainant to register a domain name using its PETRO mark. Further, the domain name resolves to a webpage wherein Respondent advertises competing products.
Respondent has engaged in bad faith registration and use. Respondent is
attempting to commercially profit from a likelihood of confusion by using a
confusingly similar domain name to redirect Internet users to websites that
compete with Complainant.
B. Respondent
Respondent does not contest Complainant’s rights in the PETRO mark. Respondent does claim that no confusing similarity exists because Complainant’s registered mark is in stylized form, which negates a finding of confusing similarity with a corresponding domain name.
Respondent has rights or legitimate interests because the domain name is being used to operate a complaint website, which is well within Respondent’s First Amendment right to free speech. Respondent is a former customer of Complainant that was treated poorly by Complainant, so it created the disputed domain name in order to tell its personal story of its dealings with Complainant and to educate future customers of Complainant.
Respondent has not acted in bad faith because the website is used to exercise its free speech rights. Respondent has not fully finished its website.
C. Additional Submissions
None
Complaint has not discharged its burden of proof to support a favorable finding.
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.
Complainant does not put forth arguments as to whether the <petro-the-scammer.com> domain name is confusingly similar to its PETRO mark. Many other companies have adopted and are using the PETRO mark in many different ways as shown by the evidence provided by Respondent.
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), therefore the Panel 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)).
Respondent does not contest Complainant’s rights in the PETRO mark. Respondent does claim that no confusing similarity exists because Complainant’s registered mark are in stylized form, which negates a finding of confusing similarity with a corresponding domain name. Certain panels in the past have issued findings that align with Respondent’s argument. See FRH Freies Rechenzerntrum Heiberufe v. Ingenieurburo FRH Stuttgard, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that the complainant had not proven by a preponderance of the evidence that the <frh.biz> domain name was identical to the complainant’s FRH mark because the complainant’s “registrations are not for ‘FRH’ alone, but . . . for stylized versions of the letters ‘FRH’ accompanied by the [complainant’s] name”).
The Panel considered that Respondent’s disputed domain name purposefully distinguishes itself as a critical website of Complainant. The Panel notes the holding in Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000), in which the panel found that “in domain name disputes it is critical whether the accused domain name itself signifies parodic or critical purposes, as opposed to imitation of trademark.” The Panel finds that Respondent’s disputed domain name is not confusingly similar to Complainant’s PETRO mark under Policy ¶ 4(a)(i).
Respondent argues that it is using the domain name to operate a complaint website about Respondent. The Panel notes that in its response, Respondent has gone to great lengths to express the displeasure it feels towards Complainant. The Panel also notes that the domain name does appear to operate as a complaint website. Where respondents have used a domain name that was not confusingly similar in order to exercise their First Amendment rights, prior panels have granted said respondents right under Policy ¶ 4(c)(iii). See Homer TLC, Inc. v. GreenPeople, FA 550345 (Nat. Arb. Forum Oct. 25, 2005) (holding that the respondent’s use of the <homedepotsucks.com> domain name as a protest site was a legitimate noncommercial or fair use). The Panel finds that Respondent is exercising its free speech rights while using a domain name that is not confusingly similar.
Not Addressed.
Not Addressed.
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 <petro-the-scammer.com> domain name REMAIN WITH Respondent.
ROBERT T. PFEUFFEER, Panelist
Dated: JULY 27, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page