Paul Petrovich and Petrovich Development
Company v. Jazz Melody
Claim Number: FA0406000290894
PARTIES
Complainant
is Paul Petrovich and Petrovich Development Company (“Complainant”), represented by Scott M. Hervey of Weintraub Genshlea
Chediak Sproul Law Corporation,
400 Capitol Mall, 11th Floor, Sacramento, CA 95814. Respondent is Jazz Melody (“Respondent”),
P.O. Box 253, Davis, CA 95617.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <paulpetrovich.com>,
registered with Core.
PANEL
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.
Paul
M. DeCicco as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 29, 2004; the Forum received a hard copy of the
Complaint on July 6, 2004.
On
July 2, 2004, Core confirmed by e-mail to the Forum that the domain name <paulpetrovich.com> is registered
with Core and that Respondent is the current registrant of the name. Core has verified that Respondent is bound
by the Core 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
July 12, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 2,
2004 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@paulpetrovich.com by e-mail.
A
timely Response was received and determined to be complete on August 12, 2004.
A
timely Additional Submission was received from Complainant on August 17, 2004.
A
timely Additional Submission was received from Respondent on August 23, 2004.
On August 24, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Paul M. DeCicco
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends as follows:
Paul
Petrovich has been a significant presence in the real estate industry in the
northern California counties of Sacramento, Yolo and Placer counties for over
22 years. Petrovich and his companies are, without question, well-recognized
figures in the real estate industry in the Sacramento and surrounding counties.
Complainants
have invested significant resources in the marks PAUL PETROVICH and PETROVICH
DEVELOPMENT COMPANY. Complainants have
developed a logo used in connection with their marks and have implemented a
fairly detailed website.
In
1998 Respondent Barry Hinesley entered into a five (5) year lease for space in
the Center to run a shoe store called Davis Footwear. At the time Hinesley entered into the lease, the Center was owned
by another company owned by Complainant Paul Petrovich, Oakshade Town Center,
LLC (“Oakshade”). In April 2000, Hinesley defaulted under the lease when he
stopped paying rent and closed his shop. On September 24, 1999, Hinesley sued Oakshade for fraud in the
inducement of the lease. Oakshade
cross-complained for breach of contract in order to collect unpaid rent. Hinesley v. Oakshade Town Center, Yolo
County Superior Court Case No. CV99-001491.
On
December 13, 2001, the court granted Oakshade’s motion for summary judgment and
dismissed Hinesley’s entire complaint. The court also granted summary
adjudication in favor of Oakshade on its cross-complaint, but left the issue of
mitigation of damages to be tried to the jury.
The
case of mitigation of damages was tried to a jury during the week of October
27, 2003. After the jury trial, the
court entered a judgment in favor of Oakshade in the amount of $64,089.27. The court thereafter amended the judgment
awarding attorney fees and costs to Oakshade. The total judgment of $158,549.42
was entered by the court against Hinesley on January 6, 2004. In February 2004 counsel for Oakshade took
Hinesley’s debtor exam and subsequently put a lien on Hinesley’s house for the
full amount. Hinesley has since filed
an appeal.
Complainants
have been doing business using the marks PAUL PETROVICH and PETROVICH
DEVELOPMENT COMPANY. Complainants have
invested a great deal of time and money in marketing, advertising and promoting
their services to the public under these trademarks such that consumers and the
general public have come to associate the trademark PAUL PETROVICH with the
services offered by him and his companies.
Paul
Petrovich has been doing business in the real estate industry in the Sacramento
region for over 22 years and has used the mark PAUL PETROVICH for that whole
time. Petrovich and his company are
“well known” in the area as real estate industry professionals. Petrovich has invested a significant amount
of time and money marketing his services and has gained a reputation in the
community. As a result, people
naturally associate his name and mark PAUL PETROVICH with the various real
estate services he provides.
The
domain name <paulpetrovich.com> is identical to the trademark PAUL
PETROVICH in which Complainants have acquired common law rights. In addition, the domain name is confusingly
similar to Complainants’ mark PETROVICH DEVELOPMENT COMPANY.
Respondent
does not use the Domain Name in connection with a bona fide offering of goods
or services and has not acquired any common law trademark rights in the Domain
Name or marks similar thereto.
The
registration information for the Domain Name indicates that the Domain Name was
registered no earlier than November 11, 2003.
Complainant
acquired common law trademark rights in their marks as early as 1982,
significantly earlier than Respondent’s date of registration of the Domain
Name. While the Respondent may enjoy a
constitutionally protected right to use Complainants’ mark within the content
of its website (to the extent Respondent does not go astray of the laws
concerning defamation), the Respondent’s use of the mark in the Domain Name is
not protected.
Complainants
are not attempting to stifle Respondent’s comments or criticism concerning
itself or its practices. Complainants
are merely attempting to prohibit Respondent from using the Domain Name to
confuse Internet users about the sponsorship or relationship of Respondent’s
website, or from attracting people to Respondent’s cause through
confusion. Respondent’s use of
Complainants’ mark in the Domain Name is akin to Respondent mailing a letter
with Complainants’ name and return address on the envelope. The recipient of the letter will initially
believe that the letter came from Complainants and may not discover the
letter’s true origin until the letter is read.
The Domain Name is a source identifier and is not used by Respondent as
part of a communicative message.
Therefore, the First Amendment does not protect Respondent’s use of
Complainants’ marks in the Domain Name.
The
use of Complainants’ service marks in the Domain Name confuses consumers and
diverts their attention to Respondent’s site instead. The Domain Name is not used as part of a communicative message
and does not fit what panels have allowed for parody/gripe sites. Based on these facts, Respondent’s claim of
parody must fail.
In
the instant case, there are three pieces of evidence, which show that
Respondent registered and is using the Domain Name in bad faith.
First,
Respondent “registered the domain primarily for the purpose of disrupting a
competitor” as provided in paragraph 4(b)(iii) of the Policy.
Complainants
and Respondent are certainly opposed to one another. As discussed earlier, one of Complainants’ affiliated companies
sued and obtained a judgment against Respondent for an amount in excess of one
hundred sixty thousand dollars.
The
evidence shows that Respondent registered and is using the Domain Name as a
tool for revenge and that this constitutes the second showing of bad
faith. As discussed above, Respondent
and Complainants were recently embroiled in a lawsuit. Respondent sued Complainants for fraud and
Complainants cross-complained for breach of contract. The court dismissed all of Respondent’s claims and found in favor
of Complainants on the contract claim.
Respondent registered the Domain Name on November 2, 2003 and launched
its website on or about May 24, 2004.
This occurred only after a sizable judgment was entered against him on
October 27, 2003 and after Complainants filed a lien for the full amount of the
judgment against Respondent’s house in February 2004. Respondent was motivated by pure revenge and nothing more.
Finally,
Respondent provided false contact information.
Respondent’s name is not Jazz Melody and he does not live at 555 Music
Circle in Tunesville, CA (because there is no such town in California). And his phone number is not 5555555555. Providing false contact information, even
though it is not specifically enumerated in the Policy, may form the basis for
a finding of bad faith registration and use.
B.
Respondent
Respondent
contends as follows:
Complainants
have not registered any companies or entities with the State of California
using the name “Paul Petrovich.” Nor has Complainant registered a trademark or
service mark with the state of California. Respondent verified on August 11,
2004, with the California Secretary of State office, that “Paul Petrovich” can
be registered as a service mark.
“Paul
Petrovich” is not a service mark, rather the name of an owner of multiple
companies in which few have the surname “Petrovich,” but most do not. Complainant has willfully chosen not to
develop the service mark “Paul Petrovich” in association with his companies.
This is evidenced by the numerous LLC, LLP and Corporation registrations, in
addition to all printed material provided in the Complaint, that intentionally
do not promote the name “Paul Petrovich”.
Paul
Petrovich is a name used frequently throughout the world. Respondent would agree it is less common
than Paul Smith, however, it is not unique
The
domain that is challenged by Complainant is <paulpetrovich.com>
not <petrovichdevelopment.com>.
Complainant tries to commingle the two entities together in the
Complaint in an effort to establish cohesion or singularity for service mark
authority. Clearly, the company
“Petrovich Development” is the entity, which has been developed to conduct
Complainant’s business, not the name Paul Petrovich.
With
regard to Respondent’s rights and interest in the domain name, Respondent
concedes in not having met this test under Policy 4(c)(i) or 4(c)(ii). However,
Respondent alleges that under Policy 4(c)(iii) Respondent has met this test by
three factors.
Complainants
have not met the threshold for qualifying a service mark.
Respondent’s
domain name has no provision for commercial use.
Respondent’s
domain name does not divert consumers in an effort to tarnish Complainant. Respondent’s domain name provides objective
“facts,” albeit through a light-hearted setting, and allows visitors to develop
their own independent conclusions. The
Complaint confirms Respondent’s claim by stating “First, this claim should be
rejected because a cursory review of Respondent’s website reveals that it is
not a gripe/complaint site.”
Complainants
have not provided any qualitative evidence that a common law trademark or
service mark has been obtained for the name “Paul Petrovich”.
Respondent
did not register the domain name <paulpetrovich.com> to in turn
sell, rent or transfer to either Complainant, Complainant’s competitors or
anyone else. Complainant has not
provided any evidence in its lengthy Complaint to support Respondent ever had
any intention of transferring the domain name to any party for any reason or
for any financial gain. The reason
Complainants do not provide any evidence of this matter is simply because it
does not exist.
Complainants
have not provided any evidence that a bone fide service mark has been
established. To the contrary,
considering the current availability of such a service mark, and the minor
expense to obtain same, Complainants demonstrate a noticeable lack of concern by
not taking the minimal steps to protect “Paul Petrovich” as a mark. As previously stated in the Response –
Complainants have willfully chosen to build their company reputation on many
different storefronts – none of which include the name “Paul Petrovich.” Complainants do not overcome their burden of
proof for this section.
Respondent
has registered <paulpetrovich.com> only and has no desire to
register any other variation of this domain name.
Respondent
and Complainants are not competitors in any manner in which common sense would
translate, nor as intended by ICAAN – UDRP.
Complainants have provided no evidence of any competitive relationship
that withstands the true definition or intent of the Policy. Complainants’ attempt to swivel some form of
competitive link through sporadic case reference is not founded. Respondent provides alternative fuel designs
for power generation in countries that have regions without proper electrical
infrastructure such as remote areas of China.
Complainants build Safeway and Rite Aid stores and other commercial
sites. Complainants do not overcome
their burden of proof for this section
Complainants
have provided no evidence to support that Respondent has engaged in any
activities in Policy ¶ 4(b). There are
no commercial services or products offered or available at <paulpetrovich.com>. Complainants do not overcome their burden of
proof for this section
C.
Additional Submissions
In
his additional submission Complainant re-asserts that he has trademark rights
in PAUL PETROVICH and the following:
Respondent
should not be entitled to use the naked <trademark.com> as a domain name
for a website devoted to proving “objective facts” about Complainant and its
products or practices. The Internet
public, when seeking out Complainant and its products and services, will be
surprised and detained and websites that criticize and protest but give no hint
at what they are about until they are opened.
Respondent’s
use of the domain name is not protected as a parody. A parody “depends on a lack of confusion to make its point” and
“must convey two simultaneous--and contradictory--messages: that it is the
original, but also that it is not the original and is instead a parody. (Citing Hormel Foods Corp v. Jim Henson
Productions, 72 F.3d 497, 503 (2nd Cir. 1996)).
Complainant
is not attempting to prevent Respondent from utilizing Complainant’s marks
within the content of Respondent’s website in this action.
Respondent
has prevented Complainant from reflecting its mark in a corresponding domain
name. Respondent’s argument that
because there are other gTLDs in which Complainant could register the mark –
should be rejected by the panel.
In
Respondent’s additional response he, inter alia, alleges the following:
Respondent
claims that Complainant “commingles Petrovich Development Company” and “Paul
Petrovich” in an effort to establish a link to a common law mark and claims
that “Petrovich Development Company” is not in dispute.
Respond
asserts that “Paul Petrovich” is not registered because he promotes his
business under the corporate name.
Respondent
claims that his use of the domain name is a legitimate noncommercial use
because Complainant has no registration or trademark rights in the domain name.
Respondent reasserts that he does not use the domain name and website as a
protest site.
Respondent
claims that Complainant is not of sufficient notoriety to make a comparison
between Complainant and the cases concerning famous artists.
Respondent
argues that Internet surfers sophisticated enough to know how to find a correct
URL would not likely search for a company’s website by addressing the name of
such company’s president and therefore the use of the domain name does not
trick Internet users away from Complainants’ company’s website to Respondent’s
website.
FINDINGS
Complainants have colorable common law
trademark rights in the mark PAUL PETROVICH and the mark PETROVICH DEVELOPMENT
COMPANY.
Complainants and Respondent are
competitors since their interests are opposed and they are actual, if not
nominal, adversaries in a commercial litigation.
After Complainants acquired trademark
rights in the marks, Respondent registered the domain name <paulpetrovich.com>
and used it for a website. Respondent initially provided false contact
information in registering the at-issue domain name.
The website sponsors information relating
to the Petrovich Development Company. The website presents factual material in
a critical context.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 and is being used in bad faith.
In its Final Report on the Second WIPO Domain Name Process, dated
September 3, 2001, WIPO carefully considered the extent the UDRP should protect
personal names. The report indicates
that protection under the Policy should be limited to commercially used
personal names. WIPO, Second Process Report
http://arbiter.wipo.int/processes/process2/report/html/report.html#5 (September 5, 2004). The report goes on to
state:
The UDRP does not require that a Complainant must hold rights
specifically in a registered trademark or service mark. Instead, it provides
only that there must be 'a trademark or service mark in which the Complainant
has rights,' without specifying how these rights are acquired.
Id. ¶ 182.
It is a basic rule of service mark law in the United States that
personal names (combining a first name and surname) are not inherently
distinctive. Therefore, to establish
common law service mark rights in a personal name, it is necessary to show that
the name has acquired secondary meaning among consumers in the relevant market;
that is, to show that consumers associate the name with a specific provider of
services.
Complainants have provided information and materials that support
their assertion of having established secondary meaning in PAUL PETROVICH. The material demonstrates that consumers
associate the name with providing real estate services. As both an individual and through his own
company, Complainants have been a significant presence in the real estate industry
for more than 22 years in several northern California counties, including
Sacramento. As a company, Complainants
have developed projects for nationally known companies such as Rite Aid,
Safeway, Office Max, Michael’s Crafts and the State of California. Importantly, numerous published news
articles were presented as Exhibits to the Complaint that illustrated the
commercial use of the PAUL PETROVICH name, and linkage between the PAUL
PETROVICH mark and real estate-related services.
However, perhaps more telling of Complainants’ trademark rights is
Respondent’s behavior. Respondent’s act of registering and using Complainant
Petrovich’s name and the material and links posted at the <paulpetrovich.com>
website, in light of the adverse commercial relationship between the parties,
together show that Respondent identifies the goods and services of PAUL
PETROVICH DEVELOPMENT with the PAUL PETORVICH mark. Indeed, it is the nexus between PAUL PETROVICH and the real estate
services provided by Complainants’ company that led Respondent to choose the
at-issue domain name to front his website.
Respondent impliedly admits via his registration and his use of
the <paulpetrovich.com> domain name to vex the PETROVICH
DEVELOPMENT COMPANY that the mark has trademark value. Respondent appears to have registered the
domain name precisely because of its value as an identifier for the goods and
services of PAUL PETROVICH and PETROVICH DELEVOPMENT COMPANY. It seems somewhat disingenuous for
Respondent to now try to claim that Complainants have no colorable trademark
rights in the PAUL PETROVICH mark when it appears that Respondent’s primary
reason for registering the at-issue domain name, as opposed to some other
domain name, stems from his adverse commercial relationship with PETROVICH
DEVELOPMENT COMPANY and the related litigation.
Therefore, the Panel finds that for the purposes of
this proceeding that Complainants have established secondary meaning associated
with their mark sufficient to establish common law rights in the mark pursuant
to Policy ¶ 4(a)(i). See Tuxedos
By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001); see
also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb.
Forum March 13, 2003).
The <paulpetrovich.com> domain name is
identical to Complainants’ PAUL PETROVICH mark. The domain name includes
Complainants’ mark in its entirety, adding only the generic top-level domain
(gTLD) “.com.” The addition of a gTLD
to Complainants’ mark is irrelevant and does not negate the congruence of the
domain name under Policy ¶ 4(a)(i). See
Shirmax Retail Ltd. v.
CES Mktg. Group Inc.,
AF-0104 (eResolution Mar. 20, 2000); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000).
Additionally,
even if Complainants had no trademark rights in the PAUL PETROVICH mark, the <paulpetrovich.com> domain name is confusingly similar to
Complainants’ PETROVICH DEVELOPMENT COMPANY undisputed trademark. The domain name deletes two words in the
that mark but contains the most prominent feature of the mark, which makes it
most identifiable to the public. Given
the similarity of Complainants’ mark with the domain name, consumers will
presume the domain name is affiliated with Complainants. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000); see also Asprey &
Garrard Ltd v. Canlan Computing, D2000-1262
(WIPO Nov. 14, 2000).
Respondent
concedes in his Response that he has not met the criteria for acquiring rights
or legitimate interests under Policy 4(c)(i) or 4(c)(ii). Respondent thereby admits that he made no
effort to register or use the domain name prior to any notice of the dispute in
connection with a bona fide offering of goods or services and that he is
not commonly known as PAUL PETROVICH. Policy ¶ 4(c)(i) and (ii). In determining whether or not
Respondent has rights or legitimate interests in the mark, the Panel thus need only consider the
application of Policy ¶ 4(c)(iii); to
wit, whether or not Respondent is “making a legitimate noncommercial or
fair use of the domain name, without intent for commercial gain to misleadingly
divert consumers or to tarnish the trademark or service mark at issue.”
Respondent claims that he is using the <paulpetrovich.com>
domain name to resolve to a website that refers to Complainants, but does
not actually include complaints about Complainants. Respondent alleges that the website contains “objective ‘facts’”
about Complainants. Ostensibly
Respondent contends that such is a fair use of the domain name.
On examination of the website it is clear that the
“facts” are laced with a less than objective maligning of Complainants and
their company. Indeed, several web
pages contain a jack-in-the-box device incorporating the apparently
unauthorized logo of Complainants’ company (depicted below).
http://www.paulpetrovich.com/homepage.htm
(September 2004)
Thus, the implications gleaned from a cursory review
of the website at the disputed domain name are contrary to Respondent’s assertion
that there has been no attempt to tarnish Complainants’ mark. As noted above, the posted material, viewed
in context, isn’t objective at all.
Moreover, an Internet user directed to a lower-level
webpage via a search engine query or external link may believe that the
material on found pages is endorsed by PAUL PETROVICH since the page resides on
the <paulpetrovich.com> website and contains the
Petrovich Development Company logo.
If the website is a “complaint website,” Respondent
may have certain rights to use Complainants’ mark to identify
Complainants. However, this does not
give Respondent the right to use an identical or confusingly similar domain
name to connote the source of commentary or criticism as coming from the mark
holder.
In
Monty and Pat Roberts, Inc. the panel found:
[T]he right to express one’s views is not
the same as the right to use another’s name to identify one’s self as the
source of those views. One may be perfectly free to express his or her
views about the quality or characteristics of the reporting of the New York
Times or Time Magazine. That does not, however, translate into a right to
identify one’s self as the New York Times or Time Magazine.
Monty
and Pat Roberts, Inc. v. Bill Keith,
D2000-0299 (WIPO June 9, 2000).
Further, Respondent’s use of an identical and
confusingly similar domain name to attract Internet users interested in
Complainants’ services to a website that features material that is both
critical of Complainants and some that is unrelated to Complainants is not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Monty & Pat Roberts,
Inc. v. Keith,
D2000-0299 (WIPO June 9, 2000).
Respondent may establish and maintain a website critical of the
Complainant, but this does not give Respondent the right to identify the
website as sponsored by Complainant. See
Name.Space Inc. v. Network Solutions, 202 F.3d 573, 585 (2d Cir.
2000). Although the content of
Respondent’s site may be entitled to First Amendment protection, Respondent’s
use of Complainant’s trademark in the domain name of its site is not protected.
Complainant
has made a prima facie case in support of its allegations that
Respondent lacks legitimate rights and interests in the at-issue domain
name. The burden to show rights or
interests in the domain name thus shifted to Respondent to show that he has
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Respondent has not overcome that burden.
The
Policy at paragraph 4(b)(iii) sets out that registering a domain name primarily
for the purpose of disrupting the business of a competitor constitutes a bad
faith use of a domain name. As
discussed above Respondent may be a considered a competitor of Complainants for
the purpose of this proceeding. There
is no disagreement that the parties’ commercial interests are adverse with
regard to the civil litigation now on appeal concerning a commercial lease
between the parties.
In
the present setting, by registering a
domain name identical and confusingly similar to Complainants’ marks to attract
Internet users to a site that offers material that opposes Complainants, and/or
confuse Internet users as to the source or sponsership of such material, Respondent
is acting in opposition to Complainants. The fact that no other plausable
explaination has been offered regarding the registration of Complainants’
identical mark, the fact that Complainants’ business had secured a substantial
judgment against Respondent and is still in litigation with Respondent, the unauthorized
use of Complainants’ company’s logo on Respondent’s website, and the portrayal
of the company and Complainants on the at-issue website, indicates that
Respondent registered the disputed domain name primarily for the purpose of
disrupting the business of Complainants pursuant to Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000); see
also Surface Prot. Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001).
While
the facts support finding bad faith pursuant to Policy ¶ 4(b)(iii), additional
non-enumerated factors may likewise indicate bad faith registration and
use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000). It is
undisputed that Respondent and Complainants were recently involved in a lawsuit
resulting in a judgment in Complainants’ company’s favor against Respondent for
$158,549.42. Without evidence of any
other credible motive for registering and using the at-issue domain name it
appears that one of Respondent’s purposes was to seek revenge against Complainants after losing the lawsuit. Respondent’s use of a domain name identical
to Complainants’ mark to display information about Complainants evidently out
of vendictive motives indicates bad faith use and registration pursuant to
Policy ¶ 4(a)(iii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000); see also Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001).
Finally,
Respondent provided false contact information that was displayed on the WHOIS
database. Apparently, none of
Respondent’s original WHOIS information was correct, including Respondent’s
name, address and telephone number. The
Response provided a different address than that listed in the WHOIS information
and Respondent fails to adequately explain the discrepancy. Respondent offers only that the reason for
using false information was because he was afraid for his family if he were to
use his correct name and address. Such
reason might be alleged by anyone registering a domain name. Importantly,
providing false contact information is a per se violation of the registration
agreement that Respondent was required to submit to at the time of
registration. The fact that the contact information might have since been
corrected does not un-ring the bell that tolled at the time Respondent first
registered the domain name. Under the
circumstances providing false WHOIS information is further evidence of bad
faith registration. See Home Director, Inc. v. HomeDirector,
D2000-0111, (WIPO Apr. 11, 2000); see also Video Direct Distrib. Inc. v. Video Direct, Inc., FA 94724 (Nat.
Arb. Forum June 5, 2000); see also Visit
Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paulpetrovich.com>
domain name be TRANSFERRED from Respondent to Complainants.
Paul M. DeCicco, Panelist
Dated: September 10, 2004
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