Falconeiri Construction, Inc. v. Robert De
Grandis a/k/a Gripes and Grumbles, Inc.
Claim Number: FA0606000741799
PARTIES
Complainant is Falconeiri Construction, Inc. (“Complainant”), represented by Joshua M. Dalton, of Bingham McCutchen LLP, 150 Federal Street, Boston, MA 02110. Respondent is Robert De Grandis a/k/a Gripes and Grumbles, Inc. (“Respondent”), P.O. Box 0421, Mansfield, MA 02048-0421.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <falconeiriconstruction.com>,
<falconeiriconstruction.net>, <falconeiri.com>,
and <falconeiri.net>, registered with Go Daddy Software, Inc.
PANEL
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.
R. Glen Ayers, Jr. served as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 29, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 3, 2006.
On June 29, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <falconeiriconstruction.com>,
<falconeiriconstruction.net>, <falconeiri.com> and <falconeiri.net> domain names are registered with Go Daddy
Software, Inc. and that the Respondent is the current registrant of the
names. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, Inc. 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 7, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 27, 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@falconeiriconstruction.com,
postmaster@falconeiriconstruction.net, postmaster@falconeiri.com and
postmaster@falconeiri.net by e-mail.
On July 27, 2006, Respondent
requested, pursuant to Supplemental Rule 6, an extension of 20 days to respond
to the Complaint due to extenuating circumstances. On July 27, 2006, the National Arbitration Forum, with
Complainant’s consent, granted Respondent an extension and set a new deadline
of August 16, 2006 for a filing of a Response.
A timely Response was received and determined to be complete on August
16, 2006.
Complainant and Respondent each filed “Additional Written Statements,”
which were timely received and were considered by the Panelist.
On August 22, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed R. Glen Ayers, Jr. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has registered the mark “Falconeiri Construction” as a service mark with the USPTO. The Application for Registration was filed in 2004 and first issued in 2005. Of course, Complainant asserts a common law mark based upon prior use and asserts that the common law mark was created during twenty-five years of use in the construction business by Complainant.
Complainant asserts that the four domain names registered by Respondent
are identical to or confusingly similar to its Mark.
Complainant alleges that Respondent has no rights in the four
names. Respondent is not in
construction; he is not named Falconeiri.
Complainant asserts that he was hired to build a home for Respondent in
1999. A dispute arose in March of 2000
and Respondent registered the four domain names (impliedly to spite
Complainant). Complainant asserts that
the marks were registered in bad faith.
Complainant alleges that either Respondent is “cyber squatting” or
attempting to cause customer confusion or diversion.
B. Respondent
Respondent alleges that the Mark had no wide recognition and did not
constitute a Mark until registration.
He also asserts that the registered Mark is weak – it combines a surname
with a common word “construction.”
Respondent also denies bad faith and argues that he has rights in the
name by registration of the domain name which resolves to sites which do not
promote any goods or services which compete with those goods or services sold
by Complainant.
C. Additional Submissions
1. The Supplemental Statement filed by Complainant once again details the origins of the dispute and again asserts that the Respondent is just sitting on the four domain names. The Supplemental Statement also asserts pre-registration common law rights. Complainant goes on to deny that the registration of the domain names has in any way defeated its rights.
2. In Respondent’s Supplemental Response, Respondent alleges “reverse hijacking” by Complainant. He denies any attempts at effective contacts by Complainant, and he again asserts that the Mark is weak. He also asserts that the four sites are under development.
FINDINGS
The Complainant’s Mark was registered four to five years after the Respondent secured all four names. Respondent certainly registered the names to spite Complainant. Complainant certainly did not have a common law Mark because Complainant has offered no evidence that prior to registration, the name “Falconeiri Construction” had acquired a secondary meaning.
Therefore Complainant’s rights do not precede
the earlier registration of the domain names.
Trujillo v. ISoft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003). Also, two of the domain names are not
confusingly similar, <falconeiri.net> and <falconeiri.com>.
Complainant has shown a prima facie case that Respondent has no rights in the names. Respondent’s rebuttal is insufficient. See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003). The allegation that Respondent intends to use the name falconeiri construction .com or .net is not enough. Non-use of a name defeats allegation of “rights in name.” See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002).
As to bad faith, since the Mark has only limited strength, receipt of click-through fees does not indicate bad faith. Cf. State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000). Simply put, there is no evidence that Respondent was operating the names for gain, particularly since the domain names were registered long before the Mark and have not been used much at all. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000).
Finally, as to all
issues, it would appear that Complainant has rested on its rights for a long
period of time, not having made any complaint about the use of the domain names
for a period of almost six years and having only attempted to register its name
as a Mark in 2004.
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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
This weak service Mark was registered long after registration of the domain names. Two domain names may be identical or confusingly similar. The four domain names were issued at a time when Complainant had no effective Common Law Mark. Complainant has failed to establish the first basis for cancellation or transfer of the domain names.
As to rights or legitimate interests, Respondent has no rights in these names. Even if he wanted to make “fair use,” he never has.
There is simply no evidence of bad faith as
that term is used in ICANN. Although
the names were registered, and the names have been used to deny Complainant access
to the use and ownership of those domain names, there simply can be no bad
faith when Complainant ignored the existence of those domain names for at least
four years, then spent a year registering the trademark, and finally filed a
complaint under ICANN in 2006.
Complainant has alleged “cyber
squatting.” Complainant has simply
slept on its rights too long. As to
“reverse domain name hijacking,” Respondent has no real economic interest in
these names and, on the basis of these facts, the Panelist chooses not to find
“reverse domain name hijacking.”
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panelist concludes that relief shall be DENIED.
R. Glen Ayers, Jr., Panelist
Dated: September 6, 2006
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