Stephen D. Pizzuti v. Linda Real
Claim Number: FA1605001673332
Complainant is Stephen D. Pizzuti (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Linda Real (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stephenpizzutinews.com>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2016; the Forum received payment on May 4, 2016.
On May 5, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <stephenpizzutinews.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 May 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2016 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@stephenpizzutinews.com. Also on May 6, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant was a prominent investment broker in Florida. Complainant entered the financial planning and securities industries as a licensed investment broker in 1986. Over a thirty-year span, Complainant’s reputation as an investment broker grew allowing Complainant to host seminars, author books, and host two syndicated daily radio program on investing strategies under the STEPHEN PIZZUTI name. Through extensive and varied use, Complainant’s STEPHEN PIZZUTI name has become synonymous with Complainant’s business establishing secondary meaning in the name. Respondent’s <stephenpizzutinews.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name incorporates the entire name while removing spacing between the words, and adding the generic term “news” with the generic top level domain (“gTLD”) “.com.”
Respondent lacks rights or a legitimate interest in the <stephenpizzutinews.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been licensed to make use of the STEPHEN PIZZUTI mark. Respondent is using the <stephenpizzutinews.com> domain name as a gripe/complaint website to post comments against Complainant.
Respondent has registered and is using the disputed domain name in bad faith. Respondent is using the confusingly similar domain name to attract Internet users to its webpage where it criticizes Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Procedural Issue: Concurrent Court Proceedings
Complainant asserts it recently filed a lawsuit for defamation against the Respondent in State Court in Florida. It is Complainant’s position that the lawsuit does not make cybersquatting or trademark infringement claims. Complainant’s assertions are conflicting and ambiguous in that regard as they relate to the present proceedings. Complainant’s additional references to the lawsuit indicate prior actions threatening to sue and/or filing suit regarding Respondent’s registrations of similar domain names utilizing Complainant’s name. Complainant also argues that Respondent’s use of the subject domain name here in dispute, and other past domain names, as well as past online attacks via blogs and similar venues have bankrupted Complainant’s business and ruined his ability to provide for himself. While defamation actions do not normally require the interpretation and application of intellectual property law it is unclear whether they may come into play in Complainant’s recently filed case due to the nature of Respondent’s past and current use of Complainant’s personal name. Complainant did not provide copies of the lawsuit pleadings.
In situations where concurrent court proceedings are pending some panels have chosen to proceed with the UDRP filing. See eProperty Direct LLC v. Miller, FA 836419 (Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”). Alternatively, other panels have chosen not to proceed with the UDRP because of the pending litigation. See AmeriPlan Corp. v. Gilbert FA105737 (Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”).
The Panel here decides, based on the filings received and attendant assertions therein, that it will not proceed to rule on the UDRP.
Complainant is Stephen D. Pizzuti of Longwood, FL, USA. Complainant does not own a registered trademark but asserts rights enforceable against the disputed domain name because it uses his personal name along with the added generic word “news”. Complainant asserts that through his involvement in the financial planning and securities industry over a thirty-year period he acquired common law trademark rights in his name. Complainant alleges acquired secondary meaning “through extensive and varied use”, further stating that his name has become synonymous with his business. It appears that Complainant is referring to his past business(es) as he also states that he is not currently in business. Complainant submitted numerous exhibits as evidence of the creation of secondary meaning around the STEPHEN PIZZUTI name such as Banner Advertisements, Print Brochures, Radio Program Advertisement, and examples of Complainant’s digital presence.
The evidence submitted is inconsistent at best, in reflecting use of Complainant’s name as an identifier of goods or services offered under that name. Much of the evidence simply pictures Complainant, identified by his name somewhere in the picture, amidst many other goods or services. In other instances, Complainant’s surname alone is used in connection with a particular good or service. Additionally, secondary meaning generally requires the claimant to indicate length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. Complainant’s evidence is lacking in these details. Complainant alleges, without sufficient support, that his name has become famous. However, even if that were proven, merely having a famous name, without a showing that the public recognizes it as a distinct identifier of some particular goods or services is insufficient to show unregistered trademark rights.
Respondent is Linda Real of Vancouver, WA, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the <stephenpizzutinews.com> domain name was registered on or about November 13, 2013.
The Panel declines to proceed due to concurrent court proceedings. Therefore, the domain name remains with the Respondent.
Darryl C. Wilson, Panelist
Dated: June 15, 2016
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