Property Tax Partners, LP, LLP v. FCSE
Claim Number: FA2109001964641
Complainant is Property Tax Partners, LP, LLP (“Complainant”), represented by Holly H. Barnes of The Law Offices of Holly Barnes, PLLC, Texas, USA. Respondent is FCSE (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ptp.com>, registered with Network Solutions, 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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2021; the Forum received payment on September 21, 2021.
On September 22, 2021, Network Solutions, LLC confirmed by e-mail to the Forum that the <ptp.com> domain name is registered with Network Solutions, LLC; and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 September 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 2021 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@ptp.com. Also on September 23, 2021, 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 November 8, 2021.
The Complainant submitted an Additional Submission on November 24, 2021 pursuant to Forum Supplemental Rule 7. The Panel has considered this Additional Submission in deliberating its Decision. Given that the Decision is in Respondent’s favor, the Panel has decided not to delay this proceeding in order to give the Respondent fair time to respond to the Complainant’s Additional Submission.
On November 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant provides thousands of clients with property tax management, governmental relations and legal services throughout the United States. In connection with those services, Complainant has used its PTP service mark since at least 2006. That mark has been registered by Complainant with the United States Patent and Trademark Office (“USPTO”).
- The disputed domain name, <ptp.com>, is identical to Complainant’s PTP service mark as it incorporates the mark in its entirety and merely adds to it the “.com” generic top-level domain (“gTLD”).
- Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and provides no legitimate products or services with respect to the disputed domain name, which was inactive from at least 2015 through most of 2021. Respondent only activated the disputed domain name upon notice from Complainant in June 2021 regarding prospective action under the Policy, such activation consisting of a webpage that offers purported “engineering systems consulting.”
- Respondent registered and uses the disputed domain name in bad faith. After contact by Complainant, Respondent offered to sell the disputed domain name for a cost that far exceeds its original registration cost. Also, Respondent inactively held the disputed domain name until Respondent attached a rudimentary website to avoid a tranfer under a Policy proceeding .
B. Respondent
- Respondent has worked as a systems engineer for twenty-three years. Respondent purchased the disputed domain name for use in relation to Respondent’s engineering services. Moreover, PTP is not a unique acronym and Complainant is not a well-known company under that acronym.
- Respondent has rights and legitimate rights in the disputed domain name since Respondent has established common law rights in the PTP brand name due to operations conducted under the disputed main name for more than twenty-three years. Respondent’s engineering services are completely unrelated to Complainant’s tax services, and there has been no attempt by Respondent to create confusion in that regard.
- The disputed domain name has not gone unused for long periods of time, with short pauses coming only when Respondent switched hosting services. The lack of a landing page does not mean that Respondent fails to use the disputed domain name, as some of its utility comes from “back end operational” uses, which those without such experience may not understand.
- Respondent’s purchase of the disputed domain name in 1998 predates any claimed rights in the PTP mark by Complainant. Respondent made no offer to sell the disputed domain name to Complainant, and in fact refused to counter Complainant’s purchase offer of US$1,000. Respondent has no intent to sell the disputed domain name because Respondent plans to further develop the name in conjunction with the appropriate development partner.
C. Complainant’s Additional Submission
-The Respondent has never had a webpage presence at the disputed domain name. If he were actually using and maintaining a website at the disputed domain name, he would not have received unsolicited offers to purchase the domain name.
-The Respondent spoke with the Complainant’s Director by phone and demanded a price in the high five figures to transfer the disputed domain name to the Complainant.
-Respondent has no common law trademark rights in PTP.
FINDINGS
Complainant operates a property tax preparation company, including government relations and legal services, within the United States. Since sometime in 2006, Complainant has conducted its business under the PTP service mark, which is registered with the USPTO (Reg. No. 6,204,922, registered Nov. 24, 2020).
The disputed domain name, <ptp.com>, was registered on April 26, 1995, and Respondent apparently acquired that name in 1998. Respondent may at times have used the disputed domain name in connection with engineering services.
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 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 the Complainant has presented clear evidence of registration with the USPTO for the PTP service mark, Complainant has convinced the Panel that it has the necessary ownership rights in that mark to satisfy Policy ¶ 4(a)(i). See Zoosk, Inc. v. Brock Linen, FA 1818879 (Forum Jan. 28, 2019) (”The Panel here finds that Complainant’s registration of the ZOOSK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).”).
Simple visual inspection allows the Panel to conclude that the disputed domain name, <ptp.com>, is identical to the Complainant’s PTP service mark. The addition of the “.com” gTLD is of no moment in this comparison, since similar suffixes are required of all domain names. See Tupelo Honey Hospitality Corp. v. Reggie King, FA 1732247 (Forum July 6, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”); see also CBS Broadcasting, Inc. v. Gaddoor Saidi, D2000-0243 (WIPO June 2, 2000) (finding <cbs.org> to be identical to the CBS service mark).
Therefore, the Panel finds that Complainant has proved that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
Given the Panel’s finding below with respect to the third Bad Faith element required under the Policy and the requirement that Complainant prove all three elements enumerated in the Policy, the Panel will not make a finding on whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant is required by the Policy to prove that the disputed domain name was both registered and used in bad faith by Respondent. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”).
There is clear evidence that the disputed domain name was registered on April 26, 1995. Moreover, Complainant's USPTO registration for the PTP service mark shows not only that it was registered much later on November 24, 2020, but that the PTP service mark was not used by Complainant before September 22, 2006.
Respondent claims that it acquired the disputed domain name in 1998. If that claim is true, then the Panel must find that Respondent did not register the disputed domain name in bad faith with respect to Complainant or its service mark, as in 1998 Complainant had not yet used its PTP service mark and thus did not possess rights in that mark. See Faster Faster, Inc. v. Jeongho Yoon, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”). While Respondent provides no concrete evidence to support its claimed date of disputed domain name acquisition, Complainant presents no evidence to counter the claim. As the overall burden of proof with respect to this element falls upon Complainant, the Panel must conclude that Complainant has failed to sustain that burden as required under the Policy.
Therefore, the Panel finds that Complainant has failed to prove that the disputed domain name was registered and used in bad faith.
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 <ptp.com> domain name REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: November 30, 2021
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