Express Services, Inc. v.
RealTime Internet
Claim Number: FA0110000100506
PARTIES
The Complainant is Express
Services, Inc., Oklahoma City, OK (“Complainant”) represented by Randy
L. Canis, of Greensfelder, Hemker, & Gale, P.C. The Respondent is RealTime Internet,
Fort Wayne, IN (“Respondent”) Kevin R. Erdman, of Baker & Daniels.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <expresspersonel.com><express-personnel.com><express-personnel.net>,
registered with BulkRegister.
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.
R. Glen Ayers served as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (“the Forum”) electronically on
October 9, 2001; the Forum received a hard copy of the Complaint on October 11,
2001.
On October 12, 2001,
BulkRegister confirmed by e-mail to the Forum that the domain names <expresspersonel.com><express-personnel.com><express-personnel.net>
are registered with BulkRegister and that the Respondent is the current
registrant of the names. BulkRegister
has verified that Respondent is bound by the BulkRegister 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 October 15, 2001, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 5, 2001 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@<expresspersonel.com><express-personnel.com><express-personnel.net>
by e-mail.
A response was received and
determined to be complete on November 9, 2001.
The Response was not timely filed pursuant to ICANN Rule 5(a), which
requires that a Response be filed within twenty (20) days of the date of the
commencement of the proceeding. As
noted below, the late Response will be considered, as is common in these
proceedings.
Complainant filed a
Supplemental Submission which was timely filed pursuant to Forum Supplemental
Rule 7.
Respondent then filed an
Additional Submission dated November 13, 2001, which was also untimely.
On November 30, 2001, pursuant
to Complainant’s request to have the dispute decided by a single-member Panel,
the Forum appointed R. Glen Ayers as Panelist.
RELIEF SOUGHT
The Complainant requests that
the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that it
holds registered service and trademarks including "Express Personnel
Service." This mark has been
registered since 1992 and includes design elements including line shading and
capital letters. Respondent has
registered as domain names the three almost identical domain names: <expresspersonel.com><express-personnel.com><express-personnel.net>.
Complainant asserts that these
domain names are identical to or confusingly similar to its mark.
Complainant also alleges that
the Respondent has no rights in the name nor any legitimate interest. Respondent is not commonly known by the
names; Respondent's use is not "fair use"; and, Respondent is not a
licensee.
Complainant goes on to allege
that Respondent's registration and use is in bad faith. Although Respondent has never sought to sell
these names to Complainant, Complainant's evidence demonstrates that Respondent
is in the business of registering names.
It asserts that the bulk registration of names is sufficient to
demonstrate bad faith and cites a number of Forum decisions which support that
position.
Complainant also offers some
evidence that Respondent must have known of its mark prior to registration of
the domain names and some evidence that the registration is for the purpose of
misdirecting persons seeking Complainant's services to the Web page maintained
by Respondent.
B. Respondent
Respondent failed to file a
timely response as noted above and also seems to have failed to pay the
required fee to extend the filing deadline.
The late filed response need not be considered and perhaps should not be
considered where a Response is filed by counsel. Although this Panelist has considered late filings in other
domain disputes, always because the Response was filed without the assistance
of counsel, the Response will also be considered in this proceeding, even
though the Response was filed by counsel.
The late Response is being considered because the Complaint's assertions
of "bad faith" need to be fully considered. Here, the Respondent, who has clearly registered a number of
domain names in bulk, has made no attempt to sell the registered names to
Complainant.
Respondent's arguments
concerning the first element, the registration of the mark and similarity to
the domain names goes as follows: the
registered mark is a design mark including graphic elements. Since the words comprising the mark are
generic, there can be no confusion or similarity or identity.
As to rights in the names,
Respondent merely states that it had no notice of the interest of Complainant
prior to registration. Respondent
asserts that it has rebutted one of the elements of ICANN Rule 4(c) and that
refutation of one element is sufficient.
It does not assert that it has any other rights in the name.
As to bad faith, Respondent
asserts that its conduct is not "bad faith" and that is has never
sought to sell the name, block use of the name, divert customers or create
confusion. Respondent points out that
it does not compete with Complainant.
C. Additional Submissions
Complainant timely filed an
additional submission. That submission
points out that the Response was not timely filed. It also argues that the Response was longer than permitted. Complainant revisits the issue of
"identical or confusingly similar," and asserts that it has met its
burden. As Complainant points out, the
issue of "rights in the names" is not satisfied by Respondent's
assertion of lack of knowledge.
Complainant, in the additional submission, again demonstrates that Respondent
has no rights in the name.
As to bad faith, Complainant
admits that there is no evidence of attempts to resell the names. Rather, Complainant asserts that the
registration of its mark as a domain name or names -- and the registration of
other similar marks by Respondent -- is designed to draw traffic to its web
site, where banner ads and commercial links generate income for
Respondent. As evidence of this
conduct, Complainant in the additional submission and in the original Complaint
points out the very large number of bulk registrations of celebrity names,
marks, and the like.
On November 13, 2001,
Respondent filed an Additional Submission which was untimely under ICANN
Supplemental Rule 7(a) & (b). This
Submission attempted to justify the untimely filing of its Response. Because the untimely Response is being
considered, the Respondent’s Additional Submission is not relevant and will not
be considered.
FINDINGS
The Panel finds that the mark
held by Complainant and the domain names are confusingly similar if not
identical. Complainant has a registered
service mark. While that mark has
design elements, when the mark is translated into typescript for use in a
domain name, the identity or similarity cannot be disputed. Complainant
contends that the <expresspersonel.com> domain name is confusingly
similar to its federally registered EXPRESS PERSONNEL marks. The deletion of a letter and the misspelling
of a mark still makes the disputed domain name confusingly similar to Complainant’s
registered mark. See Hewlett-Packard
Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the
domain name <hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark); see also Victoria’s Secret et al. v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that
misspelling words and adding letters on to words does not create a distinct
mark but is nevertheless confusingly similar with the Complainant’s marks).
Respondent has not seriously
contested that it has rights in the name.
Respondent is not commonly known by the disputed domain names, is not
using the domain names in connection with a bona fide offering of goods or
services, and is not making a legitimate non-commercial or fair use of the
disputed domain names. See Body Shop
Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000)
(finding “that on the evidence provided by the Complainant and in the absence
of any submissions from the Respondents, that the Complainant has established
that (i) the Respondents are not using and have not used, or are not
demonstrating and have not demonstrated, an intent to use the said domain name
in connection with a bona fide offering of goods or services; (ii) the
Respondents are not and have not been commonly known by the said domain name;
and (iii) the Respondents are not making legitimate noncommercial or fair use
of the said domain name, without intending to mislead and divert consumers or
to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”). The fact that Respondent had no notice of
the Complainant's rights prior to registration and use is not a sufficient
defense.
The real issue in this matter
is bad faith. Complainant's evidence of
bad faith is weak. Respondent is not a
competitor nor has Respondent attempted to sell these domain names -- and there
is no evidence that Respondent has engaged in similar conduct with other domain
names. Complaint's basic position is as
follows: Respondent registers as many
names as it can find. Once registered,
these names lead to Respondent's web site, where there are banner ads and
links. These ads and links generate
income. By registering the
Complainant's mark, Respondent is therefore using the mark to generate income.
Complainant contends that Respondent
has registered and used the disputed domain names in bad faith pursuant to
Policy ¶ 4(b)(ii) where Respondent has established a pattern of registering
domain names which infringe on the famous marks of others. See Armstrong Holdings, Inc. v. JAZ
Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the
Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names
which infringe upon others’ famous and registered trademarks); see also Pep
Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution
May 3, 2000) (finding that where the Respondent registered many domain names,
held them hostage, and prevented the owners from using them constituted bad
faith). Unfortunately, there is no evidence
that the use here by Respondent was designed to prevent use of the domain names
by Complainant, as prohibited under
Policy ¶ 4(b)(ii).
Complainant further contends
that Respondent registered and used the disputed domain names pursuant to
Policy ¶ 4(b)(iv), where Respondent intentionally attempted to attract, for
commercial gain, Internet users to Respondent’s websites by creating a
likelihood of confusion with Complainant’s mark. This practice of “typosquatting” has been recognized as a bad
faith use of a domain name under the UDRP.
See, e.g., AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26,
2000) (awarding “wwwalavista.com”, among other misspellings of altavista.com,
to Complainant); see also Dow Jones & Company, Inc. and Dow Jones, L.P.
v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names
“wwwdowjones.com”, “wwwwsj.com”, “wwwbarrons.com” and “wwwbarronsmag.com” to
Complainants); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA
95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered
the domain name <statefarmnews.com> in bad faith because Respondent
intended to use Complainant’s marks to attract the public to the web site
without permission from Complainant).
Clearly, only Policy ¶ 4(b)(iv)
applies to this dispute. Given the
number of registrations by the Respondent, as set out on the thirty-six (36!)
pages of Complainant's Exhibit AA, a list which includes the names of colleges
and universities, states, towns, athletic teams, businesses, airlines,
misspellings of the same, and common words or names, the evidence of "bad
faith" is sufficient.
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.
Identical and/or Confusingly
Similar
The registered service mark and
the domain names are identical or confusingly similar.
Rights or Legitimate Interests
Respondent has no rights in the
names.
Registration and Use in Bad
Faith
The registration and use is in
bad faith as that term is further defined at Policy ¶ 4(b)(iv). The registration and use can only be for the
purpose of attracting Internet users for commercial gain.
DECISION
The domain names shall be transferred
to Complainant.
R. Glen Ayers, Panelist
Dated: December 11, 2001
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