Express Services, Inc. v. RealTime Internet
Claim Number: FA0110000100506
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.
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.
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.
The Complainant requests that the domain names be transferred from Respondent to 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.
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.
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.
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.
The domain names shall be transferred to Complainant.
R. Glen Ayers, Panelist
Dated: December 11, 2001
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