DECISION

 

Express Services Inc v. Express Temp

Claim Number: FA0201000103936

 

PARTIES

Complainant is Express Services, Inc., Oklahoma City, OK (“Complainant”) represented by Randy L. Canis, of Greensfelder, Hemker & Gale, P.C.  Respondent is Express Temp, Chelsea, MA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <expresstemp.com>, registered with Network Solutions, Inc.

 

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 18, 2002; the Forum received a hard copy of the Complaint on January 22, 2002.

 

On January 23, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <expresstemp.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 January 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 12, 2002 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@expresstemp.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On February 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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.”  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

1.       Respondent’s domain name <expresstemp.com> is confusingly similar to Complainant’s EXPRESS and EXPRESS TEMPORARY SERVICE & Design licensed registered trademarks.

2.      Respondent has no rights or legitimate interests in the domain name.

3.      Respondent is not commonly known by the domain name and has not used the domain name for a legitimate noncommercial or fair use.

4.      Respondent is not a licensee and has never been granted a license, permission or authorization by Complainant to use any EXPRESS marks. 

5.      Respondent registered and has used the domain name in bad faith.

 

B. Respondent

No Response was received. 

 

FINDINGS

Complainant is the exclusive licensee of the EXPRESS family of registered service marks for a variety of personnel services including temporary and permanent employment services and staffing services, including:

• EXPRESS HEALTH SERVICE & Design, Registration No. 1,623,976 in class 35 for health and medical employment agency services;
• EXPRESS SERVICES TEMPORARY & PERMANENT PERSONNEL & Design, Registration No. 1,646,233 in class 35 for temporary help and employment agency services;
• EXPRESS, Registration No. 1,647,022 in class 35 for temporary help and employment agency services;
• NURSES EXPRESS, Registration No. 1693487 in class 35 for temporary employment agency services specializing in nursing personnel
• EXPRESS PERSONNEL SERVICE & Design, Registration No. 1,708,586 in class 35 for employment agency services;
• EXPRESS TEMPORARY SERVICE & Design, Registration No. 1,718,629 in class 35 for temporary help and employment agency services;
• EXPRESS STAFFING SERVICES & Design, Registration No. 1,946,030 in class 35 for employment staffing services;
• EXPRESS HUMAN RESOURCES & Design, Registration No. 2,124,198 in class 35 for employee leasing and personnel recruiting; and
• EXPRESS MANAGEMENT SERVICES & Design, Registration No. 2,225,130 in class 35 for administrative personnel and recruitment as well as permanent and temporary employment agency services (collectively the "Express Marks").

 

On or about September 24, 1999, Respondent registered the domain name <expresstemp.com>.  Thereafter, Complainant learned of Respondent’s registration of the domain name <expresstemp.com> and operation of a temporary staffing website thereunder.  Complainant’s investigation revealed that the website was run by the domain name’s administrative contact Tam Tran.  By certified letter and electronic mail dated November 29, 2000, Complainant demanded that Respondent cease and desist its registration and use of the domain name.  Although Respondent received the letter on December 14, 2000, Respondent never responded nor ceased its activities. 

 

On January 24, 2001, Complainant again demanded that Respondent cease and desist its use of the EXPRESS Marks.  Failing to receive a response, Complainant sent a third cease and desist letter to Respondent.  After still receiving no response, Complainant sent a fourth cease and desist letter that was returned to Complainant as “unclaimed.”  Complainant then re-sent the fourth cease and desist letter via electronic mail and facsimile. 

 

Complainant conducted an onsite investigation of Respondent by a private investigator.  A call was placed to the telephone number listed on the Respondent’s website and was answered by a party of Hispanic descent who was not aware of any company operating under the name Express Temp.  Further, photographs taken by the investigator at the address listed in the WHOIS database revealed that there is no business at Respondent’s address operating under the trade name Express Temp. 

 

Complainant continued to monitor the WHOIS record of the Domain Name as the domain name was set to expire on September 21, 2001.  On September 24, 2001, Complainant learned that, despite the removal of all website content, Respondent proceeded to re-register the disputed domain name.

 

DISCUSSION

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.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

 

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; and

(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

Respondent’s <expresstemp.com> domain name is confusingly similar to Complainant’s EXPRESS TEMPORARY SERVICE mark, because “temp” is a common abbreviation for the word “temporary.”  See Ohio Lottery Comm'n v. Private, FA 97642 (Nat. Arb. Forum July 23, 2001) (“The <ohiolotto.com> domain name is confusingly similar to the Complainant’s OHIO LOTTERY mark in that it contains the generally accepted abbreviation (‘lotto’) for the word ‘lottery’”); see also Minnesota State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).  Also, the omission of the word “service” does not take the domain name out of the realm of confusing similarity.  See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).

 

Respondent’s domain name is also confusingly similar to Complainant’s EXPRESS mark.  The domain name merely adds the term “temp” to Complainant’s EXPRESS mark.  See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

 

Additionally, confusing similarity between the parties is increased because both offer similar services.  See Slep-Tone Entertainment Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (noting that “Respondent has registered and attempted to use the disputed domain name in the same line of services as that which Complainant provides, and that this makes it likely that consumers would be confused as between these two sources”).

 

Rights or Legitimate Interests

Respondent has no rights or legitimate interests in the disputed domain name because Respondent has attempted to generate revenue by trading on Complainant’s famous trademarks and creating confusion and mistake as to an affiliation with the Complainant.  In general, a Respondent has no rights or legitimate interests where it intentionally and misleadingly diverts users away from Complainant's site to a competing website.  Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).

 

Complainant has shown that Respondent is not a licensee and has never been granted a license, permission or authorization by Complainant to use any EXPRESS marks.  Therefore, Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

 

Registration and Use in Bad Faith

Respondent is taking advantage of the recognition that Complainant has created for its EXPRESS mark and therefore profiting by diverting users seeking Complainant’s website to Respondent’s site.  This is bad faith use and registration under Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website); see alsoMathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by the Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

 

Accordingly, it is Ordered that the domain name <expresstemp.com> be transferred from Respondent to Complainant.

 

 

Judge Harold Kalina (Ret.)

 

Dated:  February 22, 2002

 

 

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