Express Services, Inc. v. Personnel Plus a/k/a Tony Mayer
Claim Number: FA0205000112624
The Complainant is Express Services, Inc., Oklahoma City, USA ("Complainant") represented by Greensfelder, Hemker & Gale, P.C. The Respondent is Personnel Plus a/k/a Tony Mayer, Twin Falls, ID, USA ("Respondent").
The two domain names at issue are:
1) < PERSONNELEXPRESS.COM >
registered with Go Daddy Software, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne, Esquire as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 1, 2002; the Forum received a hard copy of the Complaint on May 2, 2002.
On May 2, 2002, Big Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <PERSONNELEXPRESS.COM> and <EXPRESSJOBS.NET> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreements 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 May 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 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 firstname.lastname@example.org and email@example.com by e-mail.
A Response was received on May 22, 2002. Complainant argues that the Response was incomplete and incorrectly served. This Panel reaches no decision regarding the timeliness or completeness of the Response, because such a determination is not necessary in reaching the decision in this case. In any event, the Panel considered the Response and associated exhibits.
A timely additional submission was received from the Respondent on June 3, 2002. A timely additional submission was received from the Complainant on June 7, 2002.
Each of the above submissions has been considered by this Panel.
On June 5, 2000, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Linda M. Byrne, Esquire as Panelist.
The Complainant requests that the two domain names be transferred from the Respondent to the Complainant.
Complainant contends that Respondent's domain names <PERSONNELEXPRESS.COM> and <EXPRESSJOBS.NET> are confusingly similar to its EXPRESS family of trademarks; that Respondent does not have any right or legitimate interest with respect to the infringing domain names; and that the infringing domain names were registered and are being used by Respondent in bad faith.
Respondent contends that <PERSONNELEXPRESS.COM> and <EXPRESSJOBS.NET> are not confusingly similar to Complainant’s EXPRESS marks. Respondent also contend that it has used the two domain names legitimately as a link to another website and that Respondent did not register and use the domain names in bad faith.
Complainant has used the mark EXPRESS for temporary help and employment agency services since 1983. On June 4, 1991, Complainant obtained Federal. Reg. No. 1,647,022 for the mark EXPRESS. Complainant has used the mark EXPRESS PERSONNEL SERVICE for employment agency services since 1985. On August 18, 1992, Complainant obtained Federal Reg. No. 1,708,586 for the mark EXPRESS PERSONNEL SERVICE and Design. Complainant also owns federal registrations for EXPRESS TEMPORARY SERVICE, EXPRESS STAFFING SERVICES, EXPRESS HUMAN RESOURCES, EXPRESS MANAGEMENT SERVICES, EXPRESS HEALTH SERVICE, and EXPRESS PROFESSIONAL STAFFING. Complainant operates a worldwide franchise system in the United States, Belarus, Canada, Russia, South Africa and the Ukraine, with several hundred franchisees operating under the EXPRESS Marks. The current emphasis of this franchise network is to provide temporary and permanent employment agency services. Express has adopted and continuously used the EXPRESS Marks for nearly twenty years.
Complainant registered the domain name <EXPRESSPERSONNEL.COM> on August 3, 1996. Complainant has used <EXPRESSPERSONNEL.COM> to provide Internet users with information regarding its services.
On November 9, 1999, Respondent registered the domain name <PERSONNEL.COM>. Complainant submits that it learned on June 20, 2001 of Respondent's registration and use of <PERSONNELEXPRESS.COM>.
By letter dated June 28, 2001, Complainant requested the Respondent cease and desist its infringing registration and use of <PERSONNELEXPRESS.COM>. Complainant received a response from Respondent dated July 12, 2001 asserting that his registration of <PERSONNELEXPRESS.COM>. was legitimate. On July 26, 2001, Complainant responded to Respondent's contentions and offered to reimburse Respondent for his out-of-pocket expenses in exchange for ownership of <PERSONNELEXPRESS.COM>. Respondent rejected Complainant's offer in a letter dated August 8, 2001 and stated, “As you and your client may or may not know, similar “dot.com” names are being resold on the internet for five and six figures. I believe a reasonable price to ask is $20,000 and I am willing to sale [sic] your client the right to the [<PERSONNELEXPRESS.COM>] domain name for that amount.” Sometime thereafter, Respondent removed the website content associated with <PERSONNELEXPRESS.COM>.
On December 17, 2001, Complainant learned that Respondent had renewed <PERSONNELEXPRESS.COM>, which had been due to expire on November 3, 2001. Complainant also learned that the Respondent was the registrant of <EXPRESSJOBS.NET>. On December 18, 2001, Complainant advised Respondent that its actions were in violation of the Anticybersquatting Protection Act and the UDRP, and proposed to settle the dispute for $200 in exchange for a transfer of the domain names. Respondent rejected this offer. Subsequently, several counteroffers and offers were exchanged but an amicable settlement was not reached.
On October 7, 1992, Complainant and Respondent had entered into a franchise agreement authorizing Respondent to use the trade names “Express Services,” “Express Personnel Service,” etc. This fact was not discovered by Complainant until shortly before February 5, 2002. The Franchise Agreement specified what trademarks of Complainant that Respondent could use as a franchisee, and further provided that the Respondent was obligated to discontinue use of the trademarks upon termination of the franchise agreement. Respondent's franchise was terminated in 1997. Respondent executed a settlement agreement with Complainant in January 1997 in which Respondent reaffirmed is obligation to cease to use of the EXPRESS marks.
Soon after discovery of the former franchise relationship between Complainant and Respondent, there were additional attempts at a settlement of this dispute. However, these efforts failed. Thereafter, Complainant initiated this UDRP proceeding against Respondent.
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 Respondent's domain names <PERSONNELEXPRESS.COM> and <EXPRESSJOBS.NET> utilize the Complainant's EXPRESS mark with additional descriptive or generic words. The additional words are "personnel" and "job".
The mere addition of descriptive or generic words to a valid mark, however, does not eliminate the similarity between the domain name and the trademark. See Caterpillar Inc. v. Miyar, Case No. FA 95623 (Nat. Arb. Forum, Dec. 14, 2000) (finding that a number of domain names, including <cat-usedparts.com>, were confusingly similar to the registered trademark CAT); see also Christie's Inc. v. Tiffany's Jewelry Auction Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the Complainant's mark since it merely adds the word auction used in its generic sense); see also NIIT Ltd. v. Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (<caterpillarparts.com> and <caterpillarspares.com> are confusingly similar to the mark CATERPILLAR); see also Hewlett Packard Co. v. Posch Software, FA 95322 (Nat. Arb. Forum Sept. 12, 2000) (<hp-software.com> is confusingly similar to complainant's HP marks).
Further, regarding the Respondent's mark <PERSONNELEXPRESS.COM>, the only difference between it and Complainant's EXPRESSPERSONNEL.COM is that the term "PERSONNEL" is in front of the word "EXPRESS". This difference fails to obviate the confusingly similar nature of the marks.
The Respondent's addition of ".com" and ".net" do not save the Respondent's marks from being confusingly similar to the EXPRESS marks because these extensions are not significant. See Express Servs., Inc. v. Brown, FA 97725 (Nat. Arb. Forum July 25, 2001); see also Express Servs., Inc. v. RealTime Internet, FA 100506 (Nat. Arb. Forum Dec. 1, 2001); see also Micron Elecs., Inc. v. Holden, FA 96797 (Nat. Arb. Forum Apr. 3, 2001) (finding that, for purposes of assessing the confusing similarity between domain names and trademark, UDRP Panels have held that top-level domain extensions, spaces, hyphens and punctuation are ignored).
Respondent is a former franchisee of Express and provides identical services (i.e., personnel and employment services) to those provided by Express. Respondent argues that the Respondent's domain names are being used to route users to a "third-party," and that its services were therefore different from Complainant’s services. However, the "third-party" (which appear to be an alter-ego of sorts to the Respondent) provides "assistance. . . to job seekers." This service is obviously related to Complainant's services. See Express Servs., Inc. v. Express Temp, FA 103936 (Nat. Arb. Forum Feb. 22, 2002) ("Additionally, confusing similarity between the parties is increased because both offer similar services."); see also Slep-Tone Entm’t 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").
Respondent also argues that the domain names consist of common, non-protectable words. However, Complainant has been using the EXPRESS and EXPRESS PERSONNEL marks for almost 20 years, and Complainant’s marks have been accepted for registration by the U.S. Trademark Office. Moreover, Respondent acknowledged the validity of the EXPRESS marks in its Franchise Agreement with Complainant. For each of these reasons, this Panel rejects the argument that Complainant’s EXPRESS marks are ineligible for trademark protection.
Accordingly, this Panel concludes that the domain names <PERSONNELEXPRESS.COM> and <EXPRESSJOBS.NET> are confusingly similar to the Complainant's EXPRESS marks.
Rights or Legitimate Interests
If the use of the domain names constitutes clear trademark infringement, then such use does not result in any rights or legitimate interest in respect of the domain names. The offering of services by Respondent that are very similar to the services of Complainant, under a confusingly similar mark is not a bona fide offering of goods or services. Legitimate rights and interests do not accrue to the Respondent by way of trademark infringement. See Harcourt Inc. v. R&D Glassblowing, FA 95010 (Nat. Arb. Forum July 13, 2000); see also Am. Online, Inc v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that "it would be unconscionable to find that a bona fide offering of services in a Respondent's operation of web-site suing a domain name which is confusingly similar to the complainant's mark and for the same business").
At one time, Respondent owned license rights in Complainant’s EXPRESS marks by virtue of the parties’ Franchise Agreement. However, these rights were extinguished in 1997 with the termination of the Franchise Agreement. “Once a license has expired, use of the formerly licensed trademark constitutes infringement. To say that the licensee has acquired rights that survive the legal termination of that license destroys the entire concept of a license.” Mariah Boats, Inc. v. Shoreline Marina, LLC, FA 94392 (Nat. Arb. Forum May 5, 2000), quoting United States Jaycees v. Philadelphia Jaycees, 693 F.2d 134, 143 (3d Cir. 1981).
For the above reasons, this Panel concludes that Respondent has no rights or legitimate interest in respect of either of the two disputed domain names.
Registration and Use in Bad Faith
Respondent was obviously aware of Complainant’s marks prior to registering the disputed domain names, in view of the fact that Respondent is a former franchisee and licensee of the EXPRESS marks. As further evidence of Respondent's knowledge of the EXPRESS marks, there is express language concerning the existence and validity of the EXPRESS marks in the 1992 franchise agreement and in the January 1997 franchise termination agreement, both of which were executed by Respondent.
Moreover, Respondent's offer to relinquish its rights in <EXPRESSJOBS.NET> and <PERSONNELEXPRESS.COM> indicates Respondent's bad faith. In one of its initial letters to Complainant, the Respondent offered to sell Complainant one of the domain names for $20,0000, which is well in excess of Respondent’s out of pocket expenses associated with the domain name. In later correspondence, Respondent offered to transfer the domain names for lesser amounts. Cf. Marcor International v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent's registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy); Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent's willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name).
In view of the fact that each party’s services relate to assisting job-seekers to find employment, it is apparent that Respondent registered each of the disputed domain names in order to gain more internet users and to disrupt Complainant's business of providing job placement related services. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (use of domain name comprised of Complainant's mark to divert consumers to a web site that promotes competing goods is evidence of bad faith); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (use of Complainant's mark in domain name disrupts Complainant's business and constitutes bad faith); Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business).
By creating a likelihood of confusion, Respondent is acting in bad faith. See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (use of Complainant's mark to attract consumers to buy Complainant's, or others', products is in bad faith because it is likely to cause confusion); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (use of the domain names <caterpillarparts.com> and <caterpillarspares.com> to drive consumers to a "want-ad" web site for parts constitutes bad faith); see also Tall Oaks Pub'g, Inc. v. Nat’l Trade Publ'ns, Inc., FA 94346 (Nat. Arb. Forum May 5, 2000) (use of domain name comprised of Complainant's mark in a manner likely to cause initial interest confusion demonstrates bad faith). If Respondent wished to trade off the goodwill associated with the EXPRESS marks, Respondent should have sought a license from Complainant. See Volkswagen of Am., Inc. v. Site Design Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (finding that the failure to seek a license from Complainant dictated a finding of bad faith with respect to the domain name <bayareavw.com>).
In addition, Respondent’s registration and use of the domain names violated the terms of the 1992 Franchise Agreement and 1997 Franchise Termination Agreement. For example, the 1992 Agreement stated that Respondent “understands and agrees that [Complainant] is the sole and exclusive owner of the …trademarks…listed in this Agreement…” The Agreement later states, “If this Agreement becomes legally terminated, [Respondent] agrees to immediately cease and forever abstain from using the …trademarks…listed in this Agreement..or to use other materials that have any reference to the name and marks listed in this Agreement and owned by [Complainant].” Respondent’s breach of the above provisions is further evidence of Respondent’s bad faith.
In summary, this Panel finds that the domain names <EXPRESSJOBS.NET> and <PERSONNELEXPRESS.COM> are confusingly similar to Complainant's EXPRESS trademarks, that the Respondent has no rights or legitimate interests in these domain names, and that Respondent has registered and used these domain names in bad faith.
It is the decision of this Panel that the two domain names at issue, <EXPRESSJOBS.NET> and <PERSONNELEXPRESS.COM> be transferred from Respondent to Complainant.
Linda M. Byrne, Esquire
Dated: June 20, 2002
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