Express Services, Inc. v. Personnel Plus
a/k/a Tony Mayer
Claim Number: FA0205000112624
PARTIES
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 >
2) <EXPRESSJOBS.NET>
registered
with Go Daddy Software, Inc.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@personnelexpress.com and
postmaster@expressjobs.net 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.
RELIEF SOUGHT
The
Complainant requests that the two domain names be transferred from the
Respondent to the Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
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.
FINDINGS
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.
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 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.
DECISION
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
Arbitrator
Dated: June 20, 2002
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