Glenda Jenelle Greene, d/b/a
Greene Personnel v. Greene Resources, Inc. c/o Gary Greene
Claim Number: FA0806001203222
PARTIES
Complainant is Glenda Jenelle Greene, d/b/a Greene
Personnel (“Complainant”),
represented by Michele A. Ledo, of The Law Offices of Michele A. Ledo, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <greenepersonnel.com> and <greenepersonnel.net>
registered with Register.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 9, 2008; the National
Arbitration Forum received a hard copy of the Complaint on June 11, 2008.
On June 10, 2008, Register.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <greenepersonnel.com> and <greenepersonnel.net>
domain names are registered with Register.com,
Inc. and that the Respondent is the current registrant of the names. Register.com,
Inc. has verified that Respondent is bound by the Register.com, 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 June 16,
A timely Response was received and determined to be complete on July 7, 2008.
On 11 July, 2008 Complainant submitted a reply to Respondent's Response
as an additional submission. The additional submission of the Complainant was
filed in timely manner according to The Forum's Supplemental Rule #7, therefore
the Panel considered this submission.
On 15 June, 2008 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Katalin Szamosi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant argues that it has established common law rights in the
service mark GREENE PERSONNEL for use in connection with employment staffing
services, since it has spent considerable time, effort and money developing
this name as a service mark in the past 20 years. It encloses a great amount of
materials, e.g. advertisements, invoices supporting its statement.
Complainant claims that the disputed domain names are identical - and
therefore confusingly similar to - its GREENE
PERSONNEL service mark.
Complainant also argues that Respondent registered and used the
disputed domain names with bad faith intent, which is, among others, evidenced
by the following:
§
Respondent
was aware of Greene Personnel's existence prior to the domain registration;
§
Respondent
intentionally registered the service mark of a known competitor located near
the Respondent's business seat;
§
Respondent
has never used the name GREENE PERSONNEL or been known by the name GREENE
PERSONNEL;
§
Respondent
registered the disputed domain names with the intent to prevent its competitor,
Greene Personnel, from establishing a website presence and to divert consumers
to Greene Resources' website in a manner that harms the goodwill represented by
the GREENE PERSONNEL service mark;
§
Respondent
did not have reasonable grounds to believe that the use of the disputed domain
names were fair or otherwise lawful.
B. Respondent
First of all, Respondent claims that Complainant has never obtained a
trademark or service mark for the name GREENE PERSONNEL.
Respondent sets forth that the fact, that Greene Resources and Gary
Greene, the founder and majority shareholder of the company, have been involved
in the personnel business for years in several states of the
Respondent argues that it is not a competitor of the Complainant, which
also means that Respondent cannot seek profit from Complainant's goodwill with
the use of the disputed domains. In addition, it did not know that Respondent
was geographically close to Complainant.
It claims that it did not register the disputed domains for the purpose
of the disrupting the business of Complainant.
C. Additional Submissions
In its reply to Respondent's response the Complainant again claims that
it provided sufficient evidence for proving that the name GREENE PERSONNEL
acquired a secondary meaning and became a service mark of the Complainant, in
addition it argues that Respondent actually does not dispute that Complainant
has common law rights in the mark.
Complainant emphasizes that Respondent has no rights or legitimate
interests in the domain names, since Respondent admits that it is neither
commonly known by the name GREENE PERSONNEL nor making a legitimate
noncommercial or fair use of the domain names.
In connection with the bad faith registration it argues that Respondent
has registered the domain names primarily for the purpose of disrupting the
business of a competitor; and by using the name, Respondent has intentionally
attempted to attract, for commercial gain, Internet users to Respondent's
website by creating likelihood of confusion with the Complainant's mark.
It mentions that the consumer confusion has occurred in fact, which is
proven by telephone calls received personally by the Complainant from its
clients.
Supporting its above allegations Complainant enclosed an affidavit as
evidence.
FINDINGS
Complainant, Glenda Jenelle Greene has conducted
business operation under the name Greene Personnel since
Respondent, Greene Resources, Inc was
established in 1999 by Gary Green, who had worked in the staffing industry for
years before the establishment of Greene Resources. Also Respondent's business
operation extends to employment and staffing services and furthermore its business
seat is geographically close to Complainant.
Respondent registered the domains <greenepersonnel.com>
and <greenepersonnel.net> on July 15, 2004. Until
recently both domains were redirected to Respondent's website <greeneresources.com>.
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.
First, the Panel notes that Complainant did
not register a trademark for GREENE PERSONNEL, but the Policy does not require
a mark to be registered with a governmental authority for the purpose of
establishing rights in the mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
Rules do not require that the complainant's trademark or service mark be
registered by a government authority or agency for such rights to exist).
The Panel accepts
that Complainant has evidenced the use of its GREENE PERSONNEL mark in connection
with employment services by providing the Panel with multiple copies of
letters, advertisements, business cards, employment applications and invoices
all bearing the GREENE PERSONNEL mark, dating between 1988 and the present.
Therefore, the
Panel finds that the evidence filed by Complainant demonstrates the continuous
use of the GREENE PERSONNEL mark in commerce since 1988 and thus establishes Complainant’s
common law rights in its GREEN PERSONNEL mark pursuant to Policy ¶ 4(a)(i). See Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug.
17, 2000) (finding common law rights in a mark where its use was continuous and
ongoing, and secondary meaning was established, although the mark was used
locally, in one state only).
The Panel points out that Respondent’s <greenepersonnel.com>
and <greenepersonnel.net> domain names each contain
Complainant’s GREENE PERSONNEL mark with the deletion of a space and the
addition of a generic top-level domain.
The Panel finds that since a space is not a permissible character in a
domain name and a top-level domain is a required element of every domain name
the disputed domain names are identical to Complainant’s GREENE PERSONNEL mark
pursuant to Policy ¶ 4(a)(i). See
On the basis of the
above the Panel finds that Complainant has common law rights in the
service mark GREENE PERSONNEL and that Respondent's disputed domain names
are identical to Complainant's service marks.
The Panel finds
that Respondent is not commonly known by the <greenepersonnel.com> and
<greenepersonnel.net> domain names because Respondent operates under
the business name “Greene Resources.” The
Panel mentions that also Respondent states in its Response that it does not
market itself as “Greene Personnel.”
Additionally, the WHOIS information lists Respondent as “Greene Resources,
Inc. c/o Gary Greene.” See Brown
v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the
respondent was not commonly known by the <mobilitytrans.com>
domain name because it was doing business as “Mobility Connections”)
In addition, the Panel highlights that
according to the established facts Complainant has not authorized Respondent to
use its GREENE PERSONNEL mark in any manner.
The Panel highlights that Respondent
previously used the disputed domain names to redirect Internet users to its <greeneresources.com>
website where it offered personnel services which directly competed with
Complainant’s business.
On the basis of the
facts of the procedure the Panel finds that Respondent is a direct competitor
of Complainant. Being a competitor of
the Complainant, according to the standpoint of the Panel, Respondent’s effort to
redirect Internet users seeking Complainant’s business to Respondent’s
competing website via the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Scholastic Inc. v.
Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding
no rights or legitimate interests where “Respondent initially used the domain
name at issue to resolve to a website where educational services were offered
to the same market as that served by Complainant and only altered that use
following a complaint by Complainant”).
Complainant’s attorney sent Respondent a cease-and-desist letter which prompted Respondent to change its use of the disputed domain names. The Respondent’s disputed domain names currently resolve to a default page. The Panel finds Respondent’s failure to make an active use of the disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
Thus, based on the
above the Panel finds that Respondent has no rights or legitimate interests
in the domain names since (i) it is not commonly known by the domain names in question;
(ii) Complainant has not authorized Respondent to use the GREENE PERSONNEL mark;
(iii) Respondent’s
effort to redirect Internet users seeking Complainant’s business to
Respondent’s competing website via the disputed domain names and Respondent's
failure to make an active use of the dispute domain names is not a bona fide offering of goods or services
or a legitimate and non-commercial use or fair use.
The Panel finds that upon the previous use of the
disputed domain names it is highly probable that Respondent intended to profit
from Complainant’s goodwill associated with its GREENE PERSONNEL mark and is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent
and the complainant were in the same line of business and the respondent was
using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE
mark to attract Internet users to its <efitnesswarehouse.com> domain
name).
On the basis of the above the Panel finds that Respondent
has registered and used the domain names in bad faith since (i) Respondent
was previously using the disputed domain names to redirect Internet users to
Respondent’s <greeneresouces.com> website which offers services that
compete with Complainant’s business in the same geographic area; and (ii) Respondent intended to profit from Complainant’s
goodwill associated with its GREENE PERSONNEL mark.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <greenepersonnel.com> and <greenepersonnel.net>
domain names be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: August 4, 2008
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