Anthony L.
Trujillo and Planetfone, Inc. v. 1Soft Corp.
Claim Number: FA0307000171259
Complainants
are Anthony L. Trujillo and Planetfone, Inc., Pasadena, CA
(“Complainants”) represented by Gary J.
Nelson, of Christie, Parker &
Hale LLP. Respondent is 1Soft Corp., Blue River, OR
(“Respondent”) represented by Greg
Thorne.
The domain
name at issue is <planetphone.com>,
registered with Iholdings.Com, Inc.
d/b/a Dotregistrar.Com.
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.
David A.
Einhorn sits as Panelist.
Complainants
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 24, 2003; the Forum received a hard copy of the
Complaint on July 25, 2003.
On July 25,
2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the
Forum that the domain name <planetphone.com>
is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that the
Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that
Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com
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 July 30, 2003 a Notification of Complaint
and Commencement of Administrative Proceeding (the“Commencement Notification”),
setting a deadline of August 19, 2003 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@planetphone.com by
e-mail.
A timely
Response was received and determined to be complete on August 18, 2003.
An Additional
Submission was received from Complainants and determined to be complete on
August 19, 2003.
On August 27, 2003, pursuant to Complainants’ request to have the dispute
decided by a single-member Panel, the Forum appointed David A. Einhorn
as Panelist.
Complainants
request that the domain name be transferred from Respondent to Planetfone, Inc.
A.
Complainants
[a]
Complainants
own a federal trademark registration for PLANETFONE & DESIGN with a first
use date of January 21, 1998 and an intent-to use application for PLANETFONE,
filed on October 9, 2001.
[b]
Respondent’s
registered domain name <planetphone.com>
is confusingly similar to Complainants’ PLANETFONE trademark.
[c]
Respondent
has no rights or legitimate interest in the <planetphone.com> domain name.
[d]
Respondent
has registered and is using the <planetphone.com>
domain name in bad faith.
B.
Respondent
[a]
Respondent
registered the domain name <planetphone.com>
on July 24, 1997.
[b]
Complainant
registered the domain name <planetfone.com>
on July 15, 1998.
[c]
Complainant
filed its intent-to-use application for PLANETFONE on October 9, 2001.
[d]
Respondent
registered the domain name <planetphone.com>
before Complainants started using their trademark PLANETPHONE. Therefore, Complainants have no rights to <planetphone.com>.
C.
Additional
Submissions
Complainants
filed an additional submission which has been reviewed, but which did not
present facts or legal arguments which have influenced this Panel’s
decision.
Complainants
own trademark registration number 7,437,890 for PLANETFONE & DESIGN, which
is based on a first use date of January 21, 1998 and an intent-to-use
application for PLANETFONE which was filed on October 9, 2001.
Respondent
registered the domain name <planetphone.com>
on July 24, 1997, six months prior to Complainants’ first use date in their
trademark registration and over four years prior to Complainants’ filing of
their intent-to-use application.
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.
Paragraph
4(a)(i) of the Policy requires Complainants to show that Respondent’s domain
name is identical or confusingly similar to Complainants’ marks. This provision necessarily implies that
Complainants’ rights predate the registration of Registrant’s domain name. See Intermark Media, Inc. v. Wang Logic Corp., FA139660 (NAF Feb. 19,
2003). Respondent registered the domain
name <planetphone.com> on July
24, 1997, six months prior to Complainants’ first use date in their trademark
registration and over four years prior to Complainants’ filing of their
intent-to-use application. As
Complainants have not shown that their rights pre-date Registrant’s domain
name, Complainants have not satisfied paragraph 4(a)(i) of the Policy.
Because the
Panel has determined that Complainant has not satisfied this requirement of
Policy § 4(a)(i), there is no need to determine whether Respondent has rights
or legitimate interests in the domain name or whether Respondent registered or
used the domain name in bad faith.
Complainants
are legitimate trademark owners who were attempting to improperly apply the
Policy to a domain name which pre-dates their trademark rights.
While this
Panel notes that the filing of this Complaint and of the Additional Submission
were ill-advised, this Panel cannot find, on the record before it, that the
Complaint was filed in bad faith with the knowledge that it could not prove the
requisite elements of the Policy. See,
Netro Corp. v. Koustas, FA109723
(Nat. Arb. Forum June 12, 2002). (“This
is a close call, but the Panel has determined not to find that Complainant has
attempted a Reverse Domain Name Hijacking.
True, the case was very weak, and probably should not have been filed,
but the facts do not justify a finding under Rule 15(e)”). Therefore, this Panel does not find Reverse
Domain Name Hijacking based upon the evidence and pleadings submitted.
As
Complainants have failed to establish the requirements of Policy § 4(a)(i),
Complainants’ requested relief is hereby DENIED.
David A. Einhorn, Panelist
Dated: September 10, 2003
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