Food Express, Inc. v.
Nashville Boot Co.
Claim Number: FA0611000852588
PARTIES
Complainant is Food Express, Inc. (“Complainant”), represented by Maury
M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foodexpress.com>, registered with Network
Solutions, 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.
The Honourable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 27, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 27, 2006.
On November 27, 2006, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <foodexpress.com> domain name is
registered with Network Solutions, Inc.
and that the 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 November 28, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 18, 2006 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@foodexpress.com by
e-mail.
A timely Response was received and determined to be complete on December 18, 2006.
On January 17, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
As a preliminary point, the Complainant anticipates the contention of the Respondent that this Complaint is the refiling of a previous Complaint and that, as such, the Complaint should be dismissed. In response to that anticipated argument, the Complainant says that in the present case, the Respondent is a different party from the Respondent in the previous proceeding. Alternatively, the present Complaint should be allowed even if the two Respondents are the same, as new evidence has come to light, including evidence to the effect that the domain name has not been used for an active website for at least the last four years.
On the substantive issues, the Complainant alleges that the contentious domain name <foodexpress.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name <foodexpress.com> is identical or confusingly similar to the Complainant’s registered trademark FOOD EXPRESS, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on its United States registered FOOD EXPRESS trademark, Registration No. 1,870,084, evidence of which is provided in the Complaint. It then says that it is self-evident that the domain name <foodexpress.com> is identical to the FOOD EXPRESS mark, because the domain name consists of the entire trademark.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name <foodexpress.com > because the Respondent is not named “foodexpress.com,” it has not been authorized to use the FOOD EXPRESS mark and has not operated a business known by the name FOOD EXPRESS. Nor, it is argued, could the Respondent bring itself within any of the provisions of paragraph 4(c) of the Policy.
Finally, the Complainant
contends that the domain name <foodexpress.com>
was registered and is being used in bad faith.
It contends that this is so because the Respondent had knowledge of the
FOOD EXPRESS mark before it registered the domain name and in particular
because its associates were involved in the previous UDRP proceedings in which
the Complainant relied on its FOOD EXPRESS trademark and asserted its rights to
the domain name. Moreover, the Complainant
contends that the Respondent has not used the domain name for an active website
for several years, but is warehousing the name until it can sell it at a
profit.
B. Respondent
As a preliminary point, the Respondent contends that the Respondent was
also the Respondent in the previous proceedings, for in both cases the
Respondent was Mr. Frank Harlow, who owns the disputed domain name, the current
registered domain name holder, Nashville Boot Co., and the business
“foodexpress.com.” Accordingly, it says
that the Complainant, the Respondent and the domain name are all the same and,
on well-established principles, the case cannot proceed.
Moreover, there is no new evidence that the Complainant can rely on to
claim an exemption from this principle.
On the substantive issues, the Respondent contends first that the
domain name is not identical to or confusingly similar to the trademark because
there are many other registered trademarks that also utilize the words FOOD
EXPRESS.
It also claims that it has a right and legitimate interest in the domain
name because it is negotiating to use the name in a joint business venture and
has also used the name in the past in its business under the name <foodexpress.com>.
The Respondent denies that it registered or is using the domain name in bad faith on the grounds that it is not warehousing the name, has not put it up for sale and has never intended to disrupt the Complainant’s business or tried to divert internet users to the Respondent’s website.
FINDINGS
(a) On December 27, 1994, Complainant was issued U.S. Trademark Registration No. 1,870,084 for the mark FOOD EXPRESS for contract food and vending services including operation of cafeterias in schools, in hospitals, and industrial locations and has continuously used that mark since that date.
(b) Respondent is engaged in the business of selling cowboy boots and western shoes and other accessories online.
(c) The disputed domain name does not presently resolve to an active website.
(d) In proceeding entitled Food Express, Inc. v. Harwell Enterprises, FA 96812 (Nat. Arb. Forum Apr. 11, 2001), the Complainant sought the transfer of the domain name <foodexpress.com> from the Respondent Harwell Enterprises, but the requested relief was denied.
(e) The Respondent registered the domain name on September 12, 2006.
DISCUSSION
As a preliminary point, Respondent
says that Complainant cannot bring this Complaint as this is the second
proceeding in which Complainant has sought the transfer of the domain name <foodexpress.com>,
the parties are the same as in the previous proceeding and the domain name is
the same. The previous proceeding that the Respondent relies on is the proceeding entitled Food Express, Inc. v. Harwell Enterprises, FA 96812 (Nat. Arb. Forum Apr. 11, 2001). In that matter, the Complainant sought
the transfer of the domain name <foodexpress.com> from Harwell
Enterprises to itself, but the requested relief was denied.
The Respondent in the present proceeding contends
that the current Respondent and the Respondent in the previous proceedings are
the same and, that being so, the principles of res judicata apply and bar the Panel from deciding this dispute.
In reply, the Complainant says that the
Respondents in the previous and the present proceedings are different and that
even if they are the same, the Panel is empowered to decide the present dispute
because the case comes within the principles that allow a Panel to rehear or
reconsider a previously filed Complaint.
The Panel decides that the Respondents in the two
proceedings are different and that the case may proceed. That is so for the
following reasons.
First, the Panel can see no reason for going
behind the details provided by the Registrar of the domain name which show
clearly that the current registrant, for whatever reason, is different from the
previous registrant or registrants and hence different from the Respondent in
the previous proceedings. In this regard, it must be remembered that UDRP
proceedings are brought against a Respondent who is defined to be the party
that is “the holder of a domain name registration against which a complaint is
initiated.” See Paragraph 1 of
the Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”). The same notion is emphasized by paragraph
3(b)(v) of the Rules which requires the Complainant to:
(v) Provide the name of
the Respondent (domain-name holder)…
And other
contact details and also by Paragraph 5(b)(ii) of the Rules which requires the
Response to provide details of the “Respondent (domain-name holder).” Likewise, the ICANN Registrar Agreement makes
it plain that Registrars are to keep records of the current registrant of a
domain name and also of certain contact personnel, who may be and often are
different from the registrant.
It is clear
therefore from the Rules and from the whole ICANN registration process that the
process revolves around the person or party who is put forward as the holder of
the domain name, which may not be the ultimate interest or entity that stands
behind the holder.
Accordingly, the domain name holder may change
from time to time and if a dispute arises, the only nominal party against whom
the claim may be brought is the party who for the time being is registered by a
Registrar as the holder of the domain name.
Applying that principle to the facts of the
present case, it is clear that the Respondent in the present proceeding is a
different party from previous registrants and a different Respondent from that
in the previous proceeding, even if they all have the same ultimate ownership,
which they appear to do.
The Respondent in the previous proceeding, Food Express, Inc v. Harwell Enterprises, was Harwell Enterprises, which is
presumably a business name, but which is nevertheless entitled to be the
registrant of a domain name. It was the
correct Respondent in those proceedings because the decision reads in part
that:
On March 8, 2001, Network Solutions, Inc
confirmed by e-mail to the Forum that the domain name <foodexpress.com> is registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the name.
In other words, Harwell Enterprises at that time
was registered with a Registrar as the holder of the domain name. In contrast, the Respondent in the present
proceeding is Nashville Boot Co. That is
established by Exhibit 5 to the Complaint, which is a print-out of the WHOIS
information from Network Solutions, the Registrar of the domain name. It shows that the domain name is currently
registered to the Respondent, i.e. Nashville Boot Co., and that it is therefore
the party encompassed by the provisions of the Rules set out above as the
domain name holder and hence it is the Respondent in the present proceeding.
Accordingly, it is axiomatic that the two
Respondents are different. Mr. Frank Harwell
is the ultimate owner of both of these enterprises and that is presumably what
he means when he says in the Response that he is the past and present owner of
the domain name and also of the Nashville Boot Co. That, however, is not the issue at the
present. The issue is whether the actual
registered holder of the domain name is different from that in the previous
proceeding and for the reason given they clearly are so.
The second reason is that the Nashville Boot Co.
did not exist at the time of the previous decision. Exhibit 13 to the present Complaint shows
that there is a company incorporated in
That is made apparent from the website of
Nashville Boot
However,
Exhibit 13 also shows that the company was incorporated on January 31, 2006,
almost 5 years after the completion of the previous proceedings. Consequently, its involvement in the
registration of the Nashville Boot Co. as the holder of the domain name must
have taken place well after the previous proceedings, thus strengthening the
notion of the Respondent in the present proceeding being entirely different
from the Respondent in the previous proceedings.
Thirdly,
the Respondent’s argument that Mr. Harwell is ‘the past and present owner’ of
the domain name does not determine the present issue. It is true that the Respondent in the
previous proceedings was Harwell Enterprises, but it is apparent from the
decision that one of its contentions was that ‘Respondent is 3409 Group, Inc.’ That entity was an entirely different legal
person both from Harwell Enterprises and the present Respondent, as is seen
from Exhibit 10 to the Complaint which also shows that it was incorporated on
October 6, 1999, and dissolved on July 20, 2001.
The
Respondent’s argument in toto is thus
that Mr. Harwell is the present and prior owner of the domain name, when the
record shows that the present holder of the registration is Nashville Boot Co.
and at the time of the previous proceedings he was alleging that he was not the
name holder but rather that it was 3409 Group Inc. This reinforces the Panel’s view that it
should give effect to the registration of the Nashville Boot Co. as the present
domain name holder and consequently the proper Respondent.
On the
balance of probabilities, the Panel accordingly finds that the Respondent in
the present proceedings is a different entity from the Respondent in the
previous proceedings.
The dispute is thus able to proceed for consideration in
the usual manner.
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.
The Panel finds that the domain name <foodexpress.com> is identical and confusingly similar to the Complainant’s trademark FOOD EXPRESS, details of which are set out above. It is identical because the domain name consists of the entirety of the trademark and the spelling and appearance of the two expressions are the same. It is confusingly similar because of the likelihood that at least some consumers would form the belief that the goods or services being promoted by the domain name were the goods and services covered by the trademark of the same name.
In this regard, the gap between the two words making up the trademark is to be disregarded, as it must be to make a true comparison, as domain names cannot contain such a gap. Moreover, the generic Top Level Domain suffix “.com” in the domain name must be disregarded, for it has long been held that this addition cannot avoid a conclusion of identicality or confusing similarity that is otherwise open. See Foundation Le Corbusier v. Mercado M, D2004-0723 (WIPO Nov. 11, 2004).
Clearly the Complainant has an interest in the trademark as it is the owner of it.
The Respondent, however, says that there are other parties who also have trademarks in the words FOOD EXPRESS. That fact may of course become very relevant later in the proceedings, especially when the issue of bad faith is being considered.
But it has been well established in many UDRP cases that all that a Complainant need establish under this, the first heading, is that it has an interest in a relevant trademark even if other parties also have a trademark in the same or similar words.
The Complainant has therefore made out the first of the three elements
that it must establish.
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.
It is now well established that
Complainant must first make a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶
4(a)(ii). If that is established the
burden then shifts to Respondent to show that it has such rights or legitimate
interests. See Document Tech., Inc.
v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although
Paragraph 4(a) of the Policy requires that the Complainant prove the presence
of this element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”); see also Hanna-Barbera Productions, Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Complainant alleges that it has not authorized or licensed Respondent to register or use a domain name incorporating Complainant’s FOOD EXPRESS mark, there is no evidence in the record suggesting that Respondent is operating or has ever operated a legitimate business by the name FOOD EXPRESS and there is no evidence that it is commonly known by the name <foodexpress.com>.
The Panel finds that the Complainant has made out a prima facie case on each of those issues and, accordingly, the burden shifts to the Respondent to rebut that case.
The Respondent relies on Policy ¶ 4(c)(i) and says in effect first, that it has been making demonstrable preparations to set up a ‘private business venture’ and, secondly, that it has for over 2 years been using the domain name in connection with a bona fide offering of goods or services, namely its <foodexpress.com> business.
In support of the first argument, the Respondent says that details of the proposed venture are being discussed, but that they have to remain confidential. The Panel finds that such an assertion is not sufficient to make out a case of ‘demonstrable preparations’ to use a domain name for a bona fide offering of goods and services. It is possible for a party in the position that the Respondent claims it is in, to protect its confidential business secrets and yet give sufficient detail to persuade the panel that it is indeed genuinely engaged in preparations to establish a business. On the evidence provided, the Panel is not persuaded that the Respondent is so engaged.
In this regard, the comments of the Panel as presently constituted in DigiPoll Ltd. v. Raj Kumar, D2004-0939 (WIPO Feb. 3, 2005), are applicable. It was noted there that:
…it is
not necessary to show a fully operational business, for it is sufficient if the
steps taken are only preparations. At
the other end of the scale, an idea without any real preparations to put the
idea into practice cannot be sufficient.
At the very least, there must be preparations, even if, as was said in
the recent decision in Donvand Limited
trading as Gullivers Travel Associates v. Gullivers Travel/Gulliver’s Travel
Services, Gullivers Travel Agency and Metin Altun/GTA, D2004-0741 (WIPO
Dec. 16, 2004), those preparations were ‘perfunctory,’ meaning superficial or
mechanical.
In the
present case the Respondent has said only that it has had discussions and that
is insufficient. There is no evidence of
a business plan or indeed anything about the business other than the intention
to develop it at some indeterminate time in the future. Such assertions and not
sufficient and the Respondent is expected to produce at least some of what is
referred to as ‘concrete evidence:’ Kevin
Garnett v. Trap Block Technologies, FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (“‘Concrete evidence’ requires more
than personal assertions; it requires documents or third party declarations in
support of such assertions. A failure to
produce such concrete evidence entitles a panel to conclude that the respondent
has no such rights or legitimate interests.”)
The
Panel, therefore, finds on the evidence that there are no demonstrable
preparations by the Respondent to use the domain name in connection with its
proposed business or any other bona fide
offering of goods or services.
As to the second argument, that the Respondent has for over 2 years been using the domain name in connection with a bona fide offering of goods or services, namely its <foodexpress.com> business, it is necessary to reiterate that this element must be established in connection with the Respondent and not in connection with some other party that may have been the holder of the domain name in the past. The Panel has already held that the Respondent is Nashville Boot Co., the business name of Nashville Boot Co. Inc. and it is that entity that must show that before notice of the dispute it was using the domain name in connection with a bona fide offering of goods or services.
There is in fact no evidence that the Respondent has used the domain name for any purpose, let alone the one it contends for.
The evidence is
that Respondent is not making any use
of the domain name in an active web site or for any other legitimate
purpose. Such a non-use of a domain name
which is identical to Complainant’s trademark does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See
Bloomberg L.P. v. SC Media Services and Information SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent
is wholly appropriating Complainant’s mark and is not using the
<bloomberg.ro> domain name in connection with an active website. The Panel finds that the passive holding of a
domain name that is identical to Complainant’s mark is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) …”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that passive holding
of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
It
has also been held in the same decisions that such conduct does not amount to
a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Accordingly,
the Respondent has not rebutted the prima
facie case on this issue and the Complainant has made out the second of the
three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000‑0003 (WIPO Feb. 18, 2000).
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out‑of‑pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
This case raises the
important question whether the renewal of a registration may constitute bad
faith registration for the purposes of Policy ¶ 4(b). The general view is
that renewal of a domain name does not amount to registration for the purposes
of determining bad faith and that view is supported by Substance Abuse Management, Inc. v. Screen Actors Modesl [sic]
International, Inc. (SAMI), D2001-0782
(WIPO Aug. 14, 2001) and PAA Laboratories
GmbH v. Printing Arts America, D2004-0338
(WIPO July 13, 2004). Thus, as it was
put in the former case:
If a domain
name was registered in good faith, it cannot, by changed circumstances, the
passage of years, or intervening events, later be deemed to have been
registered in bad faith. Accord, Telaxis Communications Corp. v.
William E. Minkle, D2000-0005 (WIPO Mar. 7, 2000).
If, however, the renewal of the
registration were effected by a new party, it is appropriate to look at the
actual state of knowledge of that party to determine if it was taking on the
role of domain name holder in good or bad faith.
Both the Complainant and the
Respondent say that the renewal of the registration was effected on September
12, 2006. The Complainant says that this
renewal was effected by the Respondent, Nashville Boot Co. The Respondent says that the renewal was
effected by ‘Respondent (Frank Harwell).’
The latter cannot be the case, for we know from Exhibit 5 to the
Complaint, that the domain name is currently registered to the Respondent, i.e.
Nashville Boot Co., and that that registration took place on September 12,
2006. Accordingly, the entry of the
present Respondent onto the registry was the act of a new party.
The test then is whether the conduct of the new party, in this case the
present Respondent, amounts to bad faith registration and use.
Clearly, the primary focus must be on the knowledge and intentions of the
entity Nashville Boot Co. Even so, there
would be something of an air of unreality in divorcing the knowledge of the
Respondent from that of its owners and managers and the previous
registrant. As they are all associates,
they all must be said to have had actual knowledge of the Complainant’s
trademark because of their involvement in the previous proceedings in 2001.
For some reason which the Respondent has not explained, the present
Respondent has assumed the role of domain name holder and it must be assumed
that when it did so its owners and managers knew of the Complainant, its
activities, its trademark and the fact that the Complainant did not want its
trademark used in a domain name by anyone else.
Indeed, the facts set out in the Response can lead to no other
conclusion.
Accordingly, the Respondent’s conduct in having itself registered as the domain name holder, with the knowledge that it had, is bad faith for the purposes of Policy ¶ 4(a)(iii). The remarks of the panel in one of the cases cited by the Complainant, namely Deep Foods, Inc v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) seem apposite, for the Panel said:
Under the
circumstances of this case, it seems more likely than not that Respondent was
in fact aware of Complainant’s mark at that time, and that Respondent chose the
domain name because of its similarity to the mark rather than because of the
different meanings of the word “deep” in various languages. Mere constructive knowledge of the mark is of
course insufficient, see, e.g., Barclays
Global Investors, N.A. v. SocialFunds.com, LLC, FA196046 (Nat. Arb. Forum
Nov. 5, 2003); the circumstances here, however, support an inference that
Respondent had actual knowledge of the mark.
The Panel concludes that Complainant has sustained its burden of proving
that the disputed domain name was registered and is being used in bad faith.
So in the present case, it seems
more likely than not that when, for whatever reason, the Respondent became the
registrant, it had actual knowledge of the Complainant’s trademark through its
owners and managers and through the previous registrant, who claims now to be
the proper Respondent.
The involvement of these parties in the history of the previous proceedings, the singular lack of real use to which the Respondent and those other parties have put the domain name, the offer to sell it for $50,000 and the absence of a persuasive reason for having a domain name in this name, in combination constitute, in the opinion of the Panel, bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).
In addition, the Panel notes from its own examination of the
Wayback Machine at <archive.org> that the active Food Express website was
put up only the month before the previous proceedings, was taken down after
those proceedings, was not replaced by an active website and since 2004 has
been replaced by a notice stating ‘www.foodexpress.com
is coming soon!’ As well as being
something of a misnomer, this suggests that the Respondent has probably had
something other than fast food on its mind when it has been using the domain
name in this way.
The Complainant has thus made out
the third of the three elements that it must establish.
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 <foodexpress.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 29, 2007
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