Andrew Kohler v STI (Jenny Lee)

The above entitled matter came on for an administrative hearing on March 27, 2000 before the undersigned on the Complainant of Andrew Kohler, hereafter “Complainant”, against STI (Jenny Lee), hereafter “Respondent”. Complainant was represented by: Andrew Kohler 150 River Road, Suite 0-4, Montville, New Jersey 07045. There was no representation on behalf of Respondent: Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name Registrant: STI(PANTYEXPRESS-DOM), STI (PANTYEXPRESS3-DOM), and STI(PANTYEXPRESS2-DOM), respectively.

Date of Commencement of the Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c)[1]: February 14, 2000

Due Date for a Response: February 28, 2000. Respondent did not submit a Response to the Complaint.

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on February 9, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent did not submit a response to The Forum within twenty (20) days pursuant to Rule 5(a).

On November 4, 1999, Respondent registered the domain names PANTYEXPRESS.COM, PANTYEXPRESS.NET, and PANTYEXPRESS.ORG with Network Solutions, the entity that is the Registrar of the domain names. On February 25, 2000, Network Solutions verified that Respondent is the Registrant for the domain names “PANTYEXPRESS.COM, PANTYEXPRESS.NET, and PANTYEXPRESS.ORG”, and that further by registering its domain names with Network Solutions, Respondent agreed to resolve any Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

2. Complainant is the owner of a United States Federal Trademark, Registration #1,404,124, registered in 1986 for the servicemark PANTY EXPRESSÒ.

3. Respondent registered the 3 domain names, PANTYEXPRESS.COM, PANTYEXPRESS.NET, and PANTYEXPRESS.ORG on November 4, 1999.

4. The domain names have no affiliation with Respondent for a bona fide offering of goods or services.

5. Respondent upon notification by Complainant that PANTY EXPRESSÒ was a registered servicemark owned by Complainant and registered with the United States Trademark Office responded by offering Complainant “first choice” to purchase said domain names for $500.00 each.

6. Respondent’s AOL Member Profile states under Hobbies, “I sell used under clothes”, and under Occupation states “ I sell my used "under’ garments”.

7. There have been no other legal proceedings that have been commenced or terminated in connection with or relating to the domain names which are the subject of this Complaint.

8. Complainant seeks cancellation of Respondent as Registrant of the three domain names and transfer of said registration to Complainant.

9. Complainant seeks reimbursement from Respondent for the expense he has incurred to commence this arbitration

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following conclusions:

1. That since 1986 Complainant has been the owner of a United States Federal Trademark, PANTY EXPRESSÒ, Reg. #1,404,124.

2. That Respondent’s registration on November 4, 1999 of the domain names PANTYEXPRESS.COM, PANTYEXPRESS.NET, and PANTYEXPRESS.ORG was long after Complainant’s servicemark registration with the United States Federal Trademark office.

3. That the domain names at issue are identical to Complainant’s servicemark PANTY EXPRESSÒ.

4. That Respondent’s intention for registering said domain names was primarily for the purpose of re-sale for a valuable consideration in excess of its out-of –pocket costs directly related to the domain names.

5. That Respondent has no rights or legitimate interest in respect to the domain names.

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

1. THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAMES PANTYEXPRESS.COM, PANTYEXPRESS.NET, AND PANTYEXPRESS.ORG REGISTERED BY RESPONDENT BE TRANSFERRED TO COMPLAINANT.

[1] Any reference to “Rule” or “Rules” are to ICANN’s Rules for Uniform Domain Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as supplemented by the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy.