Domain name - Domain name dispute resolution policy - U.S. Trademarks - Identical - Confusingly similar - No evidence of bad faith - Legitimate interest - No actual confusion - Evidence of offers made in course of negotiations excluded.

Complainant was owner of United States trademark registration for LIFEPLAN for weight reduction and maintenance services.  Respondent was using LIFEPLAN.COM in connection with non-financial lifetime goal setting services.  Respondent offered to sell LIFEPLAN.COM to Complainant.

Held, Name Not Transferred.

Complainant's exclusive right to use LIFEPLAN is limited to the services covered by the trademark registration, namely diet planning and weight loss.

Respondent has shown that it has rights and legitimate interests in LIFEPLAN.COM.  There is nothing to show Respondent has breached the Registration Agreement.

No evidence to show that Respondent "'registered the domain name primarily for the purpose of' selling, renting or transferring the domain name to the Complainant".  Offer to sell LIFEPLAN.COM was made in course of negotiations to settle dispute.  Evidence of such offers not considered pursuant to Federal Rule of Evidence 408.

Complainant failed to meet burden to have registration transferred.

Policies referred to 

ICANN Uniform Domain Name Dispute Resolution Policy
Rules for Uniform Domain Name Dispute Resolution Policy
United States Federal Rule of Evidence 408
Network Solutions Service Agreement Version 4.0

Cases referred to

Trebor Sportswear Co. v. The Ltd. Stores, Inc., 865 F.2d. 506, 510 (2nd Cir. 1989)

Panel Decisions referred to

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Michels, Panelist:
 

PARTIES

The Complainant is LifePlan, New York, NY, USA ("Complainant"). The Respondent is Life Plan, c/o Relational Dynamics, Inc., Pasadena, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is “LIFEPLAN.COM”, registered with Network Solutions Inc. (“NSI”).

PANELISTS 

Paul Michael DeCicco, Esq., Honorable Theodore R. Kupferman and Honorable Herman D. Michels, Chair, as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/12/2000; The Forum received a hard copy of the Complaint on 05/22/2000. 

On 05/17/2000, NSI confirmed by e-mail to The Forum that the domain name “LIFEPLAN.COM” is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 05/22/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/12/200 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. Respondent timely filed its Response to the Complaint.

On June 29, 2000, pursuant to Respondent’ s request to have the dispute decided by a Three Member panel, The Forum appointed Paul Michael DeCicco, Esq., Honorable Theodore Kupferman and Honorable Herman D. Michels, Chair, as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant. 

PARTIES’ CONTENTIONS

A. Complainant
Complainant contends that it is the owner of the United States Trademark Registration No. 1,916,982 and, therefore, has exclusive right to the registered mark LifePlan; that the domain name LIFEPLAN.COM is identical to Complainant’s trademark, and that Respondent did not federally register LIFEPLAN and offered to sell the domain name LIFEPLAN to Complainant.

B. Respondent
Respondent requests the Panel to rule against Complainant and order the domain name LIFEPLAN.COM be restored to Respondent’s use in light of the complete lack of support in the Complaint and the record and that the Panel declare in its Decision that Complaint was brought in bad faith and is abuse of the administrative proceedings. While Respondent concedes that the domain name is identical except for the “.COM” and that Complainant owns the registered mark and may have rights relating to that mark for the area of commerce listed on the trademark, Respondent disputes the Complainant’s claim that it has exclusive rights to the registered mark. Respondent argues that any rights Complainant has in the term “LIFEPLAN” are limited at most to diet planning and weight loss and that the mark in no way puts into question Respondent’s legitimate interests in “LIFEPLAN.” Respondent claims that Complainant’s trademark does not prevent it or anyone else from using the trademark in an are of commerce that is not associated with weight loss.

Moreover, Respondent argues that Complainant has not alleged nor has shown actual confusion or the risk of confusion between any use Respondent has made or might make of LIFEPLAN.COM and any rights Complainant may have.

Respondent further contends that Complainant has failed to prove or offer any evidence of bad faith in the registration and use of the domain name. Respondent contends that it did not register or use the domain name in bad faith. Finally, Respondent request that all references to offers of settlement be stricken as inadmissible under Rule 408. See Trebor Sportswear Co. v. The Ltd. Stores, Inc., 865 F.2d. 506, 510 (2nd Cir. 1989).

FINDINGS

Complainant is the owner of registered trademark “LIFEPLAN” registered with the United States Patent and Trademark Office on March 14, 1994. The service mark is for weight reduction and maintenance diet planning and supervision in Class 42 (U.S.CLS.100 & 101).
Respondent registered the domain name LIFEPLAN.COM with NSI on March 21, 1995. Respondent registered the name in connection with non-financial lifetime goal setting services offered by Relational Dynamics Institute Inc. The registration of the domain name LIFEPLAN.COM was held in abeyance by NSI.

While Respondent admits that a letter-by-letter comparison between his domain name LIFEPLAN.COM and Complainant’s registered mark LIFEPLAN shows they are identical except for the “.COM” and that Complainant may have rights relating to the mark for the area of commerce listed on the trademark, Respondent contends and we do find on this record that Complainant does not have exclusive rights to the use of the terms “LIFEPLAN” and “LIFE PLAN.” The evidence indicates that there are other individuals with unregistered common-law rights in these terms. Thus, Complainant’s rights in the term LIFEPLAN are limited to the diet planning and weight loss in the domain name LIFEPLAN.COM. In view of the allegations in the Complaint and based on this record it has not been alleged nor has it been shown that there is any actual confusion or the risk of confusion between the use Respondent has made or might make of LIFEPLAN.COM and any rights Complainant has with respect to the mark LIFEPLAN. If, however, the proofs had shown that Respondent were using or attempting to use the domain name for or in connection with diet or weight reduction, or maintenance planing or supervision, we would reach a contrary conclusion.

Additionally, based on the evidence presented, other registered trademarks use the term “LIFEPLAN,” such as “LifePlan” under United States Trademark Registration 1,434,191 which is registered to an individual for use in financial planning. The evidence also shows there are other registered and pending trademarks involving the terms “LIFEPLAN” or “LIFE PLAN.” Thus, any exclusivity rights Complainant may be entitled to with respect to the word “LIFE PLAN” are for weight reduction and maintenance and do not entitle Complainant to Respondent’s domain name LIFEPLAN.COM. 

Finally, it does not appear from the record that Respondent registered or used the domain name LIFEPLAN.COM in bad faith.

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements to support a claim that a domain name should be canceled 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

It is not disputed that Respondent’s domain name LIFEPLAN.COM is identical or similar to Complainant’s registered trademark LIFEPLAN.

Rights or Legitimate Interests

Respondent has established that it has rights and legitimate interests in LIFEPLAN.COM domain name. No evidence has been presented which shows Respondent has in anyway breached the Registration Agreement that spawns and defines its rights and duties regarding the Internet domain name LIFEPLAN.COM.

Registration and Use in Bad Faith

As “proof” of Respondent’s “bad faith” Complainant asserts that: “on 6/10/96 the Respondent [he] offered to sell the domain name lifeplan to me via telephone correspondence.” Complaint page 2. The Policy at paragraph 4(b)(1) addresses circumstances where offering to sell, rent or transfer a domain name to the Complainant shows “bad faith.” However, the mere offering, without more, does not indicate circumstances suggesting that Respondent “registered the domain name primarily for the purpose of” selling, renting, or transferring the domain name to the Complainant as required under 4(b)(1).

Moreover, Respondent shows that the “offer” was made in with the context of negotiations aimed at settling the parties’ on-going domain name dispute. Under paragraph 10(d) of the Rules, the panel “shall determine the admissibility of evidence.” Rules for Uniform Domain Name Dispute Resolution Policy, ¶ 10(d). Respondent’s argument that evidence of the offer should not be considered pursuant to Federal Rule of Evidence 408 is thus well taken and such “evidence” is omitted from the Panel’s consideration.

Therefore, the Panel finds no evidence of bad faith on the part of the Respondent, and further that Complainant, having failed to prove any of the three required UDRP elements, has failed to meet the burden under the UDRP necessary for the Panel to upset the registration status quo of the subject domain name.

Finally, the Panel declines to find that Complainant has engaged in reverse domain hijacking as alleged by Respondent.

DECISION

Based upon the above findings and discussion and pursuant to Rule(4)(i) of the Rules of Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum Supplemental Rules of ICANN’s Uniform Domain Name Dispute Resolution Policy, the Panel, consisting of Paul DeCicco, Esq., Honorable Theodore R. Kupferman and Honorable Herman D. Michels, hereby Order that the relief requested by Complainant be denied; that the registration of the domain name LIFEPLAN.COM by Respondent not be disturbed, and that the hold on the registration of the domain name LIFEPLAN.COM by NSI be released.
  Dated: July 13, 2000 
Herman D. Michels, Arbitrator