[Indexed as: Plan Express v. Plan Express]
[INDEXED AS: PLANEXPRESS.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No.: WIPO D2000-0565
Commenced: 16 June 2000
Judgement: 17 July 2000
Presiding Panelist: M. Scott Donahey
Domain name Domain name dispute resolution Registered trademark Identical or confusingly similar Unlimited application of domain name No geographic or product restrictions Rights or legitimate interests in domain name Domain registered prior to trademark registration No constructive notice No knowledge of business No knowledge of trademark Development of website.
Complainant registered trademark PLAN EXPRESS. Respondent registered domain name at issue PLANEXPRESS.COM prior to Complainants trademark registration. Respondent had begun to develop the website but stopped because of increasing costs. Respondent offered domain name for sale to Complainant for an amount less than development costs already spent. Complainant asks for transfer of domain name.
Held, Name Not Transferred
Domain name is identical or confusingly similar to Complainants
registered trademark. There is no need to consider the geographic
or product scope of the domain name. Panel only needs to consider
the domain name itself.
Respondent had legitimate interests or rights in the disputed domain
name. Respondent provided evidence to support its claim that it registered
the domain name before Complainants application for trademark registration.
Furthermore, Respondent was not aware of Complainants business or trademark
at the time of registering the domain name. Respondent also took
measures to develop a website for the domain name.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Cases referred to
mPower Communications Corp. v. Park Lodge Hotel, WIPO Case No. D2000
0078
Panel Decision referred to
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Donahey, Panelist: -
1. The Parties
1.1 The Complainant is Plan Express Inc., a corporation organized under
the laws of the State of Wisconsin, having its principal place of business
at 3003 Airways Boulevard, Suite 2147, Memphis, Tennessee, United States
of America.
1.2 The Respondent is Pan Express, appearing through Elan Homes, a
Texas Corporation, located at 3006 Bernadette, Houston, Texas, United States
of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is "planexpress.com", which domain name is
registered with Network Solutions, Inc., based in Herndon, Virginia.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual
Property Organization Arbitration and Mediation Center (the "WIPO Center")
on June 6, 2000, and the signed original together with four copies forwarded
by express courier was received on June 9, 2000. An Acknowledgment of Receipt
was sent by the WIPO Center to the Complainant, dated June 8, 2000. On
June 15, 2000 the WIPO Center received an Addendum to Complaint which also
had been transmitted to the Respondent.
3.2 On June 8, 2000, a Request for Registrar Verification was transmitted
to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1)
confirm that the domain name at in issue is registered with NSI; (2) confirm
that the person identified as the Respondent is the current registrant
of the domain name; (3) provide the full contact details (i.e., postal
address(es), telephone number(s), facsimile number(s), e-mail address(es))
available in the registrars Whois database for the registrant of the disputed
domain name, the technical contact, the administrative contact and the
billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution
Policy (the "Policy") is in effect; (5) indicate the current status of
the domain name.
3.3 On June 10, 2000, NSI confirmed by reply e-mail that the domain
name "planexpress.com" is registered with NSI, is currently in active status,
and that the current registrant of the name is Plan Express, at 3006 Bernadette,
in Houston, Texas. The registrar also forwarded the requested Whois details,
and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal
requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution
Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain
Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has
independently determined and agrees with the assessment of the WIPO Center
that the Complaint is in formal compliance with the requirements of the
Uniform Domain Name Dispute Resolution Policy, adopted by the Internet
Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999
(the "Policy"), the Uniform Rules, and the Supplemental Rules. The required
fees for a single-member Panel were paid on time and in the required amount
by the Complainant.
3.5 No formal deficiencies having been recorded, on June 16, 2000,
a Notification of Complaint and Commencement of Administrative Proceeding
(the "Commencement Notification") was transmitted to the Respondent (with
copies to the Complainant, NSI and ICANN), setting a deadline of July 5,
2000, by which the Respondent could file a Response to the Complaint. The
Commencement Notification was transmitted to the Respondent by courier
and by e-mail to the e-mail addresses indicated in the Complaint. In any
event, evidence of proper notice is provided by the evidence in the record
of the Respondents participation in these proceedings.
3.6 A Response was received in electronic form on June 27, 2000, and
in hard copy on June 29, 2000. An Acknowledgment of Receipt (Response)
was sent by the WIPO Center on June 30, 2000.
3.7 On July 4, 2000, having received M. Scott Donaheys Statement of
Acceptance and Declaration of Impartiality and Independence, the WIPO Center
transmitted to the parties a Notification of Appointment of Administrative
Panel and Projected Decision Date, in which M. Scott Donahey was formally
appointed as the Sole Panelist. The Projected Decision Date was July 17,
2000. The Sole Panelist finds that the Administrative Panel was properly
constituted and appointed in accordance with the Uniform Rules and the
WIPO Supplemental Rules.
4. Factual Background
4.1 Complainant registered the trademark "Plan Express" with the United
States Patent Office ("USPTO") on October 12, 1999. The application was
filed on September 8, 1998.
4.2 Complainant has operated under the name, "Plan Express" since 1994.
4.3 Respondent registered the domain name at issue on April 16, 1998.
At the time that Respondent registered the domain name at issue, Respondent
was unaware of the business operating under the name "Plan Express in Memphis.
4.4 Respondent produced evidence which showed that Respondent had expended
time and money in an attempt to develop a web site prior to the time that
Complainant filed for registration of a trademark.
4.5 Because of increasing expenses in the cost of developing the intended
searching algorithm for the web site, Respondent ceased all development
of the web site.
4.6 Instead, in the first quarter of 2000, Respondent offered the web
site for sale $4,500, which was less than Respondent had spent on development
costs.
4.7 Respondent sold the domain name at issue for that price to a third
party. That sale is on hold pending resolution of this dispute.
5. Parties Contentions
5.1 Complainant contends that Respondent has registered as a domain
name a mark which is identical to the service mark registered and used
by Complainant, that Respondent has no rights or legitimate interests in
respect of the domain name at issue, and that Respondent has registered
and is using the domain name at issue in bad faith.
5.2 Respondent contends that the domain name at issue is not identical
or confusingly similar to Complainant's trademark, that Respondent has
a right or legitimate interest in respect of the domain name, and that
Respondent neither registered nor used the domain name in bad faith.
5.3 Respondent also contends that Complainant is engaged in reverse
domain name highjacking and seeks a determination that Complainant was
acting in bad faith.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles
the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Since both the Complainant and Respondent are domiciled in the
United States, and since United States courts have recent experience with
similar disputes, to the extent that it would assist the Panel in determining
whether the Complainant has met its burden as established by Paragraph
4(a) of the Policy, the Panel shall look to rules and principles of law
set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must
prove each of the following:
1) that the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant
has rights; and,
2) that the Respondent has no legitimate interests in respect of the
domain name; and,
3) the domain name has been registered and used in bad faith.
6.4 Respondent argues that since, in the course of the prosecution
of Complainant's mark, Complainant disavowed any claim to the exclusive
use of the word "Plan" apart from the mark as depicted, and since Complainant
registered his mark in the class of "document reproduction services, namely,
construction plan reproduction," Respondent's domain name is not identical
or confusingly similar to Complainant's mark.
6.5 Respondent misapprehends the test set forth in the Policy. Unlike
American trademark law, the Policy does not limit its application to particular
geographic or product markets. Policy, 4(a)(i). To determine whether
a name is identical or confusingly similar to a mark, the panel merely
compares the mark in question to the domain name at issue, regardless of
the various lines of business in which each is used, or of the geographic
areas in which each party conducts business.
6.6 The Panel finds that the domain name at issue is identical or confusingly
similar to the domain name at issue.
6.7 Complainant has alleged that Respondent has no right or legitimate
interest in respect of the domain name at issue. This shifts the burden
to Respondent to show that it has rights or legitimate interests in respect
of the domain name at issue. See, e.g., Policy, 4(c).
6.8 Respondent produced evidence sufficient to rebut Complainant's
allegations. Respondent produced evidence to show that it registered the
domain name prior to the application by Complainant to register its trademark.
Thus, the theory of constructive notice could not apply.
6.9 Moreover, Respondent did not know of Complainant's business at
the time he registered the domain name at issue, nor at any time during
Complainant's trademark application and registration time period. Respondent
produced evidence that during this same period of time, Respondent began
taking steps to develop a website using the domain name at issue.
6.10 Paragraph 4(c)(i) provides that "the following circumstances .
. . shall demonstrate [the Respondent's] rights or legitimate interests
to the domain name for purposes of Paragraph 4(a)(ii): before any notice
to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable
preparations to use, the domain name . . . in connection with a bona fide
offering of goods or services . . . ." See, e.g., mPower Communications
Corp. v. Park Lodge Hotel, WIPO Case No. D2000 0078.
6.11 Because the Panel has determined that Respondent has a right or
legitimate in respect of the domain name at issue, Complainant has failed
to carry his burden of proof on this issue. Policy, Paragraph 4(b). Since
it is Complainant's burden to establish each and every one of the three
factors, this failure is fatal to Complainant's case.
6.12 Because the Panel has determined that Respondent had a right or
legitimate interest in respect of the domain name at issue, there is no
need to determine whether the Respondent has registered and is using the
domain name at issue in bad faith.
6.13 To find that a party had engaged in reverse domain name highjacking,
the Panel finds that there is no substantial bases for such a claim. The
panel finds that a Respondent must show knowledge on the part of Complainant
or Respondent's right or legitimate interest in respect of the domain name
at issue and evidence of harassment or similar conduct by the Complainant
in the face of such knowledge. Respondent did not meet this burden.
7. Decision
For all of the foregoing reasons, the Panel decides that the Respondent
has rights or legitimate interests in respect of the domain name at issue
and finds in favor of the Respondent. The Panel denies Respondent's claim
for reverse domain name highjacking.
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