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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Plaza Operating Partners, Ltd. V. Pop Data Technologies, Inc. and Joseph Pillus
Case No. D2000-0166
The Domain Name and Registrar
The domain name at issue is plazahotel.com. This domain name is registered with Network Solutions, Inc. ("NSI").
The complainant is Plaza Operating Partners, Ltd. ("Plaza"), a corporation with its principal place of business in New York, New York. The Respondents are Pop Data Technologies, Inc. ("Pop Data"), a business entity with an address at 486 Sunrise Highway, Rockville Centre, New York, and Joseph Pillus ("Pillus"), an individual with an address at P.O. Box 10, Mount Sinai, New York. Mr. Pillus is the sole shareholder of Port Jefferson Asset Management Corp., a business entity that is not a party to this proceeding.
The Complainant initiated this proceeding by filing a Complaint by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 15, 2000. On March 20, 2000, the Center received a hard copy of the Complaint. After confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center sent Respondents notice of the commencement of this proceeding on March 22, 2000. The deadline for filing Responses was set for April 10, 2000.
On April 4, 2000, Respondent Pillus requested a two-week extension of time to file a response. The following day, the Center acknowledged his request and asked Pillus to confer with the Complainant to see if Complainant would consent to an extension. On April 7, 2000, Complainant stipulated to, and the Center approved, an extension for Pillus until April 23, 2000, to file his response. See Rule 5(d). Pillus submitted a timely response on April 21, 2000.
Meanwhile, on April 10, 2000, the original deadline for a response, Respondent Pop Data also requested a two-week extension of time. Through an oversight on the part of the Center, this request was not noticed until several weeks later and was thus neither granted nor denied. On April 24, 2000, Pop Data submitted its Response, two weeks after the initial deadline. The Center acknowledged this submission and noted that, because it was submitted after the deadline, the Panel would decide in its sole discretion whether to consider this late submission.
On May 5, 2000, without seeking permission from the Panel, the Complainant submitted a reply to Respondents’ Responses (the "Reply").
On May 8, 2000, the Center appointed David H. Bernstein as the sole Panelist. On May 10, 2000, the Panel received from the Center the case file, which was sent by overnight courier. On May 11, 2000, the Panel issued the following Interim Order:
Pursuant to Rule 12, the Panel hereby requests a further statement from each party addressing the two issues discussed below. Such further statements shall be delivered to the Center via email by 10 a.m., Eastern Daylight Time, on Monday, May 15, 2000. The statements shall be limited to seven double spaced pages, not including exhibits. Exhibits not available in electronic form shall be faxed to the Center, with hard copies to follow by courier. The Panel will disregard in their entirety any late filed or over long submissions.
1. Timeliness and Number of Submissions. Rule 5(a) requires a respondent to submit its response within 20 days of the commencement of the proceedings. That time period may be extended upon consent or upon a showing of exceptional circumstances. Rule 5(d). The Rules make no provision for any reply by complainant. See Rule 12.
In this case, both of the respondents requested an extension of time for the submission of their responses. The Center acknowledged respondent Pillus’ request and, upon the consent of complainant, granted an extension until April 23, 2000. Respondent Pillus submitted his response on April 21, 2000, within the time allotted.
Through inadvertence, the Center overlooked respondent Pop Data Technologies, Inc.’s request for an extension. Thus, the Center never acknowledged receipt of the request, nor did the Center ask whether complainant also consented to this request.
Under these circumstances, respondent Pop Data may have been confused into believing that its time to respond was extended, like that of Respondent Pillus’, to April 23, 2000. Even if that were the case, though, Pop Data’s response was untimely, as it was submitted on April 24, 2000. The lateness of this response constitutes a technical default, which allows the Panel to draw such inferences as it considers appropriate. Rule 14(b). . . .
[O]n May 5, 2000, complainant submitted a nine page reply with fifteen exhibits, which measures about a half an inch in thickness.
Before addressing the merits of this dispute, the Panel requests that the parties address whether they believe the Panel should accept respondent Pop Data’s late response and complainant’s unauthorized reply and, if so, whether to allow any further submissions and on what schedule. In this connection, respondent Pop Data may want to address why its response was submitted late, and complainant may want to address why this is an exceptional case that justifies a reply. Moreover, if the Panel accepts complainant’s reply, fairness may require that respondents be given an opportunity to submit a sur-reply, although any such sur-reply must be limited solely to new matter raised in the reply.
2. Owner of Domain Name. This case is unusual in that there are two respondents. The registrar of the domain name at issue, Network Solutions, Inc., has confirmed to the Center that Pop Data is the owner of the domain name. Pop Data, though, alleges that it sold the domain name. In one part of its response, it states that it sold the name to Port Jefferson Asset Management Corp. on February 29, 2000; later, it alleges that it sold the domain name to Pillus. Pillus, without providing any details concerning his acquisition of the domain name or his relationship, if any, to Port Jefferson Asset Management Corp., alleges that he is the owner of the domain name.
The Panel hereby requests that the respondents explain the chain of ownership of the domain name, and provide to the Panel a copy of all documents related to the transfer, assignment and/or sale of the domain name. These should include, without limitation, any agreements among Pop Data, Pillus, and any other parties for the transfer of the name, any indemnification agreements among those parties, any Registrant Name Change Agreement or other document submitted to Network Solutions, and any document in which Pillus has agreed to the Network Solutions Service Agreement (see Complaint, Ex. B). If Pillus asserts that he has not agreed to the Network Solutions Service Agreement, the Panel asks that Pillus indicate whether he consents to submit himself to the jurisdiction of this Panel and to operation of the Rules and the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"). If, as it appears, Pillus did purchase the domain name prior to the filing of the complaint, the Parties also should address whether both of the respondents properly are before the Panel, and whose conduct should be considered in determining whether the respondent(s) had a legitimate interest and/or used and registered the domain name in bad faith.
On May 15, 2000, Complainant and Pillus each filed a submission pursuant to the Interim Order. On May 16, 2000, the Panel issued the following Scheduling Order:
On May 11, 2000, the Panel invoked Rule 12 and requested (the "Request") a further statement from each party addressing two issues: (1) whether to accept respondent Pop Data Technologies’ late Response and Complainant’s Reply to the Respondents’ Responses; and (2) the identity of the owner of the domain name plazahotel.com, with full details regarding its transfer from Pop Data to Joseph Pillus. These statements were due by 10 a.m., Eastern Daylight Time, on Monday, May 15, 2000.
Complainant submitted a timely statement, which the Center forwarded to the Panel on May 15. Pillus submitted a statement late in the day on May 15, with the explanation that Pillus’ statement was late because his counsel (to whom the Request was sent) was out of the country and only returned on the afternoon of May 15. Because Pillus’ statement was not received by the Center until long after the close of business in Geneva, it was not forwarded to the Panel until the morning of May 16. On the basis of good cause shown, and because there is no prejudice in the acceptance of this late-filed statement, the Panel accepts Pillus’ statement. Pop Data did not submit any statement.
Having considered the statements, the Panel has determined that it does not need any further submissions from the parties. The record for this arbitration is hereby closed. Should there be any new developments that a party believes warrants submission of a further statement or document, the party first shall seek leave from the Panel, with an explanation of the reasons it seeks to supplement the record.
Given that the Panel has received Pillus statement today, the decision date for this matter is hereby reset for two weeks from today. Rules 10(c), 15(a). The Panel expects to render its decision by May 30, 2000.
On May 22, 2000, Respondent Pop Data filed a submission in response to the Panel’s May 11 Interim Order. Pop Data explained that its submission was late because it did not receive the Interim Order from the Center by fax, which was its preferred method of communication; instead, the Interim Order was sent by email to an address that Pop Data checks infrequently.
In its submission, Pop Data recounted the history of its communications with Complainant and with Pillus, the purchaser of the domain name. Although Pop Data said that the "bill of sale" was "attached," no such document was submitted to the Panel. On May 25, 2000, the Panel requested that Pop Data submit a copy of the bill of sale. Pop Data never responded to this request and never submitted a copy of the "bill of sale."
1. Pop Data’s Late Responses.
As a preliminary matter, the Panel must determine whether to accept Pop Data’s initial April 24, 2000, Response. Barring exceptional circumstances, a respondent must normally submit a Response within twenty days of the commencement of the proceedings. Rule 5(a). That time period may be extended upon consent or upon a showing of exceptional circumstances. Rule 5(d).
Both of the Respondents in this case requested an extension of time for the submission of their replies. The Center acknowledged Pillus’ request and granted an extension until April 23, 2000, after Complainant so stipulated. Through inadvertence, though, the Center overlooked Pop Data’s request for an extension. The Center neither acknowledged the request nor asked Complainant whether it would stipulate to such an extension.
Given the lack of any response from the Center, Pop Data may have been confused into believing that its time to respond was extended with Pillus’ to April 23, 2000, or perhaps to April 24, 2000, which was the extension that it requested. Under these circumstances, and given the Rules’ admonition that "the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case," Rule 10(b), principals of fairness dictate that the Panel accept the April 24 Response.
The Panel also believes it appropriate to accept Pop Data’s May 22 submission, which was filed in response to the Panel’s Interim Order. In its initial April 24 Response, Pop Data expressly requested that all notices be sent to it by fax rather than email. See Rules 2(b), 5(b)(iii). Because the Center erroneously sent the Interim Order to Pop Data only by email, Pop Data should not be penalized for its late receipt of the Order and its resulting late response.
Pop Data can claim no similar excuses for its failure to submit with its May 22 statement the additional documents the Panel requested (including the bill of sale and any other documents related to the sale of the domain name) or its subsequent failure to respond to the Panel’s May 25, 2000, request (sent by fax) that Pop Data submit a copy of the bill of sale discussed in its response. Accordingly, pursuant to Rule 14(b) and given Pop Data’s failure to comply with the Panel’s request, the Panel "shall draw such inferences therefrom as it considers appropriate."
2. Complainant’s Reply.
Rule 12 unambiguously provides that only the Panel may request further submissions: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties." There is no provision in the Rules for a party to file an additional submission without leave of the Panel.
Although litigants and parties in arbitrations may have a right of reply under the rules of other forums, ICANN chose a different procedure for these proceedings that calls for only a Complaint and a Response. Among other things, this more truncated procedure allows for more rapid and cost effective resolution of domain name challenges. See CRS Technology Corporation v. CondeNet, Inc., File No. FA#0002000093547 (NAF Mar. 28, 2000). At the same time, ICANN provided the Panel with the flexibility to seek additional submissions if the Panel feels that it can not rule on the record submitted.
If a Party wishes to submit a supplemental submission, the better practice under the Rules would be to first seek consent from the Panel, with an explanation of why a supplemental submission is warranted. Appropriate reasons may include the existence of new, pertinent facts that did not arise until after the submission of the Complaint, or the desire to bring new, relevant legal authority to the attention of the Panel. E.g , Pet Warehouse v. Pets.Com, Inc., Case No. D2000-0105 (WIPO Apr. 13, 2000). The Panel would then be in a position quickly to rule on the request and, if it determines that a supplemental submission is warranted, set a schedule that is fair to both parties and provides each party with an opportunity to supplement the record. This procedure also would save the Parties the expense of preparing responses the Panel decides not to accept.
In this case, Complainant simply submitted its reply without seeking prior permission from the Panel. To its credit, Complainant did acknowledge in its reply that acceptance of the reply was at the sole discretion of the Panel. It also explained why it believed a reply was justified: to clarify the record given its belief that Respondents misstated the law and mischaracterized the facts, and to place before the Panel two new decisions issued under the Rules that it believed were relevant to the issues in this case.
Although there may be factual or legal misstatements so egregious as to justify a reply, the Panel concludes that no such misconduct occurred in this case. To the extent the Parties have different interpretations of the law, the Panel is fully capable of reading the relevant authorities and drawing its own conclusions as to the proper interpretation of the law and rules. Similarly, the Panel is able to determine whether United States trademark registrations cited by the Respondent (which noticeably did not include an indication of their status, or even an application or registration number) are cancelled or abandoned through its own review of the U.S. Patent and Trademark Office website. None of the other factual allegations submitted in Complainant’s reply (such as information about concurrent users of the trademark PLAZA HOTEL in distant, limited territories) constitutes new facts that were not available at the time of the Complaint. The Complainant should have anticipated that these facts might be relevant to the Panel’s consideration, and thus should have included them in its initial Complaint.
Complainant’s second argument – that a reply was warranted to place before the Panel new legal authority handed down after Complainant submitted its Complaint – has more merit. To be fair, though, and avoid the need for argument and sur-replies, the most appropriate procedure in such circumstances is merely to submit the new authority to the Panel without any accompanying legal argument. See Pet Warehouse v. Pets.Com, Inc., Case No. D2000-0105 (WIPO Apr. 13, 2000).
For these reasons, the Panel has decided not to accept the text of the reply filed by Complainant, and has not relied on that material in reaching this decision. The Panel will accept, however, the additional decisions that the Complainant appended to its reply that were issued after the submission of the Complaint.
The following facts, taken from the Complaint, Responses, and publicly available documents on the Internet, are not disputed.
Complainant owns the Plaza Hotel, a famous hotel and landmark in New York City. In its near century of existence, the Plaza Hotel has been the subject of many positive reviews and articles, and has been featured in literature and films. Although Complainant has shown that it is the owner of trademark registrations for the marks THE PLAZA (for hotel and restaurant services and various goods), THE PLAZA COLLECTION (for goods), and YOUNG PLAZA AMBASSADORS (for clothing and entertainment services), there is little question but that Complainant also has established common law rights in the mark THE PLAZA HOTEL.
Pop Data registered plazahotel.com with NSI on September 27, 1996. The domain name has never been used for any purpose.
On October 28, 1999 and again on February 2, 2000, Complainant wrote to Pop Data to demand the transfer of the plazahotel.com domain name. During discussions on February 8 and 10, 2000, Pop Data’s president, Scott Miller, refused to transfer the domain name unless Complainant would purchase it for $10,000. Mr. Miller threatened that, if Complainant refused to purchase the domain name, Pop Data might sell it to another party. Complainant did not purchase the domain name from Pop Data.
Pop Data apparently made good on its threat. On February 29, 2000, it sold the domain name to Port Jefferson Asset Management Corp. for an undisclosed sum; Port Jefferson in turn transferred or sold the domain name to its owner, Joseph Pillus. Later that day, Pillus contacted Complainant and advised that he had, in fact, purchased the domain name from Pop Data for an undisclosed sum. Although he claimed to have relatives in Belgium who owned a hotel with "Plaza" in the name, Pillus indicated that he was willing to sell the name to Complainant. On March 1, 2000, after Complainant sent Pillus copies of its correspondence with Pop Data, Pillus offered to sell the domain name for $575,000. Complainant rejected that demand and, instead, filed the instant proceeding.
As noted in the Panel’s Interim Order, one interesting issue raised by this dispute is whether both Respondents have agreed to the jurisdiction of this Panel.
WIPO, as an accredited provider under the Rules, does not have jurisdiction over a party unless the party has agreed to be subject to these proceedings. Although registrants of domain names in the .com generic top-level domain ("gTLD") have agreed, through their registration agreements, to submit to the jurisdiction of these ICANN proceedings, the Panel cannot reach parties who have not so agreed. See Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, Case No. D2000-0138 (WIPO Apr. 19, 2000).
Pop Data claims in its response that it is not properly before the Panel because it no longer has an interest in the domain name plazahotel.com. Although both Pop Data and Pillus agree that Pop Data sold the domain name to Pillus on February 29, 2000, NSI still lists Pop Data as the owner of the domain name. In these circumstances, although Pop Data may have signed a document selling its rights in the domain name, it is clear that Pop Data remains a necessary party to these proceedings and, by virtue of its registration agreement with NSI, properly is before this Panel.
Pillus, in contrast, is not listed by NSI as an owner of the domain name, and has not submitted to this Panel a signed copy of a registration agreement in which he consents to the jurisdiction of ICANN Panels. Nevertheless, Pillus asserts that he is the owner of the domain name, and, through his participation in these proceedings, voluntarily has agreed to subject himself to this Panel’s jurisdiction. Given Pillus’ voluntary submission to the Panel’s jurisdiction, the Panel concludes that it does have jurisdiction over Pillus, and that Pillus properly is before the Panel.
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
i. the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
iii. the domain name has been registered and is being used in bad faith.
1. Similarity of the Mark and Domain Name.
This first factor contains two elements: first, does the Complainant have rights in a relevant mark, and second, is the domain name identical or confusingly similar to that mark. The Panel concludes that Complainant has satisfied its burden on both parts of this factor.
Complainant has submitted persuasive evidence that it owns the famous mark THE PLAZA for use in hotel and restaurant services and assorted merchandise. Complainant also has submitted documentary evidence showing that its hotel is sometimes referred to as THE PLAZA HOTEL including, it appears, on the brass "Historic Landmark" plaque affixed to the hotel. That Complainant does not own a trademark registration for PLAZA HOTEL is immaterial as use of the designation THE PLAZA HOTEL in commerce is sufficient to establish common law trademark rights in that mark.
Complainant also has satisfied its burden of proving that the domain name plazahotel.com is confusingly similar to the mark THE PLAZA HOTEL. The only difference between the domain name (not including the ".com" gTLD) and the mark is the word "the." There thus can be no dispute but that the domain name is confusingly similar to Complainant’s mark.
2. Respondent Has No Legitimate Interest in the Domain Name.
Given the participation of two Respondents in this case, an interesting issue is which Respondent’s interest is relevant to determining whether the interest is legitimate – Pop Data, the original registrant, or Pillus, the recent purchaser. Because the Panel concludes that neither party has a legitimate interest in this name, the Panel need not reach this issue in this case.
Pop Data asserts as its legitimate interest that it registered this domain name so that it could offer it for sale to a prospective client of its web building services. Pop Data states that it actually did pitch this name to the head of catering for an unidentified hotel. If the domain name at issue were a generic domain name, like hotel.com or hotelcatering.com, Pop Data’s arguments might hold water. But the domain name here is not a generic word. Rather, the domain name incorporates the famous PLAZA HOTEL trademark. In these circumstances, and given the absence of evidence that Pop Data’s clients included hotels with the word "Plaza" in their name, the Panel finds that Pop Data’s effort to interest another hotel in the plazahotel.com domain name evidences an illegitimate interest – trademark infringement.
Pillus’ assertion of legitimacy fairs no better. In his discussions with Complainant, Pillus asserted that he has relatives in Belgium who own a hotel with the word "Plaza" in the name. In the absence of concrete evidence of facts such as the truthfulness of that unsworn statement, his relationship with these unidentified relatives, and proof that he was acting on their behalf, this assertion is not credible and not entitled to any weight by the Panel. Moreover, any argument that Pillus acquired this name for the benefit of his relatives is directly undercut by Pillus’ subsequent statement in the Response that he "has not yet decided how he would intends [sic] to use the domain name."
For all these reasons, the Panel finds that both Respondents lack any legitimate interest in the domain name plazahotel.com.
3. Respondent Registered and Used the Domain Name in Bad Faith.
As with the issue of legitimacy of interest, an interesting issue here is whether the Panel should focus on Pop Data or Pillus in determining whether the name was registered and used in bad faith. Again, because both Respondents exhibited bad faith, the Panel need not reach that issue in this proceeding.
Pop Data registered the domain name in 1996 and, for nearly four years, never developed a website. When it did attempt to interest a client in the domain name, it approached a client in the hotel catering business – a venture that, if successful, likely would have resulted in consumer confusion. This alone is evidence of bad faith. Policy 4(b)(4). Pop Data’s subsequent offer to sell the domain name to Complainant, even if prompted by Complainant’s demand letter, is further evidence of Pop Data’s bad faith intent to profit from this domain name. Policy 4(b)(i).
Pillus’ bad faith is even more palpable. In light of his refusal to submit the purchase documentation requested by the Panel, the Panel infers that Pillus was well aware of the dispute between Complainant and Pop Data and acquired the name from Pop Data for the sole purpose of selling it to Complainant at a profit. Indeed, immediately after his acquisition of the domain name, he offered to sell the domain name to Complainant for the staggering sum of $575,000 (which, the Panel infers, is far, far greater than his out of pocket acquisition costs). This is classic cyberpiracy and the epitome of bad faith. Id.
Pillus tries to avoid this finding by arguing that there are dozens of "Plaza Hotels" worldwide, and thus his purchase of the name was not in bad faith. That fact, which the Panel credits, does not excuse Pillus’ conduct. That a number of parties may own trademark rights in this mark does not mean that Pillus, a party without any such rights, can register the plazahotel.com domain name and then decide which of the trademark owners to sell it to.
In sum, the Panel finds that both of Pop Data and Pillus registered and used this domain name in bad faith.
For all of the foregoing reasons, the Panel finds that the domain name plazahotel.com is confusingly similar to Complainant’s mark THE PLAZA HOTEL, that Respondents Pop Data and Joseph Pillus have no rights or legitimate interests in respect of the domain name, and that the Complainant has adequately demonstrated that Respondents registered and used the domain name in bad faith. Accordingly, the Panel orders that the registration of the domain name plazahotel.com be transferred to the Complainant.
David H. Bernstein
Dated: June 1, 2000
1. The Panel notes that the Complainant’s reply did not contain the certification required by Rules 3(b)(xiv), 5(b)(viii). Although the Rules contemplate that this certification would be attached to "complaints" and "responses," it is fully appropriate to require that any submission by a party, particularly one that makes factual assertions, contain this certification. Because the Panel has concluded for independent reasons that it will not accept the reply, the Panel need to consider whether the absence of a certification provides an independent basis for rejecting the reply. See generally Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000).