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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Plan Express Inc. v. Plan Express
Case No. D2000-0565
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 registrar’s 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 Respondent’s 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 Donahey’s 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 comain 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.
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.
M. Scott Donahey
Dated: July 17, 2000