WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Express Messenger Systems, Inc. v. Golden State Overnight

Case No. D2001-0063

 

1. The Parties

The Complainant is Express Messenger Systems, Inc., a corporation organized in the State of Minnesota, United States of America (USA), with place of business in Phoenix, Arizona, USA.

The Respondent is Golden State Overnight, with address in Alameda, California, USA.

 

2. The Domain Names and Registrar

The disputed domain names are <californiaovernight.com> and <calovernight.com>.

The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via courier mail received by the WIPO Arbitration and Mediation Center ("WIPO") on January 12, 2001, and by e-mail received by WIPO on January 29, 2001. Complainant paid the requisite filing fees. On January 23, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions (with the Registrarís Response received by WIPO on January 24, 2001).

(b) On January 30, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail. Courier tracking information and telefax records in WIPOís file indicate that the notification was successfully transmitted to the contact points indicated in Respondentís domain name registration.

(c) On February 20, 2001, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail.

(d) On March 6, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On March 12, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(e) On March 13, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that it would be required to forward its decision to WIPO by March 26, 2001. On March 13, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

 

4. Factual Background

Complainant has registered the service mark "California Overnight" with the Office of the Secretary of State of the State of California (reg. no. 038895, filed July 22, 1991). Complaint, para. 12.1 and Exhibit D.

Complainant has used the "California Overnight" mark in commerce in connection with the pickup and delivery of packages within California since 1991, and in interstate commerce including certain other states of the United States since 1996 (id., para. 12.2). Complainant has a substantial customer base in certain western states of the United States, and maintains a substantial fleet of trucks as well as offices in those states (id., para. 12.4).

Complainant maintains an active commercial Internet website at "www.calover.com". Such website prominently displays the "California Overnight" service mark. Id., and Panel visit of March 26, 2001.

According to the registrarís verification response to WIPO, "Golden State Overnight", with address in Alameda, California, US, is the registrant of the disputed domain names <californiaovernight.com> and <calovernight.com>. According to a Network Solutions WHOIS database printout dated January 9, 2001, the records of the disputed domain names each were created on January 30, 1999, and were last updated on February 14, 1999. Complaint, Exhibit A.

By letter and telefax of April 9, 1999, Complainant through its counsel sent a cease and desist and transfer demand regarding the disputed domain name <californiaovernight.com> to Respondent (letter/fax from Frank J. Gilbert to Allan Chandler, Complaint, Exhibit F). By telefax from Respondent to Complainantís counsel dated April 12, 1999, Respondent indicated that it disagreed with Complainantís assessment regarding the similarity between the disputed domain name and Complainantís name. Respondent indicated, however, that in the "interest of friendly relations Ö I will comply with your request to disassociate californiaovernight.com with the Golden State Overnight web server, and re-point the domain to a web server of your choice" (telefax from Allan J. Chandler to Frank J. Gilbert). Id., Exhibit G.

The foregoing exchange of correspondence was followed by additional correspondence in which Respondent offered to enter into an arrangement which would effectively give Complainant control over identification of the web server to which the disputed domain name was addressed. Complainant agreed to pursue such an approach provided also that the disputed domain name <calovernight.com> was added to Respondentís undertaking. Complainant tendered to Respondent a draft agreement to carry out the aforesaid objectives on November 10, 1999. Respondent did not reply to Complainantís correspondence. Also, although Respondent initially re-pointed <californiaovernight.com> to Complainantís designated web server, since that initial action (and following Complainantís change of web server identification), Respondent has not directed the disputed domain names to Complainantís web server. Complaint, paras. 12.7-12.11, and Exhibits H-L. In a letter from Morley M. Chandler of Respondent to Complainantís counsel, dated July 14, 1999, Respondent stated: "We do agree not to point this domain site [californiaovernight.com] to our web site as this could represent a potential improper use of the trade name California Overnight" (Id., Exhibit J).

Several of the senior executives of Respondent, including Morley Chandler and Dana Hyatt, were senior executives of California Overnight prior to founding the Respondent. These senior executives were employed by Complainant during the period in which it began using the "California Overnight" mark, and Mr. Hyatt executed Complainantís application for California service mark registration in 1991. Complaint, para. 12, and Exhibit D.

The disputed domain name <calovernight.com> directs Internet users to Respondentís "Golden State Overnight" website (Id., para. 12.21 and Panel visit of March 26, 2001). The disputed domain name <californiaovernight.com> does not direct Internet users to an active Internet address (id).

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutionsí dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).

 

5. Partiesí Contentions

A. Complainant

Complainant alleges that it has rights in the service mark "California Overnight" based on its long and extensive use of that mark in commerce in California and several other U.S. western states, as evidenced, inter alia, by its registration of that mark with the Secretary of State of California (see Factual Background, supra). Complainant alleges that its use of the mark in interstate commerce in the United States has also created common law rights in the mark under Section 43(a) of the Lanham Act.

Complainant contends that the disputed domain names are identical or confusingly similar to its service mark. The dispute domain name <californiaovernight.com> is distinguished only by the elimination of a space and addition of ".com". The disputed domain name <calovernight.com> is confusingly similar to Complainantís mark because "cal" is a widely accepted abbreviation for "California", and Internet users entering the domain name <calovernight.com> would expect to find Complainantís website. The services offered by Respondent at its website are virtually identical to those offered by Complainant. This enhances the likelihood of consumer confusion.

Complainant indicates that Respondent has no rights or legitimate interests in the disputed domain names. Any suggestion that Respondent may have registered and used the disputed domain names in good faith prior to notice of a dispute is negated by Respondentís certain knowledge of Complainantís interest in its mark, as well as the fact that Respondent does not use the names anywhere on its commercial website.

Complainant alleges that Respondent has registered and used the disputed domain name <californiaovernight.com> in bad faith because it has prevented Complainant from registering its mark as a domain name, and this is part of a pattern evidenced by Respondentís registration of <calovernight.com>. Complainant alleges that Respondent registered <californiaovernight.com> to disrupt its business. Complainant asserts that Respondent registered and is using the disputed domain name <calovernight.com> intentionally to divert Internet users to Respondentís website by creating confusion as to Complainantís affiliation with or sponsorship of Respondentís website.

Complainant requests that the Panel direct the registrar to transfer the disputed domain names to it.

B. Respondent

Respondent did not respond to Complainantís contentions.

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion.(Footnote 1) The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond

(see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations (id., paragraph 15(a)).

Complainant has used the service mark "California Overnight" in commerce since 1991. It registered that mark in the State of California in 1991. Registration of a service mark in California establishes a presumption of ownership of the mark in that state. (Footnote 2) U.S. federal trademark law provides for the establishment of common law rights in service marks based on use and distinctiveness. (Footnote 3) In this proceeding, Complainant has presented substantial evidence of its use of the service mark "California Overnight" in commerce, and has asserted that it holds common law rights in that mark. Respondent has not presented any evidence to refute Complainantís claim to rights in that mark. For purposes of this proceeding, the Panel determines that Claimant has rights in the service mark "California Overnight" and that such rights arose prior to Respondentís registration of the disputed domain names on January 30, 1999.

Respondent has registered the domain name <californiaovernight.com>.

This disputed domain name (1) incorporates Complainantís mark, (2) eliminates the space between terms, and (3) adds the generic top-level domain (gTLD) ".com".

The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain name to "California Overnight" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. (Footnote 4) Similarly, the elimination of the space between terms is without legal significance since that change is dictated by technological factors and common practice among domain name registrants and users.

The Panel determines that the disputed domain name <californiaovernight.com> is identical or confusingly similar to Complainantís "California Overnight" service mark.

Respondent has registered the domain name <calovernight.com>. This disputed domain name (1) incorporates the terms "cal" and "overnight", (2) eliminates the space between terms, and (3) adds the generic top-level domain (gTLD) ".com".

The term "Cal" is a common abbreviation for "California". The use of a common abbreviation to substitute for part of a combination service mark does not in the circumstances of this case sufficiently distinguish the resulting domain name from the service mark. Internet users seeking Complainantís website are likely to use the name <calovernight.com>, particularly after determining that there is no active website identified by the domain name <californiaovernight.com>. It is through the acts of Respondent that there is no active website identified by the most obvious domain name that would be associated with Complainantís business. Bad faith in the adoption of a service mark or domain name is an important element in evaluating whether there is a likelihood of confusion, and in this case it is apparent that Respondent adopted the <calovernight.com> domain name in bad faith.

The Panel determines that the disputed domain name <calovernight.com> is confusingly similar to Complainantís "California Overnight" service mark in the sense of paragraph 4(a)(i) of the Policy.

Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

Respondent has used one of the disputed domain names to direct Internet users to its competing website, and has effectively rendered the other disputed domain name inactive. Such use is hereinafter determined to be in bad faith. Bad faith use of domain names does not establish rights or legitimate interests in names in the sense of paragraph 4(a)(ii) of the Policy. Because Respondentís executive officers were executive officers of Complainantís California Overnight business when Complainant began use of the "California Overnight" mark, Respondent cannot argue that it registered and used Complainantís mark as its domain names in connection with a bona offering of services prior to notice of a dispute.

Respondent has failed to establish rights or legitimate interests in the disputed domain names. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are: (1) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)); (2) that a respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor" (id., para. 4(b)(iii)); and (3) that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

Respondent registered and has used the disputed domain name <californiaovernight.com> by effectively rendering it inactive, such that an Internet user entering that name in a web browser will find that it is not associated with Complainantís business. Because Respondent and Complainant are competitors in the same market, the Panel determines that Respondent registered and has used the name <californiaovernight.com> for the purpose of disrupting Complainantís business within the meaning of paragraph 4(b)(iii) of the Policy.

Respondent registered and has used the disputed domain name "calovernight.com" to direct Internet users to its own website that provides services directly competing with those of Complainant. The Panel determines that Respondent intentionally registered and used this disputed domain name for the purpose of commercial gain by seeking to attract Internet users to its own website by creating confusion as to Complainantís affiliation with or sponsorship of Respondentís website. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

 

7. Decision

Based on its finding that the Respondent, Golden State Overnight, has engaged in abusive registration and use of the domain names <californiaovernight.com> and <calovernight.com>within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names <californiaovernight.com> and <calovernight.com> be transferred to the Complainant, Express Messenger Systems, Inc.

 


 

Frederick M. Abbott
Sole Panelist

Dated: March 26, 2001

 


 

Footnotes:

  1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
  2. Cal Bus & Prof Code ß 14241 (2001). A defendant in a service mark infringement action in California may rebut the presumption of ownership and a claim to distinctiveness.
  3. 15 USCS ß 1125(a) (2000).
  4. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). This sole panelist notes that in an earlier administrative proceeding he recognized, based on a USPTO determination, that the term ".com" may acquire secondary meaning under appropriate circumstances. See America Online, Inc. v. Dolphin@Heart, Case No. D2000-0713, decided August 24, 2000.