WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Howard B. Stevens, Inc., dba PC Professor v. The PC Professor
Case No. D2001-1282
1. The Parties
1.1 The Complainant is Howard B. Stevens, Inc., dba PC Professor, a corporation organized and existing under the laws of the State of Florida, United States of America, having a place of business at 6080 Okeechobee Blvd., #200, West Palm Beach, Florida, United States of America (hereinafter referred to as "Complainant").
1.2 The Respondent is The PC Professor, an entity having an address at 1 Stoneybrook Lane, #312, Ridley Park, Pennsylvania, United States of America (hereinafter referred to as "Respondent").
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <thepcprofessor.com>, which domain name is registered with Network Solutions, Inc. ("NSI"), based in Herndon, Virginia.
3. Procedural History
3.1 A Complaint was submitted by hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 23, 2001, naming Jonathan Pritchard and Glynis Pritchard as Respondents. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated October 24, 2001.
3.2 On October 26, 2001, a Request for Registrar Verification was transmitted to the registrar, NSI, requesting it to, among other things: (1) confirm that the domain name at 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 October 30, 2001, NSI confirmed by reply e-mail that the domain name at issue is registered with NSI, is currently in active status, and that The PC Professor is the current registrant of the domain name at issue, at the same address given for the individuals identified by Complainant as the respondents. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 On October 30, 2001, the WIPO Center transmitted a Notification of Deficiency to the Complainant, notifying the Complainant that it had not received the electronic version of the Complaint, nor four hard copies thereof. On November 5, 2001, the WIPO Center acknowledged receipt of the electronic version and four hard copies of the Complaint.
3.5 The WIPO Center determined that the Complaint satisfied 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 required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.6 No further formal deficiencies having been recorded, on November 5, 2001, 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 November 25, 2001, 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.
3.7 A Response was received on November 24, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on November 27, 2001. The Response included an Annex 9 that Respondent had designated as confidential and that had not been transmitted to the Complainant. The WIPO Center did not transmit Annex 9 to the Panel, but advised the Panel of its existence and left it to the Panel's discretion to accept or reject the confidential Annex 9. The Panel subsequently agreed to receive that Annex 9 on the basis that the Respondent agreed for it to be provided to the Complainant. The Respondent so agreed, and the Center then transmitted the Annex 9 to the Complainant and the Panel.
3.8 On November 27, 2001, the WIPO Center sent Complainant a second Notice of Deficiency, noting that the identified Respondent did not correspond to the name of the Respondent shown in the records of the Registrar. On November 29, 2001, in electronic format and on December 4, 2001, in hard copy, the WIPO Center received an Amended Complaint (hereinafter the "Complaint") correcting the deficiency.
3.9 On December 12, 2001, 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 December 26, 2001. 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 service mark PC PROFESSOR in connection with educational services, namely conducting classes in the field of computer usage with the United States Patent and Trademark Office ("USPTO") on February 18, 1997. The registration shows a first use in 1988 and a first use in commerce on October 19, 1995. (Complaint, Annex 3.)
4.2 Complainant registered the domain name <pcprofessor.com> on August 30, 1995.
4.3 Complainant conducts a franchise operation that Complainant contends is intended for the national U.S. market. (Complaint, Annexes 4 and 5.) The franchised businesses operate under the name "PC Professor." To date, Complainant has three franchisees, all of which are in South Florida.
4.4 Respondent registered the domain name <thepcprofessor.com> on January 18, 1998.
4.5 On May 18,1998, Respondent registered the domain name <pcperfecters.com>. (Response, Annex 10.) Thereafter, Complainant registered the domain name <pcperfectors.com> on August 8, 2000.
4.6 Since 1996, Respondent has been engaged in the business of personal computer sales, and technical services, such as installations, repairs, upgrades, etc. Originally, Respondent used the domain name at issue to resolve to a web site at which such sales and service were offered. (Complaint, Annexes 8 and 9, Response, Annex 10.) At the time the Complaint was filed the web site to which the domain name at issue resolved indicated that it was under construction and asked that users return on 12/01/01. (Complaint, Annex 10.)
4.7 In January 2001, Respondent changed the name of his business to "PC Perfecters." The domain name at issue currently resolves to a web site at which Respondent answers questions related to personal computers without charge for the inquiry. (Response, Annex 10.)
4.8 Complainant first contacted Respondent concerning Complainant's objections to Respondent's use of the domain name at issue in March 1998, almost 4 years ago. (Response, Annex 1.) Complainant contended that the domain name at issue was confusingly similar to Complainant's domain name and mark, and demanded that Respondent cease such use.
4.9 Respondent replied through his attorney. Applying the likelihood of confusion analysis of traditional American trademark law to territory and to sales markets, Respondent argued that it had established priority in the Middle Atlantic States. Respondent stated that Complainant could continue to use the term "PC Professor" on a national basis, so long as it limited its business to educational services. (Response, Annex 1.)
4.10 In mid-1999, Complainant requested Respondent to make an offer to settle the dispute. Respondent, through its attorney, offered to transfer the domain name at issue to Complainant, to change the name of Respondent's business, to change Respondent's signage and printed material, and to advertise the new name in return for a link on Complainant's web site to Respondent's web site for a period of two years and the payment of USD $25,000.
4.11 Complainant did not respond to this offer, but from time to time would communicate with Respondent, demanding that Respondent turn over the domain name at issue. Finally in July 2000, Complainant's attorney wrote to Respondent, demanding that Respondent cease and desist from all use of the PC PROFESSOR service mark. (Response, Annex 1.) Respondent's attorney replied, requesting a reasonable settlement offer.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered a domain name that 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 it registered the domain name at issue in conjunction with the business it had been conducting under that name, that it had used the domain name in conjunction with that business until the business name change, and that now it was providing free information services at the web site to which the domain name resolves. Respondent contends that it has rights and legitimate interests in respect of the domain name. Respondent contends that it has always proceeded in good 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 rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
6.4 It is clear that the domain name at issue <thepcprofessor.com> is identical or confusingly similar to the mark in which the Complainant has rights. (See Bennett Coleman & Co. Ltd v. Steven S Lalwani and Long Distance Telephone Company, WIPO Case Nos. D2000-0014 and D2000-0015 (incorporation of the definite article "the" in the domain name does not destroy identicality)).
6.5 The Panel finds that 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, paragraph 4(c).)
6.6 Respondent has produced evidence that it has operated under the business name "The PC Professor" from 1996 until January 2001, at which time it changed its name. Respondent has shown that it currently operates an informational web site without charge for inquiries. Accordingly, Respondent has demonstrated rights or legitimate interests in respect of the domain name at issue in accordance with paragraphs 4(c)(i) and (iii) of the Policy.
6.7 Respondent has made various uses of the domain name at issue over the course of the almost four years since he registered the name. Paragraph 4(a)(iii) of the Policy requires proof that the domain name "is being used in bad faith." At what period of time since the registration must the panel look to determine if the domain name is being used in bad faith? Immediately after registration? At the time that the complaint is filed? At the time that the case is decided?
6.8 The Panel believes that the term "is being used" does not refer to a particular point in time, but rather refers to the period of time following registration of the domain name at issue. If at any time following the registration the name is used in bad faith, the fact of bad faith use is established. Otherwise a party could stop and start such uses in order to avoid a finding and a transfer or cancellation of the party's registration. (See Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021.)
6.9 The Panel believes that Complainant has failed to meet its burden of proving bad faith registration and use. The offer for sale of the domain name encompassed more than the mere transfer of the domain name for consideration. It included the loss of good will in an existing trade name, the costs of redoing signage, letterhead, etc, and other business related items. Moreover, the Panel believes that a Respondent who has rights and legitimate interests in respect of a domain name has the right to sell the domain name, and in such a case an offer to sell the domain name does not constitute bad faith. In such a situation it cannot be shown that the Respondent "registered . . . the domain name primarily for the purpose of selling . . ." (Policy, paragraph 4(b)(i)).
6.10 The Panel finds that the use made of the domain name at issue, in respect of a legitimate business before notice of the dispute, was not done in bad faith. The Panel finds that the use of the domain name at issue to resolve to an informational site was not done in bad faith. The Panel finds that the transitional phase, when the site was being altered, also was not a bad faith use.
6.11 Accordingly, the Panel finds that the Complainant has failed to establish two of the three elements necessary to make out its case.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the mark in which the Complainant has rights, but that the Respondent has rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has not been registered and is not being used in bad faith. Accordingly, the Complaint is dismissed.
M. Scott Donahey
Dated: December 21, 2001