WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Resources for Living, Inc. v. Resources for Living, Inc.

Case No. D2002-0321

 

1. The Parties

The Complainant is Resources for Living, Inc. ("Complainant"), a Texas corporation having its principal place of business at 2807 Manchaca Road, Austin, Texas, United States of America.

The Respondent is Resources for Living, Inc. ("Respondent"), a California corporation having its principal place of business at 10 Avanzare, Irvine, California, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <resourcesforliving.com>.

The Registrar with which the domain name is registered is A+ Net d/b/a NAMES4EVER ("the Registrar"), 5266 Eastgate Mall, San Diego, California, United States of America.

 

3. Procedural History

The World Intellectual Property Organization Arbitration and Mediation Center ("the Center") received an electronic copy of the Complaint on April 4, 2002, and a hard copy of the complaint on April 8, 2002. On April 9, 2002, the Center sent Complainant an Acknowledgement of Receipt of Complaint (by e-mail). The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

On April 12, 2002, the Center sent the Registrar a Request for Verification, which was re-transmitted on April 19, 2002. The Registrar transmitted a Registrar Verification Response confirming that the domain name is registered with Registrar and that the Respondent is the current registrant of the domain name.

On April 22, 2002, the Center transmitted, by e-mail, the Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") to Respondent, setting a deadline for response of May 12, 2002. The Commencement Notification stated that, in accordance with Paragraph 4(a) of the Rules and Paragraph 5 of the Supplemental Rules, the Center verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules. The Commencement Notification further stated that the required payment was made by Complainant to the Center.

The Administrative Panel finds that the record reveals WIPO has satisfied its responsibility under Paragraph 2(a) of the Rules, which provides that the Center "employ reasonably available means calculated to achieve actual notice to Respondent."

On May 13, 2002, Respondentís counsel sent an e-mail to WIPO stating that Respondentís response was mailed to the Center on May 11, 2002, by U.S. Mail. Respondent failed to attach to this e-mail or to otherwise submit an electronic copy of the response, as required in paragraph 5(b) of the Rules. The Center transmitted by e-mail a Notification of Respondent Default on May 16, 2002, having received no response. Additionally, on May 21, 2002, the Center requested that Respondent provide a date-stamped copy indicating the response was mailed on May 11, 2002, as indicated in the email. Respondent never replied to the request.

The Center received the mailed response on May 22, 2002. In keeping with its policy for standard mail, the Center did not retain the envelope nor note the postmark date.

Respondent did not request that the provider extend the response time beyond the 20 days provided nor did the parties stipulate to an extension, as provided in paragraph 5(d) of the Rules.

Respondent did not set forth "exceptional circumstances" as provided in paragraph 5(e) of the Rules to explain any delay in filing the response. However, Respondent was in communication with the Center regarding the response prior to the Notification of Respondent Default and may have mailed the hard copy of the response prior to the filing deadline. Under the particular circumstances of this case, the Panel will accept the response into the record for the decision making process.

Complainant in this proceeding has elected an Administrative Panel consisting of a single panelist and the Center invited Carol Anne Been to serve as the Panelist. On June 19, 2002, Ms. Been submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. On June 19, 2002, the Center transmitted the Notification of Appointment of Administrative Panel and Projected Decision Date. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Panel requested and the parties were notified of an extension of the Projected Decision Date.

 

4. Factual Background

The following facts are asserted by Complainant in the Complaint and are not disputed.

Complainant is a Texas corporation with its principal place of business in Irvine, Texas. Complainant provides telephone counseling services offering advice on decision options for handling personal and employment problems.

Complainantís Mark

Complainant owns the following service mark registrations in the United States and three other countries:

(1) RESOURCES FOR LIVING - Registration No. 1,826,699
Location/date of registration: USPTO/March 15, 1994
For: telephone counseling services offering advice on decision
options for handling personal and employment problems.

(2) RESOURCES FOR LIVING - Registration No. 300 27 620
Location/date of registration: German Trademarks/July 16, 2001.

(3) RESOURCES FOR LIVING - Registration No. 2228686
Location/date of registration - UK Trademarks/April 8, 2000.
For: Counselling services offering advice on decision options
for handling personal and employment problems.

(4) RECURSOS PARA VIVIR - Registration No. 419,797
Location/date of registration: Mexico Institute of Industrial Property/ April 6, 2000.

Copies of the certificates of registration were attached to the Complaint. Complainant has used the mark for counseling services for personal and employment problems since as early as January 1988. The above listed registrations are in full force and effect and the mark is still owned and used by Complainant. Complainantís U.S. trademark registration is incontestable.

Respondentís Activities

Respondent registered the domain name <resourcesforliving.com> on or about February 2, 2000, and renewed the registration on or about February 2, 2002. The domain name is virtually identical to Complainantís service mark RESOURCES FOR LIVING. The domain name currently leads the viewer to a screen that displays the following message: "Our site is under construction, please come back later. You can contact us at info@resourcesforliving.com or sales@resourcesforliving.com." There is no telephone number or corporate address listed on the web site. Dun & Bradstreet, Inc. had no record of Respondent in a search requested by Complainant on February 13, 2000. There is no telephone listing for "Resources for Living" in California.

The following facts are asserted by Respondent in the response.

Respondent is a California non-profit public benefit corporation. Respondent was formed in 1998 as a vehicle for the education and training of underprivileged, handicapped and recently unemployed individuals. Its founder is a computer professional who wishes to educate unemployed and under-employed individuals to acquire computer and other skills. Respondent claims to be operated by volunteers, although it does not appear to be active and no specific operations or activities are described. Respondent claims to have spent over $5,000 "to process the necessary applications, permits, exemptions, licenses, etc." and more for "stationery, business cards, signage, web-site registration and design, etc." Respondent has not invested in the website apart from the claimed start-up costs and is seeking a corporate partner to donate resources.

 

5. Partiesí Assertions

A. Complainantís Assertions

i. Domain Name Identical or Confusingly Similar

Complainant alleges that the disputed domain name is confusingly similar to the Complainantís service mark. Complainant contends that consumers will be confused as to the source, sponsorship, affiliation or endorsement of Respondentís web site, or of the products or services offered on Respondentís web site. Complainant has received questions from its customers regarding Respondentís web site.

ii. Respondentís Rights or Legitimate Interests in the Domain Name

Complainant alleges that Respondent has no rights or legitimate interest in <resourcesforliving.com>.

Complainant contends that Respondent is not commonly known by the name "Resources for Living" or the domain name <resourcesforliving.com>, and has no history of conducting business under the name or domain name.

iii. Domain Name Registered or Used in Bad Faith

Complainant alleges that Respondent registered and is using the domain name in bad faith.

Complainant asserts that Respondentís failure to use the domain name in connection with a bona fide offering of goods or services is evidence that Respondentís primary purpose in obtaining the domain name was to obtain excessive consideration from Complainant.

In response to Complainantís offer to buy the domain name for $500, Respondent sought valuable consideration in excess of Respondentís out-of-pocket costs directly related to establishing the domain name. Complainant claims this is evidence that Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to Complainant for a profit.

B. Respondentís Assertions

i. Domain Name Identical or Confusingly Similar

Respondent acknowledges that the domain name is similar to Complainantís service mark.

ii. Respondentís Rights or Legitimate Interests in the Domain Name

Respondent contends that it has a legitimate business purpose, primarily because of its non-profit status.

Respondent asserts that the web site is under construction for lack of available capital and because of Respondentís choice to withhold funding until the domain name dispute is resolved.

iii. Domain Name Registered or Used in Bad Faith

Respondent contends that it did not demand payment by Complainant to transfer the domain name. Respondent asserts that in response to Complainantís unsolicited offer of $500, its principal replied that "$500 would cover only a very small portion of the expenses incurred, let alone the necessity of starting over."

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires Complainant to prove that:

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

(ii) the Respondent has no legitimate interest in respect of the domain name; and

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

A. The domain name is identical or confusingly similar to a service mark in which Complainant has rights

Complainant has rights in the relevant mark. Complainant has used RESOURCES FOR LIVING to identify its services since at least as early as 1988. Complainant has registered the mark for personal and employment counseling services in the United States as well as other countries.

Respondentís domain name is identical to Complainantís mark. The entire RESOURCES FOR LIVING mark is incorporated unaltered in Respondentís domain name.

Respondent plans to use the site to offer services related to or overlapping with Complainantís services. Complainant claims that it has received inquiries regarding Respondentís web site. The domain name is confusingly similar to Complainantís mark.

B. Respondent has no legitimate interest in respect of the domain name

Respondent has not set forth any evidence of circumstances of the type described in paragraph 4(c) of the Policy, or of any other circumstances indicating a right or legitimate interest in the domain name.

The response does not address how Respondent conceived of the name "Resources for Living", nor whether Respondent was aware of Complainant or its business at the time Respondent selected the name. Respondent does not dispute Complainantís assertion that Complainantís services under its registered mark are widely known and advertised.

While Respondent may have incorporated as a non-profit under the name Resources for Living, Inc., and may have assembled a team of volunteers, there is no evidence in the record that Respondent has engaged in any business. The response describes Respondentís plans to provide unspecified education and computer training services, but is vague about whether the business has actually commenced. It has no telephone number and provided no evidence of announcements or other publicity concerning its business. Respondent has not used nor made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

Respondent does not appear to be commonly known by the domain name. Respondent has no legitimate interest in the domain name.

C. The domain name has been registered and is being used in bad faith

Respondent incorporated and registered the domain name well after the first use and federal registration of Complainantís service mark. Since both parties are in the United States, under the notice provisions of the Lanham Act, Respondent is deemed to have had constructive notice of Complainantís mark at the time of its registration of the domain name. See, e.g., RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242 (December 11, 2001). The response leaves open the question whether Respondent had actual, in addition to constructive, knowledge of Complainantís mark.

The domain name is being used to direct e-mail inquiries to Respondent. Since Respondent claims to have plans to provide services that are similar to those provided by Complainant, this use of the domain name enables Respondent to benefit from any misdirected or confused consumers.

Further, an offer to sell a domain name for an amount in excess of out-of-pocket expenses is evidence of bad faith use of a domain name under paragraph 4(b)(i) of the Policy. Complainant made an unsolicited offer to purchase the domain name from Respondent for $500. Respondent demanded an amount in excess of $500, claiming that the offered amount would not cover its expenses. Although Respondent did not initiate the offer to purchase, Respondent used the domain name to seek valuable consideration in excess of its out-of-pocket costs directly related to the domain name. See Time Warner Entertainment Co. L.P. v. Chris Harper, WIPO Case No. D2001-1080 (October 26, 2001).

Although this is a close case on the issue of bad faith, on balance the Panel finds that Respondentís constructive notice of Complainantís mark, use of the domain name to direct email inquiries to itself for a planned business that is similar to Complainantís, and demand for payment in excess of out-of-pocket costs are evidence of bad faith registration and use of the domain name.

The Panel concludes that Respondent registered and used the domain name in bad faith.

 

7. Decision

The Panel decides that:

(i) the domain name is confusingly similar to a service mark in which Complainant has rights;

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

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

Accordingly, the Panel decides that Complainant has proven each of the elements in paragraph 4(a) of the Policy. The Panel requires that the registration for the domain name <resourcesforliving.com> be transferred to Complainant.

 


 

Carol Anne Been
Sole Panelist

Dated: July 18, 2002