WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Choice Courier Systems, Inc. v. William H. Kirkendale
Case No. D2002-0483
1. The Parties
The Complainant is Choice Courier Systems, Inc. ("Complainant"). Complainant is incorporated in the State of New York, United States of America and has its principal place of business at 733 Third Avenue, New York, New York 10017, United States of America.
The Respondent is William H. Kirkendale ("Respondent"), with an address of 20120 Route 19, Suite 105, Cranberry Township, Pennsylvania 16066, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <choice.com> (the "Domain Name"), which is registered with Networks Solutions, Inc. ("Registrar") of Herndon, Virginia, United States of America.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The complaint was submitted by e-mail to the Center on May 23, 2002. A hardcopy of the complaint along with the referenced exhibits was received by the Center on May 28, 2002. The Center requested registration verification details from the Registrar on May 27, 2002, via e-mail. By return e-mail on May 29, 2002, the Registrar confirmed that the Domain Name was registered to Respondent, that the Domain Name is subject to the Policy, and that the Domain Name is currently active. On May 30, 2002, the Center conducted its compliance review and verified that the complaint satisfies the formal requirements set out in the Policy, the Rules and the Supplemental Rules. On this same date, the Center notified Respondent that an administrative proceeding had been commenced against it and set the date for reply as June 20, 2002. On June 13, 2002, Complainant submitted a Supplement to the Complaint with a request that it be considered. The Respondent submitted a response by e-mail on June 20, 2002, with a hard copy and appendices following by mail. On June 25, 2002, having received Mr. Arif Hyder Aliís Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted a copy of the case file to Mr. Ali (the "Panel"). The date of decision was set for July 9, 2002, but at the request of the Panel was delayed until July 22, 2002.
4. Factual Background
Complainant is in the courier business. Complainant owns several service marks that are registered with the United States Patent and Trademark Office ("USPTO"). Among those registrations, Complainant has a service mark registration for the word CHOICE used in connection with messenger and delivery services of packages and printed matter and a service mark registration for the word choice CHOICE for onsite messenger and general office support services.
Respondent is an individual with a business plan of developing <choice.com> "to be a resource for choice of long distance services and other essential services." Respondent has a history in this regard. Respondent became the registrant of <choice.com> on March 25, 2002. The <choice.com> web-site currently redirects to another web-site that offers a low-rate long distance telephone service.
5. Partiesí Contentions
A. The Complainant
Complainant contends that Respondentís use of the Domain Name infringes on Complainantís rights because the Domain Name is identical or confusingly similar to the CHOICE trademark, service mark and trade name in which Complainant has rights; the Respondent has no known rights and legitimate interests in respect of the Domain Name; and Respondent registered and is using the domain name in bad faith.
B. The Respondent
The Respondent agrees that the domain name <choice.com> is identical to Complainantís CHOICE service mark, but contends that Respondent does have rights and a legitimate interest in the Domain Name and that Domain Name was not registered in bad faith.
6. Discussions and Findings
Paragraph 15(a) of the Rules provides the following instructions: "A panel shall decide the complaint based 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." At Respondentís urging, the Panel elects to consider the Supplement to the Complaint. Accordingly, the Panel will render its decision based on the Complaint, the Supplement to the Complaint, the Response and prior WIPO decisions.
Paragraph 4(a) of the Policy directs that the burden is on the Complainant to establish each of the following elements:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which 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 these elements is discussed below.
A. Similarity of Complainantís trademarks and Respondentís domain name
Complainant asserts rights in the mark CHOICE, as evidenced by its United States Patent and Trademark Office service mark registrations. Respondent acknowledges that Complainant has rights in the mark CHOICE and further agrees with Complainant that the domain name <choice.com> is identical to the service mark CHOICE in which Complainant has rights. As both parties are aware, the suffix <.com> is to be ignored in comparing the trademark and the domain name that is the subject of the dispute. Experience Hendrix, L.L.C. v. Denny Hammerton and The Jimi Hendrix Fan Club, WIPO Case No. D2000-0364 (August 15, 2000).
The Panel thus finds that Complainant has established element (i).
B. Respondentís Rights or Legitimate Interests in the Domain Name
The Panel next examines whether the Respondent has any rights or legitimate interests in the Domain Name, with reference to the guiding criteria set forth in paragraph 4(c) of the Policy. Those guidelines consider whether:
(i) Before any notice to the Respondent, the Respondent was using, or making 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; or
(ii) Respondent has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate or non-commercial fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As the Policy points out, these factors are not exhaustive of all the circumstances that may establish rights or a legitimate interest. The domain name is <choice.com>. The Respondentís name is William H. Kirkendale. The Domain Name does not reflect the name of Respondentís corporate identity, and there is nothing to show that Respondent is commonly known by the Domain Name. Moreover, Respondent does not appear to have rights to any trade names or trademarks consisting in whole or in part of the mark CHOICE. Further, the Panel accepts Complainantís contention that the Respondent has neither been permitted to use the CHOICE mark nor has been licensed by the Complainant. It seems clear, then, that Respondent has no rights in the domain name <choice.com>, based on a trademark, service mark or trade name.
As to whether Respondent has a legitimate interest in the Domain Name, Complainant and Respondent each devote considerable time to arguing this point. Complainant asserts that "as between Complainant and Respondent, Complainant is the legitimate owner of the domain name <choice.com>." As a basis for discussing this issue, the Panel wants to emphasize the purpose behind the Policy. The Policy was developed to control and correct abusive domain name registrations. It was not implemented to decide arguments between two parties, both with a legitimate interest in a domain name. Complainant seems to be misguided on this point. Complainantís brief is directed towards convincing the Panel that Complainant has deep-rooted rights in the mark CHOICE, and that it has more of a right than Respondent to use <choice.com>. This, however, is not the test. Complainant has the burden of proving that Respondent has no legitimate interest in the Domain Name, not of convincing the Panel that Complainant has more of an interest than Respondent in the Domain Name.
Complainantís primary argument is that "there is no evidence known to Complainant of Respondentís intention to use the <choice.com> domain name in connection with a bona fide offering of goods or services bearing a mark which matches the Domain Name." First, as Respondent points out, there is no requirement that the user of a domain name must offer goods or services bearing a mark which matches the domain name. This is particularly so when the mark is a generic word, as is the case here. Complainantís registration of the CHOICE trademark does not give Complainant unfettered rights to use the name. Trademark ownership confers no absolute monopoly on a word or symbol. Complainant must be aware of this as the USPTO database reflects at least twenty-nine live registrations for the mark CHOICE. Certainly, a party has a legitimate interest in using descriptive terms in connection with legitimate business activities. Jeffrey S. Thompson d/b/a The Wedding Planner v. Wedding Channel.com, lnc., WIPO Case No. D2002-0086 (May 21, 2002).
Second, the fact that Complainant has not found any evidence that Respondent has a legitimate connection to the Domain Name, does not constitute evidence that Respondent does not in fact have such a legitimate connection.
Respondent details how he acquired the <choice.com> domain name and his business plans for the Domain Name. The details are not repeated here, except to summarize as follows: Respondent has a business plan to use the <choice.com> web-site to market various services to customers, giving them a choice of, for example, long distance telephone providers or electricity providers. Currently, the Domain Name links to a web-site offering a low-cost long distance service. Among the evidence provided, Respondent shows an agreement between Respondent and a web-site developer and an agreement between Respondent and a long distance telephone provider, both of which were effected before the complaint was filed. Respondent also provides a copy of a newspaper article which mentions Respondent by name and details the same business concept for the web-site <electricity.com>. The newspaper article was published almost two years prior to the filing of the complaint and prior to Respondentís acquisition of the <choice.com> domain name. Based on the above, the Panel finds that the Respondent has taken substantive steps to develop his business plan. Other WIPO decisions have stated that a respondent need only show a plausible, non-infringing explanation for selecting the disputed domain name. Webvan Group, Inc. v. Stan Atwood, WIPO Case No. D2000-1512 (February 20, 2001). Respondent here certainly meets that threshold test. Keeping in mind that Complainant bears the burden of proving that Respondent has no legitimate interest and considering the evidence provided by Respondent, the Panel finds that Complainant must fail on this element.
The Panel, therefore, finds for Respondent on element (ii).
C. Bad Faith Registration
Having found that Respondent has a legitimate interest in the Domain Name, it is not necessary to address the elements of bad faith. The Panel, however, chooses to do so to discuss some of the points made by Complainant.
In deciding whether the Respondent registered the Domain Name in bad faith, paragraph 4(b) of the Policy sets out certain non-exclusive factors that should be considered. These include evidence of whether:
(i) Respondent registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name; or
(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web-site, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of one of Complainantís products or services.
The Panel, below, addresses the contentions of Complainant with respect to the element of bad faith.
Complainant alleges that Respondentís web-site redirecting to another web-site is evidence of Respondentís bad faith. As explained by the Panel in Jeffrey S. Thompson d/b/a The Wedding Planner v. Wedding Channel.Com, Inc., WIPO Case No. D2002-0086 (May 21, 2002) ("Wedding Planner"), redirecting to another web-site for legitimate business purposes does not necessarily or standing alone indicate bad faith. The Panel agrees with the decision in Wedding Planner that redirection is a common practice among domain name registrants and, absent further evidence, is not sufficient to establish that a domain name was registered for abusive purposes.
Complainant suggests that Respondentís act of acquiring the domain name <choice.com> combined with the fact that the web-site redirects to another web-site is evidence that Respondent acquired the <choice.com> domain name "primarily for the purpose of renting or otherwise transferring rights therein to others none of whom have any relation to the CHOICE mark." Complainant has confused the issue. Redirecting to another web-site is not renting or otherwise transferring rights. It is simply redirecting to another web-site and, as discussed above, is of no consequence. Furthermore, Complainant has adduced no evidence suggesting that Respondent has or intends to sell or transfer rights in the Domain Name to any third party, regardless of any trademark rights owned by that party.
Complainant states that Respondent is trying to attract Internet users to another site where neither Respondent nor the transferee has any ownership or interest in the CHOICE trademark. The proper inquiry is not whether Respondent is using the domain name to attract customers to Respondentís web-site, but whether Respondent is using the domain name to attract others to compete with or harm Complainant or otherwise benefit from the Complainantís trademark. There is nothing here to indicate any bad faith intent on the part of Respondent. Respondent is not in a competing business and there is no evidence to show that Respondent was trying in any way to disrupt Complainantís business.
Complainant asserts that Respondentís failure to conduct a pre-registration trademark search for the CHOICE trademark is additional evidence of Respondentís bad faith. This point hardly helps Complainantís case. As pointed out by a prior WIPO Panel in a Start-up Trademark Opposition Policy proceeding, "in suggesting that registrants have an obligation to carry out research before registering new domain names in order not to violate third partiesí rights, the Complainants are accepting the possibility, and in the view of the Panel the very real possibility, that the Respondent has never heard of the Complainants prior to the receipt of the complaint." Software fur Marketing und Media and Uwe Czaia v. emmediate, WIPO Case No. DBIZ2001-00007 (February 13, 2002). In the circumstances of this dispute, Complainantís argument here would seem to support Respondentís contention that Respondent was not aware of Complainant, precluding the conclusion that Respondent had any ill intentions towards Complainant.
Complainant points out that Respondent had constructive knowledge of Complainantís trademark rights because of the USPTO registrations and Complainantís use of the ® on its web-site. While the Panel agrees that knowledge of anotherís trademark rights may be a factor to consider in determining bad faith, the Panel points out that such knowledge is irrelevant if Respondent does have a legitimate interest in the domain name. As explained in the Wedding Planner decision, "mere knowledge of a trademark registration, without more, is not sufficient to repudiate a legitimate interest."
Complainant points to Respondentís offer to sell the Domain Name to Complainant for $100,000 as demonstrating Respondentís bad faith. Complainant and Respondent disagree on the details of the circumstances surrounding the offer to sell, but the Panel finds only the following relevant to its decision on this point. Respondent was the registrant of the Domain Name, effective March 25, 2002. According to the accounts of both Respondent and Complainant, there was no communication between Respondent and Complainant regarding the sale of the Domain Name until May 23, 2002, when Complainant initiated the communication. Respondent admits that during a telephone conversation on May 23, 2002, Respondent entertained the idea of selling the Domain Name. Respondent alleges that he made the comment flippantly in response to comments made by Complainant; Complainant states that Respondent pursued the idea. Other WIPO decisions have found offers to sell a domain name to constitute evidence of bad faith, but the respondentís behavior in those cases has always been more egregious. For example, in Thierry Mugler v. New York Link, WIPO Case No. B2001-0713 (October 18, 2001), the evidence showed that at the time the complaint was being drafted, the Domain Name resolved to a web-site whose main purpose was to offer domain names for sale. In Walmart Stores, Inc. v. Bath Yongsoo Hwang, NO ĖWALMART and NO-WALMART.COM, WIPO Case No. D2000-0838 (December 3, 2000), the respondent had listed the disputed domain names for sale. In addition, the focus is not on whether the Respondent offered to sell the domain name, but whether the circumstances indicate that Respondentís primary purpose in registering the domain name was to sell it for an excessive sum. Creo Products, Inc. v. Website In Development, WIPO Case No. D2000-1490 (January 19, 2001). Here Respondent may have discussed selling the Domain Name, whether flippantly or not, but the Panel does not find, based on the evidence presented, that selling the Domain Name was Respondentís primary purpose in registering <choice.com>.
Based on a review of all of the evidence, the Panel concludes that Respondentís purpose in registering <choice.com> was for a legitimate business purpose and was not done in bad faith. In this connection, the Panel also bears in mind the generic character of the Domain Name.
The Panel, therefore, finds for Respondent on element (iii).
7. Reverse Domain Name Hijacking
Respondent has brought a claim under paragraph 15(e) of the Rules for reverse domain name hijacking, that is that the Complainant has used the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. To prevail on this claim, Respondent must show that the Complainant knew of the Respondentís unassailable right or legitimate interest in the domain name or of the clear lack of Respondentís bad faith registration and use but nevertheless decided to bring the complaint.
Respondent offers much argument to support his position. The only point bearing on the issue is that after receiving complaint, Respondent informed Complainant that Respondent did in fact have a legitimate interest in respect of the Domain Name. Respondent offers no evidence that Complainant knew of Respondentís legitimate interest before the complaint was filed. Respondent might very well argue that Complainant should have known of Respondentís interest before filing the complaint by virtue of visiting the web site. However, the Panel is convinced that Complainantís understanding of the Rules led him to believe that it truly was more entitled to the Domain Name. While Complainantís understanding was clearly in error, it evidences that Complainant was not proceeding in bad faith.
Accordingly, the Panel declines to find that the Complainant was attempting to engage in reverse domain name hijacking.
For the foregoing reasons, the Panel decides:
(1) That the domain name registered by Respondent is identical to the mark in which Complainant has rights;
(2) That the Respondent does have a legitimate interest with respect to the Domain Name; and
(3) That the Domain Name was not registered and is not being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel finds that the registration of the Domain Name <choice.com> must remain with Respondent.
Arif Hyder Ali
Date: July 23, 2002