Express Services, Inc. v. Brian Hall d/b/a Express Payroll d/b/a Mesa Staff
Claim
Number: FA0305000157309
Complainant is Express Services, Inc., Oklahoma City, OK (“Complainant”) represented by Randy L. Canis, of Greensfelder Hemker & Gale PC. Respondent is Brian Hall d/b/a Express Payroll d/b/a Mesa Staff, Mobile, AL (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <expresspayroll.com>, registered with Network Solutions, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Jacques Léger, Q.C., Chair.
Hon. Carolyn M. Johnson as Panelist.
David Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 13, 2003; the Forum received a hard copy of the Complaint on May 14, 2003.
On May 16, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <expresspayroll.com> is registered with it and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified and reported that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@expresspayroll.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On June 16, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Jacques Léger, Q.C., as Chair, and Hon. Carolyn M. Johnson and David Sorkin, as co-Panelists members.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant is a Colorado company working in the personnel services field, including employment agency services, and is the largest privately held employment and personnel provider in the United States.
Respondent is an Alabama company who also offers employment agency services.
Complainant holds trademarks registrations with the USPTO, and most particularly, in the mark EXPRESS (No. 1,647,022) and EXPRESS PERSONNEL SERVICES (1,708,586) .
On May 4, 1999 Respondent’s trademark application filed in the USPTO for the mark EXPRESS PAYROLL 2000 was published for opposition in the Official Gazette. Complainant immediately filed a request for a sixty (60) day extension to file a notice of opposition.
Complainant sent a certified letter to Respondent on June 21, 1999 demanding that it cease all use of his trade names EXPRESS STAFFING and EXPRESS PAYROLL 2000, abandon the Trademark Application and confirm same in writing.
Complainant also sent a similar letter to Julianne Bochinski, the attorney that filed the trademark application. Complainant sent Respondent a further demand on July 1, 1999. Respondent then contacted Complainant and agreed to amicably settle this matter by ceasing all use of the trade names and abandoning the Trademark Application. Complainant confirmed the conversation via a July 2, 1999 letter sent to Respondent and Bochinski, and advised that a settlement agreement would be negotiated directly with Bochinski.
Complainant and Respondent executed a Settlement Agreement on October 14, 1999 that confirmed that Respondent would be abandoning the trademarks and undertook to cease all use of the terms EXPRESS PAYROLL, EXPRESS STAFFING and EXPRESS PAYROLL 2000.
Complainant found out in July 2001 that Respondent had registered in 1996 the domain name <expresspayroll.com>.
On many occasions, Complainant tried to resolve the matter by requesting that Respondent transfer the domain name, but to no avail.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <expresspayroll.com> domain name is confusingly similar to Complainant’s EXPRESS family of marks.
2. Respondent does not have any rights or legitimate interests in the <expresspayroll.com> domain name.
3. Respondent registered and used the <expresspayroll.com> domain name in bad faith.
Complainant previously filed the a complaint with National Arbitration Forum regarding the same domain name and relating to the same factual background. In that case, the Panel had found no registration in bad faith and therefore dismissed the complaint although finding that Complainant had satisfied the other requirements.
Complainant asked National Arbitration Forum for the Panel to either reconsider or review its decision, however since no such proceedings exist within National Arbitration Forum, Complainant filed a complaint de novo. This Panel thus fronts this re-filed complaint.
1. Confusing similarity
Each of Complainant’s federally registered EXPRESS Marks is not only inherently distinctive, as presumed by virtue of its placement on the Principal Register without proof of secondary meaning, but also has become, through continuous, exclusive and proper use, and extensive promotion and advertising, well established and widely recognized as associated with a particular source, such that it enjoys secondary meaning. See Microsoft Corporation v. J. Holiday Co., D2000-1493 (WIPO Feb. 20, 2000); Janus International Holding Co. v. Scott Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Complainant’s EXPRESS and EXPRESS PERSONNEL SERVICES marks are of particular relevance to the present dispute. Express has continuously used the mark EXPRESS for temporary help and employment agency services since 1983. On June 4, 1991, Express obtained Federal Reg. No. 1,647,022 for the mark EXPRESS. On August 18, 1992, Express obtained Federal Reg. No. 1,708,586 for the mark EXPRESS PERSONNEL SERVICES and Design. Accordingly, Express’s rights are evidenced by its registered marks EXPRESS® and EXPRESS PERSONNEL SERVICES & Design®.
Respondent has registered the domain name <expresspayroll.com>,
which is similar to the EXPRESS marks
that reasonable Internet users would assume that the domain name is somehow
associated with Complainant’s well-established EXPRESS marks. See Express Services, Inc. v. Harold
Brown/Ted Waitt, FA 97725 (Nat. Arb. Forum Jul. 25, 2001) (“[The] domain
names [URN2ExpressPersonnel.com, URN2ExpressPersonnel.net and
URN2ExpressPersonnel.org] are not distinctive enough from Complainant’s EXPRESS
Marks to avoid the confusingly similar aspect of Policy 4(a)(i).”); Express Services, Inc., v. RealTime Internet, FA 100506 (Nat. Arb.
Forum Dec. 11, 2001) (wherein the panel found that the domain names
EXPRESSPERSONEL.COM, EXPRESS-PERSONNEL.COM and EXPRESS-PERSONNEL.NET are “confusingly
similar if not identical to” the EXPRESS Marks.); Express Services, Inc. v. Express Temp, FA 103936 (Nat. Arb. Forum
Feb. 22, 2002) (“Respondent’s domain name is also confusingly similar to
Complainant’s EXPRESS mark. The domain
name merely adds the term ‘temp’ to Complainant’s EXPRESS mark.”).
The
addition of a generic word, in the case at hand, “payroll” does not eliminate
the similarity, nor is the addition of “.com” of any consequence. See Express Services, Inc. v. Personnel Plus
a/k/a Tony Mayer, FA 112624 (Nat. Arb. Forum June 20, 2002) (“The mere
addition of descriptive or generic words to a valid mark, however, does not
eliminate the similarity between the domain name and the trademark.”); Fisons Horticulture, Inc. v. Vigoro
Industries, Inc., 30 F.3d 466, 477 (3d. Cir. 1994) (finding that the domain
name is confusingly similar to Complainant’s mark because it is comprised of
Complainant’s famous mark and a generic term that relates to Complainant’s
business). Respondent and Complainant
provide the same services, and the use of the term “payroll” with respect to
their employment and personnel services is generic. See Express Services, Inc. v. Harold Brown/Ted Waitt, FA 97725
(Nat. Arb. Forum Jul. 25, 2001); Express
Services, Inc. v. RealTime Internet, FA 100506 (Nat. Arb. Forum Dec. 11,
2001) (finding that for purposes of assessing the confusing similarity between
domain names and trademarks, UDRP Panels have held that in top-level domain
extensions, spaces, hyphens and punctuation are ignored).
Moreover, the confusingly similarity is increased because both parties offer similar services and operate in the same field. See Express Services, Inc. v. Express Temp, FA 103936 (Nat. Arb. Forum Feb. 22, 2002) (“Additionally, confusing similarity between the parties is increased because both offer similar services.”); Slep-Tone Entertainment Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).
Since Respondent’s Domain Name is virtually identical to marks in which Express has rights, Section 4(a)(i) of the Policy is met. See Elder Manufacturing Company, Inc. v. Jeff Recker, FA 98414 (Nat. Arb. Forum Sep. 10, 2001) (“In the matter at bar it is beyond refute that Respondent’s domain names are virtually identical, and thus confusingly similar to Elder’s trademarks. Any superficial differences between the domain names and the Elder trademarks are de minimis and of no legal consequence.”); Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element ….”)
The parties operate in the same field and offer competing goods, and as a consequence, Respondent’s use of the domain name does not constitute a bona fide offering of goods and services in accordance with Policy ¶ 4(c)(i). See Express Services, Inc. v. Express Temp, FA 103936 (Nat. Arb. Forum Feb. 22, 2002); Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Carlos M. Alvarez d/b/a IT Lexis, FA 98249 (Nat. Arb. Forum Aug. 20, 2001) (“Respondent is using the <itlexis.com> domain name to promote its services within the same general field as Complainant. Using an infringing domain name to offer competing goods or services does not constitute a bona fide offering of goods or services within the meaning of Policy 4(c)(i).”)
Respondent is not licensed nor authorized by
Complainant and therefore Respondent does not have any legitimate rights and
interests in the domain name. See Express
Services, Inc. v. Harold Brown/Ted Waitt, FA 97725 (Nat. Arb. Forum Jul.
25, 2001) (finding no rights or legitimate interests when a respondent is not
licensed or authorized to use the EXPRESS Marks); Gorstew Limited & Unique Vacations, Inc. v. Dylan Michael
Associates, LLC, FA 96971 (Nat. Arb. Forum May 4, 2001) (finding no rights
or legitimate interest where Respondent has never applied for a license or
permission from Complainant to use the trademarked name.)
Respondent is not commonly known by the domain
name and has not used the domain name for legitimate noncommercial or fair use.
See Best Western International, Inc. v.
TPA a/k/a Matt Cook, FA 96857 (Nat.
Arb. Forum Apr. 18, 2001); Gorstew
Limited and Unique Vacations, Inc. v. SSB Trading Company, Inc., FA 96972
(Nat. Arb. Forum May 8, 2001) (finding that Respondent is not commonly known by
the disputed domain names, nor has it used the domain name in connection with a
bona fide offering of goods or services or for a legitimate noncommercial or
fair use).
Respondent’s use of the domain name constitutes trademark infringement and as such Respondent does not have a legitimate interest. See Express Services, Inc. v. Personnel Plus a/k/a Tony Mayer, FA 112624 (Nat. Arb. Forum June 20, 2002) (“If the use of the domain names constitutes clear trademark infringement, then such use does not result in any rights or legitimate interest in respect of the domain names. The offering of services by Respondent that are very similar to the services of Complainant, under a confusingly similar mark is not a bona fide offering of goods or services. Legitimate rights and interests do not accrue to the Respondent by way of trademark infringement.”); State Farm Mutual Automobile Insurance Company v Douglas LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000).
3. Bad faith
Complainant is widely known and recognized.
Respondent registered and uses the domain name to falsely gain initial interest confusion. See Express Services, Inc. v. Personnel Plus a/k/a Tony Mayer, FA 112624 (Nat. Arb. Forum June 20, 2002) (“In view of the fact that each party’s services relate to assisting job-seekers to find employment, it is apparent that Respondent registered each of the disputed domain names in order to gain more internet users and to disrupt Complainant's business of providing job placement related services.”); Laurence Sax DBA Cap Factory v. California Head Wear, Inc., FA 96184 (Nat. Arb. Forum Jan. 16, 2001) (“… Respondent’s conduct also indicates bad faith under ICANN Policy 4(b)(iv). By registering and using a domain name which is clearly intended to trade off Complainant’s goodwill, Respondent has demonstrated sufficient intent to warrant transfer of the domain name.”)
Respondent registered and uses domain name to intentionally attract Internet users by creating a likelihood of confusion. See Express Services, Inc. v. Personnel Plus a/k/a Tony Mayer, FA 112624 (Nat. Arb. Forum June 20, 2002); Hungry Minds, Inc. v. Mall for Dummies, FA 96635 (Nat. Arb. Forum Apr. 4, 2001) (finding evidence of bad faith where Respondent registered the disputed domain name to intentionally attract Internet users to its website, or other online location, by creating a likelihood of confusion with Complainant’s famous mark).
The circumstances enumerated under Policy ¶ 4(b) are not exhaustive. Indeed, the Panel is not limited to finding evidence of registration and use of a domain name in bad faith based solely on the enumerated circumstances listed in ICANN Policy ¶ 4(b). The Panel should find that Respondent’s violation of its December 1999 Settlement Agreement with Express in which it agreed to “cease[] all use” and “discontinue all promotion and advertising under the terms ‘Express Payroll’, ‘Express Payroll’ and ‘Express Staffing’ …” by its renewal of the Domain Name is evidence of bad faith registration, and its continued use of the Domain Name to provide Internet users with his current website content offering services identical to those provided by Express is bad faith use of the Domain Name. See Express Services, Inc. v. Personnel Plus a/k/a Tony Mayer, FA 112624 (Nat. Arb. Forum June 20, 2002).
The trademark registrations by Complainant are a constructive notice of the trademarks to the general public, including Respondent. Therefore the registration of the domain name by Respondent was in bad faith. See Express Services, Inc. v. Harold Brown/Ted Waitt, FA 97725 (Nat. Arb. Forum Jul. 25, 2001) (“Additionally, [r]espondent showed bad faith registration because the disputed domain names are confusingly similar to the EXPRESS family of marks, and Respondent had constructive notice of [these] marks.). Also see Korn/Ferry International v. The CareerMosaic Company, Inc., FA 97117 (Nat. Arb. Forum Jun. 7, 2001) (“In addition, as the Respondent and Complainant are engaged in the same industry, the Respondent should have been aware of the Complainant’s famous mark. Its registration of the domain names at issue clearly constitutes bad faith.”). Since Respondent and Complainant are in the same field of business and Complainant’s federally registered service marks predate Respondent’s registration of the Domain Name by more than 10 years, Respondent registered the Domain Name in bad faith by registering <expresspayroll.com> with constructive or actual knowledge of the EXPRESS Marks.
B. Respondent failed to submit a Response in this proceeding.
In the previous dispute Express Services, Inc. v. Brian Hall d/b/a
Express Payroll d/b/a Mesa Staff, FA 149176 (NAF, April 22, 2003) (Express I), the Panel found that
Complainant had met its burden with respect to Policy ¶¶ 4(a)(i) and (ii), and
had sufficiently shown that Respondent was using the disputed domain name in
bad faith pursuant to Policy ¶ 4(a)(iii). However, the Panel concluded that
Respondent had registered the domain name in good faith, and therefore refused
to transfer the domain name to Complainant.
The Panel in Express I noted that Complainant’s
arguments focused on Respondent’s bad faith renewal
of the disputed domain name in 2001, versus its original registration in 1996,
as evidence of bad faith registration under Policy ¶ 4(a)(iii). The Panel
refused to hold that this renewal operated as “registration” of a domain name
in bad faith pursuant to Policy ¶ 4(a)(iii), concluding that the Policy focused
solely on the initial date of a domain name’s registration for the purposes of
analyzing registration in bad faith. The Panel went on to note that as
Complainant had “not advanced any evidence that Respondent’s original domain
name registration was done in bad faith,” Complainant had failed to meet its
burden under Policy ¶ 4(a)(iii). After the decision was handed down,
Complainant moved for a Motion to Reconsider the decision, supporting this
Motion with a memorandum on the two issues addressed below. However, the Forum
concluded that such a motion was outside the scope of the UDRP and that as a
Provider it was not able to intervene in the decision-making process by the
Panel.
Neither the UDRP Policy,
Rules, or the Forum’s Supplemental Rules address the issue of whether a
Complainant is able to re-file a previous Complaint. The authority for
determining this issue rests in Rule 15(a), which states that a Panel is
required to “decide a Complaint on the basis of the statements and documents
submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it
deems applicable [emphasis added].”
The issue of whether Complainant may re-file a Complaint against the same Respondent for the same domain name has been addressed several times by previous administrative Panels. It has been held that the burden of establishing that a re-filed Complaint should be accepted by a Panel rests on Complainant, and previous Panels have held that burden to be “high.” See for example Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) wherein the burden of establishing that a second Complainant should be entertained is “high”; see also TABCORP Holdings Ltd. and TABCORP Assets Pty. Ltd. v. Steven Hertzberg, D2001-1052 (WIPO Dec. 3, 2001) wherein the re-filing was not permitted, as Complainant failed to meet its “high burden” and therefore could not “re-do [its] failure in the original proceeding to carry its burden of proving bad faith registration”.
Just how to meet that burden was comprehensively discussed in Grove Broad. Co. Ltd. v. Telesystems Communications Ltd., D2000-0703 (WIPO Nov. 10, 2000). In Grove Broadcasting, the Panel noted that the only option available to a Complainant wishing to re-litigate the Complaint under the Rules was the filing of an action in a competent Court pursuant to Rule 4(k). The Panel went on to analyze the issue of re-filing along common-law lines, pursuant to Rule 15(a), and established four grounds for the rehearing or reconsideration of a previous Panel’s decision. The Panel enumerated these common law grounds as:
(1) serious misconduct on the part of a judge, juror, witness or lawyer;
(2) perjured evidence having been offered to the court;
(3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial;
(4) a breach of natural justice.
Most situations where a Panel was asked to reconsider a previously filed Complaint have fallen into one of two categories. In some instances, the previous decision which found against Complainant contained a reservation that the dismissal was “without prejudice,” contemplating a subsequent re-filing by Complainant. See for instance Cluett, Peabody & Co., Inc. v. Sanford Bus Writing Serv., FA 95842 (Nat. Arb. Forum Dec. 12, 2000) wherein re-filing was allowed because the previous Panelist had “expressly reserved the right of Complainant to recharge bad faith registration and use of the domain name at issue”; see also Jones Apparel Group Inc. v. Jones Apparel Group.com, D2001-1041 (WIPO Oct. 16, 2001) wherein re-filing was allowed as the previous Panelist gave the “green light in the clearest possible way to re-filing the Complaint [emphasis in original]”.
In most other disputes, the gravamen of the re-filed Complaint has been element (3) of the Grove Broadcasting factors, the “discovery of credible and material evidence which could not have been reasonably foreseen or known at trial.” Permitting Complainant to re-file in these circumstances has revolved around the nature of the “new” evidence submitted in the subsequent Complaint. See for example Grove Broad. Co. Ltd. v. Telesystems Communications Ltd., D2000-0703 (WIPO Nov. 10, 2000) wherein it was found that Complainant’s second Complaint was a mere attempt to “patch up” a deficiency in a previously presented case, and hence dismissed; see also Koninklijke Philips Elecs. N.V. v. Relson Ltd., DWS2002-0001 (WIPO June 14, 2002) wherein it was held that “[b]ecause [the purported “new” evidence] could have been obtained for the first Complaint upon reasonable diligence by the Complainant, the re-filed Complaint must be rejected; see also Furrytails Ltd. v. Andrew Mitchell d/b/a Oxford Die-Cast, D2001-0857 (WIPO Sept. 6, 2001) wherein the second Complaint was dismissed; but compare Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) wherein re-filing of Complaint was allowed based on subsequent acts of Respondent.
In the case at hand, Complainant does not allege that either of these circumstances are present. Rather, it contends that Express I was a “breach of natural justice” pursuant to the fourth Grove Broadcasting factor, with the grounds of “plain error” as the Panel’s basis for reconsideration. In fact, Complainant contends that the Express I decision is fatally flawed because of “plain error”, as the Panel in the prior decision did not view the facts and allegations in favor of Complainant despite Respondent’s default to submit a response, as it ignored U.S. Trademark Law and well-established precedent and by failing to rule that a federally registered trademark provides constructive notice of the trademark owners rights in the mark.
There appears to be no UDRP precedent that directly addresses this point, although several come close. See generally High Speed Prods., Inc. d/b/a Thrasher Magazine v. Thrasher Magazine, Ltd., FA 97008 (Nat. Arb. Forum June 20, 2001) wherein it was concluded that “strict application of principles of claim and issue preclusion could work an injustice” in allowing re-filing; compare Grove Broad. Co. Ltd. v. Telesystems Communications Ltd., D2000-0703 (WIPO Nov. 10, 2000) wherein it was stated that it was “hard to see how a breach of the rules of natural justice” would occur in the context of an ICANN proceeding, noting that a disgruntled party would “have to offer strong proof in order to sustain a rehearing on this ground”. In fact, this criterion is more stringent than the concept of “plain error” in the appreciation of the merits of the cause.
Given the fact that, according to the evidence submitted, Complainant has failed to meet any of the reviewability tests and more particularly, that it has not satisfactorily established that the prior decision constituted a breach of natural justice, a ground for which the burden is very high, the Panel makes the finding not to undertake a review of the re-filed Complaint. The evidentiary analysis therefore need not be conducted.
Moreover, as the issues in this dispute revolve around the
alleged breach of a Settlement Agreement between the parties, the Panel
maintains that it should belong to a
court of common law to force Respondent, as the case may be, to comply to the
Agreement. The Panel adopts the view expressed in Commercial Publishing Co. v. EarthComm. Inc., FA 95013 (NAF July
20, 2000) wherein it was stated that the Policy is intended to resolve only a
narrow class of cases of “abusive registrations” and does not extend to cases
where a registered domain name is subject to legitimate disputes, which are
relegated to the courts. See also Discover
New England v. The Avanti Group, Inc. FA 123886 (Nat. Arb. Forum, November 6, 2002) wherein it was found
that the dispute was outside the scope of the UDRP because the dispute centered
on interpretation of contract language and whether or not a breach existed.
The Panel finds that it is not open for it to examine the merits of this case based on Respondent’s detrimental conduct with regards to an extrinsic agreement between the parties.
Furthermore, the Panel finds that it is not entitled to simply review the prior Express 1 decision based on “plain error”, since Complainant failed to meet the high burden required for the breach of natural justice test.
The Panel therefore dismisses the Complaint subject to Complainant’s right to assert its claim for contractual breach before the competent common law court.
Hence the Panel concludes that relief shall be DENIED, without costs.
Jacques Léger, Q.C. Chair
Dated: July 7, 2003
Hon. Carolyn M. Johnson
Dated: July 7, 2003
I concur.
David Sorkin
Dated: July 7, 2003
I concur.
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