On July 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 17, 2005 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@return2me.net by e-mail.

A timely Response was received and determined to be complete on August 17, 2005.

A timely Additional Submission was received from Complainant on August 22, 2005.

A timely Additional Submission was received from Respondent on August 26, 2005.

On August 30, 2005, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David A. Einhorn, Tyrus R. Atkinson and David S. Safran as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

Complainant

[a.] Complainant, since at least as early as January 1999, before Respondent filed its domain registration or began using the domain name, has continuously used its Registered Trademark, RETURNME.COM®, on services for return identification tags and labels as part of a lost and found subscriber based service.

[b.] Complainant owns U.S. Trademark Registration No. 2,382,650 for the RETURNME.COM mark for use on “lost and found locator services for personal items via a global computer network, namely, assisting others and organizing for the contact, pick-up and delivery of the lost item to the subscriber.” The application was filed on April 1, 1999 and the mark was registered on September 5, 2000. The <returnme.com> domain name was registered with ICANN on December 16, 1998 and <returnme.net> was registered with ICANN on June 23, 1999. Complainant’s priority in the domain precedes Respondent’s domain filing date of December 23, 2003.

[c.] Due to Complainant’s extensive distribution, sales and advertising of its goods under its RETURNME.COM® mark, this mark has acquired extensive goodwill and customer recognition throughout the United States, and the <returnme.com> Domain has become known thought out the United States as an indicator of goods/services provided by Complainant.

[d.] The Opposed Domain and Complainant’s RETURNME.COM mark are confusing similar in sight, sound, connotation and commercial impression. Respondent’s URL includes Complainant’s RETURNME.COM mark with the words “Return” and “Me.” By using the URL wording “Return” and “Me” with the single digit ‘2” as part of its domain, Respondent misleads consumers to believe it is the source of Complainant’s RETURNME.COM goods and services.

[e.] The Opposed Domain is in use with the same or related goods and/or services protected by Trademark of Domain. Therefore, Respondent’s domain is likely to cause confusion, or to cause mistake, or to deceive.

[f.] Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor (ReturnMe.com, LLC) with a famous mark in the same class of goods and services as Respondent. By using an almost exact copy of the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other online location, by creating a likelihood of confusion with Complainant’s Domain as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location. This fact is supported by the fact that Respondent has elected to mislead and falsely claim registration protection of a RETURN2ME trademark by indicating in its promotional material that RETURN2ME is a Registered Trademark. The truth is that neither Respondent nor any other person or entity has submitted a trademark registration application for RETURN2ME or RETURN2ME.NET to the U.S. Patent and Trademark Office. Under U.S. trademark law, the R-in-a-circle symbol (®) may only be used in connection with a mark if that mark is a federally registered trademark.

Respondent

[a.] Through its domain, Respondent sells small, durable “return2me.net” labels that customers place on their high-value, portable personal property. When a belonging thus labeled is lost and then found, the finder is instructed to enter locating data into Respondent’s <return2me.net> website. Respondent then uses that information to facilitate the recovery of the customer’s property.

[b.] Respondent learned of Complainant and its allegation that Respondent’s <return2me.net> domain unfairly competes with Complainant’s <returnme.com> domain only this year, on or about July 5, 2005, when Complainant contacted Respondent for the first time.

[c.] While Complainant may have once contemplated a broader lost and found recovery system, Complainant’s domain, <returnme.com>, offers electronic pet identification tags, i.e., radio signal-emitting tags that, when scanned by special equipment, identify dogs and cats to “shelters, law enforcement, hospitals and neighbors.”

[d.] With its Complaint, Complainant seeks to gain ownership of Respondent’s website and business. Such action is neither justified nor permitted under ICANN policy.

[e.] Further, and importantly, the action requested by Complainant would do great harm to Respondent as well as the approximately 17,000 plus customers of Respondent who have placed “return2me.net” recovery tags on their personal belongings in reliance on Respondent’s subsequent location efforts. If Respondent’s website were shut down, there would be no means for Respondent’s customers’ previously-labeled lost items to be recovered.

[f.] Respondent’s Domain Name is Distinct. Similarity between domain names that are not completely arbitrary in nature (e.g., “google”), where the domain owners’ businesses are somehow alluded to in the domain names (e.g., “delivery”), is inevitable and not impermissible. For example, literally thousands of parties own domain names that are constituted by a simple verb or noun (e.g., “talk” or “furniture”) and anchored by a directional shorthand term such as “4U,” “2U” and “2me.” As of May 2003, there were apparently over 8,500 registered domain names ending in “2U.” Notwithstanding this important point, Respondent’s <return2me.net> domain name is distinct from Complainant’s <returnme.com> domain name. First, and most obviously, Respondent’s <return2me.net> employs the number “2” prominently in the heart of the domain name to replace the word “to,” for the purposes of coining a phrase and creating a distinct visual appearance. Second, Respondent’s domain name is an “absent” person statement (i.e., “return2me” is the statement of a person not present before the finder requesting return of inanimate property) whereas Complainant’s website is a “present” person statement (“returnme” is the statement of a pet present before the finder personally requesting safe return).

[g.] Beginning in January 2001, over four years before learning of <returnme.com> or any domain name dispute arising from that entity, Respondent obtained the “return2me” domain in order to make a bona fide offering of lost and found location products and services. Respondent registered <return2me.net> in 2003, nearly two years before learning of Complainant. Since 2003, Respondent has developed a substantial client base – over 17,000 customers and growing. Respondent continues to serve those customers and those customers rely upon the service provided by Respondent.

[h.] Respondent learned of Complainant’s website, ReturnMe.com, only after Complainant contacted Respondent on or about July 5, 2005. Notably, Complainant itself, although plainly protective of its business and associated website, did not learn of Respondent’s website until July 2005, despite Respondent’s use of its domain for an extended period of time.

[i.] If a party has been “commonly known by the domain name,” even if the party has not acquired a trademark or other legal protection for the domain name, then such circumstance is another complete defense to an ICANN Policy claim. (ICANN Policy 4(c)(ii)). Respondent, for the couple of years that it has been operating its lost and found business under the name “return2me.net,” has been commonly known as “return2me.net.” That is how the vast majority of Respondent’s 17,000 plus customers contact Respondent. The name is printed on Respondent’s products and is the driver for Respondent’s clients to order and reorder product. The name is also the means employed by finders of Respondent’s customer’s property when such persons seek to return such property.

[j.] Complainant argues that the website, <targuscarepack.com>, incorrectly contained an image showing Respondent’s product with a registered trademark symbol. Complainant is correct. The image was a mistake that has since been corrected.

C. Complainant’s Additional Submission

Complainant argues that Respondent’s failure to conduct a trademark search before adopting its domain name constitutes bad faith.

D. Respondent’s Additional Submission

Respondent argues that Complainant, now lacking a property recovery business, and having determined to devote its <returnme.com> domain to selling signal-emitting pet identification tags, and having determined to devote its toll-free customer service number to advertising a “talk line,” desires to effectively hijack Respondent’s business through the means of an ICANN complaint.

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Policy”) instructs this Panel to “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.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

Rights or Legitimate Interests

Paragraph 4(c)(ii) of the Policy provides that a respondent can establish rights or legitimate interests if it can show that it has been commonly known by the domain name at issue in the proceeding. Respondent has testified that it has been operating its lost and found business under the name <return2me.net> since 2003 and has over 17,000 customers who know Respondent by that domain name. Respondent has also testified that the name is printed on its products and is the driver for ordering and reordering of the products. Complainant has submitted no evidence in refutation of these allegations. The Panel finds that Respondent has adequately proven that it is known by the disputed domain name and that it therefore has rights and legitimate interests in the mark. See Kayton Mktg. Div., Inc. v. Patton Gen. Contracting, FA 123868 (Nat. Arb. Forum Oct. 21, 2002) (holding that the respondent had rights and legitimate interests in the disputed domain name as it had been commonly known by that domain name and had been using the name for marketing its goods and services for several years.)

Because the Panel has found that Complainant has failed to prove that Respondent has no rights or legitimate interests in respect to the domain name at issue, there is no need for the Panel to decide the issues of confusing similarity or of bad faith.

Reverse Domain Name Hijacking

Complainant is a legitimate trademark owner who was attempting to improperly apply the Policy to a domain name in which Respondent has legitimate rights or interests. While the Panel notes that the filing of this Complaint and of the Additional Submission were ill-advised, this Panel cannot find, on the record before it, that the Complaint was filed in bad faith with the knowledge that it could not prove the requisite elements of the Policy. See Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003); see also Netro Corp. v. Koustas, FA 109723 (Nat. Arb. Forum, June 12, 2002). (“This is a close call, but the Panel has determined not to find that Complainant has attempted a Reverse Domain Name Hijacking. True, the case was very weak and probably should not have been filed, but the facts do not justify a finding under Rule 15(c).”). Therefore, this Panel does not find Reverse Domain Name Hijacking based upon the evidence and pleadings submitted.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

David A. Einhorn, Panelist (Chairperson)

Dated: September 9, 2005

TYRUS R. ATKINSON, Panelist

DAVID S. SAFRAN, Panelist

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PARTIES

REGISTRAR AND DISPUTED DOMAIN NAME

PANEL

PROCEDURAL HISTORY