Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

1.1 The Complainant is World Publications, Inc., a corporation organized under the laws of the State of Texas, United States of America, having its principal place of business at 3946 Glade Valley Drive, Kingwood, Texas, United States of America.

1.2 The Respondent is Seattle Pen, Inc., d/b/a World Pen, a corporation organized under the laws of the State of Washington, United States of America, having its principal place of business at 1424 4^th Ave., Suite 523, Seattle, Washington, United States of America.

The domain name at issue is "worldpen.com", which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.

3. Procedural History

3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 5, 2000, and the signed original together with four copies forwarded by express courier also was received on July 5, 2000.

3.2 On July 14th, 2000, NSI confirmed that the domain name "worldpen.com" is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the Whois details and confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect.

3.3 The WIPO Center determined that the Complaint satisfies 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 Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

3.4 No formal deficiencies having been recorded, on July 18, 2000, 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 August 7, 2000, 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.

3.5 A Response was received on August 7, 2000. Complainant's "Supplemental Statement" was received on August 15, 2000. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on August 17, 2000. Also on August 17, 2000, the WIPO Center received Respondent's "Reply."

3.6 On September 5, 2000, 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 Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.

4.1 On April 29, 1997, Complainant first registered with the United States Patent and Trademark Office ("USPTO") the mark "PEN WORLD" for magazines containing articles, letters, photographs, etc. of interest to fanciers of writing instruments.

4.2 Complainant has used the "PEN WORLD" mark in connection with its periodical publication. The publication began as a quarterly in 1987, and beginning in 1990 became a bimonthly publication. It is currently distributed in more than 80 countries. From 1990 through 1999, the publication has generated total revenues of almost US$9,000,000.

4.3 Complainant has promoted the mark through advertising and distribution of promotional materials at various trade shows. The magazine has achieved a degree of notoriety, having been referenced in articles in newspapers and magazines such as The Wall Street Journal, The New York Times, The Washington Post, and The Chicago Tribune, among others.

4.4 On April 9, 1997, Complainant registered the domain name "penworld.com", which name resolves to a web site which publishes information concerning Complainant's publication, hosts discussion forums, and sells books about pens, pen accessories, and the magazine.

4.5 Respondent registered the trade name "WORLD PEN" with the State of Washington's Licensing Department on or about July 26, 1996.

4.6 Respondent registered the domain name at issue on January 27, 1996.

4.7 Complainant learned of the registration of "worldpen.com" sometime prior to September 1996, when Complainant published a note announcing the establishment of a web site utilizing the domain name at issue.

4.8 In the September/October 1996 issue of Complainant's Pen World International magazine, the following note appeared under the heading "Just Hop on the Highway . . .": "World Pen has recently hung out its virtual shingle, bringing the world of pens to the information superhighway. The on-line pen shop offers leading writing instrument brands, a collectibles department and an informative tips section. Point and click your way to your next pen purchase at http://www.worldpen.com/. But, whatever you do, don't say its name backwards."

4.9 Since early 1996, Respondent has used the domain name at issue to resolve to a web site at which it sells writing instruments, books, and related merchandise. Respondent's web site receives between 4,000 and 8,000 hits per month and has earned to date approximately US$750,000 in gross revenues.

4.10 On April 8, 2000, Complainant sent Respondent an email which states: "To the owners of this site: The use of World Pen is an infringement of our registered trademark, Pen World®. Cease the use of World Pen immediately. If the use of this name is not changed by this coming Monday, I will notify our legal counsel to take action immediately. Glen B. Bowen."

4.11 On April 12, 2000, Respondent filed a law suit in the King County Superior Court, State of Washington, United States of America, seeking at least in part a declaratory judgment that Respondent's trade name "WORLD PEN" and its domain name "worldpen.com" are not confusingly similar to Complainant's "PEN WORLD" trademark. That lawsuit is currently pending.

5. Parties’ Contentions

5.1 Complainant contends that Respondent has registered as a domain name a mark which is confusingly similar to the trademark 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 the domain name at issue is not confusingly similar to Complainant's trademark, that Respondent has rights and legitimate interests in respect of the domain name at issue, and that Respondent has not registered and is not using the domain name at issue in bad faith. Respondent further requests that pursuant to Uniform Rules, Rule 18(a), the Panel should exercise its discretion to terminate or suspend these proceedings.

6. Discussion and Findings

6.1 The Policy was enacted to deal with a limited scope of matters involving the bad faith registration and use of domain names which are identical or confusingly similar to trademarks or service marks and in which the registrant of the domain name has no rights or legitimate interests in respect of that name. Final Report of the WIPO Internet Domain Name Process, April 30, 1999 (hereinafter the "WIPO Final Report"), 163-168.

6.2 The emphasis on providing an expedited process to accomplish this purpose is evident both in the WIPO Final Report and in the Uniform Rules. WIPO Final Report, 189; Uniform Rules, 10(c) and 15(b).

6.3 The court case may well take many months to resolve, and the issues in that case, while in some cases similar to the issues which must be resolved in this proceeding, are more and different from most of the issues presently before the Panel. Therefore, the Panel, mindful of the intent of the Policy to provide an expeditious procedure, exercises its discretion to continue this limited proceeding to a prompt resolution.

6.4 At the outset of this discussion it is noted that the Complainant has submitted a "Supplemental Statement" and the Respondent has submitted a "Reply." Paragraph 12 of the Rules provides for additional submissions beyond the Complaint and the Response only at the Panel's request and at the Panel's sole discretion. No request was made by either party for the Panel to exercise its discretion in accepting these submissions. Adopting the reasoning of the Panel in Easyjet Airline Co., Ltd. v. Steggles, ICANN Case No. D2000-0024, the Panel determines that such unrequested submissions should not be considered. Id., ¶ 5,l. Accordingly, the Panel considers neither the Supplemental Statement, nor the Reply.

6.5 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."

6.6 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.

6.7 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 legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and used in bad faith.

6.8 The issue that immediately commands the Panel's attention is whether the Respondent has rights or legitimate interests in respect of the domain name at issue.

6.9 Paragraphs 4(c)(i) and (ii) provide in pertinent part: "Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights . . . ."

6.10 Respondent registered the trade name "WORLD PEN" in July 1996 and has been conducting business under that name since early 1996.

6.11 Respondent has used the domain name in connection with a bona fide offering of goods since early 1996, long before receiving notice of a dispute from Complainant in April 2000.

6.12 Accordingly Respondent has demonstrated that it has rights and legitimate interests in respect of the domain name at issue. Policy 4(c)(i) and (ii).

6.13 Because it is Complainant's burden to prove all three elements of Paragraph 4(a) of the Policy, and because Complainant has failed to carry that burden as to element 4(a)(ii), it is unnecessary for the Panel to consider whether Complainant has met its burden as to the other two elements.

For all of the foregoing reasons, the Panel decides that the Respondent has rights and legitimate interests in respect of the domain name at issue, and the Panel finds for the Respondent.

M. Scott Donahey
Presiding Panelist

Dated: September 14, 2000