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Pictures Plus, Inc. v. Hawaii Internet [2000] GENDND 1356 (24 October 2000)

National Arbitration Forum

The Complainant is Pictures Plus, Inc., Kapolei, HI, USA ("Complainant"). The Respondent is Hawaii Internet, Honolulu, HI, USA ("Respondent").

The domain names at issue are "picturesplus.com" and "artsource-hawaii.com", registered with Network Solutions.

PANELISTS

The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as the Panelists in this proceeding.

The Panelists are: The Honorable Richard DiSalle, Chairperson; The Honorable Marilyn W. Carney; and The Honorable Irving Perluss.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 21, 2000; The Forum received a hard copy of the Complaint on August 18, 2000.

On August 22, 2000, Network Solutions confirmed by e-mail to The Forum that the domain names "picturesplus.com", "artsource-hawaii.com" are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On August 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 18, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Res pondent 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@picturesplus.com and postmaster@artsource-hawaii.com by e-mail.

On October 11, 2000, pursuant to the request to have the dispute decided by a Three Member panel, the Forum appointed The Honorable Richard DiSalle, Chairperson; The Honorable Marilyn W. Carney; and The Honorable Irving Perluss as Panelists.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

Complainant’s president, Kent Untermann, registered the term "Pictures Plus" with the State of Hawaii Department of Commerce and Consumer Affairs on October 6, 1987, and Penelope N. Tong, Complainant’s attorney, reserved the corporate name "The Art Source, Inc." on May 4, 1990. Thereafter, Mr. Unterman executed an assignment of the name "Pictures Plus" to The Art Source, Inc.

In 1995, John Bond began running printing machinery for Complainant. Sometime before July 4, 1996, Mr. Bond had a conversation with Mr. Untermann regarding the Internet. Mr. Untermann had no knowledge of the Internet at that time, and was unsophisticat ed regarding computer technology. Mr. Bond suggested to Mr. Untermann that he should consider registering domain names for Complainant’s trademarks/service marks/trade names "Pictures Plus" and "The Art Source, Inc." Mr. Untermann liked the idea of one da y doing business on the Internet and, agreed to have Mr. Bond register the subject names on behalf of Complainant. On June 21, 1996, Mr. Bond registered the domain names <picturesplus.com> and <artsource-hawaii.com> with InterNIC Registration Services. However, Mr. Bond registered the domain names to Hawaii Internet (hereinafter "Respondent") rather than in Complainant’s name. Hawaii Internet is an alias of John Bond or is otherwise the alter ego of Bond.

In reliance upon Mr. Bond’s representation to Complainant that Mr. Bond had registered the subject names on Complainant’s behalf and believing that Complainant owned said domain names, Complainant paid InterNIC on October 7, 1996 for said registrations .

Sometime in February, 1997, Complainant ended its working relationship with Mr. Bond due to Mr. Bond’s inability to properly run the printing machinery. At the time the relationship ended, Complainant had no knowledge or understanding that the subject names were registered to Respondent and not to Complainant. Mr. Bond has reregistered the subject names twice to Respondent with Mr. Bond listed as the sole administrative contact. The expiration date on the initial InterNIC registration was June 21, 1998 . The current expiration date on the domain names is June 22, 2002, indicating that Mr. Bond reregistered the names once on or before June 21, 1998, and again on or before June 21, 2000. In connection with the second registration, Mr. Bond failed to provi de notice to Complainant that the registrations of Complainant’s domain names were about to expire or that Mr. Bond was registering the same to Respondent. Complainant’s counsel sent Mr. Bond a letter demanding the transfer of the names. In connection wit h the second registration, Mr. Bond states that his intent was to "park" and "sell" the names.

Complainant has protectable rights in the names/marks "Pictures Plus" and "The Art Source". Complainant had been doing business under the names for over six years before Mr. Bond registered them to Respondent. Therefore Complainant has priority over an y use by Mr. Bond or Respondent.

No fraud was ever committed. Untermann had a full two years to ask about the name registration or ask his general manager, who used a computer, or his employees, some of whom used computers, to look into this for him during the two year period.

Mr. Bond says he was extremely careful to provide copies of everything he did involving money during his relationship with Mr. Untermann, since his Accountant always REQUIRED proof of what was being paid for. He says he always created a well documented paper trail while involved with Mr. Untermann for reasons of his own personal protection, as well.

The current public record shows who has registered these domain names, and in fact anybody’s domain names. If Mr. Untermann or any of his business associates had the slightest real interest in these names in 1996 to 1998, they only had to check this ex tremely well known, free, public database of who has registered what on the internet and exactly who the contacts are, etc. To say they didn’t know and could not find out is a major lie. It’s all public information.

The domain names are identical and confusingly similar to its marks. See Hormel Foods Corp. and Hormel Foods, LLC v. Spotted Cow Media, FA 95067 (Nat. Arb. Forum July 31, 2000) (finding that the domain name <kidskitchen.com> is identic al to the Complainant’s trademark KIDSKITCHEN); Dell Computer Corp. v. Got Domain Names For Sale, D2000-0659 (WIPO Aug. 15, 2000) (finding that the domain names "dellpalm.com", "dellpalm.net", and "dellpalm.org" are confusingly similar to the compl ainant’s marks, DELL DIMENSION, DELL PRECISION, DELLWARE, DELL TALK, AND DELL4ME).

The Respondent has no rights or legitimate interests in the domain names in question, other than selling them for a profit. See Bank of America Corporation v. Cybersquare.com, FA 95113 (Nat. Arb. Forum Aug. 14, 2000) (finding that the Respondent had no rights in the domain name because the Respondent was using the Complainant’s mark for its profit); Pharmacia & Upjohn Co. v. Xanax Advocates, D2000-0817 (Sept. 10, 2000) (finding that the Respondent registered the domain names for no le gitimate purpose).

The Respondent has acted in bad faith in that he registered the domain names for the purpose of selling them to the Complainant for valuable consideration in excess of out of pocket costs. Policy ¶ 4.b.(i). See Banca Popolare Friuladria S.p.A. v. Gi ovanni Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the Respondent offered the domain names for sale).

The Complainant also contends that the Respondent registered the domain names to prevent the Complainant from using them in corresponding domain names. Policy ¶ 4.b.(ii). To satisfy this rule, the Respondent must have engaged in a pattern of conduct of registering infringing domain names. See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent engaged in a pattern of conduct, by registering over fifty domain name s such as <amazondirect.com> and <lycosdirect.com>, and intended to prevent holders from using their marks in corresponding domain names).

The use of "Pictures Plus" requires more than a small amount of imagination to make an association with a store that sells artwork, frames, framing services and miscellaneous merchandise. The term could have various meanings to a consumer upon firs t hearing the name. It could mean an enhancement of "pictures" or an improvement on "pictures" through the use of "plus" which connotes that the "pictures" are better than other pictures. The mark could also suggest that Complainant sells more than pictur es through the use of the word "plus." Because there could be multiple meanings to this name, a consumer must use some imagination to associate the name with a particular business. The name could easily relate to a number of other goods, services or busin esses, including digitally enhanced pictures, art services, professional photography or a brand of cameras, therefore the name is merely suggestive.

"The Art Source" is also suggestive, because, in the same way as "Pictures Plus," "The Art Source" takes some form of imaginary step to relate it to a business such as Complainant’s. The name "The Art Source" does not directly indicate what types of go ods/services The Art Source, Inc. supplies. Use of the name "The Art Source" could therefore indicate a variety of businesses without the proper imaginary steps required by the consumer. Such a name could as easily indicate an art supply store for artists or an art collective as it could a supplier of fine art.

Inherently distinctive names/marks receive legal protection immediately upon adoption and use. Thus, fanciful, arbitrary and suggestive marks do not require a showing of secondary meaning for legal protection – they are treated as being inherently dist inctive by nature. To be considered suggestive, a mark or name must pass the "imagination test" and the "need test."

The domain names are identical and confusingly similar to its marks.

The Respondent has no rights or legitimate interests in the domain names in question, other than selling them for a profit.

The Respondent has acted in bad faith in that he registered the domain names for the purpose of selling them to the Complainant for valuable consideration in excess of out of pocket costs.

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECT THAT THE DOMAIN NAMES picturesplus.com and artsource-hawaii.com, registered by respondent, be transferred to complainant.

Honorable Richard DiSalle

Honorable Marilyn W. Carney

Honorable Irving Perluss

Panelists

Dated: October 24, 2000