1. Parties and Contested Domain Name

The Complainant Pizza Express Plc of London, England brought the present complaint against the Respondent Easthaven Ltd. of Bridgetown, Barbados. The domain name at issue is pizzaexpress.com registered by Easthaven Ltd.. The complaint was brought pursu ant to the Uniform Domain Name Dispute Resolution Policy (ICANN policy), adopted by the Internet Corporation for Assigned Names and Numbers on October 24, 1999.

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution's Website on November 6, 2000. The hardcopy of the Complaint Form and annexes were received on November 8, 2000. Payment was received on November 7, 2000.

Upon receiving all the required information, eResolution's clerk proceeded to the required administrative inquiry. The inquiry led the Clerk of eResolution to the following conclusions: the Registrar is Tucows Inc., the Whois database contains all the re quired contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on November 6, 2000. The requested information was received on November 14, 2000.

The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities un der Paragraph 2(a)in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on November 14, 2000. This date is the official commencement date of the administrative proceeding.

Only the emails to the postmaster@pizzaexpress.com and to the administrative contact were returned 'undeliverable'. All the faxes were successful.

The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the Respondent. According to the Canada Post tracking system, all were delivered.

On December 1, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on December 4, 2000.

On December 8, 2000, the Clerk's Office contacted Mr. Ross Carson, and requested that he act as panelist in this case.

On December 11, 2000, Mr. Ross Carson, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On December 12, 2000, the Clerk's Office forwarded a user name and a password to Mr. Ross Carson, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On December 12, 2000, the parties were notified that Mr. Ross Carson had been appointed and that a decision was to be, save exceptional circumstances, handed down on December 29, 2000.

3. Factual Background

The Complainant has registered the trademarks PIZZA EXPRESS and the device comprising the PIZZA EXPRESS PLC logo in the U.K., Benelux, Egypt, France, Italy, Portugal, Qatar, Saudi Arabia, Bahrain, Czech Republic, Hong Kong, Korea, Lebanon, Malta, Russia, Singapore, South Africa, Switzerland, Taiwan and the United Arab Emirates. The Complainant has attached details of the trademark registrations and the certificates of the registrations at Annex 1.

The Complainant also filed trademark applications, which are still pending, for the trademarks PIZZA EXPRESS and the device comprising the PIZZA EXPRESS PLC logo in Austria, Cyprus, European Union, Greece, Iraq, Sudan, Syria, Turkey, Bahrain, Brazil, Chin a, Cyprus, India, Israel, Japan, Kuwait, Malaysia, Oman, Pakistan, The Philippines, Poland, Singapore, The Slovak Republic, South Africa and the United States of America. The Complainant also has a pending European trademark application in respect of the name PIZZA EXPRESS and the device comprising the logo of PIZZA EXPRESS PLC. The Complainant has attached a schedule of the pending trademark applications at Annex 2.

The trademarks have been applied for or registered in relation to goods and services as follows: Class 42 (providing food and drink); class 39 (packaging and storage of goods); class 35 (advertising.., business management, business administration, office functions); class 30 (goods including flour preparations made from cereals, bread, pastry and confectionery, sauces, spices).

The Complainant submits that it runs a highly successful chain of pizza restaurants and outlets in 13 countries including Cyprus, Dubai, Egypt, France, India, Ireland, Japan, Malta, Pakistan, Poland, Russia, Turkey and the USA. The Complainant was establ ished in 1965 and for the year ending June 2000 recorded a turnover of £150.1 million. Complainant submits that in the countries where it is active the Complainant is one of the best known pizza restaurant chains and has a reputation for providing qualit y services.

On or around 4 June 2000 it came to Complainant's notice that the domain name "pizzaexpress.com" had been registered by Wired Solutions of 77 Mowat Avenue, Toronto, Ontario, Canada M6K 3E3. The domain name was available for sale by open bid on the auctio n site at comnetwork.com, which is owned by URLBrokers.com, also of 77 Mowat Avenue, Toronto, the same address as the registrant Wired Solutions.

On 23 June 2000 the Complainant, through Lawman Nominees Limited, a company owned by its solicitors, registered a bid for pizzaexpress.com in the sum of $2,000. On the same date Complainant completed the hard copy documentation regarding the bid, which revealed that Wired Solutions was the vendor of the name. The Complainant repeatedly attempted to contact Wired Solutions. By an e-mail dated 15 August 2000 from Brian Kelley of Comnetwork to Lawman Nominees the Complainant was informed that its bid had been unsuccessful and the Complainant was invited to bid again.

On or around 24 August 2000 the Complainant visited the comnetwork.com site and discovered that the domain name "pizzaexpress.com" was still for sale and that a value of $146,250 had been put on it. Complainant discovered that the registration of the dom ain name had been transferred to Easthaven Ltd., a company registered in Barbados, the Respondent in the Complaint. Easthaven Ltd. was incorporated on 3 July 2000, 10 days after the Complainant submitted a bid to Wired Solutions for "pizzaexpress.com". The domain name "easthaven.com", of which Easthaven Ltd. is the registrant, is also for sale on the comnetwork.com auction site. (See Annex 9).

Easthaven Ltd. gives its address as Top Floor, Atlantis Building, Shallow Draught, Bridgetown, Barbados. The Complainant engaged solicitors to visit the Easthaven Ltd. offices at their given address. The solicitors advised (a) Easthaven Ltd. does not ap pear to occupy any offices there; (b) Easthaven Ltd. does not appear to have any employees there; (c) the offices are occupied by, amongst others, the lawyer who reserved the name Easthaven Ltd., Yoland Bannister, of Alpha & Omega Law Chambers; (d) nothin g at the premises suggested any connection with pizzas specifically or the food industry in general.

When the Complainant's solicitors contacted Easthaven Ltd. regarding the transfer of pizzaexpress.com they received a response from the Respondent's lawyer, David Warga, whose office is at Suite 416, 77 Mowat Avenue, Toronto. The lawyer's e-mail response stated .."my client's business model does not include giving the domain away". (Annex 10).

4. Parties' Contentions

A. Complainant

(i) The Complainant submits that the domain name pizzaexpress.com is identical or confusingly similar to the Complainant's registered trademark PIZZA EXPRESS.

(ii) The Complainant submits that the Respondent has no rights or legitimate interests in the domain name pizzaexpress.com.

(iii) The Complainant submits that the Respondent registered and has used the domain name pizzaexpress.com in bad faith.

(i) Identical or Confusingly Similar

Complainant submits that the domain name pizzaexpress.com is identical to Respondent's registered trademark mark PIZZA EXPRESS apart from the generic top level domain name ending ".com". Complainant submits that, alternatively, the domain name pizzaexpre ss.com is similar to the Complainant's trademark in that it contains the words Pizza Express.

(ii) No Rights or Legitimate Interests

Complainant submits that the Respondent has not been carrying on any business at the address pizzaexpress.com or by reference to that name. Complainant submits that Respondent has no registered rights of any kind in relation to the name Pizza Express or similar names or marks. Complainant submits that no site is operated at the domain pizzaexpress.com and that currently the domain defaults automatically to the auction site at comnetwork.com where the domain name is available for sale. Complainant furth er advises that Easthaven Ltd. has only been active since 3 July 2000. Complainant submits that Respondent cannot have established goodwill or reputation which would otherwise give rise to any legitimate rights or interest in the domain name pizzaexpress .com.

Complainant advises that Complainant's company runs a highly successful chain of pizza restaurants and outlets in 13 countries including the USA. Complainant company was established in 1965 and for the year ending June 2000 recorded a turnover of £150.1 million. Complainant submits that in those countries where it is active the Complainant is well known, has a reputation for providing quality services. The name Pizza Express is associated with the Complainant.

(iii) Registered and used in bad faith

Complainant submits that Respondent has registered and used the domain name pizzaexpress.com in circumstances indicating the registration was effected primarily for selling the domain to a party with rights in the mark or name for valuable consideration. The domain name pizzaexpress.com was originally registered by Wired Solutions of Toronto, Canada and the domain name was available for sale by open bid on the auction site at comnetwork.com. Complainant registered a bid for $2000 on 23 June 23, 2000 wh ich was not accepted. On or around 24 August 2000 Complainant visited the comnetwork.com site The domain name pizzaexpress.com had been transferred to Easthaven Ltd. on 3 July 2000 and was still listed as for sale with a value of $146,250. Complainant' s solicitors in Barbados visited the address given by Easthaven Ltd. in its domain name registration and could not find any evidence of Easthaven Ltd. running a business at that address. Complainant submits that Easthaven Ltd. is a company which uses dom ain names as a tradable commodity, it may have been formed with a view to extracting from the Complainant a high price for the domain name pizzaexpress.com. Complainant also suggests that Easthaven Ltd. may be controlled from Toronto by URLBrokers Inc. o r Wired Solutions Inc who intend to profit by the registration and sale of domain names through the comnetwork.com site or to divert business to that site. Complainant submits that Respondent is demanding a large sum in respect of the domain name.

B. Respondent

(i) The Respondent admits that the domain name pizzaexpress.com is similar to the U.K. trademark of the Complainant. However, Respondent claims that the Complainant does not have rights in North America or South America to the exclusive use of the trade mark, including Barbados where the Respondent carries on business.

(ii) The Respondent submits that it has a legitimate business interest in the domain name, it acquired the domain name for a business venture, namely online pizza sales. Respondent expects its online presence to take effect at the end of the first quarte r of 2001.

(iii) Respondent denies that it registered the domain name in bad faith. Respondent claims it has never heard of the Complainant or its trademark.

(i) Identical or Confusingly Similar

The Respondent admits that the domain name pizzaexpress.com is similar to the U.K. trademark of the Complainant. However, Respondent claims that the Complainant does not have rights in North America or South America to the exclusive use of the trademark, including Barbados where the Respondent carries on business. Respondent submits that the term "pizza express" is a widely used term consisting of two generic English words. Respondent submits that the term PIZZA EXPRESS is used widely in North America and has no relationship or association to the Complainant. Complainant has provided a combined Canadian Corporate Name and Canadian Trademark Search Report (Exhibit C to the Response). The results disclose a number of sole proprietorships, partnerships and corporations which include "pizza express" as a trade name or part of a trade name in Canada. The trademark portion of the search discloses a Canadian Trademark Registration No. TMA 304719 for PIZZA EXPRESS & design registered July 12, 1985. There is no evidence that any of the businesses are operating in association with the trade name or trademark.

Respondent submits a Canadian Trademark Database search showing registrations of trademarks for PIZZA EXPRESS either with a design or in conjunction with other words (Exhibit D to the Response).

Respondent submits a U.S. trademark search showing 41 pending or registered applications for trademarks including the words pizza and express as part of the trademark applied for or registered. The applications for the words pizza express alone are aband oned. (Exhibit E to the Response).

A search engine search of the term "pizza express" shows instances of the use of pizza express or pizza express and design by individual businesses in communities in the United States (Exhibit F to the Response).

Respondent submits that its domain name is similar to the U.K. Trademark of the Complainant and that it is also similar to many other registered trademarks owned by others.

Respondent further submits that it acquired the domain name for a business venture and invested considerable time, effort and money to develop the concept and operation. Respondent states that it expects its online presence to take effect by the end of Ma rch 2001. Respondent suggests that Complainant was not interested in the domain name pizzaexpress.com because Complainant registered the domain name pizzaexpress.co.uk in October 30, 1996, which it uses and also registered the domain name pizza-express.co m in December 1999 which is currently inactive. Respondent suggests that the domain name pizzaexpress.com was likely available for the Complainant to register in 1996.

(iii) Registered and Used in Bad Faith

Respondent submits that it never heard of the Complainant or its trademark and therefore did not acquire the domain name for any of the reasons set out in paragraph 4(b) of the ICANN Uniform Domain Name Dispute Resolution Policy

Respondent denies that it approached the Complainant to sell the domain name to the Complainant. The Complainant sought out the Respondent. Respondent ignored the e-mails of the Complainant until the fourth "plea" after which it replied to the Complain ant "as a courtesy only".

Respondent submits that it acquired the domain name for a legitimate business purpose in July of 2000. Respondent further submits that Respondent and its predecessor owned the domain name since January 1999 without any evidence of conflict or confusion w ith the Complainant.

Respondent submits that Complainant is attempting to hijack the domain name from the Respondent since Respondent refused to sell the domain name to the Complainant.

(iv) Other Grounds

Respondent submits that Easthaven Ltd. acquired the domain name from Wired Solutions Inc. in order to develop a business. Respondent submits that it has a real office and staff.

Respondent submits that it retained the services of Comnetwork in Toronto, Canada to monitor and manage the renewal of the domain name. Respondent submits that it has not offered its domain name for sale and has not authorized Comnetwork to do so. Respo ndent submits that it has been advised by Comnetwork that it did not offer the domain name for sale but does list a value for domain names for which it provides services. Respondent has attached the Terms of Use located on Comnetwork's website which incl udes the statement "... we will present any reasonable offer to the registrant of the domain name for their/its consideration. .. The suggested price listed on this site is simply the Comnetwork's valuation of the name and is provided as a reference to a ssist as a starting point in your own evaluation".

Respondent submits that it acquired the name to use in conjunction with a bona fide offering of goods and services, namely online pizza sales as set out in Exhibit A to the Response. Respondent has attached as Exhibit B copies of the Respondent's web sit e graphics and site description.

Respondent submits that is not interested in selling the domain name to the Complainant as it has invested considerable time, effort and money to develop its business model.

Respondent, in its argument, submits that it chose the name pizzaexpress.com because the words pizza and express are generic and communicated an aspect of the service for which Respondent intended to use the name, namely the easy ordering and delivery of pizza.

5. Discussion and Findings

Before discussing the issues, a number of facts relating to the trademarks PIZZA EXPRESS and the registration of the domain name pizzaexpress.com by Wired solutions, the incorporation of the current registrant Easthaven Ltd. Under the Corporations Act of Barbados, the transfer of the domain name in dispute pizzaexpress.com from Wired Solutions to Easthaven Ltd., and business plans formulated by Easthaven Ltd. will be reviewed.

(1) The trademark registrations attached in Annex A disclose registrations of PIZZA EXPRESS as a trademark in a number of countries going back to 1989 in Classes 29, 30, 35, 39 and 42.

(2) The Complainant runs a chain of pizza restaurants with outlets in 13 countries. The Complainant was established in 1965 and for the year ending June 2000 recorded a turnover of £150.1 million.

(3) On or about June 4, 2000 it came to Complainant's notice that the domain name pizzaexpress.com had been registered by Wired Solutions Inc., 77 Mowat Ave, Suite 508, Toronto, Ontario, Canada, M6K 3E3. (Annex 7, Page 1 of 3).

(4) On or about June 4, 2000 the domain name pizzaexpress.com was available for sale by open bid, without an estimated value, on the auction site of comnetwork.com (which is owned and operated by URL Brokers.com Inc. whose address is 77 Mowat Avenue, Suit e 041, Toronto, Ontario,Canada, M6K 3E3. (Annex 5).

(5) On June 23, 2000 the Complainant submitted an online bid for the domain name pizzaexpress.com to comnetwork.com in the amount of two thousand ($2,000) U.S. dollars (Annex 6).

(6) On June 23, 2000 in response to the online bid, an e-mail was forwarded by Comnetwork - Domain Names Hostmaster [domain@comnetwork.com] to the representatives of the Complainant advising "In order to submit a bid for any internet domain name through t he Comnetwork.com you must print a bona fide offer and Schedule A (Domain Name Purchase Agreement) and fax it to 1-416-531-2825. Both forms can be located at www.comnetwork.com."

(7) In response the representatives of the Complainant downloaded an offer to purchase and Schedule A (Domain Name Purchase Agreement) and completed the forms and faxed the forms and a covering letter to Wired Solutions Inc., 77 Mowat Avenue, Suite 508, T oronto, Ontario, Canada, offering to purchase the domain name pizzaexpress.com for two thousand (2,000) U.S. dollars. (Annex 7).

(8) Schedule "A" to the Offer to Purchase Domain Name which is entitled Domain Name Purchase Agreement, states in paragraph 1: "Payment is to be delivered by bank draft or certified cheque payable to seller: c/o Warga Law Firm, 77 Mowat Avenue, Suite 416, Toronto, Ontario, Canada, M6K 3E3 Telephone: 416-535-1979 Fax: 416-535-6699 email dwarga@wargalaw.com." (Annex 7).

(9) On July 3, 2000, Easthaven Ltd. was incorporated under the Companies Act of Barbados. The incorporation documents included a Request For Name Search And Name Reservation submitted by Yolande Bannister, Alpha & Omega Law Chambers, Atlantis Building, Sh allow Draught, Bridgetown, Barbados submitted July 3, 2000. The proposed name of the company was Easthaven Ltd. The type of business the company carries on or proposes to carry on was stated as: "Sale and management of domain names outside of Caricom…". The incorporators also submitted a Notice of Address stating that the Address of the Registered Office was Top Floor Atlantis Building, Shallow Draught, Bridgetown Barbados. The Incorporator was Judy A. Payne. The Articles of Incorporation give the a ddress of Judy A. Payne as O'Neils Land, Emmerton Lane St. Michael, Barbados. The restrictions on the business of the Company in the Articles of Incorporation are: "the company shall not engage in any business other than International Business as defined in the International Business Companies Act, 1991-24. (Annex 4).

(10) The Notice of Directors also submitted with the incorporation documents states that the Director of the Company as of July 3, 2000 is Donville O. Inniss, Bayfield, St. Philip, Barbados. (Annex 4).

(11) On August 15, 2000, the representative for the Complainant forwarded an e-mail to Wired Solutions Inc. stating: "Below is the text of a message I sent to you regarding the above domain (pizzaexpress.com) on July 17; I have now been in contact with y ou 4 times without receiving any reply…"

(12) On August 15, 2000, the representative for the Complainant received an e-mail from Brian Kelley, Comnetwork.com advising: "We presented the offer to our client and they were not interested in selling the domain. If you would like to make another off er please go to comnetwork.com http:"//www.conmetwork.com/pass.cmdl?domain-PIZZAEXPRESS.com. (Annex 8).

(13) On or about August 24, 2000, the Complainant visited the comnetwork.com site and found that the domain name pizzaexpress.com was still for sale and Comnetwork's Estimate of the Value of the pizzaexpress.com was One Hundred and forty-six thousand two hundred and fifty $146,250.00 dollars. Comnetwork.com is stated to be a property of URL brokers.com Inc. (Annex 3). The Complainant also discovered that registration of the domain name pizzaexpress.com had been transferred to Easthaven Ltd.., a company incorporated in Barbados now the Respondent in this Complaint.

(14) On September 13, 2000, the Complainant's solicitors forwarded a letter addressed to Easthaven Ltd., Top Floor, Atlantis Building, Shallow Draught, Bridgetown, Barbados. The letter concerned the domain name pizzaexpress.com. The solicitors for the C omplainant recited a number of facts and requested that the domain name in dispute be transferred to the Complainant or the Complainant will institute proceedings under the ICANN domain name dispute resolution policy.

(15) On September 18, David Warga e-mailed the solicitors for the Complainant stating: "I am a solicitor in Canada. I have received a letter from someone in your firm with the reference number above. (MS/P599/101). As the solicitor did not give any indi cations of his/her identity, I do not know who I am to reply to. Please let me know to whom I should reply."

(16) On September 18, the solicitor for the Complainant e-mailed Mr. Warga identifying himself as Matthew Shankland. On September 18 Mr. Warga e-mailed Mr. Shankland stating "I am afraid that my client's business model does not include giving the domain away. Nothing in your letter changes that business model." In response to a further e-mail inquiry on September 18, 2000 Mr. Warga advised by return e-mail that he is retained by Easthaven Ltd. respecting the domain name pizzaexpress.com and an ICANN di spute resolution process. (Annex 10).

(17) The Complainant engaged solicitors in Barbados to visit the registered and mail address of Easthaven Ltd. at Top Floor Atlantis Building, Shallow Draught, Bridgetown, Barbados. The solicitors in Barbados reported that Easthaven Ltd. does not appear to occupy any offices there or have any employees at the address. The solicitors further reported that the offices are occupied by among others the solicitors who incorporated Easthaven Ltd. the solicitors from Barbados further reported that there is no thing at the premises which suggests any connection with pizzas specifically or the food industry in general.

(18) At the time of filing the Complaint, the Complainant states that as far as Complainant can detect, Easthaven Ltd. has no registered rights of any kind with respect to the name PIZZA EXPRESS or similar names or marks. The Complainant states that no s ite is operated at the domain pizzaexpress.com. The domain defaults automatically to the auction site at comnetwork.com where an estimate of the domain value is given as $146,250.00.

(19) The domain name easthaven.com is listed with Comnetwork.com with an estimated value of nine thousand seven hundred and fifty $9,750.00 dollars. (Annex 9). The Better-Whois.com states that easthaven.com is registered with Tucows.Com Inc. The registr ant of easthaven.com is Easthaven Ltd., Atlantis Building, Shallow Draught, Bridgetown, Barbados. The Administrative, Technical and Billing Contacts are listed as DNS admin@comnetwork.com., 67 Mowat Avenue, Suite 041, Toronto, Ontario, Canada, 416-640-51 43.

(20) The Respondent advises that Easthaven Ltd. acquired the domain name pizzaexpress.com from Wired Solutions in July 2000 not to sell it, but to develop a business at the URL. The Respondent states that Easthaven Ltd. has a real business, a real office and staff but attached no annexes indicating the address or number of employees.

(21) The Respondent which was incorporated on July 3, 2000, states that Respondent's business plans, namely online pizza sales as described in Exhibit A, were in active development prior to even hearing of or from the Complainant.

(22) The Respondent's stated business plans is to carry on business as an Application Service Provider (ASP) looking to add Internet functionality to pizza ordering and delivery worldwide (across Canada and USA initially). (Exhibit A and B). The Responde nt states that its website should be launched in the new year.

1. Identical or Confusingly Similar

Paragraph 4(a)(i) of the ICANN policy requires that the Complainant establish that the domain name in dispute pizzaexpress.com is identical or confusingly similar to the Complainant's trademark or trademarks.

The Complainant's trademark is comprised of the words pizza and express both of which are words of low inherent distinctiveness when used in association with the wares pizza or services associated with the service of pizzas. Trademarks of low inherent d istinctiveness can by substantial use over a period of time acquire a trademark significance or secondary meaning. The Trade Marks Acts in some countries will permit registration of marks of low inherent distinctiveness upon proof of acquired distinctive ness. The trademark PIZZA EXPRESS has been in substantial use in England and a dozen or so other countries with sales in the year end June 2000 amounting to over £150 million.

The Respondent filed evidence of some partnership or sole proprietorships which had registered the trade name PIZZA EXPRESS alone or as part of a name, but filed no proof that any of the partnerships or sole proprietorships actually carried on business un der such names. (Exhibit C) The Respondent also attached as Exhibit D a list of registered and abandoned trademarks which included the word PIZZA and EXPRESS together with other words and or designs. The Respondent did not attach any proof that any of t hese trademarks were still in use. The Respondent attached as Exhibit E the results of a search in the Federal Trademark Data Base which disclosed some registrations for trademark including PIZZA and EXPRESS but no active registrations for PIZZA EXPRESS alone. Most of the trademarks disclosed in the search results were abandoned either during prosecution or following registration. There is no evidence that any of the trademarks are in use in the United States of America. The Respondent also attached a s Exhibit F a search engine search showing some instances of use of PIZZA EXPRESS or PIZZA EXPRESS & design in the United States, Italy and Germany.

Having reviewed the proof and submissions I find that the Complainant's trademarks PIZZA EXPRESS and PIZZA EXPRESS & Design have received substantial use in England and other countries for many years and the domain name in dispute pizzaexpress.com is con fusingly similar to the Complainant's trademarks.

2. No Rights or Legitimate Interest

Paragraph 4 (a) (ii) of the ICANN policy requires the Complainant to establish that the Respondent has no rights or legitimate interest in the domain name pizzaexpress.com. Paragraph 4(c) of the ICANN Policy sets out some circumstances which if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate Respondent's rights to and legitimate interests to the domain name for purposes of Paragraph 4.a.(ii).

The Respondent is relying on its demonstrable preparations to use the domain name with respect to a bona fide offering of services before any notice to Easthaven Ltd. of the dispute.

Easthaven Ltd. , the Respondent was incorporated in Barbados on July 3, 2000, some ten days after the Complainant faxed a formal offer to purchase the domain name pizzaexpress.com from Wired Solutions Inc. the then registrant of the domain name pizzaexpre ss.com. Shortly after the incorporation of Easthaven Ltd. the domain name pizzaexpress.com was transferred to Easthaven Ltd. The Complainant did not receive a reply from Wired Solutions Inc. to its offer to purchase the domain name pizzaexpress.com for $2000.00 United States dollars. When a response to the offer to purchase was received by the representative of the Complainant the response did not come from the "Seller" Wired Solutions Inc. but from Comnetwork.com Inc., a property of URL brokers.com In c. The address of Wired Solutions Inc. is 77 Mowat Ave, Suite 508, Toronto, Ontario (Annex 7) and the address of URL brokers.com Inc. is 77 Mowat Avenue, Suite 041, Toronto, Ontario (Annex 5). The fax number provided on the offer to purchase (Annex 7) i s the same as the fax number (416) 640-5135 (Annex 5) of Comnetwork.com Inc. a property of URL brokers.com Inc. (Annexes 3 and 5). The reply of August 15 from Comnetwork-Domain Name Hostmaster to the representative of the Complainant was: "We presented t he offer to our client and they were not interested in selling the domain If you would like to make another offer please go to comnetwork.com." On August 15, 2000 when ComNetwork replied to the Complainant, the domain name pizzaexpress.com had been tran sferred to Easthaven Ltd.. As of August 24, 2000 the domain name pizzaexpress.com appeared on ComNetwork.com with Comnetwork's Estimate of Domain Value at $146,250.00. Comnetwork did not advise the Complainant's representative of the transfer of the dom ain name pizzaexpress.com to Easthaven Ltd..

On September 13, 2000 the Complainant's solicitors wrote to Easthaven Ltd. advising Easthaven Ltd. of Complainant's Trade Mark rights in PIZZA EXPRESS and requested that the domain name pizzaexpress.com be transferred to the Complainant. If the transfer was not effected the Complainant advised Easthaven Ltd. that it would instigate proceedings under the ICANN domain name dispute resolution policy.

On September 18, Easthaven Ltd.'s solicitor having a place of business at 77 Mowat Avenue, Suite 416, Toronto, Ontario (Annex 10) responded by e-mail to the letter of September 13, 2000 from the Complainant to Easthaven Ltd. stating "I am afraid that my c lient's business model does not include giving the domain away. Nothing in your letter changes that business model." (Annex 10). The solicitor for Easthaven Ltd. having a place of business at 77 Mowat Avenue, Suite 416, Toronto, Ontario was also named i n Wired Solutions Offer to Purchase Domain Name pizzaexpress.com as the law firm at 77 Mowat Ave, Suite 416, to whom payment for the domain name is to be delivered. (Annex 7, p. 2 of 3).

The Respondent relies upon "demonstrable preparations" to use the domain in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute. The formal letter giving the Respondent notice of the dispute addres sed to Easthaven Ltd. was dated September 13, 2000 and was responded to by the Respondent's solicitor in Toronto on September 18, 2000. While the Respondent has filed evidence of business plans Exhibit A and B there is no demonstrable evidence that the b usiness plans were developed prior to September 18, 2000. While there is a general statement that Respondent's business plans were formulated and in active development prior to hearing from the Complainant before September 18, 2000, there is no showing of plans developed before September 18, 2000.

Paragraph 4.C. sets out examples of circumstances which if proved demonstrate a Respondent's right and legitimate interest in the domain name in dispute. After reviewing all the statements and proof I find that based on the evidence presented the Respond ent has not proved rights and a legitimate interest in pizzaexpress.com.

The evidence shows that pizzaexpress.com was registered by Wired Solutions Inc. of 77 Mowat Ave. in Toronto, Ontario since January 1999. The web site was never active. An offer to purchase the domain name pizzaexpress.com was made to Wired Solutions Inc . on June 23, 2000 for $2000.00 U.S. No response was made to the Complainant about the formal offer until August 15, 2000. The response was made by Comnetwork.com. In the meantime, within 10 days of the offer by the Complainant a company was incorporat ed in Barbados and the domain name pizzaexpress.com was transferred to Easthaven Ltd.. Both Easthaven Ltd. and its predecessor in title have the same domain name manager and solicitor. After the acquisition of the domain name pizzaexpress.com Comnetwork .com placed an estimated price of $146,250.00 on the domain name pizzaexpress.com. I infer from these quick moving events immediately following the offer made by the Complainant that the dormant domain name owned by Wired Solutions Inc. acquired substant ial goodwill to support an estimated price of $146,250.00 even if such estimated net price was not set or authorized by Easthaven Ltd.. From the evidence adduced there is substantial goodwill associated with the Complainant's Trademark PIZZA EXPRESS in E ngland and numerous other countries where sales for the year end June 2000 were over £150 million. There is no goodwill associated with Easthaven Ltd.'s proposed business as there is no evidence that its predecessor did anything with the domain name pizz aexpress.com and there is no demonstrable evidence that Easthaven Ltd. made plans prior to receiving notice of the dispute. I find that on a balance of probabilities the Complainant established that the Respondent Easthaven Ltd. had no rights or legitima te interest in respect of the domain name pizzaexpress.com.

3. Bad Faith Registration and Use

Paragraph 4(a) (iii) of the ICANN policy raises the issue whether the domain has been registered and is being used in bad faith. Paragraph 4(b) supplies four examples of situations which, if any of them is found by the panel to be present, shall be evide nce of the registration and use of a domain name in bad faith.

After reviewing and assessing facts summarized immediately above I conclude on a balance of probabilities that Easthaven Ltd. acquired the domain name in dispute pizzaexpress.com for the purpose of selling, renting, or otherwise transferring the domain na me pizzaexpress.com to the Complainant who is owner of the trademark PIZZA EXPRESS alone or with design for valuable consideration in excess of the documented out of pocket costs directly related to the domain name. The Complainant offered to purchase pi zzaexpress.com from Wired Solutions Inc for $2000.00 U.S. No response was ever received from Wired Solutions Inc while Wired Solutions Inc. was the registrant of the domain name. The domain name pizzaexpress.com was transferred to Easthaven Ltd. the Res pondent before Wired Solutions Inc. or its agents responded to the offer to purchase the domain name pizzaexpress.com. Nothing was done with the domain name pizzaexpress.com from January 1999 until July of 2000 when an offer was made by Complainant to pu rchase the domain name. On a balance of probabilities I find that the plans of Easthaven Ltd. attached as Exhibit A and B were drafted after notice to the Respondent of the dispute concerning the domain name pizzaexpress.com there being no demonstrable p roof to the contrary. The Complainant has established on a balance of probabilities that the Respondent acquired the domain name in dispute in bad faith and is using the domain name in bad faith by holding the same with a view to selling, renting or othe rwise transferring the domain name pizzaexpress.com to the Complainant who has developed a substantial goodwill in the trademark PIZZA EXPRESS alone and in design format in England and in numerous other countries.

6. Conclusions

For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimat e interests in respect of the domain name, and that the Respondent's domain name has been acquired and registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4.i of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.

7. Signature

Signed at Ottawa, Ontario, Canada this 29th day of December, 2000

(s) Ross Carson

Presiding Panelist