Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

Planet Earth, Inc.,

Complainant

vs.

Planetary Solutions, Inc.,

Respondent

DOMAIN NAME DISPUTE
ADMINISTRATIVE PANEL DECISION
Forum File Number FA # 94362

The above styled matter came on for an administrative hearing on April 29, 2000, before the undersigned arbitrator in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy and Rules. The arbitrator certifies that he has no conflict of interest in this matter. After due consideration of the written record as submitted, the following decision was made:

PROCEDURAL FINDINGS

Domain Name : Planetearth.com

Domain Registrant : Planetary Solutions Date: May 15, 1995

Domain Registrar : Network Solutions, Inc.

This action was commenced by the Complainant filing its Complaint with the National Arbitration Forum (The Forum) on March 28, 2000. Thereafter, following a compliance review made in accordance with ICANN Rule 4, all necessary parties were duly notified of the commencement of the administrative proceedings. In due course the Respondent filed its Response to the Complaint.

FACTUAL BACKGROUND

PARTIES ALLEGATIONS:

1. The Complainant has a certificate of registration dated December 28, 1999 for the service mark "Planet Earth" (with globe design) which is also the corporate and trade name of the company, Planet Earth, Inc.

2. Complainant is a Colorado corporation engaged in landscape design and gardening services as well as landscape construction and installation.

3. Complainant is applicant for two pending intent-to-use federal service mark registrations : Planet Earth (with global design ) for computer on-line services in the field of landscape design and landscaping products, which was allowed by the USPTO on December 14, 1999; and ECO-CIRCLE which was allowed January 25, 2000. Complainant plans to use the latter mark in connection with environmental recycling services.

4. Complainant adopted and has been using the service mark Planet Earth (with globe design) since 1994, and has been using it in commerce since 1995.

5. Respondent, Planetary Solutions, Inc., is also a Colorado corporation that incorporated in April, 1991. Respondent obtained state and federal service mark registrations for "Planetary Solutions" in 1991 and 1992, respectively.

6. On May 15, 1995, Respondent registered the domain name "Planetearth.com with Network Solutions, Inc. At that time, the domain name Planetarysolutions.com had not been registered. It was apparently available until March 30, 1999, when it was registered by an individual in Miami, Florida, who may or may not have a connection to the Respondent.

7. Respondent did not establish an operable web site at "Planetearth.com" until February, 2000. Complainant’s web page may be found at "Planetearthinc.com." The Complainant’s page shows its name Planet Earth, Inc. with a globe design and a list of products including fountains, gifts, accessories, landscaping and earth stuff. Respondent’s page highlights its name Planetary Solutions and has a different globe design . Respondent’s web page lists interior building materials with environmental and health benefits.

8. From the time Respondent registered "Planetearth.com" with Network Solutions, Inc., (May 15, 1995) it has used the domain name as an e-mail address, publishing it in numerous advertisements and marketing materials promoting its goods and services. Respondent states that use of the domain name as its e-mail address was part of its plan for the ultimate development and use of the web site. Respondent further stated that the delay in development was part of its business plan including acquiring capital and developing the infrastructure to handle Internet business

.

9. Complaint stated that the Respondent offered to sell the domain name to the Complainant for far more than the cost of acquiring it. While acknowledging that the domain name had considerable value, Respondent vehemently denied any solicitation of offers or plan to sell. In response to Complainant’s inquiry, Respondent asked Complainant to make his offer in writing but says no written communication was received.

10. Respondent proffered a trademark search for "planet earth" which listed some sixty

registered marks. Eleven of these contained no other words than "planet earth’.

Respondent has no dispute with Complainant’s claims that the pronunciation of

Complainant’s service mark and the domain name is identical; or that the way

people verbalize the two designations is indistinguishable.

DISSCUSSION

In order to justify transfer of a domain name, Paragraph 4(a) of the ICANN Policy provides that a complainant must prove each of the following:

The policy does not require operation of a web site to prove good faith. Nor does it require a domain name to be a company name or to appear on any hard goods to be a valid filing.

A Yahoo search for "planet earth, inc." found 82,456 web pages including the Complainant’s. It also included one in Hyannis, MA which includes the globe in its design and is engaged in "lawn and soil care for the fragile ecosystem and environment."

On observing the Complainant’s and Respondent’s web pages the two sites are clearly distinguishable. Likewise, the products offered are related only in the sense that they are connected to homes in one way or another. While the words "planet Earth" appear on the Respondent’s web page and is obviously similar to Complainant’s service mark, there is nothing which would indicate in any way that it was designed to or would in fact draw or mislead customers looking for the Complainant.

DECISION

It is the decision of the arbitrator that the Complainant has failed to carry its burden to prove that Respondent had no interest in the domain name or that Respondent acted in bad faith. Accordingly, the domain name "planetearth.com" should not be transferred to the Complainant.

Louis E. Condon, Arbitrator

April 29, 2000

Charleston, SC