Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Food Express, Inc., Greensboro, NC, USA ("Complainant") represented by C. Robert Rhodes, of Rhodes & Mason, PLLC. The Respondent is Frank Harwell Harwell Enterprises, Honolulu, HI, USA ("Respondent").

The domain name at issue is "foodexpress.com", registered with Network Solutions, Inc.

On April 2, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a Panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 7, 2001; the Forum received a hard copy of the Complaint on March 7, 2001.

On March 8, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "foodexpress.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 29, 2001 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@foodexpress.com by e-mail.

A timely response was received and determined to be complete on March 27, 2001.

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

Respondent is 3409 Group, Inc. Respondent denies that the domain name is the same or confusingly similar to Complainants mark, that it has a legitimate interest in the domain name and that the name was not registered in bad faith.

Respondent claims that foodexpress.com is an Internet retail store engaged in distribution of gourmet Hawaiian coffee with plans to expand to include an online grocery service for the island of Oahu, Hawaii and California. Respondent claims that the domain name has been under development since 1997 that preceded its registration by Respondent on September 28, 1998. Respondent contends that its legitimate business plan was interrupted by the "hold" that Complainant placed on the domain name with Network Solutions but was able to commence business on February 5, 2001. Mr. Harwell acknowledges that he offered to sell the foodexperss.com business to Complainant for $50,000.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") 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.

The domain name "foodexpress.com" is identical or confusingly similar to Complainants mark. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (epix.com "is the same mark" as EPIX); Banco Mercantil del Norte, S.A., v. Servicios de Comunicación En Linea, D2000-1215 (WIPO Nov. 23, 2000) (finding that the domain name, <banorte.com> is identical to Complainant’s BANORTE trademark and commercial name).

Respondent is not commonly known by the disputed name and it has not shown that it has established rights or a legitimate interest in the disputed name prior to notice of the dispute. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Further, prior to this dispute, Respondent was not using the domain name at issue for any purpose. See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent has not used the domain names in connection with any type of bona fide offering of goods and services).

Complainant has not shown that Respondent registered the domain name in bad faith. See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts where the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).

The Policy is intended to resolve only a narrow class of cases of "abusive registrations" and does not extend to cases where a registered domain name may be subject to a legitimate dispute over use of a mark. See generally, Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000).

The Complainant has failed to show that Respondents registration and use of the domain name "foodexpress.com" is in bad faith. It is the decision of the Panel that the requested relief is denied and that registration of the domain name "foodexpress.com" not be disturbed.