Generic Top Level Domain Name (gTLD) Decisions

DECISION

Express Services, Inc. v. Brian Hall d/b/a Express Payroll d/b/a Mesa Staff

Claim Number:  FA0303000149176

PARTIES

Complainant is Express Services, Inc., Oklahoma City, OK (“Complainant”) represented by Randy L. Canis, of Greensfelder, Hemker & Gale, P.C.. Respondent is Brian Hall d/b/a Express Payroll d/b/a Mesa Staff, Mobile, AL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <expresspayroll.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 11, 2003; the Forum received a hard copy of the Complaint on March 12, 2003.

On March 17, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <expresspayroll.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 7, 2003 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@expresspayroll.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 16, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <expresspayroll.com> domain name is confusingly similar to Complainant’s EXPRESS family of marks.

2. Respondent does not have any rights or legitimate interests in the <expresspayroll.com> domain name.

3. Respondent registered and used the <expresspayroll.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Express Services, Inc., provides a variety of personnel services including temporary and permanent employment services and staffing services.  Complainant has several franchisees operating employment-staffing offices under the EXPRESS mark.  Complainant holds a trademark for the EXPRESS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,647,022 registered on June 4, 1991). 

Complainant also holds trademark rights with the USPTO in the following marks:  RECEPTIONIST EXPRESS, SEARCH EXPRESS, EXPRESS PERSONNEL SERVICES and Design, EXPRESS TEMPORARY SERVICE and Design, EXPRESS STAFFING SERVICES and Design, EXPRESS HUMAN RESOURCES and Design, EXPRESS MANAGEMENT SERVICES and Design, EXPRESS HEALTH SERVICE and Design, and EXPRESS PROFESSIONAL STAFFING.  All of these marks contain the EXPRESS mark with the addition of a word or phrase that relates to Complainant’s employment services.  Complainant uses the EXPRESS family of marks to provide temporary and permanent employment agency services.  Complainant has continually used the EXPRESS mark since 1983. 

Complainant’s EXPRESS employment service franchisees are located in the United States, Belarus, Canada, Russia, South Africa and the Ukraine.  Complainant contends that its EXPRESS family of marks have “become, through continuous, exclusive and proper use, and extensive promotion and advertising, well established and widely recognized as associated with a particular source, such that [they] enjoy secondary meaning.”  In addition, Complainant asserts that it is “the largest privately held employment and personnel service provider in the [United States].” 

Around June 1999, Complainant became alerted to Respondent’s efforts to obtain a trademark registration for EXPRESS PAYROLL 2000.  Complainant contacted Respondent and asked that Respondent cease all use of the trade names EXPRESS STAFFING and EXPRESS PAYROLL 2000. 

Ultimately, Respondent agreed to settle the dispute by ceasing all promotion and advertising use of the terms EXPRESS PAYROLL, EXPRESS PAYROLL 2000 and EXPRESS STAFFING.  The settlement agreement allowed Respondent to use the terms for the purpose of notifying customers that Respondent will soon adopt a new trade name.  The settlement agreement was finalized on October 14, 1999.  Respondent thereafter changed its business name to Mesastaff, Inc., and filed a trademark application for MESASTAFF.

Respondent registered the <expresspayroll.com> domain name on September 26, 1996.  Complainant did not discover Respondent’s domain name registration until July 2001.  At this time Complainant discovered that the <expresspayroll.com> domain name was used to divert traffic to a website that features content related to temporary and permanent employment placement services.  Specifically, the <expresspayroll.com> domain name was used to divert to Respondent’s Mesastaff, Inc. website.  Complainant attempted to contact Respondent numerous times to get Respondent to stop using the <expresspayroll.com> domain name.  Respondent answered Complainant’s initial grievance and contended that it did not wish to infringe on Complainant’s rights in any way.  Respondent also expressed its wish to continue the subject domain name use, and offered to provide a link to Complainant’s website.

Complainant, however, demanded that Respondent not use the <expresspayroll.com> domain name for any purpose and that Respondent should transfer the domain name to Complainant.  Respondent never complied with Complainant’s demands.  Complainant, therefore, filed this UDRP proceeding.

 

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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.

Identical and/or Confusingly Similar

Complainant has established rights in the EXPRESS family of marks through proof of trademark registration with the USPTO.

Respondent’s <expresspayroll.com> domain name incorporates Complainant’s EXPRESS mark along with the word “payroll.”  Complainant has used the EXPRESS mark and other similar marks with descriptive qualifiers for nearly twenty years.  Respondent’s <expresspayroll.com> domain name is confusingly similar to Complainant’s EXPRESS mark because “payroll” is a word that has meaning within Complainant’s industry.  Thus, the addition of the word “payroll” to the EXPRESS mark serves to create an association with Complainant’s EXPRESS employment-staffing services.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

The Panel finds that Policy ¶ 4(a)(i) is satisfied. 

Rights or Legitimate Interests

Complainant has satisfactorily alleged all the proper elements under Policy ¶ 4(a)(ii).  With the allegation that Respondent has no rights or legitimate interests in the <expresspayroll.com> domain name, Respondent carries the burden to come forward and articulate its rights or legitimate interests.  Since Respondent failed to submit a Response, the Panel presumes that Respondent has no such rights or legitimate interests, unless the evidence clearly contradicts such a conclusion.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Respondent uses the <expresspayroll.com> domain name to divert Internet traffic to a website that offers substantially the same employment-related services that Complainant provides.  At the time when Complainant discovered the use of the <expresspayroll.com> domain name, in 2001, Respondent was aware of Complainant’s interest in the EXPRESS mark.  Back in 1999, Respondent entered into a settlement agreement with Complainant, whereby Respondent agreed to cease using EXPRESS PAYROLL 2000 as its trade name or for any promotional services.  The use of a confusingly similar domain name in association with a website that offers services substantially similar to Complainant’s services does not constitute rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or (iii).  See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services).

Respondent is not commonly known by the <expresspayroll.com> domain name.  Respondent was required to change its trade name as part of its settlement agreement with Complainant.  Respondent changed its trade name to Mesastaff, Inc., and filed a trademark application for the MESASTAFF mark.  Furthermore, Respondent is personally known as Brian Hall, the same party with whom Complainant entered into a settlement agreement.  There is simply no affirmative evidence that would invoke Policy ¶ 4(c)(ii) in Respondent’s favor.  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

To prove bad faith pursuant to Policy ¶ 4(b)(iv), Complainant carries the burden to demonstrate bad faith registration and use.  Proof of one over the other will not suffice.  While the Panel concedes that Complainant establishes a case against bad faith use, Complainant fails to invoke circumstances demonstrating bad faith registration. 

Respondent registered the <expresspayroll.com> domain name in 1996, which was prior to its dispute with Complainant over the use of similar trade names (e.g., EXPRESS PAYROLL, EXPRESS PAYROLL 2000 and EXPRESS STAFFING).  Respondent and Complainant settled that dispute in 1999 with the agreement that Respondent would phase out the use of confusingly similar trade names.  Respondent reregistered the <expresspayroll.com> domain name in 2001, which Complainant contends evidences bad faith registration.  However, renewal of registration is not the focus of the Policy; the initial registration remains the point of analysis for bad faith registration.  See Weatherall Green & Smith v. Everymedia.com, D2000-1528 (WIPO Feb. 19, 2001) (despite a finding by the Panel that the <weatheralls.com> domain name registration was renewed in bad faith, the relevant inquiry for purpose of Policy ¶ 4(a)(iii) analysis is whether the original registration was done in bad faith.  The Panel determined that, “a registration of a domain name that at inception did not breach Rule 4(a)(iii), but is found later to be used in bad faith does not fall foul of Rule 4(a)(iii).”).  Furthermore, when a domain name was initially registered in good faith, changed circumstances that demonstrate bad faith renewal are irrelevant.  See Substance Abuse Mgmt., Inc. v. Screen Actors Modesl [sic] Int'l, Inc.(SAMI), D2001-0782 (WIPO Aug. 14, 2001) (holding that, “If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith.”); see also Aetna Inc. v. Jacoby Partners 1999-2, L.L.C. FA125816 (Nat. Arb. Forum Nov. 22, 2002) (finding that whether a domain name registration was renewed in bad faith is irrelevant in analyzing the registration element of Policy ¶ 4(a)(iii), while holding that because the original registration was done in bad faith, the facts warranted a finding for Complainant).

Complainant argues that Respondent’s renewal of the <expresspayroll.com> domain name registration evidences bad faith in light of the settlement agreement.  While it is true that such circumstances evidence bad faith, a violation of the settlement agreement by renewal of registration seems to be outside the scope of the Policy.  See Discover New England v. The Avanti Group, Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the dispute outside the scope of the UDRP because the dispute centered on interpretation of contract language and whether or not a breach existed).

Complainant has not advanced any evidence that Respondent’s original domain name registration was done in bad faith.  The evidence shows that Respondent was developing an employment services business and even filed a trademark application for its original trade name EXPRESS PAYROLL 2000.  Thus, Respondent’s 1996 domain name registration was most likely done in support of its business interests. 

The Panel concludes that Complainant has not meet its burden of establishing bad faith registration due to the absence of any concrete evidence in relation to the 1996 registration date.  Thus, Policy ¶ 4(a)(iii) has not been satisfied.

DECISION

Having failed to establish the three elements required under ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <expresspayroll.com> domain name REMAIN with Respondent. 

Honorable Paul A. Dorf (Ret.) Panelist

Dated: April 22, 2003

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