DECISION

Anthony L. Trujillo and Planetfone, Inc. v. 1Soft Corp.

Claim Number: FA0307000171259

PARTIES

Complainants are Anthony L. Trujillo and Planetfone, Inc., Pasadena, CA (“Complainants”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP.  Respondent is 1Soft Corp., Blue River, OR (“Respondent”) represented by Greg Thorne.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <planetphone.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

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.

David A. Einhorn sits as Panelist.

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 24, 2003; the Forum received a hard copy of the Complaint on July 25, 2003.

On July 25, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <planetphone.com> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that the Respondent is the current registrant of the name.  Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com 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 July 30, 2003 a Notification of Complaint and Commencement of Administrative Proceeding (the“Commencement Notification”), setting a deadline of August 19, 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@planetphone.com by e-mail.

A timely Response was received and determined to be complete on August 18, 2003.

An Additional Submission was received from Complainants and determined to be complete on August 19, 2003.

On August 27, 2003, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.

RELIEF SOUGHT

Complainants request that the domain name be transferred from Respondent to Planetfone, Inc.

PARTIES’ CONTENTIONS

A. Complainants

[a] Complainants own a federal trademark registration for PLANETFONE & DESIGN with a first use date of January 21, 1998 and an intent-to use application for PLANETFONE, filed on October 9, 2001.

[b] Respondent’s registered domain name <planetphone.com> is confusingly similar to Complainants’ PLANETFONE trademark.

[c] Respondent has no rights or legitimate interest in the <planetphone.com> domain name.

[d] Respondent has registered and is using the <planetphone.com> domain name in bad faith.

B. Respondent

[a] Respondent registered the domain name <planetphone.com> on July 24, 1997.

[b] Complainant registered the domain name <planetfone.com> on July 15, 1998.

[c] Complainant filed its intent-to-use application for PLANETFONE on October 9, 2001.

[d] Respondent registered the domain name <planetphone.com> before Complainants started using their trademark PLANETPHONE.  Therefore, Complainants have no rights to <planetphone.com>.

C. Additional Submissions

Complainants filed an additional submission which has been reviewed, but which did not present facts or legal arguments which have influenced this Panel’s decision. 

FINDINGS

Complainants own trademark registration number 7,437,890 for PLANETFONE & DESIGN, which is based on a first use date of January 21, 1998 and an intent-to-use application for PLANETFONE which was filed on October 9, 2001.

Respondent registered the domain name <planetphone.com> on July 24, 1997, six months prior to Complainants’ first use date in their trademark registration and over four years prior to Complainants’ filing of their intent-to-use application.

DISCUSSION

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.

Identical and/or Confusingly Similar to a Mark in Which Complainants Have Rights

Paragraph 4(a)(i) of the Policy requires Complainants to show that Respondent’s domain name is identical or confusingly similar to Complainants’ marks.  This provision necessarily implies that Complainants’ rights predate the registration of Registrant’s domain name.  See Intermark Media, Inc. v. Wang Logic Corp., FA139660 (NAF Feb. 19, 2003).  Respondent registered the domain name <planetphone.com> on July 24, 1997, six months prior to Complainants’ first use date in their trademark registration and over four years prior to Complainants’ filing of their intent-to-use application.  As Complainants have not shown that their rights pre-date Registrant’s domain name, Complainants have not satisfied paragraph 4(a)(i) of the Policy.

Because the Panel has determined that Complainant has not satisfied this requirement of Policy § 4(a)(i), there is no need to determine whether Respondent has rights or legitimate interests in the domain name or whether Respondent registered or used the domain name in bad faith.

Reverse Domain Name Hijacking

Complainants are legitimate trademark owners who were attempting to improperly apply the Policy to a domain name which pre-dates their trademark rights.

While this Panel notes that the filing of this Complaint and of the Additional Submission were ill-advised, this Panel cannot find, on the record before it, that the Complaint was filed in bad faith with the knowledge that it could not prove the requisite elements of the Policy.  See, Netro Corp. v. Koustas, FA109723 (Nat. Arb. Forum June 12, 2002).  (“This is a close call, but the Panel has determined not to find that Complainant has attempted a Reverse Domain Name Hijacking.  True, the case was very weak, and probably should not have been filed, but the facts do not justify a finding under Rule 15(e)”).   Therefore, this Panel does not find Reverse Domain Name Hijacking based upon the evidence and pleadings submitted.

DECISION

As Complainants have failed to establish the requirements of Policy § 4(a)(i), Complainants’ requested relief is hereby DENIED.

David A. Einhorn, Panelist
Dated: September 10, 2003

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