Andrew Kohler v. STI (Jenny Lee)
[Indexed as: Kohler v. STI]
[Indexed as: pantyexpress.com]
National Arbitration Forum
Administrative Panel Decision
Forum File No.FA0001000093459
Commenced: 14 February 2000
Judgment: 27 March 2000
Presiding Panelist: Judge Harold Kalina (Ret.)
Domain name - Domain name dispute resolution policy - Service mark
- Trademark - Identical - Confusingly similar - Bad faith registration
- Bad faith use - Legitimate Interests.
Complainant has been using the name PANTY EXPRESS since 1986 and
is the owner of a United States Federal Trademark registered in 1986 for
the servicemark PANTY EXPRESSÒ.
Respondent registered the 3 domain names, PANTYEXPRESS.COM, PANTYEXPRESS.NET,
and PANTYEXPRESS.ORG.
Respondent upon notification by Complainant that PANTY EXPRESSÒ
was a registered servicemark owned by Complainant and registered with the
United States Trademark Office responded by offering Complainant "first
choice" to purchase said domain names for $500.00 each.
Held, Names Transferred to Complainant.
The domain names at issue are identical to Complainant's servicemark
PANTY EXPRESSÒ.
That Respondent has no rights or legitimate interest in respect to
the domain names: The domain names have no affiliation with Respondent
for a bona fide offering of goods or services.
The domain names have been registered in bad faith by the Respondent
because the intention for registering said domain names was primarily for
the purpose of re-sale for a valuable consideration in excess of its out-of
-pocket costs directly related to the domain names.
Policies referred to
Rules for Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
Uniform Domain Name Dispute Resolution Policy
Registration Agreements referred to
Network Solutions Registration Agreement
Panel Decision referred to
--
Judge Kalina (ret.), Panelist: -
The above entitled matter came on for an administrative hearing on March
27, 2000 before the undersigned on the Complainant of Andrew Kohler, hereafter
"Complainant", against STI (Jenny Lee), hereafter "Respondent". Complainant
was represented by: Andrew Kohler 150 River Road, Suite 0-4, Montville,
New Jersey 07045. There was no representation on behalf of Respondent:
Upon the written submitted record, the following DECISION is made:
PROCEDURAL FINDINGS
Domain Names: PANTYEXPRESS.COM, PANTYEXPRESS.NET, and PANTYEXPRESS.ORG
Domain Name Registrar: Network Solutions
Domain Name Registrant: STI(PANTYEXPRESS-DOM), STI (PANTYEXPRESS3-DOM),
and STI(PANTYEXPRESS2-DOM), respectively.
Date of Domain Name Registration: November 4, 1999
Date of Complaint Filed: February 14, 2000
Date of Commencement of the Administrative Proceeding in Accordance
with Rule 2(a) and Rule 4(c)[1]: February 14, 2000
Due Date for a Response: February 28, 2000. Respondent did not submit
a Response to the Complaint.
After reviewing the Complaint, and determining it to be in administrative
compliance, the National Arbitration Forum (The Forum) forwarded the Complaint
to the Respondent on February 9, 2000 in compliance with Rule 2(a), and
the administrative proceeding was commenced pursuant to Rule 4(c). In compliance
with Rule 4(d), The Forum immediately notified Network Solutions, the Internet
Corporation for Assigned Names and Numbers (ICANN), and the Complainant
that the administrative proceeding had commenced. Respondent did not submit
a response to The Forum within twenty (20) days pursuant to Rule 5(a).
On November 4, 1999, Respondent registered the domain names PANTYEXPRESS.COM,
PANTYEXPRESS.NET, and PANTYEXPRESS.ORG with Network Solutions, the entity
that is the Registrar of the domain names. On February 25, 2000, Network
Solutions verified that Respondent is the Registrant for the domain names
"PANTYEXPRESS.COM, PANTYEXPRESS.NET, and PANTYEXPRESS.ORG", and that further
by registering its domain names with Network Solutions, Respondent agreed
to resolve any Name Dispute Resolution Policy, and the Uniform Domain Name
Dispute Resolution Policy.
FINDINGS OF FACT
1. Complainant has been using the
name PANTY EXPRESS since 1986.
2. Complainant is the owner of a
United States Federal Trademark, Registration #1,404,124, registered in
1986 for the servicemark PANTY EXPRESSÒ.
3. Respondent registered the 3 domain
names, PANTYEXPRESS.COM, PANTYEXPRESS.NET, and PANTYEXPRESS.ORG on November
4, 1999.
4. The domain names have no affiliation
with Respondent for a bona fide offering of goods or services.
5. Respondent upon notification
by Complainant that PANTY EXPRESSÒ was a registered servicemark
owned by Complainant and registered with the United States Trademark Office
responded by offering Complainant "first choice" to purchase said domain
names for $500.00 each.
6. Respondent's AOL Member Profile
states under Hobbies, "I sell used under clothes", and under Occupation
states " I sell my used ‘under' garments".
7. There have been no other legal
proceedings that have been commenced or terminated in connection with or
relating to the domain names which are the subject of this Complaint.
8. Complainant seeks cancellation
of Respondent as Registrant of the three domain names and transfer of said
registration to Complainant.
9. Complainant seeks reimbursement
from Respondent for the expense he has incurred to commence this arbitration
CONCLUSION
The undersigned certifies that he has acted independently and has no
known conflict of interest to serve as the Arbitrator in this proceeding.
Having been duly selected, and being impartial, the undersigned makes the
following conclusions:
1. That since 1986 Complainant has
been the owner of a United States Federal Trademark, PANTY EXPRESSÒ,
Reg. #1,404,124.
2. That Respondent's registration
on November 4, 1999 of the domain names PANTYEXPRESS.COM, PANTYEXPRESS.NET,
and PANTYEXPRESS.ORG was long after Complainant's servicemark registration
with the United States Federal Trademark office.
3. That the domain names at issue
are identical to Complainant's servicemark PANTY EXPRESSÒ.
4. That Respondent's intention for
registering said domain names was primarily for the purpose of re-sale
for a valuable consideration in excess of its out-of -pocket costs directly
related to the domain names.
5. That Respondent has no rights
or legitimate interest in respect to the domain names.
6. That the domain names have been
registered in bad faith by the Respondent.
DECISION
Based upon the above findings and conclusions, and pursuant to Rule
4(i), it is decided as follows:
1. THE UNDERSIGNED DIRECTS THAT
THE DOMAIN NAMES PANTYEXPRESS.COM, PANTYEXPRESS.NET, AND PANTYEXPRESS.ORG
REGISTERED BY RESPONDENT BE TRANSFERRED TO COMPLAINANT.
2. NO COSTS ARE AWARDED COMPLAINANT.
Dated: March 27, 2000
Judge Harold Kalina (Ret.)
Arbitrator
[1] Any reference to "Rule" or "Rules" are to ICANN's
Rules
for Uniform Domain Dispute Resolution Policy and Uniform
Domain Name Dispute Resolution Policy as supplemented
by
the National Arbitration Forum's Supplemental Rules to
ICANN's Uniform Domain Resolution Policy.
Domain Names Transferred
