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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRGRS, Inc. v. BPB Prumerica Travel
Case No. D 2002-0076
1. The Parties
The Complainant in this administrative proceeding is PRGRS, Inc. whose principal place of business is 801 West Street, Second Floor, Wilmington, Delaware 19801-1514, United States of America.
The Registrant is BPB Prumerica Travel whose principal place of business is 1107 Key Plaza, Maritime, Florida 33042, USA. Respondent is H. Wilson whose address is listed in the Response as 1107 Key Plaza, Key West, Florida 33040, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <prgschultz.com> which is registered with Global Knowledge Group in College Station, Texas, United States of America.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 25, 2002. The Complaint was amended pursuant to a request from the WIPO Center to comply with the procedural requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"). On February 8, 2002 the WIPO Center determined that the Complaint was in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). At that time, the WIPO Center notified the Respondent of the commencement of this administrative proceeding and set a deadline for Response of February 28, 2002. Respondent submitted its Response on February 13, 2002.
On March 13, 2002, the WIPO Center notified the parties of the appointment of Roderick Thompson as Panelist in the proceeding. On March 21, 2002 the Panel issued Procedural Order No. 1 pursuant to Rule 12 of the Rules. In Procedural Order No. 1 the Panel provided the parties with the opportunity to respond by March 27, 2002 to the following two requests for information:
1. Provide evidence in support of (or against) Complainant's (alleged) trademark rights in the "PRG-SCHULTZ" mark.
2. Address the issue of whether the mere filing of an Intent To Use (ITU) trademark application with the U.S. Patent and Trademark Office gives rise to trademark rights in the applicant for purposes of the UDRP.
Neither party responded to the request for information. The Panel will therefore proceed to a decision without any additional information.
4. Factual Background
According to a press release attached as Exhibit C to the Complaint, on July 26, 2001 Complainant announced its intention to merge with Howard Schultz and Associates International, Inc. In this press release Complainant announced its intention to change its name to PRG-Schultz following the merger. Consistent with this announcement, on August 9, 2001, Complainant filed an Intent To Use trademark application for PRG-Schultz with the U.S. Patent and Trademark Office.
The Registrant of the <prgschultz.com> domain name is listed as BPB Prumerica Travel. The domain name <prgschultz.com> was registered on July 26, 2001, the same day that Complainant issued its press release.
5. Parties’ Contentions
Complainant asserts that Respondent's domain name is nearly identical to Complainant’s new service mark and trade name: PRG-Schultz. In support of its Complaint, Complainant lists several pending ITU trademark applications. Complainant does not argue that the domain name is confusingly similar to its PRG mark. Instead, Complainant focuses only on the PRG-Schultz name as the basis for the Complaint.
Complainant asserts that Respondent has no right or legitimate interest in the domain name since Respondent is not a licensee of Complainant and is not otherwise authorized to use Complainant’s marks. Complainant further asserts that Respondent has never used, or made preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Furthermore, Complainant asserts that Respondent is not, and has never been, commonly known by the domain name.
Complainant claims that Respondent registered the domain name in bad faith primarily for the purpose of selling the name. Complainant attaches as exhibits to its Complaint several communications offering to sell the <prgschultz.com> domain name to Complainant for $14,400. The first offer, dated December 25, 2001, came from the email address <mailto:firstname.lastname@example.org> and was signed by Peter G. Schultz. The email message indicated that the registrant had recently changed its company name and would no longer be needing the <prgschultz.com> domain name. The offeror stated that it had had another offer and would transfer the domain name by noon on December 27, 2001 if Complainant did not respond. This email indicated that the proceeds from the sale would be used to cover expenses to form the new company.
A subsequent email was received by Complainant on January 3, 2002. The sender, I. Levin, Esq., claimed that he represented the owner of the <prgschultz.com> domain name. The sender indicated that if Complainant wished to discuss the matter, Complainant should respond by January 5, 2002. The email then stated that if Complainant did not respond, the sender would file actions to protect his client.
A final communication, this time a letter, appears to have been transmitted from PRG-Schultz Music and signed by P. Schultz. Again, this communication stated that the company is changing its name and consequently liquidating its assets including the <prgschultz.com> domain name. The letter declared that if Complainant desired to acquire the name, it should contact the sender that day in order to avoid placement of the domain name on a liquidation auction web site. The letter provided an email address of <email@example.com> for response. The letter was copied to B. Evans and S. Sturgeon, Esq.
Complainant asserts that the Registrant caused all of the above communications to be sent to Complainant. Consequently, Complainant claims that the Registrant registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant.
Respondent claims that it registered the domain name prior to Complainant’s filing of its trademark application, and that it had no knowledge of Complainant’s forthcoming trademark application at that time. Further, Respondent indicates that its registration of the domain name on the same day as the Complainant’s press release announcing the merger and its new name was purely coincidental.
Respondent claims that the domain name was registered to point to Respondent’s store PRG Schultz (Peters, Reinhold, Gregs & founder Mark Schultz). Respondent provides no further information regarding this store or his affiliation with these parties. According to Respondent the domain name was registered to point to a site located at <prgschultz.vstoreauto.com>. Respondent indicates that it had a contract with VStore to act as the distributor for Respondent’s products under the name PRG Schultz. Respondent does not, however, provide any evidence of such contract. In fact, however, the domain name <prgschultz.com> does not point to the <prgschultz.vstoreauto.com> web site, but instead leads to a web site that offers the name for sale in order to fund expenses related to a new name.
According to Respondent, his company considered a name change and when it was contacted by Complainant stated that it would consider selling its rights to the name. However, Respondent does not provide any evidence that Complainant contacted Respondent at any time.
In an effort to seemingly distance itself from the offers made to Complainant, Respondent asserts that any communications received by Complainant from any address other than <firstname.lastname@example.org> were not sent by Respondent. This assertion seems questionable. Emails coming from <email@example.com> include the name B. Evans in the "from" field. This name corresponds with the email address <mailto:firstname.lastname@example.org> that was used to send the first offer of sale to Complainant and B. Evans was also copied on the letter from P. Schultz with the last offer of sale. Further, the substance of the message provided in both the first email and the last letter is the same as the message that appears at the <prgschultz.com> web site and is essentially the same story that Respondent has asserted in its Response.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules sets out the principles this Panel is to use in rendering its decision: "A Panelist shall 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 directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) that the Respondent has no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and used in bad faith.
B. Application of Paragraph 4(a) to the Facts
Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant claims that it has provided business and financial consulting services under the mark PRG since its inception in 1990, but provided no further information or evidence about this mark. A review of the U.S. Patent and Trademark Office (USPTO) web site reveals that Complainant has a registration for the mark PRG in connection with auditing and consulting services with a first use date of 1990. Complainant does not allege, however, that the domain name is confusingly similar to its PRG mark. Instead, Complainant relies exclusively on the claim that the domain name is virtually identical to the new name the Complainant will be using: PRG-Schultz, the only difference being the hyphen.
Although Complainant has filed an Intent To Use (ITU) trademark application with the USPTO for PRG-Schultz, Complainant has not provided any evidence of existing trademark rights in that mark. Wishing to ensure that the decision herein is based on full information, in its Procedural Order No. 1, the Panel requested that the parties provide evidence in support of (or against) Complainant’s (alleged) trademark rights in the PRG-Schultz mark. Complainant did not respond to this request. (Nor did Respondent.) In its Complaint, Complainant does not claim that it has used or is currently using the PRG-Schultz name. Thus, it has no common law trademark rights, and any trademark rights that Complainant may have in the PRG-Schultz mark would have to arise from Complainant's ITU application.
Complainant has not asserted that the filing of an ITU trademark application gives rise to trademark rights, but merely assumed that to be the case. In its Procedural Order No. 1, the Panel requested that the parties address the issue of whether the mere filing of an ITU trademark application with the USPTO gives rise to trademark rights in the applicant for purposes of the UDRP. Again, Complainant did not respond.
According to McCarthy on Trademarks, it is "fundamental to United States trademark registration practice that use must precede registration. Without use, there is no ‘trademark’ to be recorded on the Federal Register of marks. The ‘use’ necessary is use in the ‘ordinary course of trade, not just token use."
Complainant has not provided any evidence to support a finding that a filing of an ITU trademark application gives rise to trademark rights. Likewise, Complainant has not provided any evidence that it is using the PRG-Schultz mark.
Consequently, the Panel is constrained to find that Complainant has failed to provide evidence of its trademark rights in the name PRG-Schultz. Paragraph 4(a)(i) of the Policy leaves no room for discretion by the Panel: Complainant is required to prove that the domain name in dispute is identical or confusingly similar to a trademark in which Complainant has rights. Because Complainant has not carried its burden on this element, the Panel need not decide whether the Complainant has met its burden on the other elements. The Panel notes, however, that Complainant has presented compelling evidence suggesting that Respondent acquired and used the <PRG-Schultz.com> domain name primarily for the purpose of selling it to Complainant, and may well have carried its burden on those two issues.
But for the complete lack of evidence of any existing trademark rights in the PRG-Schultz name, this case would appear to present a situation squarely within the policy. Nothing in this decision is intended to foreclose Complainant’s ability later to seek a transfer, in another UDRP proceeding or in court, based on a proper showing of trademark rights that it may establish in the future.
This Panel decides that Complainant has not shown that the domain name is confusingly similar to a trademark in which Complainant has rights. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel requires that that the registration of the domain name <prgschultz.com> remain with the Respondent.
Roderick M. Thompson
Dated: April 6, 2002