Plaza Operating Partners, Ltd. v. Joseph Pillus; Popdata Technologies

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Plaza Operating Partners, Ltd. V. Pop Data Technologies,

Inc. and Joseph Pillus

Case No. D2000-0166

The Domain Name and Registrar

The domain name at issue is plazahotel.com. This domain name is registered

with Network Solutions, Inc. ("NSI").

The Parties

The complainant is Plaza Operating Partners, Ltd. ("Plaza"), a corporation

with its principal place of business in New York, New York. The Respondents

are Pop Data Technologies, Inc. ("Pop Data"), a business entity with

an address at 486 Sunrise Highway, Rockville Centre, New York, and Joseph Pillus

("Pillus"), an individual with an address at P.O. Box 10, Mount Sinai,

New York. Mr. Pillus is the sole shareholder of Port Jefferson Asset Management

Corp., a business entity that is not a party to this proceeding.

Procedural History

The Complainant initiated this proceeding by filing a Complaint by e-mail with

the World Intellectual Property Organization Arbitration and Mediation Center

(the "Center") on March 15, 2000. On March 20, 2000, the Center

received a hard copy of the Complaint. After confirming that the Complaint satisfied

the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

the Center sent Respondents notice of the commencement of this proceeding on

March 22, 2000. The deadline for filing Responses was set for April 10, 2000.

On April 4, 2000, Respondent Pillus requested a two-week extension of time

to file a response. The following day, the Center acknowledged his request and

asked Pillus to confer with the Complainant to see if Complainant would consent

to an extension. On April 7, 2000, Complainant stipulated to, and

the Center approved, an extension for Pillus until April 23, 2000, to file his

response. See Rule 5(d). Pillus submitted a timely response on April

21, 2000.

Meanwhile, on April 10, 2000, the original deadline for a response, Respondent

Pop Data also requested a two-week extension of time. Through an oversight on

the part of the Center, this request was not noticed until several weeks later

and was thus neither granted nor denied. On April 24, 2000, Pop Data submitted

its Response, two weeks after the initial deadline. The Center acknowledged

this submission and noted that, because it was submitted after the deadline,

the Panel would decide in its sole discretion whether to consider this late

submission.

On May 5, 2000, without seeking permission from the Panel, the Complainant

submitted a reply to Respondents’ Responses (the "Reply").

On May 8, 2000, the Center appointed David H. Bernstein as the sole Panelist.

On May 10, 2000, the Panel received from the Center the case file,

which was sent by overnight courier. On May 11, 2000, the Panel issued the following

Interim Order:

Pursuant to Rule 12, the Panel hereby requests a further statement from each

party addressing the two issues discussed below. Such further statements shall

be delivered to the Center via email by 10 a.m., Eastern Daylight Time, on Monday,

May 15, 2000. The statements shall be limited to seven double spaced

pages, not including exhibits. Exhibits not available in electronic form shall

be faxed to the Center, with hard copies to follow by courier. The Panel will

disregard in their entirety any late filed or over long submissions.

1. Timeliness and Number of Submissions. Rule 5(a) requires a respondent to

submit its response within 20 days of the commencement of the proceedings. That

time period may be extended upon consent or upon a showing of exceptional circumstances.

Rule 5(d). The Rules make no provision for any reply by complainant. See

Rule 12.

In this case, both of the respondents requested an extension of time for the

submission of their responses. The Center acknowledged respondent Pillus’ request

and, upon the consent of complainant, granted an extension until April 23, 2000.

Respondent Pillus submitted his response on April 21, 2000, within the time

allotted.

Through inadvertence, the Center overlooked respondent Pop Data Technologies,

Inc.’s request for an extension. Thus, the Center never acknowledged receipt

of the request, nor did the Center ask whether complainant also consented to

this request.

Under these circumstances, respondent Pop Data may have been confused into

believing that its time to respond was extended, like that of Respondent Pillus’,

to April 23, 2000. Even if that were the case, though, Pop Data’s response was

untimely, as it was submitted on April 24, 2000. The lateness of this response

constitutes a technical default, which allows the Panel to draw such inferences

as it considers appropriate. Rule 14(b). . . .

[O]n May 5, 2000, complainant submitted a nine page reply with fifteen exhibits,

which measures about a half an inch in thickness.

Before addressing the merits of this dispute, the Panel requests that the parties

address whether they believe the Panel should accept respondent Pop Data’s late

response and complainant’s unauthorized reply and, if so, whether to allow any

further submissions and on what schedule. In this connection, respondent Pop

Data may want to address why its response was submitted late, and complainant

may want to address why this is an exceptional case that justifies a reply.

Moreover, if the Panel accepts complainant’s reply, fairness may require that

respondents be given an opportunity to submit a sur-reply, although any such

sur-reply must be limited solely to new matter raised in the reply.

2. Owner of Domain Name. This case is unusual in that there are two respondents.

The registrar of the domain name at issue, Network Solutions, Inc., has confirmed

to the Center that Pop Data is the owner of the domain name. Pop Data, though,

alleges that it sold the domain name. In one part of its response, it states

that it sold the name to Port Jefferson Asset Management Corp. on February 29,

2000; later, it alleges that it sold the domain name to Pillus. Pillus, without

providing any details concerning his acquisition of the domain name or his relationship,

if any, to Port Jefferson Asset Management Corp., alleges that he is the owner

of the domain name.

The Panel hereby requests that the respondents explain the chain of ownership

of the domain name, and provide to the Panel a copy of all documents related

to the transfer, assignment and/or sale of the domain name. These should include,

without limitation, any agreements among Pop Data, Pillus, and any other parties

for the transfer of the name, any indemnification agreements among those parties,

any Registrant Name Change Agreement or other document submitted to Network

Solutions, and any document in which Pillus has agreed to the Network Solutions

Service Agreement (see Complaint, Ex. B). If Pillus asserts that he has

not agreed to the Network Solutions Service Agreement, the Panel asks that Pillus

indicate whether he consents to submit himself to the jurisdiction of this Panel

and to operation of the Rules and the ICANN Uniform Domain Name Dispute Resolution

Policy (the "Policy"). If, as it appears, Pillus did purchase the

domain name prior to the filing of the complaint, the Parties also should address

whether both of the respondents properly are before the Panel, and whose conduct

should be considered in determining whether the respondent(s) had a legitimate

interest and/or used and registered the domain name in bad faith.

On May 15, 2000, Complainant and Pillus each filed a submission pursuant to

the Interim Order. On May 16, 2000, the Panel issued the following Scheduling

Order:

On May 11, 2000, the Panel invoked Rule 12 and requested (the "Request")

a further statement from each party addressing two issues: (1) whether to accept

respondent Pop Data Technologies’ late Response and Complainant’s Reply to the

Respondents’ Responses; and (2) the identity of the owner of the domain name

plazahotel.com, with full details regarding its transfer from Pop Data to Joseph

Pillus. These statements were due by 10 a.m., Eastern Daylight Time, on Monday,

May 15, 2000.

Complainant submitted a timely statement, which the Center forwarded to the

Panel on May 15. Pillus submitted a statement late in the day on May 15, with

the explanation that Pillus’ statement was late because his counsel (to whom

the Request was sent) was out of the country and only returned on the afternoon

of May 15. Because Pillus’ statement was not received by the Center until long

after the close of business in Geneva, it was not forwarded to the Panel until

the morning of May 16. On the basis of good cause shown, and because there is

no prejudice in the acceptance of this late-filed statement, the Panel accepts

Pillus’ statement. Pop Data did not submit any statement.

Having considered the statements, the Panel has determined that it does not

need any further submissions from the parties. The record for this arbitration

is hereby closed. Should there be any new developments that a party believes

warrants submission of a further statement or document, the party first shall

seek leave from the Panel, with an explanation of the reasons it seeks to supplement

the record.

Given that the Panel has received Pillus statement today, the decision date

for this matter is hereby reset for two weeks from today. Rules 10(c), 15(a).

The Panel expects to render its decision by May 30, 2000.

On May 22, 2000, Respondent Pop Data filed a submission in response to the

Panel’s May 11 Interim Order. Pop Data explained that its submission was

late because it did not receive the Interim Order from the Center by fax, which

was its preferred method of communication; instead, the Interim Order was sent

by email to an address that Pop Data checks infrequently.

In its submission, Pop Data recounted the history of its communications with

Complainant and with Pillus, the purchaser of the domain name. Although Pop

Data said that the "bill of sale" was "attached," no such

document was submitted to the Panel. On May 25, 2000, the Panel requested that

Pop Data submit a copy of the bill of sale. Pop Data never responded to this

request and never submitted a copy of the "bill of sale."

Procedural Rulings

1. Pop Data’s Late Responses.

As a preliminary matter, the Panel must determine whether to accept Pop Data’s

initial April 24, 2000, Response. Barring exceptional circumstances, a respondent

must normally submit a Response within twenty days of the commencement of the

proceedings. Rule 5(a). That time period may be extended upon consent or upon

a showing of exceptional circumstances. Rule 5(d).

Both of the Respondents in this case requested an extension of time for the

submission of their replies. The Center acknowledged Pillus’ request and granted

an extension until April 23, 2000, after Complainant so stipulated. Through

inadvertence, though, the Center overlooked Pop Data’s request for an extension.

The Center neither acknowledged the request nor asked Complainant whether it

would stipulate to such an extension.

Given the lack of any response from the Center, Pop Data may have been confused

into believing that its time to respond was extended with Pillus’ to April 23,

2000, or perhaps to April 24, 2000, which was the extension that it requested.

Under these circumstances, and given the Rules’ admonition that "the Panel

shall ensure that the Parties are treated with equality and that each Party

is given a fair opportunity to present its case," Rule 10(b), principals

of fairness dictate that the Panel accept the April 24 Response.

The Panel also believes it appropriate to accept Pop Data’s May 22 submission,

which was filed in response to the Panel’s Interim Order. In its initial April

24 Response, Pop Data expressly requested that all notices be sent to it by

fax rather than email. See Rules 2(b), 5(b)(iii). Because the Center erroneously

sent the Interim Order to Pop Data only by email, Pop Data should not be penalized

for its late receipt of the Order and its resulting late response.

Pop Data can claim no similar excuses for its failure to submit with its May

22 statement the additional documents the Panel requested (including the bill

of sale and any other documents related to the sale of the domain name) or its

subsequent failure to respond to the Panel’s May 25, 2000, request (sent by

fax) that Pop Data submit a copy of the bill of sale discussed in its response.

Accordingly, pursuant to Rule 14(b) and given Pop Data’s failure to comply with

the Panel’s request, the Panel "shall draw such inferences therefrom as

it considers appropriate."

2. Complainant’s Reply.

Rule 12 unambiguously provides that only the Panel may request

further submissions: "In addition to the complaint and the response, the

Panel may request, in its sole discretion, further statements or documents from

either of the Parties." There is no provision in the Rules for a party

to file an additional submission without leave of the Panel.

Although litigants and parties in arbitrations may have a right of reply under

the rules of other forums, ICANN chose a different procedure for these proceedings

that calls for only a Complaint and a Response. Among other things, this more

truncated procedure allows for more rapid and cost effective resolution of domain

name challenges. See CRS Technology Corporation v. CondeNet, Inc., File

No. FA#0002000093547 (NAF Mar. 28, 2000). At the same time, ICANN provided the

Panel with the flexibility to seek additional submissions if the Panel feels

that it can not rule on the record submitted.

If a Party wishes to submit a supplemental submission, the better practice

under the Rules would be to first seek consent from the Panel, with an explanation

of why a supplemental submission is warranted. Appropriate reasons may include

the existence of new, pertinent facts that did not arise until after the submission

of the Complaint, or the desire to bring new, relevant legal authority to the

attention of the Panel. E.g , Pet Warehouse v. Pets.Com, Inc., Case

No. D2000-0105 (WIPO Apr. 13, 2000). The Panel would then be in a position

quickly to rule on the request and, if it determines that a supplemental submission

is warranted, set a schedule that is fair to both parties and provides each

party with an opportunity to supplement the record. This procedure also would

save the Parties the expense of preparing responses the Panel decides not to

accept.

In this case, Complainant simply submitted its reply without seeking prior

permission from the Panel. To its credit, Complainant did acknowledge in its

reply that acceptance of the reply was at the sole discretion of the Panel.

It also explained why it believed a reply was justified: to clarify the record

given its belief that Respondents misstated the law and mischaracterized the

facts, and to place before the Panel two new decisions issued under the Rules

that it believed were relevant to the issues in this case.

Although there may be factual or legal misstatements so egregious as to justify

a reply, the Panel concludes that no such misconduct occurred in this case.

To the extent the Parties have different interpretations of the law, the Panel

is fully capable of reading the relevant authorities and drawing its own conclusions

as to the proper interpretation of the law and rules. Similarly, the Panel is

able to determine whether United States trademark registrations cited by the

Respondent (which noticeably did not include an indication of their status,

or even an application or registration number) are cancelled or abandoned through

its own review of the U.S. Patent and Trademark Office website. None of the

other factual allegations submitted in Complainant’s reply (such as information

about concurrent users of the trademark PLAZA HOTEL in distant, limited territories)

constitutes new facts that were not available at the time of the Complaint.

The Complainant should have anticipated that these facts might be relevant to

the Panel’s consideration, and thus should have included them in its initial

Complaint.

Complainant’s second argument – that a reply was warranted to place before

the Panel new legal authority handed down after Complainant submitted its Complaint

– has more merit. To be fair, though, and avoid the need for argument and sur-replies,

the most appropriate procedure in such circumstances is merely to submit the

new authority to the Panel without any accompanying legal argument. See Pet

Warehouse v. Pets.Com, Inc., Case No. D2000-0105

(WIPO Apr. 13, 2000).

For these reasons, the Panel has decided not to accept the text of the reply

filed by Complainant, and has not relied on that material in reaching this decision.

The Panel will accept, however, the additional decisions that the Complainant

appended to its reply that were issued after the submission of the Complaint.

Factual Background

The following facts, taken from the Complaint, Responses, and publicly available

documents on the Internet, are not disputed.

Complainant owns the Plaza Hotel, a famous hotel and landmark in New York City.

In its near century of existence, the Plaza Hotel has been the subject of many

positive reviews and articles, and has been featured in literature and films.

Although Complainant has shown that it is the owner of trademark registrations

for the marks THE PLAZA (for hotel and restaurant services and various goods),

THE PLAZA COLLECTION (for goods), and YOUNG PLAZA AMBASSADORS (for clothing

and entertainment services), there is little question but that Complainant also

has established common law rights in the mark THE PLAZA HOTEL.

Pop Data registered plazahotel.com with NSI on September 27, 1996. The domain

name has never been used for any purpose.

On October 28, 1999 and again on February 2, 2000, Complainant wrote to Pop

Data to demand the transfer of the plazahotel.com domain name. During discussions

on February 8 and 10, 2000, Pop Data’s president, Scott Miller, refused

to transfer the domain name unless Complainant would purchase it for $10,000.

Mr. Miller threatened that, if Complainant refused to purchase the domain name,

Pop Data might sell it to another party. Complainant did not purchase the domain

name from Pop Data.

Pop Data apparently made good on its threat. On February 29, 2000, it sold

the domain name to Port Jefferson Asset Management Corp. for an undisclosed

sum; Port Jefferson in turn transferred or sold the domain name to its owner,

Joseph Pillus. Later that day, Pillus contacted Complainant and advised that

he had, in fact, purchased the domain name from Pop Data for an undisclosed

sum. Although he claimed to have relatives in Belgium who owned a hotel with

"Plaza" in the name, Pillus indicated that he was willing to sell

the name to Complainant. On March 1, 2000, after Complainant sent Pillus copies

of its correspondence with Pop Data, Pillus offered to sell the domain name

for $575,000. Complainant rejected that demand and, instead, filed the instant

proceeding.

Jurisdictional Conclusions

As noted in the Panel’s Interim Order, one interesting issue raised by this

dispute is whether both Respondents have agreed to the jurisdiction of this

Panel.

WIPO, as an accredited provider under the Rules, does not have jurisdiction

over a party unless the party has agreed to be subject to these proceedings.

Although registrants of domain names in the .com generic top-level domain ("gTLD")

have agreed, through their registration agreements, to submit to the jurisdiction

of these ICANN proceedings, the Panel cannot reach parties who have not so agreed.

See Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO,

Case No. D2000-0138 (WIPO Apr. 19, 2000).

Pop Data claims in its response that it is not properly before the Panel because

it no longer has an interest in the domain name plazahotel.com. Although both

Pop Data and Pillus agree that Pop Data sold the domain name to Pillus on February

29, 2000, NSI still lists Pop Data as the owner of the domain name. In these

circumstances, although Pop Data may have signed a document selling its rights

in the domain name, it is clear that Pop Data remains a necessary party to these

proceedings and, by virtue of its registration agreement with NSI, properly

is before this Panel.

Pillus, in contrast, is not listed by NSI as an owner of the domain name, and

has not submitted to this Panel a signed copy of a registration agreement in

which he consents to the jurisdiction of ICANN Panels. Nevertheless, Pillus

asserts that he is the owner of the domain name, and, through his participation

in these proceedings, voluntarily has agreed to subject himself to this Panel’s

jurisdiction. Given Pillus’ voluntary submission to the Panel’s jurisdiction,

the Panel concludes that it does have jurisdiction over Pillus, and that Pillus

properly is before the Panel.

Discussion

In order to succeed in its claim, Complainant must demonstrate that all of

the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:

i. the domain name in dispute is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights;

ii. the Respondent has no rights or legitimate interests with respect to the

disputed domain name; and

iii. the domain name has been registered and is being used in bad faith.

1. Similarity of the Mark and Domain Name.

This first factor contains two elements: first, does the Complainant have rights

in a relevant mark, and second, is the domain name identical or confusingly

similar to that mark. The Panel concludes that Complainant has satisfied its

burden on both parts of this factor.

Complainant has submitted persuasive evidence that it owns the famous mark

THE PLAZA for use in hotel and restaurant services and assorted merchandise.

Complainant also has submitted documentary evidence showing that its hotel is

sometimes referred to as THE PLAZA HOTEL including, it appears, on the brass

"Historic Landmark" plaque affixed to the hotel. That Complainant

does not own a trademark registration for PLAZA HOTEL is immaterial as use of

the designation THE PLAZA HOTEL in commerce is sufficient to establish common

law trademark rights in that mark.

Complainant also has satisfied its burden of proving that the domain name plazahotel.com

is confusingly similar to the mark THE PLAZA HOTEL. The only difference between

the domain name (not including the ".com" gTLD) and the mark is the

word "the." There thus can be no dispute but that the domain name

is confusingly similar to Complainant’s mark.

2. Respondent Has No Legitimate Interest in the Domain Name.

Given the participation of two Respondents in this case, an interesting issue

is which Respondent’s interest is relevant to determining whether the interest

is legitimate – Pop Data, the original registrant, or Pillus, the recent purchaser.

Because the Panel concludes that neither party has a legitimate interest in

this name, the Panel need not reach this issue in this case.

Pop Data asserts as its legitimate interest that it registered this domain

name so that it could offer it for sale to a prospective client of its web building

services. Pop Data states that it actually did pitch this name to the head of

catering for an unidentified hotel. If the domain name at issue were a generic

domain name, like hotel.com or hotelcatering.com, Pop Data’s arguments might

hold water. But the domain name here is not a generic word. Rather, the domain

name incorporates the famous PLAZA HOTEL trademark. In these circumstances,

and given the absence of evidence that Pop Data’s clients included hotels with

the word "Plaza" in their name, the Panel finds that Pop Data’s effort

to interest another hotel in the plazahotel.com domain name evidences an illegitimate

interest – trademark infringement.

Pillus’ assertion of legitimacy fairs no better. In his discussions with Complainant,

Pillus asserted that he has relatives in Belgium who own a hotel with the word

"Plaza" in the name. In the absence of concrete evidence of facts

such as the truthfulness of that unsworn statement, his relationship with these

unidentified relatives, and proof that he was acting on their behalf, this assertion

is not credible and not entitled to any weight by the Panel. Moreover, any argument

that Pillus acquired this name for the benefit of his relatives is directly

undercut by Pillus’ subsequent statement in the Response that he "has not

yet decided how he would intends [sic] to use the domain name."

For all these reasons, the Panel finds that both Respondents lack any legitimate

interest in the domain name plazahotel.com.

3. Respondent Registered and Used the Domain Name in Bad Faith.

As with the issue of legitimacy of interest, an interesting issue here is whether

the Panel should focus on Pop Data or Pillus in determining whether the name

was registered and used in bad faith. Again, because both Respondents exhibited

bad faith, the Panel need not reach that issue in this proceeding.

Pop Data registered the domain name in 1996 and, for nearly four years, never

developed a website. When it did attempt to interest a client in the domain

name, it approached a client in the hotel catering business – a venture that,

if successful, likely would have resulted in consumer confusion. This alone

is evidence of bad faith. Policy 4(b)(4). Pop Data’s subsequent offer to sell

the domain name to Complainant, even if prompted by Complainant’s demand letter,

is further evidence of Pop Data’s bad faith intent to profit from this domain

name. Policy 4(b)(i).

Pillus’ bad faith is even more palpable. In light of his refusal to submit

the purchase documentation requested by the Panel, the Panel infers that Pillus

was well aware of the dispute between Complainant and Pop Data and acquired

the name from Pop Data for the sole purpose of selling it to Complainant at

a profit. Indeed, immediately after his acquisition of the domain name, he offered

to sell the domain name to Complainant for the staggering sum of $575,000 (which,

the Panel infers, is far, far greater than his out of pocket acquisition costs).

This is classic cyberpiracy and the epitome of bad faith. Id.

Pillus tries to avoid this finding by arguing that there are dozens of "Plaza

Hotels" worldwide, and thus his purchase of the name was not in bad faith.

That fact, which the Panel credits, does not excuse Pillus’ conduct. That a

number of parties may own trademark rights in this mark does not mean that Pillus,

a party without any such rights, can register the plazahotel.com domain name

and then decide which of the trademark owners to sell it to.

In sum, the Panel finds that both of Pop Data and Pillus registered and used

this domain name in bad faith.

Decision

For all of the foregoing reasons, the Panel finds that the domain name plazahotel.com

is confusingly similar to Complainant’s mark THE PLAZA HOTEL, that Respondents

Pop Data and Joseph Pillus have no rights or legitimate interests in respect

of the domain name, and that the Complainant has adequately demonstrated that

Respondents registered and used the domain name in bad faith. Accordingly, the

Panel orders that the registration of the domain name plazahotel.com be transferred

to the Complainant.

David H. Bernstein

Presiding Panelist

Dated: June 1, 2000

1. The Panel notes that the Complainant’s reply did not contain the certification

required by Rules 3(b)(xiv), 5(b)(viii). Although the Rules contemplate that

this certification would be attached to "complaints" and "responses,"

it is fully appropriate to require that any submission by a party, particularly

one that makes factual assertions, contain this certification. Because the Panel

has concluded for independent reasons that it will not accept the reply, the

Panel need to consider whether the absence of a certification provides an independent

basis for rejecting the reply. See generally Talk City, Inc. v. Robertson,

Case No. D2000-0009 (WIPO Feb. 29, 2000).

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