PRGRS, Inc. v. Pamela Pak

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PRGRS, Inc. v. Pamela Pak

Case No D2002-0077

1.The Parties

The Complainant is PRGRS, Inc., a Delaware, U.S.A. corporation whose address

is 801 West Street, 2nd Floor, Wilmington, Delaware 19801-1514,

United States of America. The Complainant is represented in this proceeding

by Sumner C. Rosenberg, Esq., Needle & Rosenberg P.C.,

127 Peachtree Street, N.E., Suite 1200, Atlanta, Georgia 30303-1811,

United States of America.

The Respondent in this proceeding is Ms. Pamela Pak, an individual whose

address is 8635 W. Sahara Avenue, Las Vegas, Nevada

8117, United States of America. The Respondent is represented in this proceeding

by Mr./Ms. H. Wilson, 1107 Key Plaza, Key West, Florida 33040, United

States of America.

2.The Domain Name and Registrar

The domain name in dispute is <prg-schultz.com>. The registrar for

the disputed domain name is Global Knowledge Group, 2700 Earl Rudder Frwy,

Suite 1300, College Station, Texas 77845, United States of America.

3.Procedural History

This dispute is to be resolved in accordance with the Uniform Policy for

Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved

by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999,

and the World Intellectual Property Organization Arbitration and Mediation

Center’s (the Center) Supplemental Rules for Uniform Domain Name Dispute

Resolution, (the Supplemental Rules).

The Complaint was filed on January 25, 2002 in hard copy, and

on February 1, 2002, by e-mail. On January 28, 2002,

the Center requested that the Registrar Global Knowledge Group ascertain

the registrant for the domain name <prg-schultz.com>. On February 7, 2002,

Global Knowledge Group reported to the Center that the current registrant

was Pamela Pak, whereas in its Complaint the Complainant had named Imanageworksite

as the Respondent. The Registrar Global Knowledge Group also stated the

Policy was in effect and that it had frozen or "locked" the disputed

domain name.

On February 11, 2002, the Center wrote to the Complainant and

requested that the Complaint be amended to reflect as Respondent the currently

listed registrant of the disputed domain name, i.e., Ms. Pamela Pak. On

February 12, 2002, the Complainant submitted an amended Complaint

changing the name of the Respondent to Ms. Pamela Pak.

On February 18, 2002, the Center forwarded a copy of the Complaint

to the Respondent by registered mail and by e-mail and this proceeding officially

began. Respondent’s Response was received by the Center on February 13, 2002,

in hard copy and on March 1, 2002 by e-mail.

The Administrative Panel submitted a Declaration of Impartiality and Independence

on March 20, 2002, and the Center proceeded to appoint the Panel

on March 25, 2002. The Panel finds the Center has adhered to the

Policy and the Rules in administering this Case.

This Decision was originally due on April 8, 2002 but, at the

request of the Panel, the due date was delayed to April 24, 2002.

4.Factual Background

On July 26, 2001, Complainant released a press statement announcing

The Profit Recovery Group International, Inc.’s merger with Howard Schultz

and Associates International, Inc. and stating the company’s post-merger

name would be PRG-Schultz (Complaint Annex C). The Complainant submitted

United States service mark applications for the "PRG-Schultz"

mark on August 9, 2001, and on August 28, 2001, in the

category of auditing services.

The Respondent registered the disputed domain name <prg-schultz.com>

on July 26, 2001, i.e., the same date as the Complainant’s press

release.

On December 25, 2001, the Complainant received an e-mail signed

by one Peter G. Schultz offering to sell the disputed domain name

for U.S. $14,400. The e-mail indicated that the owner had another offer

and would be transferring the domain name by December 27, 2001

if Complainant failed to respond by that date (Complaint Annex E).

On January 3, 2002, Complainant received an e-mail from one I.

Levin, Esq. on behalf of the owner of the disputed domain name. Mr. Levin

stated he had been asked to file actions if Complainant failed to respond

by January 5, 2002 to the registrant’s offer to sell the disputed

domain name (Complaint Annex F).

Complainant then received a letter dated January 4, 2002, from

one P. Schultz of PRG Schultz Music. Mr. Schultz asked that the Complainant

contact him the same day or the disputed domain name would be placed on

a domain name liquidation auction web site (Complaint Annex G).

5.The Parties’ Contentions (Summarized)

Complainant’s Contentions

-Complainant PRGRS has provided business and financial consulting

services under the mark PRG since its inception in 1990.

-The Respondent’s domain name is identical or confusingly similar

to the new service mark of Complainant. The domain name is <prg-schultz.com>:

the second level domain prg-schultz is identical to PRGRS, Inc.’s new

service mark and trade name, as disclosed in its pending trademark application.

-Respondent has no right or legitimate interest in respect of the

domain name. Respondent is not a licensee of Complainant, nor is it otherwise

authorized to use Complainant’s marks.

-The Respondent registered the <prg-schultz.com> domain name

in bad faith. As evidence of Respondent’s bad faith registration, Complainant

submits that Respondent has made numerous offers to sell the <prg-schultz.com>

domain name to Complainant, and threatened to sell the domain name to

third parties on an auction site.

-Through its course of repeated threats and demands, the Respondent

has demonstrated its bad faith intent to sell the domain name to Complainant,

and threatened to sell the domain name to unnamed third parties or auction

the domain name off, all in knowing disregard for Complainant’s legitimate

trademark rights in the mark.

-The Respondent registered the disputed domain name primarily for

the purpose of selling, renting, or otherwise transferring the domain

name registration to Complainant, who is the owner of the trademark or

service mark, or to a competitor of Complainant, for valuable consideration

in excess of the Respondent’s out-of-pocket costs directly related to

the domain name.

-The Respondent made a material misrepresentation when it registered

the disputed domain name because it knew or should have known that the

name infringed the Complainant’s trademark rights.

-The 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.

-The Respondent has never been commonly known by the disputed domain

name.

-The Respondent is not making a legitimate non-commercial or fair

use of the domain name, without intent for commercial gain or misleadingly

to divert consumers or to tarnish the trademark or service mark at issue.

Respondent’s Contentions

-The Complainant did not file for a trademark using the disputed

domain name until August 9, 2001. However, the Respondent registered

the disputed domain name on July 26, 2001, with no knowledge

of the Complainant’s forthcoming trademark registration. The law is not

retroactive, and the Respondent is not psychic.

-The domain name was registered so that I t could point to Respondent’s

store, PRG Schultz (Peters, Reinhold, Gregs & founder Mark Schultz).

The active web site the disputed domain name points to is: <prgschultz.vstoreauto.com>.

This was a professionally designed web site, and we have a contract with

Vstore to act as the distributor for our products under the name "PRG

Schultz" which came up as "Trademark Free" when we conducted

a name search prior to web site launch in July, 2001.

-Our company considered a name change, and when PRG contacted us,

we stated that we would consider selling our rights to the name. That

is our right under the law. We spent thousands of dollars designing our

web site and promoting it. If we decided to later change our name, it

would only make good business sense to liquidate the prior assets of the

"old name" associated with the company in order to fund our

new name expenses.

-The Complainant claims it issued a press release on or about the

date we registered the domain name. This is purely coincidental, as we

would have no way of knowing this unless we searched the name "PRG"

on a daily basis.

-In the WIPO Case Alfabet Meta-Modeling AG v. Henrik Rambe, WIPO

Case No. D2001-1205, (November 21, 2001), it is clearly confirmed

that an offer to sell a name is not an act of bad faith.

-Any e-mail sent to Complainant that did not specify the administrative

contact for this domain name was not sent to them by us.

6.Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <prg-schultz.com>

transferred to it, the Complainant must prove the following (the Policy,

para 4(a)(i-iii):

-the domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

-the Respondent has no rights or legitimate interests in respect

of the domain name; and

-the domain name was registered and is being used in bad faith

Identical or Confusingly Similar

The Complainant has based its claims to mark rights in the disputed domain

name <prg-schultz.com> on its stated applications for United States

service mark ownership of two "PRG-Schultz" marks for auditing

services. The Complainant states these applications were filed on August 9, 2001,

and August 28, 2001 (the Complaint, pp. 6-7). The Complainant

apparently assumes that filing a service mark application for "PRG-Schultz"

gives it rights in this mark. The Panel knows of no authority supporting

this position and the Complainant does not supply any.

Contrary to what the Complainant is proposing, the Panel finds the broad consensus

under the Policy is that a trademark application alone is not sufficient evidence

of mark rights in a disputed domain name. (See for example: First Tuesday

Limited v. The Startup Generator and Christopher Stammer, WIPO

Case No. D2000-1732, February 12, 2000: "…neither the United

States application nor the community trademark application, nor specific applications

in particular countries provide evidence in and of themselves of trademark rights….";

or Monty and Pat Roberts, Inc. v. J. Bartell, WIPO

Case No. D2000-0300, June 13, 2000: "Complainant does not

have an extant trademark application. Even if it did, this would not create

a presumption of secondary meaning.")

There are some cases where the trademark application has been mentioned

along with use of the mark as being sufficient evidence of mark rights,

but the use is given far more weight. (Ontrack Data International, Inc.

v. Barbara Drewett, NAF FAO109000099767, November 2, 2001;

and Synaxia Networks Corporation and Synaxia Limited v. Koray Kulcu,

NAF Case No. FA0010000095849, December 6, 2000).

The only other possible evidence the Complainant has supplied of mark rights

in the disputed domain name is a copy of a press release announcing the

merger of The Profit Recovery Group International, Inc. and Howard Schultz

and Associates International, Inc. in the fourth quarter of 2001 (Complaint

Annex C) with the resulting company to be called PRG-Schultz. While the

Panel finds it logical, as apparently did the Respondent, that the new entity

might want to use PRG-Schultz as a trade name, this press release about

prospective use of a trade name (not protected by the Policy) is not sufficient

evidence that the Complainant has acquired mark rights in the disputed domain

name <prg-schultz.com>.

The Panel thus concludes that the Complainant has not carried its burden

of proof to show that "the domain name is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights";

(the Policy 4(a)(i)).

Since the Policy requires the Complainant to prevail under each section

of the Policy at 4(a)(i-iii), the Panel does not need to discuss 4(a)(ii-iii),

i.e., whether the Respondent has legitimate rights or interests in the domain

name and whether the Respondent registered and is using the disputed domain

name in bad faith. The Panel does note, however, that the evidence submitted

by both the Complainant and the Respondent on these issues is overwhelmingly

in the Complainant’s favor.

7.Decision

The Panel has found that the Complainant failed to show that it had trade

or service mark rights in the disputed domain name <prg-schultz.com>

per the Policy at section 4(a)(i). Therefore, pursuant to Policy section

4(i) and Rule 15, the Panel orders that the disputed domain name <prg-schultz.com>

remain registered to the Respondent, Ms. Pamela Pak.

Dennis A. Foster

Sole Panelist

Dated: April 24, 2002

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