Estreetcommunications.com

The timeline behind estreetcommunications.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION E Street Communications, Inc. v Midware Corporation Claim Number: FA0102000096663 PARTIES Complainant is E Street Communications, Inc., Denver, CO, USA ("Complainant") represented by Christopher P. Beall, of Faegre & Benson LLP. Respondent is Midware Corporation, Naco, AZ, USA ("Respondent"). REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <estreetcommunications.com> registered with Bulkregister. PANEL The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as a panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 13, 2001; the Forum received a hard copy of the Complaint on February 15, 2001. On February 17, 2001, Bulkregister confirmed by e-mail to the Forum that the domain name <estreetcommunications.com> is registered with Bulkregister and that the Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister 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 February 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 2001 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@estreetcommunications.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default. On March 23, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant alleges the following: Respondent’s domain name, <estreetcommunications.com>, is identical to Complainant’s common law mark E STREET COMMUNICATIONS and is confusingly similar to its registered mark E STREET. Respondent has no rights or legitimate interests in relation to the domain name in question. Respondent has never made any use of the domain and had not made any demonstrable preparations to use the domain name, in connection with any offering of goods or services. Respondent has not, as an individual, business, or other organization, been commonly known by the domain name and the domain name is not the legal name of Respondent. Respondent is not making any legitimate, noncommercial or fair use of the domain. Respondent registered and used the domain name at issue in bad faith. Respondent registered and now holds the disputed domain primarily for the purpose of selling the domain name registration to the Complainant. Respondent has engaged in a pattern of conduct of registering domain names and preventing the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. B. Respondent Respondent has not submitted a response in this matter. FINDINGS This complaint is based on Complainant’s registered service mark for the mark E STREET. The United States Patent and Trademark Office (USPTO) registered this mark on the Principal Register on August 25, 1998. Complainant is currently using – and has, since at least November 1995, been using – the mark E STREET COMMUNICATIONS as a common law mark. Respondent registered the domain name on March 15, 2000. As of December 15, 2000, accessing the domain name produced the following: Future home of the PatBeckOnline.com Web Site. Stay tuned! This Web site will be online shortly. As of February 1, 2001, the previous textual references to the "Future Home" of the "PatBeckOnline.com" site had been replaced at the <estreetcommunications.com> domain name with Spanish language content and advertisement links. This Spanish textual and graphic material uses the name "mardelplata.com" and is also available at <mardelplata.com> domain name. Respondent’s description of its business at its <01ace.com> site reads: Midware Corporation is a privately held corporation engaged in the screening, reviewing, buying, and selling of Internet Domain Names. We specialize in ELITE and EXCLUSIVE names that are of true commercial value to our customers. DISCUSSION Paragraph 15(a) of 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." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules. 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) 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 to and/or Confusingly Similar Complainant has established by uncontroverted proof that the domain name in issue is identical to Complainant’s E STREET COMMUNICATIONS common law mark. See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that <homedirector.com> is identical to Complainant’s mark, HOME DIRECTOR). Also, the <estreetcommunications.com> domain name is confusingly similar to the Complainant’s registered E STREET mark, because it merely adds a generic term to the registered mark. See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term "direct" on to the Complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondent’s domain names are confusingly similar). Therefore, the Panel finds that Complainant satisfied the requirements of showing that the domain name in issue is identical to and/or confusingly similar to Complainant’s mark. Policy ¶ 4(a)(i). Rights to or Legitimate Interests Complainant established rights and interests in the mark used to create the domain name in issue. Complainant has shown that Respondent has not developed a web site and has not used the domain name for any business purpose besides drawing consumers to the <mardelplata.com> web site. These circumstances warrant a finding that Complainant has rights in the domain name and that Respondent does not. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his websites); see also America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark "as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate"). Therefore, the Panel finds that Complainant has rights in the mark contained in the domain name and Respondent does not. Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant has established that Respondent’s use of the domain name was to hyperlink to a different site. This is evidence of bad faith. See ESPN, Inc. v. Danny Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website <iwin.com>, presumably, the Respondent received a portion of the advertising revenue from site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain); see also Encyclopaedia Britannica Inc. v Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site). It may be inferred from by Respondent’s web site that Respondent’s intention is to sell the domain name for a profit. This is additional evidence of bad faith. See Globosat Programadora Ltda v. Artmidia Comunicacao Visual Criacao E Arte Ltda, D2000-0605 (WIPO Sept. 13, 2000) (finding that "the fact that almost all the domain names registered by the Respondent or the Administrative Contact for these domains are inactive and redirected to a site apparently dedicated to the commerce of domain names, force this Panelist to consider that . . . Respondent has registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names registration to the Complainant or to a Complainant's competitor for valuable consideration"). Therefore, the Panel finds that Respondent registered and used the domain name in issue in bad faith. Policy ¶ 4(a)(iii). DECISION Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted. Accordingly, it is Ordered that the domain name, <estreetcommunications.com>, be transferred from Respondent to Complainant. Honorable Carolyn Marks Johnson Retired Judge Arbitrator Dated: March 29, 2001. Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.