Infringement on trademark - Failure to use domain name - Knowledge of trademark (actual or constructive) - Predecessors in interest - Failure to respond as evidence of bad faith registration - Actual notice or constructive notice of prior use.

Complainant, through its predecessor in interest, Current Inc., has owned at least four federal registrations for the mark CURRENT.  Respondent, an entity named "Current Event," from California, registered current.com as a domain name. Claimant informed Respondent that its registration of current.com as a domain name violated its trademark rights. Those notices were mailed to the address provided by Respondent.   The post office returned those letters to counsel for Claimant. 

Held, Domain Name Transferred.

Respondent use of the mark current infringes on the federal trademark of Claimant. Respondent has no legitimate rights or interests to use the mark ‘current’.  Current Event does not appear to own any federal registrations for the mark CURRENT. A Pennsylvania company, Current Events International, owns federal registrations for CURRENT EVENTS INTERNATIONAL AND DESIGN and CURRENT EVENTS AND DESIGN. It is unlikely that Current Events International is the same as the registrant of current.com, Current Event. 

The fact that Respondent failed to provide a forwarding address shortly after registering the domain name suggests bad faith use and registration of the disputed domain name.  Based upon the apparent lack of a legitimate company called "Current Event", and upon Respondents refusal to communicate with Claimant, it is reasonable to assume that Current Event's purpose was to preclude Current USA Inc. from using the CURRENT mark in a domain name and thereby disrupt its business. 

The Respondent had actual or at least constructive notice of the prior use of the mark CURRENT and had knowledge that the United States Trademark Office has registered over 200 trademarks (in addition to the Complainant's registrations) that comprise or include the term CURRENT.

Statutes Cited

Uniform Domain Name Dispute Resolution Policy

 Paragraph 15(a)

 Paragraph 4(a)

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

PROCEDURAL FINDINGS

Domain Names: Current.com

Domain Name Registrar: Network Solutions

Response Due Date: April 6, 2000

The Complainant filed its complaint with the National Arbitration Forum on March 9, 2000. In compliance with the rules, The Forum transferred the Complaint to the Respondent on March 14, 2000 and the Respondent submitted a response to The Forum on April 6, 2000.

The Respondent registered the domain name with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with Network Solutions the Respondent agreed to resolve any dispute regarding its domain name through ICANN'S Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACTS

The manner in which the domain name(s) are identical or confusing are set out herein below:

Since 1994, Current USA, Inc., through its predecessor in interest, Current, Inc. has owned at least four federal registrations for the mark CURRENT®, which now grant it the exclusive right to use the mark on a wide variety of products and services. Current, Inc. transferred the marks, including all goodwill, to SE/PDI Acquisition Corp. That entity then changed its name to Current USA, Inc.

On or about May 20, 1997, an entity named "Current Event," with a California address, registered current.com as a domain name. That domain is identical to Current USA Inc.’s registered mark CURRENT®.

Current USA Inc.’s registration and use of the mark CURRENT® predate the registration of the current.com domain name by Current Event.

At the time Current Event registered the domain name, Current USA Inc.'s predecessor in interest, Current, Inc., owned at least six federal trademark registrations for the mark CURRENT®), for products and services ranging from stationery, monogramming services and ceramic vases, to personal protection spray, stickers, ponytail holders, and many, many more products. Current USA Inc.'s CURRENT® catalog of gift products is well-known. An on-line copy of the catalog can be found at www.currentcatalog.com.

In contrast, Current Event has no discernible right to use the mark CURRENT. Current Event does not appear to be an active company in California. 

Current Event does not appear to own any federal registrations for the mark CURRENT. A Pennsylvania company, Current Events International, owns federal registrations for CURRENT EVENTS INTERNATIONAL AND DESIGN and CURRENT EVENTS AND DESIGN. It is unlikely that Current Events International is the same as the registrant of current.com, Current Event. Current Events International appears to be registered in California as a Pennsylvania
company. Also, Current Events International identified itself as a Pennsylvania company in its trademark registration, There is no reason to believe that Current Events International would have provided a California address for its domain name registration, but a Pennsylvania address for its trademark registrations. No other companies called "Current Event" appear to own any federal trademark registrations. Thus, Respondent does not have any federal trademark registrations
of the mark CURRENT or a derivation thereof. It appears that Current Event never had a visible web site at current.com. 

Based on the above, Respondent does not have a legitimate interest in the domain name current.com.

By communications dated September 17, 1998, and November 5, 1998, Current USA Inc.'s predecessor- in-interest, Current, Inc., informed Current Event that its registration of current.com as a domain name violated its trademark rights. Those notices were mailed to the Sunnyvale, California address provided by Current Event to NSI. The post office returned those letters to counsel for Current, Inc. When counsel for Current, Inc. called the Post Master to inquire about the returned notices, they were informed that Current Event no longer maintained a post office
box at that address and did not have a forwarding address. The September 17, 1998, letter was also sent to the sole e-mail address that Current Event provided to NSI. Cur-rent Event never responded.

Current Event does not appear to be an active California corporation. In addition, it provided a postal address to NSI which was either fraudulent at the time it registered the domain name, or which it cancelled shortly thereafter. It was only about sixteen months from the date Current Event registered current.com, to the date Current, Inc.'s letter to Current Event was returned. It is difficult to conceive that a legitimate business would provide a business address that, within sixteen months, was no longer valid and was not connected to a forwarding address.  Moreover, Current Event did not respond to e-mail communication at the e-mail address it provided to NSI. That e-mail address, [email protected], is the e-mail address of a Web hosting company. If Current Event had a good faith intent to register and use the domain name, it is reasonable to assume that it would have responded to an e-mail inquiry to its Web hosting company. More likely, Current Event was using best.com for its domain name "parking" services. Finally, the telephone number listed by Current Event, (408) 470-2566, is no longer in service.  Based upon the apparent lack of a legitimate company called "Current Event" in California, and upon Current Event's refusal to communicate with Current USA, Inc. or its predecessor in interest, it is reasonable to assume that Current Event's purpose was to preclude Current USA Inc. and its predecessor in interest from using the CURRENT mark in a domain name and thereby disrupt its business.

The Respondent had actual or at least constructive notice of the prior use of the mark CURRENT and had knowledge that the United States Trademark Office has registered over 200 trademarks (in addition to the Complainant's registrations) that comprise or include the term CURRENT. 

CONCLUSIONS

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 findings and conclusions:

The undersigned has reviewed all the evidence presented in this case by both parties and has concluded to believe the facts and circumstances as set forth by the Complainant. For that reason, the undersigned decides that:

a.The domain name as registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and 

b.the Respondent has no rights or legitimate interests in respect of the domain name; and 

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

It is therefore just, right and proper that the domain name "Current.com" be transferred to the Complainant

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "CURRENT.COM REGISTERED BY RESPONDENT, CURRENT EVENT, BE TRANSFERRED TO COMPLAINANT, CURRENT USA..

Dated: April 17, 2000, by Judge Paul A. Dorf, (ret.), Arbitrator
THE HONORABLE PAUL A. DORF, (ret.)
Arbitrator