Domain name – Domain name dispute resolution policy – Trademark – Service mark - Identical – Confusingly similar – Legitimate rights – Bad faith – Notice – Constructive Notice.

Complainant owns the trademark, EXPRESSDATA and registered the domain name, XPRSDATA.COM in connection with providing market and price information regarding financial services.  Respondent registered the domain name, EXPRESSDATA.COM which sounds identical to Complainant’s name.  Respondent does not appear to be a legal business entity.

Held, Name Transferred to Complainant.

Respondent was aware of Complainant’s registration before it chose to register a name which sounds identical to Complainant’s.  Except for the common “.com” suffix, Respondent’s name is identical and thus confusingly similar to Complainant’s protected mark.

Complainant filed its service mark application months before Respondent’s registration which constitutes constructive notice of Complainant’s prior use.  Respondent does not conduct business under its present name, nor is there evidence that it has intentions of doing so.  Thus, Respondent does not have legitimate rights in the name.

Respondent has previously registered domain names in order to prevent trademark owners from using the name.  Further, Respondent’s conduct appears to be designed to disrupt Complainant’s business.  Thus, Respondent registered and used the name in bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy

Fink, Panelist: -

The above entitled matter came on for an administrative hearing on June 19, 2000
before the undersigned on the Complaint of the above named Complainant, against 
MSM  Express Data Services hereafter "Respondent". 

Complainant is represented by Steven M. Jampol, of Robinson, Rappaport,
Jampol, Aussenberg & Schleicher. 

Respondent is represented by Barry E. Kaplan of Hughes & Kaplan.

Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: Expressdata.com

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant:  MSM Express Data Services 

Date of Domain Name Registration:  April 5, 1996

Date Complaint Filed: May 1, 2000

Due Date for a Response:  May 24, 2000. An extension of time was issued by the
Director of Arbitration and the Response dated June 1, 2000 was submitted. 

Date of Commencement of Administrative Proceeding in Accordance with Rule
2(a)l and Rule 4(c)[1]: May 4, 2000

Relief Requested by Complainant:   Transfer of the Domain Name to Complainant.

            Complainant submitted supplemental information dated June 16, 2000
which was considered by the panel. 

After reviewing the Complaint, and determining it to be in administrative
compliance, the National Arbitration Forum (The Forum) forwarded the Complaint
to the Respondent on May 4, 2000 in compliance with Rule 2(a), and the
administrative proceeding was commenced pursuant to Rule 4(c). In compliance
with Rule 4(d), The Forum immediately notified the above Registrar, Network
Solutions, Inc., the Internet Corporation for Assigned Names and Numbers
(ICANN), and the Complainant that the administrative proceeding had
commenced. 

On April 5, 1996, Respondent registered the domain name “Expressdata.com”
with Network Solutions, Inc., the entity that is the Registrar of the domain name.
By registering its domain name with Network Solutions, Inc., Respondent agreed
to resolve any dispute regarding its domain name through ICANN's Rules for
Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name
Dispute Resolution Policy.

            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:

FINDINGS OF FACT

1.                  Complainant is a Georgia corporation which changed its name to
ExpressData Corporation on November 27, 1995.

2.                   Complainant has been, and continues to be, engaged in providing
market and price information regarding Certificates of Deposits, bonds, bills,
stocks, notes, and other investment vehicles to banks, credit unions, brokerage
firms and other financial institutions. 

3.                  Since 1995 Complainant has delivered services and information to its
institutional clients in large part over the internet.  Complainant is now the largest
provider of market information in the institution-to-institution market for financial
debt securities in the United States. 

4.                  MSM Express Data Services does not appear to be a legal business
entity, it has no active web site and no active business.

5.                  Michael Moses was an employee of Complainant when it was
known as National CD Network, Inc. His employment was from April 1992 to
August 1994. 

6.                  On February 15, 1996, Complainant registered the domain name
XPRSDATA.COM. Respondent was aware of this registration before it selected
the domain name EXPRESSDATA.COM, which sounds identical to
Complainant’s domain name. 

7.                  On May 23, 1995, Complainant filed its application for registration
of EXPRESSDATA as a service mark with the United States Patent and
Trademark Office.

8.                  On June 4, 1996 the United States Patent and Trademark Office
issued registration for EXPRESSDATA service mark to Complainant in connection
with the provision of “financial services, namely providing investment and stock,
bond, bill, note and fund information and quotations for others, in class 36”. The
first commercial use of the mark was stated to be April 1, 1995. 

9.                  On April 5, 1996 Respondent registered the domain name
expressdata.com. Michael Moses is listed as the administrative contact, technical
contact and the zone contact on the registration. 

10.             Mr. Moses has a number of domain names and aliases all registered at
the same address which is a Mail Boxes, Etc. store in a shopping center in Atlanta,
Georgia.  Mr. Moses and the business aliases have more than 150 domain names. 

11.             Except for the “.com” suffix, the domain name registered by the
Respondent is identical to the federally protected service mark EXPRESSDATA
owned by the Complainant; and the domain name EXPRESSDATA.COM is
confusingly similar to the service mark EXPRESSDATA owned by Complainant. 

12.               Respondent has no rights or legitimate interest in the domain name for
the following reasons:

a.                   Complainant’s use of the EXPRESSDATA mark in interstate
commerce (April 1, 1995) preceded Respondent’s registration of the domain name
by approximately one (1) year, April 5, 1996; and 

b.                  Complainant filed its service mark application (May 23, 1995) more
than ten (10) months before Respondent’s registration of the domain name (April
5, 1996), and application for registration of a federal mark constitutes constructive
notice to Respondent of Complainant’s prior use, (15 U.S.C. §1057[c]); and

c.                  Respondent does not conduct, and has never conducted, any
business in the name of MSM Express Data Services, and there is no credible
evidence that Respondent ever intends to conduct such business. 

13.             On March 31, 1996, Respondent registered the domain name
XPRESSDATA.COM, another name for which the Respondent had no active or
planned business, but which domain name was identical or confusingly similar to the
EXPRESSDATA mark then in use by the Complainant and sounds identical to
Complainant’s xprsdata.com domain name.

14.             On April 2, 1996, Respondent registered the domain name
CU2CU.Com, another name for which the Respondent has no active or planned
business, but which domain name was identical or confusingly similar to another
mark then in use by the Complainant. 

15.             No evidence has been presented that Respondent has any right or
legitimate interest to the domain name as provided in Rule 4(c).

16.             Complainant’s prayer for relief requests that the domain name be
transferred to Complainant. 

CONCLUSIONS

To obtain relief under paragraph 4(a)of the Policy, the Complainant must prove
each of the following: 

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; and 

2.                  The Respondent has no right or legitimate interest in the domain
name; and
 
 

3.                  The domain name has been registered and used in bad faith. 

Similarity Between Registrant’s Domain Name and Complainant’s Trade or
Service Mark. 

The domain name registered by Respondent is confusingly similar to or identical to
the trademark and/or service mark owned by Complainant.  The addition of the
generic domain name identifier “.com” does not avoid a likelihood of confusion.

Respondent’s Rights or Legitimate Interest in the Domain Name. 

        Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or
legitimate interest in the domain name includes: 

1.                  
Demonstrable preparations to use the domain name in connection
with a bona fide offering of goods or services prior to the dispute; 

2.                 
An indication that the registrant has been commonly known by the
domain name even if it has acquired no trademark rights; or

3.                 
Legitimate noncommercial or fair use of the domain name without
intent to divert consumers or to tarnish the trademark. 

       Respondent has made no showing with respect to any of the above factors.
The Respondent has no rights or legitimate interest in the domain name. 

Respondent’s Bad Faith Registration and Use of the Domain Name. 

            Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith
registration and use includes: 

1.                  
Circumstances indicating the domain name was registered for the
purpose of resale to the trade or service mark owner or a competitor for profit; 

2.                  
A pattern of conduct showing an attempt to prevent others from
obtaining domain names corresponding to their trademarks; 

3.                  
Registration of the domain name for the purpose of disrupting the
business of a competitor; or 

4.                  
Using the domain name to attract, for commercial gain, Internet users
to Respondent’s web site or other on-line location by creating a likelihood of
confusion with the trade or service mark owner’s mark. 

The Respondent registered and used the domain name in bad faith as evidenced by
circumstances indicating that Respondent registered and acquired the domain name
as a pattern of conduct by respondent and others using the same address to
prevent others from obtaining domain names corresponding to their trademarks.
Further respondent’s conduct appears to be designed to disrupt the business of
Mr. Moses’ former employer. 

Under ICANN’s Uniform Domain Name Dispute Resolution Policy Complainant
has proven that the domain name should be transferred to 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
"Expressdata.com” REGISTERED BY RESPONDENT BE TRANSFERRED
TO COMPLAINANT.