Expressdata Corporation
v.
MSM Express Data Services
[Indexed as: Expressdata v. MSM]
[Indexed as: Expressdata.com]
National Arbitration Forum
Forum File No.: FA94721
Commenced: 4 May 2000
Judgement: 20 June 2000
Presiding Panelist: Karl V. Fink
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 Complainants name. Respondent does not appear to be a legal business entity.
Held, Name Transferred to Complainant.
Respondent was aware of Complainants registration before it chose to register a name which sounds identical to Complainants. Except for the common .com suffix, Respondents name is identical and thus confusingly similar to Complainants protected mark.
Complainant filed its service mark application months before Respondents registration which constitutes constructive notice of Complainants 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, Respondents conduct appears to be designed to disrupt Complainants 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
Complainants 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.
Complainants use of the EXPRESSDATA mark in interstate
commerce (April 1, 1995) preceded Respondents 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 Respondents registration of the domain
name (April
5, 1996), and application for registration of a federal mark constitutes
constructive
notice to Respondent of Complainants 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
Complainants 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.
Complainants 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 Registrants Domain Name and Complainants 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.
Respondents Rights or Legitimate Interest in the Domain Name.
Under paragraph 4(c) of the
Policy, evidence of a registrants 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.
Respondents Bad Faith Registration and Use of the Domain Name.
Under
paragraph 4(b) of the Policy, evidence of Respondents 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 Respondents web site or other on-line location by creating a likelihood
of
confusion with the trade or service mark owners 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 respondents conduct appears to be designed to disrupt the
business of
Mr. Moses former employer.
Under ICANNs 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.
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