Domain Name - Domain Name dispute resolution policy - U.S. Trademark - Registration - Similarity to existing trademark - Identical - Virtually identical -Confusingly similar - Registration of domain name for the purpose of control -Registration of domain name in bad faith - Registration of domain name without any legitimate business purpose - Registration of domain name for the sole purpose of re-sale - Registration of domain name to require payment to regain ownership - Offer to sell domain name - Interference with right to conduct established business.

Complainant had been using the name "Steamist" as a trademark, with or without logo, and in bold letter form or small cap form, in its business since 1973. 

Respondent was the service agent for Complainant's products within its geographical territory. On November 21, 1997, Respondent registered the domain name "steamist.com" with Network Solutions. On May 12, 1999, Respondent confirmed in an e-mail letter directed to Complainant that he had earlier offered to sell the domain name "steamist.com" to Complainant for terms which Complainant rejected. Complainant sought cancellation of Respondent's domain name registration and the transfer of the domain name registration to itself.

Held, Domain name transferred to Complainant.

The domain name "steamist.com", registered by Respondent with Networks Solution was identical to Complainant's trademark save and except for the bold letter form, and was virtually identical and confusingly similar to Complainant's trademark (with logo), save and except for the bold letter form and logo. 

Complainant had legitimately used the domain name "Steamist" in its business since 1973 and was entitled to its continued use in the future without interference by Respondent. 

Respondent had no legitimate interest in respect of the domain name "steamist.com" and had acquired it for the sole purpose of re-sale to the Complainant and not for any legitimate business purpose. Respondent's pattern of conduct interfered with Complainant's right to conduct its long established business. The domain name was registered and used by Respondent in bad faith.

Policies Referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.

Uniform Domain Dispute Resolution Policy.

Registration Agreements Referred to

Networks Solutions, Inc. Registration Agreement

PROCEDURAL FINDINGS

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 February 3, 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 Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent did not submit a response to The Forum within twenty (20) days pursuant to Rule 5(a).
On November 21, 1997, Respondent registered the domain name "steamist.com" with Network Solutions, the entity is the Registrar of the domain name. On February 4, 2000, Network Solutions verified that Respondent is the Registrant for the domain name "steamist.com", and that further by registering its domain name with Network Solutions, Respondent agreed to resolve any Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

1. Complainant has been using the name STEAMIST in commerce since 1973. In 1973 Complainant was issued the trademark "STEAMIST" by the United States Trademark Office under Reg. No. 769,033 for its exclusive use. The trademark "STEAMIST" was again registered for a term of 20 years from October 23, 1984. The trademark "STEAMIST", with logo, were registered for a term of 20 years commencing January 01, 1985 by the United States Trademark Office under Reg. No. 1,312,216.

2. Since 1973, the trademark "STEAMIST", whether in bold letter form, or in small cap form or with or without logo, has been used by Complainant in its business of the manufacture of steambath generators, controls, seats, saunas, and with future electronically operated devices for the delivery of steam and sauna products. Respondent is the service agent for these products within his geographic territory.

3. On May 12, 1999, "Joe" Guillen, as President of Guillen's Enterprises Inc. confirmed in an e-mail letter directed to Complainant that he had earlier offered to sell the domain name "steamist.com" to Complainant for terms which Complainant rejected.

4. Complainant seeks cancellation of the current domain name registration and transfer of the domain name registration to Complainant.
 

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 conclusions:

1. The domain name "steamist.com" registered by Respondent with Networks Solutions on November 21, 1997 is identical to Complainant's trademark registered by the United States Trademark Office, Reg. No. 769,033 and subsequently registered for an additional term of 20 years under Reg. No. 1, 301, 489, save and except for the bold letter form, and is virtually identical and confusingly similar to Complainant's trademark (with logo), Reg. No. 1,312,216, save and except for the bold letter form and logo.

2. Complainant has legitimately used the domain name STEAMIST in its business since 1973 to the present time, and is entitled to its continued use in the future without interference by the Respondents. 
 

3. The domain name "steamist.com" was registered by Respondent Guillen's Enterprises, Inc. strictly for the purpose of controlling the domain name, and to require Complainant to pay Respondents to regain ownership and sole control of the name "steamist", their registered trademark since 1973.

4. Respondent has no rights or legitimate interests in respect of the domain name "steamist.com". Respondent acquired the domain name for the sole purpose of re-sale to Complainant and not for legitimate business purposes. Respondents pattern of conduct interferes with Complainant's right to conduct its long established business. The domain name has been registered and is being used by Respondent in bad faith.
 

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 steamist.com REGISTERED BY RESPONDENT Guillen's Enterprises, Inc., BE TRANSFERRED TO COMPLAINANT
 

 [1] Any reference to "Rule" or "Rules" are to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Dispute Resolution Policy as supplemented by the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy[1] Any reference to "Rule" or "Rules" are to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Dispute Resolution Policy as supplemented by the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy