Generic Top Level Domain Name (gTLD) Decisions

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Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

DOMAIN NAME DISPUTE ADMINISTRATIVE DECISION

________________________________________________________________

STREETWISE MAPS, INC.

COMPLAINANT,

STREETWISE PUBLISHING

RESPONDENT.

DECISION
Forum File No.: FA0004000094405

________________________________________________________________

The above-entitled matter came on for an administrative hearing on

May 11, 2000 before the undersigned on the Complaint of STREETWISE MAPS, INC., hereafter "Complainant", against STREETWISE PUBLISHING, hereafter "Respondent". George M. Kaplan, Dilworth & Barrese, 333 Earle Ovington Blvd., Uniondale, New York 11553, represents Complainant. Jill Pietrini, Manatt, Phelps & Phillips, LLP, 11355 W. Olympic Blvd., Los Angeles, CA 90064 represents Respondent. Upon the written submitted record, the following decision is made:

PROCEDURAL FINDINGS

Domain Name: STREETWISE.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: STREETWISE PUBLISHING

Date of Domain Name Registration: August 22, 1997.

Date Complaint filed: April 5, 2000.

Date of Commencement of Administrative Proceeding in Accordance with Rule

2(a)[1] and Rule 4(c): April 5, 2000.

Due date for a Response: April 25, 2000. Respondent appeared pursuant to

Rule 5(a).

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 April 5, 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, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced. Respondent appeared as required by Rule 5(a).

On August 22, 1997, Respondent registered the domain name STREETWISE.COM with Domain Name Registrar Network Solutions, Inc. On April 6, 2000 the Domain Name Registrar NETWORK SOLUTIONS, INC. verified that Respondent is the Registrant for the domain name STREETWISE.COM and that further 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.

FINDINGS OF FACT

The evidence is disputed. Based on the record the following findings are made:

1. Complainant first used the mark STREETWISE in commerce June 5, 1984, in its business name, Streetwise Maps, Inc., which owns the registered mark until 2005.

2. Complainant registered STREETWISE as a Trademark April 30, 1985, for the sale of "maps and maps which include indexes" and the United States Patent & Trademark Office approved Complainant's mark. (Reg. No.1,333,219).

3. Complainant used the mark STREETWISE as a part of its business name STREETWISE MAPS, INC. primarily in interstate domestic commerce.

4. Respondent used STREETWISE "from at least 1989" but registered "Streetwise Publishing" as a partnership with the Province of British Columbia, Canada, August 25, 1995.

5. The domain name STREETWISE.COM was originally registered by Streetwise Worldwide of Chicago, Illinois, USA.

6. Complainant and Respondent corresponded, sometimes caustically, about this dispute beginning May 9, 1997, a date that is three months prior to the date Respondent registered the domain name STREETWISE.COM on August 27, 1997.

7. The records shows that Network Solutions, Inc., told Complainant on October 30, 1997, to resubmit a dispute Complainant filed May 9, 1997, because of an "apparent administrative error." Complainant does not explain the reasons Complainant did not resubmit the dispute until April 5, 2000.

8. Complainant also apparently did not attempt to register STREETWISE.COM as a domain name although there is a suggestion that a window of opportunity existed to do so.

9. Respondent contacted Complainant, seeking to go around Complainant's lawyers and Respondent threatened that Complainant would "unleash a nightmare of litigation that will last …over a number of years" if Complainant pursued the contest of Respondent's domain name. In the same letter Respondent offered to sell the domain name to Complainant for $12,000.

10. The record shows that "Wayne Chase Consulting" purported to sell the domain name STREETWISE.COM to Streetwise Concepts and Culture of Encino, California, on February 26, 2000, for $520. although the domain name STREETWISE.COM was, according to Network Solutions, Inc., "frozen and is not able to be sold or transferred to any party until the arbitration process is finished and a decision is rendered by the Arbitrator."

11. The domain name STREETWISE.COM is identical to Complainant's mark.

12. Both Complainant and Respondent used the word STREETWISE in their business names and the record shows that each had a legitimate interest and right to do so in their respective market areas at a point in time prior to the initiation of this dispute, Complainant by trademark registration in the United States to sell maps and Respondent by partnership filing in Canada to publish music.

13. The word STREETWISE is used generally in commerce throughout the United States and internationally in endeavors that range from advertising and automotive repairs to retail sales and religion. Respondent's purported successor in interest uses the word STREETWISE in its business operations and did so prior to the filing of this complaint on April 5, 2000. Streetwise Concepts and Culture applied to register its name with United States Patent & Trademark Office on June 16, 1999, but has used the mark extensively in publication, sale and artist representation in the commercial music market in the United States.

14. The domain name STREETWISE.COM is identical to Complainant's registered mark.

15. The evidence allows an inference that Respondent registered the domain name and used it in bad faith when Respondent's representative, contrary to ICANN's Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(i), registered the domain name STREETWISE.COM with full knowledge that Complainant owned the registered mark and was protesting Respondent's use of it and the evidence allows an inference that Respondent did so primarily for the purpose of selling or otherwise transferring it to the Complainant or to a competitor of Complainant. Respondent offered the domain name to Complainant for $12,000 but has not produced evidence that this valuable consideration relates to his out-of-pocket costs in the domain name.

Complainant's prayer for relief requests that the domain name STREETWISE.COM be transferred from Respondent to Complainant, pursuant to Paragraph 4(i) of ICANN's Uniform Domain Name Dispute Resolution Policy.

CONCLUSIONS

The undersigned certifies that she 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:

To prevail, the Complainant has the burden of establishing the three factors set out in ICANN's Uniform Domain Name Dispute Resolution Policy at Paragraph 4(a)(i),(ii) and (iii). Complainant has the burden of showing that (i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) Respondent's domain name was registered and used in bad faith. (Emphasis added.)

1. Complainant met its burden of establishing that Respondent's domain name is identical to Complainant's mark, pursuant to Paragraph 4(a)(i).

2. Complainant did not meet its burden of establishing that Respondent had no right or legitimate interest in respect to the word STREETWISE, which became the domain name STREETWISE.COM and the record reflects that Respondent had a legitimate interest in and right to use STREETWISE in his commercial enterprises.

3. Complainant met its burden of establishing that Respondent acted in bad faith. The evidence allows an inference that Respondent, contrary to ICANN's Domain Name Dispute Resolution Policy Paragraph 4(b)(I) knowingly registered a domain name that Respondent knew another also had right to and that Respondent did so primarily in order to sell it to Complainant or a competitor of complainant for a valuable consideration in excess of the out-of-pocket costs related to the domain name.

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 STREETWISE.COM REGISTERED BY RESPONDENT STREETWISE PUBLISHING NOT BE TRANSFERRED TO COMPLAINANT STREETWISE MAPS, INC.

DATED: May 11, 2000 by Judge Carolyn Marks Johnson (Ret.), Arbitrator.

_______________________________________

Honorable Carolyn Marks Johnson

Assigned District Judge

Arbitrator.

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