Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Downstream Exchange Company, Pasadena, CA, USA ("Complainant") represented by Barbara L. Friedman, of McCutchen, Doyle,

Brown & Enersen. The Respondent is Downstream Energy, Houston, TX, USA ("Respondent") represented by Max Addison, of DownstreamEnergy.com.

The domain name at issue is downstreamexchange.com, registered with Register.com.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as a panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. as Panelist.

The Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 20, 2000; the Forum received a hard copy of the Complaint on December 26, 2000.

On December 20, 2000, Register.com confirmed by e-mail to the Forum that the domain name downstreamexchange.com is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that the Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 17, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@downstreamexchange.com by e-mail.

A timely response was received and determined to be complete on January 17, 2001.

On January 23, 2001, pursuant to the Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant, Downstream Exchange Company, contends that the Respondent’s domain name downstreamexchange.com is identical to the Complainant’s mark and trade name for which it has a U.S. trademark application; that the Respondent has no rights or legitimate interests in the domain name; and that the Respondent registered and is using the domain name in bad faith.

B. Respondent

The Respondent, Downstream Energy, concedes that the domain name is identical to the Complainant’s mark; but contends that it has rights or legitimate interests in the domain name and has not acted in bad faith.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(3) the domain name has been registered and is being used in bad faith.

The domain name downstreamexchange.com is identical to the Complainant’s mark. Pending trademark applications can establish rights in a mark. See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the Policy "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the Policy to "unregistered trademarks and service marks"); SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, D2000-0131 (WIPO Apr. 13, 2000) (concluding that rights in a mark can be established by pending trademark applications). The Complainant also has common law rights in the mark, given its use of the DOWNSTREAM EXCHANGE trade name since at least as early as May 1, 1988. See Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding sufficient common law rights from the distribution of a magazine and advertising).

The Respondent has rights or legitimate interests with respect to the domain name downstreamexchange.com. Although the Respondent is not known as Downstream Exchange, the Respondent is using the domain name in connection with a bona fide offering of goods and services.

The Respondent registered the domain name for use in connection with an Internet auction exchange website, entitled Downstream Exchange. See Genting Berhad v. Tan Kin Sin, FA 94735 (Nat. Arb. Forum June 28, 2000) (finding that the Respondent had legitimate interests in the domain name where the Respondent had made preparations to use the domain for his newly formed business); IG Index PLC v Index Trade, D2000-1124 (WIPO Oct. 16, 2000) (finding that the Respondent has rights in the domain name because the Respondent’s claimed use of the domain name is a "plausible explanation" to which the Panelist must give weight); K2r Produkte AG v. Trigano, D2000-0622 (WIPO Aug. 23, 2000) (finding that the Respondent had rights and legitimate interests in the domain name <k2r.com> where he registered the domain name for a website in connection with his mother’s store, KIRK ET ROSIE RICH).

The Complainant also contends that the Respondent made no use of the domain name until after notification of the Complainant’s rights in the mark. Since the Respondent obtained the domain name in contemplation of creating and operating an Internet auction exchange, the Respondent has shown demonstrable preparations to use a domain name in connection with a bona fide offering of goods and services, before any notice of the dispute. Policy ¶ 4(c)(i).

The Respondent and the Complainant are not competitors. They are in totally different businesses, with different market channels and different customers. The Respondent’s use of the domain name, therefore, cannot be disruptive of Complainant’s business. Policy ¶ 4(b)(iii) of the Policy).

The Complainant contends that the failure of the Respondent to perform a trademark search prior to registering its domain name constitutes bad faith. Failure to perform a trademark search, or ignoring the results of a search may be considered evidence of bad faith under the Policy. See Dollar Fin. Group, Inc. v. Advanced Legal Systems, Inc. FA95102 (Nat. Arb Forum, Aug. 14, 2000). However, a trademark search prior to the registration of the domain name on April 2, 2000 would only have shown the Complainant’s canceled registration and not established rights in the DOWNSTREAM EXCHANGE mark.

The Complainant contends that the Respondent’s use of its domain name is in bad faith since there was nothing on the website at the time the Complainant sent a letter to the Respondent on August 14, 2000 notifying the Respondent of the Complainant’s prior rights. Developing a website after notification has been deemed bad faith use under the Policy. See Artnews, LLC. v. Ecorp.com, FA95231 (Nat. Arb. Forum Aug. 22, 2000). However, the Respondent obtained the domain in contemplation of creating and operating an Internet auction exchange for the petroleum industry, a legitimate business use.

The Complainant contends that any use of the domain name would be likely to cause confusion with the Complainant’s mark. Policy ¶ 4(b)(iv). See Household Int’l, Inc. v. Cyntom Enterprises, FA 95784 (Nat. Arb. Forum Nov. 7, 2000) ("Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner"). However, the products of the Complainant and the Respondent are distinct, thus eliminating any likelihood of confusion. K2r Produkte AG v. Trigano, D2000-0622 (WIPO Aug 23, 2000) (No likelihood of confusion where the products are distinct). The Respondent’s offering of services to the petroleum industry cannot be confused with the Complainant’s offering of tax advice on real estate swaps.

Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Denied. The Respondent shall not be required to transfer to the Complainant the domain name downstreamexchange.com.