Generic Top Level Domain Name (gTLD) Decisions

Complainant is E Street Communications, Inc., Denver, CO, USA ("Complainant") represented by Christopher P. Beall, of Faegre & Benson LLP. Respondent is Midware Corporation, Naco, AZ, USA ("Respondent").

The domain name at issue is <estreetcommunications.com> registered with Bulkregister.

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as a panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 13, 2001; the Forum received a hard copy of the Complaint on February 15, 2001.

On February 17, 2001, Bulkregister confirmed by e-mail to the Forum that the domain name <estreetcommunications.com> is registered with Bulkregister and that the Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister 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 February 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@estreetcommunications.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 23, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

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

A. Complainant

Complainant alleges the following:

B. Respondent

Respondent has not submitted a response in this matter.

This complaint is based on Complainant’s registered service mark for the mark E STREET. The United States Patent and Trademark Office (USPTO) registered this mark on the Principal Register on August 25, 1998. Complainant is currently using – and has, since at least November 1995, been using – the mark E STREET COMMUNICATIONS as a common law mark.

Respondent registered the domain name on March 15, 2000.

Future home of the

PatBeckOnline.com Web Site.

Stay tuned! This Web site will be online shortly.

As of February 1, 2001, the previous textual references to the "Future Home" of the "PatBeckOnline.com" site had been replaced at the <estreetcommunications.com> domain name with Spanish language content and advertisement links. This Spanish textual and graphic material uses the name "mardelplata.com" and is also available at <mardelplata.com> domain name.

Respondent’s description of its business at its <01ace.com> site reads:

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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:

(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;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

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

Complainant has established by uncontroverted proof that the domain name in issue is identical to Complainant’s E STREET COMMUNICATIONS common law mark. See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that <homedirector.com> is identical to Complainant’s mark, HOME DIRECTOR).

Also, the <estreetcommunications.com> domain name is confusingly similar to the Complainant’s registered E STREET mark, because it merely adds a generic term to the registered mark. See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term "direct" on to the Complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondent’s domain names are confusingly similar).

Therefore, the Panel finds that Complainant satisfied the requirements of showing that the domain name in issue is identical to and/or confusingly similar to Complainant’s mark. Policy ¶ 4(a)(i).

Complainant established rights and interests in the mark used to create the domain name in issue. Complainant has shown that Respondent has not developed a web site and has not used the domain name for any business purpose besides drawing consumers to the <mardelplata.com> web site. These circumstances warrant a finding that Complainant has rights in the domain name and that Respondent does not. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his websites); see also America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark "as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate").

Therefore, the Panel finds that Complainant has rights in the mark contained in the domain name and Respondent does not. Policy ¶ 4(a)(ii).

Complainant has established that Respondent’s use of the domain name was to hyperlink to a different site. This is evidence of bad faith. See ESPN, Inc. v. Danny Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website <iwin.com>, presumably, the Respondent received a portion of the advertising revenue from site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain); see also Encyclopaedia Britannica Inc. v Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site).

It may be inferred from by Respondent’s web site that Respondent’s intention is to sell the domain name for a profit. This is additional evidence of bad faith. See Globosat Programadora Ltda v. Artmidia Comunicacao Visual Criacao E Arte Ltda, D2000-0605 (WIPO Sept. 13, 2000) (finding that "the fact that almost all the domain names registered by the Respondent or the Administrative Contact for these domains are inactive and redirected to a site apparently dedicated to the commerce of domain names, force this Panelist to consider that . . . Respondent has registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names registration to the Complainant or to a Complainant's competitor for valuable consideration").

Therefore, the Panel finds that Respondent registered and used the domain name in issue in bad faith. Policy ¶ 4(a)(iii).

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain name, <estreetcommunications.com>, be transferred from Respondent to Complainant.