Generic Top Level Domain Name (gTLD) Decisions

Complainant is Mailmark Enterprises LLC, Canoga Park, CA, USA ("Complainant") represented by Daniel L. Dawes, Myers, Dawes and Andras LLP. Respondent is Joe Lackey Internet Commerce Services Inc., Livermore, CA, USA ("Respondent").

The domain names at issue are "e-mailmark.net" and "emailmark.net" registered with Register.com Inc.

On April 12, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 7, 2001; the Forum received a hard copy of the Complaint on March 12, 2001.

On March 12, 2001, Register.com Inc. confirmed by e-mail to the Forum that the domain names "e-mailmark.net" and "emailmark.net" are registered with Register.com Inc. and that Respondent is the current registrant of the name. Register.com Inc. has verified that Respondent is bound by the Register.com Inc. 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 March 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 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@e-mailmark.net, postmasteremailmark.net 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.

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 Respondent.

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

B. Respondent

Respondent has not submitted a response in this matter.

Complainant, Mailmark Enterprises LLC, owns the mark MAILMARK, which it uses in connection with various advertising and promotional services. Complainant has used its mark in interstate commerce since 1983. In addition, since 1997, Complainant has used its E-MAILMARK to electronically service its worldwide customer base.

Respondent, Joe Lackey a.k.a. Internet Commerce Services, Inc., orally agreed to transfer the disputed domain names to Complainant, but failed to complete the necessary forms to do so. It appears Respondent registered the disputed domain name by using his personal name and address, when in fact the true owner is a commercial entity at a different location. Respondent operates under various corporate names. Currently, Respondent maintains numerous domain name registrations. To date, Respondent has not used the disputed domain names for any purpose.

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) the 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.

Under the Policy, Complainant must demonstrate that it has rights in the mark, and that the disputed domain names are identical or confusingly similar to that mark.Here, Complainant’s rights are evidenced by its registered mark (MAILMARK), and its common law mark (E-MAILMARK). Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the complaint in the first place).

The Respondent’s domain names, e-mailmark.net and emailmark.net, are confusingly similar to Complainant’s registered mark (MAILMARK), because the domain name is primarily comprised of Complainant’s registered mark. See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the "domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT"); see also EBAY, Inc. v. MEOdesigns and Matt Oettinger, D2000-1368 (Dec. 15, 2000) (finding that Respondent’s domain name "eebay.com" is confusingly similar to the Complainant’s registered trademark).

Also, Respondent’s domain names are clearly identical to Complainant’s common law mark (E-MAILMARK). See Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Nintendo Of America Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words).

Accordingly, Policy ¶ 4(a)(i) has been satisfied.

The Panel finds that Respondent is not commonly known by the disputed domain names, nor has Respondent used the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. See Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question); see also Broadcom Corp. v Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Moreover, Respondent asserted no rights or legitimate interests in the disputed domain names, which entitles the Panel to conclude Respondent has no such rights or legitimate interests in the domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names"); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess).

Thus, Policy ¶ 4(a)(ii) has been satisfied.

The Panel finds that Respondent has passively held the disputed domain names, which demonstrates bad faith. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also DCI S.A. v. Link Commercial Corp. D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4 (a) (iii) of the Policy).

Further, it appears Respondent provided misleading information in connection with its registration of the disputed domain names. See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Video Direct Distributors, Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that Respondent has acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name).

Finally, the evidence supports the conclusion that Respondent maintains several infringing domain names, which also shows bad faith. See Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent has registered numerous domain names that infringe upon the Complainant’s marks and in addition, the Respondent has registered domain names that infringe upon other entities’ marks).

As a result, Policy ¶ 4(a)(iii) has been satisfied.

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

Therefore, it is Ordered that the domain names, e-mailmark.net and emailmark.net, be transferred from Respondent to Complainant.