EXPRESSDATA Corporation (Formerly known as National CD Network, Inc.) v MSM Express Data Services

The above entitled matter came on for an administrative hearing on June 19, 2000 before the undersigned on the Complaint of the above named Complainant, against MSM Express Data Services hereafter "Respondent".

Complainant is represented by Steven M. Jampol, of Robinson, Rappaport, Jampol, Aussenberg & Schleicher.

Due Date for a Response: May 24, 2000. An extension of time was issued by the Director of Arbitration and the Response dated June 1, 2000 was submitted.

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)l and Rule 4(c)^[1]: May 4, 2000

Complainant submitted supplemental information dated June 16, 2000 which was considered by the panel.

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 May 4, 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 the above Registrar, Network Solutions, Inc., the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced.

On April 5, 1996, Respondent registered the domain name “Expressdata.com” with Network Solutions, Inc., the entity that is the Registrar of the domain name. 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.

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 findings and conclusions:

1. Complainant is a Georgia corporation which changed its name to ExpressData Corporation on November 27, 1995.

2. Complainant has been, and continues to be, engaged in providing market and price information regarding Certificates of Deposits, bonds, bills, stocks, notes, and other investment vehicles to banks, credit unions, brokerage firms and other financial institutions.

3. Since 1995 Complainant has delivered services and information to its institutional clients in large part over the internet. Complainant is now the largest provider of market information in the institution-to-institution market for financial debt securities in the United States.

4. MSM Express Data Services does not appear to be a legal business entity, it has no active web site and no active business.

5. Michael Moses was an employee of Complainant when it was known as National CD Network, Inc. His employment was from April 1992 to August 1994.

6. On February 15, 1996, Complainant registered the domain name XPRSDATA.COM. Respondent was aware of this registration before it selected the domain name EXPRESSDATA.COM, which sounds identical to Complainant’s domain name.

7. On May 23, 1995, Complainant filed its application for registration of EXPRESSDATA as a service mark with the United States Patent and Trademark Office.

8. On June 4, 1996 the United States Patent and Trademark Office issued registration for EXPRESSDATA service mark to Complainant in connection with the provision of “financial services, namely providing investment and stock, bond, bill, note and fund information and quotations for others, in class 36”. The first commercial use of the mark was stated to be April 1, 1995.

9. On April 5, 1996 Respondent registered the domain name expressdata.com. Michael Moses is listed as the administrative contact, technical contact and the zone contact on the registration.

10. Mr. Moses has a number of domain names and aliases all registered at the same address which is a Mail Boxes, Etc. store in a shopping center in Atlanta, Georgia. Mr. Moses and the business aliases have more than 150 domain names.

11. Except for the “.com” suffix, the domain name registered by the Respondent is identical to the federally protected service mark EXPRESSDATA owned by the Complainant; and the domain name EXPRESSDATA.COM is confusingly similar to the service mark EXPRESSDATA owned by Complainant.

12. Respondent has no rights or legitimate interest in the domain name for the following reasons:

a. Complainant’s use of the EXPRESSDATA mark in interstate commerce (April 1, 1995) preceded Respondent’s registration of the domain name by approximately one (1) year, April 5, 1996; and

b. Complainant filed its service mark application (May 23, 1995) more than ten (10) months before Respondent’s registration of the domain name (April 5, 1996), and application for registration of a federal mark constitutes constructive notice to Respondent of Complainant’s prior use, (15 U.S.C. §1057[c]); and

c. Respondent does not conduct, and has never conducted, any business in the name of MSM Express Data Services, and there is no credible evidence that Respondent ever intends to conduct such business.

13. On March 31, 1996, Respondent registered the domain name XPRESSDATA.COM, another name for which the Respondent had no active or planned business, but which domain name was identical or confusingly similar to the EXPRESSDATA mark then in use by the Complainant and sounds identical to Complainant’s xprsdata.com domain name.

14. On April 2, 1996, Respondent registered the domain name CU2CU.Com, another name for which the Respondent has no active or planned business, but which domain name was identical or confusingly similar to another mark then in use by the Complainant.

15. No evidence has been presented that Respondent has any right or legitimate interest to the domain name as provided in Rule 4(c).

16. Complainant’s prayer for relief requests that the domain name be transferred to Complainant.

To obtain relief under paragraph 4(a)of the Policy, the Complainant must prove each of the following:

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; and

Similarity Between Registrant’s Domain Name and Complainant’s Trade or Service Mark.

The domain name registered by Respondent is confusingly similar to or identical to the trademark and/or service mark owned by Complainant. The addition of the generic domain name identifier “.com” does not avoid a likelihood of confusion.

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:

1. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

2. An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

3. Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Respondent has made no showing with respect to any of the above factors. The Respondent has no rights or legitimate interest in the domain name.

Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:

1. Circumstances indicating the domain name was registered for the purpose of resale to the trade or service mark owner or a competitor for profit;

2. A pattern of conduct showing an attempt to prevent others from obtaining domain names corresponding to their trademarks;

3. Registration of the domain name for the purpose of disrupting the business of a competitor; or

4. Using the domain name to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location by creating a likelihood of confusion with the trade or service mark owner’s mark.

The Respondent registered and used the domain name in bad faith as evidenced by circumstances indicating that Respondent registered and acquired the domain name as a pattern of conduct by respondent and others using the same address to prevent others from obtaining domain names corresponding to their trademarks. Further respondent’s conduct appears to be designed to disrupt the business of Mr. Moses’ former employer.

Under ICANN’s Uniform Domain Name Dispute Resolution Policy Complainant has proven that the domain name should be transferred to Complainant.

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 "Expressdata.com” REGISTERED BY RESPONDENT 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 Name Dispute Resolution Policy as supplemented by the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy.