Appstream,
Inc. v. Golden Screen Interactive Technologies Inc.
Claim Number: FA0109000099676
PARTIES
Complainant is Appstream, Inc., Palo Alto, CA (“Complainant”) represented by Catherine S. Bridge, of Latham & Watkins. Respondent is Golden Screens Technology Inc., New York, NY (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <appstream.com>, registered with Network Solutions.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 7, 2001; the Forum received a hard copy of the Complaint on September 10, 2001.
On September 10, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <appstream.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 September 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 9, 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@appstream.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 October 18, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq. 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 Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that the <appstream.com> domain name is confusingly similar to Complainant's federally registered trademark, that Respondent has no rights or legitimate interests in the <appstream.com> domain name and that Respondent has acted in bad faith by failing and refusing to transfer the domain name at issue, as agreed, thus depriving Complainant of its rightful and secure enjoyment of the domain name at issue.
B. Respondent
Respondent did not submit a response
FINDINGS
Since 1999 when Complainant acquired rights from Respondent, Complainant has been using the APPSTREAM mark in relation to infrastructure software. Respondent's assignment of rights is recorded with the United States Patent and Trademark Office.
Complainant is now, and has been since 1999, an independent business and continues to develop and refine its core streaming software for commercial use. Complainant has received various awards for its software as well as significant press recognition. Complainant's business operations include the continuous use, maintenance and updating of a website located at <appstream.com>. During the entire period (1999 to present) Complainant has used <appstream.com> without objection from Respondent.
Recently, Complainant became aware that one ministerial function had not been completed, and that <appstream.com> was still registered in the name of Respondent. On January 29, 2001 Complainant wrote Respondent and requested that Respondent transfer the domain name. The request was ignored. In February 2001 Complainant called the Respondent's CEO directly to request a transfer, and again the request was ignored.
Respondent registered the <appstream.com> disputed domain name on November 17, 1998. Respondent does not update nor use the disputed domain name. Respondent is not commonly known by the APPSTREAM mark. Respondent assigned all rights to the APPSTREAM mark to Complainant.
DISCUSSION
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.
Identical and/or
Confusingly Similar
Respondent assigned all rights to the APPSTREAM mark to Complainant in 1999. Complainant has continuously used and is commonly known by the mark APPSTREAM and therefore has established that it has rights in the mark. Furthermore, because the <appstream.com> domain name incorporates Complainant's APPSTREAM mark in its entirety, the disputed domain name is identical to Complainant's mark See The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES).
Rights or
Legitimate Interests
Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interest in the <appstream.com> domain name. 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).
Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent has transferred all of its rights in the APPSTREAM mark to Complainant in 1999, and as of that date has not been commonly known by that mark pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
Furthermore, Respondent cannot show any bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because Complainant has been exercising control via routine updates and actual use of the website located at <appstream.com> for the past two years in relation to Complainant's goods and services. Similarly, Respondent cannot show any legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii) because Complainant has been exercising control via routine updates and actual control of the website located at <appstream.com> for the past two years in relation to Complainant's goods and services. See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the Complainant); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
Registration and
Use in Bad Faith
Respondent originally registered and initially used the domain name at issue in good faith. However, its failure to transfer registration to Complainant following the Complainant’s purchase of the trademark, APPSTREAM, and other assets from Respondent, constitutes a continued limited use or control of the domain name at issue which is hostile to the Complainant’s rightful use. Even so, Complainant freely advises that it is and has been using the domain name at issue without affirmative disturbance on the part of the Respondent. While the Respondent may well be acting in bad faith in failing to execute the Domain Name Transfer Agreement, it is not alleged that the domain name at issue is being “used in bad faith.” Accordingly, this Panel is without jurisdiction to order a transfer of the domain name at issue and must leave this controversy to a resolution in another forum. See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP panel); see also The Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (refusing to transfer the domain name and stating that the ICANN Policy does not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy”).
DECISION
It is ordered that the domain name <appstream.com> not be transferred from Respondent to the Complainant.
James A. Carmody, Esq., Panelist
Dated: October 24, 2001
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