Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

Broadway Trading, LLC.

COMPLAINANT,

vs.

Gene Weissman

RESPONDENT.

DECISION
Forum File No. FA000300094310

The above-entitled matter came on regularly for an administrative hearing on April 24, 2000, before the undersigned, on the Complaint of Broadway Trading, LLC, hereinafter "Complainant," against Gene Weissman, hereinafter "Respondent."

Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Names:electronicdaytrader.com

electronicdaytrader.net

Domain Names Registrar:Network Solutions

Domain Names Registrant:Gene Weissman

Dates of Domain Names Registration:October 11, 1999

January 12, 2000

Date Complaint Filed:March 15, 2000

Date of Commencement of

Administrative Proceedings in

Accordance with Rule 2(a) and

Rule 4(c):March 16, 2000

Due Date for a Response:April 10, 2000

After reviewing the Complaint for administrative compliance, The National Arbitration Forum, hereinafter "The Forum," transferred the Complaint to the Respondent 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, ICANN and the Complainant that the administrative proceeding had commenced.

Respondent had registered the domain names in issue with Network Solutions, the entity that is the Registrar of the domain names. By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Uniform Domain Name Dispute Resolution Policy.

Respondent filed a timely Response. Thereafter, although not in compliance with the Rules, Complainant filed a Reply to Respondent’s Response and Respondent then filed an Answer to the Response. The Arbitrator has read and considered all the documentation submitted, including the declarations and exhibits.

FINDINGS OF FACT

1.Broadway Trading, LLC ["Broadway Trading"] is a securities broker dealer that was established in 1995. The Company has approximately 700 customers [who are day traders], 40 employees and seven offices. Broadway Trading provides its customers with direct access to stock markets and real time trading capabilities. An affiliate, Tradersedge.net, LLC ["Tradersedge.net"] provides training in the intricacies of day trading to many of Broadway Trading’s customers. Broadway Trading’s offices serve as training centers and trading offices where customers who choose not to trade at home may utilize company provided computers and facilities for their trading needs.

2.Marc Friedfertig ["Friedfertig"] is the founder and managing member of Broadway Trading and is instrumental in the training provided to customers. In 1998, McGraw Hill published a book written by Friedfertig and George West entitled The Electronic Day Trader [sometimes referred to herein as the "Book"]. The Book purports to describe successful strategies for trading. The Book is a part of the training provided by Complainant Broadway Trading and Tradersedge.net. The Book is advertised in Complainant’s promotional materials and on its web site, broadwaytrading.com.

3.In 1998, while the Book was being written, Serge Milman, on behalf of Broadway Trading and Friedfertig, registered the domain name "electronicdaytrader.com." The intention in registering that domain name was to utilize it in conjunction with The Electronic Day Trader book to promote Broadway Trading’s business. The Book refers the reader to electronicdaytrader.com as a location to find out more about the author Friedfertig and Broadway Trading. Milman has assigned the name in issue to Complainant. Until the loss of the domain name registration, when a purchaser of the Book or another potential customer would enter the domain name electronicdaytrader.com that person would be linked to the Tradersedge.net web site, which provides information on training programs for day traders and is also linked to the Broadway Trading’s web site.

4.The Book has sold over 135,000 copies, and has been translated into eight languages. The Book is carried by all of the major retailers, including Amazon.com, Barnes & Nobel, and Borders Books. The Electronic Day Trader has received favorable reviews and has been on best seller lists of the Wall Street Journal, New York Times, Business Week and Amazon.com. McGraw Hill has also spent substantial sums in promoting the Book, although there is no evidence of sums spent by Complainant.

5.Until the domain name electronicdaytrader.com registration lapsed, Complainant actively utilized the domain name since 1998 in a manner which brought potential customers into Tradersedge.net and Broadwaytrading.com. Since 1998, web users have located Broadway Trading’s web site via Tradersedge.net by linking from electronicdaytrader.com.

6.Complainant’s registration of electronicdaytrader.com lapsed due to non-payment of the renewal fee. The failure to pay the renewal fee was inadvertent, as Complainant was actively promoting and utilizing that domain name in connection with its business.

7.Respondent thereafter registered the name electronicdaytrader.com and he previously registered, but had not utilized the name electronicdaytrader.com.

8.Mark Peckman of Complainant Broadway Trading contacted Respondent in January 2000 upon learning that Respondent had registered the domain name electronicdaytrader.com on January 12, 2000. Respondent initially told Mr. Peckman that as long as Mr. Peckman provided him with some evidence that the domain name had been registered by or for Broadway Trading, he would agree to transfer it back, only asking for the cost he incurred in registering it. Respondent, however, eventually refused to make the transfer, and instead sought $100,000, the price ultimately being reduced to $15,000.

9.There is substantial evidence that the name "Electronic Day Trader" is merely descriptive [Respondent’s Exhibit Nos. 2, 3, 4, 5, 6, 7, 8, 9, 10, 11 and 12]. There also is substantial evidence that the names in issue have not acquired a secondary meaning because there are at least three books which substantially incorporate "Electronic Day Trading" in their titles [Respondent’s Exhibit Nos. 9, 10 and 12].

CONCLUSIONS

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 has concluded based on the law, the rules and the findings of fact above set forth, as follows:

1.The strength of a particular mark has traditionally been judged on a sliding scale. Arbitrary or "coined" marks are at one end of the scale and are entitled to the broadest scope of protection. When the mark is a dictionary word rather than a coined word, the strength of the mark, in descending order of protection along the continuum is [1] fanciful, [2] suggestive, and [3] descriptive. A "generic [i.e., the name of a thing] or "merely descriptive" mark is at the opposite end of the scale from arbitrary marks and is not entitled to protection, because it cannot satisfy the initial requirement that a mark distinguish the owner’s goods and services from others. See Lanham Act §2 [15 USC §1052]. The sliding scale of trademark protection is summarized in 1 McCarthy, Traders and Unfair Competition, Chap. 5 [3d ed 1992]. Recent Courts of Appeals cases have applied this sliding scale. See, e.g., Ms. World (UK) Ltd. v. Mrs. America Pageants, Inc. 9^th Cir. 1988) [1988] USCA9 917; 856 F.2d 1445; Century 21 Real Estate Corp. v. Sandlin (9^th Cir. 1988) [1988] USCA9 509; 846 F.2d 1175; Nutri/System v. Con-Stan Indus., Inc. (9^th Cir. 1987) [1987] USCA9 137; 809 F.2d 601; AMF Inc. v. Sleekcraft Boats (9^th Cir. 1979) [1979] USCA2 431; 599 F.2d 34. The Arbitrator here has concluded that the names in issue are merely descriptive, requiring a secondary meaning to be protected.

2.Thus, marks for which a secondary meaning must be shown include those that are descriptive of goods or services, or that are geographically descriptive. The Arbitrator has concluded that there was no secondary meaning created by Complainant. See, Ralston Purina Co. v. Thomas J. Lipton, Inc. (SD NY 1972) 341 F.Supp. 129. This is because the theory of "secondary meaning" contemplates that [Creager v. Russ Togs, Inc. (CD Cal. 1982) 218 USPQ 582]:

A word or phrase originally, and in that sense primarily, incapable of exclusive appropriation with reference to an article on the market . . . might nevertheless be used so long and so exclusively by one producer with reference to his article that in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product; in other words has come to be, to them, his trade name.

3.It is concluded, accordingly, under Rule 4(a)(ii), that Complainant does not have "rights" nor does anyone else, including Respondent, in the domain names at issue, absent their establishment of a "secondary meaning."

4.It becomes unnecessary, accordingly, to determine whether Respondent acted in bad faith in registering the domain names in issue.

DECISION

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE CLAIM OF COMPLAINANT Broadway Trading, LLC AGAINST Gene Weissman BE, AND THE SAME IS, HEREBY DENIED.

Dated: April 25, 2000, by Judge Irving H. Perluss [Retired], Arbitrator.

_______________________________

IRVING H. PERLUSS