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Salomon Smith Barney Inc. v. Sau Wong d/b/a Smart Ideas [2001] GENDND 1248 (28 June 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Salomon Smith Barney Inc., a New York corporation, with a place of business in New York, New York, USA ("Solomon").

Respondent is Sau Wong d/b/a Smart Ideas, PO Box 808, Cupertino, California 95015, USA (Sau Wong).

The domain name in issue is <ssbdirect.com>.

The registrar is Network Solutions Inc., Herndon, Virginia, USA ("NSI").

The WIPO Arbitration and Mediation Center (the Center) received Salomon’s complaint via email on April 19, 2001, and via hard copy on May 7, 2001. (Salomon advised the Center via email on April 18, 2001 that, because Salomon was unable to transmit the complaint via email, on April 18, 2001 Salomon had transmitted the complaint by mail to NSI and to Sau Wong.) The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Salomon made the required payment to the Center. The formal date of the commencement of this administrative proceeding is May 8, 2001.

On April 23, 2001, the Center transmitted via email to NSI a request for registrar verification in connection with this case. On April 24, 2001, NSI transmitted via email to the Center NSI’s confirmation that (1) NSI had received the complaint from Salomon, (2) Smart Ideas is the registrant of the domain name in issue, (3) the Administrative Contact and the Billing Contact are Sau Wong, c/o Smart Ideas, 1469 Primrose Way, Cupertino, CA 95014, with a fax number and a telephone number, (4) the NSI service agreement version 4.0 is in effect (thus, the Policy applies to the domain name), and (5) the current status of the domain name registration is "active."

On April 27, 2001, the Center requested via email that Salomon amend the complaint in regard to Solomon’s consent to jurisdiction in line with NSI’s service agreement version 4.0. On April 30, 2001, Salomon submitted via email to the Center an amendment to the complaint, with copy to Sau Wong.

On May 8, 2001, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to Sau Wong via email, facsimile and post/courier. In the Notification, the Center advised that the response was due by May 27, 2001, pointed out the response should be in accordance with specified rules, and described the consequences of a default if the response was not sent by May 27, 2001, including inter alia that an Administrative Panel would be appointed to review the facts and decide the case, and the Panel may draw appropriate inferences in the event of default. It appears from WIPO records that the emailed Notification was delivered to Sau Wong. It appears also that the copies transmitted via courier to Sau Wong and to Smart Ideas were refused or otherwise returned to the courier.

On May 28, 2001, the Center transmitted via email to Sau Wong and to the Technical Contact a Notification of Respondent Default, advising Sau Wong inter alia (1) it had failed to comply with the deadline for submissions of a response, (2) the Center would proceed with the appointment of an Administrative Panel, (3) the Panel would decide in its discretion whether to consider a response if one were to be submitted later.

On June 15, 2001, the Center advised the parties via email of the appointment of David W. Plant as Panelist, and that the decision was due June 28, 2001.

The complaint is based on the service mark "SSB Direct". Salomon avers that SSB Direct is a common law service mark.

Salomon avers that the mark is used for financial services, viz. providing financial information required for investment research over a global information network. Salomon assert SSB Direct is used interchangeably with "Salomon Smith Barney Direct", a registered mark. Salomon avers that it has "sought to internationally protect the service mark SSB (U.S. Application No. 75/648553, Filed 2/25/99), which is used interchangeably with Salomon Smith Barney in twenty-five (25) countries." Specimens evidencing the use of the SSB Direct mark are said to appear at Annex C to the complaint.

Salomon avers that it has used "the mark" (presumably, SSB Direct) in commerce since 1998 "thereby acquiring common law rights by the time the domain name was registered [May 13, 1999]."

Salomon avers that all three elements of Policy, Paragraph 4.(a) are met because:

1. the domain name in issue is identical or confusingly similar to a trademark or service mark in which Salomon has rights,

2. respondent has no rights or legitimate interests in the domain name; and

3. the domain name was registered and is being used in bad faith.

Salomon asserts the domain name at issue is identical to "the service mark in which [Salomon] has rights [presumably, SSB Direct]." Salomon acquired common law rights in the mark by the time the domain name was registered May 13, 1999. Salomon notes that protection under the Policy extends to unregistered marks, citing WIPO Cases Nos. D2000-0205, D2000-0743, and D2000-0210.

Salomon avers that on January 2, 2001, Salomon sent a cease and desist letter to "Respondent", together with an NSI Domain Name Transfer Form. Salomon asserts this was "in an effort to resolve this matter amicably and without legal process." Salomon asserts that, on February 1, 2001, the "father of Respondent" telephoned Salomon "indicating that he, as well as his children, have accounts with the Complainant (Complainant has confirmed this ... )." Salomon avers the father

"... clearly stated that he conducted a trademark search using the United States Patent & Trademark Office Database and noticed that the Complainant did not seek federal trademark protection for the service mark SSB Direct. It is upon noticing this that he said he decided to register the domain name"

Salomon asserts it has not authorized Sua Wong to use "its service mark or to apply for any domain name incorporating use of the mark SSB Direct." Accordingly, Salomon contends Sua Wong "cannot demonstrate any rights and legitimate interests in the domain name."

Salomon avers that, in performing the trademark search, "Respondent" necessarily became aware of the mark "Salomon Smith Barney Direct", and as a client, "Respondent" cannot claim he "is not aware that [Salomon] also uses the mark SSB as its company name." Salomon contends it is clearly evident that Sua Wong "knowingly and purposefully chose a name that is identical to [Salomon’s] common law trademark." Salomon asserts this is the kind of conduct the Policy was designed to address, and this conduct "effectively prevents [Salomon] from using the domain name, and consequently, disrupts [Salomon’s] business." Salomon cites WIPO Case No. D2000-0392.

Salomon avers that "the father ... claimed ... the business Smart Ideas is a legitimate business that he and his son run ‘on the side’ and that they are not using nor have any intentions to use the domain name www.ssbdirect.com." Salomon asserts neither the father nor respondent has offered any explanation as to why respondent registered the domain name.

Salomon asserts that a printout dated April 2, 2001, at Annex D to the complaint, of a page from the website demonstrates that the domain name in issue is inactive, "thus proving ... [Sua Wong] does not intend to use the domain name in connection with a bona fide offering of goods or services." Salomon concludes that (1) the lack of commercial activity at the website, and (2) Sua Wong’s refusal "to voluntarily transfer the domain name to [Salomon], clearly demonstrates that the primary purpose of registration was to sell it to [Salomon], a competitor of [Salomon] or anyone interested." Salomon cites WIPO Case No. D2000-0690.

Salomon contends that Sua Wong’s "passive holding of the domain name should be considered having been used in bad faith," quoting from the WIPO Telstra decision, WIPO Case No. D2000-0003, and citing WIPO Cases Nos. D2000-0042, D2000-0055, and D2000-0196.

Salomon concludes from "all of the above, it is impossible to conceive, by any stretch of the imagination, that the Respondent registered the domain name in good faith."

Salomon requests that the domain name in issue be transferred to Salomon.

The complaint concludes with the requisite certificate as to completeness and accuracy and is signed by Salomon’s counsel.

In light of respondent’s failure to respond, the Panel has elected to decide this dispute based upon the complaint. Rules, Paragraphs 5.(e) and 14.(a).

Paragraph 4.(a) of the Policy directs that Salomon must prove, with respect to the domain name in issue, each of the following:

(i) The domain name in issue is identical or confusingly similar to a mark in which Salomon has rights, and

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

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4.(b) of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4.(a)(iii) above, if proved by a complainant, shall be evidence of a respondent’s registration and use of a domain name in bad faith.

Paragraph 4.(c) of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii) above.

The Panel has assured itself that the parties have been treated with equality and respondent has been given a fair opportunity to present its case. Rules, Paragraph 10.(b). Accordingly, in the Panel’s view, respondent has been afforded due process.

Salomon has the burden of proving this element and each of the other two elements of Paragraph 4.(a) of the Policy. It is especially important in a default situation that a complainant meet its burden of proof.

Salomon contends that its service mark SSB Direct and Sua Wong’s domain name are identical. Salomon does not assert that the domain name is confusingly similar to any of Solomon’s marks referred to in the complaint. Identity between "SSB Direct" and the domain name is self-evident.

The matter of Salomon’s alleged common law rights in the mark SSB Direct is more complicated. Salomon has obtained a United States Patent and Trademark Office (USPTO) registration on the service mark "Salomon Smith Barney Direct". Salomon has applied for a USPTO registration on the service mark "SSB". However, Salomon avers it has not sought to register the mark in issue, i.e. "SSB Direct", relying instead solely on alleged common law rights.

Salomon is correct in asserting that the Policy protects common law trademarks and service marks. However, Salomon has the burden of proving it holds such rights in the SSB Direct mark. Salomon contends it has used the mark in commerce since 1998. This naked assertion is not supported by any of the usual contemporaneous documents associated with the use of a mark. Salomon has supplied the Panel in Annex C with only the following:

1. What appears to be a cover sheet from a July 2000 primer on "The ABCs of CDO Equity". A note in the lower left corner of the cover directs the reader to "SSB Direct" to access the report electronically. This use of SSB Direct is as an Internet address and not as a service mark.

2. Undated color copies of what appear to be website screens reproduced on 13 pages in Annex C. "SalomonSmithBarney Direct" appears on the upper right hand corner of each of those pages. By the Panel’s count, "SSB Direct" appears on six of the pages, twice as a noun, once as a modifier of "commentary and research", once as a modifier of "customers", and three times as a modifier of "team". In none of these uses, at least as discerned by the Panel, has the term "SSB Direct" be identified in any way as a service mark or as associated with any specific services. Of course, when used as a noun, a term ordinarily cannot acquire trademark or service mark status. Indeed, the use of an alleged mark as a noun may destroy trademark or service mark rights otherwise attributable to the term.

In addition to the dearth of assistance to the Panel from the Annexes to the complaint, Salomon’s February 1999 USPTO application to register the term "SSB" as a service mark is an intent to use application. It strikes the Panel as at least odd that, as of February 1999, Salomon filed an intent to use application on "SSB", when in this proceeding Salomon makes the naked assertion that it has used the term "SSB Direct" as a service mark since 1998. This is especially curious in light of Annex C, where the only dated use of "SSB Direct" is July 2000, as an Internet address.

On the other hand, Salomon is helped by the certificate of accuracy at the end of the complaint, and the lack of challenge from Sau Wong, as to Salomon’s common law rights since 1998 in the alleged service mark "SSB Direct".

On balance, for purposes of this specific proceeding in this specific forum, the Panel finds that Salomon currently has common law rights in the service mark "SSB Direct" that are protectable under the Policy.

Accordingly, Salomon has carried its burden on this element of Paragraph 4.(a).

Salomon has demonstrated the lack of any right or interest in the mark or the domain name on the part of respondent.

Salomon has averred without contradiction that respondent’s father has stated that Sau Wong has not used and has no intention of using the domain name in issue. The April 2, 2001, print out from the page at the <ssbdirect.com> address confirms that the site is not in use.

Salomon has averred, without contradiction, that Sau Wong registered the domain name without any authorization from Salomon.

Here, also, Salomon has carried its burden of proof

In appropriate circumstances, bad faith registration and use of a contested domain name can be inferred from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by Salomon.

The Panel finds that Salomon has proven that respondent’s conduct evidences bad faith registration and use under the Policy.

Salomon avers without contradiction that Sau Wong’s father stated he conducted a search in the USPTO data base and found that Salomon had not sought federal trademark protection of "SSB Direct". (This, of course, should not have ended the father’s search, because the Policy protects common trademarks and service marks as well as registered marks.) Thereafter, it appears that Sau Wong and his father decided to register the name. The foregoing, plus Sau Wong’s failure to use the domain name, and his father’s alleged intention not to use the domain name, support the inference that Sau Wong registered the domain name to prevent Salomon from reflecting SSB Direct in a corresponding domain name and to disrupt the business of Salomon. (It is not clear on this record when Salomon began using the Internet address <direct.sbi.com> which appears on documents in Annex C.)

None of Salomon’s averments or the inferences drawn by the Panel fits precisely any of the four elements of the Policy, Paragraph 4.(b). Notwithstanding that Salomon contends the Sau Wong’s "primary purpose" in registering the domain name was to sell it to Salomon, a Salomon competitor, or someone else, this record does not support such an inference (Paragraph 4.(b)(i)). Nor is there evidence that Sau Wong engaged in a pattern of registering domain names based on the marks of others (Paragraph 4.(b)(ii)), or Sau Wong is a competitor of Salomon(Paragraph 4.(b)(iii)), or Sau Wong has attempted to attract for commercial gain Internet users to the site (Paragraph 4. (b)(iv)). Nevertheless, Sau Wong’s conduct over all compels the inference that the registration and "passive" use of the domain name have been in bad faith. On this record, no plausible conclusion other than bad faith as to both registration and use is possible.

In light of the findings by the Panel, the Panel decides that Salomon has met its burden of proof with respect to each of the three elements of Policy, Paragraph 4.(a).

Accordingly, the Panel requires that the registration of the domain name <ssbdirect.com> be transferred to Salomon.

David W. Plant
Panelist

Dated: June 28, 2001