DECISION

Barclays Global Investors, N.A. v. SocialFunds.com, LLC  n/k/a SRI World Group, Inc.

Claim Number: FA0309000196046

PARTIES

Complainant is Barclays Global Investors, N.A., San Francisco, CA (“Complainant”) represented by Melanie J. Lerch, of Loeb & Loeb, LLP,  10100 Santa Monica Blvd., Suite 2200, Los Angeles, CA  90067.  Respondent is SocialFunds.com, LLC n/k/a SRI World Group, Inc., Battleboro, VT (“Respondent”) represented by Frank P. Fitzgerald, 1391 Main St., Suite 600, Springfield, MA  01103.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ishareowner.com>, registered with Bulkregister.Com.

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.

David E. Sorkin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 15, 2003; the Forum received a hard copy of the Complaint on September 15, 2003.

On September 17, 2003, Bulkregister.Com confirmed by e-mail to the Forum that the domain name <ishareowner.com> is registered with Bulkregister.Com and that the Respondent is the current registrant of the name. Bulkregister.Com has verified that Respondent is bound by the Bulkregister.Com 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 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 13, 2002 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@ishareowner.com by e-mail.

A timely Response was received and determined to be complete on October 9, 2003.

A proposed Additional Submission was received by the Forum from Complainant after the deadline for such submissions according to the Forum’s Supplemental Rule 7.  Paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) vests the discretion to request and accept supplemental materials solely with the Panel.  The Complainant did not submit a separate statement of grounds for consideration of the proposed Additional Submission, requiring the Panel to review the substance of the document in order to determine whether it is comprised substantially of material that could not reasonably have been included in Complainant’s initial submission.  The Panel has conducted such a review and concludes that this standard has not been met, and therefore declines to consider the tendered document on this ground, without regard to its apparent untimeliness.

On October 23, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a very large investment management firm; among the investment products it offers is a family of exchange-traded funds called iShares.  Complainant owns trademark rights in ISHARES (U.S. trademark registration number 2,422,249, Principal Register, registered January 16, 2001), and spends $11 to $14 million annually promoting the iShares fund family.

Complainant contends that the disputed domain name <ishareowner.com> is confusingly similar to its ISHARES mark.  Complainant further contends that Respondent lacks rights or legitimate interests with respect to the disputed domain name, on the grounds that, inter alia, Respondent’s use of the disputed domain name significantly postdates Complainant’s first use of its ISHARES mark, and Respondent is using the disputed domain name to misleadingly divert consumers from Complainant’s website for commercial gain, thereby tarnishing and diluting Complainant’s mark.  Finally, Complainant alleges that Respondent registered and is using the disputed domain name in bad faith, based upon Respondent’s lack of rights or legitimate interests in the name, Respondent’s actual or constructive knowledge of Complainant’s mark at the time the disputed domain name was registered and Respondent’s offer to transfer ownership of the disputed domain name to Complainant in exchange for a payment of $100,000.

B. Respondent

Respondent is a small company that provides information to socially responsible investors.  One group targeted by Respondent is institutional investors; Respondent claims that the disputed domain name <ishareowner.com> represents an abbreviation of “i[nstitutional] shareowner” and since November 2001 has been used in this descriptive sense for the purpose of reaching this group.  Respondent contends that the disputed domain name therefore is not confusingly similar to Complainant’s ISHARES mark.  Respondent further contends that this descriptive use has occurred in connection with a bona fide offering of goods and services, in a “completely separate universe” from Complainant, and that Respondent therefore has legitimate interests with respect to the disputed domain name.  Finally, Respondent contends that its purposes for registering and using the disputed domain name have been entirely legitimate, and therefore Respondent neither registered nor has used the name in bad faith.  Respondent claims that its offer to transfer the domain name for $100,000 ought not be considered as evidence of bad faith because that sum represents a fair price for the domain name, and because the offer was made by counsel for Respondent in the course of legitimate settlement negotiations.

FINDINGS

The Panel declines to enter a finding on the question of confusing similarity.

The Panel finds that Complainant has failed to sustain its burden of proof on the remaining questions, rights or legitimate interests, and registration and use in bad faith.

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.”

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

Confusing similarity presents a close question in this case.  The disputed domain name does indeed incorporate Complainant’s ISHARES mark (minus the letter “s”), and appends it to a single word, “owner,” that could be considered generic.  On the other hand, the disputed domain name is arguably less suggestive of Complainant’s mark (i.e., “iShare owner”) than of Respondent’s descriptive intent (“i shareowner”).

Respondent’s motivations are, of course, irrelevant in the determination of whether the disputed domain name is confusingly similar to Complainant’s mark.  But Complainant bears the burden of proving confusing similarity, and the mere fact that the mark occurs within the domain name is not dispositive.  Here, there are two plausible readings of the disputed domain nane, and the one that is confusingly similar is, in the Panel’s view, the less plausible of the two.  Whether this level of confusion is sufficient depends on how broadly the confusing similarity requirement is interpreted.

There seems to be relatively little harm in applying the confusing similarity requirement fairly broadly, since similarity that occurs purely by happenstance rather than design should preclude a finding of bad faith registration anyway.  On the other hand, a stricter interpretation of the confusing similarity requirement may be appropriate under domain name dispute resolution policies that have a disjunctive bad faith requirement but otherwise are similar to the UDRP, and it makes little sense to interpret the confusing similarity requirement differently depending upon what other elements appear in a particular policy.  Rather than attempting to reconcile these competing interests, in light of the fact that the remaining elements are dispositive of the present matter, the Panel declines to enter a finding on the question of confusing similarity.

Rights or Legitimate Interests

The question of rights or legitimate interests, in contrast, is quite straightforward.  Based upon the record before the Panel, it appears that Respondent is making a bona fide commercial use of the disputed domain name in a manner that is descriptive of the services offered by Respondent, with any similarity between the domain name and Complainant being merely coincidental.  It may well be the case that Respondent’s activities somehow violate some rights of Complainant.  But there is insufficient evidence thereof available in this proceeding to rebut an inference of legitimacy.  That is not indicative of any failure by Complainant or its counsel, but merely of the inherently limited scope and summary nature of the UDRP process.  A proceeding such as this simply cannot competently resolve such complex questions of trademark law, nor was it ever intended to do so. See Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>, ¶ 4.1(c) (noting that "the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is

subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark)"). In many cases it is readily apparent that a domain name registrant’s activities are infringing or pretextual; but such is not the case here.

 

The Panel finds that Complainant has failed to meet its burden of proving that Respondent lacks rights or legitimate interests with respect to the disputed domain name.

Registration and Use in Bad Faith

The questions of rights or legitimate interests and bad faith registration and use are largely linked in this case, and the Panel’s inclination to accept Respondent’s claim that the disputed domain name was intended to represent “i shareowner” rather than “iShare owner” practically compels a finding of no bad faith.

But two points argued by the parties merit further discussion:  First, Complainant argues that a finding of bad faith registration can properly be based upon Respondent’s actual or constructive knowledge of Complainant’s mark.  The Panel rejects the view that constructive knowledge is (or can ever be) sufficient.  In many cases it may be possible to infer that a domain name registrant had actual knowledge of a preexisting trademark; but that is not at all the same as finding bad faith based upon mere constructive knowledge (which, for example, might be based upon the existence of a trademark registration record for an obscure mark). 

Second, Respondent contends that the existence of its offer to transfer the disputed domain name to Complainant, made by counsel in the course of settlement negotiations that ultimately failed, ought not be admissible before the Panel.  Although the timing and circumstances of the offer cast substantial doubt on its probative value, the offer is of course admissible in view of the informal nature of this proceeding.  Even if the offer were indicative of a scheme to use the disputed domain name in bad faith, however, it is not sufficient to dissuade the Panel from its conclusion that the domain name was initially selected for reasons entirely unrelated to Complainant or its mark—which precludes a finding of bad faith registration.

DECISION

Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

David E. Sorkin, Panelist
Dated:  November 5, 2003

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