DECISION

DLJ Long Term Investment Corporation v. Lauren O'Leary

Claim Number: FA0211000129126

PARTIES

Complainant is DLJ Long Term Investment Corporation, Chicago, IL (“Complainant”) represented by James E. Griffith, of McDermott, Will & Emery.  Respondent is Lauren O'Leary, New York, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <stockscan.org>, registered with Register.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.

Judge Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 4, 2002; the Forum received a hard copy of the Complaint on November 6, 2002.

On November 5, 2002, Register.com confirmed by e-mail to the Forum that the domain name <stockscan.org> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.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 November 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 27, 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@stockscan.org by e-mail.

A timely Response was received and determined to be complete on November 27, 2002.

Complainant’s additional submissions were received late on December 3, 2002.

On December 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Since March 1997, Complainant, its predecessors, and its licensees have adopted and continually used the mark STOCKSCAN in commerce in connection with the services listed in the Certificate of Registration, namely, “providing financial information, and providing access information and tools to asset investors in the selection of securities and investments via a global computer information network.”

2. As a result of Complainant’s widespread, long-time, continuous, and prominent use, the STOCKSCAN mark has acquired significant goodwill and wide public recognition within its field as a means by which Complainant and its services are known to the public and their source and origin are identified.

3. The service mark STOCKSCAN was registered on August 1, 2000, with the United States Patent and Trademark Office and is a valid, subsisting, and uncancelled registration, of which Complainant is the owner.  The application for the service mark was filed on June 10, 1997.

4. The disputed domain name <stockscan.org> is identical to and confusingly similar to the Complainant’s STOCKSCAN mark in the financial services field.

5. Respondent does not have rights or a legitimate interest in the disputed domain name because she is not using the disputed domain name in connection with a bona fide offering of goods or services under the STOCKSCAN mark, but is passively holding the name.  Respondent has owned the disputed domain name for over two years, but has never used the name in connection with any active website.

6. There is no evidence of any use of the mark STOCKSCAN anywhere on Respondent’s web page.  Respondent does not offer any goods or services under the STOCKSCAN trademark.  Nor is Respondent known as STOCKSCAN, either as a business, individual, or other organization.

7. A consumer who enters <stockscan.org> into a web browser does not even access a website operated by Registrant.  Rather, Respondent is instead linked to the generic <register.com> website.  Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.  Rather, Respondent is squatting on the domain name corresponding to Complainant’s distinctive STOCKSCAN service mark and preventing the name’s legitimate use by the owner of the corresponding trademark.

8. Respondent also is soliciting bids for the domain name in connection with the <stockscan.org> website, further evidencing Respondent’s lack of any rights or legitimate interests in the disputed domain name.

9. Respondent registered the disputed domain name in bad faith because she knew, or should have known, that the disputed domain name was identical to a registered trademark.  Nevertheless, she proceeded to register the domain name demonstrating bad faith.

10. Respondent has no legitimate interest in the disputed domain name.  She passively sits on the name, seeking to sell the registration through the solicitation of offers on the linked website.  Respondent’s actions injure Complainant through the wrongful appropriation of the disputed domain name corresponding to Complainant’s service mark.

B. Respondent

1. Respondent concedes that the disputed domain name is identical to Complainant’s service mark, STOCKSCAN.

2. Respondent denies, however, that she registered the disputed domain name with knowledge of Complainant’s STOCKSCAN mark.  To the contrary, until served with Complainant’s Complaint, Respondent was unaware of Complainant’s STOCKSCAN mark.

3. Respondent denies that by registering the disputed domain name she has created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  To the contrary, the term “stockscan” is commonly usually used in the investment and trading community to describe a method by which stocks and other securities are evaluated for investment purposes.  Moreover, the term “stockscan” is generic and not uniquely associated with Complainant.  In addition, the term “stockscan” also is used outside the investment community.

4. Respondent has rights and a legitimate interest in the disputed domain name because she is a securities trader who registered the disputed domain name on February 23, 2000, with the intention of utilizing the name in connection with her business.  She is not currently using the disputed domain name as a result of the ongoing economic and securities market downturn, but intends to do so in the future once economic and securities market conditions improve.

5. Respondent denies that she is soliciting bids for the <stockscan.org> domain name registration or that she has ever offered to sell the disputed domain name registration to Complainant or to Complainant’s competitors.  To the extent that the <register.com> website implies or suggests that the disputed domain name is for sale, such offer of sale was made or is being made without Respondent’s knowledge or permission.  Respondent has no intention of selling the disputed domain name registration inasmuch as she intends to utilize the name in connection with her business once economic and securities market conditions improve.

C. Additional Submission by Complainant

1. Respondent admits that she has never used the trademark STOCKSCAN and offers no evidence that she is known as or does business under the STOCKSCAN trade name.

2. Respondent asserts that although she has held the disputed domain name for over two and a half years, “the on-going economic and securities market downturn” has prevented her from exploiting the disputed domain name.

3. She contends that her registration was not in bad faith because she has a continuing intention of eventually one day using the domain name in connection with her securities trading business, a use which is entirely encompassed in Complainant’s federal registration for the STOCKSCAN mark.  Respondent had no interest in the STOCKSCAN mark or trade name in the financial services field prior to the effective date of Complainant’s registration, June 10, 1997.

4. The passive holding of a domain name consisting of the trademark of another constitutes bad faith.  This is particularly so in light of Respondent’s operations as a securities trader in the same field as Complainant, and Respondent’s intention to use the domain name in a manner that will infringe Complainant’s trademark rights.

5. Respondent further contends that her registration was not in bad faith because she was ignorant of Complainant’s registered mark in the financial services field.  Under 15 U.S.C. Section 1091, Respondent is charged with constructive knowledge of Complainant’s rights in the STOCKSCAN mark as of the date of registration.

6. Respondent asserts that the term STOCKSCAN “is generic and not uniquely associated with Complainant.”  In support of this contention, Respondent lists several web addresses that purport to show use of the term to describe “a method by which stocks and other securities are evaluated for investment purposes.”  Each of these domain names are being used in a non-trademark manner or there is an agreement with Complainant for the trademark usage.

7. The disputed domain name does not appear in any dictionary nor does it have any characteristics of a generic term.

8. In any event, Complainant is under no obligation to pursue all infringement matters at once, although it has been diligent, as a matter of policy, in protecting its trademark rights in the STOCKSCAN mark and other marks both through litigation and arbitration.

FINDINGS AND CONCLUSIONS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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

This element has been conceded by Respondent.

Rights or Legitimate Interests

As will be seen, the Panel has found that Respondent registered and used the disputed domain name in bad faith.  It follows, accordingly, that she has no rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

There are two basic justifications urged by Respondent for her registration and use in good faith of the disputed domain name.

The first is that the disputed domain name is generic.  If it were, Professor McCarthy teaches us:

“The concepts of ‘generic name’ and ‘trademark’ are mutually exclusive.  Thus, if, in fact, a given term is ‘generic,’ it can never function as a mark to identify and distinguish the products of only one seller.”  (2 McCarthy (4^th ed. Updated 6/2002) p. 12-15, Trademarks and Unfair Competition.)

The difficulty confronting Respondent is that she must carry the burden of producing “sufficient evidence” of genericness.  (2 McCarthy, supra, p. 12-29.)  This is because “. . . if the trademark owner has a federal registration, it constitutes a strong presumption that the term is not generic . . .”.  (Ibid.)

While Respondent has tried, in the Panel’s opinion she has not carried her burden.  See Surgicenters of Am., Inc. v. Medical Dental Surgeries Co., [1979] USCA9 890; 601 F.2d 1011 (9^th Cir. 1979) (particularly Judge Goodwin’s dissent at 1020, relating to the requirements of proof of genericness).

While there appears to be some generic use by Complainant’s competitors, the use further has been challenged by Complainant or it was licensed or explained.  There is no dictionary definition of the term “stockscan.”  Respondent has not presented any evidence of media usage, testimony of persons in the trade or consumer surveys, all of which would have been useful in the Panel’s determination of the factual genericness issue.

Respondent’s second justification of its registration and use of the disputed domain name in good faith is that she was not aware of Complainant’s registration of its mark.[1]

The justification, however, is not sufficient because Respondent had constructive, if not actual, notice of Complainant’s registered mark.

In Pink, The Internet & E-Commerce Legal Handbook (2001) 211, prospective domain name registrants are admonished:

“Conduct a thorough search before selecting your trademark and domain name.  There is a significant exposure to liability if you use a domain name or trademark that is confusingly similar to another’s trademark.  The best practice is to conduct a thorough search, have that search reviewed by counsel, and pick a name for which you have secured clearance.  If the domain name is not available, then you should consider acquiring that name.”  (Emphasis in original.)

Indeed, there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademark, actually or constructively.

In Interstellar Starship Services, Ltd. v. Epix, Inc., [1999] USCA9 357; 184 F.3d 1107, 1111 (CA 9^th 1999), it was said:

“However, ISS became aware of the ‘EPIX’ trademark when it applied for its own registration of ‘EPIX.’  Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive.  See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, [1993] USCA9 3170; 6 F.3d 1385 (9^th Cir. 1993)).  In turn, intent to deceive is strong evidence of a likelihood of confusion.  Sleekcraft, 550 F.2d at 354.”

Thus, the domain name in issue was registered in bad faith.  Respondent, however, apparently argues that she actually has not used the domain name in issue in bad faith because of the declined stock market and, accordingly, the name could not have been used in “bad faith.”

The Panel heretofore has determined that Respondent has no rights or legitimate interest in the domain name, and that it has registered the name in bad faith.  It makes no sense whatsoever to wait until it actually “uses” the name, when inevitably, when there is such use, it will create the confusion described in the Policy.

Under similar circumstances, a preliminary, mandatory injunction was granted by a federal court requiring the transfer of a domain name even though a website had not yet been opened.  Green Prods. Co. v. Independence By-Products Co., 992 F.Supp. 1070 (N.D. Iowa 1997).  The threatened harm is “use.”  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum, Dec. 29, 2000); Bloomberg LP v. Peter Schorsch, FA 96576 (Nat. Arb. Forum, Mar. 19, 2001); Hungry Minds, Inc. v. Mall for Dummies, FA 96635 (Nat. Arb. Forum, April 4, 2001).

In any event, there is “use” because Respondent has “passively held” the disputed domain name since its registration.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of  ¶ 4(a)(iii) of the Policy); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1049 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

The Panel finds and determines, accordingly, that Respondent registered and used the domain name in issue in bad faith.

DECISION

Based on the above findings and conclusions and pursuant to Policy ¶ 4(i), it is decided that the domain name <stockscan.org> registered by Respondent, Lauren O’Leary, shall be and the same is TRANSFERRED to Complainant, DLJ Long Term Investment Corporation.

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated: January 14, 2003

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