DECISION

CyBerCorp Holdings, Inc. v. Jay Allman

Claim Number: FA0403000244090

PARTIES

Complainant is CyBerCorp Holdings, Inc. (“Complainant”), represented by Neil A. Smith, of Howard Rice Nemerovski Canady Falk & Rabkin, P.C., Three Embarcadero Center, 7th Floor, San Francisco, CA 94111-4024.  Respondent is Jay Allman (“Respondent”), 700 Ken Pratt Blvd, Suite 204-212, Longmont, CO 80501.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cybertraderlive.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Paul M. DeCicco as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 5, 2004; the Forum received a hard copy of the Complaint on March 8, 2004.

On March 8, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <cybertraderlive.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 March 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 31, 2004 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@cybertraderlive.com by e-mail.

A timely Response was received and determined to be complete on April 15, 2004.

An Additional Submission from Complainant was received on April 22, 2004, which was after the April 20, 2004 filing cutoff date. The submission was thereby untimely according to ICANN Rule 7. A panel, in its discretion, may choose not to consider a complainant’s additional submission because it does not conform to ICANN Supplemental Rule 7 or to consider untimely submissions.  See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that "[r]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process"); and see Schott Glas and Nec/Schott Components Corp. v. Necschott, D2001-0127 (WIPO Mar. 14, 2001) (choosing not to consider the Response in light of formal deficiencies); see, generally, Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panelist).  Here, excluding Complainant’s untimely optional supplemental submission does not offend due process. Complainant had the opportunity to present its case in the Complaint. However, allowing the submission might be inequitable since Respondent might have relied on Rule 7 in considering whether or not to submit a Sur-Reply. Therefore the Panel will not consider Complainant’s additional submission. 

 

On April 30, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant makes the following claims:

• Complainant is a subsidiary of The Charles Schwab Corporation, along with its well-known co-subsidiary, the brokerage firm Charles Schwab & Company, Inc. Complainant has been offering securities brokerage and investment services and software for securities trading to the public under the CYBERTRADER trademark since November 1995. Complainant adopted the company name CyberTrader, Inc. for its broker-dealer subsidiary in April 2001, and the active trading investment community has come to know Complainant and its trading software by the name “CyberTrader.”

· Complainant is the owner of the following trademarks registered with the U.S. Patent and Trademark Office, with current U.S. Patent and Trademark Office records: CYBERTRADER, CYBERTRADER PRO and  CYBERTRADER UNIVERSITY.  The word marks are registered in international classes 36 (securities brokerage and investment) and 9 (software for financial markets), 36 and 9, and  46 (educational services), respectively. 

· Complainant began using the trademark CYBERTRADER LIVE on December 9 and 10, 2003 for the goods and services listed below, and applied for registration with the U.S. Patent and Trademark Office on January 23, 2004, under Application Serial No. 76/571660 for international classes 36, 9, 38 (providing chat rooms and messaging regarding securities) and 41.

• Complainant did not learn of the existence of the Domain Name until January 27, 2004.

· The domain name <cybertraderlive.com> (“the Domain Name”) is confusingly similar to the registered and common law CYBERTRADER family of trademarks and service marks in which Complainant has rights, and is identical to the common law mark CYBERTRADER LIVE which Complainant adopted in December 2003.

· Complainant contends that Respondent is using the trademark CYBERTRADER LIVE in connection with the offering of online securities trading services and educational services at the active website which resolves from the domain name <cybertraderlive.com>.  These services are identical to the securities trading and educational services offered by Complainant in connection with its CYBERTRADER family of trademarks. This is likely to lead viewers to mistakenly believe that business at the website accessible from the domain name <cybertraderlive.com> is that of Complainant, or affiliated with or endorsed by Complainant. Additionally, Respondent had used Complainant’s logo on the website resolved by the at issue-domain name. The logo has since been removed.

· Respondent has no legitimate interest in the Domain Name.  Respondent is not commonly known by the Domain Name, nor has Respondent acquired trademark or service mark rights in the mark CYBERTRADER LIVE.  Finally, Respondent is not making a legitimate noncommercial or fair use of the Domain Name.

· Respondent originally registered the Domain Name through Domains By Proxy, Inc., a company that offers domain name registration services described as “private registration services,” namely, the ability to register a domain name while keeping the true owner’s name and address hidden from the general public.  Respondent’s use of the proxy service evidences bad faith as does Respondent’s failure to list contact information on its website.

· Respondent registered the Domain Name primarily for the purpose of disrupting the business of Complainant, a competitor. 

· By using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the securities trading services offered at Respondent’s web site.  The unauthorized use of Complainant’s logo on the website was intended to deceive customers, by leading them to mistakenly believe that the website is endorsed by, authorized by, or operated by Complainant. See Exhibit D. 

· Respondent was aware of Complainant’s rights in the CYBERTRADER mark when he registered the Domain Name on September 28, 2003.  (A printout of the Whois record for the Domain Name is attached as Exhibit F).  Respondent was a customer of Complainant’s investment services offered under the CYBERTRADER mark from June 10, 2003, when he opened his account, until January 20, 2004, when he closed his account. Respondent participated in three of Complainant’s online educational courses offered under the CYBERTRADER UNIVERSITY trademark on July 28 and 29, 2003.  Based on his exposure, as a customer, to Complainant’s website, customer materials, and educational materials showing the CYBERTRADER mark.

B. Respondent

Respondent makes the following claims:

• Respondent claims that domain names that begin with "Cyber" are very common and there are many registered domain names that do begin with the word or the text "Cyber". Prior to Complainant’s application for a trademark in CYBERTRADERLIVE and prior registering the domain name, Respondent did a search of the domain name <cybertraderlive.com>with the service provided by Go-Daddy.com and the search resulted in no similar domain names on record.

• Respondent filed for and was granted a 10 year ownership of the domain name <cybertraderlive.com> on September 28th, 2003 by Go-Daddy.com.

• Before there was any notice sent to the Respondent of the dispute, Respondent used the domain name in connection with a bona fide offering of goods or services.

• Respondent has had a full service website in use <cybertraderlive.com> since October, 2003 and also has had a full service operating cyberchat or cybertrading room that connects from a button link on the website <cybertraderlive.com> with members that pay a monthly fee enabling the members to gain access to the cybertrading room since December 3, 2003.

• Respondent did not register or acquire the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.

• Respondent did not register the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. Complainant released several press releases using the name CYBERTRADERLIVE well after respondent filed for ownership of the domain name <cybertraderlive.com>. Respondent did not register the domain name primarily for the purpose of disrupting the business of a competitor.

• Respondent has not intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location. Complainant did not have a website using the domain name <cybertraderlive.com>at the time respondent filed for ownership of the name <cybertraderlive.com>.

• Respondent did not file the domain name <cybertraderlive.com>in bad faith by using the service Domains By Proxy, Inc. This service is provided by Go-Daddy.com at additional costs and was used only to keep respondents private information from being released to the public for the purpose of eliminating or cutting down on junk mail, spam, etc. If respondent was filing the domain name <cybertraderlive.com> in bad faith just for the purpose of selling the domain name, respondent surely would want it's private information made public in order to consummate a sale of the disputed domain name.

C. Additional Submissions

Complainant additionally submitted a “Reply” to the Response. The document was untimely and for the reasons discussed above was not considered.

FINDINGS

Complainant holds a federal trademark registration for the mark CYBERTRADER. The mark was registered on May 14, 2002. Complainant has colorable common law rights in the mark CYBERTRADERLIVE.  Complainant first used the CYBERTRADER word mark in commerce in 1995 and first used CYBERTRADERLIVE in December of 2003.  Complainant has not authorized Respondent to use its trademarks.

Respondent registered the domain name <cybertraderlive.com> in September of 2003 using a proxy service. Notwithstanding the use of a proxy service, Respondent was easily identified through the proxy service.

At the time of registering the domain name, Respondent had actual knowledge of Complainant’s trademark use of the mark CYBERTRADER. Complainant’s federal registration of the mark CYBERTRADER gave Respondent constructive notice of Complainant’s trademark rights therein.

Complainant and Respondent are competitors. Respondent conducts its business using the name CYBERTRADERLIVE. Complainant conducts business using the name CYBERTRADER.

The <cybertraderlive.com> domain name references an active website which offers services in the same area of commerce as does Complainant. The website has at times displayed the Complainant’s registered design (logo) and word mark. Respondent used the Complainant’s design and word marks on Respondent’s website to front a hyperlink to Complainant’s website.

DISCUSSION

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

Complainant has a federal registration for the trademark CYBERTRADER pre-dating the Respondent’s domain name registration. The only difference between the Complaint’s CYBERTRADER mark and the domain name is the concatenated word “live.” The addition is merely adjectival and does not distinguish the domain name from the Complainant’s trademark for the purposes of this proceeding.  See Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to Complainant’s registered SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark).  Therefore, although not identical to Complainant’s registered trademark, the <cybertraderlive.com> domain name and Complainant’s trademark are confusingly similar.

Rights or Legitimate Interests

As discussed above, Complainant has rights in the mark CYBERTRADER and the  <cybertraderlive.com> domain name falls within the penumbra of Complainant’s trademark. Respondent is not a licensee or otherwise authorized to use Complainant’s trademark.

Respondent was aware of Complainant’s trademark at the time he registered the at-issue domain name. He appears to have been a customer of Complainant. Respondent’s choice of a business name and domain name incorporating the Complainant’s trademark was made primarily because of the notoriety of Complainant’s mark and/or with complete disregard Complainant’s trademark rights.  Naming oneself with another’s trademark does not legitimatize the use of the name in a domain name. Therefore, Respondent cannot claim rights in the domain name pursuant to Policy ¶ 4(c)(ii).  See Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus” in its WHOIS contact information); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).

Respondent incorporated Complainant’s word mark to identify a website which markets services similar to Complainant’s services. Respondent is thus not making a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use, pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).

For the reasons stated above the Panel finds that the Respondent lacks any legitimate rights and interests in the <cybertraderlive.com> domain name.

Registration and Use in Bad Faith

Respondent registered the at-issue domain name via a proxy service through registrar Go-Daddy. By using the service, the proxy’s contact information, rather than the registrant-in-fact’s contact information appears on the registration record.  Complainant argues that the use of a proxy registrant is a per se indicator of bad faith. This Panel disagrees. There are numerous benign reasons why one would want to buffer one’s identity or have another control a domain name by using an agent or proxy.

Third parties wanting to direct soliciting mail and email, wanting to defraud domain name owners into changing registrars or to otherwise defraud registrants into transferring their domain name, have used publicly available WHOIS contact information to reach their victims. Often ISPs, web presence providers, web designers or other agents of the principal registrant register a domain name in their own name so that they may maintain control over the domain name or manage the domain name and its related Internet objects for the real registrant-in-interest. Categorically ascribing foul intent to all those using a proxy registrant or proxy service, is simply speculation. Similarly, failing to list contact information on a website may be for innoxious reasons.  Notably, in the instant case the real registrant-in-interest was identified, contacted, and thereafter responded to the complaint.

Nevertheless, Respondent is using the at-issue domain name to reference a website that offers financial services similar to Complainant’s services.  According to Complainant, Respondent had an account with Complainant prior to registering the at-issue domain name and was thus aware of Complainant’s trademark use of CYBERTRADER. Respondent is clearly a competitor of Complainant. Therefore, Respondent appears to have registered and used the domain name to disrupt the business of a competitor, pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Bad faith under Policy ¶ 4(a)(iii) is further demonstrated because Respondent used Complainant’s design mark on Respondent’s website.   By incorporating Complainant’s design mark in the content of its website at <cybertraderlive.com> as a hyperlink to Complainant’s website, Respondent again shows that he had actual notice of Complainant’s trademark.  See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also  Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). 

Finally, Respondent’s use of the <cybertraderlive.com> as a website address creates a likelihood of confusion intended to attract Internet users for commercial gain, pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant). Moreover, Respondent’s use of the Complainant’s design and word mark on its website enhances the likelihood that visitors will be confused or fooled into believing that Complainant sponsors or endorses the Respondent’s website and the services thereby offered.

 

The registration and use of the domain name under the circumstances and in the manner discussed above demonstrates bad faith as proscribed under the ICANN’s UDRP.

DECISION

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

Accordingly, it is Ordered that the <cybertraderlive.com> domain name be TRANSFERRED from Respondent to Complainant.

Paul M. DeCicco, Panelist
Dated: May 14, 2004

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