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National Futures Association v. John L. Person [2005] GENDND 1449 (15 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Futures Association v. John L. Person

Case No. D2005-0690

1. The Parties

The Complainant is National Futures Association, Chicago, Illinois, United States of America, represented by Brinks Hofer Gilson & Lione, United States of America.

The Respondent is John L. Person, Palm Beach, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nationalfutures.com> (“Disputed Domain Name”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2005. On June 30, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 1, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2005. The Response was filed with the Center on July 21, 2005.

The Center appointed Mark Partridge as the sole panelist in this matter on July 29, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a non-profit self-regulatory organization. It is an independent provider of regulatory programs relating to the U.S. derivatives market. With limited exceptions, every firm or individual who conducts futures-related business with the public in the U.S. is required to be registered with the Commodity Futures Trading Commission and must be a member of Complainant. Complainant has approximately 4200 members and 50,000 associate members.

Complainant has used the name and mark NATIONAL FUTURES ASSOCIATION since at least 1979, in various forms including the abbreviation NFA. Complainant owns federal registrations for the mark NFA, owns a supplemental federal registration for the mark NATIONAL FUTURES ASSOCIATION and a pending application for NATIONAL FUTURES ASSOCIATION.

The name and mark NATIONAL FUTURES ASSOCIATION has been widely used in promotional materials for Complainant.

Respondent has been involved in the futures and options trading industry for over twenty years. He is an author, commentator and instructor on futures trading. He is the former president and owner of First National Futures Group, Inc.

Respondent has been affiliated with Complainant since 1982. In 1999, he obtained the Domain Name and began sending out advertisements displaying the Domain Name. As a registered Associate Member of Complainant, Respondent submitted proofs of his advertisements to Complainant on many occasions from 1999 on. The advertisements were reviewed by Complainant’s staff, given references numbers confirming review, and were not rejected.

In 2004, Complainant sent Respondent a notice of non-compliance with association rules regarding the documentation required for customer testimonials displayed on his website. The notice did not address Respondent’s use of the Domain Name.

Complainant first objected to the use of the Domain Name in April 2005.

Respondent is no longer a member of Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has trademark rights in the name and mark NATIONAL FUTURES ASSOCIATION and that the Domain Name is confusingly similar. Complainant contends that Respondent lacks any right or legitimate interest in the Domain Name because he is not authorized to use the NATIONAL FUTURES mark. Because he is not licensed or otherwise permitted to use that mark, Complainant contends Respondent is not making a bona fide offering of goods and services. Finally, Complainant asserts that the Domain Name was registered and used in bad faith because it is likely to create confusion with Complainant and because respondent has failed to maintain proper contact information with the Domain Name registrar.

B. Respondent

Respondent contends that Complainant has failed to prove that the Domain Name is identical or confusingly similar to a mark in which Complainant has rights, noting that Complainant’s alleged mark is not the subject of an enforceable registration. Respondent also contends that it has a right and legitimate interest in the Domain Name because he has used the name for a site offering goods and services since 1999, and that Complainant was aware of such use and did not object until 2005. Finally, Respondent asserts that he prominently used the Domain Name since 1999 for his business without any instances of confusion and that he picked the Domain Name because he provides services that relate to national futures.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has presented sufficient evidence to establish common law rights in the name and mark NATIONAL FUTURES ASSOCIATION (“Complainant’s Mark”). Although the supplemental registration and pending application for registration of that mark do not establish any enforceable rights, it appears that Complainant has widely used and promoted the name since at least 1979. This long use creates common law rights in the mark that will be recognized under the Policy. Blue Cross and Blue Shield Assoc., WIPO Case No. D2005-0209.

The Domain Name is identical to the first two words of Complainant’s Mark and is confusingly similar to Complainant’s Mark. The addition of the weak, descriptive term ASSOCIATION is not sufficiently distinguishing to avoid a finding of confusing similarity.

B. Rights or Legitimate Interests

Complainant has presented a prima facie case indicating that Respondent is not authorized to use Complainant’s mark in the advertising or promotion of its services. The parties agree that there is no provision in Complainant’s policies that allow any member or other party “to use the phrase NATIONAL FUTURES ASSOCIATION or any confusingly similar phrase as a trademark or service mark in connection with the futures industry, including but not limited to, use as a domain name”. (quoting Complainant).

Respondent, however, does not claim that it derives rights in the Domain Name as a result to authorization by Complainant. Instead, Respondent contends that it adopted the Domain Name in good faith because it is descriptive of his services, and that he made a bona fide offering of goods and services under the Domain Name for many years before having any notice of an objection from Complainant.

The Policy states that the Respondent may demonstrate rights or a legitimate interest in the Domain Name by showing “before any notice to the Respondent of the dispute, the Respondent’s use of . . . the domain name in connection with a bona fide offering of goods or services”.

It is apparent here that Respondent used the Domain Name to develop a substantial seminar and publishing business before having any objection from Complainant.

Although use in connection with the sale of goods or services is apparent, our inquiry must go further since not all such use qualifies as bona fide use. “To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” Ciccone v. Parisi, WIPO Case No. D2000-0847.

Here, Respondent’s use of NATIONAL FUTURES does not appear to be an intentional infringement of Complainant’s rights. Instead, his selection of the name seems to be an apt descriptive choice for his business. The name is not identical to Complainant’s name, and Respondent apparently adopted it with the belief that it was not an infringement of Complainant’s rights, as suggested by the fact that he submitted materials using the Domain Name to Complainant for review, something one would not do if engaged in intentional infringement. Moreover, Complainant reviewed and approved advertising by Respondent using the Domain Name for several years without objecting.

A lack of bona fide use might also be present if Respondent’s use of the Domain Name had been prohibited by Complainant’s rules and policies. There is no evidence, however, of any such restriction on Respondent. The Parties agree that Complainant’s policies do not authorize such use, but that is quite different than a stated prohibition. In the absence of a stated prohibition, it is again telling that Complainant reviewed and approved Respondent’s advertising without objection. It is also significant that Complainant objected in 2004 to Respondent’s use of testimonials on his website, but did not challenge the Domain Name until a year later.

Based on the circumstances presented here, the Panel concludes that Respondent has a legitimate interest in the Domain Name because it used the Domain Name for a bona fide offering of goods and services with Complainant’s knowledge and acquiescence for several years before any notice of an objection by Complainant.

C. Registered and Used in Bad Faith

Complainant contends that Respondent is creating a likelihood of confusion with respect to Complainant’s mark, and that this is particularly troubling because of Complainant’s regulatory role. A likelihood of confusion between the Complainant’s mark and the Domain Name is not in itself sufficient to establish a violation of the Policy, as was explained Rollerblade, Inc. v. CBNO, WIPO Case No. D2000-0427. Whether or not Respondent’s use constitutes trademark infringement or dilution under U.S. Trademark Law is an issue beyond the scope of this proceeding that would require resolution by a court based on a full record. Here, we are only concerned with whether or not Respondent’s conduct violates the Policy.

A violation of the Policy requires a showing that the Domain Name was registered and used in bad faith. There is no evidence here that Respondent registered the Domain Name to profit from resale. Nor is there any indication that Respondent has engaged in a pattern of conduct of registering the names of others or that he registered the Domain Name to disrupt the business of a competitor.

The Policy indicates that bad faith registration and use may be found when the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Paragraph 4(b)(iv).

Here, the circumstances do not show an intentional attempt to trade off of confusion with Complainant’s mark. The claimed trademark is highly descriptive in the futures industry. Respondent has not registered a name that is a complete copy of plaintiff’s mark. Instead, he has registered a highly descriptive potion of that mark. It seems more likely than not that Respondent registered the Domain Name for its descriptive significance in the futures industry, as Respondent claims. Moreover, the Domain Name has been used for a bona fide offering of goods and services for many years with Complainant’s knowledge and acquiescence.

Complainant also asserts that Respondent is guilty of bad faith because it has failed to give correct address information in its registration record. False registration information has been considered as evidence of bad faith when it involves a deliberate attempt to conceal identity and avoid application of the Policy. Here, however, there was no attempt to conceal identity. Respondent points out that the correct address is listed under the Administrative Contact and that Respondent provides correct address information on his website.

Based on the record presented, the Panel concludes that Complainant has failed to prove that the Domain Name has been registered and used in violation of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Mark Partridge
Sole Panelist

Dated: August 15, 2005