Efutures.Com LLC v. Cannon Trading Company Inc.
Claim Number: FA0112000103056
The Complainant is John D. Streich Efutures.Com LLC, Platteville, WI, USA (“Complainant”) represented by Jill J. Gladney, of Knepper & Gladney. The Respondent is Cannon Trading Company Inc., Beverly Hills, CA, USA (“Respondent”) Lee Fredric Shara, of Trojan Law Offices.
The domain names at issue are <e-futures.biz> and <efutures.biz>, registered with Network Solutions.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on December 14, 2001; the Forum received a hard copy of the Complaint on December 17, 2001.
On December 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on January 30, 2002.
Additional Submissions were received timely on February 4, 2002.
On February 13, 2002, pursuant to STOP Rule 6(b), the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.
The Complainant requests that the domain names <e-futures.biz> and <efutures.biz> be transferred from the Respondent to the Complainant.
Complainant, efutures.com, LLC, and Respondent, Cannon Trading Company, Inc., each are claiming rights in the mark EFUTURES. The Respondent has registered the domain names <e-futures.biz> and <efutures.biz> and Complainant seeks to have the domain names transferred to it.
Complainant asserts that it has common law rights in the EFUTURES mark because it has used the mark in commerce since 1997 in connection with public, and commodity-related account information, as well as trades and related transactions of commodity futures contracts and options thereon.
Complainant asserts that Respondent does not have any trademarks or service marks in the EFUTURES mark and therefore has not demonstrated that it has rights or legitimate interests in the disputed domain names pursuant to STOP Policy ¶ 4(c)(i).
Complainant alleges that Respondent, a competitor of Complainant, intends to use the
disputed domain names in order to attract Internet users to Respondent's website.
Complainant believes that its existing and potential customers who are attracted to Respondent’s web site will now be misled about the source, sponsorship, affiliation and endorsement of Respondent’s site and the inference (created by the name of the site and the logo displayed there) that it belongs to and is sponsored by Complainant.
Complainant further asserts that Respondent is commonly known as Cannon Trading Company, Inc., not by EFUTURES and therefore has not demonstrated that it is commonly known by <efutures.biz> or <e-futures.biz> pursuant to STOP Policy ¶ 4(c)(iii).
Complainant further asserts that Respondent was on notice of Complainant's mark when it registered the disputed domain names.
Respondent, Cannon Trading Company, Inc., asserts that Complainant has only been doing business as EFUTURES and EFUTURES.COM since 2000. Respondent asserts that it was known as EFUTURES.COM three years before Complainant began using EFUTURES in relation to its business, and therefore, has rights in the <efutures.biz> and <e-futures.biz> domain names pursuant to STOP Policy ¶ 4(c)(iii). Respondent contends that it registered and began using the domain name <e-futures.com> in May of 1997 whereas Complainant didn’t use the mark for the offering of futures services until November 2000.
Respondent further asserts that Complainant does not have exclusive rights in the EFUTURES mark because the United States Patent and Trademark Office rejected Complainant's application for EFUTURES and EFUTURES.COM as descriptive.
Respondent asserts that its use of the <efutures.biz> and <e-futures.biz> domain names will be legitimate because they will be used for a bona fide offering of services pursuant to STOP Policy ¶ 4(c)(ii).
Respondent denies any bad faith in relation to the registration of the disputed domain names.
C. Additional Submissions
In their additional submissions the parties challenge the accuracy of the other’s statements and the legitimacy of the other’s motives. Each contend superior rights in the disputed domain names.
In its Additional Submissions, Complainant asserts that it has superior rights to the EFUTURES mark because it registered <efutures.com> in February of 1997, whereas Respondent registered <e-futures.com> in May of 1997. Furthermore, Complainant asserts that it used EFUTURES as a brand name among its various related corporate entities relating back to 1997. Complainant asserts that Respondent is acting in bad faith. Furthermore, Complainant asserts that Respondent's figures and statistics are false, and that it is really not as successful of a business as Respondent makes itself out to be.
Respondent asserts in its Additional Submissions that it has proof that its <e-futures.com> domain name appeared before Complainant's website in 1997, and therefore it has superior rights to <e-futures.biz> and <efutures.biz>. Respondent asserts that Complainant's Additional Submission is false, and the evidence included within it is fabricated. Furthermore, Respondent asserts that it has not acted in bad faith because it has a legitimate business interest located at <e-futures.com> and plans to include the disputed domain names in this business.
1. Complainant’s trademarks/service marks at issue are “EFUTURES” and “EFUTURES.COM” (the latter of which is the subject of United States Patent and Trademark Office (“USPTO”) Trademark Application Serial No. 78/038282). Complainant claims common law trademark rights to both marks. Complainant contends it has used these marks continuously since March 1997 in connection with providing services to the public, including commodity-related account information and automated processing of customer orders to buy, sell and write trades and related transactions of and in commodity futures contracts and option thereon.
2. Complainant, efutures.com, LLC, is a commodity brokerage firm, but in technical parlance, it is a non-clearing “futures commission merchant,” (as that term is defined in the Commodity Exchange Act, 7 USC § 1, et seq.,). Complainant is registered as such with the National Futures Association (“NFA”), the federally created self-regulatory organization which establishes and enforces rules and standards applicable to customer protection and minimum financial requirements for participant businesses in the futures industry. Complainant is a limited liability company constituted under the laws of the State of Delaware. The history of efutures.com and its corporate affiliates, First Capitol Ag, Inc. (“FCA”) and Futures Express dates back to the late 1980’s in Platteville, Wisconsin, where all three entities currently operate from a single, consolidated principal place of business. All three entities are operated, managed and controlled under the direction of John D. Streich and his wife, Michelle L. Streich. Mr Streich has been employed in the commodities industry on an ongoing basis for the past 18 years, and is a member of the Board of Directors of NFA.
3. FCA, the first of Mr. Streich’s enterprises, was founded in 1989. Its original customers were agricultural producers and handlers who use the futures markets to hedge their crops (primarily livestock and grains, and their respective derivative commodities), production and inventories. Four years later, in 1993, Futures Express was formed to assist clients desirous of speculating in stock index futures contracts.
4. By the mid to late 1990s, advancing technology gave the commodity futures industry the ability to trade “on line. In 1997, the Streichs formed a business, efutures.com, particularly tailored to satisfy the demands of self-directed traders needing 24/7 access to futures markets worldwide. Complainant contends that since the 1997 creation of the efutures.com web site, Complainant has actively and continuously utilized the EFUTURES mark on the Internet and in advertising in a manner which brought potential customers into Complainant’s on-line trading web site, thereby adding to the significant goodwill and widespread recognition of its mark and trade name.
5. Through its web site, Complainant services a wide range of individuals and/or entities interested in learning more about commodity markets, learning to hedge commodity futures, doing research on specific commodities, as well as (a) potential customers who may desire to open an account through which trades in commodity futures or options can be placed electronically, and (b) existing accounts at any of Complainant’s related companies who wish to place trades for futures or options thereon, monitor their risk to futures price fluctuation and obtain real-time market price quotations. Complainant has about 3000 accounts.
6. Complainant contends that “EFUTURES” is not only an identifier of the services available at the Complainant’s web site, but also is a representation of the origin of the services, namely the family of businesses with which the mark is associated. That group includes the “bricks-and-mortar” presence of FCA (a commodities hedge specialist), Futures Express (a discount brokerage), and efutures.com, LLC. Complainant has invested several years and substantial advertising and marketing expenses to create significant goodwill and consumer confidence. Complainant contends that “EFUTURES” has become indicative of a brand that the trading public can trust.
7. The services offered at Respondent’s web site, however, are substantially similar in many respects to those offered by Complainant. Complainant and Respondent are direct competitors.
8. Respondent, Cannon Trading Company, Inc., is an investment, futures and commodities trading company that has been in business since 1988. Respondent was one of the first companies providing commodity and futures trading services to establish a presence on the Internet in early 1996 through their <cannontrading.com> domain. As Cannon acquired further key-word domain names relevant to the trading of investments, futures and commodities, Respondent directed the domain names to its <cannontrading.com>. When the URL <e-futures.com> is entered, it re-directs users to Respondent’s <cannontrading.com> web site. In May of 1997, Cannon Trading acquired <e-futures.com> and immediately went live by directing traffic from <e-futures.com> to its servers. Respondent views <e-futures.com> as its flagship domain name for online futures trading. Respondent actively utilizes <e-futures.com> in its publicity materials as well as referring to <e-futures.com> as “The Official Website of Cannon Trading Company, Inc.” The <e-futures.com> web site has been written up in numerous publications. By 1998 Cannon trading had earned a positive reputation in the Online Brokers business and had been noted in Futures Magazine. Respondent claims to be the first company to use the name <e-futures.com> to establish themselves on the World Wide Web in commodity futures and options trading.
9. Recently, Respondent has also registered the domain names <efutures.info> and <e-futures.info>.
10. Respondent contends that to its clients, Respondent is known as <e-futures.com> and Respondent’s online trading division has been known as <efutures.com> long before <efutures.com> was launched by Complainant in November of 2000. Respondent has used the <e-futures.com> domain name since its initial registration in May of 1997.
11. The United States Patent and Trademark Office rejected Complainant's application for EFUTURES and EFUTURES.COM as descriptive.
12. Respondent has been using the EFUTURES mark since its registration in May 1997. Respondent contends that through its advertising, Respondent has received a great deal of renown for the <e-futures.com> domain name. Respondent has used <e-futures.com> on its web site and in other advertising and promotional materials.
13. Respondent has over 750 active accounts and is one of the leading retailers for on-line futures trading business. Respondent contends that customers recognize the <e-futures.com> domain as their source of commodities and futures online trading as well as an online resource for education. Respondent claims that with over five years of experience in online trading, and well over 20,000 orders per month, Respondent is well established in online commodities and futures trading.
14. Respondent contends that the <efutures.com> web site was not actively offering futures trading services before Respondent, and only began launch of the web site in late 2000, whereas, Respondent began using EFUTURES for its trading services at least three years earlier in May 1997.
15. There are numerous other companies that trade with some variant of the name EFUTURES.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant asserts that it has common law rights in the EFUTURES mark because it has used the mark in commerce since 1997 in connection with public, and commodity-related account information, as well as trades and related transactions of commodity futures contracts and options thereon. The <efutures.biz> domain name is identical to Complainant's mark. The <e-futures.biz> domain name is also identical because the presence of a hyphen does not create a mark capable of being distinguished from EFUTURES. See Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).
Complainant has failed to show proof of a registered trademark. Nor has Complainant shown proof of any common law trademark rights.
The United States Patent and Trademark Office rejected Complainant's application for EFUTURES and EFUTURES.COM as descriptive. The USPTO asserts that the "e" prefix is generic as a recognized abbreviation for "electronic" and "futures" is a common word descriptive of the services Complainant and many others sell. The Trademark Board noted that the letter “e” had become a recognized abbreviation for “electronic.” The Trademark Trial and Appeals Board has held that “e-ticket” was an abbreviation of “electronic ticket” and a generic name for electronic airline ticketing services. See Continental Airlines, Inc. v. United Air Lines, Inc. 53 U.S.P.Q.2d 1385 (TTAB 1999). The Board held, that while electronic airline ticketing is known by more than one name, such as “electronic ticket” and “electronic ticketing,” “e-ticket” is one of those generic names because: “Any product or service may have many generic designations”. The TTAB later held that “e fashion” was descriptive of on-line fashion information services. In re Styleclick.com Inc., 57 U.S.P.Q.2d 1445 (TTAB 2000) (The Board held that “the meaning of ‘e’ prefix is commonly recognized and understood by virtually everyone as a designation for the Internet.”). Finally, the word FUTURES, is a common word, and is descriptive of the services Complainant sells. Therefore, Complainant's mark is incapable of acting as a trademark without significant secondary meaning. See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic terms to which Complainant cannot maintain exclusive rights); see also Tough Traveler, Ltd. v. Kelty Pack, Inc., D2000-0783 (WIPO Sept. 28, 2000) (finding that the Complainant could not establish a secondary meaning with the domain name, <kidcarrier.com>, because of the generic nature of the terms).
Respondent asserts that it was known as EFUTURES.COM three years before Complainant began using EFUTURES in relation to its business, and therefore, has rights in the <efutures.biz> and <e-futures.biz> domain names pursuant to STOP Policy ¶ 4(c)(iii). See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding that the use of the disputed domain name <aspengrove.com> by Respondent as a family email address, when the use began before the Complainant's company existed or had rights in the mark ASPEN GROVE, created legitimate rights and interests in the <aspengrove.com> domain name). See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that the Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services).
Respondent has continuously used the mark since it first registered it in May of 1997. Redirecting the domain name to another website is a legitimate usage of the domain name because Respondent offers commodities and futures trading services at the linked website, services that are logically related to its business and its domain name. See Dog.com, Inc. v. Pets.com, Inc., Nat. Arb. Forum, 93681 (2000) (Respondent PETS.COM’s use of the <dog.com> domain name was not found to be in bad faith despite Complainant’s business name being DOG.COM, and Complainant having a registered service mark comprising a fanciful design incorporating their DOG.COM domain name.).
Respondent asserts that its use of the <efutures.biz> and <e-futures.biz> domain names will be legitimate because it will be used for a bona fide offering of services pursuant to STOP Policy ¶ 4(c)(ii). In fact, they will be used for online futures trading in conjunction with Respondent's other domains. See Canal & Image UK Ltd. v. VanityMail Serv., Inc., FA 94946 (Nat. Arb. Forum July 18, 2000) (finding that a draft of an unimplemented business plan was sufficient to show respondent’s legitimate interest in the domain name); Genting Berhad v. Tan Kin Sin, FA 94735 (Nat. Arb. Forum June 28, 2000) (finding that the Respondent had legitimate interests in the domain name where the Respondent had made preparations to use the domain for his newly formed business).
The Respondent has legitimate, but not protectable, interests with respect to the domain names <e-futures.biz> and <efutures.biz>. Although the Respondent is not known as EFUTURES, the Respondent will use the domain names in connection with a bona fide offering of goods and services.
Both parties have legitimate interests in the EFUTURES mark; however, neither has exclusive rights or a protectable interest in the mark. As the Panel has determined that Respondent has legitimate interests in respect to the domain names, it is unnecessary for the Panel to address the third issue of bad faith.
Respondent alleges that Complainant is engaged in reverse domain name hijacking. Complainant has not engaged in reverse domain name hijacking.
As Respondent has legitimate interests, but not protectable rights, in the domain names <e-futures.biz> and <efutures.biz>, Complainant’s Complaint is dismissed and the Panel determines that subsequent challenges, as against the Respondent, under the STOP Policy shall be permitted against these domain names.
The Honorable Charles K. McCotter, Jr.
Dated: February 27, 2002
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