Pink OTC Markets Inc. v. Consolidated Diversified Inv. c/o Jeff Galpern
Claim Number: FA1001001305256
Complainant is Pink OTC Markets Inc. (“Complainant”), represented by Beth
N. Lowson of The Nelson Law Firm, LLC, New York, USA. Respondent is Consolidated Diversified Inv. c/o Jeff
Galpern (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <pinksheetsnews.com> and <pinksheetsnewsalert.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 27, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On January 29, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <pinksheetsnews.com> and <pinksheetsnewsalert.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2010, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pinksheetsnews.com and postmaster@pinksheetsnewsalert.com. Also on February 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <pinksheetsnews.com> and <pinksheetsnewsalert.com>, are confusingly similar to Complainant’s PINK SHEETS mark.
2. Respondent has no rights to or legitimate interests in the <pinksheetsnews.com> and < pinksheetsnewsalert.com> domain names.
3. Respondent registered and used the <pinksheetsnews.com> and <pinksheetsnewsalert.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pink OTC Markets Inc., is a financial information and technology services company that provides information and trading services for over-the-counter securities markets and market participants. Complainant owns numerous trademark registrations with United States Patent and Trademark Office (“USPTO”) for its PINK SHEETS mark (e.g., Reg. No. 1,308,925 issued on December 11, 1984).
Respondent registered the <pinksheetsnews.com> domain name September 11, 2009, and the <pinksheetsnewsalert.com> domain name April 16, 2009. Respondent’s disputed domain names resolve to a website that displays securities and trading information in competition with Complainant. Upon receipt of correspondence from Complainant in regard to the trademark infringement, Respondent proposed an offer to sell both disputed domain names to Complainant for $25,000.
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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant owns trademark registrations with the USPTO for
its PINK SHEETS mark (e.g., Reg. No.
1308925 issued on December 11, 1984).
Previous panels have decided that Complainant’s registration with a
federal trademark authority is sufficient evidence of Complainant’s rights in
the mark for purposes of Policy ¶ 4(a)(i), and this
Panel so finds. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum
June 29, 2007) (“As the [complainant’s] mark is registered with the
USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co. v.
Bonds, FA 873143
(Nat. Arb.
Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant
contends that Respondent’s <pinksheetsnews.com> and <pinksheetsnewsalert.com>
domain names are confusingly similar
to its PINK SHEETS mark. Complainant
argues that adding the descriptive terms “news,” or “newsalert” is not
sufficient to distinguish the domain names from its mark. Complainant further argues that the addition
of the generic top level domain (“gTLD”) “.com” is also insufficient for
purposes of distinguishing the disputed domain names from its mark. The Panel finds that Respondent’s disputed
domain names are confusingly similar to Complainant’s mark because the disputed
domain names contain the mark in its entirety, eliminate the space between
words, add descriptive words onto the mark, and add the gTLD “.com” pursuant to
Policy ¶ 4(a)(i).
See Am. Online, Inc.
v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003)
(finding that the respondent’s domain names, which incorporated the
complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb.
Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic
top-level domain, such as ‘.com,’ ‘.net,’
‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed
domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”).
Therefore, the Panel finds that the <pinksheetsnews.com> and <pinksheetsnewsalert.com>
domain names are confusingly similar
to Complainant’s PINK SHEETS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds
that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the <pinksheetsnews.com> and <pinksheetsnewsalert.com> domain names. Complainant is required to make a prima facie case in support of these allegations. After Complainant has produced a prima facie case the burden of proof shifts to Respondent to show why it has rights or interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent does not have any rights to or legitimate interests in the disputed domain names. The Panel, however, still examines the record to determine whether evidence there suggests that Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Complainant argues that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent’s disputed domain names resolve to a website that displays information and services that compete with Complainant’s financial services and securities business. The Panel finds that Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Complainant further asserts that Respondent is not commonly known by the <pinksheetsnews.com> and <pinksheetsnewsalert.com> domain names and that Complainant has not given Respondent permission to use its PINK SHEETS mark. The WHOIS information for the disputed domain names does not indicate, and Respondent does not offer any evidence, that it is commonly known by the disputed domain names. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further alleges that Respondent, upon correspondence from Complainant, offered to sell the disputed domain names for $25,000. Complainant asserts that the offered price and willingness to sell the disputed domain names by Respondent is further evidence of the lack of rights or legitimate interests in the disputed domain names. The Panel finds that Respondent’s willingness to sell the disputed domain for a price above out-of-pocket expenses is further evidence to support findings that Respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s offer to sell the disputed domain names for $25,000 is evidence of registration and use in bad faith. Complainant contends that upon receiving its second cease and desist letter, Respondent responded by e-mail that it would sell the domain names for $25,000, an amount Respondent said was “not negotiable.” The Panel finds that Respondent’s conduct in attempting to sell the disputed domain names, after being contacted by Complainant, for a price greater than expected out-of-pocket costs, is evidence to support findings of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant).
Complainant further contends that Respondent’s registration and use of the disputed domain names were in bad faith because Respondent is attempting to disrupt the business of Complainant by offering competing services under the confusingly similar <pinksheetsnews.com> and <pinksheetsnewsalert.com> domain names. The Panel finds that Respondent’s use of the disputed domain names to divert Internet users to its website offering services in competition with Complainant is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complaint also contends that Respondent is intentionally
attempting to attract Internet users to its site for commercial gain, by
creating a likelihood of confusion between Respondent’s <pinksheetsnews.com> and <pinksheetsnewsalert.com>
domain names and Complainant’s PINK SHEETS mark. The Panel finds that Respondent’s use to
divert Internet users seeking Complainant’s services to Respondent’s website
offering competing services for financial gain is further evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of
the <saflock.com> domain name to offer goods competing with the
complainant’s illustrates the respondent’s bad faith registration and use of
the domain name, evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv)); see also Identigene, Inc. v.
Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
the respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site). Therefore, the Panel finds that Respondent
has registered and used the disputed domain name in bad faith under Policy ¶
4(a)(iii).
The Panel finds that Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <pinksheetsnews.com> and <pinksheetsnewsalert.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 24, 2010
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