Barclays Global Investors, N.A. v.
SocialFunds.com, LLC n/k/a SRI World
Group, Inc.
Claim Number: FA0309000196046
PARTIES
Complainant
is Barclays Global Investors, N.A.,
San Francisco, CA (“Complainant”) represented by Melanie J. Lerch, of Loeb & Loeb, LLP,
10100 Santa Monica Blvd., Suite 2200, Los Angeles, CA 90067. Respondent is
SocialFunds.com, LLC n/k/a SRI World Group, Inc., Battleboro, VT
(“Respondent”) represented by Frank P.
Fitzgerald, 1391 Main St., Suite
600, Springfield, MA 01103.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ishareowner.com>,
registered with Bulkregister.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.
David
E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 15, 2003; the Forum received a hard copy of the Complaint
on September 15, 2003.
On
September 17, 2003, Bulkregister.Com
confirmed by e-mail to the Forum that the domain name <ishareowner.com> is registered with Bulkregister.Com and that the Respondent is the current
registrant of the name. Bulkregister.Com
has verified that Respondent is bound by the Bulkregister.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
September 23, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 13, 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@ishareowner.com by e-mail.
A
timely Response was received and determined to be complete on October 9, 2003.
A
proposed Additional Submission was received by the Forum from Complainant after
the deadline for such submissions according to the Forum’s Supplemental Rule
7. Paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”) vests the discretion to request and accept supplemental
materials solely with the Panel. The
Complainant did not submit a separate statement of grounds for consideration of
the proposed Additional Submission, requiring the Panel to review the substance
of the document in order to determine whether it is comprised substantially of
material that could not reasonably have been included in Complainant’s initial
submission. The Panel has conducted such
a review and concludes that this standard has not been met, and therefore
declines to consider the tendered document on this ground, without regard to
its apparent untimeliness.
On October 23, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed David E. Sorkin as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is a very large investment management firm; among the investment products it
offers is a family of exchange-traded funds called iShares. Complainant owns trademark rights in ISHARES
(U.S. trademark registration number 2,422,249, Principal Register, registered
January 16, 2001), and spends $11 to $14 million annually promoting the iShares
fund family.
Complainant
contends that the disputed domain name <ishareowner.com>
is confusingly similar to its ISHARES mark.
Complainant further contends that Respondent lacks rights or legitimate
interests with respect to the disputed domain name, on the grounds that, inter alia, Respondent’s use of the
disputed domain name significantly postdates Complainant’s first use of its
ISHARES mark, and Respondent is using the disputed domain name to misleadingly
divert consumers from Complainant’s website for commercial gain, thereby
tarnishing and diluting Complainant’s mark.
Finally, Complainant alleges that Respondent registered and is using the
disputed domain name in bad faith, based upon Respondent’s lack of rights or
legitimate interests in the name, Respondent’s actual or constructive knowledge
of Complainant’s mark at the time the disputed domain name was registered and
Respondent’s offer to transfer ownership of the disputed domain name to
Complainant in exchange for a payment of $100,000.
B.
Respondent
Respondent
is a small company that provides information to socially responsible
investors. One group targeted by
Respondent is institutional investors; Respondent claims that the disputed
domain name <ishareowner.com>
represents an abbreviation of “i[nstitutional] shareowner” and since November
2001 has been used in this descriptive sense for the purpose of reaching this
group. Respondent contends that the
disputed domain name therefore is not confusingly similar to Complainant’s
ISHARES mark. Respondent further
contends that this descriptive use has occurred in connection with a bona fide
offering of goods and services, in a “completely separate universe” from
Complainant, and that Respondent therefore has legitimate interests with
respect to the disputed domain name.
Finally, Respondent contends that its purposes for registering and using
the disputed domain name have been entirely legitimate, and therefore
Respondent neither registered nor has used the name in bad faith. Respondent claims that its offer to transfer
the domain name for $100,000 ought not be considered as evidence of bad faith
because that sum represents a fair price for the domain name, and because the
offer was made by counsel for Respondent in the course of legitimate settlement
negotiations.
FINDINGS
The Panel declines to enter a finding on
the question of confusing similarity.
The Panel finds that Complainant has
failed to sustain its burden of proof on the remaining questions, rights or
legitimate interests, and registration and use in bad faith.
DISCUSSION
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.”
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.
Confusing similarity presents a close
question in this case. The disputed
domain name does indeed incorporate Complainant’s ISHARES mark (minus the
letter “s”), and appends it to a single word, “owner,” that could be considered
generic. On the other hand, the
disputed domain name is arguably less suggestive of Complainant’s mark (i.e.,
“iShare owner”) than of Respondent’s descriptive intent (“i shareowner”).
Respondent’s motivations are, of course,
irrelevant in the determination of whether the disputed domain name is
confusingly similar to Complainant’s mark.
But Complainant bears the burden of proving confusing similarity, and
the mere fact that the mark occurs within the domain name is not dispositive. Here, there are two plausible readings of
the disputed domain nane, and the one that is confusingly similar is, in the
Panel’s view, the less plausible of the two.
Whether this level of confusion is sufficient depends on how broadly the
confusing similarity requirement is interpreted.
There seems to be relatively little harm
in applying the confusing similarity requirement fairly broadly, since
similarity that occurs purely by happenstance rather than design should
preclude a finding of bad faith registration anyway. On the other hand, a stricter interpretation of the confusing
similarity requirement may be appropriate under domain name dispute resolution
policies that have a disjunctive bad faith requirement but otherwise are
similar to the UDRP, and it makes little sense to interpret the confusing
similarity requirement differently depending upon what other elements appear in
a particular policy. Rather than
attempting to reconcile these competing interests, in light of the fact that
the remaining elements are dispositive of the present matter, the Panel
declines to enter a finding on the question of confusing similarity.
The question
of rights or legitimate interests, in contrast, is quite straightforward. Based upon the record before the Panel, it
appears that Respondent is making a bona fide commercial use of the disputed
domain name in a manner that is descriptive of the services offered by
Respondent, with any similarity between the domain name and Complainant being
merely coincidental. It may well be the
case that Respondent’s activities somehow violate some rights of
Complainant. But there is insufficient
evidence thereof available in this proceeding to rebut an inference of
legitimacy. That is not indicative of
any failure by Complainant or its counsel, but merely of the inherently limited
scope and summary nature of the UDRP process.
A proceeding such as this simply cannot competently resolve such complex
questions of trademark law, nor was it ever intended to do so. See Second
Staff Report on Implementation Documents for the Uniform Dispute Resolution
Policy (Oct. 24, 1999),
<http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>, ¶
4.1(c) (noting that "the policy's administrative dispute-resolution
procedure does not extend to cases where a registered domain name is
subject to a
legitimate dispute (and may ultimately be found to violate the challenger's
trademark)"). In many cases it is readily apparent that a domain name
registrant’s activities are infringing or pretextual; but such is not the case
here.
The Panel finds that Complainant has
failed to meet its burden of proving that Respondent lacks rights or legitimate
interests with respect to the disputed domain name.
The questions of rights or legitimate
interests and bad faith registration and use are largely linked in this case,
and the Panel’s inclination to accept Respondent’s claim that the disputed
domain name was intended to represent “i shareowner” rather than “iShare owner”
practically compels a finding of no bad faith.
But two points argued by the parties
merit further discussion: First,
Complainant argues that a finding of bad faith registration can properly be
based upon Respondent’s actual or constructive knowledge of Complainant’s
mark. The Panel rejects the view that
constructive knowledge is (or can ever be) sufficient. In many cases it may be possible to infer
that a domain name registrant had actual knowledge of a preexisting trademark;
but that is not at all the same as finding bad faith based upon mere
constructive knowledge (which, for example, might be based upon the existence
of a trademark registration record for an obscure mark).
Second, Respondent contends that the
existence of its offer to transfer the disputed domain name to Complainant,
made by counsel in the course of settlement negotiations that ultimately
failed, ought not be admissible before the Panel. Although the timing and circumstances of the offer cast
substantial doubt on its probative value, the offer is of course admissible in
view of the informal nature of this proceeding. Even if the offer were indicative of a scheme to use the disputed
domain name in bad faith, however, it is not sufficient to dissuade the Panel
from its conclusion that the domain name was initially selected for reasons
entirely unrelated to Complainant or its mark—which precludes a finding of bad
faith registration.
DECISION
Having
considered all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: November 5, 2003
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page