NATIONAL ARBITRATION FORUM
DECISION
Pink Sheets LLC v. Robert A. Frey
Claim Number FA0507000522854
PARTIES
Complainant
is Pink Sheets, LLC (“Complainant”), represented by Steven J. Nelson,
of The Nelson Law Firm, LLC, 75 South Broadway, White Plains, NY
10601. Respondent is Robert A. Frey
(“Respondent”), 2700 Glenmore Drive, Westlake, OH 44145.
REGISTRAR AND DISPUTED
DOMAIN NAME
The
domain name at issue is <pinksheetstock.com>, registered with Go
Daddy Software, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has not a known conflict in serving as Panelist in
the proceeding.
The
Panelist is The Honorable Patrick C. Guillot (ret.)
PROCEDUAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 25, 2005.
On
July 22, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <pinksheetstock.com>
domain name is registered with Go Daddy Software, Inc. and that 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
August 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 22,
2005 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@pinksheetstock.com by e-mail.
A
timely Response was received and determined to be complete on August 19, 2005.
On
August 31, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member panel, the National Arbitration Forum appointed the
Honorable Patrick C. Guillot (ret.) as panelist.
RELIEF SOUGHT
Complainant
requests that the <pinksheetstock.com> domain name registration be
transferred to Pink Sheets LLC, the owner of the PINK SHEETS trademark.
A. Complainant
1. The
domain name in dispute, <pinksheetstock.com>, is confusingly
similar to a mark in which Complainant, Pink Sheets LLC, has rights. The only difference between the domain name
and the mark is the addition of the word “stock.”
2. Respondent
has no rights or legitimate interests in the domain name.
3. Respondent
registered and used the disputed domain name in bad faith.
B. Respondent
1. The
domain name is not confusingly similar to the PINK SHEETS mark.
2.
Respondent has rights
and a legitimate interest in the domain name.
3. The
domain name has not been registered and is not being used in bad faith.
FINDINGS
Identical
and/or Confusingly Similar Policy Paragraph 4(a)(i)
A. Complainant
has established its rights in the PINK SHEETS mark.
B. Complainant
further contends that <pinksheetstock.com> is confusingly similar
to Complainant’s PINK SHEETS mark, with the only difference being the addition
of the work “stock.” Complainant points
out that Respondent has attempted to provide information over the internet that
is confusingly similar to the information provided by Complainant and further
contends that the <pinksheetstock.com> domain name is intended to
confuse internet users so that they will believe that Pink Sheets LLC is the
source of or has endorsed the information provided on the <pinksheetstock.com>
internet site. Complainant further
points out that Respondent offers, either directly or through links, services
similar to or the same as those offered by Complainant, and in some instances
Respondent directly links to the website and information gathered by Pink
Sheets LLC. Finally, Complainant states
that PINK SHEETS is a registered trademark, which Respondent has violated.
Respondent
argues that the <pinksheetstock.com> domain name is not confusing
similar because the domain name contains the generic or descriptive words “pink
sheets" or “pinksheet” and such descriptive words make the domain name sufficiently
different to make it distinguishable. Respondent states that Pinksheet or Pink
Sheets within the world of stocks and bonds does not stand for PinkSheets.com
nor Pink Sheets, LLC but rather for any type of stock which is traded by
market-makers and the general public or between themselves so that no SEC
reporting requirements apply.
Respondent claims ignorance of PinkSheets.com’s existence when it
registered the <pinksheetstock.com> domain name. Respondent also states that it has added the
disclaimer “not associated with Pink
Sheets, L.L.C.” in an effort to show that there is no bad intent or bad
faith and to avoid confusion.
Finally,
Respondent argues that there are over 7.5 million pages on the web with the
work “PinkSheets” incorporated therein.
Rights and Legitimate Interests Policy
Paragraph 4(a)(ii)
Complainant
asserts that Respondent is appropriating Complainant’s mark to market and sell
services which are confusing the public at large and which can be considered
either identical or so similar to those offered by Complainant as to cause
confusion. Complainant points out that,
in addition to the confusion, Respondent is obtaining advertisement revenue,
which would otherwise go to Complainant by misappropriating the PINK SHEETS
trademark and confusing stock promoters as well as others who would advertise
into thinking that there is some relationship between Complainant and
Respondent.
Respondent
replies that it has legitimate interest and rights in the domain name because
it describes Respondents business.
Primarily, Respondent states that “Pink Sheets” is a generic term used
extensively on the web and that Complainant has no exclusive use of the
name.
The
panel finds that Respondent does not have rights or legitimate interests in the
domain name.
Registration and Use in
Bad Faith Policy Paragraph 4(a)(iii)
Complainant
argues that Respondent registered and used the domain name in bad faith to
intentionally attract internet users to its website by creating a likelihood of
confusion as to the source, sponsorship, affiliation, or endorsement of
Respondent’s website. Evidence of the
bad faith, Complainant argues, is the registration of a domain name confusingly
similar to Complainant’s mark which Complainant further has established by its registration
with the United States Patent and Trademark office. Such registration confers constructive knowledge on anyone
attempting to use the mark.
Respondent
argues that Complainant has failed to meet its burden of proving bad faith as
it cannot point to particular facts and circumstances supporting this
allegation. Moreover, it states that it
has added a disclaimer to the bottom of its pages which states it is “not
associated with Pink Sheets LLC” in an effort to “please the folks at Pink
Sheets.com.”
Based
on the information given by Complainant and Respondent, it is clear that there
is an attempt to benefit from Complainant’s mark. Consequently, the Panel finds that the registration and use of
the domain name was in bad faith.
Paragraph
15(a) of the Rules for Uniform Domain Named 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 principals of law that it deems applicable.”
Paragraph
4(a) of the policy requires that the Complainant must prove each of the
following elements to obtain an order that a domain name should be cancelled or
transferred:
1. The
name domain name registered by Respondent is identical or confusingly similar
to a trade mark or service mark in which Complainant has rights;
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.
Identical and/or
Confusingly Similar
The
Panel finds that Respondent’s addition of the word “stock” to his domain name
and Respondent’s use of that domain name which offers the same or similar
products and services as Complainant is enough to show that the domain name is
confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Company (Dublin), Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001). (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with the generic word or term). It is admitted that both Complainant and Respondent operate in
the industry of providing stockholders and potential stockholders as well as
stock promoters and potential stock promoters information regarding penny
stocks. Respondent has also used links
directly to Complainant’s mark and domain name as well as framing. Based on the evidence submitted, the Panel
states that it is not a stretch of the imagination to find that Respondent
would like to benefit from Complainant’s mark with a confusingly similar domain
name.
Rights or Legitimate
Interests
The
Panel finds that Respondent has not produced evidence to justify a legitimate
interest in the domain name. See
Am. Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec.11,
2000)(“[I]t would be unconscionable to find a bona fide offering of services in
a Respondent’s operation of website using a domain name which is confusingly
similar to the Complainant’s mark and for the same business.”)
Moreover,
there is no or insufficient evidence to show Respondent is commonly known by
the disputed domain name. Respondent
has not given any information regarding the number of visits to his website
and, consequently, has admitted that he is not well known by the domain
name. Thus, he lacks rights and
legitimate interest in the domain name pursuant to Policy Paragraph
4(c)(iii). See RMO, Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy
Paragraph
4(c)(ii) to require a showing that “one had been commonly known by the domain
name prior to the registration of the domain name to prevail.”)
Registration and Use in
Bad Faith
The
evidence preponderates that Respondent registered and used the domain name in
bad faith to intentionally attract internet users to his website by creating a
likelihood of confusion with Complainant as to the source, sponsorship,
affiliation, or endorsement of its website.
See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (Finding that the respondent’s use of the <safelock.com> domain
name to offer goods competing with the complainant’s goods illustrates the
respondent’s bad faith registration and use of the domain name.) Consequently, having found the domain name
is confusingly similar to Complainant’s mark for Purpose of Policy Paragraph
4(b)(iii) is evidence of a bad faith registration and use. See Surface Prot. Indus., Inc. v. Web Posters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between the complainant and the respondent, the respondent likely
registered the contested domain name with the intent to disrupt the
complainant’s business and create user confusion.) It is important to note that the registration of Complainant’s
mark with the United Patent and Trademark Office confers constructive knowledge
on anyone attempting to use the mark.
Thus, the Panel does determine that Respondent chose the disputed domain
name based on the distinctive qualities of Complainant’s mark. Thus, the domain name was registered and
used in bad faith pursuant to Policy Paragraph 4(a)(iii). See 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.)
The
Panel finds that Complainant is entitled to relief under ICANN Policy Paragraph
4(a)(i), 4(a)(ii), and 4(a)(iii). It
finds that Respondent’s domain name is confusingly similar to Complainant’s
mark; that Respondent has no rights or legitimate interests in the domain name;
and that, with respect to the domain name, Respondent’s registration and use of
it is in bad faith.
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 <pinksheetstock.com> domain name be TRANSFERRED from Respondent to
Complainant.
The Honorable Patrick C. Guillot (ret.),
Panelist
Dated September 20, 2005
NATIONAL
ARBITRATION FORUM
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