National Arbitration Forum

 

DECISION

 

Thomas Weisel Partners Group Inc. v. Thomas Weisel House of Entertainment c/o S Coleman

Claim Number: FA0704000954028

 

PARTIES

Complainant is Thomas Weisel Partners Group, Inc. (“Complainant”), represented by Stevan H. Lieberman, of Greenberg & Lieberman, LLC, 2141 Wisconsin Ave., NW, Suite C2, Washington, DC 20007.  Respondent is Thomas Weisel House of Entertainment c/o S Coleman (“Respondent”), represented by Joshua E. Mackey, of Iseman, Cunningham, Riester & Hyde, LLP, 2649 South Road, Suite 230, Poughkeepsie, NY 12601.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <thomasweiselpartners.com> and <thomasweisel.com>, registered with Register.com, Inc.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Hon. Carolyn M. Johnson (Ret.), Anne M. Wallace, Q.C., and James A. Carmody, Esq., (Chair), as Panelists

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 6, 2007.

 

On April 4, 2007, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thomasweiselpartners.com> and <thomasweisel.com> domain names are registered with Register.com, Inc. and that the Respondent is the current registrant of the domain names.  Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 April 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 2, 2007 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@thomasweiselpartners.com and postmaster@thomasweisel.com by e-mail.

 

A timely Response was received and determined to be complete on May 2, 2007.

 

Each of the parties filed an Additional Submission in a timely fashion.

 

On May 10, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Carolyn M. Johnson (Ret.), Anne M. Wallace, Q.C., and James A. Carmody, Esq., (Chair), as Panelists

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.  Complainant makes the following assertions:

1.      Respondent’s <thomasweiselpartners.com> and <thomasweisel.com>, the domain names at issue, are confusingly similar to Complainant’s THOMAS WEISEL PARTNERS and THOMAS WEISEL common law trademarks, which have been in use to identify Complainant’s goods and services since at least 1999.

 

2.      Respondent does not have any rights or legitimate interests in the domain names at issue.

 

3.      Respondent registered and used the domain names at issue in bad faith.

 

B. Respondent makes the following assertions:

1.   Complainant has no registered or otherwise protectable rights in its claimed marks for the purposes of this proceeding.

 

2.   Respondent has rights and legitimate interests in the domain names at issue and is rightfully using the same in commerce.

 

3.   Respondent did not register the domain names at issue in bad faith and has not used them in bad faith.

 

C.  Additional Submissions:

The Panel considered the Additional Submissions of both parties, which essentially reiterated the arguments in the original pleadings and discussed whether the equitable doctrine of laches should apply to this case.

 

FINDINGS

Complainant is a well-known, successful, investment-banking firm based in San Francisco, California.  Thomas Weisel Partners Group, Inc. (“TWP”) is a Delaware corporation founded by Thomas W. Weisel and its wholly owned subsidiary Thomas Weisel Partners LLC was granted registered broker-dealer status by the SEC in January 1999.  TWP achieved notoriety during the heyday of the technology market in the late 1990s when it opened for business in January 1999 and continues today as a well-known investment bank focusing particularly on the emerging-growth company market.  TWP went public in February 2006 (NASDAQ: TWPG).  The firm provides investment banking, institutional brokerage, private client services and private equity investing services.

 

Thomas W. Weisel (Thom Weisel) is the founder of Montgomery Securities, an investment-banking firm known as one of the "four horsemen" that dominated high-tech banking in the 1980s and 1990s.  Montgomery Securities was acquired by NationsBank (renamed Bank of America) in 1997.  Thomas W. Weisel, now CEO of Thomas Weisel Partners Group, Inc., granted the firm a “worldwide, perpetual, exclusive and royalty-free right and license” to, among other marks, THOMAS WEISEL PARTNERS and THOMAS WEISEL, and variations thereof.

 

Complainant is commonly known as THOMAS WEISEL PARTNERS and THOMAS WEISEL and has claim to significant common law rights in those marks since at least 1999, in connection with investment banking, brokerage and asset management services.  Complainant has used these marks continuously for seven years and promoted its marks through an extensive marketing program at an expense of more than $25 million since 1999.  Consumers in the investment banking, brokerage and asset management field associate the TWP Marks with Thomas Weisel Partners Group, Inc.  Therefore, Complainant’s marks have achieved secondary meaning in the minds of the pertinent consuming public.

 

Respondent is a San Francisco, California resident with a general interest in computer technology and particularly e-commerce.  Respondent is an investor in the "real estate" of the Internet–domain names.  Respondent is the registered owner of the domain names at issue, having had ownership of these domain names transferred to him sometime in June 2001.  Both domain names were originally registered with Network Solutions sometime in December 1998.  Sometime in December 2000, registrations for both domain names lapsed.  For a period of six months, the domain names at issue remained unregistered by anyone, including Complainant.  On June 26, 2001, Respondent re-registered the domain names.

 

On September 6, 2003, Respondent entered into an agreement with Sapphic, Inc. ("Sapphic"), whereby he would receive compensation for any Internet traffic redirected from the domain name websites to Sapphic, an adult entertainment website.  Complainant did not contact Respondent until December of 2006 to discuss purchasing the domain names from Respondent.  Respondent is not commonly known by the domain names at issue and has not been licensed or otherwise authorized to use them by Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name 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 principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark 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.

 

Preliminary Issue: Laches

 

The Panel finds that, based upon the facts presented, the doctrine of laches is not relevant to its consideration of the instant claim.  See E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 1, 2003) ("[T]he Policy does not provide any defence of laches.  This accords with the basic objective of the Policy of providing an expeditious and relatively inexpensive procedure for the determination of disputes relating to egregious misuse of domain names."); see also Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”).

 

Identical and/or Confusingly Similar

 

            Although Complainant does not own a trademark registration with a governmental trademark authority, Policy ¶ 4(a)(i) does not require this formality to establish rights in the mark.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).

 

            Complainant has rights in the THOMAS WEISEL PARTNERS and THOMAS WEISEL marks through continuous and extensive use since at least as early as 1999.  Complainant uses the THOMAS WEISEL PARTNERS and THOMAS WEISEL marks in connection with the provision of investment banking and equity research services.  In further support of its claim of trademark rights in the THOMAS WEISEL PARTNERS and THOMAS WEISEL marks, Complainant has submitted evidence of various financial publications that have featured articles relating to Complainant’s financial services.  Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i).  See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

 

            Respondent’s <thomasweiselpartners.com> and <thomasweisel.com> domain names are identical to Complainant’s THOMAS WEISEL PARTNERS and THOMAS WEISEL marks.  The domain names at issue contain Complainant’s marks in their entirety and simply remove spaces between terms and add to each the generic top-level domain (“gTLD”) “.com.”  Such distinctions are insignificant and do not differentiate the domain names from Complainant’s marks under Policy ¶ 4(a)(i).  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).

 

            The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Once Complainant makes 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 Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

Respondent is using the <thomasweiselpartners.com> and <thomasweisel.com> domain names at issue to operate websites featuring adult-oriented material.  Respondent’s use of the disputed domain names to connect Internet users to adult-oriented websites is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See McClatchy Mgmt. Servs., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that the respondent’s use of the disputed domain names to divert Internet users to a website that features adult-oriented material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).

 

Respondent has failed to submit any affirmative evidence that it is commonly known by the disputed domain names.  Respondent is not licensed to register names featuring either of Complainant’s THOMAS WEISEL PARTNERS or THOMAS WEISEL marks.  Accordingly Respondent is not commonly known by the disputed domain names for purposes of Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum December 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

            The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent’s use of the  <thomasweiselpartners.com> and <thomasweisel.com> domain names to provide Internet users with graphic adult-oriented material is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  Complainant has submitted evidence sufficient to support a finding of bad faith registration and use under Policy ¶ 4(a)(iii).  See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).

 

Further, it appears from the uncontroverted affidavit of John Colombo, a Principal of Complainant, that Respondent demanded $100,000 to transfer the domain names at issue to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names.  This conduct constitutes evidence of registration and use in bad faith under Policy ¶ 4(b)(i).

 

            The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <thomasweiselpartners.com> and <thomasweisel.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

 

James A. Carmody, Esq., Chair

Hon. Carolyn M. Johnson (Ret.)

Anne M. Wallace, Q.C.

Dated: May 21, 2007

 

 

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