DECISION

 

Ameritrade Holding Corporation and Ameritrade (Inc.) v. Softline Technology

Claim Number: FA0107000098432

 

PARTIES

The Complainants are Ameritrade Holding Corporation and  Ameritrade (Inc.), Omaha, NE (collectively “Complainant”) represented by Julia A Matheson, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.  The Respondent is Softline Technology, Toronto, Ontario, Canada (“Respondent”) represented by William Curry.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ameritradecanada.com>, registered with Tucows, Inc.

 

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.

 

Alan L. Limbury as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 27, 2001; the Forum received a hard copy of the Complaint on July 30, 2001.

 

On July 31, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <ameritradecanada.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 21, 2001 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@ameritradecanada.com by e-mail. 

 

A Request for Extension of Time to Respond to Complaint Without Complainant’s Consent was granted on August 15, 2001, granting a twenty (20) day extension of time.

 

On August 20, 2001 Complainant informed the Forum that it had declined a request from Respondent for an extension of time upon the ground of unfamiliarity with the Policy and the Rules.  Subsequently Respondent, without notifying Complainant, had sought and obtained the extension of time from the Forum upon the ground of "vacation schedules".

 

A response was received and determined to be complete on September 6, 2001. 

 

Complainant’s timely additional submission was received and determined to be complete on September 13, 2001. 

 

Respondent’s timely additional submission was received and determined to be complete on September 18, 2001. 

 

On September 26, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Ameritrade Holding Corporation.

 

PARTIES’ CONTENTIONS

A. Complainant

Since March 1981 Complainant has offered brokerage services under the trademark AMERITRADE, which it registered in the United States in May 1996. Through use, the mark has become famous. Complainant has also registered in the U.S. the marks AMERITRADE INC., AMERITRADE PREMIER CLUB and AMERITRADE PLUS, which are also famous. In the fiscal year 2000, Complainant generated revenues of $654.5 million. Complainant has operated an online trading web site at <www.ameritrade.com> since 1997 and currently provides brokerage services to over 1.5 million customers.

 

Respondent registered the disputed domain name in May 2000. The administrative, technical and billing contact is  Mr. Roman Zinger who, on September 15, 2000, filed an “intention-to-use” application to register AMERITRADECANADA.COM as a trademark in the United States for “Internet online trading of goods, materials, commodities and services”.

 

Respondent is not authorized to use the AMERITRADE marks.

 

 The disputed domain name is confusingly similar to Complainant's famous AMERITRADE marks.  The addition of the geographic term “ Canada” to the AMERITRADE mark does not distinguish the domain name from that mark.

 

Respondent has no rights or legitimate interests in the disputed domain name.  It is not using and has not used it nor demonstrated an intent to use it in connection with a bona fide offering of goods or services. Its misappropriation of Complainant's coined, famous, and registered trademark proves that any goods or services it may offer cannot be bona fide.  The filing of its trademark application in the U. S. cannot establish a legitimate interest in the disputed domain name.  There is no justification, excuse, or plausible explanation for Respondent’s unauthorized registration and use of the disputed domain name because it has no value apart from Complainant’s famous mark.

 

Respondent registered and is using the disputed domain name in bad faith.  Given that the mark is famous, Respondent must have had actual knowledge of Complainant’s rights in the mark when Respondent registered the disputed domain name.  Respondent acted in bad faith by breaching its registration agreement because Respondent represented to the Registrar that the registration of the disputed domain name did not infringe the rights of any third party.

 

Respondent uses the disputed domain name for a web site that is said to be "under construction" and which includes a Web directory, an Internet search box and an advertisement for the domain name registration services of directNIC. The directory features a "finance” section, which leads to further windows containing lists of Complainant's competitors' websites and descriptions of those competitors' services.  Internet users attempting to locate Complainant's services might instead choose those offered at Respondent's website.  Thus Respondent is using the disputed domain name to deprive Complainant of Internet traffic intended for Complainant, thereby disrupting Complainant's business.

 

B. Respondent

Softline Technology is a business name registered by Mr. Roman Zinger.  The disputed domain name is derived from the words “america trade canada”, suggesting Softline Technology’s marketing and sales services, namely the buying and selling of Canadian-made goods in America and vice versa. 

 

Respondent has a legitimate interest in the disputed domain name because Respondent has sold ceramic products bearing the trademark AMERICA TRADE CANADA at the rate of $1,300 per month since October 1995.  That trademark is thus well known. Respondent's ceramic goods differ from the wares of Complainant.  Further, Respondent filed an intent-to-use U. S. trademark application for the mark AMERITRADECANADA.COM.

 

Complainant has made no Canadian sales through its website.  Thus consumers are more likely to associate the disputed domain name with Respondent.  Complainant has not yet met all the registration requirements of the Provinces of Canada entitling it to trade and until it is able to so it is banned from operations, particularly in Ontario.

 

There are no circumstances indicating Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to Complainant or to a competitor of complainant, for valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the disputed domain name.

 

The disputed domain name was originally registered with Network Solutions and showed a message that it was under construction.  One year later, the Registrar was changed to Tucows and a further message was shown indicating that the site was under construction.  Respondent has never established a website accessible by means of the disputed domain name. Respondent denies involvement with directNIC's business dealings.  DirectNIC is the affiliate company of Tucows.

 

Mr. Zinger is currently a student at the University of Toronto.  Complainant sent to Respondent a cease-and-desist letter on May 23, 2001, a copy of which was sent by Complainant’s counsel to the Vice Provost of the University.  This is (at least) harassment within Rule 15(e).

 

C. Complainant’s Additional Submission

Complainant would have no objection to Respondent’s use of the domain name <americatradecanada.com>. Respondent’s invention of an alternative meaning for the disputed domain name, namely, that it is a derivation of the mark America Trade Canada, is clearly a pretext to avoid a finding of cybersquatting. That domain name is still available. 

 

The business name registration papers for Software Technology described the business as "computer consulting and software development" rather than the sale of ceramic goods. 

 

Far from Complainant being "banned from operations in Canada", the fame of the Complainants mark extends to Canada by virtue of its extensive advertising on television stations accessible in Canada, including Toronto, where Respondent is located.  Complainant has applied to register its AMERITRADE mark with the Canadian Intellectual Property Office.  Respondent has indicated its plans to operate in Complainant's primary geographic area by filing its trademark application with the US patent and trademark office.

 

Respondent cannot escape responsibility for the commercial website previously associated with the disputed domain name because Respondent must have been aware of Tucows practice of posting a commercial website at a registered domain name until a registrant gets its own website up and running.

 

Respondent admits that it intends to use the disputed domain name for a commercial website.  It is clear Respondent intended to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark and the source, sponsorship, affiliation, and endorsement of Respondents website and the goods and services advertised on that site. 

 

D.  Respondent’s Additional Submission

Complainant has failed to prove any use or reputation for its mark in Canada and the conclusion must follow that it is not known in Canada. The accessibility of US television stations in Canada is only made possible by means of fairly expensive hardware items and the mainstream general Canadian television viewing audience does not have such access.

 

Complainant's Canadian trademark applications remain open for opposition until March/April 2001.  This aspect of Complainant’s reply remains to be decided. 

 

Respondent denies any association with website pages shown to the visitor of a URL by anyone other than Respondent.  Respondent intends to implement web pages together, which will make a website, intended to be quickest way for Respondent to join the e-commerce revolution.  A <.com> website is recognized worldwide as an online business.

 

Respondent’s company in not "Software Technology" as alleged by Complainant.  The Softline Technology business name is not confusing with the mark of Complainant.  The use of Ameritrade to sell cheap ceramics for five years by Respondent is evidence of reputation and that it is known as of the filing of the complaint.

 

FINDINGS

The disputed domain name is confusingly similar to Complainant's trademark AMERITRADE.

 

Respondent has no right to or legitimate interest in the disputed domain name.

 

Respondent registered and is using the disputed domain name in bad faith.

 

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.

 

Identical and/or Confusingly Similar

It has been decided in many cases under the Policy, and under US trademark law, that “essential” or “virtual” identity is sufficient for the purposes of the Policy.[1]

 

The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trademark.[2]

 

Here the disputed domain name incorporates a whole of Complainant’s AMERITRADE trademark, together with the word “Canada” before the inconsequential “.com”. The Panel finds the disputed domain name to be confusingly similar to Complainant’s trademark.[3]

 

Rights or Legitimate Interests

The mark AMERICA TRADE CANADA is not the same as the domain name <ameritradecanada.com> nor does that mark correspond with that name.  Where a mark is a combination of descriptive words, only small differences suffice to distinguish other marks. Accordingly, Respondent’s trade in ceramics under the mark AMERICA TRADE CANADA does not demonstrate a legitimate interest in the disputed domain name.

 

Respondent has not been commonly known by the disputed domain name. 

 

Respondent’s ownership of the business name Softline Technology  for "computer consulting software development", as described on the registration application form, or for trade in ceramics, as mentioned in the Response, does not demonstrate a legitimate interest in the disputed domain name.

 

Respondent’s intent-to-use application in the United States to register the disputed domain name as a trademark cannot demonstrate a legitimate interest in the disputed domain name.[4]

 

Respondent has not been authorized or otherwise licensed by Complainant to register the disputed domain name or otherwise to use Complainant's trademark.

 

Registration and Use in Bad Faith

There is no evidence under paragraph 4(a)(i) of the Policy that Respondent registered the disputed domain name for the purpose of selling it to Complainant (or anyone else).  There is no evidence under paragraph 4(a)(ii) that Respondent registered the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name nor of any pattern of such conduct on the part of Respondent.

 

Respondent is not a competitor of Complainant.  The Web pages accessed by means of the disputed domain name, and which lead to information about Complainant’s competitors, are web pages provided by the Registrar’s affiliate in relation to websites that are under construction. This does not constitute Respondent a competitor of Complainant.  Although Respondent intends to engage in online trading, the goods it intends to trade online are different from the online brokerage services of Complainant.  Accordingly, paragraph 4(a)(iii) of the Policy does not apply.

 

The only use to which Respondent has put the disputed domain name is to permit the disputed domain name to appear on a web page provided by an affiliate of the Registrar, announcing that a web site is under construction and containing information provided by that affiliate.  There is no basis for the conclusion that Respondent intends to attract Internet traffic to that Web page for the commercial gain of Respondent.  Accordingly, paragraph 4(a)(iii) of the Policy does not apply.

 

It is clear from paragraph 4(b) of the Policy however, that the circumstances there enumerated as constituting evidence of both bad faith registration and bad faith use are not exhaustive.

 

The critical question in this case is whether Respondent knew or should be taken to have known of Complainant's trademark AMERITRADE before registering the disputed domain name. Complainant claims its mark is famous.  Respondent disputes that the mark is known in Canada but does not dispute that the mark is known in America.  Since 1995 Respondent has been trading with America. 

 

Complainant has broadcast television advertisements on US channels accessible in Toronto, where Respondent resides.  Significantly, since it would have been simple for him to do so, Respondent does not assert that he does not have access to US television stations, nor does Respondent assert that he was unaware of Complainant’s mark AMERITRADE when he registered the disputed domain name.

 

In addition to its trademarks constituted by or incorporating the word AMERITRADE, Complainant also owns the website <ameritrade.com>, for which it has, since 1997, operated an online brokerage service.  Respondent accepts that a <.com> website is recognized worldwide as an online business and Respondent has plans to join the e-commerce revolution.  Respondent must therefore be taken to have some familiarity with the online environment.

 

Its thus appears that Respondent, through access to Complainant's television advertising and through access to the Internet, may have had opportunities, prior to the registration of the disputed domain name, to become aware of Complainant's trademark AMERITRADE.

 

The Panel does not find that the mark AMERITRADE is famous but, in all the circumstances, infers that it is more likely than not that Respondent was aware of that mark prior to registering the disputed domain name.  Accordingly, the Panel draws the conclusion that the disputed domain name was registered in bad faith.[5]

 

The ‘use’ requirement has been found not to require positive action, inaction being within the concept.[6]  As mentioned, the only use of the disputed domain name has been to lead to a web page provided by directNIC, an affiliate of the Registrar, where there is displayed a message that www.ameritradecanada.com is under construction, together with information provided by directNIC which includes material concerning competitors of Complainant.

 

Although Respondent did not provide this material, Respondent must be held responsible for its content especially since Respondent, as the Panel has found, was more likely than not aware of Complainant's trademark AMERITRADE prior to registering the disputed domain name. Respondent must therefore be taken to have been aware of the likelihood that potential customers of Complainant, thinking that the disputed domain name would lead them to a Canadian arm of Complainant’s business, would find themselves presented with information about Complainant's competitors and that this could be damaging to Complainant's business.  By thus allowing the disputed domain name to be used in a way injurious to Complainant, Respondent is itself using the disputed domain name in bad faith.

 

Harassment

The transmission to the Vice Provost of the Respondent's University of a copy of the Complainant’s cease and desist letter amounted to harassment of the Respondent.  Although this behavior is to be deplored, its does not lead to the conclusion that the Complaint was brought in bad faith. Accordingly, a declaration under rule 15 (e) is not justified.

 

DECISION

For the reasons set forth above, the Panel concludes that Complainant is entitled to relief under paragraph 4(i) of the Policy, and it is therefore ordered that the disputed domain name <ameritradecanada.com> be transferred to Ameritrade Holding Corporation.

 

 

Alan L Limbury, Panelist

 

Dated: October 10, 2001

 

 

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