National Arbitration Forum

 

DECISION

 

Pink Sheets, LLC v. Ken Weiner

Claim Number: FA0508000536143

 

PARTIES

Complainant is Pink Sheets, LLC (“Complainant”), represented by Stephen J. Nelson, of The Nelson Law Firm, LLC, 75 South Broadway, White Plains, NY 10601.  Respondent is Ken Weiner (“Respondent”), represented by David A. Schrader, of Schrader & Schoenberg, LLP, 420 Lexington Avenue, Suite 628, New York, NY 10170.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pinkpicks.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 no known conflict in serving as Panelist in this proceeding.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 15, 2005.

 

On August 9, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <pinkpicks.com> domain name is registered with Go Daddy Software, Inc. and that the 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 18, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 7, 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@pinkpicks.com by e-mail.

 

An untimely Response was received and determined to be complete on September 8, 2005.  Respondent’s Response was received one day after the deadline for response set forth pursuant to ICANN Rule 5(a).   In the exercise of its discretion, the Panel will accept Respondent’s untimely Response.  See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000).

 

On September 14, 2005 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant

 

According to its Complaint, Pink Sheets LLC (the “Complainant”) is the leading provider of pricing and information for the over-the-counter (“OTC”) securities markets.  It provides, among other things, an Internet-based electronic quotation and trade negotiation service for OTC equities and bonds.  Complainant holds a trademark for PINK SHEETS, which identifies Complainant as “the leading provider of services for the OTC securities markets.”  Complainant contends that Respondent’s disputed domain name, <pinkpicks.com>, is a reference to “Pink Sheets Stock Picks” and therefore constitutes a direct reference to the Pink Sheets trademark and the services offered by Complainant. 

 

B.     Respondent

 

Respondent states that Complainant’s trademark registration for PINK SHEETS is within Class 16, which is for paper goods and printed matter.  Respondent states that Complainant did not file a trademark application for PINK SHEETS in the class for financial and monetary affairs until November 9, 2004, and that the application is still pending and has not been approved.  Respondent states that its registration of the disputed domain name in December 2003 predates Complainant’s application to register its trademark in the International Category 36 pertaining to financial and monetary affairs.  Respondent states that the term “pink sheet stocks” has become a generic term synonymous with small, thinly-traded stocks.  Moreover, Respondent states that there is no likelihood of confusion between its domain name and Complainant’s site.

 

FINDINGS

Complainant is a leading provider of pricing and information for the over-the-counter securities markets.   Complainant holds a trademark for PINK SHEETS in International Trademark Class 16, which relates to paper goods and printed matter.  On November 4, 2004, Complainant filed an application to register the PINK SHEETS mark in International Class 36, which includes “insurance; financial affairs; monetary affairs; real estate affairs.”  As of the date of this Decision, Complainant’s application is still pending and has not been approved.  Respondent registered the disputed domain name on December 14, 2003.

 

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 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.

 

To prevail in this proceeding Complainant must establish all three elements.  Because the Panel finds that Complainant has not proven that the domain name at issue is identical or confusingly similar to Complainant’s trademark, it is not necessary to consider the remaining issues.

 

Identical and/or Confusingly Similar

 

The identical or confusingly similar issue under ICANN is analyzed by comparing the domain name and the trademark.  If the domain name itself and the trademark itself are “identical or confusingly similar,” the type of analysis contemplated under trademark law is not required.  See generally Robert Badgley, Domain Name Disputes § 6.08 (2002).

 

Comparing the trademark with the disputed domain name, the Panel finds that the two are not identical nor are they confusingly similar.  Complainant has trademark rights in a mark that adds to the generic term “pink,” the word “sheets.”  Respondent’s domain name adds to the generic word “pink,” the word “picks.”   The use of the common word “pink” does not create a confusing similarity between the trademark and the domain name.  See Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000). 

 

Moreover, the record supports Respondent’s contention that Complainant’s mark and Respondent’s domain name, on their respective websites, are presented in a dissimilar manner, thus making it unlikely that Internet users would confuse the two.  On Complainant’s website, “Pink Sheets” is all in lower case letters, is broken into two halves with the word “pink” printed in the color pink half a line higher than the word “sheets” which is in white.  On Respondent’s website, the phrase “Pink Picks” is in all capital letters, is on one line and the letters are in alternating colors of pink, white and green.  And, below the word “PinkPicks.com” is the phrase, “A SHAZAMSTOCKS, INC. COMPANY” in capital letters.  Thus, the possibility of confusion between Complainant’s and Respondent’s respective businesses is unlikely.

 

Accordingly, in the opinion of the Panel, Complainant’s trademark and Respondent’s domain name are neither identical nor confusingly similar.

 

DECISION

Having failed to establish that the domain name at issue is identical or confusingly similar to Complainant’s mark, the Panel concludes that relief shall DENIED.

 

 

 

 

Bruce E. Meyerson, Panelist
Dated: September 27, 2005