Ameritrade IP Company, Inc. v. Christopher
Daggett
Claim Number: FA0601000626756
PARTIES
Complainant is Ameritrade IP Company, Inc. (“Complainant”), represented by Julie Anne Matheson, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 901 New York Avenue Nw, Washington, DC 20001. Respondent is Christopher Daggett (“Respondent”), 46 Center Street, Annandale, NJ 08801.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdameritrade.net>,
<tdameritrade.org>, <tdameritrade.biz> and <tdameritrade.info>, registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Paul M. DeCicco as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 13, 2006; the National Arbitration Forum received a
hard copy of the Complaint on January 16, 2006.
On January 13, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <tdameritrade.net>,
<tdameritrade.org>, <tdameritrade.biz> and <tdameritrade.info> domain names are 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 January 16, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 6, 2006 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@tdameritrade.net,
postmaster@tdameritrade.org, postmaster@tdameritrade.biz and
postmaster@tdameritrade.info by e-mail.
A timely electronic form Response was received on February 6, 2006. The Response was not received in hard copy
form, therefore the Forum does not consider this Response to be in compliance
with ICANN Rule #5(a).
On February 14, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco, esq. as Panelist.
As noted above, the respondent’s failure to submit a hard copy of the
response is a technical breach of the Rules. However, it does not appear from
the record that the absence of the hard copy materially impacts the process or
the Panel’s ability to fairly consider the parties’ respective positions. This
coupled with the fact that the Complainant has not objected to the lack of a
hard copy submission of the Response leads the Panel to conclude that a review
of the Response is appropriate. See generally, J.W. Spear & Sons
PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Ameritrade IP Company, Inc. is a Delaware corporation
and wholly owned subsidiary of Ameritrade Holding Corporation, which uses the AMERITRADE trademark by
permission. Ameritrade IP Company, Inc.
and Ameritrade Holding Corporation are collectively referred to as
“Ameritrade.”
The <tdameritrade.net>, <tdameritrade.org>, <tdameritrade.biz> and <tdameritrade.info> domain names fully incorporate and are confusingly similar to Complainant’s famous and federally registered trademark AMERITRADE.
Respondent does not have rights or a legitimate interest in the Domain Names because they trade on the goodwill of Complainant’s AMERITRADE mark, and Respondent’s use of the AMERITRADE mark is unauthorized. Respondent is not, and has never been, a licensee of Complainant. Respondent is not, and has never been, authorized by Complainant to use the AMERITRADE mark.
Respondent’s registration and use of the Domain Names meets the bad-faith requirement described in Policy ¶ 4(b) of the UDRP.
The AMERITRADE mark symbolizes the tremendous goodwill associated with Ameritrade and is a property right of incalculable value. Due to wide and substantial use, Ameritrade’s AMERITRADE mark has become famous.
Ameritrade owns multiple trademark registrations and applications for the AMERITRADE mark in the United States, including the following representative examples:
· Registration No. 2,032,385, first used March 30, 1981, filed May 28, 1996, issued January 21, 1997, covering services in International Class 36 (securities brokerage services).
· Registration No. 2,411,005, first used October 1997, filed September 26, 1997, issued December 5, 2000, covering services in International Classes 36 (investment brokerage and financial and market services, namely, providing quotes on securities and commodities, economic research, economic news, securities and investment information) and 41 (conducting classes, seminars and workshops in the field of finance and investments and distributing course materials therewith).
· Registration No. 2,701,664, first used October 1997, filed March 28, 2000, issued April 1, 2003, covering services in International Classes 9 (computer software for financial investment), 16 (publications on investing and financial management), 35 (economic forecasting and analysis), 36 (investment brokerage and financial and market services, including providing economic research, economic news, and investment information), and 41 (conducting classes, seminars and workshops in the field of finance and investments and distributing course materials therewith).
Ameritrade’s registrations for the AMERITRADE mark on the Principal Register constitute prima facie evidence of the validity of the AMERITRADE mark and Ameritrade’s exclusive right to use its mark throughout the United States. Ameritrade’s registration also constitutes constructive notice of Ameritrade’s claim of ownership in the AMERITRADE mark, as to eliminate any defense of good faith adoption and use made as of the date of registration.
Registration of a trademark on the Principal Register statutorily provides nationwide rights as of the filing date of the application.
Ameritrade’s trademark rights in its AMERITRADE mark, based on its federal trademark registrations and/or common-law rights acquired through extensive use of its mark, long predate Respondent’s registration of the Domain Names.
Respondent registered the domain
names on May 31, 2005; many years after
Complainant began using its AMERITRADE mark, years after the effective dates of Complainant’s trademark
registrations for its mark, and years after the AMERITRADE mark became famous.
Respondent registered the domain names on the same day Ameritrade issued
a press release confirming its discussions with TD Bank Financial Group
regarding a potential transaction involving TD Waterhouse U.S.A. and numerous stories were published by
various news media outlets regarding Ameritrade’s talks with
TD Bank Financial Group and
speculating about Ameritrade’s likely acquisition of TD Waterhouse
Respondent currently uses the domain names for a "coming soon" website which states that the site will provide information to help consumers choose between competing online brokerage firms, including Ameritrade and TD Waterhouse, as well as Ameritrade’s competitors Scottrade, E-Trade, Charles Schwab, and Fidelity Investments. Respondent’s website also uses the trade name TDAmeritrade.net.
On December 21, 2005, Complainant through its counsel sent Respondent a
cease-and-desist letter regarding
his infringement of the AMERITRADE mark and demanding the transfer of the
Domain Names to Ameritrade, among other things.
Respondent replied to Complainant’s cease-and-desist letter by offering to sell the Domain Names to Ameritrade for $68,550. Specifically, Respondent demanded $18,550 of “development costs” for his website, including $17,500 for Respondent’s “business planning,” and $50,000 of “projected revenues from advertising” on his website associated with the Domain Names. Respondent also refused Complainant’s offer to reimburse him for his domain name registration fees. Respondent’s demand of $50,000 for “projected revenues from advertising” establishes without question that Respondent registered and intends to use the Domain Names for a commercial purpose.
Each of the at-issue domain names is confusingly similar to Complainant’s famous and federally registered AMERITRADE mark because each is comprised of Complainant’s AMERITRADE mark in its entirety and TD Waterhouse USA’s mark TD. Combining Complainant’s AMERITRADE mark with the mark of TD Waterhouse USA is not sufficient to distinguish the Domain Names from Complainant’s mark.
Respondent is not and has not been commonly known by the domain names prior to registering them. Further, Respondent’s use of the domain name <tdameritrade.net> as a trade name on his website does not demonstrate any legitimate interest of Respondent in the Domain Names, as Respondent cannot justify its misappropriation of a trademark in a domain name merely through use of that same mark in a trade name.
Respondent’s registration and use of the domain names that contain and trade on the goodwill of Complainant’s AMERITRADE mark and use of the domain names to promote the services of Complainant’s competitors does not and cannot constitute a bona fide offering of goods or services under the UDRP. Nor do Respondent’s activities constitute a legitimate noncommercial or fair use of the Domain Names under the UDRP.
Respondent’s willingness to sell the Domain Names is evidence that Respondent lacks rights and legitimate interests in the Domain Names.
Respondent’s registration and use of the Domain Names meet the bad
faith element set forth in Policy ¶ 4(b)(iv) of the UDRP. Specifically, Respondent uses the Domain
Names to intentionally attract, for commercial gain in the form of $50,000 of
anticipated advertising revenues, Internet users to his website by creating a likelihood of confusion with Complainant and its AMERITRADE mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s
website, and the competing financial services companies listed on Respondent’s
website.
Respondent’s registration
and use of the Domain Names meet the bad faith element set forth in Policy ¶
4(b)(i) of the UDRP because Respondent registered the Domain Names to sell,
rent, or otherwise transfer them for valuable consideration in excess of his
documented out-of-pocket expenses.
Respondent’s registration and use of the Domain Names meet the bad faith element set forth in Policy ¶ 4(b)(iii) of the UDRP because Respondent is using and/or intends to use the Domain Names to promote the services of Complainant’s competitors.
Respondent’s registration
and use of the Domain Names meet the bad faith element set forth in Policy ¶
4(b)(ii) of the UDRP because Respondent’s registration of the four Domain Names
constitutes a pattern of registering trademark-related domain names in bad
faith.
Respondent registered the Domain Names opportunistically in bad faith on the same day that Ameritrade confirmed its talks with TD Bank Financial Group about TD Waterhouse U.S.A., a confirmation that was widely reported in news outlets reaching many millions of people, and after Ameritrade’s talks regarding TD Waterhouse U.S.A. were the subject of substantial news coverage and media speculation.
Finally, Respondent’s registration of the Domain Names with knowledge of Complainant’s rights in its
famous and federally registered AMERITRADE mark constitutes bad faith.
B. Respondent
Respondent contends as follows:
Respondent is Christopher D. Daggett.
The <tdameritrade.net>, <tdameritrade.org>, <tdameritrade.biz> and <tdameritrade.info> domain names are not confusingly similar to Complainant’s famous and federally registered trademark AMERITRADE.
Respondent has rights and a legitimate interest in the domain names. As evidenced by the existing website, this is a newly formed venture within the same field as the complainant. Registered in May of 2005, the TDAMERITRADE websites are the vision of their president and founder, Christopher Daggett. The goal of the websites is to promote the latest deals and bargains found in the on-line trading industry. Before, during and after the registration of these names, significant planning and development has gone into the launch of the websites.
The Respondent registered the unique websites listed above on 5/31/05. It was not until 12/7/05 that the Complainant applied for a trademark on the TDAMERITRADE mark now in question.
Respondent’s registration and use of the Domain Names does not meet the bad-faith requirement described in Policy ¶ 4(b) of the UDRP.
“Tdameritrade” was an unused, untrademarked, unique name, coined by the founder of the <tdameritrade.net> websites and their subsidiaries.
The <tdameritrade.net> domain name is a planned forum for the sharing of information regarding the on-line investment industry. This includes the review of many companies, including the named complainant, and many of their direct competitors.
On June 22, 2005, Ameritrade publicly announced plans to acquire TD Waterhouse U.S.A. (“TD Waterhouse”) from The Toronto-Dominion bank. This was nearly one month after the registration of the websites in question. At the time of the acquisition, there was also no mention of any new name or trademark for this new entity.
Ameritrade’s potential acquisition of TD Waterhouse had no bearing on the respondent’s decision to register the <tdameritrade.net> and other websites. Contrary to the argument that there was press related to this potential merger, there was NEVER any mention of a new name, and there were several companies all named in such “rumors.”
Respondent registered the Domain
Names on May 31, 2005, many months
before Complainant began using its TDAMERITRADE mark, which was not trademarked until December 2005.
Respondent has only registered the Domain Names in question in this
complaint. There at no time was any mention of a “possible” name for any merger
of these companies, therefore a speculator clearly would have registered a
number of potential name combinations, not just one.
Upon being
contacted by legal counsel for the complainant, the respondent made it very
clear that a simple reimbursement of out of pocket expenses would be sufficient
to transfer the domain names in question.
If there were any confusion between my names and the complainant’s,
then there would have been no reason for the complainant to trademark the new
name they decided to use, which happens to be the same name I coined for my
websites.
The fact that no trademark was obtained or was in process prior to the registration of the domain names in question, the complainant has no legitimate rights to demand transfer.
At the time of registration, the respondent had no way of knowing that the domain names in question would be of interest to another company.
Upon learning of the creation of a brand new company that had decided to use the same named coined by the respondent, all development ceased until further notice.
All information used in the registration of the named websites was current and accurate.
These are also the only websites currently owned by the complainant.
There is no evidence to support the claim of bad faith, therefore this claim should be denied on that basis and that basis alone.
Complainant holds rights to the trademark
AMERITRADE by virtue of federal trademark registrations for several classes of
goods.
Respondent is not licensed or authorized to
use Complainant’s trademark for any purpose.
Respondent registered the at-issue domain
names. At the time of registration
Respondent was aware of the Complainant’s AMERITRADE mark and aware of a
possible merger between Ameritrade and TD Waterhouse.
Respondent’s intended use of the domain names
was for commercial purposes that were not aligned with the interests of
Complainant.
Respondent offered to sell the domain names
to complainant in an amount that exceeded his out of pocket costs. The offer
was made in the context of settling the dispute between the parties after being
contacted by the 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 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.
Top level domain names are generally ignored for the purpose of making
a determination under Policy ¶4(a)(i). Daedong-USA,
Inc. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003).
Thus, the threshold issue of the
whether or not the Complainant has trademark rights in the at-issue domain name
was previously decided in this forum.
In Ameritrade Holding Corporation v. Anthony Lee D'Amato, the
panel held that the complainant, there as here Ameritrade Holding Corporation,
had actionable trademark rights in the mark AMERITRADE with regard to another’s
registration of <tdameritrade.com>. FA 503053 (Nat Arb. Forum August 1, 2005). However, in that
dispute there was no response. The decision was made in light of a default by
the domain name’s registrant. The findings in Ameritrade Holding Corporation
are thus insufficient to be conclusive in this proceeding.
Nevertheless, Complainant, in the instant proceeding, shows prima
facie evidence of trademark rights in its AMERITRADE mark. Complainant has established rights in the AMERITRADE mark by showing
rights in a trademark registered with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,032,385
issued January 21, 1997). See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18,
2001). Respondent does not take issue
with Complainant’s claim of rights in the trademark AMERITRADE.
Top level domain names are generally ignored for the purpose of making a determination pursuant to Policy ¶4(a)(i). Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003). The <tdameritrade.net>, <tdameritrade.org>, <tdameritrade.biz> and <tdameritrade.info> domain names are confusingly similar to Complainant’s AMERITRADE mark because these second level domain names incorporate Complainant’s mark in its entirety merely adding the letters “td”. Such minor additions to Complainant’s registered mark are insufficient to negate the confusingly similar aspects of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000). Additionally, Respondent fails to explain why he picked the <tdameritrade.net> domain name or how the prefixing of Complainant’s mark with “td” creates a non-confusing mark in light of the existence of the recently formed TD AMERITRADE and the existing AMERITRADE mark.
The domain name is thus confusingly similar to the Complainant’s trademark.
Once Complainant makes a prima
facie case for Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish
rights or legitimate interests in the disputed domain names. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000). Here the
Complainant has made such a showing.
But Respondent fails to show that he has legitimate rights or interest
in the domain name in view of
Complainant’s contentions.
Respondent is neither authorized nor licensed to register or use domain
names that incorporate Complainant’s mark. Respondent is not commonly known by
the <tdameritrade.net>, <tdameritrade.org>,
<tdameritrade.biz> or <tdameritrade.info> domain name. Respondent is not commonly known by the <tdameritrade.net>,
<tdameritrade.org>, <tdameritrade.biz> and <tdameritrade.info>
domain names.
Nor does Respondent have rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). Respondent as made no showing that it has been know by the domain name prior to registration. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii).
Respondent only impliedly argues
that he has rights and/or legitimate
interests in the disputed domain
names ostensibly because he is using the domain names to make a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), by providing
information regarding the on-line investment industry. See
Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO
Aug. 17, 2000). To wit, the Respondent
baldly states that the goal of his TDWATERHOUSE
websites is to promote the latest deals and bargains found in the on-line
trading industry. Respondent goes on to state that before, during and after the
registration of these names, significant planning and development has gone into
the launch of the websites. But,
Respondent presents no compelling evidence that corroborates his aversions.
Respondent shows neither a detailed business model nor an academic
justification for the registrations and planned websites. The Respondent’s offering
therefore appears contrived.
Moreover, even if the Respondent’s claimed offering of goods and services was credible, the use of another’s trademark is not a bona fide offering since Respondent’s domain names are confusingly similar to Complainant’s AMERITRADE trademark. Such use is not a fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002).
What is striking about the at-issue registrations it that there is no apparent reason why Respondent registered the somewhat fanciful second level domain name, TDAMERITRADE, unless he anticipated or knew that “TD Ameritrade” might act as a trademark following the merger of TD Waterhouse and Ameritrade. Complainant shows that news of the possible combining of TD Waterhouse and Ameritrade was well published. It is disingenuous of Respondent to feign that he knew nothing of the anticipated merger and that the particular character string, “TDAMERITRADE,” was registered under several top-level domain names simply by happenstance. Respondent knew of the AMERITRADE mark and TD WATERHOUSE marks, knew, or should have known of the trademark rights in such marks, and surely anticipated that a new entity might be identified by merging the marks into a “TD Ameritrade.”
Indeed, the only logical reason that Respondent registered the domain names was to either trade on an anticipated “TD Ameritrade” mark, or the existing AMERITRADE mark, or both; or to sell the domain names to the Complainant or some other party. If, as Respondent wants the Panel to believe, his purpose in registering the domain names was an innocent purpose or fair use, then why hasn’t Respondent continued its business under another domain name? If he actually believed the registrations to be righteous and was launching a legitimate business, then why isn’t he proceeding with operating related websites? The answer to both these questions is clear. Respondent realizes that his actions regarding the registration and use of the at-issue domain names may have run afoul of the UDRP.
It is also clear that the AMERITRADE mark’s potential trademark value gives value to domain name and to any websites referenced by such mark. Not the other way around. Registering a domain name, which knowingly infringes the rights of Complainant, is contrary to the registration agreement between the Registrar and the Respondent/Registrant. The Policy expressly proscribes using the domain name against the rights for others. Policy ¶ 2(b) et seq.
Furthermore, Respondent’s registration and use of the domain names meet the bad faith criteria set forth in Policy ¶ 4(b)(iii) of the UDRP because Respondent is using and/or intends to use the Domain Names to promote the services of Complainant’s competitors. Respondent claims that the intended use of the websites referenced (or to be referenced) by the at-issue domain names are intended to promote the latest deals and bargains found in the on-line trading industry. Respondent admits that his newly formed venture is within the same field as Complainant’s business. Respondent’s announced activities are in opposition to Complainant and sufficient to define Respondent as a competitor under the UDRP. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
Finally, Complainant argues that the Respondent’s registration and use of the at-issue domain names meet the bad faith requirements of Policy ¶ 4(b)(i). That section declares that attempting to sell or transfer a domain to the Complainant for an amount in excess of out of pocket costs evidences bad faith. However, although here Respondent’s offer to sell the domain names to the Complainant for the amount of $68,550 exceeds Respondent’s “out of pocket costs,” there is an indication that Respondent made his offer as part of an attempt to settle the dispute between the parties.
Panels are split as to whether or not the principals underlying Federal Rule of Evidence 408 should be applied to UDRP disputes. For a discussion regarding the application of Fed. Rule Evid. 408 to UDRP proceedings: see generally, Geissler, For Sale Signs in Cyberspace, B.C. Intell. Prop. & Tech. F. 111801 (2002). The Panel, having found other evidence of bad faith convincing, chooses not to decide whether or not the circumstance surrounding the Respondent’s offer to sell the domain name should work to exclude this evidence from the Panel’s consideration on Fed. Rule Evid. 408 grounds. Therefore, the Panel makes not finding as to whether or not bad faith is shown under Policy ¶ 4(b)(i).
For the reasons stated above the Panel agrees with Complainant in its claim that Respondent’s registration and use the domain names constitute bad faith under Policy.
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 <tdameritrade.net>,
<tdameritrade.org>, <tdameritrade.biz> and <tdameritrade.info> domain names be TRANSFERRED from
Respondent to Complainant.
Paul Michael DeCicco, Panelist
Dated: February 28, 2006
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