Jason Goepfert, President and CEO c/o Sundial Capital Research, Inc. v. Anthony Rogers
Claim Number: FA0612000861124
Complainant is Jason Goepfert, President and CEO c/o Sundial
Capital Research, Inc. (“Complainant”), represented by Gregory B.
Perleberg, of Maslon Edelman Borman & Brand, LLP,
3300 Wells Fargo Center, 90 S. Seventh Street, Minneapolis, MN 55402. Respondent is Anthony Rogers (“Respondent”), 9 Limewood Close,
The domain name at issue is <sentimenttrader.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.
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.
Professor Darryl C. Wilson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 6, 2006.
On December 7, 2006, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <sentimenttrader.com> domain name is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that the Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com 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 December 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 28, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on December 18, 2006.
On January 3, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Professor Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that it founded the business SentimenTrader in 1998
and began a website presence using that name in 2001. Complainant further states that its website
has subscribers in all 50 states domestically (
Respondent asserts that the disputed domain <sentimenttrader.com> was registered in good faith as Respondent was totally unaware of Complainant’s website and services at the time the disputed domain was registered. Respondent also states that the disputed domain is comprised of common terms and that Complainant’s domain did not initially have a strong web presence but was relatively unknown at the time Respondent requested his domain. Respondent asserts that it has maintained a viable business since it was established and thus has a legitimate interest in the disputed domain.
Complainant established and operates a
subscription-based financial research and services business called
SentimenTrader. Complainant’s business
researches and reports on the sentiment of the financial markets for the
benefit of subscribers seeking to improve their marketplace performance. The domain name <sentimentrader.com> was
created January 24, 2002 for Complainant who claims to have established “a
website presence” some time in 2001.
Complainant is an individual who identifies himself by name as well as
by the title, President and CEO of the company Sundial Capital Research,
Inc. The address given for Complainant’s
Respondent is an individual whose address is
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.
Although Complainant admittedly does not own a trademark registration for the mark SENTIMENTRADER, common law rights are sufficient to satisfy ICANN Policy ¶ 4(a) (i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also 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).
purports to have subscribers to its service throughout the
Respondent’s domain name <sentimenttrader.com> differs from Complainant’s mark by the mere addition of an extra “t,” which is also a common misspelling of Complainant’s name and can thus be construed as confusingly similar. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar).
Complainant has proven this element.
Complainant alleges and Respondent admits that he is not commonly known by the <sentimenttrader.com> domain name. Respondent counters that Complainant is also not commonly known by its mark. Such proof usually extends from the establishment and strength of Complainant’s mark. It is also undisputed that the parties were not associated in the past nor has Complainant ever authorized or licensed Respondent to register its mark or use a domain name incorporating any variation of Complainant’s mark SENTIMENTRADER. However, Respondent alleges that the terms “sentiment” and “trader” are commonly used in the stock market and futures industries, thus Complainant does not have the excusive right to use the terms in its domain name.
The term “sentiment indicator” is generally used in stock market parlance to refer to various types of measurements that identify certain non-mechanical attributes of investors, as well as the psyche of the market itself. Market sentiment has been used for decades, predating the establishment of both parties’ businesses, to assist investors’ predictions of where to best place their funds. “Trader” is a merely descriptive term that has also been associated with the stock market since its inception and is so common in the industry as to preclude protection. Nor does the intentionally misspelled combination of the word “sentiment,” in combination with the word “trader,” confer any protectable degree of distinctiveness on the terms claimed by Complainant. See CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (“CONCIERGE is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website.”); see also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic terms to which the complainant cannot maintain exclusive rights).
Respondent alleges that it offers different services than Complainant as its product is software used to measure market sentiment for the futures market. Complainant does not deny the distinction between the services but instead alleges that Respondent is engaged in redirecting Internet users to its competing website to take advantage of Complainant’s goodwill. No support for the alleged redirection is provided and the only direct evidence of competition is the allegation that Respondent’s site prominently features market data and allows individuals to sign up to receive various types of market information like Complainant’s website. Since these traits are common to websites that focus on stock market trends, the inclusion of those options on Respondent’s website does not make the website illegitimate. Respondent is making a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). See Port of Helsinki v. Paragon Int’l Projects Ltd., D2001-002 (WIPO Feb. 12, 2001) (finding rights or legitimate interests in the <portofhelsinki.com> domain name because the respondent was using the disputed domain name in order to provide information about services available in different ports around the world); see also Safeguard Operations, LLC v. Safeguard Storage, FA 672431 (Nat. Arb. Forum June 5, 2006) (finding that the respondent’s operation of a self-storage facility and execution of a business plan demonstrate that the respondent has rights or legitimate interests under Policy ¶ 4(c)(i)).
Complainant has NOT proven this element.
As the Panel has determined Respondent has
rights or legitimate interests in the disputed domain name, the Panel also
finds that Respondent did not register or use the domain name in bad faith
pursuant to Policy ¶ 4(a)(iii)). See
Complainant contends that after it offered Respondent a substantial sum in exchange for the disputed domain name, Respondent requested a “highly inflated” price which is indicative of bad faith registration and use. The Panel finds that participating in negotiations instigated by an interested purchaser over the potential sale of a domain name is not evidence of bad faith per se and that findings to the contrary ignore the realities of the marketplace. Respondent asserts that it has never offered its domain name for sale other than when responding to prospective buyers and that its website has remained substantially the same since its inception.
Furthermore, the common usage of the terms “sentiment” and “trader” in the financial services industry further support Respondent’s claim that he did not deliberately register the disputed domain name in bad faith. See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that, where the domain name is comprised of a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of the respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”); see also Trump v. olegevtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com> does not infringe on the complainant’s famous mark TRUMP, since the complainant does not have the exclusive right to use every form of the word “trump”).
Complainant has NOT proven this element.
As Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Professor Darryl C. Wilson, Panelist
Dated: January 17, 2007
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