Securities Investor Protection Corporation v. SIPC.COM c/o SeriousNet
Claim Number: FA0705000982722
Complainant is Securities Investor Protection Corporation (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sipc.com>, registered with Tucows.
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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 15, 2007. An Amended Complaint was also submitted to the National Arbitration Forum on May 18, 2007.
On May 14, 2007, Tucows confirmed by e-mail to the National Arbitration Forum that the <sipc.com> domain name is registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 May 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 7, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on June 7, 2007.
An Additional Submission by Complainant was timely received on June 11, 2007.
On June 13, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Amended Complaint, Complainant contends, among other things, the following:
The Securities Investor Protection Corporation (Thereinafter SIPC) is a non-profit, membership corporation that administers a quasi-public fund established to provide relief to customers of failed securities broker-dealers placed in liquidation under the Securities Investor Protection Act, 15 U.S.C. §§ 78aaa et esq.;
SIPC has been in existence since 1970 and is commonly known and referred to by the acronym “SIPC” by regulatory authorities, members of the securities industry, and the general public. Furthermore, SIPC has an Official Symbol which includes the word “SIPC” used for decades in its explanatory literature, website, rules, bylaws, and others;
SIPC obtained from the U.S. Patent and Trademark Office a service registration of the acronym “SIPC” and of its Official Symbol. SIPC has timely applied for a renewal of the registration while receiving a notice of acceptance of these applications where they would remain in effect for a period of ten years of the date of the renewal;
After its creation through the present, SIPC has maintained a website at <sipc.org>;
Less then eighteen months after obtaining its service mark, <sipc.com> was registered without authorization;
SIPC submits that the domain name <sipc.com> is identical in every respect to its <sipc.org> website, acronym and Official Symbol (ICANN Rule 3(b)(ix) (1) and ICANN Policy ¶ 4(a)(1((i));
SIPC noted that neither SeriousNet nor any product or service sold by it has ever been known by the name or acronym “SIPC.” In addition, SeriousNet uses the domain name <sipc.com> to refer Internet users not only to SIPC’s website but to commercial websites in various categories i.e. diverting unsuspecting Internet users;
SeriousNet has repeatedly, by one Steve Weber, attempted to sell the domain name <sipc.com> to SIPC at prices vastly exceeding its out-of-pocket costs;
On April 12, 2007, counsel for SIPC addressed SeriousNet and demanded that it cease and desist from its use of the domain name <sipc.com> and that it transfer to SIPC the registration of that domain name.
In its initial submission, Respondent contends, among other things, the following:
On October 21, 2003, SeriousNet purchased the registration of the domain name <sipc.com> and all the rights from Mr. Steve Weber. SeriousNet also asserted that Mr. Weber was never associated with the latter or <sipc.com> thereafter;
SeriousNet was not aware of Mr. Weber’s e-mails to SIPC, offering the domain name <sipc.com> for sale, nor were the electronic message offers disclosed to it, whereas, if it had known there was a dispute, it never would have purchased it. SeriousNet also argues that it has never offered the domain name <sipc.com> for sale to anyone;
On November 11, 2003, after the sale was completed between SeriousNet and Mr. Weber, SeriousNet immediately removed the site from the domains name for sale website. Furthermore, SeriousNet posted content regarding computer and data security intended to develop software for secure Internet privacy communication to be released through the disputed domain name website. Upon receipt of Complainant’s April 12, 2007, cease and desist letter, Respondent complied with Section 78kkk(d) of SIPA by including a hyperlink to <sipc.org> website;
SeriousNet explained that it has used the domain name to search for the keywords “Secure Internet Privacy Corporation” in the interim. In addition, SeriousNet argued that it does not promote the site and make income from pay-per-click, never diverted customers from <sipc.org>, and did not register the <sipc.com> in order to prevent SIPC of its Trademark or disrupting its business;
Furthermore, SeriousNet claims that SIPC has not shown why any consumer or user would ever want to visit Securities Investor Protection Corporation or what would motivate such consumer or user to do so;
SeriousNet alleges having no knowledge that the non-profit organization, Securities Investor Protection Corporation referred to themselves as SIPC, nor had registered the acronym SIPC as a Trademark until receiving the cease and desist letter sent by SIPC dated April 12, 2007. Moreover, SeriousNet still does not believe that SIPC has legitimate interests in the Trademark as a designation of goods or services in commerce;
Since October 16, 2003, after becoming the registrant of the domain name <sipc.com>, SeriousNet has never received or been notified of any possible consumer confusion between the disputed websites, while contending that SIPC has not provided any evidence of actual or possible consumer confusion;
SeriousNet argues that SIPC already has a website at <sipc.org> where the top-level domain specifies that it is a non-profit organization.
C. Additional Submissions
In its Additional Submission, Complainant contends, among other things, the following:
SIPC argues that a simple WHOIS search indicates that <sipc.com> was registered in February 1999 and not October 2003, and that the registrant was SeriousNet, not Mr. Weber. In fact, SIPC alleges that there is no credible evidence that there is any distinction between SeriousNet’s owner in 2001 and its current owners;
After the change of ownership, SIPC declares that SeriousNet has continuously engaged in bad faith usage of the domain name repeatedly from 2003 through the filing of the action;
Moreover, SIPC asserts that SeriousNet’s prior use of <sipc.com> confirms that it has knowledge of SIPC’s service mark because SeriousNet did such a search on several occasions and had access to precisely these search results;
Regarding the business activities, SIPC asserts that SeriousNet never used <sipc.com> to post content regarding computer and data security or its alleged software for secure Internet privacy communication, but rather constantly posted gambling links and advertisements. In addition, these advertisements have no evident relationship to the computer and data security software that SeriousNet was supposedly developing when the links were posted. Furthermore, no description of the Secure Internet Privacy Corporation were posted on <sipc.com> until sometime in May 2007, after receiving the cease and desist letter, and immediately prior to the filing of the action.
1- The disputed domain name <sipc.com> is identical or confusingly similar to a Trademark or service mark in which SIPC has rights;
2- SeriousNet has no rights or legitimate interests with respect of the disputed domain name <sipc.com>;
3- The disputed domain name <sipc.com> has been registered and is being used in bad faith.
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 with respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
From the facts herein, it appears that SIPC has long used and duly registered the Trademark and Official Symbol SIPC with the U.S. Patent and Trademark Office. Nevertheless, SeriousNet challenges, on the one hand, the validity of SIPC’s mark by forwarding that anyone is entitled to register a four-letter domain name combination where SeriousNet’s legitimate interest is established per se at the point of registration, since no other party can claim exclusive rights to a simple letter-combination domain name. In fact, this claim is clearly unfruitful because the registration of the Trademark and Official Symbol SIPC with the U.S. Patent and Trademark Office is prima facie evidence of the Trademark’s validity and rights in the mark which creates a rebuttable presumption that the mark is inherently distinctive (Owens Corning Fiberglas Tech., Inc v. Hammerstone, D2003-0903 (WIPO Dec. 29, 2003); Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002); Innomed Techs., Inc. v. DRP Services, FA 221171 (Nat. Arb. Forum Feb. 18, 2004)).
On the other hand, SeriousNet pretends having no knowledge of the existence of SIPC, nor that SIPC had registered the acronym as its Trademark, until receiving the cease and desist letter dated April 12, 2007. SeriousNet still does not believe that SIPC has legitimate interests in the Trademark as a designation of goods or services in commerce. SIPC has been in existence since1970, as a non-profit membership corporation and has maintained a website (<sipc.org>) continuously since February 1998 through the present. Furthermore, a simple web search would unequivocally reveal these facts. In addition, SIPC brought evidence confirming that SeriousNet knew of the existence of Complainant and its website (<sipc.org>) as early as September 7, 2005, and since that date, it displayed on its own website (<sipc.com>) several references to Complainant and its website (<sipc.org>). This willful ignorance does not constitute a defense.
Moreover, SeriousNet contends that the
top-level domain is sufficient to establish that SIPC is a non-profit
membership corporation, whereas, in Arthur Guinness Son & Co. (
[t]he suffix ".com" is of no significance. See The Forward Association, Inc., v. Enterprises Unlimited (NAF case FA0008000095491, October 3, 2000): “It should be noted that when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL, nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”. This applies equally where a domain name is composed in whole or in part of a trade mark.
In other words, in Rollerblade, Inc. v. Chris McCrady, D2000-0429 (WIPO June 25, 2000), it was established that the specific top level of the domain name such as ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Also, in Nev. State Bank v. Modern Ltd. - Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), it has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy. SeriousNet has failed to provide any evidence to support its conclusion claiming that the disputed domain name is not identical or confusingly similar to SIPC’s Trademark.
In that regard, the disputed domain name is confusingly similar and identical to a Trademark and Official Symbol in which SIPC has rights.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does possess rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) and as established in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000) (holding that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion. […]. Failure of a respondent to come forward with such evidence is tantamount to admitting the truth of complainant's assertions in this regard”). There is no evidence that SIPC has ever authorized SeriousNet to use the SIPC Trademark or to include it in any domain name (Orange Glo Int’l, Inc. v. Internet Hosting, FA 391316 (Nat. Arb. Forum Feb. 10, 2005)). In addition, SeriousNet never established, nor demonstrated, its rights or legitimate interests with respect to the disputed domain name in a manner described in the Policy ¶ 4(c).
SIPC brought evidence that the disputed domain name provides hyperlinks to commercial, gambling and advertisement websites other then a hyperlink to its own website. This indicates that SeriousNet may or has received monetary gain for its divergent use of the disputed domain name which is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) as SeriousNet has allegedly intended to develop software for secure Internet privacy communication, nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) (See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003); Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002)).
Pursuant to Policy ¶ 4(c)(ii), it is undisputed that SeriousNet is not, nor has ever been, commonly known by the disputed domain name for the purpose of developing software for secure Internet privacy. It seems to be unrealistic that software development would last more then 4 years (assuming that the software development started when SeriousNet bought the disputed website rights i.e. October, 2003 till December 2007) and will only be available via the disputed website whereas the exclusive contact information available is a street address. SeriousNet did not bring evidence indicating its software development activities. On the balance of probabilities, the website seems to be used to generate income from pay-per-click advertising posted before the present action.
Accordingly, SIPC showed that SeriousNet has no rights or legitimate interests with respect of the disputed domain name.
SIPC alleges that this is a case of cybersquatting where SeriousNet had, by acquiring and using the disputed domain name, deliberately hoped to divert to its website unsuspecting Internet users by anticipating their inadvertent web searching (Orange Glo Int’l, Inc. v. Internet Hosting, FA 391316 (Nat. Arb. Forum Feb. 10, 2005)). Moreover, the disputed domain name registration was offered for sale to SIPC for the amount of $1,500 and, later, for $10,000, prices that presumably are well above any out-of-pocket costs which corroborates the registration and use in bad faith of the disputed domain name pursuant to Policy ¶ 4(b)(i) (See World Wrestling Fed’n Entm’t, Inc. v. Bosman, D1999-0001 (WIPO January 14, 2000) (holding that “[b]ecause respondent offered to sell the domain name to complainant ‘for valuable consideration in excess of any out-of-pocket costs directly related to the domain name, respondent has ‘used’ the domain name in bad faith as defined in the Policy”)). It is likely that Mr. Weber was associated with SeriousNet because the latter only presented a Paypal transaction receipt of payment without any identification of the payor and the purpose of the payment, nor any evidence of e-mails exchange, price negotiation, contract of sale, etc.
However, it should be noted that SIPC’s argument regarding the fact that a WHOIS search indicates that <sipc.com> was registered in February 1999 and not October 2003, and that the registrant was SeriousNet, not Mr. Weber was not taken into account because what is displayed on the WHOIS search report is the actual registrant [emphasis added] and not the one at the time of the registration.
Pursuant to Policy ¶ 4(b)(iv), it is likely that SeriousNet has received financial compensation for diverting Internet users to the disputed domain name, constituting an attraction for commercial gain, which evinces registration and use in bad faith (See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (holding that the “Respondent is currently using the disputed domain name in order to attract Internet users interested in Complainant’s CELBREX product to Respondent’s website. Respondent is therefore using a confusingly similar domain name in order to attract Internet users to its website for its own commercial benefit.”); Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (also holding that registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith)).
SeriousNet claims that upon purchasing the disputed domain name registration, it never has offered the disputed domain name registration for sale. Further, SeriousNet alleges that it did not register the disputed domain name for the purpose of profiting off SIPC’s mark, nor to create a likelihood of confusion. No convincing evidence was brought forward by SeriousNet reflecting its right, legitimate interest and good faith use to the disputed domain name.
Additionally, it should be noted that SIPC has been in existence since 1970, and obtained, in 1997, a service registration of its acronym and Official Symbol from the U.S. Patent and Trademark Office. Based on the balance of probabilities, the Panel concludes that SeriousNet must have known of the existence of SIPC’s mark when it acquired the disputed domain name. The use of the disputed domain name by Respondent contrary to the Policy persuades the Panel of its bad faith (Repsol YPF, S.A. v. COMn.com, D2001-0741 (WIPO Aug. 23, 2001)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sipc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: June 27, 2007
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