Efutures.Com LLC v. Cannon Trading
Company Inc.
Claim Number: FA0112000103056
PARTIES
The
Complainant is John D.
Streich Efutures.Com LLC, Platteville, WI, USA (“Complainant”)
represented by Jill J. Gladney, of Knepper & Gladney. The Respondent is Cannon Trading Company Inc., Beverly Hills, CA, USA (“Respondent”)
Lee Fredric Shara, of Trojan Law
Offices.
The
domain names at issue are <e-futures.biz>
and <efutures.biz>, registered with Network Solutions.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on December 14, 2001; the
Forum received a hard copy of the Complaint on December 17, 2001.
On
December 21, 2001, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 10, 2002 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with paragraph 2(a) of the Rules
for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on January 30, 2002.
Additional
Submissions were received timely on February 4, 2002.
On February 13, 2002, pursuant to STOP Rule 6(b), the
Forum appointed The
Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.
The
Complainant requests that the domain names <e-futures.biz>
and <efutures.biz> be transferred from the Respondent to the
Complainant.
A.
Complainant
Complainant,
efutures.com, LLC, and Respondent, Cannon Trading Company, Inc., each are claiming
rights in the mark EFUTURES. The
Respondent has registered the domain names <e-futures.biz> and
<efutures.biz> and Complainant seeks to have the domain names
transferred to it.
Complainant
asserts that it has common law rights in the EFUTURES mark because it has used
the mark in commerce since 1997 in connection with public, and
commodity-related account information, as well as trades and related
transactions of commodity futures contracts and options thereon.
Complainant asserts that Respondent does not have any
trademarks or service marks in the EFUTURES mark and therefore has not
demonstrated that it has rights or legitimate interests in the disputed domain
names pursuant to STOP Policy ¶ 4(c)(i).
Complainant
alleges that Respondent, a competitor of Complainant, intends to use the
disputed
domain names in order to attract Internet users to Respondent's website.
Complainant
believes that its existing and potential customers who are attracted to
Respondent’s web site will now be misled about the source, sponsorship,
affiliation and endorsement of Respondent’s site and the inference (created by
the name of the site and the logo displayed there) that it belongs to and is
sponsored by Complainant.
Complainant
further asserts that Respondent is commonly known as Cannon Trading Company,
Inc., not by EFUTURES and therefore has not demonstrated that it is commonly
known by <efutures.biz> or <e-futures.biz> pursuant
to STOP Policy ¶ 4(c)(iii).
Complainant
further asserts that Respondent was on notice of Complainant's mark when it
registered the disputed domain names.
B.
Respondent
Respondent, Cannon Trading Company, Inc., asserts
that Complainant has only been doing business as EFUTURES and EFUTURES.COM
since 2000. Respondent asserts that it was known as
EFUTURES.COM three years before Complainant began using EFUTURES in relation to
its business, and therefore, has rights in the <efutures.biz> and
<e-futures.biz> domain names pursuant to STOP Policy ¶
4(c)(iii). Respondent contends that it
registered and began using the domain name <e-futures.com> in May of 1997
whereas Complainant didn’t use the mark for the offering of futures services
until November 2000.
Respondent further asserts that Complainant does not
have exclusive rights in the EFUTURES mark because the United States Patent and
Trademark Office rejected Complainant's application for EFUTURES and
EFUTURES.COM as descriptive.
Respondent
asserts that its use of the <efutures.biz> and <e-futures.biz>
domain names will be legitimate because they will be used for a bona fide
offering of services pursuant to STOP Policy ¶ 4(c)(ii).
Respondent
denies any bad faith in relation to the registration of the disputed domain
names.
C.
Additional Submissions
In
their additional submissions the parties challenge the accuracy of the other’s
statements and the legitimacy of the other’s motives. Each contend superior rights in the disputed domain names.
In
its Additional Submissions, Complainant asserts that it has superior rights to
the EFUTURES mark because it registered <efutures.com> in February of
1997, whereas Respondent registered <e-futures.com> in May of 1997. Furthermore, Complainant asserts that it
used EFUTURES as a brand name among its various related corporate entities
relating back to 1997. Complainant
asserts that Respondent is acting in bad faith. Furthermore, Complainant asserts that Respondent's figures and
statistics are false, and that it is really not as successful of a business as
Respondent makes itself out to be.
Respondent asserts in its Additional Submissions
that it has proof that its <e-futures.com> domain name appeared before
Complainant's website in 1997, and therefore it has superior rights to <e-futures.biz> and <efutures.biz>. Respondent
asserts that Complainant's Additional Submission is false, and the evidence
included within it is fabricated.
Furthermore, Respondent asserts that it has not acted in bad faith
because it has a legitimate business interest located at <e-futures.com>
and plans to include the disputed domain names in this business.
1. Complainant’s
trademarks/service marks at issue are “EFUTURES” and “EFUTURES.COM” (the latter
of which is the subject of United States Patent and Trademark Office (“USPTO”)
Trademark Application Serial No. 78/038282).
Complainant claims common law trademark rights to both marks. Complainant contends it has used these marks
continuously since March 1997 in connection with providing services to the
public, including commodity-related account information and automated
processing of customer orders to buy, sell and write trades and related
transactions of and in commodity futures contracts and option thereon.
2. Complainant,
efutures.com, LLC, is a commodity brokerage firm, but in technical parlance, it
is a non-clearing “futures commission merchant,” (as that term is defined in
the Commodity Exchange Act, 7 USC § 1, et seq.,). Complainant is registered as such with the National Futures
Association (“NFA”), the federally created self-regulatory organization which
establishes and enforces rules and standards applicable to customer protection
and minimum financial requirements for participant businesses in the futures
industry. Complainant is a limited
liability company constituted under the laws of the State of Delaware. The history of efutures.com and its
corporate affiliates, First Capitol Ag, Inc. (“FCA”) and Futures Express dates
back to the late 1980’s in Platteville, Wisconsin, where all three entities
currently operate from a single, consolidated principal place of business. All three entities are operated, managed and
controlled under the direction of John D. Streich and his wife, Michelle L.
Streich. Mr Streich has been employed in
the commodities industry on an ongoing basis for the past 18 years, and is a member
of the Board of Directors of NFA.
3. FCA,
the first of Mr. Streich’s enterprises, was founded in 1989. Its original customers were agricultural
producers and handlers who use the futures markets to hedge their crops
(primarily livestock and grains, and their respective derivative commodities),
production and inventories. Four years
later, in 1993, Futures Express was formed to assist clients desirous of
speculating in stock index futures contracts.
4. By
the mid to late 1990s, advancing technology gave the commodity futures industry
the ability to trade “on line. In 1997,
the Streichs formed a business, efutures.com, particularly tailored to satisfy
the demands of self-directed traders needing 24/7 access to futures markets
worldwide. Complainant contends that
since the 1997 creation of the efutures.com web site, Complainant has actively
and continuously utilized the EFUTURES mark on the Internet and in advertising
in a manner which brought potential customers into Complainant’s on-line trading
web site, thereby adding to the significant goodwill and widespread recognition
of its mark and trade name.
5. Through
its web site, Complainant services a wide range of individuals and/or entities
interested in learning more about commodity markets, learning to hedge
commodity futures, doing research on specific commodities, as well as (a)
potential customers who may desire to open an account through which trades in
commodity futures or options can be placed electronically, and (b) existing
accounts at any of Complainant’s related companies who wish to place trades for
futures or options thereon, monitor their risk to futures price fluctuation and
obtain real-time market price quotations.
Complainant has about 3000 accounts.
6. Complainant
contends that “EFUTURES” is not only an identifier of the services available at
the Complainant’s web site, but also is a representation of the origin of the
services, namely the family of businesses with which the mark is associated. That group includes the “bricks-and-mortar”
presence of FCA (a commodities hedge specialist), Futures Express (a discount
brokerage), and efutures.com, LLC.
Complainant has invested several years and substantial advertising and
marketing expenses to create significant goodwill and consumer confidence. Complainant contends that “EFUTURES” has
become indicative of a brand that the trading public can trust.
7. The
services offered at Respondent’s web site, however, are substantially similar
in many respects to those offered by Complainant. Complainant and Respondent are direct competitors.
8. Respondent,
Cannon Trading Company, Inc., is an investment, futures and commodities trading
company that has been in business since 1988.
Respondent was one of the first companies providing commodity and
futures trading services to establish a presence on the Internet in early 1996
through their <cannontrading.com> domain. As Cannon acquired further key-word domain names relevant to the
trading of investments, futures and commodities, Respondent directed the domain
names to its <cannontrading.com>.
When the URL <e-futures.com> is entered, it re-directs users to
Respondent’s <cannontrading.com> web site. In May of 1997, Cannon Trading acquired <e-futures.com> and
immediately went live by directing traffic from <e-futures.com> to its
servers. Respondent views
<e-futures.com> as its flagship domain name for online futures
trading. Respondent actively utilizes
<e-futures.com> in its publicity materials as well as referring to
<e-futures.com> as “The Official Website of Cannon Trading Company,
Inc.” The <e-futures.com> web
site has been written up in numerous publications. By 1998 Cannon trading had earned a positive reputation in the
Online Brokers business and had been noted in Futures Magazine. Respondent claims to be the first company to
use the name <e-futures.com> to establish themselves on the World Wide
Web in commodity futures and options trading.
9. Recently,
Respondent has also registered the domain names <efutures.info> and
<e-futures.info>.
10. Respondent
contends that to its clients, Respondent is known as <e-futures.com> and
Respondent’s online trading division has been known as <efutures.com>
long before <efutures.com> was launched by Complainant in November of
2000. Respondent has used the
<e-futures.com> domain name since its initial registration in May of
1997.
11. The United States Patent and Trademark Office
rejected Complainant's application for EFUTURES and EFUTURES.COM as
descriptive.
12. Respondent
has been using the EFUTURES mark since its registration in May 1997. Respondent contends that through its
advertising, Respondent has received a great deal of renown for the
<e-futures.com> domain name.
Respondent has used <e-futures.com> on its web site and in other
advertising and promotional materials.
13. Respondent
has over 750 active accounts and is one of the leading retailers for on-line
futures trading business. Respondent contends that customers recognize the
<e-futures.com> domain as their source of commodities and futures online
trading as well as an online resource for education. Respondent claims that with over five years of experience in
online trading, and well over 20,000 orders per month, Respondent is well
established in online commodities and futures trading.
14. Respondent contends that the
<efutures.com> web site was not actively offering futures trading
services before Respondent, and only began launch of the web site in late 2000,
whereas, Respondent began using EFUTURES for its trading services at least
three years earlier in May 1997.
15. There are numerous other companies that
trade with some variant of the name EFUTURES.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
asserts that it has common law rights in the EFUTURES mark because it has used
the mark in commerce since 1997 in connection with public, and
commodity-related account information, as well as trades and related
transactions of commodity futures contracts and options thereon. The <efutures.biz> domain name
is identical to Complainant's mark. The
<e-futures.biz> domain name is also identical because the presence
of a hyphen does not create a mark capable of being distinguished from
EFUTURES. See Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000)
(finding the domain name <chichis.com> to be identical to Complainant’s
CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the
mark).
Complainant
has failed to show proof of a registered trademark. Nor has Complainant shown proof of any common law trademark
rights.
The United States Patent and Trademark Office
rejected Complainant's application for EFUTURES and EFUTURES.COM as
descriptive. The USPTO asserts that the
"e" prefix is generic as a recognized abbreviation for
"electronic" and "futures" is a common word descriptive of
the services Complainant and many others sell.
The Trademark Board
noted that the letter “e” had become a recognized abbreviation for
“electronic.” The Trademark Trial and
Appeals Board has held that “e-ticket” was an abbreviation of “electronic
ticket” and a generic name for electronic airline ticketing services. See Continental Airlines, Inc. v.
United Air Lines, Inc. 53
U.S.P.Q.2d 1385 (TTAB 1999). The Board held, that while electronic airline
ticketing is known by more than one name, such as “electronic ticket” and
“electronic ticketing,” “e-ticket” is one of those generic names because: “Any product or service may have many
generic designations”. The TTAB later
held that “e fashion” was descriptive of on-line fashion information
services. In re Styleclick.com Inc.,
57 U.S.P.Q.2d 1445 (TTAB 2000) (The Board held that “the meaning of ‘e’ prefix
is commonly recognized and understood by virtually everyone as a designation
for the Internet.”). Finally, the word
FUTURES, is a common word, and is descriptive of the services Complainant
sells. Therefore, Complainant's mark is incapable of acting as a trademark
without significant secondary meaning. See 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 Complainant cannot maintain
exclusive rights); see also Tough
Traveler, Ltd. v. Kelty Pack, Inc., D2000-0783 (WIPO Sept. 28, 2000)
(finding that the Complainant could not establish a secondary meaning with the
domain name, <kidcarrier.com>, because of the generic nature of the
terms).
Respondent
asserts that it was known as EFUTURES.COM three years before Complainant began
using EFUTURES in relation to its business, and therefore, has rights in the
<efutures.biz> and <e-futures.biz> domain names
pursuant to STOP Policy ¶ 4(c)(iii). See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October
5, 2001) (finding that the use of the disputed domain name
<aspengrove.com> by Respondent as a family email address, when the use
began before the Complainant's company existed or had rights in the mark ASPEN
GROVE, created legitimate rights and interests in the <aspengrove.com>
domain name). See Cyberimprints.com,
Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that
the Complainant failed to prove trademark rights at common law because it did
not prove the CYBERIMPRINTS.COM mark was used to identify the source or
sponsorship of goods or services or that there was strong customer
identification of the mark as indicating the source of such goods or services).
Respondent
has continuously used the mark since it first registered it in May of
1997. Redirecting the domain name to
another website is a legitimate usage of the domain name because Respondent
offers commodities and futures trading services at the linked website, services
that are logically related to its business and its domain name. See Dog.com, Inc. v. Pets.com, Inc.,
Nat. Arb. Forum, 93681 (2000) (Respondent PETS.COM’s use of the <dog.com>
domain name was not found to be in bad faith despite Complainant’s business
name being DOG.COM, and Complainant having a registered service mark comprising
a fanciful design incorporating their DOG.COM domain name.).
Respondent
asserts that its use of the <efutures.biz> and <e-futures.biz>
domain names will be legitimate because it will be used for a bona fide
offering of services pursuant to STOP Policy ¶ 4(c)(ii). In fact, they will be used for online
futures trading in conjunction with Respondent's other domains. See Canal & Image UK Ltd. v. VanityMail Serv., Inc., FA 94946
(Nat. Arb. Forum July 18, 2000) (finding that a draft of an unimplemented
business plan was sufficient to show respondent’s legitimate interest in the
domain name); Genting Berhad v. Tan Kin
Sin, FA 94735 (Nat. Arb. Forum June 28, 2000) (finding that the Respondent
had legitimate interests in the domain name where the Respondent had made preparations
to use the domain for his newly formed business).
The Respondent has legitimate, but not
protectable, interests with respect to the domain names <e-futures.biz> and <efutures.biz>.
Although the Respondent is not known as EFUTURES, the Respondent will
use the domain names in connection with a bona fide offering of goods and
services.
Both parties have legitimate interests in
the EFUTURES mark; however, neither has exclusive rights or a protectable
interest in the mark. As the Panel has determined that Respondent has
legitimate interests in respect to the domain names, it is unnecessary for the
Panel to address the third issue of bad faith.
Respondent alleges that Complainant is engaged in
reverse domain name hijacking.
Complainant has not engaged in reverse domain name hijacking.
DECISION
As Respondent has legitimate interests,
but not protectable rights, in the domain names <e-futures.biz> and <efutures.biz>, Complainant’s
Complaint is dismissed and the Panel determines that subsequent challenges, as
against the Respondent, under the STOP Policy shall be permitted against
these domain names.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: February 27, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page