Claim Number: FA0609000804703
PARTIES
Complainant is Chicago Board Options Exchange
Incorporated (“Complainant”),
represented by Jeanne M. Gills, of Foley & Lardner LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <oexstreet.com>, registered with Go Daddy
Software, Inc.
PANEL
The undersigned certify that each 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.
R. Glen Ayers, Jr., Hon. John J. Upchurch, and Ms. Diane Cabell served
as Panelists. Mr. Ayers served as
Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 22, 2006; the
National Arbitration Forum received a hard copy of the Complaint on September 25, 2006.
On September 28, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <oexstreet.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 October 2, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 23, 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@oexstreet.com by
e-mail.
On October 20, 2006, Respondent
requested, pursuant to Supplemental Rule 6, an extension of seven days to
respond to the Complaint due to extenuating circumstances. On October 23, 2006, the National Arbitration
Forum, with Complainant’s consent, granted Respondent an extension and set a
new deadline of October 30, 2006 for a filing of a Response
A timely Response was received and determined to be complete on October 30, 2006.
The National Arbitration Forum received an Additional Submission from
Complainant on November 3, 2006 and determined it to be timely and complete
pursuant to Supplemental Rule 7. An
additional submission was also timely received from Respondent on November 7,
2006.
On November 8, 2006, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed R. Glen Ayers, Jr., as Chair, and the Hon.
John J. Upchurch and Ms. Diane Cabell, as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In its Amended Complaint, Complainant, the Chicago Board of Options
Exchange, Inc., complains that Respondent has registered <oexstreet.com>
as a domain name. Complainant asserts
that it holds a trademark, OEX, properly registered, and having a first use in
March of 1983. Complainant has provided
evidence of the registration of its various marks with the U.S. Patent and Trademark
Office.
The OEX mark is used to identify the Chicago Board of Options’ option
services, including market index option contracts. The mark is internationally registered. Complainant asserts very strong identification
of the mark with the Options Exchange.
Although the domain name was registered in 1999, Complainant asserts
that it did not learn of Respondent’s domain name until May 1, 2006, at which
time it immediately sent a cease and desist letter. The letter was returned as undeliverable. In addition, it attempted to send the same
letter by email. The email was returned as undeliverable. Respondent had listed a fake address with its
domain name registration. After several
attempts, in September 2006, Complainant was able to find the proper e-mail
address only after it contacted INTERNIC.NET concerning falsified contact
information. Complainant was then to
send Respondent a cease and desist email.
Of course, Respondent has not complied.
Complainant asserts that the domain name is confusingly similar
irrespective of the addition of the generic word “street.” Certainly, Complainant has developed facts
sufficient to show that the domain name <oexstreet.com> is similar
to its mark.
As to rights in the mark, Complainant asserts that Respondent has no
interest in the OEX mark or any right to make any legitimate non-commercial or
fair use of the OEX mark. Complainant
also asserts that there is no evidence that Respondent uses the domain name in
connection with a bona fide offering of goods or services that are not
produced also by Complainant.
Complainant also submits facts concerning the use of the domain name in
bad faith. Complainant stresses that
Respondent should have been aware of a mark and that minimal investigation
would have revealed the existence of a mark in use for over twenty (20)
years.
Complainant argues that Respondent also has additionally attempted to
confuse customers and attract customers for commercial gain. Complainant’s assertions are supported by
exhibits and affidavits.
B. Respondent
In response, New Millennium IBP, Inc., d/b/a OEXStreet, the Respondent,
first denies any identical or confusing similarity between the mark and the
domain name. In the alternative,
particular, Respondent asserts a “nominative fair use” of the mark OEX in a
manner that Respondent describes as “not confusing.”
Respondent asserts that it has rights and interests in the name <oexstreet.com>
because its domain name uses the mark to describe products or services provided
by Respondent and does nothing to create the impression that those products or
services are products or services of the mark holder, Complainant. This same evidence, says Respondent,
demonstrates a lack of bad faith.
Respondent asserts that it is the business of assisting subscribers
with purchases of OEX options traded on the Chicago Board of Options
Exchange. An affidavit is provided to
that effect.
Further, Respondent asserts that none of its acts were in bad
faith. Respondent
states that provides subscribers with “OEX” option trading alerts. Respondent asserts that it has made no
attempt to disrupt Complainant’s business and has done nothing more than help
“Complainant’s business by assisting investors interested in trading on its
[Complainant’s] exchange.”
In further support, Respondent offers a declaration of “Joey Ford,” the
President of the owner of the domain name.
He states that he has operated the website since September of 1999.
In exhibits, captured from the website, Respondent sets out various
portions of the domain name to support its allegations or defenses.
Respondent’s primary argument, “nominative fair use,” rests upon a 9th
Circuit case styled The New Kids on The Block v. News America Publishing,
Inc., 971 F.2d 302 (9th Cir. 1991).
That case, says Respondent, holds that “nominative fair use” is
permitted if “the product . . . is one that is not readily identifiable without
the use of the trademark; second, only so much of the mark . . . may be used as
is reasonably necessary to identify the product or service; and third, the user
must do nothing that would . . . suggest sponsorship or endorsement by the
trademark holder.”
The Respondent asserts that its use of the mark meets all of the tests
set out in the above-cited case.
C. Additional Submissions
Complainant’s Additional Submission
Complainant filed an additional submission and emphasized in its argument that the “nominative fair use” defense did not apply. First, it asserts that use of the OEX mark is not necessary, because Respondent could identify its services in relation to the OEX’s products, i.e., S&P 100® Index Options.
Complainant continues to assert that Respondent was acting in bad faith and that bad faith would negate the defense.
Complainant again asserts that Respondent is using the name in bad faith and attempts to use the declaration of Joey Ford to show evidence of bad faith. Additional evidence of bad faith, asserts Complainant, can be found in the fact that Mr. Ford used false addresses for registration of the domain name with the registrar, INTERNIC.NET, which then reported false information to WHOIS.
Respondent’s Additional Submission
Respondent timely responded, again asserting the defense of nominative fair use. Again, Respondent points out that the domain name was registered in August of 1999. Respondent also asserts that four years after introducing the domain name and its added services, it services related to what are termed “eMINI index futures.”
In response to the argument that
another name might have been used, such as the S&P 100® mark
referred to earlier by Complainant, Respondent notes that this issue is
discussed in The New Kids on The
Block case, which rejects
such arguments by a mark holder.
The Respondent says that a “fake” name was used because of unsolicited
spam and telephone calls.
Further, Respondent notes that the contact page at its website provided
direct access to Respondent, irrespective of the use of the false address.
FINDINGS
The Panel agrees that the domain name is
question is “identical to or confusingly similar” to the trademark held by
Complainant. Addition of the word
“street” does not clearly make the domain name distinct.
Complainant has cited a number of cases
decided by arbitrators at eResolution and NAF in support of its position.
Because the two issues are intertwined, the
issues of rights in the name and bad faith are addressed together.
The Panel finds that Complainant has not made
a prima facia case that Respondent has no rights in the name and that
Respondent has registered the name in apparent bad faith. Complainant has alleged that Respondent has
no rights in name and used as evidence. The unproven allegation of registration in bad faith. Respondent, by operating a legitimate
business for years, has certainly and at the very least made a “bona fide
offering of goods and services” prior to notice of the complaint. See ICANN Policy ¶ 4(c)(i). And, it appears
to the Panel that Respondent has fully rebutted both issues.
The Panel is very critical of the use of false
contact information, but it is difficult to see that the false address rises to
the level of bad faith when the contact information at the domain would have
provided direct access to Respondent.
The Panel also believes that The New Kids
on The Block v. News
The Panel finds, for seven years, that this
domain name has been registered and the website in use. For seven years, Respondent has been providing
services to persons who wish to know more about or trade on the Options
Exchange. Any website dealing with the
options exchange directly which uses the “OEX” as part of its domain name, but
does not appear to brand itself as related to the domain name nor does it
attempt to steal business or customers from the Chicago Board of Options
Exchange, is not acting in bad faith.
Therefore, the Panel finds, based upon the
facts and the cited cases, including The New Kids on The Block and the
cited domain name decisions, including Scholastic
Inc. v. Master Games Int'l, Inc., D2001-1208 (WIPO Jan. 3, 2002), that the
Respondent has engaged in truthful, nominative use of a trademark in connection
with goods and services and that there is no bad faith shown and that
Respondent has shown sufficient rights in the name. While the Panel is persuaded by the facts and
argument surrounding the issue of “nominative good faith,” the Panel must also
note, as indicated above, that actual use of this domain name for seven years
without complaint is also a persuasive factor.
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.
The Panel finds that the Complainant has
established that the domain name is identical or confusingly similar.
The Panel finds that, pursuant to the doctrine known as “nominative fair use,” Respondent has sufficient rights in the name in order to permit Respondent to create a domain name discussing and relating to the business of Complainant.
Finally, although the Panel is very troubled by the use of a fake registration address for the registrant, the fact that the Respondent could be contacted directly through the website, <oexstreet.com>, somewhat lessens the Panel’s concern on this issue. The Panel does not find any attempt to misdirect or usurp customers of Complainant.
Further, for seven years, prior to notice of the Complaint, Respondent used the domain name to offer legitimate goods and services to the public.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
R. Glen Ayers, Jr., Panelist
Chair
Hon. John J. Upchurch
Diane Cabell
Dated:
November 29, 2006
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