Jason Goepfert, President
and CEO c/o Sundial Capital Research, Inc. v. Anthony Rogers
Claim Number: FA0612000861124
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@sentimenttrader.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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 (
B. Respondent
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.
FINDINGS
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
location is
Respondent is an individual whose address is
given as
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.
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).
Complainant
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.
DECISION
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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