Arrowhead Capital Management, Minneapolis, MN, USA
COMPLAINANT,

vs.

Arrowhead Capital Management, LLC, (Arrowhead Capital LLC) Norwalk, CT, USA
RESPONDENT.

DECISION
Claim Number: FA0005000094920

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are “ARROWHEADCAPITAL.COM” and “ARROWHEAD-CAPITAL.COM”, registered with Network Solutions, Inc. (“NSI”).

PANELIST

Charles K. McCotter, Jr. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/30/2000; The Forum received a hard copy of the Complaint on 05/31/2000. 

On 05/31/2000, NSI confirmed by e-mail to The Forum that the domain names,“ARROWHEADCAPITAL.COM” and

“ARROWHEAD-CAPITAL.COM”, are registered with NSI and that the Respondent is the current registrant of the name.  NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/05/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/26/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On 06/28/2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Charles K. McCotter, Jr. as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the domain names which the Respondent has registered are identical or confusingly similar to Complainant’s trademark “Arrowhead”; that the Respondent does not have rights or legitimate interests with respect to the domain names registered by the Respondent; that the Respondent has registered and used the domain names in bad faith.

B. Respondent

The Respondent contends that the Complainant does not have a protectable interest in the trademark; that the Respondent has rights or legitimate interests in the domain names; and the domain names have not been registered and used in bad faith.

The Respondent contends that the Complainant does not have the exclusive right to use the word “arrowhead”, asserting that the word “arrowhead” is neither distinctive nor famous within the meaning of the applicable provisions of the United States Code pertaining to trademarks.  See 15 U.S.C. § 1125(c)(1).

The Respondent contends that the Complainant that has acted in bad faith by invoking this tribunal for the purpose of  reverse domain name hijacking.

FINDINGS

1.  Complainant, Arrowhead Capital Management Corporation, was incorporated on January 8, 1996 and has used its name "ARROWHEAD CAPITAL MANAGEMENT CORP." continuously since then to provide financial business services.

2.  On May 13, 1997, Complainant filed in the United States Patent and Trademark Office for registration of its trademark "ARROWHEAD", registration number 2182114.  The trademark was registered on August 18, 1998, for its services, consisting of financial and investment management services and portfolio management. 

3.  On February 11, 2000, Complainant applied for registration of "ARROWHEAD", application number 75/916515, for the services of investment of funds for others; investment management; consultation; and advice; financial analysis and consultation; financial management; financial research; portfolio management (financial); and loans (temporary).  “ARROWHEAD”, registration number 2182114, was a registered trademark before Respondent obtained the "ARROWHEADCAPITAL" domain name on October 26, 1998, or the "ARROWHEAD-CAPITAL" domain name on November 22, 1999.

4.  The Respondent obtained its domain name more than two years after Complainant applied to register its trademark.  After Complainant received its trademark registration, and prior to November, 1999, Mr. Fry, the President of Complainant, telephoned Mr. Mark Jacobs, the managing officer of Respondent, and requested that he transfer the domain name "ARROWHEADCAPITAL" to Complainant.  Respondent refused and instead registered the domain name "ARROWHEAD-CAPITAL" on November 22, 1999.

5.  The Respondent, Arrowhead Capital LLC is a Delaware Limited Liability Company based in Norwalk, Connecticut and has been in operation since September of 1998.  The Respondent is a small-cap investment banking firm that deals primarily with private equity placements.  The Respondent does not offer its services to the general public.  The Respondent has been actively conducting its business throughout the period since it began operation.  In the Spring of 1999, the Respondent duly registered the Domain Name and immediately began use of the Domain Name as its   e-mail domain.  The Respondent has made continued use of the Domain Name ever since.

6.  Complainant's domain name of "ARROWHEADCAP" is an abbreviation of "ARROWHEADCAPITAL".  Complainant chose "ARROWHEADCAP" because "ARROWHEADCAPITAL" was in use as a domain name at the time Complainant sought its domain name.  "ARROWHEAD-CAPITAL"  is indistinguishable from "ARROWHEADCAPITAL".  The abbreviation "cap." and the word "capital" have synonymous meanings for anyone involved in investing and financial management.  Therefore, because the operative trademark for Complainant's services is "ARROWHEAD", "cap." and "capital" are descriptive of the services associated with Complainant's trademark. 

7.  Respondent rejected Complainant's request that it substitute for "Capital" a different word that is not descriptive of Complainant’s services.

8.  Respondent stated to Complainant that it has used the name "Arrowhead Capital" for financial services and private placements.  Both of these services are provided by Complainant under its registered trademark "ARROWHEAD".

9. Complainant's attorney telephoned Mr. Jacobs on February 17, 2000 and asked him to cease and desist his use of "ARROWHEAD" on the World Wide Web, with any services or transactions that create a likelihood of confusion with Complainant's trademark.  The Complainant contends Mr. Jacobs said that the domain names "ARROWHEADCAPITAL" and "ARROWHEAD-CAPITAL" could be sold for more than his initial out-of-pocket costs and that such is evidence of bad faith.

10.  However, the Respondent says it never offered to sell the Domain Name to the Complainant.

11.  Complainant contends that its existing and potential customers who seek information about Complainant on the web may easily stop at Respondent's addresses where they will find that there is no business and no indication that Complainant's business exists, and incorrectly conclude that Complainant is out of business or not open for business.  Complainant believes that its existing and potential customers who are attracted to Respondent's web site will be misled about the source, sponsorship, affiliation and endorsement of Respondent's site and the inference created by the name of the site that it belongs to and is sponsored by Complainant.

     12.  The Respondent has been using the Domain Name for its e-mail for over a year, and is in the process of constructing its own web site.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements in order to demonstrate claims that a domain name should be canceled 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; and

(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.

Identical and/or Confusingly Similar

The Respondent contends that the Complainant does not have the exclusive right to use the word “arrowhead”.  Without deciding that question, I nonetheless conclude the Respondent’s domain names are confusingly similar to the trademark in which the complainant has rights. 

The combination of the Complainant’s trademark, “Arrowhead”, the well-recognized meaning of the word “capital” within the financial services industry, and the direct relationship between such meaning and the financial services Complainant provides cause Respondent’s domain names to be confusingly similar to Complainant’s trademark.

Rights or Legitimate Interests

The Respondent has rights or legitimate interests in the name “Arrowhead Capital.”  Respondent has been actively in business since September of 1998, and has utilized the Domain Name for e-mail since it registered the Domain Name in 1999. The Respondent is a duly created Delaware Limited Liability Company with the name “Arrowhead Capital LLC.”  The fact that the Respondent has not secured a trademark in the name does not in any way defeat its right to use the name.  The Respondent made use of the “Arrowhead Capital” name before it had notice of the existence of the Complainant, and before it had notice of the Complainant’s claim.  Respondent continues to use the name in its everyday business. 

However, the Respondent does not have rights or legitimate interests in the domain name “ARROWHEAD-CAPITAL.COM” because the Respondent registered the domain name after the notice of the Complainant’s claim.

Bad Faith

There is no evidence of bad faith on the part of  Respondent in connection with the domain name “ARROWHEADCAPIAL.COM”.  The Respondent registered the Domain Name for legitimate commercial uses.  The Domain Name corresponds to the Respondent’s own legal name.  The Respondent has been using the Domain Name for its e-mail continuously since it registered the name.  The Respondent never attempted to sell the Domain Name for profit.

However, the registration of the domain name “ARROWHEAD-CAPITAL.COM” by the Respondent did not occur until after notice of the dispute with the Complainant, and was done in order to prevent the Complainant from registering the name itself.  This action constitutes bad faith on the part of the Respondent.

The Respondent contends that the Complainant has brought this action to engage in reverse domain name hijacking.  However, there is no evidence that the Complainant has brought this action in bad faith.

DECISION

Based upon the above findings and conclusions, I find in favor of the Complainant in part and the Respondent in part.

As to the domain name “ARROWHEAD-CAPITAL.COM”, I find in favor of the Complainant, and therefore the relief requested by the Complainant pursuant to Paragraph 4.i. of the Policy is Granted.  The Respondent shall be required to transfer to the Complainant the domain name “ARROWHEAD-CAPITAL.COM”.

As to the domain name “ARROWHEADCAPITAL.COM”, I find in favor of the Respondent.  Therefore, the relief requested by the Complainant pursuant to Paragraph 4.I of the Policy is Denied.  The Respondent shall not be required to transfer to the Complainant the domain name “ARROWHEADCAPITAL.COM”.

___________________________________________________

Charles K. McCotter, Jr., Arbitrator
Dated: July 12, 2000