Securities Investor
Protection Corporation v. SIPC.COM c/o SeriousNet
Claim Number: FA0705000982722
PARTIES
Complainant is Securities Investor Protection Corporation (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sipc.com>, registered with Tucows.
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.
Hugues G. Richard as Panelist.
PROCEDURAL HISTORY
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 postmaster@sipc.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
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 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)).
DECISION
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
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum