DECISION

Ameritrade Holding Corporation & Ameritrade (Inc.) v. MIC a/k/a Syed Hussain

Claim Number: FA0105000097320

PARTIES

Complainant is Ameritrade Holding Corporation & Ameritrade Inc., Omaha, NE, USA (“Complainant”) represented by Julia Anne Matheson, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.  Respondent is Syed Hussain, Closter, NJ, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <ameritradepro.com> and <cibcameritrade.com> registered with Bulkregister.com.

PANEL

On June 22, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed  James P. Buchele as Panelist.  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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 23, 2001; the Forum received a hard copy of the Complaint on May 24, 2001.

On May 29, 2001, Bulkregister.com confirmed by e-mail to the Forum that the domain names <ameritradepro.com> and <cibcameritrade.com> are registered with Bulkregister.com and that Respondent is the current registrant of the name.  Bulkregister.com has verified that Respondent is bound by the Bulkregister.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 May 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 18, 2001 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@ameritradepro.com and postmaster@cibcameritrade.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. The domain names <ameritradepro.com> and <cibcameritrade.com> each fully incorporate Complainant's famous and federally registered trademark AMERITRADE.  Therefore, the domain names <ameritradepro.com> and <cibcameritrade.com> are each confusingly similar to Complainant’s AMERITRADE mark.

2. The domain names <ameritradepro.com> and <cibcameritrade.com> are also each confusingly similar to Complainant 's other valuable and protectable trademarks AMERITRADE INC., AMERITRADE PREMIER CLUB, and AMERITRADE PLUS.

3. Respondent does not have any rights or legitimate interest in the disputed domain names and has never been authorized by Complainant to use its marks AMERITRADE, AMERITRADE INC., AMERITRADE PREMIER CLUB, and AMERITRADE PLUS (the “AMERITRADE marks”).

4. Respondent's actions meet the bad faith criteria outlined in Policy ¶ 4(b).

B. Respondent

Respondent did not submit a Response to this matter.

FINDINGS

1. Complainant is a leading online discount brokerage firm.  In business since 1975, Complainant has offered brokerage services under the AMERITRADE name and mark since March 1981.

2. Ameritrade offers trading on stocks, mutual funds, options, and bonds to its account holders primarily via the Internet at its website <ameritrade.com>.

3. Respondent is not and has never been a licensee of Complainant.  Respondent is not and has never been otherwise authorized by Complainant to use its AMERITRADE marks.

4. Complainant Ameritrade Holding Corporation owns trademark registrations and applications for the AMERITRADE marks in the United States, including the following representative examples:

a. Registration No. 2,032,385 registered on May 28, 1996 for the AMERITRADE mark covering services in International Class 36 (securities brokerage services). 

b. Registration No. 2,011,336 registered on October 29, 1996 for the AMERITRADE, INC. mark covering services in International Class 36 (securities brokerage services). 

c. Registration No. 2,411,005 registered December 5, 2000 for the AMERITRADE mark covering services in International Classes 36 (investment brokerage and financial and market services, namely, providing quotes on securities and commodities, economic research, economic news, securities and investment information) and 41 (conducting classes, seminars and workshops in the field of finance and investments and distributing course materials therewith).

d. Application No. 76/012,372 filed on March 28, 2000 for the AMERITRADE and Design mark covering services in International Classes 9 (computer software for financial investment), 16 (publications on investing and financial management), 36 (investment brokerage and financial and market services, namely, providing quotes on securities and commodities, economic research, economic news, securities and investment information; electronic financial information services, namely, providing over global computer network quotes on securities and commodities, economic research, economic news, mortgage payment calculations and investment information), and 41 (conducting classes, seminars and workshops in the field of finance and investments and distributing course materials therewith).

5. Complainant Ameritrade (Inc.) owns trademark registrations and applications for the AMERITRADE marks in the United States, including the following representative examples:

a. Application No. 75/722,209 filed on June 7, 1999 for the AMERITRADE PREMIER CLUB mark covering services in International Class 36 (brokerage services for financial investment purposes). 

b. Application No. 75/723,100 filed on June 7, 1999 for the AMERITRADE PLUS mark covering services in International Class 9 (computer software for financial investments). 

6. Respondent registered the domain name <ameritradepro.com> on February 21, 2001, the same day that Complainant issued a press release announcing its plan to specialize its brokerage services into four segments: Ameritrade Pro, Ameritrade Plus, Ameritrade, and Freetrade.

7. On May 11, 2001, many news services reported a rumor that Canadian Imperial Bank of Commerce, a/k/a CIBC, was in talks to purchase Complainant.  On that same day, Respondent registered the domain name <cibcameritrade.com>, which combines the names of the two companies.

8. Respondent has not developed a website for either domain name.

9. Respondent has an established history of cybersquatting.  Respondent registers trademark-related domain names under numerous aliases, including the names MIC and CPIC NET.  Many past UDRP decisions against Respondent have expressly found CPIC NET, MIC, and Mr. Hussain to be the same entity.  In at least eighteen other cases decided under the UDRP between May, 2000 and the present, Respondent has been found to be a cybersquatter engaged in a systematic pattern of registering and using domain names in bad faith.

10. In EntergyShaw LLC v. CPIC Net, FA 95950 (Nat. Arb. Forum Dec. 8, 2000), Respondent registered the domain names <entergyshaw.com> and <entergy-shaw.com> on June 2, 2000 after Complainant issued a press release announcing its merger, and the Panel found that Respondent used those names in bad faith pursuant to Policy ¶ 4(b)(ii).

11. In Time Warner Inc. and EMI Group plc v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000), the Panel found that Respondent registered and used the domain names <emiwarnermusic.com>, <emiwarner.org>, <emiwarner.net>, <warneremi.net>, and <warneremi.org> in bad faith pursuant to Policy ¶ 4(b)(i), (ii) and (iii).  Again in this case, Respondent registered the domain names after seeing a press release of the proposed merger between Complainants.  Furthermore, the Panel found that: “It was with knowledge of Time Warner and EMI’s rights in its individual marks and new joint marks, and with the specific intent to trade off of those rights, that CPIC Net registered the Domain Names.”

12. In The London Metal Exch. Ltd. v. Hussain, D2000-1388 (WIPO Dec. 15, 2000), the Panel found that Respondent’s “track record as a cybersquatter with the names of well-known entities and the previous adjudication against him indicate bad faith.”  In that case, Respondent registered the domain name <lmeholdings.com> on the same day that a news article was published regarding the complainant’s new company called “LME Holdings Limited.”  The Panel found that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(i) and (ii). 

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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.

Identical and/or Confusingly Similar

Respondent’s domain names are confusingly similar to Complainant’s AMERITRADE marks.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Tim Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <ameritradepro.com> and <cibcameritrade.com> domain names.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests).

Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that “Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names”).

Pursuant to Policy ¶ 4(c):  (i) Respondent is not using and has not used or is not demonstrating and has not demonstrated an intent to use the domain names in connection with a bona fide offering of goods or services; (ii) Respondent is not and has not been commonly known by the domain names; and (iii) Respondent is not making legitimate noncommercial or fair use of the domain names, without intending to mislead and divert consumers or to tarnish Complainant’s AMERITRADE marks for commercial gain.

Respondent has been passively holding the domain names and has not demonstrated any indication that the domain names would be used for a legitimate purpose.  See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

Therefore, the Panel concludes that Respondent does not have any rights or legitimate interests in the domain names, and that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant has shown that Respondent intentionally registered domain names that Complainant would have an interest in, because these domain names are typical of Respondent’s strategy of culling corporate news for new trademark-related domain names to register.  Respondent’s registration and use of the domain names meet the bad faith element set forth in Policy ¶ 4(b)(ii), because he has consistently engaged in a pattern of registering trademark-related domain names.  Again, Respondent’s activities have been repeatedly found to be in bad faith under the UDRP.

Therefore, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

In accordance with Policy ¶ 4(i) and Rules ¶ 15, the relief sought by the Complainant is hereby granted in full.

Both contested AMERITRADE based domain names, namely <ameritradepro.com> and <cibcameritrade.com>, are ordered transferred to Complainant.

James P. Buchele, Panelist

Dated:  June 25, 2001

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