DECISION

Global Investment Research Corp. v. Options & Stocks, LLC c/o Mario Jebise

Claim Number:  FA0404000263140

PARTIES

Complainant is Global Investment Research Corp. (“Complainant”), represented by Jill M. Pietrini, of Manatt, Phelps & Phillips, LLP 11355 W. Olympic Blvd., Los Angeles, CA, 90064.  Respondent is Options & Stocks, LLC c/o Mario Jebise  (“Respondent”), Drkadzijaka 27, Belgrade 11000, Yogoslavia.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <optionsandstocks.com>, registered with Go Daddy Software, Inc.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 23, 2004; the Forum received a hard copy of the Complaint on April 26, 2004.

On April 26, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <optionsandstocks.com> is registered with Go Daddy Software, Inc. and that 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 May 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 24, 2004 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@optionsandstocks.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.

On June 4, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <optionsandstocks.com> domain name is confusingly similar to Complainant’s OPTIONETICS mark.

2. Respondent does not have any rights or legitimate interests in the <optionsandstocks.com> domain name.

3. Respondent registered and used the <optionsandstocks.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Global Investment Research Corp., develops, sells, and distributes products regarding investment strategies.  Complainant registered the mark OPTIONETICS with the United States Patent and Trademark Office on March 21, 2000 (Reg. No. 75,446,967). 

Respondent registered the <optionsandstocks.com> domain name on December 7, 2003.  Respondent is using the disputed domain name to sell unauthorized copies of Complainant’s products and the products of other third parties. 

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(2) 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

Complainant has established that it has rights in the OPTIONETICS mark through registration with the United States Patent and Trademark Office.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

However, the <optionsandstocks.com> domain name does not include Complainant’s mark in its entirety.  The disputed domain name resembles Complainant’s mark only in the use of the word “option,” which is simply a generic term included in Complainant’s mark.  The Panel finds that the <optionsandstocks.com> domain name is not confusingly similar to Complainant’s OPTIONETICS mark when viewing the mark as a whole.  See FloridaFirst Bank v. Carlson, FA 143677 (Nat. Arb. Forum Apr. 10, 2003) (holding that as Complainant disclaimed the exclusive right to use “BANK”, apart from the FLORIDAFIRST BANK mark, the validity of the mark was to be determined by viewing the trademark as a whole and not just the words “FloridaFirst.” Hence, when viewing Complainant’s FLORIDAFIRST BANK mark as a whole, Respondent’s <floridafirst.com> domain name was not confusingly similar to the registered mark); see also B2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Nat. Arb. Forum June 5, 2001) (holding that Complainant did not have exclusive rights to use of the terms “B2B” and “Works” in association with other words, even with a registered trademark for B2BWORKS).

Furthermore, the disputed domain name would likely not be confused with Complainant’s OPTIONETICS mark, because they differ in sound and spelling.  The <optionsandstocks.com> domain name uses only a generic term from Complainant’s mark and adds two more terms after it that are unrelated to Complainant’s mark.  Thus, Internet users searching for Complainant’s OPTIONETICS mark would not likely be confused by the disputed domain name.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1147 (9th Cir. Feb. 11, 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different websites are quite often similar, because of the need for language economy, and that very small differences matter."); see also Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO Sept. 11, 2000) (finding that the domain name, <hot18to30.com>, is neither identical nor confusingly similar to Respondent's trademark "Club 18-30”).

Complainant argues that the use of the term “option” in conjunction with the term “stocks” in the disputed domain name has an overall effect of confusing similarity, because Complainant is in the business of providing educational material relating to stocks and other investment opportunities.  However, the circumstances under which Respondent uses the disputed domain name are not relevant in assessing whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Porto Chico Stores, Inc. v. Otavio Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the issue of identicality or confusing similarity is to be resolved “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used.”).

The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.

Since Complainant failed to establish the first element of the Policy, it is unnecessary to assess the claims under the remaining two elements.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <optionsandstocks.com> domain name be REMAIN WITH Respondent.

John J. Upchurch, Panelist

Dated:  June 18, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/732.html