29th Nov 2006
National Arbitration Forum
Chicago Board Options Exchange Incorporated v. Private
Claim Number: FA0609000804703
Complainant is Chicago Board Options Exchange Incorporated (“Complainant”), represented by Jeanne M. Gills, of Foley Lardner LLP, 321 North Clark Street, Suite 2800, Chicago, IL 60610.Respondent is Private (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oexstreet.com>, registered with Go Daddy Software, Inc.
The undersigned certify that each has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
R. Glen Ayers, Jr., Hon. John J. Upchurch, and Ms. Diane Cabell served as Panelists.Mr. Ayers served as Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 25, 2006.
On September 28, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <oexstreet.com> domain name is registered with Go Daddy Software, Inc. and that the 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 October 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 23, 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 email@example.com by e-mail.
On October 20, 2006, Respondent requested, pursuant to Supplemental Rule 6, an extension of seven days to respond to the Complaint due to extenuating circumstances.On October 23, 2006, the National Arbitration Forum, with Complainant’s consent, granted Respondent an extension and set a new deadline of October 30, 2006 for a filing of a Response
A timely Response was received and determined to be complete on October 30, 2006.
The National Arbitration Forum received an Additional Submission from Complainant on November 3, 2006 and determined it to be timely and complete pursuant to Supplemental Rule 7.An additional submission was also timely received from Respondent on November 7, 2006.
On November 8, 2006, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed R. Glen Ayers, Jr., as Chair, and the Hon. John J. Upchurch and Ms. Diane Cabell, as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Amended Complaint, Complainant, the Chicago Board of Options Exchange, Inc., complains that Respondent has registered <oexstreet.com> as a domain name.Complainant asserts that it holds a trademark, OEX, properly registered, and having a first use in March of 1983.Complainant has provided evidence of the registration of its various marks with the U.S. Patent and Trademark Office.
The OEX mark is used to identify the Chicago Board of Options’ option services, including market index option contracts.The mark is internationally registered.Complainant asserts very strong identification of the mark with the Options Exchange.
Although the domain name was registered in 1999, Complainant asserts that it did not learn of Respondent’s domain name until May 1, 2006, at which time it immediately sent a cease and desist letter.The letter was returned as undeliverable.In addition, it attempted to send the same letter by email. The email was returned as undeliverable.Respondent had listed a fake address with its domain name registration.After several attempts, in September 2006, Complainant was able to find the proper e-mail address only after it contacted INTERNIC.NET concerning falsified contact information. Complainant was then to send Respondent a cease and desist email.Of course, Respondent has not complied.
Complainant asserts that the domain name is confusingly similar irrespective of the addition of the generic word “street.”Certainly, Complainant has developed facts sufficient to show that the domain name <oexstreet.com> is similar to its mark.
As to rights in the mark, Complainant asserts that Respondent has no interest in the OEX mark or any right to make any legitimate non-commercial or fair use of the OEX mark.Complainant also asserts that there is no evidence that Respondent uses the domain name in connection with a bona fide offering of goods or services that are not produced also by Complainant.
Complainant also submits facts concerning the use of the domain name in bad faith.Complainant stresses that Respondent should have been aware of a mark and that minimal investigation would have revealed the existence of a mark in use for over twenty (20) years.
Complainant argues that Respondent also has additionally attempted to confuse customers and attract customers for commercial gain.Complainant’s assertions are supported by exhibits and affidavits.
In response, New Millennium IBP, Inc., d/b/a OEXStreet, the Respondent, first denies any identical or confusing similarity between the mark and the domain name.In the alternative, particular, Respondent asserts a “nominative fair use” of the mark OEX in a manner that Respondent describes as “not confusing.”
Respondent asserts that it has rights and interests in the name <oexstreet.com> because its domain name uses the mark to describe products or services provided by Respondent and does nothing to create the impression that those products or services are products or services of the mark holder, Complainant.This same evidence, says Respondent, demonstrates a lack of bad faith.
Respondent asserts that it is the business of assisting subscribers with purchases of OEX options traded on the Chicago Board of Options Exchange.An affidavit is provided to that effect.
Further, Respondent asserts that none of its acts were in bad faith.Respondent states that provides subscribers with “OEX” option trading alerts.Respondent asserts that it has made no attempt to disrupt Complainant’s business and has done nothing more than help “Complainant’s business by assisting investors interested in trading on its [Complainant’s] exchange.”
In further support, Respondent offers a declaration of “Joey Ford,” the President of the owner of the domain name.He states that he has operated the website since September of 1999.
In exhibits, captured from the website, Respondent sets out various portions of the domain name to support its allegations or defenses.
Respondent’s primary argument, “nominative fair use,” rests upon a 9th Circuit case styled The New Kids on The Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1991).That case, says Respondent, holds that “nominative fair use” is permitted if “the product . . . is one that is not readily identifiable without the use of the trademark; second, only so much of the mark . . . may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would . . . suggest sponsorship or endorsement by the trademark holder.”
The Respondent asserts that its use of the mark meets all of the tests set out in the above-cited case.
C. Additional Submissions
Complainant’s Additional Submission
Complainant filed an additional submission and emphasized in its argument that the “nominative fair use” defense did not apply.First, it asserts that use of the OEX mark is not necessary, because Respondent could identify its services in relation to the OEX’s products, i.e., SP 100® Index Options.
Complainant continues to assert that Respondent was acting in bad faith and that bad faith would negate the defense.
Complainant again asserts that Respondent is using the name in bad faith and attempts to use the declaration of Joey Ford to show evidence of bad faith.Additional evidence of bad faith, asserts Complainant, can be found in the fact that Mr. Ford used false addresses for registration of the domain name with the registrar, INTERNIC.NET, which then reported false information to WHOIS.
Respondent’s Additional Submission
Respondent timely responded, again asserting the defense of nominative fair use.Again, Respondent points out that the domain name was registered in August of 1999.Respondent also asserts that four years after introducing the domain name and its added services, it services related to what are termed “eMINI index futures.”
In response to the argument that another name might have been used, such as the SP 100® mark referred to earlier by Complainant, Respondent notes that this issue is discussed in The New Kids on The Block case, which rejects such arguments by a mark holder.
The Respondent says that a “fake” name was used because of unsolicited spam and telephone calls.
Further, Respondent notes that the contact page at its website provided direct access to Respondent, irrespective of the use of the false address.
The Panel agrees that the domain name is question is “identical to or confusingly similar” to the trademark held by Complainant.Addition of the word “street” does not clearly make the domain name distinct.
Complainant has cited a number of cases decided by arbitrators at eResolution and NAF in support of its position.
Because the two issues are intertwined, the issues of rights in the name and bad faith are addressed together.
The Panel finds that Complainant has not made a prima facia case that Respondent has no rights in the name and that Respondent has registered the name in apparent bad faith.Complainant has alleged that Respondent has no rights in name and used as evidence.The unproven allegation of registration in bad faith.Respondent, by operating a legitimate business for years, has certainly and at the very least made a “bona fide offering of goods and services” prior to notice of the complaint.See ICANN Policy ¶ 4(c)(i).And, it appears to the Panel that Respondent has fully rebutted both issues.
The Panel is very critical of the use of false contact information, but it is difficult to see that the false address rises to the level of bad faith when the contact information at the domain would have provided direct access to Respondent.
The Panel also believes that The New Kids on The Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1991) provides the answer to the issues of rights in the name and bad faith in this context.
The Panel finds, for seven years, that this domain name has been registered and the website in use. For seven years, Respondent has been providing services to persons who wish to know more about or trade on the Options Exchange.Any website dealing with the options exchange directly which uses the “OEX” as part of its domain name, but does not appear to brand itself as related to the domain name nor does it attempt to steal business or customers from the Chicago Board of Options Exchange, is not acting in bad faith.
Therefore, the Panel finds, based upon the facts and the cited cases, including The New Kids on The Block and the cited domain name decisions, including Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002), that the Respondent has engaged in truthful, nominative use of a trademark in connection with goods and services and that there is no bad faith shown and that Respondent has shown sufficient rights in the name.While the Panel is persuaded by the facts and argument surrounding the issue of “nominative good faith,” the Panel must also note, as indicated above, that actual use of this domain name for seven years without complaint is also a persuasive factor.
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.
Identical and/or Confusingly Similar
The Panel finds that the Complainant has established that the domain name is identical or confusingly similar.
Rights or Legitimate Interests
The Panel finds that, pursuant to the doctrine known as “nominative fair use,” Respondent has sufficient rights in the name in order to permit Respondent to create a domain name discussing and relating to the business of Complainant.
Registration and Use in Bad Faith
Finally, although the Panel is very troubled by the use of a fake registration address for the registrant, the fact that the Respondent could be contacted directly through the website, <oexstreet.com>, somewhat lessens the Panel’s concern on this issue.The Panel does not find any attempt to misdirect or usurp customers of Complainant.
Further, for seven years, prior to notice of the Complaint, Respondent used the domain name to offer legitimate goods and services to the public.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
R. Glen Ayers, Jr., Panelist
Hon. John J. Upchurch
Dated:November 29, 2006