The Complainant is Sharebuilder Corporation, Bellevue, Washington, United States of America, represented by Graham & Dunn, PC, Seattle, Washington, United States of America.
The Respondent is James Gilbert, Sherman Oaks, California, United States of
America.
2. The Domain Names and Registrar
The disputed domain names <sharebuilder-401k.com> and <sharebuilder401k.com>
are registered with SRSplus.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2005. On June 29, 2005, the Center transmitted by email to SRSplus a request for registrar verification in connection with the domain names at issue. On June 30, 2005, SRSplus transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2005. The Response was filed with the Center on July 10, 2005. Thereafter, on July 19, 2005, the Complainant forwarded to the Center a supplemental filing, to which the Respondent in turn submitted a response. Under the Policy, it is in the sole discretion of the Panel to determine whether to admit and consider supplemental submissions in rendering its decision.
The Center appointed William R. Towns as the sole
panelist in this matter on August 2, 2005. The Panel finds that it was properly
constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance
with the Rules, paragraph 7.
4. Factual Background
The Complainant is an online provider of stock brokerage services. Since 1999, the Complainant has operated a website at <sharebuilder.com>. The Complainant is the owner of the registered U.S. trademark SHAREBUILDER with respect to “stock brokerage services, namely, facilitating the purchase and sale of equities by means of a global computer network”. The mark was registered by the United States Patent and Trademark Office (USPTO) on September 11, 2001.
The Respondent is in the pension plan administration business. For several years now the Respondent has marketed PC and web-based “run-it-yourself” 401(k) plans to small businesses over the Internet.1 Several of the Respondent’s websites promote the use of online brokerage accounts provided by companies such as Charles Schwab, Ameritrade and eTrade, all of whom are competitors of the Complainant, as a selling point of the Respondent’s 401(k) plans.
The Respondent registered the disputed domain names
in May 2005. The Complainant forwarded a cease and desist letter to the Respondent
on June 13, 2005, at which time the disputed domain names were being employed
to direct Internet users to the Respondent’s website. In particular, the
Respondent used the disputed domain name <sharebuilder401k.com> to direct
internet users to a web page on which the Respondent advertised “401k
participant directed brokerage accounts for small businesses using 401k brokerage
windows”. At some time after being contacted by the Complainant, the Respondent
discontinued using the disputed domain names in this fashion.
5. Preliminary Matters
The Panel must determine as a preliminary matter whether
the Complainant’s supplemental submission and the Respondent’s reply
thereto should be considered. No provision in the Policy, the Rules or the Supplemental
Rules authorizes the filing of supplemental filings by either party to the administrative
proceeding without leave from the Panel. Rule 12 provides that the Panel may
request, in its sole discretion, further statements or documents from either
of the parties, but the Policy and the Rules demonstrate a strong preference
for single submissions by the parties absent exceptional circumstances. See Rollerblade, Inc.v. CBNO and Ray Redican Jr., WIPO
Case No. D2000-0427. The Panel finds no such exceptional circumstances to
be present here, and accordingly the supplemental submissions have not been
considered by the Panel in reaching its decision.
6. Parties’ Contentions
A. Complainant
The Complainant is the owner of the federally registered mark SHAREBUILDER, which it has used in commerce since December 23, 1999, in connection with its investment services. The Complainant asserts that it has spent in excess of $100 million and substantial time and effort developing, marketing and advertising the mark, with the result that the mark has come to be widely recognized as identifying the stock brokerage services originating with the Complainant. According to the Complainant, such services include developing and offering 401(k) products, and the Complainant notes it is currently seeking federal trademark registration of the slogan BECAUSE A 401K IS NOT ENOUGH. In view of this, the Complainant contends that the disputed domain names are confusingly similar with its mark and likely to result in consumer confusion when used by the Respondent to direct internet users to the Respondent’s website.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names because the Respondent (1) has never been commonly known by these domain names, (2) was well aware of the Complainant’s SHAREBUILDER mark before registering the disputed domain names in May 2005,2 and (3) has used the domain names only to direct internet users to the Respondent’s existing websites where the Respondent’s “401(k) Easy” software is offered. The Complainant notes that the Respondent ceased even this use of the disputed domain names after being contacted directly by the Complainant’s General Counsel on June 23, 2005, and argues that a businessman with a bona fide business, or any legitimate, interest in the domain names would not have continued to use the domain names.
The Complainant concludes from these circumstances that the Respondent registered and is using the disputed domain names in bad faith, to misleadingly divert consumers or to tarnish the Complainant’s mark. Further, the Complainant argues that the Respondent provided inaccurate or confusing contact information to the domain name registrant, which also demonstrates bad faith by the Respondent.
The Respondent maintains that he registered the disputed domain names in good faith, with the intent of using them to promote a specific type of web-based 401(k) plan administration service geared specifically to the needs of the radio broadcasting community, to which he has provided significant services over the past twenty years. According to the Respondent, the term “share builder” has a specific meaning in the radio broadcast industry and refers to the building of market share over time. The Respondent also asserts that the concept of buying mutual fund shares incrementally is commonly referred to as “share building”, giving the term “share builder” a dual meaning to radio broadcasters. The Respondent therefore believes that the Complainant is overreaching in asserting its trademark rights with respect to the disputed domain names based on the common usage of the term “share builder” in the radio broadcast industry.
The Respondent denies any intent to interfere with the Complainant’s trademark rights or its business and notes in that regard the he does not provide stock brokerage services, but instead provides 401(k) pension plan administration services. For this reason, the Respondent argues that it is unlikely that his use of the disputed domain names would cause any consumer confusion. The Respondent suggests that inspection of his various websites will show how dissimilar the services offered by his businesses are from the Complainant’s services.
The Respondent explains that any difficulty in contacting
him based on information previously submitted to the domain name registrar is
the result of an administrative oversight, in that the Respondent recently moved
his business offices, and that the oversight would be quickly remedied.
7. Discussion and Findings
A. Scope of the Policy
The Policy addresses the resolution of disputes concerning
allegations of abusive domain name registration and use.See Milwaukee
Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool
Store, WIPO Case No. D2002-0774. Accordingly,
the jurisdiction of this Panel is limited to providing a remedy in cases of
“the abusive registration of domain names”, also known as “cybersquatting”.
See Weber-Stephen Products Co. v. Armitage Hardware, WIPO
Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process,
paragraphs 169 & 170. Paragraph 15(a) of the Rules provides that the Panel
shall decide a complaint on the basis of statements and documents submitted
and in accordance with the Policy, the Rules and any other rules or principles
of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in Paragraph 4(i).
Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) in turn identifies three means through
which the Respondent may establish rights or legitimate interests in the domain
name. Although the Complainant bears the ultimate burden of establishing all
three elements of Paragraph 4(a), a number of Panels have concluded that Paragraph 4(c)
shifts the burden to the Respondent to come forward with evidence of a right
or legitimate interest in the domain name, once the Complainant has made a prima
facie showing. See, e.g., Document Technologies, Inc. v. International
Electronic Communications Inc., WIPO Case
No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain names <sharebuilder401k.com>
and <sharebuilder-401k.com> are confusingly similar to the Complainant’s
registered SHAREBUILDER mark for the purposes of Paragraph 4(a)(i) of the Policy.
The critical inquiry under the first element is whether the mark and domain
names, when directly compared, are confusingly similar. See Wal-Mart Stores,
Inc. v. Richard MacLeod d/b/a For Sale, WIPO
Case No. D2000-0662. In this case, the disputed domain names incorporate
the Complainant’s mark in its entirety, and the addition of the generic
term “401k” does not dispel the confusing similarity arising from
the incorporation of the mark. Id. See also Hang Seng Bank Limited
v. Websen, Inc., WIPO Case No. D2000-0651
(“credit” added to the mark HANG SENG in <hangsengcredit.com>);
Oki Data Americas, Inc. v. Asdinc.com, WIPO
Case No. D2001-0903 (“parts” added to the mark OKIDATA in <okidataparts.com>).
Accordingly, the Panel finds that the Complainant has met its burden under Paragraph 4(a)(i).
C. Rights or Legitimate Interests
The disputed domain names incorporate the entirety of the Complainant’s SHAREBUILDER mark without the Complainant’s permission or consent. The Respondent does not deny that he was familiar with the Complainant, its services and its mark when he registered the disputed domain names. There is no evidence that the Respondent has been commonly known by the disputed domain names. The SHAREBUILDER mark is distinctive with respect to the Complainant’s online brokerage services, but the Respondent has used the disputed domain names to direct internet users to his website, where the online brokerage services of several of the Complainant’s competitors are promoted as a selling point of the Respondent’s “run-it-yourself” 401(k) plans.
Given the foregoing, the Panel finds that the Complainant has made a prima
facie showing under Paragraph 4(a)(ii), requiring the Respondent to come
forward with evidence under Paragraph 4(c) of the Policy demonstrating rights
to or legitimate interests in the disputed domain names. See, e.g.,Document
Technologies, Inc. v. International Electronic Communications, Inc., WIPO
Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp.,
WIPO Case No. D2000-0020.
Pursuant to Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent appears to rely on Paragraph 4(c)(i), claiming that he acquired the disputed domain names with the intention of using them to promote online web-based 401(k) plan administration services specifically oriented to the radio broadcasting community. According to the Respondent, he has provided 401(k) pension plan administration to a number of radio stations and the term “share builder” has a specific meaning within the radio broadcasting industry. Further, the Respondent argues that the term “share builder” is descriptive of the concept of buying mutual fund shares incrementally.
The Panel finds the Respondent’s arguments unpersuasive. The Respondent has submitted no evidence of any use of, or demonstrable preparations to use, the disputed domain names in connection with an offering of goods or services specifically directed to “radio broadcasters who need 401(k) plan administration services.” The Panel has visited each of the Respondent’s websites identified in his Response and nowhere did the Panel find any evidence of the Respondent’s purported “niche marketing” of 401(k) administration services to the radio broadcasting industry, or indications of any demonstrable preparations by the Respondent to use the disputed domain names in this manner. The mere registration of the domain names by the Respondent is not a sufficient showing under Paragraph 4(c)(i).
The Respondent has also failed to submit any evidence to support his assertion that the term “share builder” is commonly used in the radio broadcasting industry in connection with a method of acquiring market share. The Respondent claims that this industry usage of the term is reflected by an unnamed broadcast industry company’s maintenance of the domain name <www.share-builder.com>, but the Panel has found no active website corresponding to this purported domain name. A Google search using “share-builder.com” resolves to the Complainant’s website. There is simply no evidence in the record to support the Respondent’s otherwise unsubstantiated claim regarding the meaning of ‘share builder” in the radio broadcast community.
The Respondent claims that he is making a descriptive use of the term “share
builder”. The Panel notes that under certain circumstances a respondent
may be entitled to register and use a domain name consisting of a commonly used
descriptive phrase, even where the domain name is confusingly similar to the
registered mark of the complainant. See, e.g., Private Media Group, Inc.,
Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO
Case No. D2004-0843. It is clear, however, that the Respondent must use
the domain names not in the trademark sense but in the descriptive sense, to
communicate some aspect of the services offered by the Respondent at his website.
See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO
Case No. D2001-0031.
The Respondent has not established his use of “share builder” in a descriptive sense rather than a trademark sense. Even assuming that the term “share builder” is used in a descriptive sense in the radio broadcast industry, or that the “concept of buying mutual fund shares incrementally” is commonly known as “share building”, neither of which the Respondent has provided evidence of, the term “share builder” does not communicate any aspect of the services offered by the Respondent. By the Respondent’s own admission, he provides “run-it-yourself” 401(k) plan administration and not mutual fund investment services or marketing services. In short, the Respondent cannot make a descriptive use of “share builder” in relation to the services he provides.
Additionally, the Respondent was well aware of the Complainant and its SHAREBUILDER mark when he registered the disputed domain names. The SHAREBUILDER mark is distinctive with respect to the Complainant’s online brokerage services and it is a telling fact that the Respondent’s only demonstrable use of the disputed domain names has been in connection with a page of his website where online brokerage services are promoted in connection with the Respondent’s 401(k) plans. Elsewhere on the Respondent’s website, detailed information about the online brokerage services of a sizeable number of the Complainant’s direct competitors is provided.
The Panel is persuaded from the totality of circumstances in this case that
the Respondent registered the disputed domain names primarily to capitalize
on the goodwill created by the Complainant in the SHAREBUILDER mark. See Match.com,
LP v. Bill Zag and NWLAWS.ORG, WIPO Case
No. D2004-0230. There has therefore been no bona fide offering of
goods and services under Paragraph 4(c)(i). See, e.g., First American Funds,
Inc. v. Ult. Search, Inc, WIPO Case No.
D2000-1840 (for offering under Paragraph 4(c)(i) to be considered bona
fide, domain name use must be in good faith under Paragraph 4(a)(iii)).
Accordingly, the Panel finds that the Complainant has met its burden under Paragraph 4(a)(ii) of demonstrating that the Respondent lacks rights or legitimate interests in the disputed domain names.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent is intentionally using the domain name in an attempt to attract, for commercial gain, internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in Paragraph 4(b)
are not meant to be exhaustive of all circumstances in which bad faith may be
found. See Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO
Case No. D2000-0003. The overriding objective of the Policy is to curb the
abusive registration of domain names in circumstances where the registrant is
seeking to profit from and exploit the trademark of another. See Match.com,
LP v. Bill Zag and NWLAWS.ORG, WIPO Case
No. D2004-0230.
Given the totality of the circumstances of this case, the Respondent’s disavowal of having registered the disputed domain names <sharebuilder-401k.com> and <sharebuilder401k.com> to profit from and exploit the Complainant’s SHAREBUILDER mark is not credible. The Respondent’s claim that he registered the disputed domain names to use in promoting his 401(k) business in the radio broadcast industry is completely unsupported by any evidence of demonstrable preparations by the Respondent to do so. Nor does the Panel appreciate how the Respondent could ever make a descriptive use of the term “share builder” in relation to the services he provides, regardless of the market he is seeking to penetrate. In short, there is no credible evidence from which the Panel can conclude that the Respondent registered the disputed domain names for any legitimate purpose. Further, in the circumstances of this case, the Panel is unable to conceive of any plausible, actual or contemplated use of the disputed domain names by the Respondent that would not be in bad faith.
Accordingly, the Panel finds that the Complainant has met its burden under
Paragraph 4(a)(iii) in demonstrating bad faith registration and use of the disputed
domain names.
8. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <sharebuilder-401k.com> and <sharebuilder401k.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: August 14, 2005
1 A review of the various websites operated by the Respondent reflects that the Respondent’s business is conducted under several trade names, including 401(k) Pro, Inc., Pentec Systems, Inc., Easytec Systems, Inc. and Easytec Partners, Inc. The Respondent’s 401(k) plans and associated software are marketed as “401(k) Easy ™ and “401(k) Easy Online ™”. The domain names associated with the Respondent’s websites include <401keasy.com>, <401k-easy.com>, <401k-easy-online>, <web-401k.com>, <401ksolution.com>, and <pentecsystems.com>.
2 The Complainant has submitted an unsworn declaration from its Vice President and General Counsel, Paul A. Swegle, in support of its contentions. Mr. Swegle states that he spoke directly with the Respondent on June 23, 2005, at which time the Respondent acknowledged his prior familiarity with the Complainant, and even volunteered that he had attempted in the past to develop a business relationship with the Complainant.
3 The Response submitted to the Center identifies the Respondent as “James A. Gilbert d/b/a Share Builder 401(k).”
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