WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
New York Stock Exchange, Inc. v Manuela Lemmel
Case No. DBIZ2001-00044
1. The Parties
The Complainant is the NEW YORK STOCK EXCHANGE, INC., a corporation organised under the laws of the USA, having its principal place of business in New York 11 Wall Street, New York NY, 1005, United States of America and represented by Baker Botts, LLP. ("the Complainant").
The Respondent is MANUELA LEMMEL, a private person domiciled in Germany and residing at Hartmannsdorf, Germany ("the Respondent").
2. The Domain Name and Registrar
The domain name at issue is <e-broker.biz>.
3. Procedural History
The complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .biz adopted by NeuLevel Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, the Rules for Start-up Trademark Opposition Policy (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (the "WIPO Supplemental STOP Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on December 14, 2001.
On December 23, 2001, the Center sent a Notification of the STOP Complaint and Commencement of Administrative Proceedings to the Respondent, setting a deadline of January 13, 2002, by which Respondent could make a response to the Complaint.
On January 13, 2002, Respondent submitted its response by email to the Center.
On January 14, 2002, the Center sent an Acknowledgement of Receipt of the Response to Respondent.
On January 30, 2002, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to parties, in which Wolter Wefers Bettink was appointed as Sole Panelist.
4. Factual Background
On August 5, 2001, Complainant filed an intellectual property claim ("IP Claim") pursuant to the instructions and the format provided by NeuLevel.
On November 19, 2001, Respondent registered the domain name <e-broker.biz>.
On November 22, 2001, NeuLevel notified Complainant that Respondent had registered the domain name <e-broker.biz> and informed Complainant that it was entitled to commence a Start-up Trademark Opposition Policy against Respondent.
On December 10, 2001, Complainant wrote to Respondent requesting Respondent to provide a written explanation as to the legitimate basis for registration of and/or use of "e-broker" as part of the registered domain name. In this letter Complainant also requested written confirmation by Respondent that she would transfer the domain name <e-broker.biz> to Complainant. Complainant received no response from Respondent.
On December 14, 2001, Complainant filed a Complaint pursuant to the Start-up Trademark Opposition Policy.
5. Partiesí Contentions
Complainant was founded and organised in New York City in 1792 and is primarily engaged in the operation of a national and international market for the trading of securities. Complainant has become instantly familiar and is recognised by the public at large, and has enjoyed a fine reputation for two centuries. Complainant is world-famous for providing to the investing public a market that is well-known for integrity, fairness, liquidity and breadth. Complainant is the owner of numerous trademark registrations and common law marks, including the mark E-BROKER. Since September 1999, Complainant has used the mark E-BROKER in connection with its computer software for use in wireless communication services in securities and financial fields, for use in accessing a database in the securities field, for use in obtaining financial and securities information, wireless hand-held devices, namely, hand-held computers for the electronic transmission of financial securities, data and related information.
Complainant is the owner of US application no. 76079,359 for the mark NYSE E-BROKER, which is currently pending in the Patent and Trademark Office.
Complainant states that it has advertised and promoted its E-BROKER products throughout the world to consumers interested in the Complainantís products and services.
In light of the considerable investment in the mark E-BROKER and its incalculable value to Complainant, Complainant filed an IP claim in order to protect its rights to the mark E-BROKER.
Complainant states that Respondent has registered the domain name <e-broker.biz> in bad faith. The domain name is identical to Complainantís mark E-BROKER. Respondent has never used the mark E-BROKER, does not own any trademark registrations for the mark E-BROKER, nor owns any other domain names that incorporate the mark E-BROKER.
Respondent has no legitimate interests in the domain name and registered it solely for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
Respondent states that she has registered the domain name in good faith. Respondent states that in Germany no trademark rights to the name "e-broker" exist. Furthermore, Respondent states that she does not know any European trademark rights to the name E-BROKER.
Respondent is preparing the commercial use of the domain name <e-broker.biz> and states that the products she will offer will differ from Complainantís products.
Complainant has trademark rights in NYSE E-BROKER. NYSE E-BROKER, which is not identical to the domain name in question.
6. Discussion and Findings
Under the STOP, a Complaint can only be filed by an "IP claimant" who had filed an IP claim for a particular alpha-numeric string. If that string becomes registered as a .biz domain name, NeuLevel notifies the IP claimant and invites it to initiate a STOP proceeding within 20 days. The Panel has been informed by the Center that this period has been extended to 25 days. NeuLevel determines priority if there are multiple claimants on a random basis (the STOP Paragraph 4 (2) (ii)). Only the priority claimant will be invited to initiate a STOP complaint, which is allocated a ticket number which allows dispute resolution providers to verify whether a STOP complaint is filed by the priority complainant. The service provider (in this case the Center) is required to advise the Panelist if a disputed domain name is subject to more than one claim. In the present case, no such advice has been given to the Panelist.
Under STOP, the Complainant must show:
(a) that the domain name is identical to the Complainantís trademark or service mark (Paragraph 4a(i));
(b) that the Respondent has no rights or legitimate interests in the domain name (Paragraph 4a(ii));
(c) that the domain name was either registered or used in bad faith (Paragraph 4a(iii)).
The Respondent may demonstrate a right or legitimate interest in a domain name. Circumstances similar to those under the Uniform Domain Name Dispute Resolution Policy of ICANN (the UDRP) can be invoked by a Respondent to demonstrate rights or legitimate interests. Similarly, the instances of bad faith exemplified in the UDRP can be invoked by a Complainant. However, because STOP and STOP rules come into play shortly after registration of a domain name, the focus of attention will be on bad faith at the time of registration.
(a) Trademark rights
Complainantís corporate name is the New York Stock Exchange, Inc. Complainant owns a US application for the mark NYSE E-BROKER, which is currently pending in the US Patent and Trademark Office (application no. 76/079,359). As the trademark NYSE E-BROKER is not identical to the pertinent portion of the domain name <e-broker.biz>, the claims cannot be based on this trademark in view of Paragraph 4a(i) of STOP.
Instead, Complainant relies on common law rights in the trademark E-BROKER. Common law rights come into existence when a party can establish goodwill or reputation in and to a name. (See e.g. WIPO D2000-1455, David Gilmour a.o. v Ermanno Cenicolla <davidgilmour.com>). In order to substantiate this claim, Complainant has stated that it has advertised and promoted its E-BROKER products worldwide to consumers interested in Complainantís products and services. Complainant provides evidence of such use by submitting a copy of a leaflet dated September 1999 and an article in The Exchange of November 1999, which relate to a handheld device called "e-broker".
Complainant has, furthermore, provided a copy of several articles and press releases (Wall Street Journal, Business Line, Securities Industries News and Wall Street and Technology) which date from March 16 to August 6, 2000. In these documents it is announced that Complainant is planning to launch a new handheld management system called "e-broker".
In view of this very limited material, the fact that no figures have been submitted on the use (sale) of the "e-broker" hand-held device and the lack of evidence that the "e-broker" order management system has in fact been launched, the Panel doubts whether Complainant has indeed acquired common law trademark rights and, if it has, in which geographical area those rights exist.
In this connection, the Panel has also taken note of the fact that a search with the Google search engine for "e-broker" resulted in 4,350 hits. A sample from those hits, taken by the Panel, shows that on most websites e-broker is used as a generic term for (share) brokerage services over the internet. Furthermore, the search revealed an article in Wire Magazine of June 8, 1999 (therefore predating Complainantís use of "e-broker") entitled "How fast is your E-Broker?" and a BBC News article from September 10, 1999 captioned "Pan-European e-broker planned" which refers to an initiative of French bank Paribas. Other results among the first twenty hits include NetBanco e-broker (a Portuguese bank), e-Broker electronic Securities Trading on the internet (a Czech financial services company), eBroker Systems Ltd from Hong Kong and e-Broker services from the Riga Stock Exchange.
Therefore, the Panel concludes that e-broker is a descriptive or generic term. The Complainant has failed to establish that it has acquired common law trademark right to this generic term.
(b) Bad faith
Even if it is assumed that Complainant has common law rights in the mark E-BROKER, Complainant cannot prevail, as Complainant has not provided evidence that the domain name <e-broker.biz> is registered and used by Respondent in bad faith.
As the Response shows, Respondent has conducted a trademark search within Germany and the European Union and did not find any registered E-BROKER mark. Furthermore, in view of the widespread use of the term "e-broker" (see under (a) above) and the apparently limited use thereof by Complainant, it cannot be established that Respondent was or should otherwise have been aware of Complainantís rights (if any) in the trademark E-BROKER. Therefore, Complainant has not provided the basic evidence necessary to show that Respondent registered and used the domain name in bad faith.
Moreover, Complainant has failed to provide any evidence that Respondent has registered the domain name in order to sell the domain name in excess of her out-of-pocket registration costs or has otherwise acted in bad faith.
(c) Legitimate interests
As Complainant has failed to provide evidence that Respondent has registered the domain name in bad faith, it is not necessary to answer the question whether or not Respondent has legitimate interest in the domain name.
On the basis of the foregoing, the Panel decides that the Complaint be denied.
Wolter Wefers Bettink
Dated: March 26, 2002