Complainant is Dow Jones & Company, Inc. of New York, United States of America represented by Patterson Belknap Webb & Tyler, LLP of United States of America.
Respondent is Idea Studios LLC dba Envent of Florida, United States of America.
The disputed domain name <marketwatch.net> is registered with Blue Razor Domains.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2009. On August 3, 2009, the Center transmitted by email to Blue Razor Domains a request for registrar verification in connection with the disputed domain name. On August 3, 2009, Blue Razor Domains transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 6, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 13, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on August 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 11, 2009.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 17, 2009. 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.
Following its initial review of the case file, the Panel issued Administrative Order No. 1 of September 29, 2009, to the parties inviting Complainant to submit additional supporting evidence, and authorizing a responsive submission by Respondent. Administrative Order No. 1 stated, inter alia:
“Complainant appears to be relying upon unregistered or common law trademark rights to support a finding of bad faith. Complainant implicitly argues that a highly descriptive term, “MARKET WATCH”, acquired common law trademark status approximately one month following its use in commerce on the Internet (that is, between November 1997 (date unspecified) and December 3, 1997 (the date of registration of the disputed domain name), and that Respondent acted to take unfair advantage of those common-law rights. Complainant has not provided evidence to support its asserted date of acquisition of common law rights.”
Complainant filed a Supplemental Statement dated October 5, 2009, and Respondent filed a Supplemental Statement dated October 9, 2009 in response to Complainant's filing. Both filings were accompanied by extensive evidentiary submissions.
Complainant has registered the word service mark MARKETWATCH on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 2,824,080, dated March 16, 2004, in International Class (“IC”) 36, covering, inter alia, “providing information in the field of investment and finance via the Internet”, claiming date of first use and first use in commerce of October 1997. Application for the aforesaid registration was filed on June 15, 2002. Complainant registered the word and design service mark MARKETWATCH, registration number 2,811,876, dated February 3, 2004, in IC 36, covering, inter alia, “information services relating to investment in finance over computer networks and global communications networks”, asserting date of first use and first use in commerce of October 1997. Application for the aforesaid registration was filed on November 25, 2002. Complainant has registered on the Principal Register of the USPTO the word service mark MARKETWATCH.COM, registration number 2,840,036, dated May 11, 2004, in IC 41; registration number 2,899,317, dated November 2, 2004, in IC 41, and; registration number 2,915,084, dated December 28, 2004, in IC 36. Each of the aforesaid MARKETWATCH.COM registrations was applied for on June 15, 2002, and each of the applications asserted a date of first use and first use in commerce of October 1997. Complainant holds certain other MARKETWATCH-formative registrations at the USPTO, and claims registration of a Community Trade Mark in the European Union for MARKETWATCH. Complainant did not provide documentation to support the latter registration (which in any case did not precede the earliest of the USPTO registrations).
Complainant's applications to register the MARKETWATCH and MARKETWATCH.COM marks were initially rejected by the examiner at the USPTO by office action dated September 30, 2002, on grounds, inter alia, that the asserted marks appeared to be merely descriptive. The USPTO examiner provided several pages of published news reports showing the terms “market watch” being used in a common descriptive sense for financial news information. Complainant submitted a response to the office action dated March 31, 2002, arguing that because of extensive Internet user identification with its news reporting service, the terms had acquired secondary meaning. Complainant further argued that the term MARKETWATCH is suggestive, not descriptive. The USPTO subsequently granted registration on the Principal Register for the asserted service marks, but there is no indication in the correspondence provided by Complainant regarding the basis for the allowances of registration
In response to inquiry by the Panel, Complainant provided evidence that the term MARKETWATCH was used by its predecessors–n-interest, in particular Data Broadcasting Corporation (DBC), then a subsidiary of Financial News Network (FNN), as early as 1987, when it offered a stock market subscription service that could be installed on a personal computer. Complainant provided evidence that DBC entered into an arrangement to provide MARKETWATCH services to Merrill Lynch customers and had over 1600 subscribers by 1988. Complainant has provided evidence that DBC was spun off from FNN following the latter's bankruptcy in the early 1990s, and that DBC initiated its own MARKETWATCH Internet financial service in January 1996. By mid-1996 that service was reported to have 3600 subscribers. In October 30, 1997, DBC and CBS announced they would initiate a new Internet website venture identified as “CBS MarketWatch” the following month. Complainant has provided evidence of the aforesaid announcement (press release) in several news services, including services operated by Dow Jones. Complainant states that it acquired MarketWatch.com (presumably from the DBC/CBS joint venture) in January 2005, and asserts that in doing so it assumed the common law trademark rights of its predecessors-in-interest dating back to 1987.
A commercial Internet website identified as “MarketWatch” is presently operated by Complainant at “www.marketwatch.com”. This website is heavily visited by Internet users in the United States.
According to the Registrar's verification report, the record of registration of the disputed domain name was created on December 3, 1997. According to that verification report, Respondent is registrant of the disputed domain name.
The disputed domain name has been used by Respondent to direct Internet users to a website identified by the heading “marketwatch”, below which is stated “Market News and Info”. This heading is followed by a modest amount of financial news information that appears to be provided by Yahoo! Finance. Respondent indicates that this information is long outdated, though without tracking historical market data it is difficult for the Panel to draw a conclusion about that (the data is not dated). However, there are a few additional disparate news reports from the Fall of 2007 about matters such as the state of the Austin, Texas condominium market. Respondent states that the information that appeared on its webpage was “static” and did not permit click-throughs, but that cannot be determined from the website printout provided by Complainant. Respondent removed the data upon receipt of the Complaint.
The Registration Agreement in effect between Respondent and Blue Razor Domains subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
Complainant contended that it own rights in the service marks MARKETWATCH and MARKETWATCH.COM as evidenced by registration at the United States Patent and Trademark Office (USPTO) in 2004 (and thereafter), and based upon use in commerce in the United States in connection with a heavily accessed commercial Internet website. Complainant asserted that its MARKETWATCH website was “launched” in November 1997. Complainant subsequently argued that it acquired common law rights in the MARKETWATCH and MARKETWATCH.COM marks based on use in commerce by its predecessors-in-interest as early as 1987. Complainant has argued that its service marks are “suggestive”, but says that even if the marks are descriptive they have acquired secondary meaning.
Complainant alleges that the disputed domain name, <marketwatch.net>, is identical or confusingly similar to its service marks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, <marketwatch.net>. Complainant argues that Respondent has not made a bona fide offering of goods or services using the disputed domain name, that Respondent has not in any way been authorized by Complainant to use its service marks in the disputed domain name, that Respondent is not making a legitimate noncommercial or fair use of the marks in the disputed domain name, and that Respondent has not been commonly known by the disputed domain name.
Complainant contends that Respondent registered and has used the disputed domain name in bad faith. Complainant principally contends that Respondent has intentionally for commercial gain made use of an identical or confusingly similar domain name to attract Internet users to Respondent's website by creating confusion as to whether Complainant is a source, sponsor, affiliate or endorser of Respondent's website. Complainant alleges that Respondent is presumably receiving income from “click throughs” to third-party providers of goods and services listed on Respondent's website. Complainant argues that Respondent acted in bad faith in registration of the disputed domain name because it registered the name shortly following public announcement of the launch of Complainant's “www.marketwatch.com” commercial website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not initially reply to Complainant's contentions. Respondent, however, replied to Complainant's Supplemental Statement.
Respondent asserts that it is a website and electronic commerce development company doing business on behalf of clients and for its own account.
Respondent indicates that the content on its website was developed and posted in the course of experimenting with website development products, and that the information presently on its website dates back 2 to 3 years. Respondent states that the financial information available on its website was referred through a Yahoo financial information widget made freely available on Yahoo's website. Respondent states that it has not used its website for “click-throughs” to third-party advertisers; that the links on its website were not operational; and that content was placed on its website for experimental purposes and remained there inadvertently. Respondent states that it has not earned revenues from the content posted on its website.
Respondent indicates that it took down the website content upon receipt of the Complaint.
Respondent states that Complainant's asserted MARKETWATCH service mark is highly descriptive. Respondent indicates (and provides supporting documentation) that the term is used by a significant number of service providers, including brokerage firms supplying information to their customers (e.g., Smith Barney).
Respondent argues that Complainant has failed to police its alleged service mark because it has not acquired a substantial number of domain names incorporating its service marks, including during Sunrise registration periods, and that a number of MARKETWATCH-formative domain names remain available for public purchase.
Respondent argues that predecessors-in-interest of Complainant did not seek to assert trademark rights in MARKETWATCH because of the highly descriptive nature of the term. Respondent argues that the term MARKETWATCH is generic and widely used by the public for reference to financial information, and other types of information.
Respondent provides evidence of a number of websites using MARKETWATCH in domain names with top-level domains different from that of Complainant, including <marketwatch.org>, <marketwatch.us>, <marketwatch.info> and <marketwatch.tel>. Respondent particularly refers to a website based in the United Kingdom, “www.marketwatch.co.uk”, which it states provides information similar to that provided by Complainant's website.
Respondent argues that the disputed domain name is not confusingly similar to Complainant's alleged service marks because Internet users must make a conscious choice to enter Respondent's “.net” gTLD as compared with Complainant's “.com” gTLD.
Respondent argues that Complainant unreasonably delayed in registering its alleged service marks, such that attempting to enforce them against Respondent now is an after-the-fact attempt to secure Respondent's domain name.
Respondent claims that it is obvious that its website is not that of Complainant and that no Internet user would reasonably be confused. Respondent states that it never profited from its website.
Respondent states that it acquired the disputed domain name in 1997 with a legitimate interest because it incorporated terms commonly used to provide information relevant to the brokerage industry, and that Respondent intended to provide information resources to that industry. Respondent indicates that it is today working on a plan to develop a social networking website that is not competitive with Complainant.
Respondent argues that it did not register or use the disputed domain name in bad faith because it acquired the disputed domain name based on the highly descriptive meaning of its terms, has not used it to create confusion with Complainant's website, and is not engaged in a pattern of activity that might evidence cybersquatting.
Respondent requests the Panel to reject Complainant's request to direct the Registrar to transfer the disputed domain name.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent communicated with the Center following notification of the Complaint. Although Respondent did not submit a Response to the Complaint, it did submit a Supplemental Statement following Complainant's submission of its Supplemental Statement. The Panel is satisfied that Respondent had adequate notice of the proceedings and that both parties had an adequate opportunity to present their positions.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has established a presumption of rights in the MARKETWATCH and MARKETWATCH.COM service marks based on registration on the Principal Register of the USPTO, with earliest date of registration of February 3, 2004, based on application of June 15, 2002. In its applications for service mark registration, Complainant claimed an earliest date of first use and first use in commerce of the subject service marks back to October 1997.
The sole panelist has on previous occasions described the legal significance of the date of first use asserted in a trademark application, the relevance of the filing date, and the date on which the trademark is registered. For example, in Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333:
“Complainant alleges that it holds common law rights to those marks that arose prior to their registration at the USPTO. Among other things, Complainant refers to its claimed dates of first use and first use of the trademarks in commerce on its applications for registration that substantially predate those applications.
The date of application for trademark registration serves as constructive first use contingent upon issuance of the registration. The U.S. Lanham Act provides:
Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing--
(1) has used the mark; (15 U.S.C. §1057)
The dates of first use and first use in commerce claimed on a trademark application do not establish an evidentiary presumption in favor of a trademark registrant. As McCarthy notes: ‘The allegation of a date of first use in a use-based application for registration is not evidence of a date of first use on behalf of an applicant or registrant.' [footnote omitted] 3 McCarthy on Trademarks and Unfair Competition § 20:28 (4th ed.) McCarthy also notes: ‘In inter partes proceedings, a trademark registration resulting from a use-based application is proof of use only as of its filing date, not of the date of first use alleged in the application.' [footnote omitted] (Id.)”
The date of filing by Complainant of its service mark applications in June 2002 establishes a presumption of rights as of that date because the registrations ultimately issued in 2004. The allegations of first use in October 1997 are not evidence of first use. Complainant has provided evidence of the announcement of the launch of “CBS Market Watch” in October 1997 said to be planned for the following month. Curiously, Complainant has not provided evidence that the CBS Market Watch website was actually launched in November 1997, such as by submission of printouts of news reports or webpages. If the test of use in commerce is actual use in connection with providing a service, Complainant still has not “tangibly” satisfied that burden in relation to November 1997.
The Panel will assume for the sake of argument that a “CBS Market Watch” website was launched in November 1997. However, the identifier “CBS” that precedes the descriptive terms “Market Watch” distinguishes this service mark usage from the descriptive terms “market watch” standing alone. The fact that a predecessor of Complainant launched a website distinguished by a well recognized news service provider identifier, “CBS”, does not provide substantial instruction regarding the extent to which the descriptive terms “market match” were recognized as distinctive by the public in December 1997.
Complainant asserts that it acquired common law rights in the service marks as far back as 1987, yet it claimed a date of first use on its service mark applications of October 1997. Complainant seeks to explain the discrepancy by arguing that it broadened the scope of the services it was providing in its service mark applications from the scope of its common law service marks. But if there is a material difference in the nature of the services that the predecessors-in-interest of Complainant provided in 1987 and the services provided in October 1997, Complainant is today seeking to assert service mark rights different from those it might have asserted based on the activities of its predecessors-in-interest in 1987. In any case, the alleged November 1997 launch of a web-based financial news service was undertaken with the identifier “CBS Market Watch”, not MARKETWATCH or MARKETWATCH.COM, and the Panel is not persuaded that MARKETWATCH or MARKETWATCH.COM standing alone had acquired secondary meaning by December 1997.
The Panel rejects the suggestion that the terms MARKETWATCH and/or MARKETWATCH.COM are “suggestive” and therefore do not require demonstration of secondary meaning. The Panel does not require use of its imagination to make a connection between those terms and the provision of information concerning financial markets. The fact that the terms “market watch” have been commonly used by third-party financial service providers to designate the provision of information concerning financial markets supports this conclusion.
Respondent has argued that the terms MARKETWATCH and MARKETWATCH.COM are generic or commonly descriptive, and has provided fairly extensive evidence of the use of those terms by third parties for descriptive purposes. However, the Panel does not need to reach the question whether those terms are generic or commonly descriptive, notwithstanding their registration as service marks by the USPTO. Because the Panel determines that Respondent should not reasonably be charged with knowledge of service mark rights asserted by Complainant as of November 1997, the Panel makes its determination on other grounds (as discussed below).
The Panel determines for purposes of this proceeding that Complainant holds rights in the service marks MARKETWATCH and MARKETWATCH.COM dating back to its earliest application for service mark registration on June 15, 2002. Complainant may have established common law rights sometime prior to that date, but not before Respondent registered the disputed domain name.
The disputed domain name <marketwatch.net> is identical or confusingly similar to Complainant's service marks within the meaning of the Policy.
The Panel rejects Complainant's allegation of abusive domain name registration and use on grounds of failure to demonstrate bad faith by Respondent. For reasons of administrative efficiency, that Panel does not address the issue whether Complainant has demonstrated that Respondent lacks rights or legitimate interests in the disputed domain name.
In order to be found to have engaged in abusive domain name registration and use, Respondent must have registered and used the disputed domain name to take unfair advantage of a complainant's rights in its service marks.1 Respondent's bad faith intention could be evidenced in a number of ways as illustrated in paragraph 4(b) of the Policy, which provides a non-exhaustive list of bad faith conduct.
As a matter of general principle under the Policy, Respondent could not have acted to take unfair advantage of Complainant's rights in service marks before those rights arose. A finding that Respondent registered and used the disputed domain name in bad faith presupposes that Complainant had service mark rights that could be unfairly exploited at the time of domain name registration. See, e.g., Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333; Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet, WIPO Case No. D2007-0875; Symbility Solutions, Inc. v. Darren Ritchie / Symbility, WIPO Case No. D2007-0471; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074.
There are some panel decisions under the Policy in which bad faith registration and use has been found notwithstanding that trademark rights had not been established at the time of domain name registration, as limited exception to the general sequencing principle. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845. Some panels have used the public announcement of a forthcoming product or service launch as the basis for effectively establishing trademark rights in the making. Complainant refers, inter alia, to Thomson v. Out-Site, WIPO Case No. D2005-0166.
The Panel has determined that Complainant established rights in its service marks as of the date of the filing of its earliest service mark applications in June 2002. Complainant argues that Respondent registered the disputed domain name in December 3, 1997, one month after the public launch of the “CBS Market Watch” website. Complainant has not submitted evidence to show that this website was actually launched in November 1997. Nonetheless, Complainant would have the Panel determine that Respondent should have been aware of its common law service mark rights based on a press release reflected in a few online news services in October 1997.
Without expressing an opinion as to whether it concurs with prior panel decisions finding a limited exception to the general sequencing rule requiring the establishment of trademark rights as a condition precedent to a finding of bad faith, the Panel determines that Respondent's conduct does not here exceptionally provide Complainant with early rights.
When Complainant submitted its applications for registration of the MARKETWATCH and MARKETWATCH.COM service marks to the USPTO in 2002, those applications were initially rejected by the examiner because the asserted marks appeared to be merely or commonly descriptive. Although Complainant was able to persuade the USPTO that it had acquired secondary meaning in the service marks, or that the marks were suggestive (the correspondence provided by Complainant does not include an explanation from the USPTO as to why the registrations were eventually accepted), this suggests that Respondent would have needed a substantial degree of prescience in December 1997 to conclude that Complainant had established common law service mark rights within one month after the alleged launch of its commercial website in November 1997. Even if Respondent was aware of the launch by Complainant's predecessors-in-interest of CBS Market Watch, Respondent should not be charged with drawing the conclusion that MARKETWATCH or MARKETWATCH.COM standing alone was protected by common-law trademark rights. Only when Complainant succeeded in registering those marks, relating back to the filing dates, might Respondent reasonably have been charged with notice of Complainant's service marks.
For the foregoing reasons, Respondent did not act in bad faith when it registered the disputed domain name. Respondent was not acting to take unfair advantage of common law service marks which either (a) had not been established as of its date of registration, or (B) as to which it should not reasonably be charged with notice in light of the descriptive nature of the marks.
Decisions under the Policy are directed to the issue of abusive domain name registration and use. They are not directed to issues of trademark or service mark infringement. Without prejudice to the legal character of Respondent's future conduct, that the Panel decides Respondent did not register the disputed domain name in bad faith in 1997 does not provide instruction regarding whether Respondent may now or in the future infringe on a service mark owned by Complainant. These are distinct legal issues. It is possible to register a domain name in the absence of bad faith, yet subsequently infringe a third party trademark or service mark.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: October 18, 2009
1 Paragraph 4(b) of the Policy establishes the required demonstration of bad faith, providing:
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.