WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United States Securities and Exchange Commission v. Alexander Zervakos, Securex Filings LLC
Case No. D2017-0200
1. The Parties
Complainant is United States Securities and Exchange Commission of Washington, DC, United States of America (“United States”), internally represented.
Respondent is Alexander Zervakos, Securex Filings LLC of Denver, Colorado, United States, represented by Thomas P. Howard LLC, United States.
2. The Domain Names and Registrars
The disputed domain names (hereinafter the “Domain Names”) <edgarlink.com>, <sec-file.com> and <secfile.net> are registered with Google Inc. The Domain Names <edgarlink.info>, <edgarlink.net>, <edgarlink.org>, <secfile.biz>, <secfile.com>, <secfile.info>, <secfile.mobi>, and <secfile.org> are registered with GoDaddy.com, LLC (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2017. On February 2, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On February 3, 2017, the Registrars transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2017. Pursuant to paragraph 5(b) of the Rules, the due date for Response was extended to March 5, 2017. The Response was filed with the Center on March 5, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 15, 2017. 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.
3.1 Preliminary matter: Consent to Transfer
This proceeding initially concerned eleven Domain Names. However, Respondent has, without prejudice to its position, consented to Complainant’s request to transfer nine of the eleven Domain Names. The Panel will therefore order the transfer of those nine Domain Names to Complainant. The only Domain Names remaining in dispute are <secfile.com> and <secfile.net>. This consent by Respondent has simplified the case, and will obviate the need to discuss certain allegations, facts, and arguments put forth by the Parties.
Unless otherwise indicated, henceforth the Panel will refer to <secfile.com> and <secfile.net> as the “Domain Names”.
4. Factual Background
Complainant, an agency of the United States government, was established by an act of the United States Congress in 1934 as a regulator of the securities market. According to the Complaint, Complainant has been referred to as the “SEC” since 1936. Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) of the mark SEC. The USPTO registration confirms that the SEC mark has been used since May 5, 1991, for, among other things:
“Electronically provided financial information, namely, financial filings, reports, disclosures and information to inform the public about investments and the regulation of securities and markets pursuant to Chapters 2A-2E of the United States Code, Title 15 (…)”.
Respondent states that it “has offered United States Securities and Exchange Commission (‘SEC’) filing services since 2003 helping publicly traded companies comply with SEC rules and regulations, by properly formatting their filings and alerting companies to file these documents on time.” Respondent registered the Domain Name <secfile.net> on January 24, 2003, and the Domain Name <secfile.com> on September 17, 2010. The Domain Names resolve to Respondent’s website, located at “www.securexfilings.com”, which offers a variety of services, described in part as follows:
“Securex provides a single point of contact for your SEC (http://sec.gov) compliance requirements, streamlining your process by becoming part of your team and enabling you to focus on your core business. Available 24/7, Securex is always ready to serve you.”
Complainant discovered in July 2016 that Respondent had registered and had been using the Domain Names. Complainant’s counsel sent Respondent a cease-and-desist letter dated September 20, 2016, to which Respondent’s counsel replied on September 29, 2016. Respondent’s counsel asserted in its response letter that it was not using the Domain Names as a trademark, but merely “as addresses for navigating to Securex’s website” because the Domain Names “describe Securex’s services.” Respondent’s letter went on to discuss the factors for establishing likelihood of confusion under United States trademark law.
Respondent also asserted that it enjoyed a “fair use” defense to its allegedly infringing activities. First, Respondent asserted that it was engaged in “classic fair use” because the Domain Names described the services Respondent provided, namely, filing services with the SEC. Second, Respondent asserted that it was engaged in a “nominative fair use” inasmuch as the Domain Names described Complainant’s services, and that “the SEC’s filing requirements are not readily identifiable without use of the initial SEC.”
After an exchange of emails over the following three weeks, Respondent’s counsel wrote another letter, dated October 19, 2016, to Complainant’s counsel and advised that Respondent was willing to cease using all but two of the subject Domain Names, i.e., <secfile.com> and <secfile.net>. According to Respondent, taking these two Domain Names out of use “would cause Securex severe injury, as its website would suffer severe optimization injury with the search engines on which it currently enjoys very high optimization, and contact would be lost with innumerable clients that have Securex listed in their contacts through secfile.net and secfile.com related email addresses.”
5. Parties’ Contentions
Complainant contends that it has established the three elements required under the Policy to warrant a transfer of each of the Domain Names at issue in this proceeding.
As noted above, Respondent has agreed to the transfer of nine of the eleven Domain Names at issue in this case, but maintains that it is entitled to retain the Domain Names <secfile.com> and <secfile.net>.
Respondent notes that Complainant “performs no commercial services,” and does not prepare or conduct securities filings for third parties. By contrast, Respondent does provide commercial services “directly related to the making of securities filings to the SEC, including the complex conversion and tagging services necessary to prepare for the same.” According to Respondent, the Second-Level Domain of the Domain Names, “secfile”, “accurately and fairly describes Respondent’s services, as those services consist of assisting public companies in preparing and conducting filings to the SEC.” According to Respondent, “no other name would accurately describe the service being provided” by Respondent. Because Complainant does not provide filing services to customers, Respondent asserts, no confusion is possible between the SEC mark and the Domain Names.
Respondent also asserts that, since its use of the Domain Name <secfile.net> in 2003, there has been no evidence of actual consumer confusion. According to Respondent, companies searching for SEC filing services are sophisticated consumers who have not mistaken, and will not mistake, the website to which the Domain Names resolve as a website operated by or affiliated with Complainant.
6. Discussion and Findings
With respect to each of the Domain Names, paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy:
(i) the 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) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights, through registration and use, in the mark SEC. The Panel also finds that the Domain Names are confusingly similar to that mark. The Domain Names incorporate the mark SEC and add the word “file.” Because filing documents with Complainant is a very common activity for publicly traded companies in the United States, the word “file” does little to diminish the confusing similarity between the SEC mark and the Domain Names. See International Organization for Standardization ISO v. Noblitt & Rueland, WIPO Case No. D2007-1809 (“ISO”) (domain name <iso9001.org> is confusingly similar to ISO mark). The Panel makes this finding under the prevailing standards of the Policy, and does not thereby offer any view as respects any question of “likelihood of confusion” as that concept is understood and applied in United States trademark and unfair competition law.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests with respect to each of the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
As noted above, Respondent has argued, both in its reply to Complainant’s cease-and-desist letter and in its Response to the Complaint in this proceeding, that it is protected by doctrines of fair use, described above.
Complainant argues that Respondent’s “classic fair use” defense must fail, in part because Respondent’s actions “appear to be calculated to create an impression of an association with the SEC” even though no such association exists.
With respect to the “nominative fair use” defense, Complainant asserts, among other things, that Respondent is using Complainant’s SEC mark beyond the extent necessary to identify the service provided by the SEC. Rather, Complainant notes, the Domain Names resolve to Respondent’s main website, where Respondent also sells services related to “Canadian filing and international press distribution.”
The application of colorable “fair use” arguments makes this case among the more difficult cases which have been presented for resolution under the Policy, which is best suited to tackle clear cases of cybersquatting. It should also be noted that the elements of a claim under the Policy are not coextensive with the elements of United States trademark and unfair competition law as reflected in the Lanham Act. Having said that, and also acknowledging that this case does not present a typical fact pattern, the Panel notes that there is at least some guidance provided by prior decisions under the Policy.
The Panel finds, based largely on analogous prior decisions under the Policy, that Respondent lacks rights or legitimate interests in respect of the Domain Names. Specifically, this case is similar to the above-cited ISO case. As in ISO, Complainant here is a regulatory body, and Complainant holds and uses a registered trademark (there, ISO). Although the complainant in ISO was a non-governmental body, the Panel does not find that distinction to matter here. In both cases, the regulatory body is offering regulatory-related services under a registered trademark, and in both cases, the respondent was offering services related to compliance with the complainant’s regulations.
In the ISO case, the respondent was a consultant who advised clients on the standards that the complainant promulgated, including ISO standard 9001. The ISO panel concluded that the respondent lacked rights or legitimate interests in respect of the domain names <iso9001.org>, <isotraining.com>, and <isotraining.org>. The ISO panel observed:
“The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. All disputed domain names directly link to the Respondent’s main website, which markets the Respondent’s consultancy and training services in, among other things, ISO products. Similar to the case of International Organization for Standardization ISO v. Root Research, Inc., WIPO Case No. D2001-1194, use of ‘iso’ in the disputed domain names creates the impression of an association with the Complainant and misappropriates the reputation of the Complainant’s mark for the Respondent’s commercial advantage. The Respondent cannot be said to be making a bona fide offering of goods or services prior to notice of the dispute because, as evidenced by the Respondent’s correspondence of December 18, 2007, the Respondent was aware at all times that ‘ISO’ was a protected trade mark. Deliberately infringing use should not be considered bona fide use.
The same reasoning fairly applies here. The redirection of Internet users from the Domain Names to Respondent’s website creates, in the Panel’s view, an unfair impression of association with the Complainant’s trademark for Respondent’s advantage. Respondent does not, and of course cannot, deny having had actual knowledge of Complainant and its SEC mark at the time it registered the Domain Names, since Respondent’s very business consists in helping client companies comply with SEC filing requirements. See also Financial Industry Regulatory Authority, Inc. v. Vincent Imbesi, WIPO Case No. D2016-0134 (transferring <finra8210.com>).
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
For essentially the same reason as the Panel concludes, without needing to comment on the Respondent’s activities more broadly, that Respondent lacks rights or legitimate interests in the Domain Names, the Panel concludes that the Domain Names were registered and are being used in bad faith. Again, the ISO decision appears factually akin to the present case, and the reasoning offered there may be imported to this case. Finding the respondent to be in bad faith within the meaning of Policy paragraph 4(b)(iv), the ISO panel stated:
“The Respondent’s business trains people in the use of the Complainant’s standards (among other standards and regulations), and the Respondent registered the disputed domain names because its business provided training and consultancy in relation to the Complainant’s ISO products. The Respondent’s website is related to activities for which the Complainant is genuinely known. This shows that the Respondent chose the disputed domain names to draw Internet users to its site (through use of the mark ‘ISO’) in order to make a financial gain.”
Again, the salient facts of the present case essentially track those of the ISO case, and this Panel sees no reason to depart from the holding in ISO.
Respondent also asserts that it is not using the Domain Names as a trademark. Unlike the law of trademark infringement, however, it is not essential under the Policy’s conception of bad faith that the defendant/respondent actually be using a domain name as a trademark. Respondent in the present has admitted that the Domain Names improve Respondent’s Internet presence. Accordingly, a finding of bad faith under Policy paragraph 4(b)(iv) is warranted for the same reasons as were present in the ISO case.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <edgarlink.com>, <edgarlink.info>, <edgarlink.net>, <edgarlink.org>, <secfile.biz>, <sec-file.com>, <secfile.com>, <secfile.info>, <secfile.mobi>, <secfile.net>, and <secfile.org> be transferred to Complainant.
Robert A. Badgley
Date: March 22, 2017