Salomon Smith Barney Inc. v. Sau Wong; Smart Ideas

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Salomon

Smith Barney Inc. v. Sau Wong d/b/a Smart Ideas

WIPO Case

No. D2001-0568

1. The Parties

Complainant is Salomon

Smith Barney Inc., a New York corporation, with a place of business in New York,

New York, USA ("Solomon").

Respondent is Sau Wong

d/b/a Smart Ideas, PO Box 808, Cupertino, California 95015, USA (Sau Wong).

2. Domain Name and Registrar

The domain name in issue

is <ssbdirect.com>.

The registrar is Network

Solutions Inc., Herndon, Virginia, USA ("NSI").

3. Procedural History

The WIPO Arbitration and

Mediation Center (the Center) received Salomon’s complaint via email on April

19, 2001, and via hard copy on May 7, 2001. (Salomon advised the Center via

email on April 18, 2001 that, because Salomon was unable to transmit the complaint

via email, on April 18, 2001 Salomon had transmitted the complaint by mail to

NSI and to Sau Wong.) The Center verified that the complaint satisfies the formal

requirements of the ICANN 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). Salomon made the required payment to the Center. The

formal date of the commencement of this administrative proceeding is May 8,

2001.

On April 23, 2001, the

Center transmitted via email to NSI a request for registrar verification in

connection with this case. On April 24, 2001, NSI transmitted via email to the

Center NSI’s confirmation that (1) NSI had received the complaint from Salomon,

(2) Smart Ideas is the registrant of the domain name in issue, (3) the Administrative

Contact and the Billing Contact are Sau Wong, c/o Smart Ideas, 1469 Primrose

Way, Cupertino, CA 95014, with a fax number and a telephone number, (4) the

NSI service agreement version 4.0 is in effect (thus, the Policy applies to

the domain name), and (5) the current status of the domain name registration

is "active."

On April 27, 2001, the

Center requested via email that Salomon amend the complaint in regard to Solomon’s

consent to jurisdiction in line with NSI’s service agreement version 4.0. On

April 30, 2001, Salomon submitted via email to the Center an amendment to the

complaint, with copy to Sau Wong.

On May 8, 2001, the Center

transmitted Notification of Complaint and Commencement of the Administrative

Proceeding, together with a copy of the Complaint, to Sau Wong via email, facsimile

and post/courier. In the Notification, the Center advised that the response

was due by May 27, 2001, pointed out the response should be in accordance with

specified rules, and described the consequences of a default if the response

was not sent by May 27, 2001, including inter alia that an Administrative Panel

would be appointed to review the facts and decide the case, and the Panel may

draw appropriate inferences in the event of default. It appears from WIPO records

that the emailed Notification was delivered to Sau Wong. It appears also that

the copies transmitted via courier to Sau Wong and to Smart Ideas were refused

or otherwise returned to the courier.

On May 28, 2001, the Center

transmitted via email to Sau Wong and to the Technical Contact a Notification

of Respondent Default, advising Sau Wong inter alia (1) it had failed to comply

with the deadline for submissions of a response, (2) the Center would proceed

with the appointment of an Administrative Panel, (3) the Panel would decide

in its discretion whether to consider a response if one were to be submitted

later.

On June 15, 2001, the Center

advised the parties via email of the appointment of David W. Plant as Panelist,

and that the decision was due June 28, 2001.

4. Factual Background;

Parties’ Contentions

a. The Trademark

The complaint is based

on the service mark "SSB Direct". Salomon avers that SSB Direct is

a common law service mark.

Salomon avers that the

mark is used for financial services, viz. providing financial information required

for investment research over a global information network. Salomon assert SSB

Direct is used interchangeably with "Salomon Smith Barney Direct",

a registered mark. Salomon avers that it has "sought to internationally

protect the service mark SSB (U.S. Application No. 75/648553, Filed 2/25/99),

which is used interchangeably with Salomon Smith Barney in twenty-five (25)

countries." Specimens evidencing the use of the SSB Direct mark are said

to appear at Annex C to the complaint.

Salomon avers that it has

used "the mark" (presumably, SSB Direct) in commerce since 1998 "thereby

acquiring common law rights by the time the domain name was registered [May

13, 1999]."

b. The Complaint

Salomon avers that all

three elements of Policy, Paragraph 4.(a) are met because:

1. the domain name in

issue is identical or confusingly similar to a trademark or service mark in

which Salomon has rights,

2. respondent has no

rights or legitimate interests in the domain name; and

3. the domain name was

registered and is being used in bad faith.

Salomon asserts the domain

name at issue is identical to "the service mark in which [Salomon] has

rights [presumably, SSB Direct]." Salomon acquired common law rights in

the mark by the time the domain name was registered May 13, 1999. Salomon notes

that protection under the Policy extends to unregistered marks, citing WIPO Cases

Nos. D2000-0205, D2000-0743,

and D2000-0210.

Salomon avers that on January

2, 2001, Salomon sent a cease and desist letter to "Respondent", together

with an NSI Domain Name Transfer Form. Salomon asserts this was "in an

effort to resolve this matter amicably and without legal process." Salomon

asserts that, on February 1, 2001, the "father of Respondent" telephoned

Salomon "indicating that he, as well as his children, have accounts with

the Complainant (Complainant has confirmed this ... )." Salomon avers the

father

"... clearly stated

that he conducted a trademark search using the United States Patent & Trademark

Office Database and noticed that the Complainant did not seek federal trademark

protection for the service mark SSB Direct. It is upon noticing this that he

said he decided to register the domain name"

Salomon asserts it has

not authorized Sua Wong to use "its service mark or to apply for any domain

name incorporating use of the mark SSB Direct." Accordingly, Salomon contends

Sua Wong "cannot demonstrate any rights and legitimate interests in the

domain name."

Salomon avers that, in

performing the trademark search, "Respondent" necessarily became aware

of the mark "Salomon Smith Barney Direct", and as a client, "Respondent"

cannot claim he "is not aware that [Salomon] also uses the mark SSB as

its company name." Salomon contends it is clearly evident that Sua Wong

"knowingly and purposefully chose a name that is identical to [Salomon’s]

common law trademark." Salomon asserts this is the kind of conduct the

Policy was designed to address, and this conduct "effectively prevents

[Salomon] from using the domain name, and consequently, disrupts [Salomon’s]

business." Salomon cites WIPO Case No. D2000-0392.

Salomon avers that "the

father ... claimed ... the business Smart Ideas is a legitimate business that

he and his son run ‘on the side’ and that they are not using nor have any intentions

to use the domain name www.ssbdirect.com." Salomon asserts neither the

father nor respondent has offered any explanation as to why respondent registered

the domain name.

Salomon asserts that a

printout dated April 2, 2001, at Annex D to the complaint, of a page from the

website demonstrates that the domain name in issue is inactive, "thus proving

... [Sua Wong] does not intend to use the domain name in connection with a bona

fide offering of goods or services." Salomon concludes that (1) the lack

of commercial activity at the website, and (2) Sua Wong’s refusal "to voluntarily

transfer the domain name to [Salomon], clearly demonstrates that the primary

purpose of registration was to sell it to [Salomon], a competitor of [Salomon]

or anyone interested." Salomon cites WIPO

Case No. D2000-0690.

Salomon contends that Sua

Wong’s "passive holding of the domain name should be considered having

been used in bad faith," quoting from the WIPO Telstra decision,

WIPO Case No. D2000-0003, and citing WIPO

Cases Nos. D2000-0042, D2000-0055,

and D2000-0196.

Salomon concludes from

"all of the above, it is impossible to conceive, by any stretch of the

imagination, that the Respondent registered the domain name in good faith."

Salomon requests that the

domain name in issue be transferred to Salomon.

The complaint concludes

with the requisite certificate as to completeness and accuracy and is signed

by Salomon’s counsel.

c. The Default

In light of respondent’s

failure to respond, the Panel has elected to decide this dispute based upon

the complaint. Rules, Paragraphs 5.(e) and 14.(a).

5. Discussion and Findings

Paragraph 4.(a) of the

Policy directs that Salomon must prove, with respect to the domain name in issue,

each of the following:

(i) The domain name

in issue is identical or confusingly similar to a mark in which Salomon 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.

Paragraph 4.(b) of the

Policy sets out four illustrative circumstances, any one of which for purposes

of Paragraph 4.(a)(iii) above, if proved by a complainant, shall be evidence

of a respondent’s registration and use of a domain name in bad faith.

Paragraph 4.(c) of the

Policy sets out three illustrative circumstances any one of which, if proved

by respondent, shall demonstrate respondent’s rights or legitimate interests

to the domain name for purposes of Paragraph 4.(a)(ii) above.

a. Preliminary Observations

The Panel has assured itself

that the parties have been treated with equality and respondent has been given

a fair opportunity to present its case. Rules, Paragraph 10.(b). Accordingly,

in the Panel’s view, respondent has been afforded due process.

b. Identity or Confusing

Similarity

Salomon has the burden

of proving this element and each of the other two elements of Paragraph 4.(a)

of the Policy. It is especially important in a default situation that a complainant

meet its burden of proof.

Salomon contends that its

service mark SSB Direct and Sua Wong’s domain name are identical. Salomon does

not assert that the domain name is confusingly similar to any of Solomon’s marks

referred to in the complaint. Identity between "SSB Direct" and the

domain name is self-evident.

The matter of Salomon’s

alleged common law rights in the mark SSB Direct is more complicated. Salomon

has obtained a United States Patent and Trademark Office (USPTO) registration

on the service mark "Salomon Smith Barney Direct". Salomon has applied

for a USPTO registration on the service mark "SSB". However, Salomon

avers it has not sought to register the mark in issue, i.e. "SSB Direct",

relying instead solely on alleged common law rights.

Salomon is correct in asserting

that the Policy protects common law trademarks and service marks. However, Salomon

has the burden of proving it holds such rights in the SSB Direct mark. Salomon

contends it has used the mark in commerce since 1998. This naked assertion is

not supported by any of the usual contemporaneous documents associated with

the use of a mark. Salomon has supplied the Panel in Annex C with only the following:

1. What appears to be

a cover sheet from a July 2000 primer on "The ABCs of CDO Equity".

A note in the lower left corner of the cover directs the reader to "SSB

Direct" to access the report electronically. This use of SSB Direct is

as an Internet address and not as a service mark.

2. Undated color copies

of what appear to be website screens reproduced on 13 pages in Annex C. "SalomonSmithBarney

Direct" appears on the upper right hand corner of each of those pages.

By the Panel’s count, "SSB Direct" appears on six of the pages, twice

as a noun, once as a modifier of "commentary and research", once as

a modifier of "customers", and three times as a modifier of "team".

In none of these uses, at least as discerned by the Panel, has the term "SSB

Direct" be identified in any way as a service mark or as associated with

any specific services. Of course, when used as a noun, a term ordinarily cannot

acquire trademark or service mark status. Indeed, the use of an alleged mark

as a noun may destroy trademark or service mark rights otherwise attributable

to the term.

In addition to the dearth

of assistance to the Panel from the Annexes to the complaint, Salomon’s February

1999 USPTO application to register the term "SSB" as a service mark

is an intent to use application. It strikes the Panel as at least odd that,

as of February 1999, Salomon filed an intent to use application on "SSB",

when in this proceeding Salomon makes the naked assertion that it has used the

term "SSB Direct" as a service mark since 1998. This is especially

curious in light of Annex C, where the only dated use of "SSB Direct"

is July 2000, as an Internet address.

On the other hand, Salomon

is helped by the certificate of accuracy at the end of the complaint, and the

lack of challenge from Sau Wong, as to Salomon’s common law rights since 1998

in the alleged service mark "SSB Direct".

On balance, for purposes

of this specific proceeding in this specific forum, the Panel finds that Salomon

currently has common law rights in the service mark "SSB Direct" that

are protectable under the Policy.

Accordingly, Salomon has

carried its burden on this element of Paragraph 4.(a).

c. Rights or Legitimate

Interests

Salomon has demonstrated

the lack of any right or interest in the mark or the domain name on the part

of respondent.

Salomon has averred without

contradiction that respondent’s father has stated that Sau Wong has not used

and has no intention of using the domain name in issue. The April 2, 2001,

print out from the page at the <ssbdirect.com> address confirms that the

site is not in use.

Salomon has averred, without

contradiction, that Sau Wong registered the domain name without any authorization

from Salomon.

Here, also, Salomon has

carried its burden of proof

d. Registration and

Use in Bad Faith

In appropriate circumstances,

bad faith registration and use of a contested domain name can be inferred from

circumstantial evidence. Both registration in bad faith and use in bad faith

must be proved by Salomon.

The Panel finds that Salomon

has proven that respondent’s conduct evidences bad faith registration and use

under the Policy.

Salomon avers without contradiction

that Sau Wong’s father stated he conducted a search in the USPTO data base and

found that Salomon had not sought federal trademark protection of "SSB

Direct". (This, of course, should not have ended the father’s search, because

the Policy protects common trademarks and service marks as well as registered

marks.) Thereafter, it appears that Sau Wong and his father decided to register

the name. The foregoing, plus Sau Wong’s failure to use the domain name, and

his father’s alleged intention not to use the domain name, support the inference

that Sau Wong registered the domain name to prevent Salomon from reflecting

SSB Direct in a corresponding domain name and to disrupt the business of Salomon.

(It is not clear on this record when Salomon began using the Internet address

<direct.sbi.com> which appears on documents in Annex C.)

None of Salomon’s averments

or the inferences drawn by the Panel fits precisely any of the four elements

of the Policy, Paragraph 4.(b). Notwithstanding that Salomon contends the Sau

Wong’s "primary purpose" in registering the domain name was to sell

it to Salomon, a Salomon competitor, or someone else, this record does not support

such an inference (Paragraph 4.(b)(i)). Nor is there evidence that Sau Wong

engaged in a pattern of registering domain names based on the marks of others

(Paragraph 4.(b)(ii)), or Sau Wong is a competitor of Salomon(Paragraph 4.(b)(iii)),

or Sau Wong has attempted to attract for commercial gain Internet users to the

site (Paragraph 4. (b)(iv)). Nevertheless, Sau Wong’s conduct over all compels

the inference that the registration and "passive" use of the domain

name have been in bad faith. On this record, no plausible conclusion other than

bad faith as to both registration and use is possible.

6. Decision

In light of the findings

by the Panel, the Panel decides that Salomon has met its burden of proof with

respect to each of the three elements of Policy, Paragraph 4.(a).

Accordingly, the Panel

requires that the registration of the domain name <ssbdirect.com> be transferred

to Salomon.

David W.

Plant

Panelist

Dated: June

28, 2001

More cases by this complainant

• Salomon Smith Barney Inc. v. Daniel Singer d/b/a Build Me A Website.com — D2000-1722 · salomansmithbarney.com, solomansmithbarney.com · Transfer · 15 Mar 2001
• Salomon Smith Barney Inc. v. Salomon Internet Services — D2000-0668 · salomonbrothers.com · Transfer · 04 Sept 2000