Archipelago Holdings, Inc. v. Robert Aragon/Creative Genius Domain Name Sales

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Archipelago Holdings LLC, v. Creative Genius Domain Sales and

Robert Aragon d/b/a/ Creative Genius Domain Name Sales

Case No. D2001-0729

1. The Parties

Complainant is Archipelago Holdings, LLC ("Archipelago"), a Delaware

corporation, with headquarters in Chicago, Illinois, USA. Complainant is represented

by Baker & McKenzie.

Respondents are Creative Genius Domain Sales of Albuquerque, New Mexico, USA,

a doing business name for Robert A. Aragon, and Robert Aragon d/b/a Creative

Genius Domain Names Sales of Albuquerque, New Mexico, USA (together, "Aragon"

or "Respondent"). Respondent proceeds pro se.

2. Domain Names and Registrar

The domain names at issue are:

1. <archipelagoexchange.com>

2. <earchipelago.com>

3. <earchipelago.net>

4. <earchipelago.org>

5. <arcaexchange.com>

6. <arcaexchange.net>

7. <arca-ecn.com>

8. <arcastocks.com>

9. <arcastocks.net>

10. <arcastocktrade.com>

11. <arcastocktrader.com>

12. <arcastocktrading.com>

13. <arcastocktrading.net>

14. <arcastocktrading.org>

For ease of reference, at various points throughout this Decision, identification

of each of these domain names is made by way of the number associated with it

in the above list; all the domain names together are referred to collectively

as the "ARCA Domain Names."

The Registrar of the domain names (1) through (7) is Register.com. The Registrar

of the domain names (8) through (14) is Network Solutions, Inc. ("Network

Solutions").

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received

Archipelago’s complaint (the "Complaint") by email on June 1, 2001

and in hard copy on June 5, 2001.

On June 7, 2001, the Center transmitted via email to Register.com a request

for registrar verification of domain names (1) through (7). On June 7, 2001,

Register.com transmitted via email to the Center confirmation that those domain

names were in fact registered to Aragon, d/b/a Creative Genius Domain Sales.

Likewise, on June 7, 2001, the Center transmitted via email to Network Solutions

a request for registrar verification of domain names (8) through (14). On June

8, 2001, Network Solutions transmitted NSI’s Verification Response via email

to the Center, confirming that those domain names were in fact registered to

Creative Genius Domain Name Sales. Aragon was listed as the Administrative and

Billing Contact for domain names (8) through (14).

The Center subsequently reviewed the Complaint to verify that it satisfied

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 Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy (the "Supplemental Rules"). On June

11, 2001, the Center transmitted via email to Complainant a request for amendment

to the Complaint. The original Complaint had specified Internet Communications

as the registrar of domain names (8) through (14). In fact, as noted above,

Network Solutions is the Registrar of these domain names. On June 14, 2001,

Archipelago amended the Complaint to reflect the correct Registrar.

On June 21, 2001, the Center formally commenced this administrative proceeding

by transmitting to Respondent a Notification of Complaint and Commencement of

the Administrative Proceeding, together with a copy of the Complaint and the

amendment to the Complaint, via courier and email. The Center advised Respondent

that the Response was due on July 10, 2001 and described the consequences of

a default if a Response was not sent by that date.

Respondent, who received a copy of the Complaint from Complainant on June 7,

2001, sent numerous email communications to the Center on June 11, 2001. These

communications consisted of a short statement by Respondent claiming his legitimate

interest in the domain names and articles from various financial publications

discussing Complainant’s plans to seek approval from the United States Securities

and Exchange Commission ("SEC") to become a self-regulating stock

exchange, the withdrawal of that filing, and Complainant’s subsequent plan to

ally itself with the Pacific Stock Exchange ("PCX"). Notwithstanding

its actual notice of the Complaint, though, Respondent failed to provide a Response

as required under the Rules by the deadline indicated in the Notification of

Complaint and Commencement of Administrative Proceeding. On July 11, 2001,

the Center notified Respondent via email that he was in default. The Center

told Respondent that the emails he sent to the Center dated June 11, 2001, although

not a formal response, would be forwarded to the Panel for its consideration.

On July 27, 2001, after clearing for potential conflicts, the Center appointed

David H. Bernstein as the Sole Panelist and informed the parties that

the expected date of decision was August 10, 2001.

On August 2, 2001, Respondent sent an email directly to the Panel, attaching

the text of a November 9, 2000 article from the Securities Industry News

regarding Complainant’s plans to set up the first automated certification tool

in the industry. In response, on August 3, 2001, the Panel issued the following

order:

"The Panel has received an email from the Respondent. Pursuant to the

Rules, all submissions must be sent to the Center, with a copy to the Complainant.

Submissions may not be sent directly to the Panel. In addition, the Rules do

not provide for supplemental submissions by a Party, except in limited circumstances.

See Pacific Fence & Wire Co. v. Pacific Fence, WIPO

Case No. D2001-0237 (June 11, 2001). Further violation of the Rules will

result in the Panel's disregard of the submitted materials and, potentially,

other relief as well. See Britannia Building Society v. Britannia Fraud Preventions,

WIPO Case No. D2001-0505 (July 6, 2001)."

On August 10, 2001, after completing its review of the record, the Panel requested

additional submissions by the Complainant, including (i) copies of the trademark

file wrappers in connection with Complainant’s applications to register, with

the United States Patent and Trademark Office ("PTO"), the mark "Archipelago,"

Serial Nos. 76/034513 and 76/035025, and the mark "ARCA," Serial No.

75/896994, and (ii) an explanation of the significance of references in the

Complaint to the domain names <arcatrading.com> and <arcatrader.com>,

domain names not included in the list of domain names of which Complainant was

seeking transfer. The request for supplemental submissions required the Complainant

to provide any materials by August 17, 2001, and provided Respondent with the

opportunity to respond to the supplemental submissions by August 27, 2001. The

Panel adjusted the date of decision to September 7, 2001.

Complainant provided its supplemental submissions on August 16, 2001. In its

supplemental submissions, Complainant sought leave to amend its Complaint to

seek transfer of the domain names <arcatrading.com> and <arcatrader.com>,

also registered by Respondent. Complainant claimed that the domain names were

inadvertently omitted from the Complaint. In response, on August 20, 2001 the

Panel issued the following Order:

"The Complainant filed its initial Complaint on June 7, 2001 – more than

two months ago. On June 14, 2001, in response to a deficiency notice from the

World Intellectual Property Organization Arbitration and Mediation Center (the

"Center"), the Complainant amended its Complaint. The Center formally

commenced this proceeding on June 21, 2001 and, after Respondent defaulted,

appointed this Panel on July 27, 2001. After its review of the case file, the

Panel, on August 2, 2001, requested further submissions from the parties. Now,

after all of these proceedings, the Complainant seeks leave to add two new domain

names <arcatrading.com> and <arcatrader.com> on the ground that

these "domain names were inadvertently omitted from the Complaint."

If the Panel were to grant Complainant’s request, it would cause substantial

delay in the final resolution of this dispute. The Center would have to submit

new Registrar Verifications, and the Respondent would have to be given 20 days

to respond to Complainant’s claims that these domain names are identical or

confusingly similar to its trademarks, that Respondent has no legitimate interest

in these domain names, and that Respondent registered and used them in bad faith.

Had this request been made shortly after the filing of the initial complaint,

then the amendment likely would have been acceptable, as it would have caused

neither prejudice nor delay. That, in fact, was the circumstance in Maruti

Udyog Ltd. v. Subba Raju, WIPO Case No.

D2000-1036 (Jan. 30, 2001), and Louis Vuitton Malletier v.

Somsak Sooksripanich, WIPO Case No. D2000-0866

(Nov. 3, 2000), the two cases on which Complainant relies in its motion. The

request might also have been acceptable if it were made shortly after the domain

names were registered, especially if they were registered after the filing of

the initial Complaint.

But none of that is the case here. Complainant knew of these domain names at

the time of the Complaint – in fact, they are expressly discussed in the Complaint.

Moreover, although the Panel is sympathetic to the Complainant’s inadvertent

omission, given the current procedural posture of this case, the Panel concludes

that it is too late to amend the Complaint. The judicial economy that would

result from allowing the amendment and thus avoiding the need for Complainant

to file a second challenge against this Respondent is outweighed by the delay

that the amendment would engender. Diageo p.l.c. v. Zuccarini, WIPO

Case No. D2000-0541 (Aug. 22, 2000) (denying request to amend Complaint

to add 11 new domain names as being untimely because request filed after the

Respondent had already filed its Response).

Accordingly, the Panel denies Complainant’s motion. This decision is without

prejudice to Complainant’s filing a new Complaint with respect to these two

domain names."

Respondent submitted two emails on August 26 and 27, 2001. Rather than address

the specific issues raised by the Panel’s Request for Supplemental Submissions,

Respondent’s emails constituted a repetition of its full defense, including

discussion of Complainant’s business plans as an Electronic Communications Network

and the potential fair uses of the word "Archipelago."

On August 29, 2001, Complainant requested that Respondent’s supplemental submission

be stricken as non-responsive to the Panel’s Order dated August 10, 2001. On

August 30, 2001, Respondent in turn requested that Complainant’s August

29, 2001 email be stricken from the record as non-responsive. Respondent also

included in its August 30, 2001 submission further argument in response

to the Complaint.

The Panel grants Complainant’s request and denies Respondent’s request. The

Panel’s Order clearly instructed the parties to file supplemental submissions

only on two narrow issues. To the extent Respondent’s submissions went beyond

those issues, the Panel has disregarded them. The Panel also disregards the

arguments in Respondent’s untimely August 30, 2001 email and his subsequent

email dated August 31, 2001, which was entitled "Not a Submission – Point

of Interest Only."

4. Factual Background

Complainant is an Electronic Communications Network ("ECN") approved

by the SEC since 1997 for direct interaction with the NASDAQ National Market

System. ECNs allow market participants to execute trades anonymously and eliminate

the need for an intermediary, such as a dealer or broker.

Complainant is a major player in the equities trading market, and its clients

include institutions and broker-dealers. One of Complainant’s most valuable

consumer services is a service known as the ARCA Integrated Book, which allows

investors to view offers and bids submitted to several ECNs simultaneously.

Complainant has an exclusive right to open architecture software with "smart

order routing," which allows routing of a customer’s order to the best

price in the market, regardless of whether the best price is offered by another

Archipelago customer or from a customer using a different system. Complainant

is currently the only ECN offering "smart order routing."

Complainant has used the ARCHIPELAGO and ARCA marks for four years in connection

with its current business. According to the public records of the PTO, Complainant

currently holds three pending United States trademark applications: one for

the mark ARCHIPELAGO (filed April 25, 2000), a second for ARCA (filed January

14, 2000) and a third for TRADEARCA.COM (filed January 14, 2000). These trademarks

applications indicate that the marks are for use in connection with "order,

entry, and execution services in the field of securities," "electronic

transmission of data pertaining to trading equities, futures, options and other

financial instruments," as well as "broker-dealer services" and

"research services for others in the fields of securities, bonds, and other

financial instruments." According to the PTO’s TESS search engine, which

publishes the status of trademark applications, and the versions of the PTO

file wrappers submitted by Complainant on August 20, 2001 only one of Complainant’s

applications has been approved – the application for registration of the mark

TRADEARCA.COM was published for opposition on July 31, 2001. The application

for ARCA is still pending. As for Complainant’s application for registration

of the ARCHIPELAGO mark, although that application was the subject of a final

refusal issued by the PTO on March 22, 2001, Complainant has sought to comply

with the PTO’s requirements and has filed a response to this final refusal.

In addition, Complainant is the owner of various domain names incorporating

the ARCHIPELAGO and ARCA trademarks, including <tradearca.com> (registered

on April 14, 1998) and <archipelagoservices.com> (registered on June 5,

1998).

Respondent is the owner of the ARCA Domain Names. At the time of this opinion,

none of the websites found at the ARCA Domain Names contain content or services

of any kind; instead each domain name resolves to a "splash screen"

provided by the domain names’ respective Registrars.

5. Parties’ Contentions

Complainant alleges that the ARCA Domain Names owned by Respondent are confusingly

similar to the ARCHIPELAGO, ARCA, and TRADEARCA.COM marks. Complainant claims

that it is well known in the U.S. financial sector as both ARCHIPELAGO and ARCA,

the latter of which is used to refer to Complainant’s entire trading system.

Complainant also claims that the ARCA designation is particularly significant

because it is part of Complainant’s most valuable consumer service, the ARCA

Integrated Book. Complainant asserts that the ARCA Integrated Book is available

at www.tradearca.com. Furthermore, all of Complainant’s employees’ email

addresses end in @tradearca.com. Complainant claims that ten of the fourteen

ARCA Domain Names registered to Respondent (ARCA Domain Names (5) through (14))

include Complainant’s ARCA mark, and the remaining four ARCA Domain Names ((1)

through (4)) include the ARCHIPELAGO mark. Complainant further claims that all

fourteen ARCA Domain Names registered by Respondent reference stocks, trading,

exchanges, or ECNs in an attempt to connect these domain names with Complainant.

Complainant also alleges that Respondent has no rights or legitimate interest

in or to the ARCA Domain Names. Complainant claims it has not granted Respondent

any rights to use the ARCHIPELAGO or ARCA marks, and Respondent is not in any

way related to, or associated or in business with, Archipelago.

Complainant further alleges that Respondent registered the ARCA Domain Names

in bad faith. Complainant claims the timing of Respondent’s registration of

the ARCA Domain Names evidences Respondent’s bad faith intent to confuse Internet

users into believing there is some association between Respondent and Complainant:

On July 27, 1999, Complainant publicly announced plans to seek SEC approval

to become a registered, national, independent, self-regulating stock exchange.

On August 9, 1999, Complainant filed its application with the SEC.

On August 17, 1999, Respondent registered domain names (2) through (4).

On August 30, 1999, Respondent registered domain name (1).

On September 18, 1999, Respondent registered domain names (5) through (7).

In early March 2000, Complainant modified its previously announced business

plans and instead became the first ECN to form an alliance with a traditional

stock exchange, the PCX. The new entity is to be known as the Archipelago Exchange,

and it will provide automatic order execution capabilities in the equity securities

listed or traded on the PCX in place of PCX’s traditional floor trading facilities.

This announcement generated much unsolicited publicity.

On March 7, 2000, Respondent registered domain names (8) through (12) and (14).

On March 8, 2000, Respondent registered domain name (13).

Complainant claims that the contemporaneousness of Complainant’s announcements

regarding its business plans and Respondent’s registration of the ARCA Domain

Names evidences Respondent’s bad faith.

Complainant further claims Respondent has engaged in a pattern of conduct of

registering domain names incorporating third party trade names and marks. For

example, Credit Suisse First Boston owns a federal trademark registration for

ISLAND ECN for use in connection with its stock brokerage business. Complainant

alleges that Respondent has registered, inter alia, the following domain

names incorporating Credit Suisse First Boston’s trademark: <islandstocks.com>,

<islandstocktrade.com>, and <islandstocktrader.com>. Another example

of Respondent’s alleged pattern of conduct is Respondent’s registration of various

domain names relating to Oscar De La Hoya, a popular boxer and Mr. De La Hoya’s

company, Golden Boy Enterprises, LLC, which owns trademark and service mark

registrations and applications for OSCAR DE LA HOYA FAN CLUB, OSCARDELAHOYA.COM,

and GOLDEN BOY. On February 25, 2000, Respondent registered, inter alia,

<goldenboyboxing.com>, <oscarboxing.com>, and <oscardelahoyafanclub.com>.

Complainant asserts that Aragon d/b/a Creative Genius Domain Name Sales has

registered 1,381 domain names, none of which is currently linked to an active

website. Complainant contends that this demonstrates Respondent’s practice of

regularly and habitually warehousing domain names.

Complainant alleges that Respondent intends to profit from the goodwill associated

with the ARCHIPELAGO and ARCA marks because he has offered the ARCA Domain Names

for sale through an auction, which further evidences his bad faith. Complainant

claims Respondent made domain names (1) and (2) available for purchase on a

domain name auction website, <afternic.com>. Both of these names were

placed in the "Business" and "Investment" categories by

afternic.com’s system [1]. Complainant also

asserts that Respondent listed domain names (2), (3), and (8) through (14) on

the domain name auction site, greatdomains.com. Complainant emphasizes the value

of these domain names by pointing to the opening bid for domain name (1) on

November 14, 1999, which was set at $62,500. Likewise, Complainant asserts that

anonymous commentators on afternic.com’s website valued domain name (1) at $10,000

and $50,000. Complainant claims that as recently as March 5, 2001, domain name

(2) was listed for sale on afternic.com.

Complainant alleges that, shortly after it became aware that Respondent had

registered domain name (1) in late 1999, Complainant contacted Respondent via

first class mail and email advising him of his violation of Complainant’s trademark

rights. Complainant requested that Respondent transfer domain name (1) to Complainant

and offered to reimburse him for the costs associated with obtaining domain

name (1). Respondent did not reply to Complainant’s request until nearly a year

later, on November 3, 2000. Complainant alleges that, in his November 3, 2000

email, Respondent claimed he owned domain name (1) because of his purported

"retail exchange" in the Archipelago Islands. Complainant claims that

Respondent offered to transfer the domain name in exchange for stock in Complainant’s

company, Archipelago, which would be worth markedly more than the $70 registration

fee Complainant had originally offered. Complainant refused to exchange domain

name (1) for stock rights in Archipelago and attempted to contact Respondent

both through email and post, numerous times in January and February 2001. Respondent

replied to correspondence from Complainant’s counsel on January 26, 2001 stating

he needed 7 to 10 business days to respond, but Complainant claims it has not

had any communication with him since that date.

As discussed in Section 3 above, Respondent failed to comply with the deadline

indicated in the Notification of Complaint and Commencement of Administrative

Proceeding for the submission of his Response. Thereafter, the Center notified

Respondent that his June 11, 2001 emails would not be considered a

formal response, although they would be sent to the Panel. Respondent did provide

supplemental materials within the time frame set by the Panel, but, as noted

above, those submissions were not limited to the specific issues raised in the

Panel’s August 10, 2001 Order and thus have been disregarded.

The crux of Respondent’s various submissions is that Complainant’s business

plans have not been consistent with regard to the use of the Archipelago and

ARCA marks and that Respondent intends to make a fair use of the word "Archipelago."

6. Procedural Issues

The Panel notes that there are technically two distinct respondents in this

case: "Creative Genius Domain Sales" and "Creative Genius Domain

Name Sales d/b/a Robert Aragon." Half of the ARCA Domain Names at issue

in this case are registered to the former and the other half to the latter.

Although the names of these two registrants are slightly different, they both

are clearly entities controlled by Robert Aragon, who has submitted materials

regarding all of the ARCA Domain Names. To the extent they are considered to

be separate respondents, the Panel notes that, pursuant to Rule 10(e), it is

within the general powers of this Panel to consolidate multiple domain name

disputes. Therefore, the Panel will treat both registrants as a single respondent

for the purposes of this proceeding.

With respect to Respondent’s various emails, Rule 5 explicitly outlines the

requirements for filing an appropriate Response with the Center. Respondent

was reminded of these rules, including the deadline by which his Response was

due, upon transmission of the Complaint. Respondent failed to comply with any

of the requirements outlined in Rule 5(b), including the obligation to respond

specifically to the allegations contained in the Complaint. Further, Rule 5(e)

states, "If a Respondent does not submit a response, in the absence of

exceptional circumstances, the Panel shall decide the dispute based on the complaint."

The Panel finds that Respondent did default by failing to file a Response.

The Policy does not mandate a finding for Complainant in cases of default,

but if there is a default, the panel can accept the facts alleged in the Complaint

as true. See Talk City, Inc. v. Michael Robertson, WIPO

Case No. D2000-0009 (Feb. 29, 2000). Complainant, however, still bears the

burden of proof. If it fails to meet its burden by proving the elements outlined

in ¶ 4(a) of the Policy, the Panel must rule for Respondent. See, e.g., Eauto,

L.L.C. v. Eauto Parts, WIPO Case No. D2000-0096

(Apr. 9, 2000) (finding for Respondent, even in the absence of a formal Response,

given that Complainant failed to prove Respondent had no rights or legitimate

interests in the domain name <eautoparts.com>).

Given that Respondent is proceeding pro se, the Panel chose to review Respondent’s

June 11 and August 26 and 27, 2001, emails. After considering the emails,

the Panel has concluded that it will not accord any weight to the facts alleged

therein because Respondent’s emails did not contain any certification that the

information contained in the emails was, "to the best of Respondent’s knowledge

complete and accurate." Rule 5(b)(viii). Without the benefit of this certification,

it is not appropriate to accept the factual assertions contained in the emails.

Talk City v. Robertson, WIPO

Case No. D2000-0009 (Feb. 29, 2000). Moreover, even if the June 11 and August

26 and 27, 2001, emails were properly certified and even if they were treated

as a Response, it would not affect this decision. That is because Respondent’s

emails made no attempt to respond directly to the allegations of the Complaint

or the substance of the Policy. As discussed below, Respondent has not articulated

a convincing legitimate reason for his registration of the ARCA Domain Names

or adequately countered the well-pled charge that he registered and used the

domain names in bad faith.

7. Discussion and Findings

Paragraph 4(a) of the Policy directs that Complainant must prove, with respect

to the domain names at issue, each of the following:

(i) The domain names at issue are identical or confusingly similar to Complainant’s

mark; and

(ii) Respondent has no rights or legitimate interests in the domain names;

and

(iii) The domain names have been registered and are being used in bad faith.

The Fourteen Domain Names At Issue Are Confusingly Similar to Complainant’s

Mark.

Complainant has been using the marks ARCHIPELAGO and ARCA to distinguish its

business since it began operating as an ECN in 1997. Although Complainant does

not currently own a federal trademark registration for either of these marks,

it has three pending applications to register the marks ARCHIPELAGO, ARCA and

TRADEARCA.COM [2].

Furthermore, Complainant has alleged, and Respondent has not contested, that

Complainant used both the ARCA and ARCHIPELAGO marks in United States commerce

for over four years to promote its services and has produced evidence such as

advertisements and articles in financial publications that the company’s services

are well known in the financial industry by both marks. The timing of Respondent’s

domain name registrations is itself powerful evidence of the validity of Complainant’s

marks. Accordingly, the Panel finds that the ARCA and ARCHIPELAGO marks have

become sufficiently tied to Complainant’s business practices in the financial

industry to give rise to trademark rights.

If a domain name wholly incorporates a trademark, it is confusingly similar

to the mark for purposes of the Policy. Eauto, LLC v. Eauto Parts, WIPO

Case No. D2000-0096 (Apr. 9, 2000); Wal-Mart Stores, Inc. v. Richard

Macleod d/b/a For Sale, WIPO Case No.

D2000-0662 (Sept. 19, 2000). As stated in the Complaint, ten of the fourteen

ARCA Domain Names contain Complainant’s ARCA mark, and the remaining four include

the ARCHIPELAGO mark. In addition, eleven of the ARCA Domain Names registered

by Respondent reference stocks, trading, exchanges, or ECNs.

The Panel finds Complainant has met its burden under ¶ 4(a)(i) of the Policy:

the ARCA Domain Names are confusingly similar to Complainant’s marks.

Respondent Has No Rights Or Legitimate Interests In The Domain Names At Issue.

Complainant alleges Respondent has no legitimate interest in the domain names

at issue because: (i) it has not granted Respondent any rights to use the ARCHIPELAGO

or ARCA marks, and (ii) Respondent is not in any way related to, associated

or in business with Archipelago.

There are three ways in which Respondent could demonstrate a legitimate interest

in the domain name. These are outlined in ¶ 4(c) of the Policy:

(i) Before any notice to Respondent of the dispute, Respondent’s use of, or

demonstrative preparation to use, the domain name or a name corresponding to

the domain name in connection with a bona fide offering of goods or services.

(ii) [Respondent] has been commonly known by the domain name, even if [Respondent]

has acquired no trademark or service mark rights.

(iii) Respondent is making a legitimate noncommercial or fair use of the domain

name, without intent for commercial gain to misleading divert consumers or to

tarnish the trademark or service mark at issue.

In his June 11 2001, emails, Respondent claims he has "a desire to develope

[sic] and have had for quite some time my site into a retail, travel, exchange

(cultural), homes [sic] to serve the public. . . . Please as I am sure that

you are aware the term is generic and Archipelago is a network (exchange) of

island that span our globe in many regions." Even if the Panel were to

consider Respondent’s June 11, 2001 or his August 26 and 27, 2001 transmissions,

Respondent’s contentions do not satisfy his burden pursuant to ¶ 4(c)(i).

Respondent has not shown "demonstrative preparation[s]" to make a

bona fide use of the domain names. Although proof of a business plan utilizing

the domain name and signs of pursuit of the business plan can be evidence of

demonstrable preparation, see Physik Instrumente GmbH & Co. v. Stefan

Kerner, WIPO Case No. D2000-1001

(October 3, 2000), mere assertions of an inchoate plan are insufficient,

especially if significant time has passed since the registration of the domain

name with no effort to act on those plans. See World Wrestling Federation

Entertainment, Inc. v. Ringside Collectibles, WIPO

Case No. D2000-1306 (Jan. 24, 2000) (WWF collectibles dealer’s claims of

plans to create an auction site not enough to overcome a prima facie case of

no legitimate use); Fielding v. Corbet, WIPO

Case No. D2000-1000 (Sept. 25, 2000) (Respondent’s claim that he wanted

to start a fan club given no weight since he owned the domain name <brigetjones.com>

for two years without building a website). Respondent registered many of the

domain names at issue, including domain names (1) through (4), almost two years

ago. At the time of this opinion, none of the websites located at the ARCA Domain

Names contain any substantive content. They do not offer goods and services

nor do they provide the sort of information alluded to by Respondent in his

emails. In addition, Respondent does not provide any evidence that the ARCA

Domain Names containing "stock", "stocktrading", "stocktrade",

"stocktrading", "stocktrader", or "ecn" have anything

to do with Respondent’s purported interest in a retail "exchange"

in the Archipelago Islands.

Moreover, as noted above, the timing of Respondent’s domain name registrations

is suspicious. It strongly suggests an effort to trade on Complainant’s goodwill

rather than a bona fide effort to provide services somehow related to the Archipelago

Islands.

Finally, Respondent provides no evidence that he or his company have ever been

known by either the ARCA or ARCHIPELAGO names.

Therefore, the Panel finds Complainant has met its burden pursuant to UDRP

Policy ¶ 4(a)(ii): Respondent has no rights or legitimate interests

in the domain names at issue.

The Domain Names Have Been Registered By Respondent And Are Being Used In Bad

Faith

The Policy specifically outlines circumstances that shall be evidence of the

registration and use of a domain name in bad faith. Two sections of the Policy

are particularly applicable to the case at hand. Paragraph 4(b)(i) provides

that bad faith can be shown by "circumstances indicating registration of

acquisition of 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 documented out-of-pocket costs directly

related to the domain name." Likewise, paragraph 4(b)(ii) provides that

it shall be bad faith if "[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 [Respondent] engaged in a pattern

of such conduct."

Respondent registered the first of the domain names at issue less than two

weeks after Complainant filed its application with the SEC to become a self-regulating

stock exchange. Only a few months later, Respondent placed some of these domain

names up for auction with an asking price exponentially higher than its costs

for registering the domain names. Additionally, Respondent attempted to exchange

domain name (1) with Complainant for stock in Complainant’s company worth much

more than the purchase price of the domain name itself. Although there is no

evidence that Respondent has placed domain names (4) through (7) up for

sale, his offer of sale of the other, closely-related domain names supports

a reasonable inference that Respondent also registered these four domain names

"for the purpose of selling, renting, or otherwise transferring the domain

name registration[s] to the Complainant . . . . for valuable consideration in

excess of the documented out-of-pocket costs." Therefore, Respondent has

displayed behavior prohibited by ¶ 4(b)(i) and (b)(ii) of the Policy. See,

e.g., General Motors Corp. v. Vette Owners, WIPO

Case No. D2000-0595 (Oct. 20, 2000) (bad faith found when Respondent advertised

domain name for sale on web site <corvette.com>).

Respondent demonstrated further evidence of bad faith by his attempts to register

as domain names so many permutations of the ARCHIPELAGO and ARCA marks. See,

e.g., ISL Marketing AG v. Chung, WIPO

Case No. D2000-0034 (Apr. 3, 2000) (Respondent found to have registered

in bad faith 13 of 15 permutations of the World Cup trademark); Magnum Piering,

Inc. v. Mudjackers, WIPO Case No. D2000-1525

(Jan. 29, 2001) (Respondent’s attempt to occupy the field of rational domain

names for Complainant’s business constituted bad faith). Complainant has provided

evidence that Respondent is engaged in a pattern of such conduct; he has registered

over a thousand other domain names, many containing protected trademarks. Although

hundreds of the domain names registered by Respondent relate to online stock

trading, according to Complainant, none of the websites owned by Respondent

are currently conducting business operations of any kind.

Therefore, the Panel finds Complainant has met its burden pursuant to ¶ 4(a)(iii)

of the Policy: the domain names at issue have been registered by Respondent

and are being used in bad faith.

8. Decision

For all the forgoing reasons, the Panel decides that Complainant has met its

burden of proof under ¶ 4(a) of the Policy: the ARCA Domain Names are confusingly

similar to trademarks in which the Complainant has rights, Respondent lacks

a legitimate interest in those domain names, and Respondent has registered and

used the ARCA Domain Names in bad faith. Accordingly, this Panel concludes that

the ARCA Domain Names should be transferred to the Complainant.

David H. Bernstein

Sole Panelist

Dated: September 7, 2001

Footnotes:

1. Complainant claims that Respondent made

the domain names <arcatrading.com> and <arcatrader.com> available

for purchase on afternic.com’s website as well. Because the Panel has declined

to grant Complainant leave to amend its Complaint to include these two domain

names in this proceeding, the Panel makes no findings regarding <arcatrading.com>

and <acratrader.com>.

2. Because the PTO website indicated that

the PTO issued a refusal to register ARCHIPELAGO, the Panel asked Complainant

to submit a copy of the file wrapper so that the Panel could determine the nature

of the refusal to register. Having now received the file wrapper, the Panel

is satisfied that the office actions issued by the PTO are based on procedural,

rather than substantive issues (e.g., specimens unacceptable, inappropriate

recitation of services, failure to provide properly worded declaration) and

therefore, the PTO’s final refusal does not undermine Complainant’s assertion

that it owns rights in the trademark ARCHIPELAGO. Moreover, Complainant has

attempted to overcome these procedural deficiencies in its most recent filing

with the PTO.