Domain name - Domain name dispute resolution policy - Supplemental Rules - U.S. Trademark - Identical -Legitimate interest - Confusingly similar - Descriptive- Secondary Meaning - Generic Marks -  Bad faith registration - Bad faith use - Lapse in registration - Failure to renew registration.

Complainant’s registration of electronicdaytrader.com lapsed due to non-payment of the renewal fee.  Respondent registered the domain name on January 12, 2000.  Complainant alleged that Respondent had no legitimate interest in the domain name and is using it in bad faith.

Held, Name Not Transferred to Complainant

There can be no question that the domain name electronicdaytrader.com is identical to the trademark The Electronic Day Trader.  Given that design elements cannot be captured in a domain name, the design elements of Broadway Trading’s registered marks are irrelevant.

Broadway Trading has submitted no evidence to establish either fame or strong secondary meaning in its mark such that consumers are likely to associate electronicdaytrader.com only with Broadway Trading.  As Gene Weissman has submitted, the term “Electronic Day Trader” is in widespread use in a descriptive sense.  Therefore, Respondent has rebutted the Complainant’s argument.

That the Respondent has offered to sell the descriptive domain name does not make its interest illegitimate.  Gene Weissman did not seek to sell the domain name, rather Broadway Trading solicited the offer to sell.  These facts do not indicate any bad faith on the part of Respondent.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
National Arbitration Forum’s Supplemental Rules

Registration Agreements referred to

Network Solutions, Inc., effective October 11, 1999.

Cases Referred to

Ms. World (UK) Ltd. v. Mrs. America Pageants, Inc. (9th Cir. 1988) 856 F.2d 1445
Century 21 Real Estate Corp. v. Sandlin (9th Cir. 1988) 846 F.2d 1175
Nutri/System v. Con-Stan Indus, Inc. (9th Cir. 1987) 809 F. 2d 601
AMF Inc. v. Sleekcraft Boats (9th Cir. 1979) 599 F. 2d 34.
Ralston Purina Co. v. Thomas J. Lipton, Inc. (SD NY 1972) 341 F. Supp. 129
Creager v. Russ Togs, Inc. (CD Cal. 1982) 218 USPQ 582

FINDINGS OF FACT
1.Broadway Trading, LLC ["Broadway Trading"] is a securities broker dealer that was established in 1995. The Company has approximately 700 customers [who are day traders], 40 employees and seven offices. Broadway Trading provides its customers with direct access to stock markets and real time trading capabilities. An affiliate, Tradersedge.net, LLC ["Tradersedge.net"] provides training in the intricacies of day trading to many of Broadway Trading’s customers. Broadway Trading’s offices serve as training centers and trading offices where customers who choose not to trade at home may utilize company provided computers and facilities for their trading needs.

2.Marc Friedfertig ["Friedfertig"] is the founder and managing member of Broadway Trading and is instrumental in the training provided to customers. In 1998, McGraw Hill published a book written by Friedfertig and George West entitled The Electronic Day Trader [sometimes referred to herein as the "Book"]. The Book purports to describe successful strategies for trading. The Book is a part of the training provided by Complainant Broadway Trading and Tradersedge.net. The Book is advertised in Complainant’s promotional materials and on its web site, broadwaytrading.com.

3.In 1998, while the Book was being written, Serge Milman, on behalf of Broadway Trading and Friedfertig, registered the domain name "electronicdaytrader.com." The intention in registering that domain name was to utilize it in conjunction with The Electronic Day Trader book to promote Broadway Trading’s business. The Book refers the reader to electronicdaytrader.com as a location to find out more about the author Friedfertig and Broadway Trading. Milman has assigned the name in issue to Complainant. Until the loss of the domain name registration, when a purchaser of the Book or another potential customer would enter the domain name electronicdaytrader.com that person would be linked to the Tradersedge.net web site, which provides information on training programs for day traders and is also linked to the Broadway Trading’s web site.

4.The Book has sold over 135,000 copies, and has been translated into eight languages. The Book is carried by all of the major retailers, including Amazon.com, Barnes & Nobel, and Borders Books. The Electronic Day Trader has received favorable reviews and has been on best seller lists of the Wall Street Journal, New York Times, Business Week and Amazon.com. McGraw Hill has also spent substantial sums in promoting the Book, although there is no evidence of sums spent by Complainant.

5.Until the domain name electronicdaytrader.com registration lapsed, Complainant actively utilized the domain name since 1998 in a manner which brought potential customers into Tradersedge.net and Broadwaytrading.com. Since 1998, web users have located Broadway Trading’s web site via Tradersedge.net by linking from electronicdaytrader.com. 

6.Complainant’s registration of electronicdaytrader.com lapsed due to non-payment of the renewal fee. The failure to pay the renewal fee was inadvertent, as Complainant was actively promoting and utilizing that domain name in connection with its business.

7.Respondent thereafter registered the name electronicdaytrader.com and he previously registered, but had not utilized the name electronicdaytrader.com.

8.Mark Peckman of Complainant Broadway Trading contacted Respondent in January 2000 upon learning that Respondent had registered the domain name electronicdaytrader.com on January 12, 2000. Respondent initially told Mr. Peckman that as long as Mr. Peckman provided him with some evidence that the domain name had been registered by or for Broadway Trading, he would agree to transfer it back, only asking for the cost he incurred in registering it. Respondent, however, eventually refused to make the transfer, and instead sought $100,000, the price ultimately being reduced to $15,000.

9.There is substantial evidence that the name "Electronic Day Trader" is merely descriptive [Respondent’s Exhibit Nos. 2, 3, 4, 5, 6, 7, 8, 9, 10, 11 and 12]. There also is substantial evidence that the names in issue have not acquired a secondary meaning because there are at least three books which substantially incorporate "Electronic Day Trading" in their titles [Respondent’s Exhibit Nos. 9, 10 and 12].

CONCLUSIONS
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned has concluded based on the law, the rules and the findings of fact above set forth, as follows:

1.The strength of a particular mark has traditionally been judged on a sliding scale. Arbitrary or "coined" marks are at one end of the scale and are entitled to the broadest scope of protection. When the mark is a dictionary word rather than a coined word, the strength of the mark, in descending order of protection along the continuum is [1] fanciful, [2] suggestive, and [3] descriptive. A "generic [i.e., the name of a thing] or "merely descriptive" mark is at the opposite end of the scale from arbitrary marks and is not entitled to protection, because it cannot satisfy the initial requirement that a mark distinguish the owner’s goods and services from others. See Lanham Act §2 [15 USC §1052]. The sliding scale of trademark protection is summarized in 1 McCarthy, Traders and Unfair Competition, Chap. 5 [3d ed 1992]. Recent Courts of Appeals cases have applied this sliding scale. See, e.g., Ms. World (UK) Ltd. v. Mrs. America Pageants, Inc. 9th Cir. 1988) 856 F.2d 1445; Century 21 Real Estate Corp. v. Sandlin (9th Cir. 1988) 846 F.2d 1175; Nutri/System v. Con-Stan Indus., Inc. (9th Cir. 1987) 809 F.2d 601; AMF Inc. v. Sleekcraft Boats (9th Cir. 1979) 599 F.2d 34. The Arbitrator here has concluded that the names in issue are merely descriptive, requiring a secondary meaning to be protected. 

2.Thus, marks for which a secondary meaning must be shown include those that are descriptive of goods or services, or that are geographically descriptive. The Arbitrator has concluded that there was no secondary meaning created by Complainant. See, Ralston Purina Co. v. Thomas J. Lipton, Inc. (SD NY 1972) 341 F.Supp. 129. This is because the theory of "secondary meaning" contemplates that [Creager v. Russ Togs, Inc. (CD Cal. 1982) 218 USPQ 582]: A word or phrase originally, and in that sense primarily, incapable of exclusive appropriation with reference to an article on the market . . . might nevertheless be used so long and so exclusively by one producer with reference to his article that in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product; in other words has come to be, to them, his trade name.

3.It is concluded, accordingly, under Rule 4(a)(ii), that Complainant does not have "rights" nor does anyone else, including Respondent, in the domain names at issue, absent their establishment of a "secondary meaning."

4.It becomes unnecessary, accordingly, to determine whether Respondent acted in bad faith in registering the domain names in issue.

DECISION
Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows: THE CLAIM OF COMPLAINANT Broadway Trading, LLC AGAINST Gene Weissman BE, AND THE SAME IS, HEREBY DENIED. Judge Irving H. Perluss [Retired], Arbitrator.