[Indexed as: Dow Jones & Company, Inc. v. Down Jones Update]
[Indexed as: DOWJONESONLINE.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0495
Commenced: 24 May 2000
Judgment: 14 August 2000
Sole Panelist: Richard W. Page
Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Valuable Consideration in Excess of Out of Pocket Costs - Web site Not Developed.
Complainant was registered owner of United States trade mark DOW
JONES, and other names including DOW JONES. Complainant has registered
the DOW JONES in over 40 other countries. Complainant has run a business
under variations of the Dow Jones name since 1882. Complainant has
used the marks in connection with various products and services, including
provision of investor information via the Internet. Respondent registered
the domain name, dowjonesonline.com. Respondent used the name to link to
a web site offering stock market forecasting services, techniques and education
for a fee. Respondent's web site included the words "predict what
the Dow Jones will do in the near future".
Respondent did not file a response. Panelist examined evidence
of complaint to determine if the essential elements of a breach existed.
Held, Name Transferred to Complainant.
The domain name DOWJONESONLINE.COM incorporates the Complainant's
registered mark, and is deceptively similar to that mark.
The Respondent did not file a response, and thus did not satisfy
the onus to prove a right or legitimate interest in the mark. Therefore,
it had no such right or legitimate interest.
The Respondent acted in bad faith, by intentionally attempting to
attract users to its web site for commercial gain. The Respondent was using
the association between the Complainant's name and highly-visible, high
quality stock market services to direct users to its own web site, which
was aimed at people seeking information and education about the stock market.
The Respondent acted in bad faith by creating a likelihood of confusion
between its services and those endorsed by the Complainant. Consumers
searching for a page operated by the Complainant were likely to be enticed
by the domain name, and confused as to the source, sponsorship, affiliation
or endorsement of the Respondent's web site. The Respondent's actions
created the impression that its web site was affiliated with, created,
endorsed or sponsored by the Complainant.
The fame of the Complainant's mark gave the Respondent actual notice
of the Complainant's ownership of and exclusive right to the DOW JONES
MARK.
Policies referred to
ICANN Uniform Domain Name Dispute Resolution Policy, adopted August
26, 1999
Cases referred to
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Panel Decision referred to
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Page, Panelist:
1. The Parties
Complainant is Dow Jones & Company, Inc. ("Complainant"), a Delaware
corporation with a principal place of business in New York, New York, USA.
Respondent is Down Jones Update located at 3016 Ohio Avenue, Baltimore,
Maryland, 21227 USA.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is "dowjonesonline.com" (the "Domain Name").
The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar
Park Drive, Herndon, Virginia 20170 USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the
Complaint of Complainant via email on May 24, 2000. On May 26, 2000, the
Center received hardcopy of the Complaint and sent an Acknowledgment of
Receipt of Complaint to Complainant. The Complainant paid the required
fee.
On June 6, 2000, the Center sent to the Registrar a request for verification
of registration data. On June 8, 2000, the Registrar confirmed, inter alia,
that it is the registrar of the Domain Name and that the Domain Name is
registered in the Respondent's name.
On June 6, 2000, 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 Supplemental Rules for Uniform Domain Name
Dispute Resolution Policy (the "Supplemental Rules").
On June 6, 2000, the Center sent a Notification of Complaint and Commencement
of Administrative Proceeding to the Respondent together with copies of
the Complaint, with a copy to the Complainant. This notification was sent
by the methods required under paragraph 2(a) of the Rules.
On July 13, 2000, the Center notified the Respondent of its default.
After the Center received a completed and signed Statement of Acceptance
and Declaration of Impartiality and Independence from Richard W. Page,
Esq. (the "Sole Panelist"), the Center notified the parties of the appointment
of a single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
Complainant owns the mark DOW JONES, registered on the Principal Register
of the United States Patent and Trademark Office as follows:
(a) Registration No. 1,434,595 of DOW JONES, issued on March 31, 1987,
for computer programs.
(b) Registration No. 2,213,004 of DOW JONES, issued on December 22,
1998, for pamphlets, books, newspapers, journals, digests, newsletters,
and printed stock indexes in the fields of financial, business and general
news.
(c) Registration No. 2,211,169 of DOW JONES, issued December 15, 1998,
for providing and updating indexes of securities values.
(d) Registration No. 2,016,542 of DOW JONES, issued November 12, 1996,
for television broadcasting services.
(e) Registration No. 2,211,181 of DOW JONES, issued December 15, 1998,
for providing information in a wide variety of fields by means of a global
computer information network.
Complainant has registered other trademarks in the United States that
incorporate the DOW JONES mark, as in the following examples:
ASK DOW JONES®;
THE DOW JONES AVERAGES®;
DOW JONES INVESTOR NETWORK®;
DOW JONES MARKET REPORT®;
DOW JONES NEWS SERVICE®;
DOW JONES REPORT®;
DOW JONES VOICE INFORMATION NETWORK®;
DOW JONES WORLD STOCK INDEX®;
DOW JONES MONEY REPORT®;
DOW JONES GLOBAL INDEXES®;
DOW JONES UNIVERSITY®; and
DOW JONES GLOBAL TITANS INDEX®.
Complainant has also registered the DOW JONES mark in over 40 countries
around the world, including the following examples: Argentina; Australia;
Bahrain; Canada; China; Finland; France; Great Britain; Guatemala; Indonesia;
Japan; Jordan; Norway; Poland; and United Arab Emirates.
Complainant was founded in 1882 under the name Dow Jones & Company,
Inc. and is the worlds premier publisher of financial and business news.
In addition to such publications as The Wall Street Journal and Barrons,
Complainant has, for over a hundred years, continuously marketed and sold
financial and business news and information products and services in connection
with its federally registered house mark DOW JONES. These products and
services include, among others:
(f) Dow Jones Indexes SM: a family of market indexes that includes
the Dow Jones Industrial AverageSM, Dow Jones Transportation AverageSM,
Dow Jones Utility AverageSM, and Dow Jones Global Indexes®. The latter
indexes currently cover 34 countries throughout the world as well as 10
sectors, 40 industry groups and 70 sub-industry groups. The flagship Dow
Jones Industrial Average, begun 104 years ago, is the worlds most widely
benchmark of U.S. stock market performance. In 1997, Complainant began
licensing the indexes to exchanges, securities brokers and financial service
companies around the world for investable instruments. Dow Jones Indexes
maintains Web sites at http://indexes.dowjones.com.
(g) Dow Jones NewswiresSM: electronic news wires, including the flagship
Dow Jones News Service®, that provide news, analysis and continuous
updates on financial markets and business activities to subscribers around
the world. Complainant began electronic distribution of Dow Jones news
over one hundred years ago in 1897. Dow Jones Newswires maintains Web sites
at http://www.djnewsplus.com.
(h) Dow Jones Interactive®: a current news and information service
and archive, formerly known as Dow Jones News/Retrieval®, available
to subscribers on the World Wide Web. Now marketed through an affiliated
company, Dow Jones Reuters Business Interactive LLC, Dow Jones Interactive
provides content from thousands of publications, including major newspapers,
magazines and newswires, plus financial information on millions of companies
worldwide and historic data on 250,000 worldwide financial instruments.
(i) dowjones.com: a free service, launched in June 1999, designed to
provide news and information to business people and investors over the
Internet. The Web portal site provides top business, market and world news,
a search engine, personalization features, and access to stock quotes,
charting and business directories. The Web site features top stories from
The Wall Street Journal Interactive Edition and includes an index of more
than 2,000 Web sites selected by Dow Jones editors for business relevance
and reliability. The Web site also features personal finance tools from
SmartMoney.com, which is part-owned by Complainant, and links to four Wall
Street Journal-branded sites. "dowjones.com" is accessible on the World
Wide Web at http://www.dowjones.com.
(j) Dow Jones University®: An internet-based consumer education
service that features courses on personal investing topics taught by instructors
with experience in covering and analyzing the financial markets. The courses
are designed to provide students with long-term investing skills in a variety
of areas and to offer value to all levels of personal investors, from the
novice to the expert. Dow Jones University Web is accessible on the World
Wide Web at http://www.dju.com.
(k) The Dow Jones Money Report®. A radio report on financial and
business news broadcast on 65 United States radio outlets.
Complainant also uses the stylized DOW JONES mark to identify Complainant
as the source of The Wall Street Journal, The Wall Street Journal Europe,
The Asian Wall Street Journal, Barrons, The Far Eastern Economic Review,
The Central European Economic Review, and other publications.
Complainant has spent substantial time, effort, and millions of dollars
advertising and promoting its products and services under the DOW JONES
mark for more than 100 years.
Respondent is using the Domain Name to link to a Web site for "E-STOCK
ONLINE," which describes itself on its home page as "KEEPING THE WORLD
INFORMED ON THE STOCK MARKET." The home page offers to show Internet users
"HOW TO USE A TIME PROVEN TECHNIQUE TO OPTIMIZE YOUR PERFORMANCE IN THE
STOCK MARKET." It also invites internet users to "BENEFIT FROM STOCK PICKS,
FORECAST AND CLASSES THAT ARE BEING OFFERED AT VERY REASONABLE PRICES"
and claims that the " FORECAST WILL PREDICT WHAT THE DOW JONES WILL DO
IN THE NEAR FUTURE BASE [sic] ON THE ELLIOT WAVE THEORY." The home page
bills the Web site as the "BEST VALUE ONLINE" and offers "A YEAR MEMBERSHIP
FOR ONLY $10!!!"
5. Parties Contentions
A. Complainant contends that it has a registered trademark in DOW JONES,
including numerous variations of the mark. Complainant further contends
that the Domain Name is identical with and confusingly similar to the DOW
JONES trademark and its variations pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest
in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain
Names in bad faith in violation of the Policy paragraph 4(a)(iii).
B. Respondent did not contest Complainants assertion that it has a
trademark in DOW JONES and its variations or that the Domain Name is identical
with or confusing similar to the trademarks.
Respondent did not contest Complainants assertion that Respondent
lacks rights or legitimate interest in the Domain Name.
Respondent did not contest Complainants assertion that the registration
and use of the Domain Name is in bad faith.
6. Discussion and Findings
Even though Respondent has failed to file a Response or to contest
Complainants assertions, the Sole Panelist will review the evidence proffered
by Complainant to verify that the essential elements of the claims are
met.
6.1 Identity or Confusing Similarity.
Complainant contends that it has a trademark in DOW JONES and in numerous
variations of that trademark. Complainant also contends that the Domain
Name is identical with and confusingly similar to the DOW JONES trademarks
pursuant to the Policy paragraph 4(a)(i).
The Domain Name in dispute, "dowjonesonline.com", incorporates "dowjones,"
which is identical with Complainants DOW JONES mark. The Domain Name is
also confusingly similar. Adding to DOW JONES the word "online" makes it
appear that the Domain Name will link to an Internet Web site maintained
or endorsed or sponsored by Complainant.
Therefore, the Sole Panelist finds that the Domain Name is identical
with and confusingly similar to the DOW JONES trademarks pursuant to the
Policy paragraph 4(a)(i).
6.2 Rights or Legitimate Interest.
Complainant asserts that Respondent has no rights or legitimate interest
in the Domain Name. Complainant has exclusive trademark rights to the DOW
JONES marks and has not given Respondent permission to use the DOW JONES
marks. Complainant has no relationship with Respondent that would in any
way entitle Respondent to use the DOW JONES mark.
Complainant further asserts that the Respondent has never attempted
to do business under the "Dow Jones" name and that if Respondent has made
any such attempt, such conduct would itself be a violation of Complainants
trademark rights.
The Policy paragraph 4(c) allows three methods for Respondent to demonstrate
that it has rights or a legitimate interest in the Domain Names:
(i) before any notice to you 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 (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 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.
Respondent offers no evidence of the applicability of any of the criteria
in the Policy paragraph 4(c).
Therefore, the Sole Panelist finds that Respondent has no rights or
legitimate interest in the Domain Name pursuant to the Policy paragraph
4(a)(ii).
6.3 Bad Faith.
The Policy paragraph 4(b) sets forth four criteria for bad faith registration
and use of domain names:
(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.
The Sole Panelist finds that Respondent has engaged in activities meeting
the criteria under the Policy paragraph 4(b)(iv) for bad faith:
(a) The Respondent is intentionally using the Complainants famous
and well-respected name to lure Internet users to its Web site for financial
gain. The Respondents Web site is directed to persons who seek information
about the stock market and classes and advice on successful investing.
Respondent charges a membership fee and offers classes for a fee. Thus
Respondent is not making a legitimate non-commercial or fair use of the
domain name, nor is Respondent acting without intent for commercial gain.
(b) The Dow Jones name is associated by the investing public and members
of financial and business communities with financial and business news
and information, including news and information about the stock market,
of especially high quality. Complainant uses the DOW JONES mark to market
and sell around the world a number of highly visible business and financial
news and information products and services, including those marketed and
sold on the World Wide Web, i.e., "online."
(c) Consumers who are searching for Complainants home page or one
of Complainants other Web sites are likely to enter "dowjonesonline.com"
in an effort to reach Complainants own home page or one of Complainants
internet products or services. Consumers who encounter "dowjonesonline"
on the Web will recognize the Dow Jones name and will be enticed by the
name to access Respondents Web site. All consumers are likely to be confused
as to the source, sponsorship, affiliation, or endorsement of Respondents
Web site.
(d) By registering the domain name <dowjonesonline.com> and using
the name to link to a Web site that offers stock market information and
investment classes and advice, the Respondent conveys the impression that
the Web site is affiliated with or created, endorsed, or sponsored by Complainant.
(e) The DOW JONES mark enjoys such fame throughout the world that Respondent
must be aware of these trademark rights when Respondent registered and
first used the domain name. Subsequently, Complainant gave Respondent actual
notice of Complainants ownership of and exclusive rights to the DOW JONES
mark. Respondent has nonetheless continued to use the DOW JONES mark in
the Domain Name and to use the Domain Name to access Respondents Web site.
The Sole Panelist finds that Complainant has shown the necessary elements
of the Policy paragraph 4(b)(iv). Therefore, the Sole Panelist further
finds that Respondent has registered and used the Domain Name in bad faith
pursuant to the Policy paragraph 4(a)(iii).
7. Decision
The Sole Panelist concludes (a) that the domain name "dowjonesonline.com"
is identical with and confusingly similar to the trademark DOW JONES and
its variations, (b) that Respondent has no rights or legitimate interest
in the Domain Name and (c) that Respondent registered and used the Domain
Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy
and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred
to Dow Jones & Company, Inc.
Richard W. Page
Sole Panelist
August 14, 2000
Domain Name Transferred