WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salomon Smith Barney Inc. v. Salomon Internet Services
Case No. D2000-0668
1. The Parties
The Complainant in this administrative proceeding is Salomon Smith Barney Inc., a Delaware corporation with a place of business at 388 Greenwich Street, New York, New York 10013. The Respondent is Salomon Internet Services, Post Office Box 2244, Kensington, Maryland 20891 USA.
2. The Domain Name and Registrar
The domain name in dispute is as follows: . The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on June 18, 1996.
3. Procedural Background
On June 23, 2000, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999, ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on July 6, 2000.
Respondent filed a Response on July 25, 2000. The record also consists of a July 20, 2000, e-mail from Respondent to Complainant and Complainant's e-mail response of July 21, 2000.
The decision of the Panel was due to WIPO on or before September 5, 2000.
4. Factual Background
As alleged in the Complaint, Complainant is the owner of the trademark SALOMON BROTHERS, which has been used since 1910, in connection with investment and financial services. The mark was registered (No. 1,581,876) with the U.S. Patent and Trademark Office on February 6, 1990. See Complaint, Annex C.
As noted above, Respondent registered the domain name in dispute with NSI on June 18, 1996.
5. Parties' Contentions
Complainant contends that the domain name in issue is identical to the service mark in which the Complainant has rights. It next argues that Respondent has not demonstrated any legitimate interest in the service mark, noting that is not an active Web site.
Complainant also maintains that the domain name should be considered as having been registered in bad faith because: (1) Respondent cannot reasonably argue that it was unfamiliar with Complainant's service mark; and (2) there is no evidence that Respondent possessed a legitimate intent at the time of the registration of the domain name.
Complainant further asserts that the Respondent's passive holding of the domain name should be considered as having been used in bad faith because: (1) Complainant's mark has a strong reputation and is widely known, as evidenced by its substantial use in the U.S. and elsewhere; (2) Respondent provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name; (3) Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name; (4) Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and (5) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate.
According to Complainant, Respondent's only or primary intention in registering and using the domain name was either to attempt to sell the domain name registration to the Complainant and/or to otherwise prevent the Complainant from using the domain name.
In its Response, Respondent argues that the domain name in dispute was registered for the purpose of providing a public forum for expressing opinions and comments regarding Complainant's products and services. Respondent contends that its current Web site consists of a noncommercial page, which clearly indicates that the site is not affiliated with nor endorsed by Complainant. See Response, Annex A. Further, it argues, since there is no product or service offered at this page, there could not be any confusion as to the source of any product or service.
With respect to the issue of "bad faith," Respondent maintains that it has never offered to sell the domain name to Complainant. It also contends that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain and that such use demonstrates its rights or legitimate interest to the domain name for purposes of �4(b)(ii) of the Policy.
6. Discussion and Findings
The Panel has carefully weighed the evidence presented and determines that Complainant has established all of the elements required under �4.a. of the Policy.
Respondent's domain name is legally identical to Complainant's mark SALOMON BROTHERS, which Complainant clearly has rights to through ownership of a valid and subsisting U.S. trademark registration, as well as through use of the mark in commerce.
The primary issue in this case is whether it may be held, as Respondent argues, that it is making a noncommercial use of the domain name, within the meaning of �4(c)(iii) of the Policy. While Respondent's current site may constitute noncommercial use of the domain name, it appears that the site was modified subsequent to WIPO's receipt of the Complaint in this proceeding. As noted in Complainant's July 21, 2000, e-mail message to Respondent, according to the R database, the site was modified on July 4, 2000, eleven (11) days after the date Respondent and WIPO received the Complaint.
Thus, the pivotal question in this proceeding is whether Respondent can claim noncommercial use of a domain name, within the meaning of �4(c)(iii) of the Policy, when such use commences after the filing of the Complaint. This Panel holds that, under such circumstances, such noncommercial use may not be considered "legitimate," as required by the Policy. To hold otherwise would thwart the intent of the Rules.
The Panel also finds the evidence, taken as a whole, supports a determination of "bad faith" registration and use. While none of the circumstances set forth in �4(b) of the Policy appears applicable, it is clear that such circumstances are not the exclusive means by which a Panel may find "bad faith" use and registration.
The Panel bases its determination on the fact that Respondent has taken steps to conceal its true identity, by operating under a name that is not a registered business name and by actively provided false contact details to NSI, and on Respondent's passive use of the domain name.
7. Decision
In view of the above, the Panel GRANTS Complainant's request for transfer to it of the domain name .
Jeffrey M. Samuels
Presiding Panelist
Dated: September 4, 2000
Footnotes:
1. The Policy, in �4(b), makes clear that the circumstances set forth in subsections (i)-(iv) are "without limitation."
2. It appears that the telephone number for the administrative contact for Respondent, as listed with NSI, is no longer in operation.
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