Complainant is Standard & Poor’s Financial Services LLC of New York, New York, United States of America represented by Proskauer Rose, LLP, United States of America.
Respondent is Christian Mendes of Miami, Florida, United States of America, self-represented. 2. The Domain Name and Registrar
The domain name at issue is . The domain name at issue is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2013. On September 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided contact details. On September 17, 2013, Complainant filed an amendment to the Complaint in response to the Center’s notification that the Complaint was administratively deficient.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced September 18, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 8, 2013. The Response was filed with the Center on October 8, 2013.
The Center appointed M. Scott Donahey, Michael A. Albert and Frederick M. Abbott as panelists in this matter on November 8, 2013. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. 4. Factual Background
Complainant offers financial analysis and financial advice and has offices in 24 countries, including the United States. In the United States, Complainant provides indices of 500 large-cap stocks (the “S&P 500), well-known to the financial and investment community. Complainant also offers similar global indices that covers 30 markets constituting approximately 70 percent of the global market capitalization.
Complainant is the owner of a substantial number of trademark holding in a family of STANDARD & POOR’S marks worldwide, including numerous marks registered with the United States Patent and Trademark Office (the “USPTO”). Complaint, Annex 2. Virtually all of the USPTO registrations predate August 2011.
Respondent is a resident of the United States. Respondent registered the domain name at issue on August 10, 2011. Complaint, Annex 1. The domain name at issue does not resolve to a web site. 5. Parties’ Contentions A. Complainant
Complainant contends that the domain name at issue is “substantively identical” to Complainant’s family of STANDARD & POOR’S marks. Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, as “the word ‘boycott’ appears to be an exhortation,” since the domain name at issue does not resolve to a web site. Finally, Complainant argues that Respondent has registered and is using the domain name at issue in bad faith, since “It is clear that the Domain Name was acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration(s) to Complainant for valuable consideration.” B. Respondent
Respondent effectively denies Complainant’s assertions and argues that Respondent is “[e]xercising [his] rights to ownership of said site and [his] First Amendment right” and that no “[s]ite is ... being used to sell or market any conflicting materials which may be offered by Standard and Poor [sic].” 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The domain name at issue consists of the common English word “boycott” followed by the character string “standardandpoors.” The character string is substantially identical to Complainant’s STANDARD & POOR’S mark, in that: 1) spaces are not permitted in the second-level domains (“SLDs”); 2) at least prior to the introduction of the new generic top-level domains, neither ampersands nor apostrophes were permitted in SLDs. Thus, the Panel finds that the domain name at issue is confusingly similar to Complainant’s mark. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.3. B. Rights or Legitimate Interests
As Respondent conceivably could use the domain name at issue in a manner that would not constitute bad faith registration and use, and as the domain name at issue has yet to be used to resolve to a web site, Complainant has failed to establish that Respondent has no rights or legitimate interests in respect of the domain name at issue. C. Registered and Used in Bad Faith
Respondent is not currently using the domain name to resolve to a web site. Since it is conceivable that Respondent could use the domain name in such a way that Respondent did not seek to profit from the good will attached to Complainant’s family of marks, the complaint has been brought prematurely. Should Respondent in the future seek to profit from the good will attached to Complainant’s family of marks, Complainant may file a complaint at such time. Accordingly, the Panel finds that at present, Complainant has failed to establish bad faith registration and use as required under the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Presiding Panelist
Michael A. Albert
Panelist
Frederick M. Abbott
Panelist
Date: November 18, 2013
Full & Egal Universal Law Academy