WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dow Jones & Company, Inc. v. Down Jones Update
Case No. D2000-0495
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 worldís premier publisher of financial and business news. In addition to such publications as The Wall Street Journal and Barronís, 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:
(a) 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 worldís 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.
(b) 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.
(c) 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.
(d) 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.
(e) 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.
(f) 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, Barronís, 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. Partiesí 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 Complainantís 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 Complainantís assertion that Respondent lacks rights or legitimate interest in the Domain Name.
Respondent did not contest Complainantís 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 Complainantís assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Identity or Confusing Similarity.
Complainant contends that it has a trademark in D0W 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 Complainantís 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).
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 Complainantís 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).
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 Complainantís famous and well-respected name to lure Internet users to its Web site for financial gain. The Respondentís 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 Complainantís home page or one of Complainantís other Web sites are likely to enter "dowjonesonline.com" in an effort to reach Complainantís own home page or one of Complainantís 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 Respondentís Web site. All consumers are likely to be confused as to the source, sponsorship, affiliation, or endorsement of Respondentís 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 Complainantís 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 Respondentís 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).
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
August 14, 2000