WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roth Capital Partners, LLC v. Roth & Associates/ Hotels At Home

Case No. D2006-0565

1. The Parties

Complainant is Roth Capital Partners, LLC, Newport Beach, California, United States of America, represented by The Dorf Law Firm, LLP, New York, United States of America.

Respondent is Roth & Associates/ Hotels At Home, Fairfield, New Jersey, United States of America, represented by Hedman & Costigan P.C., New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <roth.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2006. On May 5, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 5, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2006. The Response was filed with the Center on June 9, 2006.

The Center appointed Steven Auvil as the sole panelist in this matter on June 21, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The due date for the Panel’s Decision, initially July 5, 2006, was extended to July 10, 2006. On July 10, 2006, the Center received a request from Complainant, through its attorneys, to suspend this proceeding because Complainant is commencing civil litigation. Respondent was given an opportunity to respond. On July 11, 2006, through its attorneys, Respondent objected to Complainant’s request to suspend this proceeding and requested instead that the Panel render its decision. Section 18(a) of the Rules provides as follows: “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”

In the present case, there is nothing in the record to indicate that legal proceedings have been initiated (only that Complainant is contemplating them). Thus, Section 18(a) of the Rules does not apply. The parties have not agreed on a settlement before the Panel renders its decision, rendering Section 17(a) of the Rules inapplicable.¹ The Panel is not aware of other grounds under the Rules for suspending or terminating this proceeding. Therefore, the Panel must deny Complainant’s request to suspend.

4. Factual Background

Complainant, under the designations “Roth,” “Roth Capital,” and “Roth Capital Partners,” provides banking services, financial services, and brokerage services to its customers in the United States, European Union, China, Israel, and the Far East. Complainant asserts that, under its “Roth” designations, Complainant had gross revenues of $30,783,000 in fiscal year 2003, $88,453,000 in fiscal year 2004, and $51,070,000 in fiscal year 2005. In addition, Complainant asserts that it has raised over $8.7 billion and has completed over 123 merger, acquisition, and advisory assignments for its customers since 1984.

About one week before the Complaint was filed, Complainant filed several use-based trademark applications with the United States Patent and Trademark Office for ROTH (U.S. Serial No. 78-870,635), ROTH CAPITAL (U.S. Serial No. 78/870,644), R Logo and word ROTH (Stylized) (U.S. Serial No. 78/871,725), ROTH CAPITAL PARTNERS (U.S. Serial No. 78/871,731), ROTH (Community Trademark Application No. 5051032), and ROTH CAPITAL PARTNERS (Community Trademark Application No. 5051115) in connection with various financial, investment banking, and related services. No registrations have issued to date. According to the United States Patent and Trademark Office Trademark Electronic Search System, none of the applications was filed before April 26, 2006. The Community Trademark applications were not filed until May 2, 2006.

The Disputed Domain Name, which was registered by Respondent on February 11, 1995, is listed in the WHOIS database as being owned by “Roth & Associates.” Respondent asserts that it has been providing marketing services, including without limitation website design services, under the designations “Roth,” “Roth & Associates,” “Roth Interactive,” “Roth Group” and/or “Roth.com” since approximately 1985. Respondent’s present website, bearing a 2002 copyright date, and supported by a Declaration of one of Respondent’s owners, evidences that Respondent presently offers, and has been offering, website design and hosting services, search engine optimization services, motion graphics services, and corporate branding services to the public. Respondent asserts that it has been doing business under the names Roth, Roth & Associates, Roth Interactive, Roth Group and/or Roth.com since about 1985.

Among Respondent’s clients is a company called Hotels at Home, Inc., for whom Respondent set up, maintained, and continues to maintain, various websites, including without limitation online catalogs for The Benjamin, Wyndham Hotels & Resorts, Rock Resorts, The Phoenician, the Brown Palace Hotel, Hotel Valencia, The Delamar, Sofitel, La Meridien, Nobel House Hotels & Resorts, Affinia, Sonesta, and others. Hotels at Home, Inc. and Respondent share a common owner, Wayne Roth. Respondent asserts that Hotels at Home, Inc. purchased all of Respondent’s assets, including the Disputed Domain Name, for a purchase price of $175,000.00 in 2002 and has since continued Respondent’s business under the designations “Roth Interactive,” “Roth & Associates,” and “Roth.com.” For example, Respondent provided documentation evidencing that, in 2006, “Roth Interactive” completed website development projects for the Royalty Pharma and Celtic Pharma companies. Respondent also provided evidence that, as of May 26, 2006, Roth Associates Interactive Inc. was a business in good standing in the State of New Jersey.

Respondent admits that it discussed the sale of the Disputed Domain Name with various parties, including Complainant. Complainant asserts, and Respondent does not deny, that Respondent provisionally agreed to sell the Disputed Domain name to Complainant for $38,000.00 but subsequently decided instead to take the Disputed Domain Name to auction. On April 28, 2006, an investigator for Complainant, under pretext, e-mailed Brian Boutin, Respondent’s administrative contact as listed in the WHOIS database, and inquired whether the Disputed Domain Name was for sale. Mr. Boutin responded by return email:

“The domain will be for sale in the next week or so. We will be taking offers at that time. We are still in the process of having the domain appraised and as you can imagine, it is wide ranging. If you have a budget in mind, I can let you know if you are in the ballpark. Otherwise, I will present you with our asking price and offer you the right of first refusal since you are our first inquiry. Roth was only recently shuttered, what lead [sic] you to inquire about the status of our business?”

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is identical to its ROTH trademark and is likely to be confused with Complainant and with Complainant’s ROTH, ROTH CAPITAL and ROTH CAPITAL PARTNERS trademarks. Respondent contends that the Disputed Domain Name should be considered as having been registered and used solely in bad faith because: (i) Respondent has no rights in the Disputed Domain Name, which is identical to its ROTH trademark; (ii) the listed registrant information in the WHOIS database is inaccurate (Hotels at Home, Inc. presently owns the Disputed Domain Name, not “Roth Interactive,” the owner of record); and (iii) Respondent has purposefully not updated the contact information so that Respondent could mislead the public and sell the Disputed Domain name for the highest possible price, “a classic example of cybersquatting.”

B. Respondent

Respondent does not dispute that the Disputed Domain Name incorporates the ROTH trademark, but contends that Complainant does not have a monopoly on the “Roth” designation because it is primarily merely a personal name used by a number of different entities in a crowded trademark field, and is therefore not distinctive. Further, Respondent contends that, because Complainant’s financing and investment banking services are quite different from Respondent’s marketing and web development services, there is no likelihood of confusion and, moreover, there is no likelihood that the parties will venture into each other’s areas of service. Respondent contends that it never heard of Complainant prior to April 2006, when Complainant contacted Respondent to inquire whether the Disputed Domain Name was available for purchase by Complainant. Finally, Respondent contends that, in 1995, it adopted, acquired, used, and continues to use, the Disputed Domain Name with the good faith intention to conduct its marketing and website development business, without any intent to profit, divert customers, or tarnish the reputation of any third party, including Complainant.

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy 4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain relief, Paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interest in the domain name registered by Respondent; and

(3) that the domain name registered by Respondent has been registered and used in bad faith.

A. Identical or Confusingly Similar

To be sure, the Disputed Domain Name incorporates the “Roth” designation in its entirety. However, the Panel finds that “Roth” is primarily merely a surname used by numerous parties, including Complainant and Respondent. For example, Respondent attached to its Response a search of “Roth” on “whitepages.com” showing over 300 listings; a search of the United States Patent and Trademark Office records yielded also 72 live registrations and pending applications that include the term “Roth.” Therefore, the Panel finds that the ROTH trademark is not distinctive without proof of secondary meaning. See generally Abraham Zion Corp. v. Lebow, 761 F.2d 93 (2^nd Cir. 1985); Yarmuth-Dion, Inc. v. D’ion Furs, Inc., 835 F.2d 990 (2^nd Cir. 1987) (personal names are treated as descriptive terms and are protected only upon acquisition of secondary meaning). Complainant has not presented any arguments or evidence that its ROTH trademark has acquired secondary meaning.

The Panel finds that the Complainant has not provided evidence of registered or common law rights to the “Roth” designation. .

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. (Policy, Paragraph 4(c)).

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. However, Respondent has provided evidence that, for several years before any notice of this dispute, Respondent has used the Disputed Domain Name in connection with a bona fide offering of marketing and website development services. The Panel finds this evidence credible.

For this reason, the Panel finds that Respondent has rights and a legitimate interest in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which are “evidence of registration and use of a domain name in bad faith”:

(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 website 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 website or location or of a product or service on your website or location.

The Panel finds that the facts in this dispute do not fall within any of these examples, nor does the Panel otherwise conclude that the Disputed Domain Name was registered or used in bad faith by Respondent.

Complainant makes too much of the fact that (i) the WHOIS data was not accurately updated after Hotels at Home, Inc., a related party, acquired the Disputed Domain Name and (ii) that Respondent offered the Disputed Domain Name for sale.

First, prior panels have refused to draw an inference of bad faith based on proof of inaccurate contact information where other evidence of record cuts against such an inference, as in this case. See, e.g., Godline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 (no finding of bad faith and no evidence of practical concealment where respondent provided a reasonable explanation for the apparent error in leaving an older address in the NSI registry and where complainant found respondent without much difficulty). Second, Complainant’s reliance on a line of cases holding that an offer to sell a domain name constitutes bad faith is misplaced. Respondent registered the Disputed Domain Name in 1995 and then used it in connection with marketing and web development services for over 10 years before this dispute arose. Therefore, the Panel is not persuaded that Respondent acquired the Disputed Domain Name “for the sole purpose of selling it to the highest bidder,” as Complainant contends.

7. Decision

For all the foregoing reasons, the Complaint is not well taken and, therefore, it is denied.

Steven Auvil
Sole Panelist

Dated: July 14, 2006

¹ Section 17(a) of the Rules provides as follows: “If, before the Panel’s decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.”