[Indexed as: Arrowhead Capital Management v. Arrowhead Capital LLC]
[Indexed as: arrowheadcapital.com et al.]

National Arbitration Forum

Case No.: FA0005000094920
Commenced: 5 June 2000
Judgement: 12 July 2000 

Presiding Panelist: Charles K. McCotter, Jr.

Domain name - Domain name dispute resolution policy - Trademark - Identical - Legitimate rights - Bad faith.

Complainant applied for its trademark before Respondent registered its domain name. Complainant has used ARROWHEAD CAPITAL MANAGEMENT CORP." continuously since incorporation to provide financial business services.  Respondent has been actively conducting business and used the domain names, arrowheadcapital.com and arrowhead-capital.com  continuously in connection with its incorporated business, Arrowhead Capital LL.C. 

Held, Arrowhead-Capital.com Domain Name Transferred to Complainant, Arrowheadcapital.com Domain Name Not Transferred.

Respondent's domain names are confusingly similar to Complainant's trademark.  The word "capital" has a direct relationship with financial services, and the combination of Complainant's mark and the word "capital" suggests that the names are confusingly similar.

Respondent has used the name Arrowhead Capital in connection with its business since its registration of the domain name.  Respondent has made use of the name before it knew of Complainant's mark.  Thus, Respondent has legitimate rights to this name.  However, Respondent does not have rights to the name, arrowhead-capital.com because it registered the name after notice of Complainant's claim.

Respondent registered the name for legitimate commercial use, and it corresponds to its name.  Thus, it did not register, arrowheadcapital.com in bad faith.  However, arrowhead-capital.com was registered in order to prevent Complainant from registering the name itself.  This is evidence of bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy

McCotter, Panelist: -

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are "ARROWHEADCAPITAL.COM" and
"ARROWHEAD-CAPITAL.COM", registered with Network Solutions, Inc.
("NSI").

PANELIST

Charles K. McCotter, Jr. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The
Forum") electronically on 05/30/2000; The Forum received a hard copy of the
Complaint on 05/31/2000. 

On 05/31/2000, NSI confirmed by e-mail to The Forum that the domain
names,"ARROWHEADCAPITAL.COM" and 

"ARROWHEAD-CAPITAL.COM", are registered with NSI and that the
Respondent is the current registrant of the name.  NSI has verified that Respondent
is bound by the Network Solutions Service Agreement Version 5.0 and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's UDRP.

On 06/05/2000, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of 06/26/2000
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent via email, post and fax, and to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts by email. 

On 06/28/2000, pursuant to Complainant's request to have the dispute decided by
a Single Member panel, The Forum appointed Charles K. McCotter, Jr. as
Panelist.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the
Respondent to the Complainant.

PARTIES' CONTENTIONS

A. Complainant

The Complainant contends that the domain names which the Respondent has
registered are identical or confusingly similar to Complainant's trademark
"Arrowhead"; that the Respondent does not have rights or legitimate interests with
respect to the domain names registered by the Respondent; that the Respondent
has registered and used the domain names in bad faith.

B. Respondent

The Respondent contends that the Complainant does not have a protectable
interest in the trademark; that the Respondent has rights or legitimate interests in the
domain names; and the domain names have not been registered and used in bad
faith.

The Respondent contends that the Complainant does not have the exclusive right to
use the word "arrowhead", asserting that the word "arrowhead" is neither
distinctive nor famous within the meaning of the applicable provisions of the United
States Code pertaining to trademarks.  See 15 U.S.C. § 1125(c)(1).

The Respondent contends that the Complainant that has acted in bad faith by
invoking this tribunal for the purpose of  reverse domain name hijacking.

FINDINGS

1.  Complainant, Arrowhead Capital Management Corporation, was incorporated
on January 8, 1996 and has used its name "ARROWHEAD CAPITAL
MANAGEMENT CORP." continuously since then to provide financial business
services.

2.  On May 13, 1997, Complainant filed in the United States Patent and
Trademark Office for registration of its trademark "ARROWHEAD", registration
number 2182114.  The trademark was registered on August 18, 1998, for its
services, consisting of financial and investment management services and portfolio
management. 

3.  On February 11, 2000, Complainant applied for registration of
"ARROWHEAD", application number 75/916515, for the services of investment
of funds for others; investment management; consultation; and advice; financial
analysis and consultation; financial management; financial research; portfolio
management (financial); and loans (temporary).  "ARROWHEAD", registration
number 2182114, was a registered trademark before Respondent obtained the
"ARROWHEADCAPITAL" domain name on October 26, 1998, or the
"ARROWHEAD-CAPITAL" domain name on November 22, 1999.

4.  The Respondent obtained its domain name more than two years after
Complainant applied to register its trademark.  After Complainant received its
trademark registration, and prior to November, 1999, Mr. Fry, the President of
Complainant, telephoned Mr. Mark Jacobs, the managing officer of Respondent,
and requested that he transfer the domain name "ARROWHEADCAPITAL" to
Complainant.  Respondent refused and instead registered the domain name
"ARROWHEAD-CAPITAL" on November 22, 1999.

5.  The Respondent, Arrowhead Capital LLC is a Delaware Limited Liability
Company based in Norwalk, Connecticut and has been in operation since
September of 1998.  The Respondent is a small-cap investment banking firm that
deals primarily with private equity placements.  The Respondent does not offer its
services to the general public.  The Respondent has been actively conducting its
business throughout the period since it began operation.  In the Spring of 1999, the
Respondent duly registered the Domain Name and immediately began use of the
Domain Name as its   e-mail domain.  The Respondent has made continued use of
the Domain Name ever since. 

6.  Complainant's domain name of "ARROWHEADCAP" is an abbreviation of
"ARROWHEADCAPITAL".  Complainant chose "ARROWHEADCAP" because
"ARROWHEADCAPITAL" was in use as a domain name at the time Complainant
sought its domain name.  "ARROWHEAD-CAPITAL"  is indistinguishable from
"ARROWHEADCAPITAL".  The abbreviation "cap." and the word "capital" have
synonymous meanings for anyone involved in investing and financial management. 
Therefore, because the operative trademark for Complainant's services is
"ARROWHEAD", "cap." and "capital" are descriptive of the services associated
with Complainant's trademark. 

7.  Respondent rejected Complainant's request that it substitute for "Capital" a
different word that is not descriptive of Complainant's services.

8.  Respondent stated to Complainant that it has used the name "Arrowhead
Capital" for financial services and private placements.  Both of these services are
provided by Complainant under its registered trademark "ARROWHEAD".

9. Complainant's attorney telephoned Mr. Jacobs on February 17, 2000 and
asked him to cease and desist his use of "ARROWHEAD" on the World Wide
Web, with any services or transactions that create a likelihood of confusion with
Complainant's trademark.  The Complainant contends Mr. Jacobs said that the
domain names "ARROWHEADCAPITAL" and "ARROWHEAD-CAPITAL"
could be sold for more than his initial out-of-pocket costs and that such is evidence
of bad faith.
 
 

10.  However, the Respondent says it never offered to sell the Domain Name to
the Complainant.

11.  Complainant contends that its existing and potential customers who seek
information about Complainant on the web may easily stop at Respondent's
addresses where they will find that there is no business and no indication that
Complainant's business exists, and incorrectly conclude that Complainant is out of
business or not open for business.  Complainant believes that its existing and
potential customers who are attracted to Respondent's web site will be misled
about the source, sponsorship, affiliation and endorsement of Respondent's site and
the inference created by the name of the site that it belongs to and is sponsored by
Complainant.

     12.  The Respondent has been using the Domain Name for its e-mail for over a
year, and is in the process of constructing its own web site.

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy")
directs that the complainant must prove each of the following three elements in
order to demonstrate claims that a domain name should be canceled or transferred:

(1) 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

(2) The respondent has no rights or legitimate interests in respect of the domain
name; and

(3) The domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Respondent contends that the Complainant does not have the exclusive right to
use the word "arrowhead".  Without deciding that question, I nonetheless conclude
the Respondent's domain names are confusingly similar to the trademark in which
the complainant has rights. 

The combination of the Complainant's trademark, "Arrowhead", the
well-recognized meaning of the word "capital" within the financial services industry,
and the direct relationship between such meaning and the financial services
Complainant provides cause Respondent's domain names to be confusingly similar
to Complainant's trademark. 

Rights or Legitimate Interests

The Respondent has rights or legitimate interests in the name "Arrowhead
Capital."  Respondent has been actively in business since September of 1998, and
has utilized the Domain Name for e-mail since it registered the Domain Name in
1999. The Respondent is a duly created Delaware Limited Liability Company with
the name "Arrowhead Capital LLC."  The fact that the Respondent has not
secured a trademark in the name does not in any way defeat its right to use the
name.  The Respondent made use of the "Arrowhead Capital" name before it had
notice of the existence of the Complainant, and before it had notice of the
Complainant's claim.  Respondent continues to use the name in its everyday
business. 

However, the Respondent does not have rights or legitimate interests in the domain
name "ARROWHEAD-CAPITAL.COM" because the Respondent registered the
domain name after the notice of the Complainant's claim. 

Bad Faith

There is no evidence of bad faith on the part of  Respondent in connection with the
domain name "ARROWHEADCAPIAL.COM".  The Respondent registered the
Domain Name for legitimate commercial uses.  The Domain Name corresponds to
the Respondent's own legal name.  The Respondent has been using the Domain
Name for its e-mail continuously since it registered the name.  The Respondent
never attempted to sell the Domain Name for profit.

However, the registration of the domain name
"ARROWHEAD-CAPITAL.COM" by the Respondent did not occur until after
notice of the dispute with the Complainant, and was done in order to prevent the
Complainant from registering the name itself.  This action constitutes bad faith on
the part of the Respondent.

The Respondent contends that the Complainant has brought this action to engage in
reverse domain name hijacking.  However, there is no evidence that the
Complainant has brought this action in bad faith. 

DECISION

Based upon the above findings and conclusions, I find in favor of the Complainant
in part and the Respondent in part. 

As to the domain name "ARROWHEAD-CAPITAL.COM", I find in favor of the
Complainant, and therefore the relief requested by the Complainant pursuant to
Paragraph 4.i. of the Policy is Granted.  The Respondent shall be required to
transfer to the Complainant the domain name
"ARROWHEAD-CAPITAL.COM". 

As to the domain name "ARROWHEADCAPITAL.COM", I find in favor of the
Respondent.  Therefore, the relief requested by the Complainant pursuant to
Paragraph 4.I of the Policy is Denied.  The Respondent shall not be required to
transfer to the Complainant the domain name "ARROWHEADCAPITAL.COM".