United First Financial, LLC v. Mdnh Inc. c/o Brendhan Hight
Claim Number: FA1004001320513
Complainant is United First Financial, LLC (“Complainant”), represented by Tim
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ufirst.com>, registered with Moniker.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2010.
On April 23, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <ufirst.com> domain name is registered with Moniker and that the Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on May 6, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 26, 2010.
On June 3, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
The domain name, <ufirst.com>,
is similar to the trademark name of our company, United First Financial, which
is associated with our
Respondent does not have legal permission or a trademark issued for use of the name UFirst, while Complainant does. Respondent holds the <ufirst.com> domain without intent to use, made evident by the fact that it is neither currently using this domain nor has used it.
Respondent has not used the name, UFirst, for any legitimate purpose, either to sell a product or provide a service, and has the domain site for sale. This clearly demonstrates its purpose of registration of the <ufirst.com> domain name is to buy and sell for profit and that its intent and use of this domain, or lack thereof, is in bad faith.
This Proceeding concerns a domain name which was originally registered in October 2001 by Ultimate Search Inc., and was acquired by Respondent in an asset purchase agreement concluded in January 2005. The Complainant, United First Financial LLC, did not itself exist until August 2007, more than two years after the Respondent had registered and begun using the domain name.
The Complaint must fail on the ground that the domain name could not have been registered in bad faith with respect to a trademark claim which could not have existed at the time.
Respondent claims that its <ufirst.com>
disputed domain name is not confusingly similar to Complainant’s
All of the documents referred to in the Complaint suffer from the same basic defect, in that they evince no right or business activity of any kind until long after the domain name was registered.
The Respondent’s predecessor, Ultimate Search had acquired a large portfolio of domain names consisting of common words and short phrases – here “you first” or “u first” (as in things which begin with the letter ‘U’) – which it has utilized in connection with paid search systems. The domain name here is connected with a “local search” system which provides results dependent on the location of the IP address by which a user accesses the name. Hence, there is no single web page which corresponds to the domain name.
The Respondent’s registration of the domain name is senior to any claim of right evident from the trademark registrations proffered by the Complainant. Accordingly, the Complainant is not entitled to claim the Respondent’s registration and use of the domain name is “illegitimate” in reference to the junior asserted rights of the Complainant.
At the time the domain name was acquired by the Respondent from Ultimate Search Inc., in early 2005 (execution of the transaction required several months effort from late 2004 to January 2005), the Respondent was under no duty of constructive notice of any of the federal trademark registrations of record here, the earliest of which issued which did not issue until August 2008. None of the applications was on file until 2007, the Complainant in this Proceeding did not itself exist until August 2007, and the earliest claimed and unproven “first use” date in any of the documents is January 2006. Regardless of any date one might select from the record concerning the Complainant, it is clear that the Respondent had acquired the domain name long before any documented activity of the Complainant of record in this Proceeding.
(1) The domain name was registered prior to there being any evidence that Complainant acquired rights in the UFIRST mark;
(2) the domain name has not been registered and is not being used in bad faith.
The Panel declines to enter a finding as to whether or not the domain name is identical or confusingly similar to Complainant’s mark or whether the Respondent has rights or legitimate interests in respect of the domain name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(3) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(4) the Respondent has no rights or legitimate interests in respect of the domain name; and
(5) the domain name has been registered and is being used in bad faith.
As discussed below, the circumstances of this case preclude a finding of bad faith and thereby make analysis of this factor superfluous. Therefore, the Panel declines to enter a finding on the “identical and/or confusingly similar” issue.
The Panel declines to enter a finding as to rights or legitimate interests, as its findings on the issue of bad faith registration and use are dispositive of the case.
The fact that the domain name registration predates the earliest date where the Complainant might have had rights in the UFIRST mark is fatal to the complaint. Given the registration chronology, the undisputed facts foreclose the Panel’s finding bad faith registration and use under Policy 4(a)iii.
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, http://www.wipo.int/amc/en/domains/search/overview/index.html#31 (December 8, 2009).
It is axiomatic that if a complainant does not have trademark rights at the time of an at-issue domain name’s registration, there can be no bad faith registration on the part of the domain registrant/respondent. See Ode v. Intership Ltd., D2001-0074, (WIPO May 1, 2001) ; Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827, (WIPO Sept. 23, 2001); PrintForBusiness B.V v. LBS Horticulture, D2001-1182, (WIPO Dec. 21, 2001) Therefore, the Complaint fails on its face.
Given the foregoing the Panel finds that Respondent has not registered or used the <ufirst.com> disputed domain name in bad faith and further that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001)
Complainant does not conclusively demonstrate rights with respect to the domain name. But, as discussed above, even if Complainant has rights in UFIRST, the undisputed fact that the domain name’s registration predates the earliest time for which there is any evidence of Complainant’s rights in UFIRST forecloses our finding bad faith registration and use. Since there can be no bad faith, we need not and have not considered whether or not Respondent had rights and interest in respect of the domain name; likewise we need not consider the similarity issue.
Finally, the question of Complainant’s apparent bad faith in filing this Complaint, when it should have reasonably concluded that under the undisputed facts such a complaint would surely fail, concerned the Panel. One member of the Panel would find on this basis that the Complaint was brought in bad faith, in an attempt at reverse domain name hijacking.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Richard DiSalle, Chairman
Paul DeCicco and David E. Sorkin, Panelists
Date: July 6, 2010
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