Finell Co., LLC v. Domain Privacy Group
Claim Number: FA1401001541303
Complainant is Finell Co., LLC (“Complainant”), represented by Truman H. Fenton of King & Spalding LLP, Texas, USA. Respondent is Domain Privacy Group (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finell.com>, registered with Domain.com, LLC (the “Disputed Domain Name”).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2014; the National Arbitration Forum received payment on January 29, 2014.
On January 29, 2014, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <finell.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2014 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 postmaster@finell.com. Also on January 31, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 19, 2014.
On February 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the Dispute Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant describes itself as follows:
“Finell Co. is a luxury, housewares and accessories company poised to launch US and international operations with significant marketing efforts online and at trade shows across the country…Finell Co. aims to redefine modern design using fresh ideas and patented inventions.”
The Complainant is the owner of a number of trademark registrations for the mark FINELL (the “Complainants Mark”) and currently has a number of trademark applications pending in several countries around the world, including the United States. Further, the Complainant possesses common-law trademark rights arising from the Complainant’s use of Complainant’s Mark in commerce. Among other evidence, the Complainant presents as an Annex attached to its Complaint a copy of a press release issued by the Complainant in which it states that its founder, Rebecca Finell, began efforts in 2011 to create the Complainant.
The Disputed Domain Name was initially registered in 2000 and appears to have been registered by Filip Finell to promote in Denmark his services as an architect. Sometime in 2013, the Disputed Domain Name was registered by the Domain Privacy Group. The Disputed Domain Name is merely “parked” and directed to a website that does nothing more than offer a seemingly random array of sponsored links (i.e., paid advertisements) for other commercial businesses.
On October 1, 2013 the Complainant directed an email to <finell.com@domainprivacygroup.com> making an inquiry about whether the the Disputed Domain Name was for sale. No response was received.
The Disputed Domain Name is identical to the Complainant’s Trademarks.
The Respondent is not commonly known by the Disputed Domain Name. Further, “…the use of a domain name that merely offers links to other websites is not a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy.” [Citation omitted]
Respondent assumed ownership of the Disputed Domain Name sometime in 2013 and immediately began displaying advertisements on the website. This demonstrates an intention to profit from users looking for the original website by displaying advertisements for other goods and services, which is a bad faith use under the Policy. Further, the Respondent’s use of the Disputed Domain Name is in bad faith because the Respondent cannot show any legitimate interest in a domain name that is identical to Complainant’s Trademarks.
B. Respondent
Respondent is Filip A. Finell of Copenhagen, Denmark. He is an architect and has been using the Disputed Domain Name as a basis for his email address. He originally registered the Disputed Domain Name 13 years ago to promote his services and offerings. He is in the process of renewing a website to which the Disputed Domain Name will direct, and he intends to use this website to again promote his professional services.
In 2012, Respondent chose to become anonymous with respect to the Disputed Domain Name so as to better protect himself against Internet piracy. In doing so, he did not sell or transfer the Disputed Domain Name to the domain provider [the Domain Privacy Group], and at all relevant times the Disputed Domain Name has been his domain since August 28, 2000.
While the Respondent has been working on his new website, the Disputed Domain Name has been used by the domain provider to direct to a default website which exhibited links to the services of others, but the Respondent has not received any cost-per-click-revenue from these links.
The Respondent has no intention of selling, renting, or otherwise transferring the Disputed Domain Name to a competitor, and he has not acquired the Disputed Domain Name for any such reason. The Respondent has no intention of disrupting the Complainant’s business.
The Respondent has not intentionally attempted to attract attention or business away from the Complainant and the Complainant has not made any effort to contact Respondent regarding any conflicts.
The Respondent considered the Complainant’s inquiry about acquiring the Disputed Domain Name to be illegitimate SPAM.
The Respondent requests a finding of reverse domain name hijacking.
The Complainant is the owner of four European Union Community Trademark registrations for the mark FINELL. Three of these registrations issued on August 30, 2013 and one issued on January 17, 2014.
The Disputed Domain Name was registered by Filip Finell on August 28, 2000, and the Disputed Domain Name has been his from that time to the present.
As of the time the Complaint herein was filed the Disputed Domain Names were being used by the Respondent as the basis of his email address.
As of the time the Complaint herein was filed the Disputed Domain Names directed to a website which did not contain content relating to the Respondent nor did it contain content which was in competitive to the operations of the Complainant.
Paragraph 15(a) of 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
This case turns on this element of the Policy.
It is axiomatic that a person has rights and legitimate interests in a domain name that reflects the name by which he or she has been commonly known, even if he or she has acquired no trademark or service mark rights. Policy Paragraph 4(c)(ii) reads in pertinent part:
“How to Demonstrate Your Rights to and Legitimate Interest in the Domain Name in Responding to a Complaint…(ii) you (as an individual…) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights…”
The parties are in agreement that the Disputed Domain Name was initially registered by Filip Finell, an architect, and that the website to which the Disputed Domain Name initially directed was used to promote this individual’s professional services. At some point in time, Filip Finell apparently stopped using the Disputed Domain Name to direct to any website, and he engaged a company that allowed him to become anonymous with respect to the Disputed Domain Name, the Domain Privacy Group. At some point in time, the Domain Privacy Group took it upon itself to direct the Disputed Domain Name to a website on which it presented links to various third party service providers while the Respondent continued to use the Disputed Domain Name as the basis of his email address.
The Complainant argues that the Respondent is not commonly known by the Disputed Domain Name because the registration information for the Disputed Domain Name and the website to which the Disputed Domain Name directs show no evidence to support this conclusion, and clearly “Domain Privacy Group” is not “Finell.” However, the Respondent provides as an Annex to his Response a copy of a WHOIS lookup (Whois.net) which shows the “registrant” is Filip Finell. It is not entirely clear from the record the exact sequence of events with respect to this issue, but presumably Filip Finell substituted (re-inserted) his name as the registrant after he received notice of the complaint herein.
The Complainant argues that the use of the Disputed Domain Name to direct to a website that does not relate to the Respondent and presents only links to unrelated third parties requires a finding that the Respondent lacks rights and legitimate interests with respect to the Dispute Domain Names. The Panel does not agree. Policy Paragraph 4(c)(ii) focuses on a respondent’s rights and legitimate interests in a domain name, and as such the critical inquiry concerns whether the domain name is similar to a respondent’s name and not either the content of the website to which the domain name directs or the complete absence of a website. Certainly some panels have considered the non-use of a domain name as a relevant factor in finding the absence of rights or legitimate interests, as with mere “parking,” but the Panel believes that these cases generally do not involve a respondent’s actual name, but rather involve an issue under Policy paragraph 4(c)(i) and a claim by a respondent that he or she has used the domain name in connection with a bona fide offering of goods or services, and to the extent that such other cases do involve a respondent’s actual name, the Panel respectfully disagrees.
The Panel finds that the Respondent is commonly known by the Disputed Domain Name, and he consequently has rights and legitimate interests therein.
As such, the Complainant has failed to establish this element of the Policy. See Policy paragraph 4, and See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
When a panel concludes that a complainant has not satisfied an element of the Policy, the panel may decline to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd. FA 116765 (Nat. Arb. Forum Sept. 20, 2002)(finding that because the complainant must prove all three elements under the Policy, the complainants failure to prove one of the elements makes further inquiry into the remaining elements unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006)(deciding not to inquire into the respondent’s rights or legitimate interests or to registration and use in bad faith where the complainant could not satisfy the requirements of Policy paragraph4(a)(i)).
Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. The
Panel declines this request. In 2012, the Respondent wished to become anonymous with respect to the Dispute Domain Name so as to reduce the risk of internet piracy. To accomplish this goal, he engaged the services of the Domain Privacy Group to stand-in as the registrant of the Disputed Domain Name. If nothing else, this makes it difficult for someone in the Complainant’s position to learn the relevant facts and make the decision whether or not to proceed with a complaint.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <finell.com> domain name remain with RESPONDENT.
Kendall C. Reed Panelist
Dated: March 13, 2014
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