Parnassus Investments v. ZULFIQAR ALI
Claim Number: FA1707001739234
Complainant is Parnassus Investments (“Complainant”), represented by Shane Delsman of Godfrey & Kahn, S.C., Wisconsin, USA. Respondent is ZULFIQAR ALI (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parnassusgroupllc.com>, registered with FastDomain Inc.
The undersigned certify that they acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) - Honorable Charles K. McCotter Jr., (Ret.) and The Honourable Neil Anthony Brown QC - (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on July 10, 2017; the Forum received payment on July 10, 2017.
On July 14, 2017, FastDomain Inc. confirmed by e-mail to the Forum that the <parnassusgroupllc.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 July 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2017 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@parnassusgroupllc.com. Also on July 17, 2017, 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 August 2, 2017.
On August 18, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Karl V. Fink
(Ret.) - Honorable Charles K. McCotter Jr., (Ret.) and The Honourable Neil Anthony Brown QC - (Chair) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is an investment firm that uses the PARNASSUS mark to promote its business. Complainant has rights in the mark under Policy ¶ 4(a)(i) through its registration with the United States Trademark and Patent Office (“USPTO”) (Reg. No. 3,824,798, registered July 27, 2010). See Compl., at Attached Annex 1. Respondent’s <parnassusgroupllc.com> domain name is confusingly similar to Complainant’s mark because it merely appends the generic terms “group” and “llc” and the generic top-level domain (“gTLD”) “.com”.
Respondent lacks rights and legitimate interests in the disputed domain name because Complainant has not licensed or otherwise authorized Respondent to use the PARNASSUS mark in any fashion, and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Ex. Annex 6. Furthermore, Respondent is not using the disputed domain name in connection with any legitimate noncommercial or fair use.
Respondent has registered and is using the <parnassusgroupllc.com> domain name in bad faith. Respondent attempts to disrupt the business of Complainant —under Policy ¶ 4(b)(iii)—by offering competing services. Respondent is also attempting to attract Internet traffic and commercially benefit from the goodwill of the mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website. Respondent’s actual knowledge of Complainant’s rights in the PARNASSUS mark is also evidence of Respondent’s bad faith conduct.
B. Respondent
Respondent made the following contentions
Respondent is a software company doing business as Parnassus Group, LLC. Respondent registered the <parnassusgroupllc.com> domain name on April 19, 2015 to promote its business. Respondent has established its rights and legitimate interests in the PARNASSUS mark and the <parnassusgroupllc.com> domain name through its corporate registration with the Island of Nevis and its continuous use of the <parnassusgroupllc.com> domain name since 2015. Complainant cannot claim exclusive rights to the PARNASSUS mark because it is a generic term. Further, Respondent operates outside of Complainant’s investment business market.
Respondent asserts that it has not registered or used the disputed domain name in bad faith. Respondent contends that due to Respondent’s use of the domain name to promote a business in a different field than Complainant, Respondent could not be passing itself off as Complainant’s business. Respondent has not acted in bad faith because the <parnassusgroupllc.com> domain name is unlikely to cause confusion and it is registered and actively used for a fair business interest.
1. Complainant is a United States company engaged in the investment advisory, investment management and mutual funds investment industry.
2. Complainant has established its registered trademark rights in the PARNASSUS mark by its registration with the United States Trademark and Patent Office (“USPTO”) (Reg. No. 3,824,798, registered July 27, 2010).
3. Complainant uses the PARNASSUS mark in the course of its business.
4. Respondent is a Nevis company engaged in the development of software for the foreign exchange industry.
5. Respondent registered the <parnassusgroupllc.com> domain name on April 9, 2015.
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.
The second question that arises is whether the disputed domain name is identical or confusingly similar to the PARNASSUS mark. Complainant contends that the domain name is confusingly similar to the mark because it merely appends the generic terms “group” and “llc” and the generic top-level domain (“gTLD”) “.com”. The Panel finds that some observers would probably read the domain name as referring to the group business activities of the owner of the mark, namely Complainant, together with its corporate identity, symbolized by the expression “llc”. It has also long been accepted that the inclusion of a generic top-level domain such as “.com” cannot negate identity or confusing similarity which is otherwise present, as it is in this proceeding. The Panel therefore concludes that the <parnassusgroupllc.com> domain name is confusingly similar to the PARNASSUS mark
Complainant has thus established the first of the three elements that it must make out.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (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.”).
To make out its prima facie case, Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name as it has not licensed or otherwise authorized Respondent to use the PARNASSUS mark in any fashion, a Mark that is owned by Complainant and which it owned for many years before Respondent registered its domain name. The Panel understands fully Complainant’s position and the two assertions made above are undoubtedly correct. However, the Panel does not accept that, on the evidence, they make out a prima facie case. Moreover, even if a prima facie case had been made out, the Panel finds that it has been rebutted by Respondent’s evidence and arguments and that accordingly Complainant has not shown that Respondent has no right or legitimate interest in the domain name. That is so for the following reasons.
The principal argument of Complainant is that it has a trademark, namely the trademark for PARNASSUS, that Respondent has included the word “Parnassus” in its domain name and that consequently Respondent had no right to use the word in its domain name. Complainant clearly has a trademark for PARNASSUS but it is not a trademark against the whole world to prevent anyone from using the word in any manner whatsoever. It ambit is limited by the terms of the trademark itself.
Complainant’s trademark for PARNASSUS relates to goods and services in investment advisory services, investment management and mutual funds investment, which is to be expected as that is what it does.
Moreover, its trademark for PARNASSUS FUNDS relates only to mutual funds investment and its trademark for PARNASSUS INVESTMENTS covers only investment advisory services. Accordingly, Complainant owns the PARNASSUS trademark, just as it owns the other two marks, but it does not exclusively own the term “Parnassus.” That would be so, no matter what the word, but it is particularly so in the present case due to the generic nature of the word “Parnassus,” which raises the real issue in this case, namely that the word is generic. The one thing that the parties are agreed on is the origin and meaning of the word. Complainant says that the word “Parnassus” comes from a mountain in Greece, which is also found in Greek mythology
Respondent says that “The Complainant correctly states that the word “Parnassus” comes from a mountain in Greece which is also found in Greek mythology.”
The word is generic and indeed it could be said that it is very generic as it invokes the concept of the many classical allusions emanating from the mythology of ancient Greece. The consequence of using such expressions has long been recognized in domain name law. For example,See Quinones v. Chambers, D2003-0252 (WIPO May 28, 2003) (“The [FILM FREAK] trademark . . . is a quite common and generic term, descriptive of a film enthusiast. Ownership of the mark does not ipso facto give Complainant the exclusive right to the descriptive word in all contexts related to film.”); see also Superiority, Inc. v. none/Motherboards.com, D2003-0491 (WIPO Oct. 9, 2003) (“While Complainant may coincidentally have a registration for the words ‘just bulbs,’ the words also have a generic or descriptive meaning which Respondent was using or taking advantage of in selling bulbs of various types. While Apple may have a trademark for Apple for computers, it has no rights to stop others from using ‘apple’ or <apple.com> to sell apples.”).
Accordingly, Complainant will have shown that Respondent had no right to register the domain name only if it can show that Respondent is using the word in the field of investment advice management and investment specified above.
Complainant makes a commendable effort to show that this is what Respondent has been doing. Respondent denies it. The only evidence available that could assist the Panel in deciding which is true is an email sent by Respondent’s company to an undisclosed party offering an “ institutional relationship” involving the use of Respondent’s technology trading platform Ibex. Complainant says this email shows Respondent is in the “investment and trading industry.” Respondent says it does not. The Panel’s view is that it has to decide the substance of the email and what it shows of Respondent’s activites.The Panel‘s view is that the email is not soliciting business in the trading of funds or managing investments but is in effect looking for licensees of its trading platform so that they, the licensees, not Respondent, may use the platform in their own trading.
The Panel therefore agrees with Respondent when it submits that Complainant and Respondent use PARNASSUS as a trademark in completely different markets as Respondent uses its mark to promote its software company whereas Complainant uses its mark to promote its investment business. Respondent’s activities do not therefore fall within the ambit of Complainant’s trademark.
Respondent is therefore within its rights to use the generic word Parnassus in its domain name. This does not mean that a party such as Respondent may abuse Complainant’s trademark by using the generic word as a guise or cover to do it harm. But there is no evidence in the present case that Respondent has targeted Complainant, passed itself off as Complainant, pretended that it is in the same field as Complainant, or engaged in any other untoward behavior that deserves censure and which might deny Respondent’s right to register and use the domain name.
Respondent has also raised a second reason why it claims to be able to register and use the domain name. Its argument is that before notice of the dispute, there was, to paraphrase the Policy, some use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. That circumstance is an express provision which, if proved by evidence, will give rise to a right or legitimate interest in a domain name.
But, of course, like all elements of the Policy it must be proved. Respondent has adduced the following evidence with its Response to show its use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services, the bona fide activity being to register a domain name that reflected what its company name was already. First, the Articles of Organization of the Respondent company dated, 2 April 2015, sealed by the Registrar of Offshore Companies and Trustees of Nevis, also dated and filed on 2 April 2015; secondly, an instrument by the organizer of the company signed and dated on 2 April 2015 and testifying that she is forming the company; thirdly, a certificate of a Notary Public, signed and sealed and dated 2 April 2015, to the effect that the organizer of the company had executed the Articles of Organization; fourthly, a Designation and Acceptance by a solicitor that he is the Registered Agent of the company, also dated 2 April 2015. Fifthly, the Certificate of Formation of the Company by the Island of Nevis Office of the Registrar of Companies certifying that the company was formed on that date and that that certificate was given on 2 April 2015; and sixthly, an Endorsement Certificate by the same Registrar dated 2 April 2015 that it had endorsed ”Filed” on the Original Articles of Organization.
It will be recalled that the domain name was registered 19 April 2015. It is clear therefore, on the only evidence put to the Panel, that Respondent existed before the domain name was registered, which gives credence to Respondent’s submission that it registered the domain name because it reflected its company name.
In other words, it is submitted in effect that Respondent registered the domain name because he was in business under that name and chose a domain name that reflected his business and corporate name, which gives legitimacy to the domain name. The Panel accepts this argument and concludes that Respondent has established rights and a legitimate interest in the <parnassusgroupllc.com> domain name because the domain name reflects the Respondent’s company name. Such a view is consistent with many previous UDRP decisions, such as See VeriSign Inc. v. Ensign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name).
Accordingly, the Panel finds that Respondent has rights and legitimate interests in the <parnassusgroupllc.com> domain name.
Complainant has therefore failed to make out the second of the three elements that it must establish to succeed.
As the Panel has found that Complainant has not shown one of the three elements it must prove, it is not strictly necessary for the Panel to discuss the third element. But it will be apparent that the Panel would not find that Respondent has registered the domain name or used it in bad faith as Respondent had a right and legitimate interest That is the approach that has been taken in many cases such as Lockheed Martin Corp. v. Suncor Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); and Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Moreover, the same reasons as explained under Rights and Legitimate Interests apply with equal force to show that Respondent did not register or use the domain name in bad faith, as the Panel now finds.
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 <parnassusgroupllc.com> domain REMAIN WITH Respondent.
The Honouurable Neil Anthony Brown QC - (Chair)
Honorable Karl V. Fink (Ret.) -
Honorable Charles K. McCotter Jr., (Ret.)
Panelists
Dated: August 24, 2017
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