DECISION

 

Silver Point Capital, L.P. v. Elisha Finman

Claim Number: FA2401002079392

 

PARTIES

Complainant is Silver Point Capital, L.P. ("Complainant"), represented by Scott Kareff of Schulte Roth & Zabel LLP, New York, USA. Respondent is Elisha Finman ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <silverpointequity.com> and <silverpointequities.com> ("Domain Names"), registered with IONOS SE.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 16, 2024; Forum received payment on January 17, 2024.

 

On January 22, 2024, IONOS SE confirmed by e-mail to Forum that the <silverpointequity.com> and <silverpointequities.com> domain names are registered with IONOS SE and that Respondent is the current registrant of the names. IONOS SE has verified that Respondent is bound by the IONOS SE 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 24, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2024 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@silverpointequity.com and postmaster@silverpointequities.com. Also on January 24, 2024, 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 9, 2024.

 

On February 9, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

On February 12, 2024, Complainant filed an unsolicited additional submission in this matter. On February 12, 2024, the Panel issued an order accepting the Complainant's additional submission and providing Respondent with an opportunity to provide a response to the additional submission. On February 13, 2024, Respondent provided a response to the additional submission.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a prominent SEC-registered investment adviser founded in 2002. Complainant asserts rights in the SILVER POINT mark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 3,739,107, registered January 19, 2010). Each of the Domain Names are identical or confusingly similar to the SILVER POINT mark because the Domain Names consist of the entirety of the SILVER POINT Mark, together with the generic word "equity" or "equities" as well as the generic top-level domain ("gTLD") ".com".

 

Respondent lacks rights or legitimate interests in the <silverpointequity.com> and <silverpointequities.com> domain names. Respondent is not commonly known by the Domain Name, nor has Respondent been authorized by Complainant to use the SILVER POINT mark. Additionally, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services. Rather, Respondent is passing off as Complainant in order to conduct a phishing scheme as it is publishing a website under a virtually identical name and purporting to offer real estate investing services (which the Complainant also offers).

 

Respondent registered and uses the Domain Names in bad faith. Respondent has made use of a privacy service to conceal its identity. Respondent is passing off as Complainant as part of a phishing scheme. Respondent is confusing customers as to the source of its investment services for commercial gain. Additionally, Respondent had actual or constructive knowledge of Complainant's rights in the SILVER POINT mark at the time of registration.

 

B. Respondent

Respondent is an individual who runs a small, family-run real estate investment company that trades under the name Silver Point Equity. The Respondent's business is located in Atlantic Beach, New York and the local beach is known as Silver Point, which is what the Respondent's business takes its name from. The Respondent never intended to take advantage of any confusion with the Complainant.

 

The Respondent uses the Silver Point Equity business name for its business, online marketing, LinkedIn, social media and as part of its e-mail. The Respondent has an active website at the <silverpointequity.com> domain name that promotes its real investment services (the <silverpointequities.com> domain name points to the active website).  The loss of the Domain Names would cause the Respondent, an active and functioning business, real harm.

 

The Respondent denies that it is engaged in any form of scam and notes that there are numerous other businesses in the real estate and finance industries that use the Silver Point name, indicating that Complainant does not have an exclusive right to or reputation in the SILVER POINT name.

 

C. Complainant's Additional Submission

A search of the New York State Department of State, Division of Corporations Corporation and Business Entity Database does not disclose any record of any entity named Silver Point Equity" or "Silver Point Equities". After the Complaint was filed, Respondent offered to sell the Domain Names to Complainant for a significant sum.   

 

B. Respondent's Additional Submission

Respondent states that the fact that he has not registered his business with the State of New York is not proof that he is not doing business as Silver Point Equity or that he does not intend to in the future.

 

The Complainant's statement about the offer to sell the Domain Names is incomplete. On February 6, 2024 the Complainant's representative called the Respondent, and asked for the Respondent to nominate a price. The Respondent nominated a price, by reference to the value of a deal he was working on which could be impacted by the loss of the Domain Names. The Complainant's representative said that this was a larger number than they were expecting and he would present it to his client.  

 

FINDINGS

Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the Domain Names, has not established all required elements of its claim, and thus its complaint must be denied.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Complainant asserts rights in the SILVER POINT mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,739,107, registered January 19, 2010). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

The Panel finds that each of the <silverpointequity.com> and <silverpointequities.com> domain names are confusingly similar to Complainant's SILVER POINT mark because they wholly incorporate Complainant's SILVER POINT mark while adding the descriptive term "equity" or "equities" and the ".com" gTLD to form the Domain Names. These changes are insufficient to distinguish the Domain Names from the SILVER POINT mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) ("Respondent merely adds the term 'supports' and a '.org' gTLD to the DELL mark. Thus, the Panel finds Respondent's disputed domain name is confusingly similar to Complainant's DELL mark per Policy ¶ 4(a)(i)."); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names 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) and 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.").

 

The Panel holds that Complainant has not made out such a prima facie case. Rather, there are factual and legal issues that are unresolved by the evidence presented and the Panel is of the opinion that this case is not one that is well suited for resolution under the Policy. See, e.g., AirMax Construçoes Aeronáuticas LTDA v. Richard Rofe / seamaxamerica.com, FA 1763605 (Forum Feb. 9, 2018) (finding serious issues of fact and law that "can be resolved only by the use of forensic powers which a Panel under the UDRP does not have, such as deposition evidence by cross examination, discovery….").

 

Complainant, in its Complaint, submits that the Domain Names are used as part of a phishing scheme to mislead members of the public. This submission is not supported by the evidence before the Panel. There is no evidence to suggest that the Respondent is engaging in phishing or otherwise fraudulent behavior. Furthermore, the evidence of the settlement conversation held between the Complainant's representative and the Respondent's representative is not determinative of whether the Respondent has rights or legitimate interests; the Complainant's representative sought a settlement offer and the Respondent provided one which was not accepted by the Complainant; by itself this does not establish the Respondent's use of the Domain Names as not being bona fide.

 

The Domain Names resolve to a website ("Respondent's Website"), operated by Respondent which, on its face, indicates that Respondent operates a real estate investment firm known as "Silver Point Equity". The Respondent's Website does not either explicitly or (to the best of the Panel's knowledge) implicitly make any reference to Complainant or otherwise suggest an affiliation (other than the shared use of the trademark SILVER POINT for investment services, which the Panel will address further below). Moreover Respondent, in the Response, has provided a clear reason for the use of the Silver Point term (namely that it refers to a geographical feature where the Respondent is located) and exhibits limited collateral demonstrating use of the Silver Point name and Domain Names for his business (Linkedin page, Respondent's Website, and e-mail address). The Panel also notes that there is no other evidence of any conduct engaged in by the Respondent that suggests the use of the Domain Names is anything other than for a bona fide offering of services, such as phishing e-mails, misleading statements, a pattern of conduct of abusive registrations or the like.

 

The Panel notes its concern with the extent of the Respondent's evidence of its business. The Respondent's Website is a landing page with a limited amount of text and no contact details, and the evidence of the Linkedin page and use of an e-mail address is evidence that a nefarious actor seeking to create evidence of legitimacy could have created after a complaint was filed against it. The Respondent provides no history of his business or evidence of when he adopted the Silver Point name. Furthermore, the fact that Respondent has not registered its business name with the New York State Department of State (and fails to provide a satisfactory explanation for this) is concerning. At the same time, the address of the Respondent, as provided by the Registrar, is very close to the Silver Point beach which provides independent support for Respondent's claim of him selecting the Domain Names on the basis of its similarity with a nearby geographical feature.

 

This is clearly a borderline case. However, noting that a panel has to be positively satisfied that a respondent lacks rights and legitimate interests under this element of the Policy, in my evaluative judgement of the evidence before me, I am not satisfied that the Respondent lacks rights and legitimate interests. I consider that this question of fact is better resolved in a venue that has explicit forensic powers which a Panel under the Policy does not have.

 

Panels have recognized that "[t]he Policy's purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes". Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005). See also Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) ("the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name.  The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy."). The Panel acknowledges that Respondent's conduct may infringe Complainant's SILVER POINT mark or amount to passing off and the Panel wishes to make it clear that other remedies may be available to the Complainant in a different forum, and that nothing in this decision should be understood as providing a definitive finding on the respective mark rights of the parties, beyond the narrow question determined under this proceeding.

 

However, the question of trademark infringement is beyond the scope of the present proceeding, which is summary in nature and hence the limited evidence that Respondent operates a real estate investment business known as Silver Point Equity is a sufficient basis to find that the Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the Domain Name. The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) ("The objectives of the Policy are limited -- designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting -- and not intended to thwart every sort of questionable business practice imaginable). If the Complainant wishes to bring proceedings against the Respondent for trademark infringement or passing off, such a proceeding is more appropriately brought in a court of competent jurisdiction.

 

The Panel notes that in the event that further information arises that suggest that the motives of the Respondent in registering the Domain Names were anything other than the intention to use in respect of his Silver Point Equity firm, there may be grounds to consider a refiled complaint, subject to the applicable criteria.

 

Registration and Use in Bad Faith

In light of the Panel's dispositive finding on the issue of rights or legitimate interests, the Panel declines to address the question of registration and use in bad faith.

 

DECISION

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 <silverpointequity.com> and <silverpointequities.com> domain names REMAIN WITH Respondent.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: February 13, 2024