ILQ Australia Pty Ltd v. Gidman, John
Claim Number: FA1806001790689
Complainant is ILQ Australia Pty Ltd (“Complainant”), represented by James O'Neill of ILQ Australia Pty Ltd, Australia. Respondent is Gidman, John (“Respondent”), represented by Joshua S. Jarvis of Foley Hoag LLP, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fairmarkets.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2018; the Forum received payment on June 9, 2018.
On June 7, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <fairmarkets.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 June 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2018 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 June 13, 2018, 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 June 27, 2018.
On June 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Complainant asserts trademark rights in FAIR MARKETS or FAIRMARKETS[i].
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because the domain name has not been put to use in the years since it was registered.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. In particular, it is asserted that Respondent made certain false representations and tried to induce Complainant to purchase the disputed domain name.
Respondent broadly denies Complainant’s allegations. In particular, Respondent does not admit that Complainant has shown trademark rights and, in any event, denies confusingly similarity since the asserted trademark is a known descriptive term in the financial field.
Further, Respondent has a legitimate interest in the domain name. Respondent is an expert in the field of financial markets. Respondent purchased the domain name for a substantial sum at auction with the intention of using it in connection with its descriptive meaning.
Furthermore, Respondent asserts that it did not register or use the domain name in bad faith since it was unaware of Complainant or its business when it registered the disputed domain name. Respondent has the right to sell the disputed domain name, and its refusal and failure to respondent to Complainant’s offers to purchase the name does not constitute bad faith. The disputed domain name is a descriptive term in Respondent’s field and was registered before Complainant claims an interest in using the same expression.
Finally, Respondent argues that in the circumstances Complainant has engaged in Reverse Domain Name Hijacking when it filed the Complaint.
The factual findings pertinent to the Decision in this case are that:
1. Complainant is a financial services company located in Sydney, Australia;
2. Respondent works and advises in the financial markets sector, essentially in the United States;
3. the disputed domain name was acquired at auction by Respondent on November 10, 2014 for USD3,788.00;
4. the domain name was not in use for some years but now redirects Internet users to an active website resolving from the domain name <fairmortgagemarkets.com>, registered on October 29, 2014 to Respondent; and
5. pre-Complaint correspondence between the parties concerned Complainant’s offer(s) to purchase the domain name from Respondent.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Complainant provides no evidence of a trademark registration and so it must prove that it has rights in the expression FAIR MARKETS as an unregistered or so-called common law trademark.[ii]
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview”)[iii], asks at paragraph 1.3: “What does a complainant need to show to successfully assert unregistered or common law trademark rights?” The consensus viewpoint of panelists includes the following statement:
“Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
Complainant does not make an explicit claim to unregistered trademark rights in the term FAIR MARKETS. The Panel notes here that whether or not the term is presented as one or two words makes no difference to my assessment of trademark rights. There is no indication in the Complaint if or when the term FAIR MARKETS has been used. Instead, there are a number of statements which might seem to suggest that the term FAIR MARKETS has been used as a trademark. So, for example, under Part 7 of the Complaint, concerned with “Factual and Legal Grounds”, Complainant identifies itself as “ILQ Australia Pty Ltd trading as FairMarkets Trading” and thereafter, for the remainder of the Complaint, refers to itself as “FairMarket Trading”. Complainant then states that “FairMarkets Trading has, since the beginning of 2016 been involved in the development of financial technology, namely, the company, BrokerMate Pty Ltd”. Further, it is said that “FairMarkets Trading wishes to launch its new financial product, being liquidity for derivatives, which has fair market pricing.”
The evidence accompanying the Complaint comprises, so far as relevant, (i) an ASIC extract of an Australian Business Name registration for “FairMarkets Trading” dated May 9, 2018; (ii) a Certificate of Registration for the domain name <fairmarkets.com.au>, registered on December 6, 2017; and (iii) details of a domain name registration for <fair.markets> made on April 4, 2018.
That is the whole of the material before the Panel which might show unregistered trademark rights. On examination, there is no actual evidence accompanying the Complaint of trade under the name “FairMarket Trading”. The Panel is entitled to make its own enquiries and notes the following. Firstly, the company profile for Complainant provided by Bloomberg states that “ILQ Australia Pty Ltd, doing business as Institutional Liquidity, provides financial services.” [iv] (emphasis added by the Panel). Second, neither domain name <fairmarkets.com.au> nor <fair.markets> resolves to an active website. Third, although the significance of the claim that “FairMarkets Trading has, since the beginning of 2016 been involved in the development of financial technology, namely, the company, BrokerMate Pty Ltd” is unclear, reference to the active website at www.brokermate.com.au shows it to promote software under the name “The Broker App”; nowhere on the website is there use of the words FAIR MARKETS.
Given that an Australian Business Name registration is not itself proof of use so as to show unregistered trademark rights, all that remains is the statement that Complainant “wishes to launch its new financial product, being liquidity for derivatives, which has fair market pricing”. That statement is an expression of Complainant’s aspirations, rather than of its past activity. Moreover, it is affirmation of Respondent’s own evidence that the expression “fair markets” is descriptive and in ordinary use in the financial markets sector.
Having regard to that part of the WIPO Overview outlined already, the evidence presented to the Panel is insufficient to prove unregistered trademark rights and so the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.[v]
With the paragraph 4(a)(i) finding against Complainant the Complaint fails and no further analysis would ordinarily be required.[vi] However, in these proceedings Respondent has argued that Complainant has engaged in Reverse Domain Name Hijacking and in order to properly assess that claim the Panel must look further.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[vii]
The publicly available WHOIS information identifies Respondent as “John Gidman” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. Prior to the dispute there was no evidence that the domain name had been used in relation to any offering of goods or services. The more recent redirection to Respondent’s website at www.fairmortgagemarkets.com can be disregarded since that action does not add to or subtract from the following analysis.
Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in this disputed domain name and so the onus passes to Respondent to rebut that case.
Respondent works and advises in the financial markets sector and has done so for many years. The Response includes evidence that Respondent has authored many published papers and other documents on this subject, and has testified before the United States Congress on matters relating to fair financial markets. The Panel finds that Respondent is an expert in his field.
Respondent states that it was unaware of Complainant or its business when it acquired the disputed domain name at auction on November 10, 2014. The Panel finds that claim entirely plausible since there is no evidence of use of the term FAIR MARKETS as a trademark by Complainant, still less from a time prior to November 10, 2014. The evidence is that Respondent purchased the disputed domain name for the significant sum of USD3,788.00. The Respondent stated that it has been its intention to use the domain name in relation to advocacy efforts for fair financial markets. Given Respondent’s proven standing in his business the Panel has no reason to question that intention. Complainant makes too much of a slight divergence of intention Respondent expressed at one point in correspondence. In the circumstances the Panel finds that Respondent has shown a legitimate interest in the disputed domain name notwithstanding that it has not, so far, put it to use.
The Panel finds that Complainant has not established that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not satisfied the second element of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. However, in this case it is unnecessary to look to paragraph 4(b) since, for reasons already given, the Panel finds that Respondent did not register the domain name in bad faith.[viii] With that finding the Complainant has failed to establish this final aspect of the Policy.
For the purposes of the discussion which follows, the Panel also finds no evidence of Respondent having made material misrepresentations or of having attempted to somehow coerce Complainant to purchase the disputed domain name. The contrary evidence is that it was Complainant who reached out to Respondent with a series of escalating offers to purchase the domain name, largely without reply or other encouragement from Respondent. The Panel finds that Complainant’s contention that the silence following Complainant’s offers were Respondent’s method to induce Complainant to increase its offer, wrongly characterizes the pre-Complaint dealings between the parties. The Panel’s assessment of the correspondence is that Respondent showed, on the whole, a general lack of interest in selling the domain name. When pressed by Complainant, all that can be said is that Respondent replied inviting Complainant to make a once and final best offer, or in the alternative put forward some other proposal, which in context the Panel reads as meaning some business proposal which might involve use of the domain name and which took account of the parties potential overlapping interests.
Reverse Domain Name Hijacking (“RDNH”)
Respondent submitted that the Panel should make a finding of RDNH by the Complainant. Paragraph 1 of the Rules defines RDNH to mean “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 15(e) of the Rules provides that if “the Panel finds that the complaint was brought in bad faith, for example in an attempt at [RDNH], the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The WIPO Overview asks at paragraph 4.16: “In what circumstances will panels issue a finding of Reverse Domain Name Hijacking (RDNH)?” in reply to which UPRP panelists are in agreement that:
“… the mere lack of success of a complaint is not itself sufficient for a finding of RDNH” … [which] “ultimately turns on the complainant’s conduct.”
Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith … such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) … , (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, [and] (viii) basing a complaint on only the barest of allegations without any supporting evidence.
Here, Complainant failed to establish any of the three elements required under the Policy. The Panel has found no evidence of trademark rights, nor of bad faith registration and has found that Respondent has a legitimate interest in the disputed domain name. However, as noted, RDNH is not necessarily found simply because a complaint is weak or misconceived. There must, as indicated, be an element of bad faith. In that respect Respondent argues that Complainant knew or should have known that it had no colorable claim to trademark rights in the term FAIR MARKETS, a descriptive and well-used term in the financial space. Further, that Complainant knew that Respondent registered the disputed domain name well before Complainant decided to adopt the trading name “FairMarkets Trading”. Furthermore, that even limited enquiries by Complainant would have shown that Respondent had been a vocal and public advocate for fair markets for many years and had a legitimate interest in the domain name.
The Panel is in agreement with Respondent and finds, on any construction of the facts, that Complainant knew or should have known that it was unable to prove trademark rights. Having regard to the evidence, the Panel also finds that there was material in the public domain to show Respondent’s legitimate interest in the domain name and its bona fides more generally. Moreover, even if Complainant had not made those enquiries, the course of correspondence with Respondent made that plain. The fact alone that the Complaint was later filed in that knowledge is in the Panel’s assessment evidence of the Complaint being brought in bad faith. Finally, the explicit claims to bad faith registration and use made in the Complaint are groundless and overstated in nature.
The Panel finds RDNH.[ix]
Having failed to establish all three elements required under the ICANN Policy the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <fairmarkets.com> domain name REMAINS WITH Respondent.
The Panel also finds REVERSE DOMAIN NAME HIJACKING. Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Debrett G. Lyons, Panelist
Dated: July 13, 2018
[i] Whether the asserted trademark is used as one word or two is not clear from the Complaint but for reasons later given has no material influence on the Decision.
[ii] See, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”
[iii] See http://www.wipo.int/amc/en/domains/search/overview3.0
[iv] See www.bloomberg.com/profiles/companies/1338394D:AU-ilq-australia-pty-ltd.
[v] See, for example, Semira Bayati, M.D., Inc. v. ARTHUR BENJAMIN / COMPREHENSIVE GLOBAL SOLUTIONS CORP, FA 1707508 (Forum Dec. 10, 2016) finding complainant had failed to establish its rights in a mark, the panel there stating that that was “no proof of use of the trademark at all, still less proof of continuous use of the trademark since May 2000.”
[vi] See, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i).
[vii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[viii] See, for example, Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) where the panel held that “Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”
[ix] See, for example, Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (FORUM May 28, 2004) finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”.
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