North Seattle Community College Foundation does business as “American Financial Solutions” with the acronym AFS. They filed a UDRP to usurp the domain name AF-SS.org.
The sole panelist at the forum pointed out that even when the hyphen and TLD are accounted for, the ending string, AFSS, does not match the Complainant’s trademark. The Complainant’s claims did not deliver enough compelling punch to indicate that the Respondent, who did not respond, registered the disputed domain this past August with some malicious intent or with the Complainant’s mark in mind.
Not only was the transfer of the domain denied, the panelist found the Complainant guilty of engaging in Reverse Domain Name Hijacking:
Taken together, these facts compel the conclusion that the Complaint lacks merit, as detailed above, and that, in prosecuting its Complaint, Complainant has attempted to commit Reverse Domain Name Hijacking. […] used “the Policy as a tool to simply wrest the disputed domain name [from Respondent] in spite of its knowledge that … Complainant was not entitled to that name and … had no colorable claim under the Policy.”
North Seattle Community College Foundation DBA American Financial Solutions v. christopher johnson
Claim Number: FA2409002115900
PARTIES
Complainant is North Seattle Community College Foundation DBA American Financial Solutions (“Complainant”), represented by Ryan Thomas and Lisa Greenwald-Swire of Fish & Richardson P.C., Minnesota, USA. Respondent is Christopher Johnson (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is af-ss.org, registered with Squarespace Domains LLC.
PANEL
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on September 17, 2024; Forum received payment on September 17, 2024.
On September 17, 2024, Squarespace Domains LLC confirmed by e-mail message addressed to Forum that the af-ss.org domain name is registered with Squarespace Domains LLC and that Respondent is the current registrant of the name. Squarespace Domains LLC has verified that Respondent is bound by the Squarespace Domains 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 September 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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@af-ss.org. Also on September 20, 2024, an official 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On October 11, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a non-profit credit counseling, financial education and debt consolidation agency headquartered in Seattle, Washington, and doing business under the name American Financial Solutions and its acronym, AFS.
Complainant holds a registration for the service mark AFS, on file with the United States Patent and Trademark Office (“USPTO”), as Registry No. 2,799,276, registered December 23, 2003, and renewed most recently as of April 23, 2024.
Since August 9, 2002, Complainant has done business online at the address americanfinancialsolutions.com, which redirects to its customer-facing website at the address myfinancialsolutions.org.
Respondent registered the contested domain name af-ss.org on August 8, 2024.
The domain name is confusingly similar to Complainant’s AFS mark.
Respondent has not been commonly known by the domain name.
Respondent is not licensed or otherwise authorized by Complainant to use its AFS mark.
Respondent does not employ the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, the domain name resolves to a web page labeled: “We’re under construction. Please check back for an update soon.”
Respondent has neither any rights to nor any legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the AFS mark when Respondent registered the domain name.
Respondent has registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
(1) Complainant has failed to establish that the contested domain name registered by Respondent is either identical or confusingly similar to Complainant’s AFS service mark; and
(2) In light of that finding, it is unnecessary for the Panel to consider whether Respondent has rights to or legitimate interests in respect of the domain name, or whether the domain name was registered and is being used in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant’s undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations […] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
By reason of its registration of the AFS service mark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, Liberty Global Logistics, LLC v. damilola Emmanuel, etc. Ltd., FA 1738536 (Forum Aug. 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
We turn, then, to the central question posed by Policy ¶ 4(a)(i), that being whether the challenged domain name, af-ss.org, can fairly be said to be either identical or confusingly similar to Complainant’s AFS mark. For purposes of this discussion, we may ignore the generic Top Level Domain (“gTLD”) “.org.” See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Likewise, we may disregard Respondent’s inclusion of a hyphen (-) in the domain name, for the reason that a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens included in a domain name are irrelevant in an analysis of the question of confusing similarity under Policy ¶ 4(a)(i)).
This leaves for consideration Respondent’s asserted addition of a second letter “s” to Complainant’s mark, in miniscule form, to complete the domain name.
Because the domain name is only about ninety days old, and, perhaps understandably in light of that fact, links only to an “under construction” webpage, and, at least as importantly, because Complainant’s mark is a three-letter combination, Complainant has undertaken what seems an exceptionally difficult task in suggesting that the domain name is either identical or confusingly similar to its AFS mark.
In any event, once its hyphen and gTLD are accounted for, the domain name reduces to afss. In this form, it is not identical to Complainant’s AFS mark, but it is similar, the two adjacent esses having the same appearance and phonetic quality. But the question presented is not whether the domain name is similar to Complainant’s AFS mark, but whether it is confusingly so. On this point, Complainant offers no hint as to what Respondent’s intention may have been in adding a second letter “s” to the mix, or how that intent might relate to or affect Complainant, as by relating in some way to an aspect of Complainant’s form of business organization, services provided or mode of doing business.
To illustrate the problem in concrete terms, resort may be had to the USPTO’s mark registry, which is rife with examples of “AFS” word marks. Here is a sampling:
· AFS, for association services,
owner: Americans for Financial Security, Inc.
· AFS, for services for machined vehicle parts,
owner: Associated Fuel Systems
· AFS, for agricultural consulting services,
owner: Asmus Farm Supply, Inc.
· AFS, for computer software for loan financing,
owner: Automated Financial Systems, Inc.
· AFS, for residential foundation contracting,
owner: AFS Newco, LLC
· AFS, for educational services,
owner: American Foundry Society
This array raises pointed questions, including: Does each of these mark holders have a UDRP claim grounded in the doctrine of confusing similarity against this Respondent and its nascent domain name? Or, to come at it another way, which of these mark holders, if it has an AFS-based domain name associated with its business, is guilty of targeting Complainant’s mark, or is the answer: all of them? In short, there is nothing distinctive about Complainant’s AFS mark outside the confines of its immediate sphere of business, and there is nothing in the materials accompanying the Complaint demonstrating that Respondent seeks to trade off of Complainant’s reputation in the marketplace or that Respondent has engaged in creating a pattern of registering domain names targeting complainant.
As well, Complainant has not pointed to any evidence that the contested domain name has, by its mere existence, caused any confusion among Complainant’s clients, or even that it is likely to do so.
It may also be noted that Complainant does not allege that the disputed domain name is an instance of typo-squatting owing to its inclusion of a second letter “s”.
And, finally, although the Complaint asserts that Respondent must have known of Complainant and its rights in the AFS mark when it registered the domain name, there is nothing in the proofs accompanying the Complaint to support that assertion.
We are aware that it is common for panels to dispose of cases of this kind via analysis of one or the other of the branches of the Policy dealing with Respondent’s rights to or legitimate interests in a disputed domain name, or, separately or in combination, Respondent’s good or bad faith in registering and using it. Complainant’s presentation as to each of these points of inquiry is seriously lacking. We therefore elect to make our findings solely on the basis of Complainant’s allegations and proofs on the point of identity or confusing similarity. As to that, we are convinced, for the reasons outlined above, that Complainant has failed to show that the domain name af-ss.org is either identical or confusingly similar to Complainant’s AFS mark.
In light of this conclusion, it is unnecessary for us to undertake a review of the other issues presented by the Complaint. The reason for this is that the Policy requires Complainant to prevail on each and every element of Policy ¶ 4(a) in order to prevail in the proceeding as a whole. Thus, if Complainant fails as to any one of them, its case fails altogether. And, in that event, consideration of the Complaint may begin and end with examination of the element as to which Complainant has failed to provide proof upon which it can prevail. See, for example, Post.Com Limited v. Peter Neilson, D2002-0690 (WIPO Sept. 17, 2002):
In this Panel’s view, the Complainant has not established … that the Domain Name was registered by the Respondent in bad faith…. In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.
Reverse Domain Name Hijacking
In view of the circumstances revealed in the Complaint, we are obliged to consider whether, in prosecuting its Complaint in this proceeding, Complainant has attempted to commit “Reverse Domain Name Hijacking,” (“RDNH”), defined in UDRP Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
In order to justify a finding of RDNH, we must be persuaded both that the Complaint has no merit and that Complainant has proceeded under the UDRP in bad faith. On the record before us, the salient facts on this question include that:
1. Complainant has been represented by experienced legal counsel throughout this proceeding;
2. Complainant must have been aware when it filed its Complaint that its AFS service mark is not distinctive outside the immediate confines of its specific financial services market niche;
3. Complainant has made no attempt in its Complaint and accompanying materials to indicate any connection between the structure or content of the contested domain name and any aspect of Complainant’s form of business organization, services provided or mode of doing business;
4. Complainant has failed to supply any evidence that the disputed domain name has caused any actual confusion among its existing or potential clients, or that it threatens to do so;
5. Complainant does not allege that the disputed domain name is an instance of typo-squatting; and
6. Although Complaint asserts that Respondent must have known of Complainant and its rights in the AFS mark when Respondent registered the domain name, there is nothing in the proofs accompanying the Complaint which can be credited as standing behind that assertion.
Taken together, these facts compel the conclusion that the Complaint lacks merit, as detailed above, and that, in prosecuting its Complaint, Complainant has attempted to commit Reverse Domain Name Hijacking. See, for example, Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004), finding that [a UDRP] complainant engaged in …[RDNH]… where it used “the Policy as a tool to simply wrest the disputed domain name [from Respondent] in spite of its knowledge that … Complainant was not entitled to that name and … had no colorable claim under the Policy.”
DECISION
Complainant having failed to establish one of the three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the af-ss.org domain name REMAIN WITH Respondent.
Terry F. Peppard, Panelist
Dated: October 30, 2024
