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Finwise.com : DropCatch sale ends up in #UDRP loss for Respondent

The buyer of the domain Finwise.com won the domain in a DropCatch auction, paying $4,190 dollars for it. Source: NameBio.

Finwise BV, Belgium, filed a UDRP to get the domain, based on a series of trademarks they hold for FINWISE.

According to the UDRP, on the day before it filed the Complaint, the Managing Director of the Complainant contacted the Respondent offering $500 dollars for the transfer of the disputed domain name. The Respondent made a counter-offer of $125,000 dollars, which the Complainant declined. The Respondent sent a further communication to the Complainant stating inter alia that “Finwise as a name is a top brand in the financial world” and indicating his willingness to lower his price if the Complainant were to raise its offer.

The three member WIPO panel found the domain to be non-generic, despite the Respondent’s claims of genericness in the financial vocabulary. The existence of the registered mark and the ensuing communication between the two parties, led the panel to grant the transfer of Finwise.com to the Complainant.

Finwise BV v. Anne-Jan Hempenius, NameAvenue
Case No. D2020-3135

1. The Parties

The Complainant is Finwise BV, Belgium, internally represented.

The Respondent is Anne-Jan Hempenius, NameAvenue, the Netherlands, represented by Law Office of Howard M. Neu, PA, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <finwise.com> is registered with DropCatch.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2020. On November 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 25, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 26, 2020.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2020. The Response was filed with the Center on December 18, 2020.

The Complainant made a supplemental filing on December 23, 2020, and the Respondent made a supplemental filing on the following day.

The Center appointed Matthew Kennedy, Flip Jan Claude Petillion, and Robert A. Badgley as panelists in this matter on January 5, 2021. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a Belgian company that provides advisory services to startup / scale-up companies, including early-stage fundraising. The Complainant holds two trademark registrations for FINWISE: Benelux trademark registration number 1016714, registered on September 1, 2017, specifying services in classes 35, 36, 41, and 42; and European Union trademark registration number 018019270, registered on June 1, 2019, specifying services in classes 35, 36, and 41. These trademark registrations are currently in force. The Complainant has also registered the domain name <finwise.eu> that it uses in connection with a website where it provides information about itself and its services.

The Respondent is an individual, Mr. Anne-Jan Hempenuis, and his business “NameAvenue”. The Respondent owns an IT web solutions company that provides full-service Internet solutions. He is also a translator from English to Dutch, specializing in IT-related content, and he co-founded a company that offers a sports website. NameAvenue offers for sale domain names on a domain name broker website, at prices ranging up to USD 49,900. Some of the domain names that it offers for sale wholly incorporate trademarks registered in the European Union, such as <alterra.net>, <caerus.net>, <claritas.net>, <finova.net>, and <mentis.net>.

The disputed domain name was acquired by the Respondent at auction on November 4, 2020, from the Registrar, which provides a “drop catching” service that purchases domain names after previous owners fail to renew them. The disputed domain name resolves to a webpage in English hosted on a domain name broker website. The webpage advises that “[t]he domain name FinWise.com is for sale!” and it invites Internet users to make an offer. The minimum offer is USD 100. The webpage identifies the Respondent as the seller and it also provides the contact details of a broker representative.

On the day before it filed the Complaint, the Managing Director of the Complainant contacted the Respondent via the domain name broker website. The Complainant’s offer of USD 500 for the transfer of the disputed domain name was declined. The Respondent made a counter-offer of USD 125,000, which the Complainant declined. The Respondent sent a further communication to the Complainant stating inter alia that “Finwise as a name is a top brand in the financial world” and indicating his willingness to lower his price if the Complainant were to raise its offer.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s trademark in its entirety.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name currently resolves to a landing page which redirects Internet users to a website where domain names are being sold or rented. The Respondent has not made any active bona fide offering of goods or services in connection with the disputed domain name and there are no demonstrable preparations for such a use of the disputed domain name. Neither the Respondent nor his company is known by the disputed domain name, either personally or professionally.

The disputed domain name was registered and is being used in bad faith. The disputed domain name was only acquired by the Respondent very recently and immediately offered for sale. It was registered and acquired primarily for the purpose of selling or renting the disputed domain name to the Complainant as owner of the trademark or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The Respondent’s asking price of USD 125,000 shows a clear attempt to obtain a huge commercial gain from the Complainant. This outrageous amount can only be attributed to the recognition of the Complainant’s name and trademark prior to its purchase and the Respondent’s prior intention to sell the disputed domain name to the Complainant or its competitors at huge inflated prices or to intentionally disrupt the Complainant in its business. The Complainant’s company and domain names are well known and appear in the top results of an Internet search for “finwise”. Given that the Respondent is an IT professional with specialized knowledge who is professionally presenting himself as a specialist in web solutions, and actively engaged in a speculative business where he tries to snatch up domains to sell them or rent them out, and currently offers a long list of domain names for sale on specialized platforms (many of which concern third party trademarks), it is highly implausible that the Respondent was unaware of the Complainant and its trademark when registering the disputed domain name. The Respondent has clearly engaged in a pattern of bad faith conduct before: among the domain names that he offers for sale are many that potentially conflict with European Union trademarks registered by third parties, including <hylion.com>, <herbatime.com>, <mymercury.com>, <finova.net>, <claritas.net>, <alterra.net>, <mentis.net> ,and <caerus.net>.

The Complainant lacks technical knowledge about domain auctions and does not participate in them. The only way to contact the Respondent was via the webpage to which the disputed domain name resolves.

B. Respondent

A third party owns United States trademark registration number 5268978 for FINWISE, registered on August 22, 2017, specifying services in class 36. That trademark registration predates the Complainant’s European Union trademark registration. The disputed domain name is comprised of “Fin”, short for “financial”, and “wise”, a common generic word. The combination has become generic in its own right as a number of parties use the combined word “finwise” for various uses. The Respondent provides evidence of eight websites associated with domain names that consist or, or include, the word “finwise”, with different extensions. An Indian company also has a trademark for FINWISE. FINWISE has been trademarked at least ten times around the world, and has been used generically by many banks and finance companies.

The Respondent is a domain name investor with close to 200 generic names in his inventory. Domain name registration has been recognized by the vast majority of panels as a legitimate bona fide business. The Respondent has continuously redirected the disputed domain name to a domain name broker website, which lists thousands of domain names for sale. The Respondent acquired the disputed domain name for USD 4,100 at auction. Shortly after the auction, the Respondent declined an offer by the Complainant to purchase the disputed domain name for USD 500. The Respondent did not acquire the disputed domain name to sell it to the Complainant; in fact, the Complainant attempted to buy the disputed domain name from the Respondent and the Respondent refused to sell it to the Complainant.

The Respondent’s business is legitimate. The acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity. The registration of domain names that contain common words is permissible on a first-come, first-served basis and such registration establishes the Respondent’s legitimate interest, provided the disputed domain name was not registered with a trademark in mind. Further, there is no indication that the Respondent uses, or has ever used, the disputed domain name to exploit its trademark value in the category of services covered by the Complainant’s mark.

The Complainant alleges that the Respondent is seeking “an excessive amount of money” for the disputed domain name and that this shows the Respondent’s bad faith. However, there is no evidence that the Respondent was targeting the Complainant in its offer to sell the disputed domain name. At no time was the Respondent using the Complainant’s trademark in any way on the broker’s website, nor did the Respondent offer to sell the disputed domain name at any time to the Complainant. The Respondent is entitled to value its domain names at whatever amount the Respondent believes that they are worth. The Complainant is unable to exhibit evidence of “bad faith” registration and use under paragraph 4(b)(i) of the Policy. The Respondent invested substantial funds in registering domain names, but neither registers nor uses them in “bad faith” as defined in the Policy and panel decisions thereunder. The Respondent uses them for sale or rent to individuals or businesses that could use a unique name. Bald allegations made by the Complainant without evidence of their veracity are not sufficient to establish “bad faith”. No UDRP decision has ever been rendered against the Respondent by the holders of any of the trademarks named by the Complainant, let alone filed. The Respondent’s other domain names that are cited by the Complainant are all very popular generic brand names taken from the Latin or Greek language, including “Claritas”, “Caerus”, and “Mentis”, while “Alterra” is a play on two Latin words, “altera” and “terra”. These words are each registered in many extensions.

The Complainant has engaged in reverse domain name hijacking. The Complainant knew that the Respondent had paid substantially more for the disputed domain name than the Complainant offered to pay for it. The Complainant brought this proceeding to acquire the disputed domain name for the cost of the Center’s filing fee, which clearly shows an enmity toward the Respondent and an abuse of the UDRP system.

6. Discussion and Findings

6.1 Unsolicited Supplemental Filings

The Complainant made an unsolicited supplemental filing after the filing of the Response. The Respondent made an unsolicited supplemental filing the following day, prior to the appointment of the Panel.

Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.

Neither Party formally objects to the admission of the other Party’s supplemental filing, although the Respondent alleges that the Complainant did not state a justification for its supplemental filing. The Panel observes that the Complainant’s supplemental filing, in part, rebuts an allegation in the Response that the Complainant was aware of the price paid by the Respondent to acquire the disputed domain name and that the Complainant had therefore acted in bad faith. This allegation could not reasonably have been anticipated at the time of filing the Complaint. The Respondent has taken the opportunity to respond to the Complainant’s supplemental filing, in full, in its own supplemental filing. Both supplemental filings were made before the appointment of the Panel, both are relatively brief, and accepting them will not unduly burden this proceeding.

Therefore, the Panel exercises its discretion to admit both Parties’ supplemental filings and will take them into consideration in this decision according to their respective relevance, materiality and weight as part of the evidence on the record.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the FINWISE mark.

The operative element of the disputed domain name is identical to the Complainant’s FINWISE mark.

The only additional element in the disputed domain names is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.11.

The Respondent notes that third parties also own trademarks for FINWISE in other jurisdictions. However, the Panel does not see any reason as to why this would alter the position that FINWISE is a trademark in which the Complainant has rights as foreseen in paragraph 4(a)(i) of the Policy.

The Respondent also alleges that “finwise” is a generic term. However, the Panel considers that argument relevant to the second (and possibly third) element in paragraph 4(a) of the Policy, considered below. For the purposes of the first element, it suffices to note that the Complainant’s trademark registrations are currently in force.

Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel recalls that, where the Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests with respect to the disputed domain name, the burden of production under paragraph 4(a)(ii) of the Policy shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests. If the Respondent fails to produce such evidence, the Complainant will be deemed to have satisfied this element. See WIPO Overview 3.0, section 2.1.

The Panel has already found that the disputed domain name is identical to the Complainant’s mark. It is clear that the Complainant has not authorized the Respondent to use its FINWISE mark in a domain name or otherwise; rather, the Parties disagree as to whether the Respondent requires such authorization. The Complainant has shown that the Respondent uses the disputed domain name to offer it for sale and that the Respondent offered to sell it to the Complainant for a price (USD 125,000) likely to have been far in excess of any out-of-pocket expenses directly related to the Respondent’s acquisition of the disputed domain name. The Complainant has provided evidence that the Respondent is not named “Finwise” and there is no evidence that the Respondent has been commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Accordingly, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Turning to the Respondent’s case, he submits that his business of registering and selling domain names is legitimate and that the acquisition of common, dictionary terms for resale can confer rights and legitimate interests. The Panel agrees that, generally speaking, aggregating and holding domain names for resale consisting of acronyms, dictionary words or common phrases can be bona fide and is not per se illegitimate under the Policy. See WIPO Overview, section 2.1.

The difficulty for the Respondent is that “finwise” is not an acronym, dictionary word or common phrase, as far as the Panel is aware. The Respondent appears to acknowledge that “finwise” is not a dictionary word when he states that it is comprised of part of one English word (“financial”) combined with another English word (“wise”). He does not allege that “finwise” is a word in a foreign language. Nor is “finwise” a combination of two words that could operate as a phrase. Instead, the Respondent argues that “finwise” has acquired its own generic meaning in practice, without stating what that generic meaning is alleged to be. The Panel has reviewed the evidence, which shows that several different parties use the term “finwise” as a business or trade name, or part of one, and in some cases as a registered trademark. The evidence does not show that any of these parties uses the term “finwise” as a descriptive term or other common word. Indeed, the Respondent appears to have recognized as much in his pre-Complaint correspondence where he stated that “Finwise as a name is a top brand in the financial world”. In any case, the evidence shows that different parties use the term “Finwise” not only in connection with financial services but also related services, such as accounting classes, software products, and conference hosting. The Panel is unable to distil any generic or dictionary meaning of “finwise” from the variety of contexts in which it is used. Accordingly, the Respondent has failed to provide evidence that the disputed domain name is a common, dictionary term that he acquired for resale.

The Respondent also argues that the registration of domain names that contain common words is permissible on a first-come, first-served basis and that such registration establishes the Respondent’s legitimate interest, provided the disputed domain name was not registered with a trademark in mind. However, the mere registration of a domain name does not create rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, otherwise no Complaint could ever succeed, which would be an illogical result. See, for example, Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134.

In summary, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first circumstance is as follows:

“(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name;”

The disputed domain name was acquired by the Respondent on November 4, 2020, years after the Complainant obtained its trademark registration for FINWISE in the Benelux countries, where the Respondent is resident, and also after the Complainant obtained its European Union trademark registration for FINWISE. The mark is not a dictionary word and yet the disputed domain name is identical to that mark. The Complainant has provided evidence that it actively used its mark in commerce prior to the registration of the disputed domain name in the English language, a language in which the Respondent operates his business. The Respondent was aware that Finwise was a “top brand” in the financial world in pre-Complaint correspondence including, presumably, shortly before that, when he successfully bid for the disputed domain name at auction. However, from the evidence on record, it is not clear, on the balance of probabilities, that he actually knew of the Complainant’s mark at that time.

The Complainant has provided evidence showing that the disputed domain name is not the only domain name in the Respondent’s inventory that is identical to a trademark registered in the European Union. The Respondent’s other domain names include <alterra.net>, <caerus.net>, <claritas.net>, <finova.net>, and <mentis.net>, in each of which the operative element is identical to a European Union registered trademark, while at least one, <hylion.com> is identical to the registered trademark “hyliion” but for a typographical error, and others may be similar to registered trademarks. This evidence indicates that the Respondent is, at best, indifferent to the possibility that his chosen domain names – including the disputed domain name – infringe third party trademark rights.

The Respondent’s explanation for his choices of domain names is, at least based on the evidence before the Panel, dubious. He argues that the disputed domain name has its own generic meaning but the Panel has rejected that argument as unconvincing for the reasons given in section 6.2(B) above. He claims to have close to 200 “generic” names in his inventory but many of the domain names that he offers for rent or sale on the domain broker website do not appear to be common, dictionary or descriptive terms. As regards those domain names identical to trademarks, which were highlighted by the Complainant, the Respondent claims that they are all taken from Latin or Greek, but he acknowledges that one (“alterra”) is not a dictionary word even in Latin, and he provides no definition at all for certain others (such as “finova”). The Respondent is more persuasive when he points out that the operative elements of these domain names are popular, based on the number of TLDs in which they are already registered.

The Panel notes that the Respondent is a self-described “domain name investor”, that he invests “substantial funds” in registering domain names, and that he owns an IT web solutions company. He registers and offers for sale a portfolio of domain names. Under paragraph 2 of the Policy, which is incorporated in the Registration Agreement, the Respondent represented that “to [his] knowledge, the registration of the [disputed] domain name will not infringe upon or otherwise violate the rights of any third party”. A basic search in an Internet search engine such as Google would have revealed that FINWISE was a trademark of the Complainant. The Respondent apparently failed to take the precaution of conducting such a search; at the same time he acknowledged in correspondence with the Complainant that the brand was known in its sector. In all the circumstances of this case, the Panel considers it more likely than not that the Respondent, as an experienced domainer, either deliberately closed his eyes to the possibility that the disputed domain name infringed upon a trademark, or registered the disputed domain name knowing that it would be attractive to the Complainant or one of the other third parties using the mark – in other words purposefully targeting those parties for a resale based entirely on the correlation between the disputed domain name and their mark, and not for some supposed generic meaning. The Panel does not consider that willful blindness to the Complainant’s trademark rights is a means of escaping a finding of registration or acquisition in bad faith under the Policy. See WIPO Overview 3.0, section 3.2.3 and, for example, Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448.

The disputed domain name is used by the Respondent to offer it for sale. He invites offers from any Internet user who visits his webpage, including the Complainant and its competitors. The evidence shows that, when the Complainant responded to the Respondent’s invitation, he offered to sell it to the Complainant for USD 125,000, more than 30 times the price that he claims to have paid for it shortly before (USD 4,100). The Respondent argues that he refused to sell the disputed domain name to the Complainant. However, it would be more accurate to say that the Respondent sought to sell it to the Complainant for a higher price than he had been offered; the evidence is clear that he communicated his continued willingness to sell it to the Complainant after his counter-offer was rejected.

The Respondent argues that he is not using the Complainant’s trademark in any way on the webpage to which the disputed domain name resolves and that he has never used the disputed domain name to exploit its trademark value in the category of services covered by the Complainant’s mark. However, given the type of use that the Respondent has made of the disputed domain name, these issues do not alter the Panel’s conclusion.

For the reasons given above, the Panel finds that the circumstances indicate that the Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, within the meaning of paragraph 4(b)(i) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules, provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

The Respondent alleges that the Complainant has engaged in reverse domain name hijacking because the Complainant knew that the Respondent had paid substantially more for the disputed domain name than the Complainant offered to pay for it. He does not substantiate this allegation.

The Panel does not find that the Complaint was brought in bad faith; on the contrary, the Panel has upheld the Complaint.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <finwise.com> be transferred to the Complainant.

Matthew Kennedy
Presiding Panelist

Flip Jan Claude Petillion
Panelist

Robert A. Badgley
Panelist
Date: January 19, 2021


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