Some people will invent all types of back stories regarding the meaning of domains, as in the case of Fiverr.ai that ended up in a UDRP.
The FIVERR mark has been registered since 2011, citing first use in 2010. Meanwhile, the domain was registered in 2020.
In the ensuing UDRP, the Respondent claimed that the mark consists of the parts FIVE and RR, in reference to some alleged medical (electrocardiogram) invention which would facilitate five “R” waves, whatever that is. As a medical student, the Respondent alleged that he had limited resources and budget to go forward with his creation (not even a one page web site?!)
The sole panelist at the Forum (NAF) pointed out that since its registration, the domain appears to have been parked with a “for sale” lander seeking $50,000 dollars and that doesn’t exactly indicate fair use of the domain as an extension of the Respondent’s alleged invention.
Final decision: Transfer the domain name Fiverr.ai to the Complainant, Fiverr International Ltd.
Copyright © 2024 DomainGang.com · All Rights Reserved.Fiverr International Ltd. v. Omar Jennane
Claim Number: FA2302002031583
PARTIESComplainant is Fiverr International Ltd. (“Complainant”), represented by Sheldon H. Klein of LATHROP GPM LLP, US. Respondent is Omar Jennane (“Respondent”), represented by Dr. Daniel Dimov, Belgium.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with Dynadot, LLC.
PANEL
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.
Luca Barbero as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 13, 2023; Forum received payment on February 13, 2023.
On February 13, 2023, Dynadot, LLC confirmed by e-mail to Forum that the domain name (hereinafter, the “disputed Domain Name”) is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 February 15, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2023 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@fiverr.ai. Also on February 15, 2023, 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 27, 2023.
On March 7, 2023, Complainant submitted an Additional Submission. On the same day, Respondent sent an email communication to Forum indicating that Complainant’s Supplemental Filing should be disregarded as it includes no exceptional circumstances justifying the rebuttal and requesting that, in case Complainant’s Additional Submission is taken into account, Respondent be provided with an opportunity to reply.
On March 8, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Luca Barbero as Panelist.
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 disputed Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant states that the FIVERR mark has been exclusively used in connection with its online marketplace for sellers of goods and/or services since at least as early as 2010.
Complainant also submits that it owns registrations for its FIVERR mark in many jurisdictions, including the United States, Australia, Brazil, Canada, China, the European Union, Israel, and the United Kingdom.
Complainant contends that the disputed Domain Name is confusingly similar to its own domain name , with the mere difference that the Respondent used the country-code Top Level Domain “.ai” (Anguilla country code). Complainant also submits that the .ai ccTLD is often used by businesses (such as Complainant’s) that focus on digital services, particularly artificial intelligence, because “ai” is usually interpreted as, and is likely generic for, “artificial intelligence”.
Complainant states that Respondent has no rights or legitimate interest in the disputed Domain Name since he is in no way affiliated with Complainant, nor has he ever been licensed or authorized by Complainant to use its FIVERR mark, or any confusingly similar mark in connection with any goods or services.
Moreover, Complainant emphasizes that Respondent is also not commonly known by the disputed Domain Name, considering he has never been associated to Complainant and has registered the disputed Domain Name by shielding his identity through a WHOIS privacy service.
Complainant further contends that Respondent is also not using the disputed Domain Name for a bona fide offering of goods or services, but holding it with the intent of selling it for $50,000, a sum well in excess of the out-of-pocket costs.
Complainant also submits that Respondent registered and is using the disputed Domain Name in bad faith since he registered it with full knowledge of Complainant and its rights, for the sole purpose of profiting from the exploitation of a domain name confusingly similar to Complainant’s FIVERR mark.
B. Respondent
Respondent replied to Complainant’s contentions stating as follows.
Respondent asserts that the disputed Domain Name is not confusingly similar to Complainant’s FIVERR mark, since the ccTLD used (“.ai”) adds distinctiveness to the disputed Domain Name with the aim of informing the general public that the business-concerned relates to artificial intelligence (AI) or to Anguilla, a British Overseas Territory in the Caribbean region, and submits that even though extensions are generally excluded from the purpose of evaluating the confusing similarity between the challenged domain names and the trademarks of the complainants, in this case it should be considered an important component of the disputed Domain Name, being also listed in the ICANN list of valid top-level domains.
With reference to Complainant’s allegations concerning the rights or legitimate interest in the disputed Domain Name, Respondent claims he does have rights and legitimate interest in the disputed Domain Name, since he purchased it for the purpose of developing an app aiming to benefit the entire healthcare industry.
Respondent submits that, between 2019 and 2020, during his 4th year as a student of the Faculty of Medicine and Pharmacy of Casablanca, he thought to create an app that uses artificial intelligence to analyze an electrocardiogram (ECG or EKG) and the name chosen for such app was “Five RR”, where the word “five” was used to represent the idea that the user of the app only needs to provide an EKG that is five cycles long (“five RR long”) or more to get an EKG analysis, whilst the two letters “rr” refer to the time between two consecutive R waves in the EKG waveform, which represents a full electrical cardiac cycle.
Respondent states that, being a student, he had limited funds and time to actually develop the app “Five RR” and, therefore, decided to sell the disputed Domain Name in order to be able to fund his app-related projects.
Respondent contends that he never actually used the disputed Domain Name in commerce and that there is no evidence that he may have been willing to benefit from Complainant’s trademark at any time.
Considering the above, Respondent claims that, contrary to Complainant’s allegations, he was making demonstrable preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services (i.e., the provision of health-related services through an app) and a legitimate non- commercial use of the disputed Domain Name (i.e., keeping the disputed domain name on hold until the app was launched), without any intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s mark.
Lastly, with reference to use of the disputed Domain Name in bad faith, Respondent submits that, contrary to Complainant’s allegations, he had no constructive knowledge of the existence of Complainant’s US trademark registration, since he is a medical student in Morocco where the official language is Arabic and has no connections whatsoever with the United States.
The Respondent also rebuts that, despite its allegations, Complainant has failed to provide proof of the fact that Respondent knew or should have known Complainant and its trademark at the time of registering the disputed Domain Name.
Moreover, Respondent underlines that, although the use of a domain name privacy service can, in some circumstances, indicate a bad faith registration, this is not the case in the current situation as Respondent is an individual who has the right to keep his identity in confidentiality as he has a right to privacy, since the publication of his name and address in the Whois entry associated with the disputed Domain Name would have led to the creation of permanent public records of Respondent’s name and those records may never be deleted. Respondent thus asserts that it is logical and understandable that an individual would like to prevent this from happening and he should not be sanctioned for exercising his fundamental right to privacy.
With reference to Complainant’s claim that Respondent has “failed to make active use of a disputed domain name which is evidence of bad faith registration”, Respondent submits that, although this statement is true in general, in the case at hand Respondent has presented demonstrable preparations to use the disputed Domain Name with regard to its app “Five RR” and underlines that the period between the purchase of the disputed Domain Name and the launch of the website associated with the business is a period through which many startups pass, and that as long as there are reasonable preparations to use the relevant domain names, such periods should not constitute an evidence of bad faith.
Furthermore, Respondent contends that there is no evidence that the Complainant’s mark is well-known, considering the publicly available Wikipedia page of the Complainant does not show that the services of the Complainant are available in Arabic (the official language of Morocco) and that the revenues of Complainant in 2021 were USD 298 million which is usually not sufficient for a company to be classified as globally known.
Lastly, Respondent rebuts that the Complainant did not present any evidence indicating that, at the time in which the disputed domain name was registered, Complainant was engaged in the provision of any Artificial Intelligence (AI) – related services especially considering that the first evidence of Complainant’s association with such service became available on its website for the first time in 2023.
In view of the above, Respondent concludes that it registered the disputed Domain Name in good faith with the sole purpose of creating a medical app called “Five RR”, later realizing his limited financial and time resources, and deciding to postpone the project and sell the same to finance its research.
Respondent also submits that Complainant decided to engage in reverse domain name hijacking in order to use its trademark rights to obtain the disputed Domain Name without any proper legal basis engaging in the present proceeding only in 2023 following the launch of its artificial intelligence-related service.
FINDINGS
Complainant operates an online global marketplace at – registered on December 8, 2009 -, that connects freelancers and businesses with customers for the purchase of a wide range of goods and services under the trademark FIVERR.
Complainant has used its FIVERR mark on its website since at least as early as 2010.
Complainant owns, amongst others, the following trademark registration for its FIVERR mark:
– United States trademark registration No. 3981250 for FIVERR (word mark), filed on November 3, 2010 and registered on June 21, 2011, in international class 35.
The disputed Domain Name , was registered on June 25, 2020 and resolves to a web page where the disputed Domain Name is for sale at $50.000,00 USD.
DISCUSSION
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 disputed 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 disputed Domain Name; and
(3) the disputed Domain Name has been registered and is being used in bad faith.
Preliminary Procedural Issue: Complainant’s Additional Submission
The Panel notes that Complainant’s Additional Submission is mostly aimed at contesting Respondent’s contentions and is not based on additional circumstances that Complainant could not have been aware of at the time of the filing of the Complaint. The Panel finds that Complainant’ allegations contained therein, although certainly pertinent, are not decisive for the outcome of the case, which can thus be decided on the basis of the sole allegations contained in the Complaint and the Response.
Moreover, in light of the content of Complainant’s Additional Submission, which does not raise new circumstances not yet addressed by Respondent in the Response, the Panel does not deem appropriate to request further submissions from Respondent and, also bearing in mind the need for procedural efficiency, will now proceed to issue its Decision.
Identical and/or Confusingly Similar
Complainant has established rights in the FIVERR mark based on its United States trademark registration cited above. See GK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015), asserting that a complainant’s registration with the USPTO or any other governmental authority adequately proves its rights under paragraph 4(a)(i) of the Policy.
The disputed Domain Name incorporates Complainant’s FIVERR mark in its entirety with the mere addition of the “.ai” ccTLD, which is commonly disregarded in the assessment of identity of confusing similarity under the first element.
In view of the above, the Panel finds that Complainant has proven that the disputed Domain Name is identical to a trademark in which Complainant has established rights according to paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
Complainant is required to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed Domain Name under paragraph 4(a)(ii) of the Policy, then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case) and Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Based on the records, Complainant has not licensed, permitted, or authorized Respondent to use Complainant’s mark and there is no evidence that Respondent might be commonly known by the disputed Domain Name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the domain name under Policy 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant submitted that Respondent has not been using the disputed Domain Name, which undoubtfully corresponds to Complainant’s FIVERR mark, in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
The Panel acknowledges Respondent’s rebuttals to Complainant’s allegations and notes, however, that Respondent has failed to provide sufficient evidence to demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed Domain Name.
Indeed, in order to substantiate his claim that the disputed Domain Name was registered for use in connection with his “Five RR” application, Respondent submitted receipts to demonstrate that he had purchased a single license for 100+ App Sounds, a license to use app icons, a license for app and software website templates, licenses for using fonts and access to Publer and Swipe Pages, none of which however, included the indication of the name Fiverr allegedly selected by Respondent to identify its app. In addition, the two additional documents, submitted by Respondent as Annexes 5 and 12 to the Response and describing the purpose of the “Five RR” application, whilst mentioning the name of the app, do not include any date nor any additional information on the source of the documents and/or the web address or other location where they may have published.
Furthermore, as mentioned above, the disputed Domain Name has been pointed to a web page where the disputed Domain Name has been offered for sale at $50,000 USD, an amount well in excess of the documented out-of-pockets costs.
In view of the above, the Panel finds that, on balance of probabilities, Respondent did not register the disputed Domain Name with the intention to promote his application but, most likely, to gain profit from the sale of the disputed Domain Name to Complainant, owner of the identical FIVERR mark.
Thus, the Panel finds that Complainant has made a prima facie case and that Respondent has failed to demonstrate that he used the disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed Domain Name according to paragraph 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
The Panel finds that, in light of the prior registration and use of the Complainant’s FIVERR mark in connection with Complainant’s services online via its website at and considering the virtual identity of the disputed Domain Name with Complainant’s FIVERR mark, Respondent was likely aware of Complainant’s FIVERR mark at the time of registration.
Moreover, the Panel notes that disputed Domain Name has been pointed to a web page where the disputed Domain Name has been offered for sale at $50,000 USD, which far exceeds the documented out-of-pockets costs. In view of the circumstances of the case, particularly the identity of the disputed Domain Name with Complainant’s FIVERR mark and Respondent’s failure to demonstrate that he actually registered the disputed Domain Name to promote his application and not to target Complainant’s FIVERR mark, the Panel finds that, on balance of probabilities, Respondent registered the disputed Domain Name with the primary intent to sell it to Complainant at an amount exceeding the out-of-pocket costs, according to paragraph 4(b)(i) of the Policy. See Randstad Gen. Partner, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the respondent offered the domain name for sale on its website for $24,000).
The Panel further finds that, on balance of probabilities, Respondent has used the disputed domain name to intentionally attempt to attract internet users to his website for commercial gain, by creating a likelihood of confusion with Complainant’s FIVERR mark as to the source, sponsorship, affiliation or endorsement of his website according to paragraph 4(b)(iv) of the Policy.
In view of the above, the Panel finds that Complainant has proven that Respondent registered and is using the disputed Domain Name in bad faith according to paragraph 4(a)(iii) of the Policy.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.
For the reasons detailed above, Respondent’s request to make a finding of Reverse Domain Name Hijacking is denied.
Luca Barbero. Panelist
Dated: March 22, 2023
