RDNH finding.
HugeDomains has fought off the UDRP brought against one of its domains, FastMill.com, and the decision was sealed with a finding of Reverse Domain Name Hijacking.
The Complainants are FPT Industrie S.p.a. of Italy and REM Industrie S.r.l. of Italy, represented by Brioschi IP, Italy.
According to the UDRP:
“Complainant holds registered rights in the FTP FAST MILL trade mark, registered in Italy on June 17, 2008. The second Complainant filed an application for registration of the FAST MILL trade mark in Italy on March 10, 2017.”
There was a problem, however, and HugeDomains pointed it out:
“The Complainants failed to establish that they have rights in the FAST MILL mark. The Complainants only have trade mark rights in FPT FAST MILL, and do not own any trade mark rights in the FAST MILL mark. Instead, the Complainants have a pending trade mark application for the FAST MILL mark, which has not been approved or granted. The Complainants’ FPT FAST MILL trade mark is different to the Disputed Domain Name.”
A three member panel at the WIPO denied the request of the Complainant to transfer the domain.
They also slapped them with a finding of Reverse Domain Name Hijacking, for abusing the policy:
“In this case, the Complainants filed the Complaint only after its attempt to purchase the Disputed Domain Name from the Respondent was unsuccessful (i.e. the Respondent did not respond to any of the Complainants’ offers). The general weak nature of the Complaint, the lack of evidence and the Complainants failure to fully address the 3 requirements under paragraph 4(a) of the Policy demonstrates that the Complainants were likely aware that they did not have a legitimate case against the Respondent, and filed the Complaint with the primary intent of obtaining the transfer of the Disputed Domain Name in bad faith. This is supported by the fact that the Complainants only sought to apply for the registration of the FAST MILL mark in Italy after its offer to purchase the Disputed Domain Name from the Respondent remained unanswered. It is also clear that this was done in a misguided attempt to bolster or lend legitimacy to the Complaint. The Complainants also misrepresented the facts of the case in the Complaint.”
For the full text of this decision, see below:
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FPT Industrie S.p.a. and REM Industrie S.r.l. v. HugeDomains.Com
Case No. D2017-08421. The Parties
The Complainants are FPT Industrie S.p.a. of Italy and REM Industrie S.r.l. of Italy, represented by Brioschi IP, Italy.
The Respondent is HugeDomains.Com of Denver, Colorado, United States of America, internally represented.
2. The Domain Name and Registrar
The disputed domain name <fastmill.com> (“Disputed Domain Name”) is registered with WorthyDomains LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2017. On April 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 27, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 10, 2017, the Center notified the Complainants that in order to file a single complaint brought by multiple complainants, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria has been met. The Center invited the Complainants to submit an amended Complaint by May 12, 2017. On May 11, 2017, the Complainants filed an amended Complaint.
The Center verified that the amended 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 May 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2017. The Response was filed with the Center June 1, 2017.
The Center appointed Gabriela Kennedy, José Carlos Erdozain and The Hon Neil Brown Q.C. as panelists in this matter on June 29, 2017. 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 Complainants are entities established in Italy that manufacture milling and boring machines. The first Complainant holds registered rights in the FPT FAST MILL trade mark, registered in Italy on June 17, 2008.
The Respondent registered the Disputed Domain Name on February 28, 2012. The Respondent is in the business of registering and selling generic domain names.
5. Parties’ Contentions
A. Complainants
The Complainants’ contentions can be summarized as follows:
(a) The first Complainant holds registered rights in the FTP FAST MILL trade mark, registered in Italy on June 17, 2008. The second Complainant filed an application for registration of the FAST MILL trade mark in Italy on March 10, 2017. Both Complainants have been using the FAST MILL mark worldwide in relation to their catalogue of products. The Disputed Domain Name is identical to the Complainants’ FPT FAST MILL and FAST MILL trade marks, as the core part of such trade marks are the words “fast mill”. The Complainants allege that the FAST MILL mark has a meaning that is strictly connected to the Complainants’ business.
(b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence that the Respondent is using or has made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent has never been commonly known by the Disputed Domain Name, as when you click on the link shown on the website to which the Disputed Domain Name resolves, it leads you to the Respondent’s website at “www.hugedomains.com”. Lastly, the Complainants assert that the Respondent is not using the Disputed Domain Name in any manner, whether for commercial or noncommercial purposes.
(c) The Disputed Domain Name has been registered in bad faith because it is being offered for sale to the Complainants. The Disputed Domain Name was primarily registered for the purposes of selling it to the Complainants or their competitors for valuable consideration in excess of the Respondent’s out-of-pocket expenses directly related to the Disputed Domain Name.
B. Respondent
The Respondent’s contentions can be summarized as follows:
(a) The Complainants failed to establish that they have rights in the FAST MILL mark. The Complainants only have trade mark rights in FPT FAST MILL, and do not own any trade mark rights in the FAST MILL mark. Instead, the Complainants have a pending trade mark application for the FAST MILL mark, which has not been approved or granted. The Complainants’ FPT FAST MILL trade mark is different to the Disputed Domain Name.
(b) The Complainants have not been using the FAST MILL mark in their catalogues or marketing materials, as asserted by them. Rather, the Complainants’ evidence shows that they have been using “FPT planet”, “FPT technology”, “FPT world”, etc. Nowhere in the evidence provided by the Complainants is there definitive use of the term “fast mill” without the term “fpt”.
(c) The Respondent registered the Disputed Domain Name on February 29, 2012. At the time of registration, the Respondent had no knowledge of the Complainants or the FPT FAST MILL trade mark. The Complainants are currently operating their business from the domain name <fptfastmill.com>, which they first registered on July 28, 2014 (more than 2 years after the Respondent registered the Disputed Domain Name). Further, the Complainants’ domain name is still under construction, according to the website to which it resolves.
(d) The Respondent registered the Disputed Domain Name in 2012. On February 20, 2017, the Complainants submitted an unsolicited offer to the Respondent to purchase the Disputed Domain Name for USD 1,500. The offer was not accepted by the Respondent. On March 10, 2017, the second Complainant filed an application for registration of the FAST MILL trade mark in Italy, which is still pending. On May 12, 2017, the Respondent received a notice of the Complaint. The Respondent asserts that the Complainants only applied to register the FAST MILL trade marks due to a failed attempt to buy the Disputed Domain Name from the Respondent, and has sought to base the Complaint on such trade mark application.
(e) The words “fast” and “mill” are generic words, and the Complainants cannot claim exclusive worldwide rights in relation to them, especially since many other companies are using “fast mill” (i.e. in their business names or as part of their registered trade marks). The Complainants did not create or coin the term “fast mill”. The Complainants’ assertion that “fast mill” is strictly connected to their business and they are the only entities entitled to use “fast mill” is false.
(f) The Respondent has rights and legitimate interests in the Disputed Domain Name, as it is using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent is a reseller of generic domain names, and owns a wide portfolio of generic domain names. The sale of domain names containing generic terms amounts to a bona fide offering of goods and services (e.g., Franklin Mind Fed. Credit Union v. GNO, Inc., NAF Claim No. 860527; Joseph L. Carpenter v. Domain Administrator/Original Web Ventures Inc., NAF Claim No. 1578228; and General Machine Products Co. v. Prime Domains, NAF Claim No. 92531). The Respondent owns over 1,000 domain names that begin with the word “fast” and over 200 domain names that end with the word “mill”, and none of them have anything to do with the Complainants.
(g) The Complainants have failed to establish that the Respondent registered and is using the Disputed Domain Name in bad faith. The Respondent had never heard of the Complainants before this case, and the parties have never had any direct communications. The Complainants claim that the Respondent registered the Disputed Domain Name for the purposes of selling it to the Complainants or their competitors for profit. However, the Complainants actually made unsolicited and voluntary offers to the Respondent to purchase the Disputed Domain Name for USD 1,500. The Respondent never responded to the Complainants’ offer. Therefore, there is no evidence of bad faith. The Complainants applied to register the FAST MILL trade mark in Italy and filed the Complaint only after its offer to purchase the Disputed Domain Name was not accepted.
(h) The Respondent is a reputable company that engages in legitimate business practices (see Clark Equipment Company v. Domain Admin/HugeDomanis.com,NAF Claim No. 1508001634156). The Complainants’ assertions are vague and unsupported by evidence, and they have filed these proceedings in abuse of the Policy to illegitimately acquire the Disputed Domain Name after their attempt to purchase the Disputed Domain Name was unsuccessful. The Complainants have failed to prove that the Respondent targeted the Complainants or had them in mind when it registered the Disputed Domain Name.
(i) The Respondent requests a finding of Reverse Domain Name Hijacking. The Complainants have disregarded and misrepresented the facts, and have disregarded the Policy and Rules. The Complainants do not have rights in the FAST MILL trade mark and have brought the Complaint in bad faith. The Complainants only filed an application for registration of the FAST MILL trade mark and submitted the Complaint, after their attempt to purchase the Disputed Domain Name from the Respondent was unsuccessful. The Complainants’ representatives should have known that the Complainants could not establish the required elements under the Policy. The Complainants have lied and given false representations regarding the facts in order to obtain the Disputed Domain Name in bad faith after failed negotiations.
6. Multiple Complainants
It is well-established that multiple complainants may bring a single complaint against a respondent, if “(i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation” (see section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Complainants assert that they are affiliated entities (i.e. the same individual is either the vice president or president of the Complainants). The Complainants also allege that the FPT FAST MILL trade mark was registered under the name of the first Complainant, whilst the pending trade mark application for FAST MILL was filed by the second Complainant, and both Complainants have allegedly been using the marks. Even though the Complainants’ submissions are lacking, the Panel accepts that the Complainants appear to have a common grievance against the Respondent and it would be equitable and efficient to permit the consolidation. See HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Li Meidan, WIPO Case No. D2015-0278.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants are required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The second Complainant filed an application to register FAST MILL on March 10, 2017. The Panel notes that this application was only filed one month prior to the filing of the Complaint. Either way, the application is still pending and cannot amount to relevant registered trade mark rights for the purposes of this Complaint.
The Complainants contend that they also have unregistered rights in the FAST MILL mark by virtue of their use of the mark. The Complainants have not stated for how long they have allegedly been using the FAST MILL mark, nor have they produced any evidence of such use. It is well established that common law or unregistered trade mark rights can be relied on for the purposes of the first limb. However, in order to establish that unregistered trade mark rights exist, the Complainants must show that their use of the word has been such that it has become a distinctive identifier associated with the Complainants or their products or services (see section 1.3 of WIPO Overview 3.0; Tough Traveler, Ltd. v. Kelty Pack, Inc., WIPO Case No. D2000-0783; and Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083). The threshold is higher where a complainant seeks to claim unregistered trade mark rights in a generic or descriptive word, which is inherently not distinctive (see Essential Travel Ltd v. essentialtravel.com and Underground Digital Media Ltd, WIPO Case No. D2004-0205).
In this case, the word “fast” and “mill” are clearly generic words. It is curious that the Complainants never filed trade mark applications to register FAST MILL until one month before the Complaint was filed. This seems to be an indication to the Panel that the Complainants themselves did not believe they had any protectable rights in the mark, and the Complainants have simply sought to file the trade mark application in a misguided attempt to bolster the chances of success of this Complaint.
Further, although the Complainants have provided some limited evidence alleging use of the FAST MILL mark, such evidence in fact merely shows that they have been promoting their products under the FPT FAST MILL & device mark, FPT FAST MILL trade mark, and other variations. There is no evidence that the Complainants have been consistently using for many years the FAST MILL mark worldwide, such that the words “fast mill” would come to be uniquely associated with the Complainants. To establish unregistered trade mark rights, which will effectively prevent all other users from being able to use a generic word, the threshold is significantly higher. In light of the above, the Panel finds that the Complainants have failed to establish any unregistered or common law rights in the FAST MILL mark.
However, whilst the Panel does not find that the Complainants have succeeded in showing that they have rights in the FAST MILL mark, the Panel accepts that the first Complainant has rights in the FPT FAST MILL trade mark, based on its 2008 trade mark registration in Italy.
The Panel finds that the Disputed Domain Name is confusingly similar to the first Complainant’s FPT FAST MILL mark.1 It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic top-level domain extension, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Accordingly, the Panel finds paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview 3.0 states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Disputed Domain Name currently resolves to a parking page which contains sponsored links. As stated in paragraph 2.9 of the WIPO Overview 3.0, use of a domain name to post parking pages or pay-per-click links “would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”. A common example of such permissible use, which may amount to a right or legitimate interest, is where the pay-per-click links genuinely relate to the generic meaning of the domain name and the respondent had no intention of targeting the complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; US Nutraceuticals, LLC v. Telepathy, Inc. c/o Development Services, NAF Claim No. 365884).
The Panel accepts that the words “fast” and “mill” are generic terms. The Complainants have failed to establish that “fast mill” is uniquely associated with the Complainants, such that any use of the words in a domain name would mislead users into believing that a resulting website is associated with the Complainants (see the Panel’s findings in relation to the first element above).
The Disputed Domain Name resolves to a parking page which largely contains pay-per-click links that have no relation to the Complainants or their FPT FAST MILL trade mark. There is no evidence suggesting that the Disputed Domain Name was registered for any other purpose other than because it consisted of generic words. As a matter of fact, the Respondent has registered over 1,000 other generic words as domain names that incorporate the word “fast” (e.g., <fastmetals.com>, <fastperson.com>, <fastmachinery.com>, <faschemical.com>, <fastcoatings.com> and <fastlevel.com>). The Respondent also owns over 200 domain names that incorporate the generic word “mill” (e.g., <hairmill.com>, <barmill.com>, <wisewill.com>, <roadmill.com>, <talkmill.com> and <directmill.com>). The Disputed Domain Name was registered in 2012 whilst the Complainants themselves only registered their <ftpfastmill.com> domain name in 2014. Despite the fact that the Complainants’ domain name was registered in 2014, to-date it resolves to a webpage that states that it is still under construction.
The Respondent appears to be a domainer which regularly registers domain names that include generic words for the purposes of selling them. Such business activities can be legitimate and are not in themselves a breach of the Policy, so long as they do not encroach on a third party’s trade mark rights. In this case, no evidence has been provided to establish that the Respondent has engaged in registering domain names that take advantage of the Complainants’ or a third parties’ trade mark rights. The Respondent simply chooses to register generic words as domain names.
Taking all of the above into account, the Panel concludes that the Respondent has rights and legitimate interests in the Disputed Domain Name.
The Panel finds that the Complainants have failed to satisfy paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent appears to be in the business of regularly registering and selling domain names that include generic words. The Disputed Domain Name incorporates the generic words “fast” and “mill”, and is consistent with the extensive domain name portfolio held by the Respondent, which incorporates such generic words. There is no evidence that the Respondent has specifically targeted the Complainants in relation to its registration and use of the Disputed Domain Name. Further, the Complainants have failed to establish that “fast mill” is uniquely associated with the Complainants, such that the Respondent must have known of the Complainants and had the Complainants in mind at the time it registered the Disputed Doman Name. In fact, the Complainants only sought to register the FAST MILL trade mark one month before the Complaint was filed, and 5 years after the Disputed Domain Name was registered by the Respondent.
The Panel finds that the Complainants have failed to satisfy paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined under the Rules as “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 “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”.
The onus probandi is on the Respondent to prove that the Complainants filed their Complaint in bad faith for the purposes of Reverse Domain Name Hijacking, and mere lack of success of the Complaint is not in itself sufficient for a finding of Reverse Domain Name Hijacking.
In this case, the Complainants filed the Complaint only after its attempt to purchase the Disputed Domain Name from the Respondent was unsuccessful (i.e. the Respondent did not respond to any of the Complainants’ offers). The general weak nature of the Complaint, the lack of evidence and the Complainants failure to fully address the 3 requirements under paragraph 4(a) of the Policy demonstrates that the Complainants were likely aware that they did not have a legitimate case against the Respondent, and filed the Complaint with the primary intent of obtaining the transfer of the Disputed Domain Name in bad faith. This is supported by the fact that the Complainants only sought to apply for the registration of the FAST MILL mark in Italy after its offer to purchase the Disputed Domain Name from the Respondent remained unanswered. It is also clear that this was done in a misguided attempt to bolster or lend legitimacy to the Complaint. The Complainants also misrepresented the facts of the case in the Complaint. For example, the Complainants state that the Disputed Domain Name “has been offered for selling to the complainant [sic]”. However, no such offer was directly made to the Complainants – it was the Complainants who approached the Respondent and offered to purchase the Disputed Domain Name for USD 1,500. The Complainants were also legally represented and should have known that they would be unable to satisfy all the elements required under paragraph 4(a) of the Policy.
The Panel therefore finds that the Complaint was made in bad faith as an attempt at Reverse Domain Name Hijacking, constituting an abuse of this administrative proceeding.
8. Decision
For the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Presiding PanelistJosé Carlos Erdozain
PanelistThe Hon Neil Brown Q.C.
Panelist
Date: July 7, 20171 Panellist Brown takes a different view on this issue and would find that the Disputed Domain Name is not confusingly similar to the trademark. That is so because the Policy imposes a specific task on the panel to decide if the domain name is similar to the trade mark and, if so, whether that similarity is confusing, meaning that the panel concludes on the balance of probabilities that an objective observer would think the domain name was invoking the trademark. Proving the similarity is not enough; the similarity must give rise to some degree of confusion. An objective observer, presented with the Disputed Domain Name and the trade mark in the present case and asked to make the comparison, would probably conclude that the two were similar, as they both include the words “fast” and “mill”. But the Panel, like the objective observer, must ask the further question: is the similarity such that the Disputed Domain Name would be confused with, or thought to be invoking or referring to, the trade mark? Whoever makes this decision would be entitled to say, as the Panel has rightly ruled, that the Disputed Domain Name is a generic expression i.e., it is expressing the concept or the notion of the “fast mill” or “fastmill”, and fast mills in general. But the trade mark is entirely different and by including the letters “FPT”, it specifically relates only to one that has been given the FPT name or brand and not to the wider concept or genus as covered by the Disputed Domain Name. Accordingly, applying the balance of probabilities, this Panellist concludes that anyone making the comparison would probably absorb this substantial difference and conclude that there could be no confusion when the two expressions are entirely different.
