Decision

In November 2020, domain name FinWise.com was sold for $4190 at DropCatch.com auction (reports NameBio.com). While Finwise BV happens to be the name of a Belgium based financial advisory company, having official website at finwise.eu.

The website reads that Finwise was founded in 2016 and focuses on early stage fundraising advisory. They also own a Trademark with EUIPO. They brought up a UDRP immediately thereafter in November itself.

The Respondent Mr Anne Jan Hempenius of NameAvenue opted for a three member panel but still lost the UDRP, the decision is pending pubication.

The three member panel included Badgley Robert A., Kennedy Matthew (Presiding) and Petillion Flip Jan Claude.

More details: WIPO Case No: D2020-3135

A well known criminal lawyer from Norway, Mr Per Danielsen brought a UDRP before NAF over the domain name advokat-danielsen.com. The website has the following summary in a local language and further information on the website:

As a former client of lawyer Per Danielsen, I would like to share my expensive experience.

If you do not have time to read everything, then the short message is that I would STRONGLY WARN against the use of the fraudsters Per Danielsen, Håkon Danielsen and the law firm Danielsen & Co. AS.

If there is one thing I am not proud of, it is the day we chose to focus on Per Danielsen.  But in my defense we were entrepreneurs with little legal experience, and with lawyers, judges and such.

And we thought Danielsen’s marketing on his own website: That he had experience with libel cases.  Nothing should turn out to be from the truth. About. 20 pages of process papers were to cost us close to NOK 700,000, – and that in a case that we lost !

The Complaint is a registered company but does not hold any Trademark rights in the firm name. While the Respondent claimed to have right to freedom of speech and expression under the Universal Declaration of Human Rights article 19 under which he shared his bad experience upon the Domain Name. The Respondent further claimed the lack of Trademark rights with the Complainant and added there are numerous Lawyers in Norway with similar name, so the Complainant does not have exclusive rights in the domain name.

The Respondent also argued:

If lawyer Danielsen thinks that I have overthrown my rights of free expression, he is free to take me to the Norwegian court. But he has not done so because we both know that what I share with the public is the actual truth. The website at <advokat-danielsen.com> is not a commercial site. It is an information site where I share my experience with Per and Håkon Danielsen. There is absolutely no chance for any visitor to be misled. I don’t make money on any advertising or anything else.

The Panelist analyzed the unregistered or common law rights in the mark in terms of WIPO overview and that means the Complainant is required to prove secondary meaning in the name. Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

Further, rights in the personal name in terms of Para 1.5 of WIPO Overview 3.0, which clearly lays down that such rights can be upheld only where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.

The Panelist held that having a similar domain name <advokat-danielsen.no>, no use of name in Trade or Commerce, registration of firm name with the Norwegian official register of companies since February 17, 2000, does not give any rights to the Complainant under first clause of the UDRP Policy. Accordingly, the Panel held:

Complainant has failed to establish that it has rights in a trade or service mark. Under these circumstances the Complaint must fail and it is unnecessary and inappropriate for the Panel to consider the remaining elements.

DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <advokat-danielsen.com> domain name REMAIN WITH Respondent.

Before National Arbitraional Forum

Enterprise Holdings, Inc. and Vanguard Trademark Holdings USA LLC v. Zhichao Yang
Claim Number: FA2012001923923

In the said matter, the Complainants were Enterprise Holdings, Inc. and Vanguard Trademark Holdings USA LLC, while the Respondent Mr Zhichao Yang from China.

The domain names at dispute were enterpriseaurofinance.com>, <nationalcarfinancial.com>, and <nationalcarefinacial.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.

The Panelist appointed was Mr. Paul M. DeCicco.

The Complainat Companies, namely Enterprise Holdings, Inc. and Vanguard Trademark Holdings USA LLC, are engaged in running and operating separate rental car companies throughout the world. They hold Trademark registration for ENTERPRISE, NATIONAL, and NATIONAL CAR RENTAL in USA having registered with USPTO.

Complainant alleged that the Complaint was within the preview of NAF Rules read with WIPO Overview:

Complainant Enterprise Holdings, Inc. is the parent company of Enterprise Rent-A-Car and National Car Rental and owns the trademarks related to Enterprise Rent-A-Car. Complainant Vanguard Trademark Holdings USA LLC, is an affiliate of Enterprise Holdings, Inc. and owns the trademarks related to National Car Rental. As a result, both Complainants own and license service marks to operating subsidiaries in the car rental business. Respondent has targeted the trademarks owned by both Complainants in a similar fashion. In light of the common issues and the conduct of Respondent related to both Complainants it would be equitable and procedurally efficient to permit the requested consolidation. Complainants further submit that their request meets the relevant criteria that were set forth in Section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Preliminary issues considered by the Panelist was:

Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” (emphasis added). The trademark registration records presented in Complainants’ Addendum concerning the at-issue domain names indicates that the trademarks that form the basis of the dispute under Policy ¶ 4(a)(i) are not held by a common entity.

The Panelist held that the Complainants have not provided any details regarding the nature of the “specific common grievance” or what “individual rights” they are referring to or how they are related to one another. Furthermore, Complainants offer no evidence of the details of the relationship (nexus) between the two Complainants which might indicate that both Complainants have rights in the each of the ENTERPRISE, NATIONAL, and NATIONAL CAR RENTAL trademarks such that each Complainant can “claim to have rights to all domain names listed in the complaint.” Argument that the relevant trademarks may have been “targeted in a similar fashion” or that both Complainants have trademarks in the same area of commerce, i.e. car rentals, is unavailing as to each Complainants’ rights to all the at-issue domain names.

Given the foregoing the record fails to show that joining the two Complainants is proper under Supp. Rule 1(e). Rather than arbitrarily retaining one of the Complainants and its relevant mark(s) and striking the other Complainant and its relevant mark(s) and then proceeding to a decision on the merits regarding the remaining Complainant, the Panel dismisses the dispute in its entirety.

DECISION
Having found that the Complainants are misjoined pursuant to Supplemental Rule 1(e), accordingly it is Ordered that the instant dispute be dismissed.

WIPO Overview 3.0 Para 2.3, states:

“Panels have addressed a range of cases involving claims that the domain name corresponds to the respondent’s actual given name (including in combination with initials), stage name, nickname, or other observed moniker.For a respondent to demonstrate that it (as an individual, business, or other organization) has been commonly known by the domain name or a name corresponding to the domain name, it is not necessary for the respondent to have acquired corresponding trademark or service mark rights.”

The Australian Magazine FlyLife Pty Ltd currently having official website at FlyLife.com.au, filed UDRP through it’s CEO Mr Leighton Adem, named as Complainant in the UDRP / WIPO Case Number D2020-1905 over the Domain name: flylife.com.

Flylife was established in 1995 and has registered Trademarks in Australia and New Zealand since 1996 and 2001 respectively. The Complainant allages that the Domain Name registered since 2001 has been parked and there has been no legitimate / bona-fide offering of goods and services. The parked page also advertises as Domain Name FlyLife.com on sale and the Respondent already had many UDRP decisions against hime, so all evidences Bad Faith.

The respondent in the matter was Mr Jaewan Lee from Republic of Korea, he submitted that Domain Name is composed of distionary words and is weak in nature. The Complainant is not known or famous to have rights in the domain name, when the disputed domain name has not been used in bad faith.

The Complaint has been analyzed on the solde ground of Bad Faith and denied as follows:

A. Identical or Confusingly Similar

As the element of bad faith was not satisfied, the Panel finds it unnecessary to address this element.

B. Rights or Legitimate Interests

As the element of bad faith was not satisfied, the Panel finds it unnecessary to address this element.

C. Registered and Used in Bad Faith

As the Complainant pointed out, the Complainant has trademark registrations for the FLYLIFE trademark in Australia and New Zealand, and the Respondent has had negative UDRP decisions rendered against him, which acknowledged the Respondent’s bad faith registration and use of several domain names. However, the Panel finds that the term “flylife” is not so unique as to suggest or raise a strong inference that the Respondent targeted the Complainant’s trademark and thus acted in bad faith when obtaining registration for or using the disputed domain name. In fact, there are several other parties using “flylife” as a trade name, including a clothing company in the United States of America, a biomedical company in Italy, and a fly fishing supplies company in Canada. Furthermore, while the Complainant cites prior UDRP cases involving the Respondent, these cases do not by themselves provide evidence of bad faith registration or targeting of the Complainant’s trademark by the Respondent in the circumstances of this case, and the Complainant has not otherwise provided evidence of such bad faith registration or targeting. The Panel also notes that linking a domain name to a domain parking site and advertising it for sale, while perhaps insufficient to demonstrate bona fide use, are not conclusive evidence of bad faith use. In that regard, this use of the disputed domain name does not support a finding of bad faith in these circumstances, noting, inter alia, the composition of the disputed domain name comprising two dictionary terms and the lack of evidence of targeting the Complainant’s trademark rather than the dictionary elements of such mark.

Accordingly, the Panel finds the record and evidence insufficient to reasonably establish this element.

Decision

For the foregoing reasons, the Complaint is denied. 

Ik-Hyun Seo 
Sole Panelist 
Date: December 4, 2020