The Complainant is Affin Bank Berhad of Kuala Lumpur, Malaysia, represented by Naqiz & Partners, Malaysia.
The Respondent is Affinity Partners of Massachusetts, United States of America, represented by Brown Rudnick LLP, United States of America.
The disputed domain name <affin.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2009. On September 24, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On September 24, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2009. At the Complainant's request, the matter was suspended from October 30, 2009 to February 4, 2010 in order to allow amicable settlement between the Parties. On February 10, 2010, at the Complainant's request, the Center re-instituted the administrative proceedings and advised the Parties that the due date for Response was February 15, 2010. On February 15, 2010, at the request of the Respondent and taking into account the Complainant's consent to the same, the Center extended the time to file a Response to February 26, 2010 in accordance with paragraph 5(d) of the Rules. The Response was filed with the Center on February 26, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on March 5, 2010. The Panel finds that it was properly constituted. 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.
The Complainant is a company incorporated in Malaysia. It is a licensed banking institution in that jurisdiction and is a subsidiary of Affin Holdings Berhad and part of the Affin Group of Companies. The Complainant is principally involved in banking and finance-related services.
The Complainant was first incorporated in 1975. It assumed its present name in 2000, from its previous name of Perwira Affin Bank.
The Affin Group operates its banking services under the AFFIN trademark. The Complaint details further the operations of the Complainant and its related financial entities. The Complainant also operates a website at “www.affinbank.com.my”. The Complainant has registered other domain names in connection with its business, including <affinonline.com>.
The disputed domain name was first registered in June 1995.
The Complainant claims to be the owner of various registered marks relating to its business. These include a device mark for AFFIN ACCESS, a device mark for AFFIN BANK as well as an (undetailed) logo for AFFIN. The Complainant is also an applicant for other marks relating to its business, which it indicates are pending.
The Complainant claims that the disputed domain name is identical and/or confusingly similar to its AFFIN mark, since it incorporates that mark in its entirety.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that it attempted to contact the Respondent but received no reply, and attaches a copy of a letter of demand it sent to the Respondent in May 2009. The Complainant says that the Respondent is not connected with it, it has not licensed or authorized the Respondent, the Respondent is not commonly known by the disputed domain name and is not making a noncommercial or fair use of the domain name. The Complainant says that the Respondent has used the disputed domain name to misleadingly divert Internet users.
The Complainant, finally, claims that the Respondent has registered and used the disputed domain name in bad faith, for the purpose of paragraph 4(b)(iii) and (iv) of the Policy. The Complainant says that bad faith may be inferred from the registration of a well-known mark. The Complainant refers to various past cases decided under the Policy.
The Respondent denies the claims against it. The Respondent says that it is part of the Affinity Marketing Group, and provides services in connection with marketing and customer loyalty programs. The Respondent's business is more fully described at its website at “www.affinitymg.com”.
The Respondent says that it has used the disputed domain name, which is an abbreviation for its “house mark”, “Affinity”, in good faith, and years before the Complainant took its name. It says it has long-standing rights in the domain name. The Respondent also refers to a list of its affiliates which also use “Affinity” as part of their corporate name. For a number of years the Respondent used the disputed domain name as its email address, and to resolve to a website at “www.affinitypartners.net”. The Respondent says that, at the time it registered the disputed domain name, it had never heard of the Complainant.
More recently, the Respondent says that it has not used the disputed domain name. The Respondent says that the website at the disputed domain name was created and is operated by the Registrar, under a policy which gives the Registrar the right to generate content for domain names that do not point to active websites. The Respondent says that this is evident from a notice at the bottom of the webpage, which states that the website is “owned and operated by Network Solutions”, as well as another notice in which Network Solutions disclaims “knowledge of whether any content on this page violates any third party intellectual property rights”. The Respondent says that it was not aware of this policy until after the Complaint was filed.
The Respondent claims that the Complainant is trying to reverse hijack the disputed domain name. The Respondent says that the Complainant should have been aware of the information outlined above before it filed the Complaint. Even if it did not, the Respondent says that it provided this information promptly by email to the Complainant on receiving notice of the Complaint.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
The Panel finds that the Complainant has failed to prove its case under paragraphs 4(a)(ii) and (iii) of the Policy for the reasons discussed below. In addition, the Panel discusses the Respondent's request for a finding of reverse domain name hijacking.
The first thing which a complainant must establish under paragraph 4(a)(i) of the Policy is that it “has rights” in a mark. Most routinely, such rights can be established by showing evidence of a trademark registration, issued in at least one jurisdiction.
In this case the Complainant claims that it has a suite of registered marks and pending applications. In support, the Complainant refers to an attachment to the Complaint. The attachment provides no direct evidence (such as a copy of a trademark certificate) of those marks. Rather, the attachment sets out a list, in table form, of marks which the Complainant claims to own. The list does not indicate when the marks were registered.
Ultimately, the Complainant bears the onus of establishing, and providing evidence to support, its rights in a mark. The relevant attachment to the Complaint is no more than an unsupported claim to various marks. Nowhere does the Complaint provide direct evidence of the registration of those marks.
The Complainant provides some evidence of the use of its marks. The Complainant provides a copy of its annual report for 2008, the front of which features the apparent marks for AFFINBANK, AFFINHOLDINGS, and AFFIN. The Complainant also provides evidence of the use of AFFINBANK on its website. However, this is not strong evidence that the Complainant owns marks corresponding to those terms. Those terms (e.g. AFFINHOLDINGS) do not all correspond to marks in which the Complainant claims rights.
Despite the lack of evidence from the Complainant on this ground, the Panel has, on balance, found that the Complainant sufficiently “has rights” in a mark. UDRP panels have often accepted a fairly low threshold of proof for a complainant under paragraph 4(a)(i) of the Policy. (See e.g. Texans For Lawsuit Reform, Inc. v. Kelly Fero, WIPO Case No. D2004-0778; Levantur, S.A. v. Media Insight, WIPO Case No. D2009-0608.) Further, the Respondent has not contested that the Complainant has relevant trademark rights. There is no dispute that the Complainant is a substantial business enterprise which would be expected to have rights in the marks it uses as such.
Having accepted that the Complainant relevantly “has rights” in a mark, the question is whether the disputed domain name is confusingly similar to that mark. The Complaint refers vaguely to “the ‘AFFIN' trademark”, but does not more clearly indicate whether it claims that some or all of its claimed marks are confusingly similar to the disputed domain name. For the purpose of this ground, the Panel considers that the disputed domain name is likely to be confusingly similar to one of the Complainant's claimed trademarks: such as the logo AFFIN referred to in the Complainant's attachment.
For these reasons, the Complainant has established this first element.
The Complainant has failed to demonstrate that the Respondent lacks rights or legitimate interests. Relevantly, paragraph 4(c) of the Policy provides that the following circumstances may demonstrate a respondent's rights or legitimate interests:
“(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights;..”
The Respondent provides evidence to support both of these circumstances. In relation to paragraph 4(c)(i), the Respondent explains that it, as part of the “Affinity Marketing Group” and before notice of this dispute, has provided services in connection with marketing and customer loyalty programs. While the Respondent does not provide substantial direct evidence to support this claim, the Panel considers it plausible having regard to the name of the Respondent, the nature of the Respondent's website at “www.affinitymg.com”, the Respondent's long standing registration of the disputed domain name, as well as the Respondent's use of that domain name in connection with email from at least 1999, of which it provides direct evidence.
As to paragraph 4(c)(ii), the Respondent is listed as Affinity Partners. The disputed domain name includes an obvious abbreviation (“affin”) of that name. As noted above, the Respondent also provides evidence that it used the disputed domain name for the purpose of email addresses (i.e. [name]@affin.com). In that way, it is evident that the Respondent was using the disputed domain name to identify itself to others. There is an inference that it was commonly known by that abbreviation for that reason. In the context of all the evidence, the Respondent's claim in relation to this ground of the Policy is also plausible. In any event, having regard to the Panel's finding under the third element below, it is ultimately unnecessary for the Panel to record a definitive conclusion as to the merits of the case under the second element of the Policy.
The fundamental problem for the Complainant in this case is that it has failed in these proceedings to establish that the Respondent registered and has used the disputed domain name in bad faith. The Complainant says that bad faith may be inferred because its mark is well-known. The Complainant claims, in effect, that the Respondent has acted in bad faith as described in paragraphs 4(b)(iii) and (iv) of the Policy.
The Complainant's contentions face three difficulties. Firstly, the disputed domain name was first registered by the Respondent in 1995. By comparison, the Complainant has provided no direct evidence of the first date of the claimed registration of its marks. The issue this raises is addressed in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions as follows:
“3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?
Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.”
If the Panel cannot confirm whether the Complainant's marks subsisted before the registration of the disputed domain name, it is therefore difficult to conclude that the registration of the disputed domain name could have been in bad faith.
Secondly, the Respondent provides a plausible case against the Complainant's arguments of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. The Respondent provides evidence of registering and using the disputed domain name in connection with its business name, and for associated email addresses. This evidence directly counters the Complainant's argument that the Respondent's intention was to unfairly exploit the Complainant's AFFIN trademark. The Respondent also strongly disputes the Complainant's contention of bad faith arising from the “pay per click” parking website to which the disputed domain name reverts. The Respondent provides evidence that the links on that site were generated automatically, under a policy of the registrar applied to domain names not connected to an active website. The Panel accepts in principle that the fact that pay-per-click links may have been “automatically” generated by a third party will not always be a valid defense to a claim of bad faith use, especially in cases where such links may include advertisements for businesses in seeming competition with that of the complaining rights holder. For example, prior panels have recognized that there are cases in which domain name registrants may be found to be ultimately responsible for content appearing on websites at their disputed domain names. See e.g. Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. But that does not mean that a UDRP complainant is thereby freed from an obligation to establish a respondent's bad faith intent at the time of domain name registration in such cases. See e.g. Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455 and Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716. Nor, in this Panel's view, does it mean that a complainant in such cases need not show (or least point to reasonable ground for inferring) that the respondent did on balance have the targeting of the complainant's mark in mind, both at the time it originally registered the disputed domain name (in this case, back in 1995), and in subsequently using (or allowing the domain name to be used) in a certain manner. In the circumstances of the present case, having regard also to the Panel's observations under the second element above, the Complainant has not succeeded in persuading this Panel that this is the case here.
Thirdly, and perhaps more critically, there is little evidence to support a finding that the Respondent, with its address in the United States, was likely to have been aware of the Complainant, based in Malaysia, in 1995 when the disputed domain name was registered. While the Complainant provided a substantial explanation of its more recent business from around 2008, no information or evidence was provided as to its reputation around 1995.
The Respondent seeks a finding of reverse domain name hijacking against the Complainant. Reverse domain name hijacking is defined in paragraph 1 of 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 makes it clear that such a finding is declaratory in nature. As noted by previous panels: “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.” Rohl, LLC v. ROHL SA, WIPO Case No. D2006-0645.
The Panel does not make such a finding in this case. This is because, although some of the evidence in the Response might have been apparent to the Complainant at the time the Complaint was filed, most appears to be peculiarly within the knowledge of the Respondent. That includes evidence of the Respondent's business, as well as its use of the disputed domain name in connection with email. That evidence, being within the possession of the Respondent, was not open to reasonable investigation by the Complainant.
In addition, the Panel has taken into account that the Complainant sent a letter of demand to the Respondent in May 2009. For reasons not explained in the Response, the Respondent did not respond to that letter until December 2009 – after the filing of the Complaint. As such, it cannot be said that the Complainant should have been aware of the Respondent's likely case before the Complaint was filed. As noted above in relation to Rohl, LLC v. ROHL SA, supra, previous panel authority refers to the possibility of reasonable investigation for a potential complaint. Further, the Respondent's claim that it sought to avoid “needless expense” by sending a letter to the Complainant in December is unconvincing. By that time the Complainant had already incurred expense by filing the Complaint.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Dated: March 19, 2010