WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FinanceMalta v. Adriano Cefai
Case No. D2011-1246
1. The Parties
The Complainant is FinanceMalta of Valletta, Malta, represented by Bernice Buttigieg, Malta.
The Respondent is Adriano Cefai of Valletta, Malta.
2. The Domain Name and Registrar
The disputed domain name <financemalta.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2011. On July 22, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2011, 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. 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 July 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2011. The Response was filed with the Center on August 17, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 25, 2011. 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.
On September 1, 2011, the Complainant filed a supplemental submission with the Center and on September 5, 2011 the Respondent responded to that submission. The Panel has read those submissions, but has not found them helpful in coming to a decision on the merits of the dispute. They relate, to a great extent, to matters arising after the Complainant had complained to the Respondent about the Domain Name and have little bearing on whether or not the Domain Name is an abusive registration under the Policy. One topic that might have been of relevance is the subject of a factual dispute which the Panel is unable to resolve in this administrative proceeding. Another is a matter which should have been included in the Complaint, but was not, and the Panel ignores it.
4. Factual Background
The Complainant is a foundation constituted by way of a Deed of Foundation under Maltese Law on May 21, 2007. The primary objective of the Complainant is to promote Malta as an international financial centre. To that end, from 2007, the Complainant has conducted seminars and issued numerous publications (in Malta and elsewhere) advertising Malta as a quality financial business centre. Throughout, the Complainant has operated under and by reference to its name, FinanceMalta.
From its inception the Complainant has operated a website connected to its domain name, <financemalta.org>.
The Complainant is the proprietor of various registered trade marks, including Community Trade Mark registration No. 008187668 “FinanceMalta” (figurative mark in colours red and blue and featuring the device of a Maltese Cross) in class 36 for inter alia financial services. The mark was applied for on October 30, 2009 and registered on July 26, 2010.
The Respondent is a lawyer practising in Malta. On February 12, 2008, Corporate Services Limited, a Maltese company of which the Respondent was at that time a director, applied for membership of the Complainant. The Domain Name was registered in the name of the Respondent on August 11, 2008 and was originally connected to his law firm’s website. At the date of the Complaint it was connected to a website promoting Fides Corporate Services, a company of which the Respondent is a director.
The Complainant became aware of the Domain Name registration in the name of the Respondent in early 2009 and raised the matter with the Respondent. A meeting took place between the parties. There then followed between May 11, 2009 and June 1, 2009 an exchange of emails between them in the course of which the Complainant sought transfer of the Domain Name and the Respondent, while claiming that the Domain Name was lawfully held by him, indicated that subject to certain conditions (identified in section 6 below) he was prepared to permit the Complainant to use it. The exchange ended with an email from the Respondent indicating that he would be working on a draft settlement agreement and would be getting back to the Complainant. The draft agreement never materialized.
On January 4, 2010 the Complainant’s lawyers sent a letter to the Respondent drawing the Respondent’s attention to the Complainant’s trade mark rights and seeking transfer of the Domain Name.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain name and that the Domain Name was registered and is being used in bad faith for most, if not all, of the reasons set out in paragraph 4(b) of the Policy.
The Respondent denies the Complainant’s allegations. He says that that the Domain Name is generic and descriptive of the services which he and his companies provide. He says that when he registered the Domain Name the Complainant had no relevant trade mark rights in respect of the name “FinanceMalta”. The domain name system is a first-come-first-served system, the Domain Name was available and he acquired it. He says that the Complainant was set up to assist and promote businesses such as his and the Domain Name was an apt domain name for him to use for his business.
He produces in evidence a business plan/draft website purporting to set out his eventual plans for the Domain Name.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name: and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant has a registered trade mark featuring the name “FinanceMalta”. It is a figurative mark which incorporates in addition to the name “FinanceMalta” a representation of a Maltese Cross. However, the name “FinanceMalta” is the predominant element of the trade mark.
As the Respondent points out, the Complainant’s trade mark registration post-dates the Respondent’s acquisition of the Domain Name, but for the purpose of this head of the Policy, the date is unimportant just so long as the rights exist at date of the Complaint.
The Panel finds that the Domain Name, while not identical, is nonetheless confusingly similar to the Complainant’s registered trade mark details of which appear in section 4 above.
However, it can be very difficult for a complainant to succeed in a complaint under the Policy where registration of the domain name in dispute pre-dates the coming into existence of the complainant’s rights. Accordingly, it is convenient here to address the issue as to whether or not the Complainant had acquired unregistered trade mark rights in respect of the name “FinanceMalta” by the time the Respondent acquired the Domain Name, even though there were no registered rights in existence at that time.
Paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions addresses the issue of unregistered rights and reads as follows:
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice: specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
In support of its claim to unregistered rights in the name “FinanceMalta”, most of the evidence provided by the Complainant post-dates the date of registration of the Domain Name. However, there is enough before the Panel in the way of details of advertisements (Captive Review Malta 2007, FinanceMalta Madrid Seminar December 2007, FinanceMalta Barcelona Seminar December 2007, CRADD 2008, Captive Review Malta 2008, Executive Malta 2008, Newsweek magazine March 2008, Times of Malta) and events/seminars (Malta Insurance Rendezvous November 2007, YPO Chapter Inauguration April 2008, FMBA General Assembly May 2008, FinanceMalta Annual Conference May 2008) to establish to the satisfaction of the Panel that the Complainant was well-known (certainly in Malta and possibly elsewhere) under the name “FinanceMalta” by August 11, 2008 when the Respondent registered the Domain Name. It is to be noted that the Respondent did not challenge any of this evidence.
Certainly the Respondent is not able to deny that “the name [had] become a distinctive identifier associated with the complainant or its goods or services” by February 12, 2008 the date upon which a company of which he was a director applied to become a member of the Complainant’s foundation (see section 4 above).
The Panel finds it inconceivable that by early 2008 (at the very latest) the financial services community in Malta (of which the Respondent was a member) was not very well aware of the Complainant and its objective, namely to promote Malta as a quality financial services centre. They would have been very well aware of the efforts the Complainant had been making to promote Malta under and by reference to the name “FinanceMalta”.
“FinanceMalta” is a combination of a dictionary word and a geographical name, but that fact, of itself, does not preclude a user of such a name building up unregistered rights in respect of it. There is nothing before the Panel to suggest that the name was in use at that time by anyone other than the Complainant.
Accordingly, the Panel also finds that the Domain Name is identical to an unregistered trade mark in which the Complainant has rights and had rights as at date of registration of the Domain Name.
C. Rights or Legitimate Interests
It is not in dispute that the Respondent registered the Domain Name knowing of the existence of the Complainant and its name, “FinanceMalta”. It is also not in dispute that at various times the Domain Name has been connected to websites of his law firm and his company, Fides Corporate Services.
For the purposes of this dispute the Panel accepts the Respondent’s explanation for having registered the Domain Name, which reads as follows:
“The government’s initiative was precisely to promote interests of Malta-based service providers such as the Respondent, who availed himself of the available Domain Name in order to legitimately promote his business activities and to use it for the same. The Domain Name was in fact used to re-direct traffic to either “www.cefaiadvocates.com” or “www.fidesmalta.com” both websites belonging to the Respondent. There are two main reasons why this was being done. The Respondent wished to develop the Domain Name to attract foreign investors seeking financial services in Malta or otherwise wishing to relocate to the island and used this temporary use pending finalisation of plans with various partners in Malta ……… Use of the Domain Name was intended to be a website complimenting Fides Corporate Services (Trusts and Tax) and Cefai Advocates (Shipping, Legal, Financial Services) which has been in the pipeline for some time.”
The Complainant’s purpose in promoting Malta under and by reference to the name “FinanceMalta” was to benefit Malta generally and in particular by way of Malta’s financial services industry. It is plain from the Complainant’s evidence that very substantial sums of money must have been devoted to the exercise.
In adopting the Domain Name the Respondent must have known that he was, to a not insignificant degree, annexing for himself and his businesses the benefit of the Complainant’s advertising and promotional effort, which was intended by the Complainant to benefit all in the community.
The Panel notes that the Respondent claims to have believed that he was entitled to take the Domain Name (a) because it was available, (b) because it was in his view a generic, descriptive term apt for his business and (c) because in his view the Complainant had no exclusive right to the term. However, in the view of the Panel, the Respondent was mistaken as to (b) and (c). As the Panel has found, the name “FinanceMalta” was an unregistered trade mark of the Complainant when the Respondent registered the Domain Name.
To adopt someone else’s trade mark without adornment for a domain name and for the purpose of promoting one’s own business can rarely be a fair use.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Name with a view to selling it to the Complainant at a profit. One basis for this contention is that in the email exchange referred to in section 4 above the Respondent sought, in return for the Respondent making the Domain Name available for use by the Complainant, reimbursement of his out-of-pocket expenses and continued “it would be greatly appreciated if you could offer me or assignee free membership and full page advert on your handbook until 2015”. Had that indeed been the intention behind the Respondent’s registration of the Domain Name, the Panel would have been likely to hold that the Domain Name was an abusive registration within the meaning of paragraph 4(b(i) of the Policy. However, as indicated above, the Panel prefers the Respondent’s stated reason for having registered it.
For the same reason the Panel does not believe that, as also asserted by the Complainant, the Respondent registered the Domain Name with a view to blocking the Complainant.
As indicated in B above the Panel accepts the Respondent’s reason for having registered the Domain Name, namely to promote his businesses, the law firm and his trust and tax service. In defending himself against the Complainant’s contentions as to bad faith, the Respondent states in paragraph 10 of the Response:
“The Complainant feels that the Respondent is or may be in competition with the Complainant, however the latter is a foundation which was set up in order to promote Malta as a financial business centre and this is precisely the service offered by the Respondent which made the Domain Name a very suitable website to conduct the Respondent’s business by advertising its services.”
The Respondent goes on to state that on reaching the Respondent’s website nobody could be deceived into thinking that the Respondent’s website was a website of the Complainant as the Respondent makes no use of any of the Complainant’s logos or livery nor indeed does he make any use of the Complainant’s name on the website.
In the view of the Panel, this is a wholly unrealistic approach.
The Complainant was set up in 2007 under the name “FinanceMalta” with the support of the Government and financial services authorities of Malta. It operated a website connected to its domain name, <financemalta.org>. By mid 2008 it had expended substantial effort and sums of money promoting Malta and its financial services under and by reference to the name “FinanceMalta”. By mid 2008, as the Panel has found, “FinanceMalta” was well-known in the financial services community within Malta and elsewhere (e.g. Madrid and Barcelona) to be an official Maltese body having the support of the Maltese authorities.
To adopt a domain name for private commercial purposes which (absent the generic domain suffix) precisely replicates the Complainant’s name and the URL of the Complainant’s website was, in the view of the Panel, bound to lead to deception and confusion. In large part, Internet users seeing the Domain Name would be likely to believe that the Domain Name was in some way associated with the Maltese entity named “FinanceMalta” which operates a website connected to <financemalta.org>. Even if it might be apparent to most people visiting the Respondent’s website that the website was a website of a private law firm or business, (a) the Respondent will have obtained for himself a commercial business opportunity on the back of the Complainant’s trade mark feature in the Domain Name and (b) in the view of the Panel, it is likely that some visitors to the Respondent’s website will nonetheless believe that the Respondent’s law firm/business is in some way favoured or recommended by the Complainant.
The Respondent, a lawyer, whose company Corporate Services Limited (see section 4 above) was a member of the Complainant foundation at the date of registration of the Domain Name, must at the very least have been alert to the serious risk of confusion.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <financemalta.com> be transferred to the Complainant.
Dated: September 8, 2011