WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Financial Services Roundtable v. Christopher "Chris" Arnoldi / Uhsome / Uhsome.com LLC
Case No. D2014-0841
1. The Parties
The Complainant is Financial Services Roundtable of Washington, District of Columbia ("DC"), United States of America ("USA"), represented by Michael D. Palage, USA.
The Respondent is Christopher or "Chris" Arnoldi / Uhsome / Uhsome.com LLC, all of Tampa, Florida, USA, represented by Lisa Poole, USA.
2. The Domain Name and Registrar
The disputed domain name <financialservicesroundtable.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 21, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also on May 21, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 June 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2014. The Response was filed with the Center on June 22, 2014.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 26, 2014. 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 submitted a supplemental filing dated June 30, 2014, to which the Respondent replied on July 1 and July 3, 2014. These supplemental filings are discussed in Section 6.A, below.
4. Factual Background
The Complainant is an industry association incorporated in the District of Columbia, USA. Formerly known as the "Bankers Roundtable," the association was renamed in 2000 and now includes not only leading bank holding companies but also other financial services firms, such as insurers, securities brokers, financial advisors, and retirement fund managers. The Complainant's website at "www.fsroundtable.org" (the "Complainant's Website") and its Linkedin and Twitter social media pages describe the Complainant as "the leading advocacy organization for America's financial services industry".
The Complainant attaches media stories and a Wikipedia article referring to the Complainant and two of its subsidiary groups, the Housing Policy Council (HPC) and BITS, the Complainant's "technology policy division". These tend to demonstrate that the Complainant is known in political and industry circles in the USA as a financial services industry lobbying organization.
According to the Registrar's WhoIs database, the Domain Name was created on February 2, 2009. The Registrant is shown as the Respondent "Chris Arnoldi", whose organization is listed as "Uhsome", with a postal address in Tampa, Florida, USA. According to the Response, these names refer to Christopher Arnoldi and a limited liability company identified as "Uhsome", of which he is listed as "member". The online business entity database operated by the Florida Secretary of State indicates that Mr. Arnoldi was formerly a managing member of Uhsome LLC, a Florida limited liability company, which was dissolved by merger in 2013. The same database shows that Mr. Arnoldi is currently the manager and registered agent of "Uhsome.com LLC", a Delaware limited liability company registered to do business in Florida. Accordingly, in this Decision "Respondent" refers collectively to Mr. Arnoldi and Uhsome.com LLC, unless otherwise indicated.
The Respondent Mr. Arnoldi characterizes himself as "a young entrepreneur with a background in finance who has acquired domain names related to his background in finance." It is undisputed that Mr. Arnoldi attended business school and that the domain names he has registered include several that, like the Domain Name, appear to consist of financial terms or phrases, such as <frontiercapitalgrp.com>, <stockcallers.com>, <tradeallmarkets.com>, <tradingallmarkets.com>, <wallstreetcircle.com>, and <tradewithpros.com> (Mr. Arnoldi also established a limited liability company with the latter name). Mr. Arnoldi established the Respondent Uhsome.com LLC, a website design and advertising company, in 2010. The Response indicates that Mr. Arnoldi has been involved in a variety of other commercial ventures and serves as president of Royal Road Group (a firm that offers a "portfolio" of consulting, Internet marketing, and "new media" services) as well as serving as marketing and communications director for the nonprofit United Nations Association Tampa Bay.
The parties agree that a representative for the Complainant first contacted the Respondent in July 2013, offering to purchase the Domain Name. The Respondent asked for USD 100,000, to which the Complainant did not agree. The Respondent contacted the Complainant nearly a year later, in May 2014, and the Complainant suggested that the parties attempt to negotiate a purchase price. The Respondent replied that it needed USD 17,500 "to keep the domain from going overseas". It appears from a subsequent email that the parties later discussed a lower price but did not reach agreement. The Respondent referred in an email to a prospective purchaser in Hong Kong, and the Complainant promptly filed this Complaint. It does not appear from the record that the Complainant's earlier correspondence raised the possibility of asserting trademark or UDRP claims. On the day that the Complaint was filed, the Complainant emailed the Respondent and offered to settle the dispute by purchasing the Domain Name for USD 500-1000. The Respondent declined.
5. Parties' Contentions
The Complainant argues that the Domain Name is confusingly similar to its registered trademark THE FINANCIAL SERVICES ROUNDTABLE and its trade name "Financial Services Roundtable".
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name, not being known by a corresponding name or using the Domain Name for either a bona fide offering of goods or services or for legitimate noncommercial purposes.
The Complainant contends that the Respondent registered and used the Domain Name in bad faith, to mislead Internet users for commercial gain and also in an effort to sell the Domain Name to the Complainant for an amount exceeding the Respondent's reasonable out-of-pocket costs.
The Respondent argues that the Complainant has effectively abandoned the mark on which it relies, using the "FSR" logo instead, and that there is therefore no "confusing similarity" between the Domain Name and a mark to which the Complainant has rights.
The Respondent claims a legitimate interest in registering a Domain Name consisting of a generic phrase for the possibility of developing a relevant website.
The Response, citing an attached affidavit of the Respondent Mr. Arnoldi, denies prior knowledge of the Complainant and its asserted mark when acquiring the Domain Name in 2009. The Respondent states that it learned of the Complainant only when the Complainant contacted the Respondent in July 2013 about purchasing the Domain Name. The Respondent acknowledges that it made no efforts to develop a website for the Domain Name until after that time, in October 2013, and states that it has not yet decided whether to complete and use the website as planned. The Respondent suggests, however, that there is no relevant commercial value in the name of a nonprofit lobbying group and categorically denies any intention to exploit the Complainant's asserted mark for commercial gain.
The Respondent contends that the Complainant filed this UDRP Complaint only to pressure the Respondent to accept a lower price for the Domain Name. The Respondent requests a finding under the Policy that the Complainant engaged in Reverse Domain Name Hijacking. The Respondent also asserts that the Complainant's representative in this proceeding implied that he could influence the outcome of the proceeding because of his connections in the domain industry. These points were vigorously debated in the supplemental filings outlined below.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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 has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Supplemental Filings
The Complainant submitted a supplemental filing with an email dated June 30, 2014. In this submission, the Complainant replied to the Respondent's claim of Reverse Domain Name Hijacking, offered evidence of the Complainant's use of its registered mark before the Complainant's "rebranding" in late 2014 with the "FSR" logo, and argued that the Respondent's experience in financial services and branding called into question its claimed ignorance of the Complainant and its mark in 2009.
The Respondent weighed in with supplemental filings on July 1 and July 3, 2014, repeating its denial of prior knowledge of the Complainant's mark and arguing against the Complainant's inferences concerning the Respondent's credibility. The Respondent requested an in-person hearing in Geneva to assess the credibility of witnesses and also requested to have the dispute decided by a three-person panel, asserting that the current panelist "has had some connections with the Complainant".
The Panel emphasizes that supplemental filings are discouraged in UDRP proceedings. The Policy contemplates prompt, efficient resolution of domain name disputes on a narrow range of issues and with only two limited remedies: the transfer or cancellation of a domain name. These remedies are without prejudice to a fuller exploration of the evidence and the parties' rights in a judicial proceeding. Accordingly, the Rules and Supplemental Rules provide only for a complaint and a response, within strict time and word limits. There is no explicit provision for additional filings except for further statements or documents provided in response to a request from the Panel itself (Rules, paragraph 12). Paragraph 10 of the Rules directs the Panel to conduct the proceeding "with due expedition" and empowers the Panel to "determine the admissibility, relevance, materiality and weight of the evidence."
Panels are consequently reluctant to countenance delay through additional rounds of pleading and require some showing of "exceptional circumstances". Panels typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2, and cases cited therein. "Exceptional circumstances" typically involve matters that arise after the initial pleading was filed and which could not reasonably have been anticipated at that time. See, e.g., Digital Ceramic Systems Limited v. Baltea SRL, WIPO Case No. D2012-1198; Mani Brothers, LLC v. Lincoln Gasking, WIPO Case No. D2008-0097.
Applying these standards, the Panel will consider the Complainant's reply to the Respondent's allegations of Reverse Domain Name Hijacking, a new issue raised in the Response, and the Complainant's additional arguments concerning the motives and credibility of both parties.
The Panel will also take account of the Respondent's supplemental filings on these issues. The Respondent's request for a three-person panel is untimely, and the Rules do not contemplate delaying the proceedings by introducing such a request after a Response is submitted and a panel is appointed. See, e.g., Facebook, Inc. v. Amjad Abbas, WIPO Case No. DME2010-0005, for a cogent discussion of paragraphs 3(b)(iv) and 5(b)(4) of the Rules, concluding that a late amendment of a party's panel designation is generally not appropriate under the Rules or consistent with the objectives of the Policy.
The in-person hearing requested by the Respondent would entail even greater delay, as well as considerable expense. This is why paragraph 13 of the Rules expressly provides as follows: "There shall be no in-person hearings (including hearings by teleconference, videoconference, and web conference), unless the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint." UDRP panels routinely issue prompt decisions based on the pleadings and evidence submitted online, and the Panel will do so here. If any of the parties seeks further opportunities to test the credibility of witnesses or consider related claims and defenses, those must be pursued in a judicial forum.
Finally, the Respondent's suggestions with respect to the current Panel do not rise to the level of substantial concerns over impartiality and fair process. The Respondent observes that the sole panelist in the current proceeding also served as the panelist in a 2012 WIPO UDRP proceeding involving a nonprofit coalition in which the current Complainant was involved. UDRP panelists on occasion serve in proceedings where the complainant or respondent, or persons related to one of them in some way, appeared in an earlier proceeding in which the same panelist served. Where the panelist has no personal or financial connection to the parties, this does not raise a credible imputation of bias. Nor does the fact that the current panelist or his colleagues have written about information technology issues relating to the financial services industry or participated in conferences or workshops in which a representative of BITS also participated. These are not "connections" with a party that reasonably lead to a suspicion of bias or undermine the Panel's declaration of impartiality and independence. Accordingly, the Panel declines to recuse itself or endorse the Respondent's request for the appointment of additional panelists.
B. Identical or Confusingly Similar
The Complainant holds a trademark registration for THE FINANCIAL SERVICES ROUNDTABLE. The Panel cannot determine on the available record whether the trademark has been "abandoned" under United States law, as the Respondent contends, although the extent to which the trademark has actually been used may be relevant to the issue of bad faith, as discussed below. The Complainant also cites its use of "Financial Services Roundtable" as a trade name, but, to the extent they materially differ, the Policy requires that the Complaint be grounded on "a trademark or service mark", not a trade name.
The material portion of the Domain Name (disregarding the ".com" address suffix, which is not distinctive) is identical to the Complainant's registered trademark apart from the omission of the article "the". The missing article does not materially affect the confusing similarity of the mark and the Domain Name in sight, sound, or sense.
UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". See WIPO Overview 2.0, paragraph 1.2. The Panel finds that this test is satisfied in the present case and concludes that the first element of the Policy has been established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the 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 Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, the Respondent refers to preparations to use the Domain Name for a personal networking website including persons involved in the financial services industry, after parking the Domain Name for several years for PPC advertising. The Respondent acknowledges that (a) these preparations commenced after the Complainant contacted the Respondent and (b) the Respondent has not decided whether to go forward with the development of the website. Examining the Respondent's website, the Panel finds minimal preparations to use the Domain Name for a website offering goods or services, or alternatively for a noncommercial website. Given the timing and minimal effort involved, the Panel does not find that the Respondent has demonstrated rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(c).
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1. The Panel finds that the Respondent has not met that burden here and concludes that the second element of the Policy has been established.
D. Registered and Used in Bad Faith
The Policy's non-exhaustive list of circumstances that shall be considered evidence of bad faith registration and use (paragraph 4(b)) includes the following:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or" . . .
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Complainant's reliance on paragraph 4(b)(i) is misplaced. The record does not indicate any deliberate efforts on the Respondent's part to sell the Domain Name to the Complainant for more than four years after acquiring the Domain Name. This is consistent with the Respondent's account of acquiring the Domain Name and several other domain names comprised of generic financial terms for possible use in connection with one of the Respondent's multifarious business ventures. The Complainant finally approached the Respondent, rather than the reverse. After that, the Respondent created a minimal website associated with the Domain Name, and nearly a year elapsed before the Respondent communicated again with the Complainant about selling the Domain Name. Hence, the Panel cannot conclude that the Respondent acquired the Domain Name "primarily" for the purpose of selling it to the Complainant for an excessive price.
The Complainant's argument under paragraph 4(b)(iv) is also problematic. It depends on the assumption that the Respondent was aware of the Complainant's registered trademark in 2009 and selected the Domain Name because of its potential value in diverting Internet users for commercial gain. However, the Domain Name (like the mark) is comprised of generic words, and the Respondent has articulated plausible reasons for choosing this and other domain names relating generally to financial services. The fact that the mark was registered before the Respondent acquired the Domain Name does not suffice to establish that the Respondent acted in bad faith, with knowledge of the mark, especially in the face of the Respondent's sworn denial of such knowledge.
The Complainant relies instead on the argument that the Respondent Mr. Arnoldi had experience with branding and financial services and therefore should have known about the Complainant's mark. This inference is tenuous at best. The Complainant cites Mr. Arnoldi's work experience with Raymond James Financial, a financial planning firm, as shown on Mr. Arnoldi's Linkedin page. But that page indicates that he worked for Raymond James Financial for just four months, as an office manager. It also shows that his professional experience and business ventures chiefly concern online advertising and website development. None of this suggests that the Respondent necessarily would be aware of a financial industry lobbying organization in Washington, DC.
If the Domain Name mimicked a particularly distinctive mark, the Respondent's motives would be a more obvious suspect. But the mark consists of generic terms, and the trademark registration is only for the combination of words and design, expressly disclaiming exclusive use of "financial services". Moreover, it is hard to find a compelling pecuniary motive for emulating the trademark of a nonprofit industry lobbying group, known chiefly in boardrooms and legislative chambers. By its own account, the Complainant's commercial activities are essentially limited to distributing "coffee mugs" and "binders" at meetings, with the name of the organization emblazoned on these mementos. The record does not indicate, for example, that the Complainant is well known to the general public or that its website draws large numbers of visitors. Thus, there is no manifest commercial value in "misdirecting" Internet users seeking information about the Complainant.
As noted above in discussing the Supplemental Filings, the streamlined UDRP proceeding does not lend itself to discovering and testing the credibility of disputed evidence. The Panel does not find sufficient evidence on this record to discount the Respondent's denial of prior knowledge and intent to trade on the reputation associated with the Complainant's registered mark. The Panel concludes that the Complainant has not met its burden of persuasion on the third element of the Policy.
E. Reverse Domain Name Hijacking
The Respondent has requested a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the UDRP 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". Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name". The Rules do not provide for any remedy or penalty in the event of a finding of Reverse Domain Name Hijacking.
"WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances."
The Complainant in this proceeding prevailed on two of the three elements of the Complaint and had colorable, if ultimately unsuccessful, arguments on the third. The Panel does not find evidence of bad faith or abuse of process, such as omitting material facts, making specious assertions despite knowledge of the facts, or engaging in a pattern of harassment. The fact that the Complainant offered a lower price to purchase the Domain Name after filing this Complaint does not prove bad faith but rather suggests a logical progression in settlement discussions. Consequently, the Panel declines to enter a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: July 10, 2014