WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Financial Industry Regulatory Authority, Inc. v. Vincent Imbesi

Case No. D2016-0134

1. The Parties

Complainant is Financial Industry Regulatory Authority, Inc. of Washington, District of Columbia, United States of America (“United States”), represented by Fried, Frank, Harris, Shriver & Jacobson, United States.

Respondent is Vincent Imbesi of New York, New York, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <finra8210.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2016. On January 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2016. The Response due date was extended to February 19, 2016. The Response was filed with the Center on February 18, 2016.

The Center appointed Robert A. Badgley as the sole panelist in this matter on March 1, 2016. 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.

4. Factual Background

Complainant is a not-for-profit corporation that describes itself as “a self-regulatory organization registered with the Securities Exchange Commission.” For decades prior to 2007, Complainant was known as NASD, an abbreviation for the National Association of Securities Dealers, Inc. Since 2007, Complainant has used the mark FINRA to identify and distinguish its various services. According to Complainant, it “develops rules and regulations, conducts regulatory reviews of members’ business activities, and designs and operates marketplace services and facilities.” As “the largest non-governmental regulator for all securities firms doing business in the United States,” Complainant and its affiliates also provide educational services, provide arbitration services, and maintain and disseminate information.

Complainant holds the registered trademark FINRA, registered with the United States Patent and Trademark Office in April 2009.

Respondent registered the Domain Name in February 2015. Respondent is a lawyer whose practice includes providing legal advice to clients who face inquiries from Complainant.

The Domain Name resolves to a website for Respondent’s law firm, ImbesiLaw PC. At the top of the home page is the text: “Receive a 8210 request for information from FINRA?” Much of the page describes FINRA Rule 8210, which apparently authorizes Complainant to seek information from registered securities brokers. Lower on this web page, Respondent is quoted as saying: “I can help you respond to a FINRA Rule 8210 request.” The visitor is then invited to make contact with Respondent to set up an appointment (“Let’s Talk”). The rest of the page contains information about FINRA Rule 8210, and some client testimonials.

At some point in late 2015, Complainant’s counsel made email contact with Respondent regarding the Domain Name. On October 20, 2015, Respondent responded to counsel by email, stating in part: “To save time – if your client really wants me to stop using finra8210.com – I would consider not using it in consideration for some compensation. (…) We have similar site names – which we can include in the settlement agreement.” This Complaint followed three months later.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent argues that no one is likely to be confused by the Domain Name since it is clear from statements on the website that Respondent is a lawyer specializing in FINRA disputes and Complainant is a “separate and distinct entity, such as, ‘FINRA can ban you for life.’” Respondent also asserts that he is offering legitimate services to clients and is not a business competitor of Complainant. Respondent also suggests that there is something improper about Complainant pursuing him in this proceeding, when the owner of the domain name <finra.com> is out there operating a website and Complainant is apparently not doing anything about it.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

A. Identical or Confusingly Similar

Complainant clearly holds rights in its registered trademark FINRA. The Domain Name incorporates this distinctive mark in its entirety and adds the numbers 8210, which the Panel finds to be descriptive in nature (because of FINRA Rule 8210). In the Panel’s view, these additional numbers are insufficient to overcome the confusing similarity between the distinctive mark and the Domain Name. See International Organization for Standardization ISO v. Noblitt & Rueland, WIPO Case No. D2007-1809 (domain name <iso9001.org> is confusingly similar to ISO mark).

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent registered the Domain Name several years after Complainant’s FINRA mark was in use. This case is similar to the above-cited ISO case. As in ISO, Complainant here is a not-for-profit, non-governmental organization that promulgates rules or standards, and does so under a registered trademark (there, ISO). In the ISO case, the respondent was a consultant who advised clients on the standards that the complainant promulgated, including ISO standard 9001. The ISO panel concluded that the respondent lacked rights or legitimate interests in respect of the domain names <iso9001.org>, <isotraining.com>, and <isotraining.org>. The ISO panel observed:

The Respondent is not making a legitimate non-commercial or fair use of the disputed domain names. All disputed domain names directly link to the Respondent’s main website, which markets the Respondent’s consultancy and training services in, among other things, ISO products. Similar to the case of International Organization for Standardization ISO v. Root Research, Inc., WIPO Case No. D2001-1194, use of “iso” in the disputed domain names creates the impression of an association with the Complainant and misappropriates the reputation of the Complainant’s mark for the Respondent’s commercial advantage. The Respondent cannot be said to be making a bona fide offering of goods or services prior to notice of the dispute because, as evidenced by the Respondent’s correspondence of December 18, 2007, the Respondent was aware at all times that “ISO” was a protected trade mark. Deliberately infringing use should not be considered bona fide use.

The same reasoning applies here. Respondent does not deny knowledge of Complainant and its FINRA mark. Indeed, Respondent holds himself out as having expertise in dealing with FINRA Rule 8210 requests. Respondent claims that he is making a legitimate “noncommercial” use of the FINRA mark, but this cannot be so. Respondent holds himself out, at the website to which the Domain Name resolves, as an expert in the area of FINRA Rule 8210 requests. He then invites prospective clients to make an appointment with him. There is no indication on the website – and no suggestion in the Response – that Respondent offers his services on a strictly pro bono basis.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

For essentially the same reason as the Panel concludes that Respondent lacks a legitimate interest in the Domain Name, the Panel concludes that the Domain Name was registered and is being used in bad faith. Again, the ISO decision appears factually akin to the present case, and the reasoning offered there may easily be imported to this case. Finding the respondent to be in bad faith within the meaning of Policy paragraph 4(b)(iv), the ISO panel stated:

The Respondent’s business trains people in the use of the Complainant’s standards (among other standards and regulations), and the Respondent registered the disputed domain names because its business provided training and consultancy in relation to the Complainant’s ISO products. The Respondent’s website is related to activities for which the Complainant is genuinely known. This shows that the Respondent chose the disputed domain names to draw Internet users to its site (through use of the mark “ISO”) in order to make a financial gain.

Again, the salient facts of the present case closely track those of the ISO case, and this Panel sees no reason to depart from the holding in ISO.

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <finra8210.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: March 1, 2016