WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fifth Street Capital LLC v. Fluder (aka Pierre Olivier Fluder)

Case No. D2014-1747

1. The Parties

The Complainant is Fifth Street Capital LLC of Greenwich, Connecticut, United States of America (the "USA"), represented by Sutherland Asbill & Brennan, LLP, USA.

The Respondent is Fluder (aka Pierre Olivier Fluder) of Isere, France, self-represented.

2. The Domain Name and Registrar

The disputed domain name <fifthstreet.finance> is registered with Dynadot, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2014. On October 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2014, 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. On October 8, 2014, the Center received an informal communication from the Respondent, to which the Center replied by email on October 9, 2014.

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 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2014. The Response was filed with the Center on October 17, 2014.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 29, 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.

4. Factual Background

According to the Complaint, the Complainant is an "international private investment firm". The Complainant says it has been using "Fifth Street" as its name and trademark since 2004. It has a number of trademark registrations in the USA including:

- US Reg. No. 3,538,323 for FIFTH STREET registered on November 25, 2008;

- US Reg. No. 3,740,508 for FIFTH STREET FINANCE registered on January 19, 2010; and

- US Reg. No. 3,068,244 for FIFTH STREET CAPITAL registered on March 14, 2006,

all registered in respect of a range of financial and investment services in International Class 36. The Complaint also includes evidence of other trademarks registered in the USA for those word marks with devices or other figurative elements.

The Complainant has also recorded those word marks with the Trademark Clearing House.

The Respondent registered the disputed domain name on September 10, 2014.

According to the Response, the Respondent has a business in registering and reselling domain names that incorporate generic dictionary words in the new generic Top-Level Domain ("gTLD") ".finance".

Before the Complaint was filed, the disputed domain name resolved to a webpage at "www.sedo.com", which operates as an online domain name brokerage. The webpage stated that "This premium domain name is for sale!" and offered the price of USD 8,800.00.

5. Discussion and Findings

The Policy applies to domain names registered in the gTLD ".finance".

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the 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.

Paragraph 15(a) of the Rules directs the Panel to decide the 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. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of, amongst others, the three trademarks identified above: FIFTH STREET, FIFTH STREET FINANCE and FIFTH STREET CAPITAL.

The disputed domain name is identical to the first of those trademarks, disregarding the omission of the space between the two words and the gTLD ".finance" as is the usual practice under the Policy. See Bennett Coleman & Co Ltd v Steven S Lalwani and Bennett Coleman & Co. Ltd v. Long Distance Telephone Company Long Distance Telephone Company, WIPO Cases No. D2000‑0014 and D2000-0015 and, for the gTLD component, Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252 (both in respect of ".com").

The Panel also notes that the disputed domain name considered as a whole is virtually identical to the second trademark – the differences being (1) the addition of the "dot" to signify the gTLD ".finance" and (2) the omission of the spaces between the words. While (as already noted) it is usual practice to disregard the gTLD component as a functional aspect of the domain name system, in this case the combination of the gTLD with the other words naturally suggests the Complainant's second trademark. One may argue that the addition of the "dot" to indicate the gTLD component is more significant that the omission of the spaces but, in the present context, it is largely as insignificant as other elements of punctuation such as spaces and hyphens. Accordingly, the Panel would be prepared to find the disputed domain name is identical to the second trademark; at the very least it is confusingly similar.

The Respondent contends that the Complainant does not have trademark protection for "fifth street" because each word is a common English word and there are a number of places which are in fact called "fifth street".

Even if the Panel were prepared to overlook the existence of the registrations the Complainant has proved, the Respondent's argument misunderstands the nature of the inquiry at this stage. On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical to the Complainant's first two trademarks and (at least) confusingly similar to the second and third trademarks. The requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

The Complainant states there is no connection between the Respondent and the Complainant. It may be implied from the Complaint that it has not authorised the Respondent to use the disputed domain name. The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not hold any trademarks for the disputed domain name.

Given these matters and the nature of the use made of the disputed domain name before the Complaint was filed, the Complainant has demonstrated a sufficient prima facie case.

The Respondent does not dispute these matters. Instead, he relies on the nature of his business and the descriptive or generic nature of the terms in the disputed domain name. As already noted, he says he is a reseller of domain names which consist of generic terms and that is perfectly legitimate under the Policy. As the Respondent states:

"There's nothing wrong with buying a generic term domain name for speculation purposes. Indeed, my domain names are not used to target the types of products sold by any specific trademark holder." (original emphasis)

The Panel does not accept the general proposition as accurately reflecting the position under the Policy. Nor, in the circumstances of this case, is the specific proposition accurate.

It is certainly true that it is permissible under the Policy to register generic terms and exploit them for their value as generic terms. However, it is not permissible to register a "generic" term as a domain name and exploit it for the value it has as a trademark where it is someone's trademark. The registration and use must flow from the generic nature of the term, not the term's significance as a trademark.

Thus, it may be perfectly legitimate for someone to register a domain name for a business or person which is located on Fifth Street Somewheresville, such as the Fifth Street Drugstore or Cafe. It is quite another thing to register and use a domain name for Fifth Street related to finance in the face of the Complainant's trademarks.

It appears that there are no restrictions on who may register a domain name in the ".finance" gTLD in the sense that an applicant does not need to show it is a bank or finance company or some such criteria. It is nonetheless very difficult, if not impossible, for the Respondent to maintain that the disputed domain name is not used to target the types of products by any specific trademark holder in the present case when the disputed domain name is registered in the ".finance" gTLD. The disputed domain name is identical to the Complainant's trademark and it is registered in a gTLD which naturally suggests products and services of the very kind for which the Complainant has registered its trademarks. The risk of deception and confusion is therefore extremely high.

The Respondent contends the disputed domain name is no different to the domain name, <family.attorney>, which is apparently offered for "sale" for a fee of USD 59,000 per year. Family law and the provision of legal services for family issues are widely recognized areas of legal practice. There are no doubt thousands of lawyers and legal practices around the world who practice what is often generically described as "family law". That is quite a different situation to the present case where, apart from anything else, the Complainant has secured registered trademarks for its trademark.

The Respondent also invokes a number of Panel decisions accepting the general proposition that a generic term may be registered legitimately under the Policy by a reseller on a "first come first serve" basis. Examples include decisions relating to domain names such as <insurance.pro>, <elephant.com>, <liveone.com> and <socialpoint.com>.

The last, Social Point, S.L. v. 3745854 Domain Manager / Moniker Online Services, LLC, WIPO Case No. D2013-2082, provides a useful illustration of the problems with the Respondent's argument.

First, Social Point S.L.'s trademark was for the words "Social Point" in a device, not the words alone. Secondly, the learned panel noted that:

"[…] where a respondent has registered a domain name consisting of a dictionary term because it has a good faith belief that the domain name's value derives from its generic qualities, that may establish a legitimate interest". (emphasis supplied)

That statement acknowledges that the proposition is not absolute. It is necessary to consider the facts of the specific case. The learned panel referred to a number of considerations that had been identified in Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master, WIPO Case No. D2009-1276 as potentially relevant to whether or not a legitimate interest was established:

"[…] (i) the respondent regularly engages in the business of registering and reselling domain names and/or using them to display advertising links; (ii) the respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others; (iii) the domain name in question is a "dictionary word" or a generic or descriptive phrase; (iv) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and (v) there is no evidence that the respondent had actual knowledge of the complainant's mark."

Key considerations in the Social Point case, above, were that the respondent had a long established business of registering domain names based on the term "social" and had in fact registered the relevant domain names seven years before the complainant had obtained its trademark. There is no evidence of the first consideration in this case and the second plainly does not apply. Similar points can be made about the other decisions invoked by the Respondent.

In these circumstances, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

In the present case, the offering of the disputed domain name for sale for USD 8,800.00 is sufficient to constitute use in bad faith in the absence of rights or legitimate interests in the disputed domain name. The registration of the disputed domain name, however, must also be shown to have been in bad faith.

The Complainant says the Respondent must have known about its trademark rights because they were registered with the Trademark Clearinghouse. The Complainant does not state when the trademarks were so registered. However, the Respondent points out that the sunrise period for the ".finance" gTLD expired on August 30, 2014 and he did not register the disputed domain name until September 10, 2014, after that expiry. So it does not follow that he would have been notified of the Complainant's trademarks.

The Respondent does state specifically that he did not register the disputed domain name "with the Complainant's Fifth Street trademark in mind". That may be taken to mean he had no knowledge of the Complainant's trademarks. It may also be a reference to his view that the term "Fifth Street" is a generic, descriptive term which cannot (or should not) be registered as a trademark. He goes on to state:

"I registered the disputed domain name precisely because I have a good faith belief that the domain name's value derives from its generic or descriptive qualities […]; domain names of this kind are intrinsically valuable in their own right and I purchased it for that reason."

The Panel accepts that the expression "Fifth Street" is or can be descriptive. The fundamental problem for the Respondent in the present case is that it is not descriptive of finance products or services. It has significance in relation to "finance" only through its association with the Complainant as the Complainant's trademark. In those circumstances, the Panel has difficulty in accepting the Respondent's claim that he was unaware of the Complainant's trademarks when registering the disputed domain name, if that is in fact what he is claiming.

In the circumstances, therefore, the Panel finds that the Complainant has established the third requirement under the Policy also.

6. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fifthstreet.finance> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: November 8, 2014