Femida a/k/a International Legal Counsels PC v. Reserved for Customers / MustNeed.com
Claim Number: FA1906001847829
Complainant is Femida a/k/a International Legal Counsels PC (“Complainant”), represented by Dmitri Dubograev, Virginia, USA. Respondent is Reserved for Customers / MustNeed.com (“Respondent”), represented by Wu Xin Wei of Guang Lai Law Firm, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <femida.com>, registered with Moniker Online Services LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Héctor A. Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2019; the Forum received payment on June 13, 2019.
On June 17, 2019, Moniker Online Services LLC confirmed by e-mail to the Forum that the <femida.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the names. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@femida.com. Also on June 20, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 9, 2019.
On July 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Héctor A. Manoff as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates in the legal industry specializing in intellectual property litigation. Complainant has rights in the FEMIDA mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,893,242, registered October 12, 2004). See Compl. Ex. A. Respondent’s <femida.com> domain name is identical or confusingly similar to Complainant’s FEMIDA mark because it wholly incorporates Complainant’s FEMIDA mark, and merely adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <femida.com> domain name. Respondent is not authorized or licensed to use Complainant’s FEMIDA mark and there is no evidence to suggest that the Respondent listed in the WHOIS record is commonly known by the disputed domain name. See Compl. Ex. B. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name’s resolving webpage to host pay-per-click links. See Compl. Exs. D, E, and F.
Respondent registered and uses the <femida.com> domain name in bad faith. Respondent engages in disruption of Complainant’s business by offering competing pay-per-click links. Furthermore, Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent uses the disputed domain’s resolving webpage to host pay-per-click links for competing products. See Compl. Exs. D, E, and F.
B. Respondent
Respondent submitted a response on July 9, 2019. Respondent registered the disputed domain name on February 9, 2003, which predates Complainant’s registration and filing for the FEMIDA mark. See Compl. Ex. B.
Respondent has rights and legitimate interests in the <femida.com> domain name because Respondent has made demonstrable preparations to use the disputed domain name for its web design and internet advertising business.
Respondent did not register and use the <femida.com> domain name in bad faith because Respondent’s registration of the disputed domain name on February 9, 2003 predates Complainant’s registration and filing of the FEMIDA mark on April 21, 2003 and October 12, 2004. See Compl. Exs. A and B. Furthermore, Respondent argues that its domain name renewals should not be considered new registrations.
Complainant asserts rights in the FEMIDA mark based upon registration with the USPTO (e.g., Reg. No. 2,893,242, registered October 12, 2004). See Compl. Ex. A. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Therefore, the Panel finds Complainant has rights in the FEMIDA mark per Policy ¶ 4(a)(i).
Respondent’s <femida.com> domain name is identical to Complainant’s FEMIDA mark because it wholly incorporates Complainant’s FEMIDA mark, and adds the “.com” generic top-level domain gTLD. Where a mark has been fully incorporated into a domain name with only the addition of a gTLD, the Panel has found the disputed domain name identical or confusingly similar. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Therefore, the Panel agrees with Complainant and find Respondent’s disputed domain name to be identical or confusingly similar to the Complainant’s FEMIDA mark. Therefore, the Panel agree with Complainant and find Respondent’s disputed domain name to be identical or confusingly similar to the Complainant’s FEMIDA mark.
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Respondent has rights and legitimate interests in the <femida.com> domain name because the Respondent’s domain name was registered before the first use and registration of the Complainant’s mark. Also the Panel noticed that the word “Femida” is the name of the “Justice goddess” and the advertising of legal services under this name is reasonable. A respondent’s use of a disputed domain name’s resolving webpage to host pay-per-click links does not probe a lack of rights and legitimate interests. See SOG Specialty Knives and Tools, LLC v. Val Katayev / Poise Media Inc, FA 1726464 (Forum May 23, 2017) (“Speculating in and trading in generic domain names can be a perfectly permissible and bona fide use under the Policy. The Panel finds that Complainant has not met its obligation of proving that Respondent has no legitimate interest in the Domain Name.”). Here, Respondent has developed a website which hosts pay-per-click links that is not per se evidence of lack of interest or bad faith. See Compl. Exs. D, E, and F. Therefore, in this particular case the Panel finds that Respondent has rights and legitimate interests in the <femida.com>.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
The Panel notes that if Respondent’s registration of the <femida.com> domain name predates Complainant’s first claimed rights in the FEMIDA mark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Taking into account that that Respondent has rights or legitimate interests in the <femida.com> domain name pursuant to Policy ¶ 4(a)(ii), in this particular case the Panel finds that Respondent did not register the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
Respondent claims that it did not register and use the <femida.com> domain name in bad faith because Respondent’s registration of the disputed domain name on February 9, 2003 predates Complainant’s registration and filing of the FEMIDA mark on April 21, 2003 and October 12, 2004. See Compl. Exs. A and B. The Panel has refused to find bad faith registration and use where a respondent registered a disputed domain name prior to a complainant’s acquisition of rights in a mark. See Aqua Engineering & Equipment, Inc. v. DOMAIN ADMINISTRATOR / PORTMEDIA HOLDINGS LTD, FA 1805001785667 (Forum June 25, 2018) (“Respondent registered the DDN prior in time to Complainant acquiring rights in and to its trademark, thereby precluding a finding of bad faith registration and use.”). Here, Respondent’s registration of the disputed domain name on February 9, 2003 predates Complainant’s registration and filing of the FEMIDA mark on April 21, 2003 and October 12, 2004. See Compl. Exs. A and B. Thus, taking into account the contentions and evidence reviewed, in this particular case the Panel finds that Respondent did not register and use the disputed domain name in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <femida.com> domain name REMAIN WITH Respondent.
Héctor A. Manoff, Panelist
Dated: July 25, 2019
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