Surely there’s something the Complainant wasn’t saying in this bizarre case?
Sometimes I read a Uniform Domain Name Dispute Resolution (UDRP) decision and think, “Surely, there’s more to this dispute that the Complainant just didn’t include in its case.”
That’s what I thought after reading a decision for af-ss .org. The case was filed by a large IP law firm, Fish & Richardson, yet it’s incredibly weak. It doesn’t make sense that the Complainant went after this domain unless there’s some back story it didn’t explain to the panel.
North Seattle Community College Foundation DBA American Financial Solutions filed the dispute. The non-profit credit counseling organization owns the domain americanfinancialsolutions.com, which it forwards to its consumer-facing website myfinancialgoals.org.
Af-ss .org was registered very recently in August. It resolved to a basic coming soon page when the dispute was filed.
This creates a mystery: why was this organization so concerned about this domain? Does it have some reason to think the registrant is targeting it with the registration? If so, it failed to make this case to the panel.
The Complainant relied on a trademark for AFS. Here’s what panelist Terry Peppard wrote about the domain being identical or confusingly similar to the mark:
Because the domain name is only about ninety days old, and, perhaps understandably in light of that fact, links only to an “under construction” webpage, and, at least as importantly, because Complainant’s mark is a three-letter combination, Complainant has undertaken what seems an exceptionally difficult task in suggesting that the domain name is either identical or confusingly similar to its AFS mark.
In any event, once its hyphen and gTLD are accounted for, the domain name reduces to afss. In this form, it is not identical to Complainant’s AFS mark, but it is similar, the two adjacent esses having the same appearance and phonetic quality. But the question presented is not whether the domain name is similar to Complainant’s AFS mark, but whether it is confusingly so. On this point, Complainant offers no hint as to what Respondent’s intention may have been in adding a second letter “s” to the mix, or how that intent might relate to or affect Complainant, as by relating in some way to an aspect of Complainant’s form of business organization, services provided or mode of doing business.
Peppard noted that there are many other companies with registered trademarks for AFS. He then stated:
This array [of companies with AFS trademarks] raises pointed questions, including: Does each of these mark holders have a UDRP claim grounded in the doctrine of confusing similarity against this Respondent and its nascent domain name? Or, to come at it another way, which of these mark holders, if it has an AFS-based domain name associated with its business, is guilty of targeting Complainant’s mark, or is the answer: all of them? In short, there is nothing distinctive about Complainant’s AFS mark outside the confines of its immediate sphere of business, and there is nothing in the materials accompanying the Complaint demonstrating that Respondent seeks to trade off of Complainant’s reputation in the marketplace or that Respondent has engaged in creating a pattern of registering domain names targeting complainant.
As well, Complainant has not pointed to any evidence that the contested domain name has, by its mere existence, caused any confusion among Complainant’s clients, or even that it is likely to do so.
It may also be noted that Complainant does not allege that the disputed domain name is an instance of typo-squatting owing to its inclusion of a second letter “s”.
And, finally, although the Complaint asserts that Respondent must have known of Complainant and its rights in the AFS mark when it registered the domain name, there is nothing in the proofs accompanying the Complaint to support that assertion.
Despite the domain registrant not responding to the case, Peppard determined that this case was an attempted reverse domain name hijacking.
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