WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FSI FontShop International GmbH v. Digital Starlight, Alan DeRossett

Case No. D2010-0070

1. The Parties

The Complainant is FSI FontShop International GmbH of Berlin, Germany, internally represented.

The Respondent is Digital Starlight, Alan DeRossett of California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <fontfont.net> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2010. On January 14, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On January 14, 2010, eNom, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 18, 2010. The Center verified that the Complaint together with the amendment to 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 January 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 9, 2010.

The Center appointed John Swinson as the sole panelist in this matter on February 16, 2010. 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 disputed domain name was due to expire on March 1, 2010, and the Center advised both parties of that fact on January 19, 2010. The Complainant confirmed that they would renew the disputed domain name and made arrangements directly with eNom, Inc. for renewal. The disputed domain name was renewed on January 22, 2010.

4. Factual Background

The Complainant offers fonts designed specifically for web use and is the owner of the following trade marks:

- United States Trade Mark Registration No. 2,173,494 (filed on April 19, 1996 and registered on July 14, 1998) for the F FONT FONT device mark. The registration notes that “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘FONT', APART FROM THE MARK AS SHOWN”.

- Community Trade Mark Registration No. 007166267 (filed on August 18, 2008 and registered on February 20, 2009) for the FONTFONT word mark.

- United States Trade Mark Application No. 77,571,495 (filed on September 16, 2008) for the FONTFONT word mark.

The disputed domain name was created on March 1, 2004. The WhoIs record for the disputed domain name lists the registrant as “Digital Starlight” on the first line and “Alan DeRossett” on the second line. There is currently a website operating from the disputed domain name, which is said to be powered by WordPress and is titled “Font Blog - Font Discussion Blog”. There are two postings on the home page:

- from September 28, 2008 - “Welcome to our site . Please create a login to tell us about your use of Royalty free Fonts”

- from January 21, 2010 - “It's finnally here for Firefox 3.6 WEB Open Font formats allow you to use lots of Royalty free Fonts … see Mozillas site for more info” (with a link to the Mozilla site).

There is also an “About our Font Blog” page which states:

“This is Free site where users can discuss their favorite Fonts. We purchased this domain in 2004 with the express intention of offering the Graphics community a non comercial place to Discuss their use of Fonts. Please Register and Login to offer your advice to others. Links to Royalty free Fonts are espescially requested.”

The Respondent Alan DeRossett is associated with a business known as Digital Starlight (which is also named as a Respondent). The website “www.digitalstarlight.com” directs a user to a secure website offering domain name goods and services, such as domain name acquisition and transfer, web hosting, email accounts and web marketing tools.

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant owns a registered Community Trade Mark covering the European Union and a trade mark in the United States of America for FONTFONT. The disputed domain name contains the Complainant's trade mark.

The Complainant has not granted any rights to the Respondent, or authorised the Respondent, to use the Complainant's trade mark. The disputed domain name is not in use and there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name.

The Respondent has prevented the Complainant (as trade mark owner) from reflecting the mark in a corresponding domain name. The disputed domain name has been parked for years without use. Non-use or passive use can constitute evidence of bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the following three elements (as set out in paragraph 4(a) of the Policy):

(a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is that of the Complainant.

A. Identical or Confusingly Similar

The Complainant owns one registered Community Trade Mark (covering the European Union) for the word mark FONTFONT; one United States registration for a device mark incorporating the words FONTFONT and one United States application for the word mark FONTFONT.

In relation to the registered United States device mark, the Panel notes that there is a disclaimer where the Complainant disclaims exclusive use of the word “Font” in the mark. The device mark consists of a representation of the letter F, with two instances of the word “FONT” within it (one being inverted).

The Panel also notes that the United States application for the word mark FONTFONT is yet to be accepted by the United States Patent and Trademark Office. The Complainant does not expressly refer to this trade mark in the Complaint.

The Complainant does rely on its Community Trade Mark registration for the word mark FONTFONT (Community Trade Mark Registration No. 007166267) in order to prove trade mark rights. The Panel agrees that this registration provides trade mark rights in the term “FontFont”.

The pending United States application and the Community Trade Mark application were both filed after the disputed domain name was first registered, although this circumstance is more relevant to other elements of the Policy:

“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.” (See Paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

The disputed domain name is identical to the Complainant's registered Community Trade Mark.

The Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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.” (Policy, paragraph 4(c)).

The Complainant alleges that the disputed domain name is not currently in use, has not been used for years, and the Respondent has made no demonstrable preparations to use the disputed domain name.

While there was a website operating from the disputed domain name at the time of writing this decision, the Panel notes that, as at January 19, 2010, there was no corresponding functioning website. The inference can be drawn that the Respondent made the website operational once it became aware of these proceedings.

The issue as to whether the Respondent has made use of the disputed domain name is difficult to determine as the Complainant has failed to provide any evidence that the disputed domain name has been parked for an extensive period of time, other than making a vague statement to that effect.

Given the minimal evidence provided by the Complainant, and the lack of any evidence provided by the Respondent, this is a difficult issue to decide. However, by no means clear, the Complainant has provided uncontested evidence that the disputed domain name has not been operational for some time. On the evidence before the Panel, although by no means clear, it seems possible that a significant period of time has elapsed without the Respondent creating an active website or making “demonstrable preparations” to use the disputed domain name. The Respondent has failed to submit a Response, and the Panel can draw certain inferences from the Respondent's failure to do so, including that the Respondent has not made use of the disputed domain name.

There is no evidence that the Respondent is known or has even been known by the disputed domain name, and does not have any trade mark or service mark rights in the term “Font” or “FontFont”. The Complainant contends that the Respondent has no relationship with or permission from the Complainant to use the FONTFONT mark and by failing to submit a Response, the Respondent has not shown otherwise.

The website operating from the disputed domain name currently claims to be a blog relating to fonts. Provision of a blogging website, which allows Internet users to post comments on a certain subject in an open forum, can certainly constitute legitimate noncommercial use or fair use of a domain name where the blog is not trading off a trade mark of another or providing commercial advertising. “Font” is a common English word (meaning a particular style, size, etc. of printing type), and it is possible that the Respondent chose the disputed domain name based on the generic value of the word because it wanted to operate a blog dedicated to “fonts”. However this seems unlikely once regard is had to the fact that the Respondent chose to duplicate the term “font”, rather than use it only once. The Panel also finds it strange for any blog to only have two postings which are 18 months apart, and almost no other activity. Again, as the Respondent has failed to provide a Response which addresses these concerns, the Panel is able to draw the inference that in this case, the website operating from the disputed domain name is not legitimate noncommercial or fair use of the disputed domain name. The Respondent may have deliberately tried to fall within this limb of the Policy, by stating on the website that it is a free, noncommercial website, but the Panel is not convinced that this is the true purpose of the site.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks legitimate rights and interests in the disputed domain name, and the Respondent has failed to rebut this case.

Accordingly, the second element of the Policy has been met.

C. Registered and Used in Bad Faith

As discussed above, the Panel has found on the limited evidence before it, that the Respondent has not registered and used the disputed domain name in good faith, based on the generic value of the term “font”.

However the Respondent (or its predecessor) did register the disputed domain name in 2004, well prior to the filing date of the Complainant's Community Trade Mark application. In certain cases, this can provide evidence of a lack of bad faith, as a respondent cannot be shown to have been aware of a person's trade mark at the time of registering the disputed domain name. However in this case, there is a longstanding trade mark belonging to the Complainant, which contains the words “Font Font” within a device mark. While the Complainant has disclaimed exclusive use of the word “font” in this mark (other than as represented in the mark), it is plausible that the Respondent registered the disputed domain name with knowledge of this trade mark, particularly as it is unusual to duplicate ordinary words in a domain name (unless duplication gives rise to a particular meaning). It also appears that the Complainant has been using FONTFONT for 15 years.

On the evidence available to it, the Panel finds that the Respondent (or its predecessor) has held the disputed domain name for almost six years, without making any legitimate use, or demonstrable preparations to use, the disputed domain name. The changes to the website since 2004 have been small in number. In January 2010, no website was functioning from the disputed domain name. The Complainant contends that this has been the case for many years, and that was not denied by the Respondent. The website currently operating from the disputed domain name has minimal content and it appears that little development has gone into building the site. Therefore it seems reasonable to conclude that the website was only made operational due to the commencement of these proceedings. On balance, the Panel finds that the Respondent is passively holding the disputed domain name, which is evidence of bad faith.

Accordingly, the third element of the Policy has been met.

7. Decision

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

John Swinson
Sole Panelist

Dated: February 18, 2010