WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Frisby S.A. v. Registration Private, Domains by Proxy LLC / Michael Appolonia
Case No. D2020-0706
1. The Parties
The Complainant is Frisby S.A., Colombia, represented by My Brand Legal, Colombia.
The Respondent is Registration Private, Domains by Proxy LLC, United States of America (the “United States”) / Michael Appolonia, United States, represented by Furgang & Adwar, L.L.P., United States.
2. The Domain Name and Registrar
The disputed domain name <frisby.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2020. On March 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 27, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 28, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2020. The Respondent sent an email communication to the Center on March 27, 2020. On April 13, 2020, the Respondent requested an extension of the Response due date, and the Center informed the Parties that the due date for the Response was extended to April 23, 2020. The Respondent sent also a letter to the Complainant by email on April 14, 2020, explaining the alleged circumstances in which he registered the disputed domain name and inviting the Complainant to dismiss the Complaint. The Complainant responded on April 15, 2020, copying the Center, declining to dismiss the Complaint but inviting the Respondent to put forward a price to sell the disputed domain name to the Complainant. The Response was filed with the Center on April 23, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on April 28, 2020. 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
The Complainant is a Colombian fast-food restaurant chain that has traded under the name “Frisby” since it was established in 1977. The Complainant currently operates over 200 branches in Colombia and employs some 3,500 people.
The Complainant’s own website is at “www.frisby.com.co”.
The Complainant owns many registered trade marks for FRISBY worldwide, both for the word itself and in stylized form as part of a figurative mark, including Colombian trade mark no. 101137, for the word FRISBY, filed August 16, 1983, in class 29 and registered on September 28, 1983. Under Resolution 717 of January 20, 2020, the Colombian Trademark Office determined that FRISBY was a well-known trade mark.
From 1999 to 2004, the Respondent was an employee and shareholder in a United States company, Frisby Technologies, Inc., (“OldCo”) culminating in the role of Director of Technology and Business Development and Chief Operating Officer. OldCo owned and used the disputed domain name for its business, the development and commercialisation of thermal management products, until OldCo ceased operating in 2004. Thereafter the disputed domain name expired.
In 2004, the Respondent founded a new company Mercury Technologies, LLC (“Mercury”) which operated in the same field of technology as OldCo.
The Respondent registered the disputed domain name in 2008.
Mercury stopped trading in 2013.
The disputed domain name has never resolved to an active website. From at least 2012 to 2016, the disputed domain name resolved to GoDaddy holding pages that, amongst other things, invited persons interested in buying the disputed domain name to make an enquiry via GoDaddy’s domain purchasing service. Since 2017, the disputed domain name has not resolved to any website at all.
5. Parties’ Contentions
A. Complainant
A summary of the Complainant’s contentions is as follows.
The Complainant’s substantial advertising and promotion of its trade marks has created significant goodwill and consumer recognition in Colombia.
The disputed domain name fully incorporates, and is therefore identical to, the Complainant’s trade mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant did not authorise the Respondent to use the Complainant’s trade mark.
The Respondent is not commonly known by the disputed domain name. This is supported by the registrant information shown in the WhoIs for the disputed domain name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services. The disputed domain name does not resolve to a website.
The disputed domain name was registered and is being used in bad faith.
The word “frisby” is not a word in the English or Spanish languages. The term was created by the Complainant and its only purpose is to identify the Complainant’s goods and services. The Respondent must have been aware of the Complainant’s trade mark and the Complainant’s standing in the Colombian market. The Respondent deliberately selected the disputed domain name to incorporate the Complainant’s mark with the “.com” suffix, which is perhaps the most used domain name suffix in Colombia. The Respondent’s actual knowledge of the Complainant and its trade mark is evidence of bad faith.
The well-known character of the Complainant’s trade mark in Colombia as well as the Respondent’s lack of use of the disputed domain name for at least three years are evidence that the disputed domain name constitutes a passive holding in bad faith.
The fact that the Respondent tried to sell the disputed domain name, failed to do so and then abandoned it, thereby preventing the Complainant from using it for its own website, amounts to use of the disputed domain name in bad faith.
B. Respondent
A summary of the Respondent’s contentions is as follows.
The disputed domain name is not identical to the Complainant’s trade mark.
None of the Complainant’s trade marks are for the sole word “Frisby”. They all incorporate a prominent design. The Complainant has pointed to no use of the term “Frisby” without a design.
The premise of the Complainant’s argument is that the marks are identical to the disputed domain name, only the Complainant is using the “Frisby” mark and, therefore, the Respondent’s use of the disputed domain name is bound to confuse the Complainant’s customers. But many other businesses are using the term “Frisby” in a range of industries. There are also third-party owned United States trade marks for the same term.
While the Complainant’s mark may have achieved fame in Colombia, it has not done so in the United States.
The Respondent possess rights and legitimate interests in the disputed domain name.
The Respondent registered the disputed domain name for the purpose of “continuity of information” regarding the technology developed by OldCo and used thereafter by Mercury. The Respondent did not have a chance to link the disputed domain name to Mercury’s website before it went out of business in 2013 but, as the owner of inventory that was created using technology developed at OldCo, the Respondent always intended to resell this using OldCo’s previous reputation or otherwise to rely on OldCo’s technology. Although the disputed domain name is inactive, it retains “a relevant legacy” to the technology in which the Respondent has a legitimate business interest and it has always been the Respondent’s intention to re-activate the website at the disputed domain name.
The Respondent therefore registered the disputed domain name with the legitimate intention of using it, which motive he retains, and not to trade on the reputation of the Complainant.
The fact that the Respondent’s details do not appear on the WhoIs for the disputed domain name does not mean that the Respondent’s lacks a legitimate interest in the disputed domain name. The Respondent used a privacy service to avoid being harassed in relation to OldCo.
It was legitimate for the Respondent to park the disputed domain name with GoDaddy in the above circumstances. The Respondent was entitled to buy the disputed domain name and hold it until it was ready to make legal use of the disputed domain name. The Respondent is not prohibited from using the disputed domain name for a kind of trade completely unrelated to the Complainant.
The disputed domain name has not been registered or used in bad faith.
The Respondent was unaware of the Complainant or its trade mark until he received notice of the Complaint.
It is absurd for the Complainant to suggest without evidence that the Respondent, who never contacted the Complainant, lives in the United States, is engaged in an entirely different industry, and has his own legitimate connection with the term “Frisby”, registered the disputed domain name to target a fast-food restaurant in Colombia.
There is no rational basis for the Complainant to link the standard statement on the GoDaddy parking page that asks Internet users if they are interested in buying the parked disputed domain name with alleged efforts by the Respondent to sell the disputed domain name.
The Complainant has engaged in reverse domain name hijacking by trying to improperly deprive the Respondent of the disputed domain name.
If the Complainant had Googled the Respondent’s name plus the word “frisby” after receipt of the Respondent’s letter of April 14, 2020, this would have confirmed the Respondent’s connection with OldCo, in an industry unrelated to the Complainant. The Complainant’s failure to do so, and to continue to subject the Respondent to the cost and stress of having to defend this baseless action, is inexcusable. The response of the Complainant was effectively to attempt to force the Respondent to sell the disputed domain name to it or else spend money trying to retain the properly registered disputed domain name.
The Complainant must have known that its claim that the term “Frisby” was unique to it was false. Having filed and prosecuted four trade mark action in the United States, the Complainant must have been aware that there are at least three other “Frisby” registered trade marks in the United States that are used to identify food products.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the mark FRISBY by virtue of its registered trade marks .
The Respondent objects that all of the Complainant’s registered trade marks incorporate a design element. So far as the Panel can tell 1, some of the Complainant’s registered trade marks, including the one mentioned in section 4 above, are indeed for the word “Frisby”.
In any case, nothing turns on the point. Section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that assessment of confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark and that design or figurative/stylised elements which are incapable of representation in domain names are largely disregarded. The Complainant owns many registered trade marks consisting of the term “Frisby” plus design elements.
For the purpose of the first element, it is also irrelevant whether or not third parties own trade marks for the same term. As explained in section 1.7 of WIPO Overview 3.0 , the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. While the issue of similar third party trade marks may become relevant under the other elements of the Policy, such considerations do not arise at this stage.
For the above reasons, the Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
It is unnecessary to consider this aspect in light of the Panel’s conclusion under the third element below.
C. Registered and Used in Bad Faith
The Respondent has supplied evidence satisfying the Panel that, from 1999 to 2004, he was involved in various capacities with OldCo (Frisby Technologies, Inc), which then owned the disputed domain name, and which used the name “Frisby” in connection with thermal management products.
While the Respondent only registered the disputed domain name in 2008, some four years after the demise of OldCo, the Respondent was still involved in the same industry and was still using OldCo’s technology. In the Panel’s view, based on the evidence provided, the overwhelming likelihood is that the Respondent registered the disputed domain name because of its “relevant legacy” in connection with OldCo and its technology and not to target the Complainant, which is engaged in an entirely different industry.
The Panel notes that the Complainant is just one of a number of businesses using the mark FRISBY worldwide, that there is no evidence that the Complainant’s undoubted fame in Colombia has spread further afield and that the disputed domain name has never been used in connection with the Complainant’s industry – fast food restaurants.
Accordingly, the Panel rejects the Complainant’s assertion that the Respondent must have been aware of the Complainant at the time of registration of the disputed domain name.
In the Panel’s view, considering the circumstances of this case, the fact that the GoDaddy holding page invited persons interested in buying the disputed domain name to make an enquiry via GoDaddy’s domain purchasing service does not amount to evidence that the Respondent registered the disputed domain name for the purpose of sale at all, let alone for sale to the Complainant or a competitor of the Complainant.
While the Respondent has not actively used the disputed domain name, the Panel does not consider that this is a case of passive holding in bad faith, as claimed by the Complainant. See section 3.3 of WIPO Overview 3.0 for an explanation of the factors that have generally been considered relevant in applying this doctrine. In the Panel’s view, these factors favour the Respondent: the reputation of the Complainant’s mark seems to be limited to Colombia; the Respondent has submitted a Response and evidence of contemplated good faith use at the time of the registration of the disputed domain name; the Respondent has provided a credible explanation for its use of a privacy service (to avoid harassment in relation to OldCo); and the Respondent has come forward with an entirely plausible legitimate explanation for registration of the disputed domain name.
The Panel therefore finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
D. Reverse Domain Name Hijacking (“RDNH”)
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The gist of the Respondent’s claim for RDNH is that the Complainant should have quickly verified the Respondent’s former association with OldCo, and withdrawn its Complaint, after receipt of the Respondent’s letter of April 14, 2020. However, RDNH is concerned with the bringing of a Complaint in bad faith and the Respondent has not suggested that the Complainant had any reason to be fully aware of the Respondent’s potential legitimate interest in the disputed domain name, which was held through a privacy service, before seeing the Respondent’s position as set out in a formal Response which included a statement of truth and supporting evidence, particularly bearing in mind that the Respondent’s letter of April 14 2020 did not include any such evidence. On balance the Panel does not consider the Complainant’s conduct warrants a finding of RDNH.
In short, albeit that the Complainant’s case was based on some ultimately disproven assumptions concerning the Respondent, it has not satisfied the Panel that it was brought in bad faith.
The Panel therefore declines to find that the Complainant has been guilty of RDNH.
7. Decision
For the foregoing reasons, the Complaint is denied.
Adam Taylor
Sole Panelist
Date: May 12, 2020
1 The Panel does not find the Complainant’s trade mark evidence to be clear, because much of it has not been translated and the schedules do not include the filing / registration date, only the renewal date.
