On May 25, 2014, the American National Arbitration Forum (NAF)
delivered its 44th URS (Uniform Rapid Suspension) decision, the first in
respect of a domain name bearing the .sexy TLD.
The domain name concerned, <finn.sexy> is reserved by North
Sound Names. Spearheaded by Frank Schilling, also the founder of Uniregistry,
which, to date, is a registry comprising of 50 new gTLDs, North Sound Names is
used to store domain names in the TLDs managed by Uniregistry before they are
made available to the public. It is in this context that the disputed domain
name was reserved on April 15, 2014.
The domain name resolves to a parking page offering the name for
sale and containing links called “First Names”, “Selfies”, “Diet”, “Fitness”,
“Social Networks”, “Dating” and “Modeling.” It is to be noted that these terms
are clearly detached from the business activities of the complainant, Finn.no,
the largest online market in Finland.
In support of its complaint, the complainant mentions its
extensive use of the Norwegian trademark FINN. This allows the expert to find
that the first condition of the URS procedure has been satisfied as the domain
name is identical to the trademark. With regard to the legitimate interests or
the rights of the registrant, the expert notes that the latter employs the term
“finn” in its common usage, i.e. referring to Finnish people. According to the
expert, the registrant in fact has a legitimate interest to use this name. On
the issue of bad faith, neither the fact of the domain name in dispute being
offered for sale nor the notification received by the registrant from the
Trademark Clearinghouse (TMCH) convinced the expert. Logically thus, the
complaint was dismissed.
The URS procedure is still at an early stage and it is difficult
to foresee how the case law of the centres will develop. Yet, there have been
many dismissals since most proceedings are primarily concerned with clear cases
of trademark abuse. A more appropriate option therefore would have been to
proceed on the grounds of the UDRP (Uniform Dispute Resolution Policy). Indeed,
while the rules are similar, UDRP experts espouse a more flexible approach and
it is usually easier to lend credence to one’s complaint. Without entertaining
any preconceived opinions about the experts’ views, it seems that a transfer
unto the applicant would have been warranted.
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