The Complainant is Filinvest Land, Inc. of Metro Manila, Philippines, represented by Cruz Marcelo & Tenefrancia, Philippines.
The Respondent is F, Inc. of Los Angeles, California, United States of America, internally-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2016. On April 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 proceeding commenced on April 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2016. The Response was filed with the Center on May 2, 2016.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 19, 2016. 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.
On May 24, 2016, at the request of the Panel, the Center issued Procedural Order No. 1 to the Parties, reproduced below:
"Under paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the 'Rules'), the Panel may, at its sole discretion, request further statements or documents from either of the Parties.
Having reviewed the case file, the Panel notes that the disputed domain name was created in December 1999 and is therefore some 16 years old. The Respondent asserts that it has used the disputed domain name in commerce over the past 16 years, notwithstanding the fact that the Respondent was incorporated in July 2013.
The Panel determined that a review of the history of the disputed domain name would be of assistance to its consideration of the Parties' contentions and therefore conducted limited factual research to identify historic registrant data and related use screenshots using the website ''. The website (see appendix attached) appears to show:
1. From 2005, the disputed domain name was registered to 'D, Inc.', at the same address used by the Respondent, until July 2013.
2. From July 2013 the disputed domain name was registered to 'TheAmericanD, Inc.', at the same address used by the Respondent, until August 2013.
3. From August 2013, the disputed domain name was registered to the Respondent.
4. A July 2005 screenshot shows the website associated with the disputed domain name as 'DOMAINHOUSE.COM®', a provider of domain name, website hosting and related services.
5. Screenshots captured from December 2006 until November 2012 show the website associated with the disputed domain name as hosting sponsored links relating to real estate.
6. A screenshot from May 2013 shows the website associated with the disputed domain name as 'the AmericanD®', a legal document, domain name registration and income tax preparation service.
Taking the above into account, and in exercise of its powers under paragraph 12 of the Rules, the Panel orders the following:
(i) The Respondent is requested to provide a further statement explaining the use of the disputed domain name from 1999 to date as detailed on the historic screenshots and in particular its reasoning as to how such use constitutes a bona fide offering of goods and services in the real estate and food industries as averred in the Response. The Respondent is also requested to provide details of the Respondent's relationship to the previous registrants of the disputed domain name.
Any communication or submission as the result of this Panel Order shall be forwarded to the Center at domain.disputes@ by no later than May 28, 2016.
The Complainant may submit any relevant comment by no later than June 2, 2016.
The Panel extends the decision due date to June 10, 2016."
The Respondent filed a response to Procedural Order No. 1 on May 28, 2016 and the Complainant filed relative comments on June 2, 2016. The Respondent's response was initially filed by email featuring a sender's email address of "DomainH " and subsequently, about 10 minutes later, by a substantially similar email featuring a sender's email address identical to the administrative email contact address for the disputed domain name. Both such emails bore to be issued by the Respondent, F, Inc. 4. Factual Background
The Complainant is a corporation incorporated under the Philippine Corporation Code on November 24, 1989, originally named Citation Homes, Inc. and renamed Filinvest Land, Inc. on July 12, 1993. The Complainant is a leading real estate property developer in the Philippines, having developed over 2,100 hectares of land and provided home sites for over 110,000 families. The Complainant has a network of sales offices extending to countries with large migrant Filipino populations.
The origin of the term "Filinvest" in the Complainant's corporate name can be traced to the predecessor of the group of companies of which the Complainant is part, namely Filipinas Investment Corporation, founded in the 1950s. The name is a coined term which was formed by combining "Fil", an abbreviation of "Filipinas", with "invest", an abbreviation of "Investment" in the said corporation's name. It has been used by the Complainant's parent company, Filinvest Development Corporation, for real estate business and dealings since the 1960s.
The Complainant is the owner of a variety of registered trademarks for the mark FILINVEST, including International Registered trademark no. WO1232957 registered on December 2, 2014 and designated under the Madrid Protocol in respect of a variety of countries including the United States of America ("USA"). The Complainant uses the FILINVEST mark extensively to identify its present real estate developments, for example "FILINVEST HOMES BUTUAN".
The Complainant's researches on the "Google Books Ngram Viewer" show that the term "Filinvest" was associated with the Complainant's predecessor's activities in a Philippine public body's 1975 yearbook and likewise in a USA Government Printing Office publication dating from 1976.
The disputed domain name was created on December 21, 1999. The terms of Procedural Order No. 1, as quoted above, narrate its past ownership and use. The Respondent is the present registrant of the disputed domain name. The Respondent is a corporation organized in the State of California, USA, with corporation number 3590145 filed on July 18, 2013. The Respondent's address is largely consistent across the following records: first, the WhoIs information regarding the disputed domain name, secondly, the Respondent's corporate address upon incorporation, and thirdly, the address of its registered agent for service of process, although the addresses given vary between suites or units H and F. The suite H address is identical to the addresses given for the previous registrants of the disputed domain name as shown on the historic WhoIs records.
The Respondent states that it owns and operates a licensed food facility in the City of Los Angeles and produces a Public Health Permit showing the Respondent as facility owner for premises apparently named "Eagle Rock Kitchen", the facility location address of which is given as the Complainant's corporate address (using suite or unit F) within the said city. The Respondent also produces a City of Los Angeles tax registration certificate (addressed to suite H) which it says relates to such activity together with evidence of incorporation. The Respondent states that it was also in the business of selling real estate in the said City between January 1, 2014 and December 31, 2015 and produces tax registration certificates in the Respondent's name in respect of "Professions/Occupations" and "Sale-Real Property". The Respondent adds that it is managing three real estate rental properties in Glendale, California, USA.
The website associated with the disputed domain name appears to relate to real property listings and the Complainant shows by reference to screenshots from "" that the content has not changed to a significant extent between the screenshot of November 30, 2010 and that of March 21, 2016. It contains what the Respondent describes as "basic contact information" for the Respondent. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the disputed domain name is an exact reproduction of the Complainant's FILINVEST trademark, on the basis that the relevant comparison to be made is with the second level of the disputed domain name.
The Complainant states that the Respondent is not licensed or authorized to use the Complainant's FILINVEST trademark and that the Respondent is not affiliated in any way with the Complainant.
The Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and argues that the website associated with the disputed domain name is not that of a genuine business because there is no genuine attempt to offer or sell real property and the content has not changed to any significant extent between 2010 and 2016. The Complainant adds that the news items in the screenshot of 2010 were already dated 2013. The Complainant asserts that it may be reasonably inferred that the said website is a mere template. The Complainant contends that the present use of such website is commercial in nature and is not a legitimate noncommercial or fair use.
The Complainant contends that the registration of the disputed domain name should be seen in light of the continuing expansion of the Complainant's business, adding that the Complainant began training its sights on officially entering foreign markets, especially the USA, in the latter half of the 1990s by which time it had established itself as one of the biggest real estate developers in the Philippines. The Complainant explains that it uses the Internet and in particular its corporate domain name portfolio to host websites containing corporate, marketing and investment information on its various residential and commercial real estate developments and projects, providing a selection of screenshots by way of example.
The Complainant notes that it approached the registrant of the disputed domain name in 1999 to negotiate the ownership of the disputed domain name but the Respondent's representative requested USD 8,000 which the Complainant asserts is an outrageous amount. The Complainant notes that it proceeded to register alternative domain names and that no opposition or complaint was received by it in respect of the use of the mark FILINVEST therein.
The Complainant asserts that the request for USD 8,000 at the point when the disputed domain name was registered together with the Respondent's lack of any bona fide commercial undertaking and failure to update the website associated with the disputed domain name over the intervening years is supportive of the contention that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark for valuable consideration in excess of the Respondent's out-of-pocket costs.
The Complainant asserts that the Respondent is passively holding the disputed domain name as demonstrated by its failure to update the corresponding website and that absent any legitimate real estate business of its own, the Respondent has no reason for continued ownership of the disputed domain name. The Complainant adds that it has searched the USA Securities and Exchange Commission Electronic Data Gathering, Analysis, and Retrieval ("EDGAR") system and the search engine "Google" both of which refer to FILINVEST as the Complainant and neither of which make any mention of the Respondent.
In its further statement commenting upon the Respondent's response to Procedural Order No. 1, the Complainant contends as follows: the Complainant notes that the website associated with the disputed domain name already promoted the Respondent's alleged real estate business as early as November 30, 2010 notwithstanding the fact that the disputed domain name is said to have been acquired by the Respondent in 2013. The Complainant submits that the Respondent did not make an inadvertent misstatement regarding its alleged bona fide use of the disputed domain name for 16 years and on the contrary deliberately intended and planned to state that it retained the disputed domain name over this period due to its repetitive use of "16 years" to establish its alleged prior right. The Complainant submits that this corroborates the Complainant's allegation that the Respondent has retained ownership of the disputed domain name since 1999. The Complainant asserts that the Respondent cannot now refute its previous admissions whenever it is convenient to do so and when it cannot justify or support its allegations on the use and ownership of the disputed domain name.
The Complainant submits that mere allegation of issuance of government-issued permits does not show that the Respondent has a right or legitimate interest in respect of the disputed domain name, adding that these only show that a business entity with the Respondent's corporate name is registered and do not show that the disputed domain name is actually being used or that demonstrable preparations are being made to offer the Respondent's alleged real estate business. The Complainant asserts that if at all, the permits only prove the Respondent's use of the disputed domain name as a corporate name and not the use of the actual name in connection with a bona fide offering of goods or services.
The Complainant argues that if the Respondent only started in the real estate business on January 1, 2014 then the Respondent was merely squatting on the disputed domain name as early as November 30, 2010. The Complainant adds that the evidence which the Respondent submitted only proves an offering of goods and services with respect to a restaurant business named "Eagle Rock Kitchen" and that nowhere in the documents submitted by the Respondent does it show engagement in any bona fide offering of goods and services related to the alleged real estate business.
The Complainant asserts that the Respondent's choice of the disputed domain name as its incorporation name is "highly irregular". The Complainant repeats the basis on which its predecessors coined the term "Filinvest" and adds that the Respondent's use of this highly distinct term is doubtful and suspicious. The Complainant adds that, absent any plausible explanation from the Respondent regarding the history of such corporate name, no other reason can be inferred from the Respondent's ownership of the disputed domain name and such corporate name other than squatting on the disputed domain name and preventing the Complainant from owning it.
The Complainant submits that the prior use of the disputed domain name by D, Inc. and TheAmericanD, Inc. cannot demonstrate the Respondent's alleged bona fide use of the disputed domain name since it appears from the screenshots attached to Procedural Order No. 1 that such prior registrants did not use the disputed domain name for bona fide offerings of goods and services and instead used parking pages offering sponsored links using keywords related to the Complainant's real estate services. The Complainant asserts that such use of the disputed domain name is not a legitimate noncommercial or fair use of the disputed domain name.
The Complainant concludes that the bare allegations of the Respondent regarding use of the disputed domain name in connection with a bona fide offering of goods and services is bereft of supporting evidence other than permits and licenses which cannot constitute adequate proof of bona fide use of the disputed domain name. The Complainant asserts that this is in stark contrast with the Complainant's own evidence of its ownership of the mark FILINVEST and its bona fide use of the same in connection with its real estate business. B. Respondent
The Respondent contends that the Complaint should be denied.
The Respondent accepts that the disputed domain name is similar to the Complainant's mark but adds that the Complainant had no trademark or legal presence in the USA when the disputed domain name was registered in 1999. The Respondent denies the allegation that the disputed domain name was knowingly offered for sale specifically to the Complainant.
The Respondent states that it has retained the registration of the disputed domain name for the past 16 years, has used it in commerce in the bona fide offering of goods and services in the real estate and food industry, and has been commonly known by it. The Respondent adds that it has obtained common law trademark rights over "the use of the domain name" superior to the Complainant.
The Respondent argues that the evidence produced by it shows that before the Respondent received any notice of the dispute it has used the disputed domain name in connection with a bona fide offering of goods and services and, as a business corporation, has been or is commonly known by the disputed domain name, thus has a right or legitimate interest therein.
The Respondent requests the Panel to make a finding of reverse domain name hijacking and to find that the Complainant is in bad faith in filing the Complaint because it omitted to narrate paragraph 4(c)(ii) of the Policy in its enumeration of the instances which may demonstrate that a respondent has rights or legitimate interests in a domain name, replacing this with the letters "xxx". The Respondent adds that it is precisely this paragraph upon which it seeks to rely to establish its rights and legitimate interests in answer to the Complaint. The Respondent states that the Complainant has thereby violated its certification that the information in the Complaint is complete and accurate to the best of its knowledge. The Respondent notes that the ordinary exercise of due diligence should have shown the Respondent's publicly available corporate status on the California Secretary of State's website.
In its further statement in response to Procedural Order No. 1, the Respondent contends as follows: The Respondent submits that it has made "an inadvertent misstatement" in trying to explain the history of the disputed domain name in the past 16 years. The Respondent states that it acquired the disputed domain name in July 2013, that it used the disputed domain name in its offering of bona fide services of buying, selling and managing real estate for two years from January 1, 2014 to December 31, 2015. The Respondent also notes that it has owned and operated a restaurant and catering services in Los Angeles for the past 6 months. The Respondent acknowledges that the combined period is less than 3 years and not the 16 years stated in the Response.
The Respondent submits that its misstatement was inadvertent because the dates of supply of its real estate services were specified in the Response and vouched by the produced permit and tax registration certificate. The Respondent notes that it had also produced its public health certificate, adding that this is "highly regulated and difficult to apply for" and that in obtaining it the Respondent had made substantial investments in associated fees. The Respondent states that all government regulatory agencies involved in the Respondent's operation had issued licenses in the Respondent's corporate name and that all legal correspondence or communications are made through the Respondent's official email address at the disputed domain name.
The Respondent states that filing applications for its various permits would be a crime under USA federal and state laws and that by holding such permits the Respondent enjoys the presumption of their validity in connection with its bona fide offering of goods and services.
The Respondent notes that the disputed domain name was acquired through a pre-incorporation sale agreement in July 2013 between the Respondent's incorporator and TheAmericanD, Inc. The Respondent adds that the relative contact information was updated in August 2013. The Respondent notes that it can only "explain and prove its bona fide use of the [disputed] domain name from the time of the Respondent's corporate existence and acquisition of the [disputed] domain name to the present".
The Respondent states that the relationship between the Respondent and the previous registrant of the disputed domain name is that of buyer and seller with regard to the disputed domain name and adds that they, together with DomainH, Inc. which is the server host of the Respondent's website and email address share the same address for registered agent for service of process. The Respondent states that its actual physical address is separate in location from its service of process address, as shown in the current permits.
The Respondent asserts that its submissions and evidence establish the Respondent's rights and legitimate interests by showing that before the Respondent received notice of the dispute, namely before April 13, 2016, there is evidence of the Respondent's use of the disputed domain name in connection with a bona fide offering of goods and services; and that the Respondent has been or is commonly known by the domain name in issue even if the Respondent has acquired no trademark or service mark rights. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There does not appear to be any dispute between the Parties that the Complainant has UDRP-relevant rights in the mark FILINVEST, by virtue of its various registered trademarks. The FILINVEST mark is alphanumerically identical to the second level of the disputed domain name. Although the Complainant's registered trademarks post-date the creation date of the disputed domain name, that is not a relevant issue for the purposes of the assessment of this particular element (see for example, the general discussion on such issue contained in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
In these circumstances, the Panel finds that the disputed domain name is identical to the Complainant's trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the 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".
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests (see the discussion in paragraph 2.1 of the WIPO Overview 2.0).
The Panel is satisfied that the Complainant in this proceeding has established the requisite prima facie case based on its submissions that the mark FILINVEST is a term coined by its parent and predecessor entities with a history dating back as early as the 1950s, that the Respondent is not licensed or authorized to use such mark and is not affiliated in any way with the Complainant, that the website associated with the disputed domain name is not a genuine business and does not constitute a bona fide offering of goods and services and that such website is not a legitimate noncommercial or fair use of the disputed domain name. In these circumstances, the Panel turns to consider the Respondent's submissions as to alleged rights and legitimate interests.
In essence, the Respondent makes its case by reference to paragraphs 4(c)(i) and (ii) of the Policy, namely that it has used the disputed domain name in connection with a bona fide offering of goods and services before notice to it of the dispute and that it has been commonly known by the disputed domain name even if it has acquired no trademark or service mark rights. These two cases are somewhat related in that both stem from the Respondent's corporate name and its alleged use in commerce of the disputed domain name which matches such corporate name for a real estate and restaurant business, as vouched for by the corporate documentation produced with the Response.
In the first instance, dealing with paragraph 4(c)(ii) of the Policy, the Panel has reached the conclusion that the Respondent may not avail itself of this provision to demonstrate rights and legitimate interests in the disputed domain name. For paragraph 4(c)(ii) to apply, a respondent must have been "commonly known by the domain name". The general consensus among UDRP panelists is that the requisite common knowledge of such respondent's name must be in place, and be capable of being shown, as at the date of registration or acquisition of the domain name concerned (see the detailed discussion of this issue in Royal Bank of Canada v. RBC Bank,WIPO Case No. D2002-0672). As the panel in that case noted:
"If the intention of the Policy were otherwise, every cybersquatter would be able to avoid the operation of the Policy by the simple expedient of: (i) quietly registering someone else's trademark as a corporation name (possibly in some jurisdiction having no connection with either the trademark owner or the cybersquatter); (ii) waiting some decent interval of time before registering the corporation name as a domain name; and (iii) resisting the trademark owner's challenge under the Policy by claiming that the fact of the registration of the corporation proves that the corporation has been 'commonly known by' the corporation name/trademark/domain name, and therefore has a legitimate interest in the domain name."
Accordingly, showing the mere adoption of a domain name within the company name of a recently incorporated entity is insufficient to meet the requirements of paragraph 4(c)(ii) of the Policy. That is, however, exactly what the Respondent has done in the present case. The Respondent is clear in its response to Procedural Order No. 1 that it acquired the disputed domain name from the former registrant at the point when the Respondent was incorporated and furthermore that it had made no use of the name prior to that date. In these circumstances, it is unable to claim that it was "commonly known by" such name at the point of acquisition of the disputed domain name in accordance with the consensus view as to interpretation of paragraph 4(c)(ii) of the Policy. The Panel notes in passing that although those behind the Respondent appear to have been involved with the ownership and use of the disputed domain name since before the Respondent's incorporation, which will be discussed in greater detail on the topic of registration and use in bad faith, taking the Response along with the Respondent's contentions in answer to Procedural Order No. 1, the Respondent does not submit that it was commonly known by the disputed domain name at any earlier date than the date of its incorporation.
Turning to deal with paragraph 4(c)(i) of the Policy, the Panel considers that there are substantial questions arising regarding the nature and extent of the Respondent's alleged businesses which have an impact upon whether such businesses could be said to constitute use of the disputed domain name or a name corresponding thereto in connection with a bona fide offering of goods and services. With regard to the Respondent's alleged restaurant business, it appears to the Panel that this trades as "Eagle Rock Kitchen". That is the name under which the Respondent could be said to be offering goods and services. The fact that the Respondent corporation, F, Inc., might be the facility owner of that restaurant and/or the addressee of a hygiene permit for the facility concerned does not in the Panel's opinion constitute a bona fide offering of goods and services under the disputed domain name itself. It is notable too that the Respondent's website associated with the disputed domain name makes no mention of the restaurant business.
With regard to the Respondent's alleged real estate business, the Complainant has shown to the Panel's satisfaction that the copy on the Respondent's website lacks any apparently genuine attempt to offer or sell real property. There are only vague references to two property addresses and three generic types of accommodation, and no descriptions or detailed listings such as would be expected of the typical real estate business. Instead, the site has the appearance of a partially completed template using generic text such as "coming soon". None of the screenshots are in the Panel's opinion consistent with an active enterprise. It is also of significance that the record shows that the Respondent's website existed in 2010, some three years prior to the Respondent's incorporation, and that the copy has been largely static over a six year period.
Faced with the Complainant's convincing allegations on this topic, the Panel would have expected any respondent which had genuinely made a bona fide offering of goods and services in the real estate business to provide a wealth of materials to vouch for this including property listings, advertising materials, details of transactions with customers, professional qualifications of business owners and/or financial information. However, all that the Respondent has produced to supplement the screenshots of the website associated with the disputed domain name is a tax registration certificate in the Respondent's name related to the payment of business tax for the sale of real property from January 2014, together with a vague reference to alleged property management activities in Glendale, California, USA. In the Panel's opinion the certificate has the same issue as does the permit for "Eagle Rock Kitchen". It states clearly on its face that it is issued for tax compliance purposes only and is not a license, permit or land use authorization. It shows that the Respondent corporation has or may have applied for registration in connection with the sale of real property for tax compliance reasons but, critically for the Respondent's case, it does not show that the Respondent has actually been offering such services, or indeed any services, under the disputed domain name or a name corresponding thereto.
In its evaluation of the materiality and weight of the evidence in this case the Panel has paid close attention to the Complainant's explanation as to how its FILINVEST mark came to be coined. This explanation is detailed and credible, in contrast to the Respondent's patchy and inconsistent evidence for its business activities which notably lacks any similar reasoning or account as to why it would select the name "Filinvest" or the relative disputed domain name for a real estate or restaurant business. The Panel is left with the distinct impression that while the Respondent or those behind the Respondent's incorporation may well operate a restaurant business, and indeed may even have had a business involvement with real estate rental properties, these businesses are not legitimately connected with the name "Filinvest" or with the disputed domain name itself in any sense which would confer rights or legitimate interests upon the Respondent in terms of the Policy. This does not necessarily mean that the Respondent has falsely applied for the various permits produced with the Response or that they are not presumed to be valid. However, it does mean that such applications, permits or licenses do not on their own entitle the Respondent to claim that it has made a bona fide offering of goods or services for the purposes of the Policy.
What would have been needed for the Respondent's assertions in this case to be made out is evidence of actual prior use of the name to establish a "commonly known by" case under paragraph 4(c)(i) of the Policy or evidence of an actual use of the disputed domain name itself (or demonstrable preparations to use it) in connection with a genuine live or proposed commercial venture which might constitute a bona fide offering of goods and services within the meaning of paragraph 4(c)(ii) of the Policy. Such evidence is lacking on the present record and it follows that the Panel does not find that the Respondent's submission that it has superior rights in the "Filinvest" name to those of the Complainant has any merit within the framework of the Policy.
The Panel notes in passing that there is no significance in its view regarding the Complainant's alleged omission of paragraph 4(c)(ii) of the Policy in its submissions on rights and legitimate interests, contrary to the Respondent's contention. The use by the Complainant of the letters "xxx" adjacent to its quotation of paragraph 4(c)(ii) in the Panel's opinion merely denotes to the reader that it is making an intentional abbreviation. Indeed, the fact that "xxx" is present would serve to alert anyone, whether familiar with the Policy or otherwise, that the quotation is abbreviated in order to focus its relevance to that party's submissions. It amounts to an invitation to review the entirety if need be, as indeed the Respondent duly did. The Panel is in any event sufficiently familiar with the Policy that no attempt to deliberately abbreviate quotations from it, with a view to obscuring another party's possible lines of argument, would have any effect. The Panel expects that all parties, including the Complainant, would be fully aware of that fact.
In all of these circumstances, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and that, accordingly, the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
As a preliminary matter on this issue, the Panel requires to consider the appropriate date for the test of registration in bad faith, given that the disputed domain name has been in existence since 1999. The Respondent's position is that the disputed domain name was acquired by it from the previous registrant in 2013, the implication being that the present and former registrants are not otherwise connected. An acquisition of an existing domain name would typically be assessed on this question as at the date of acquisition by the Respondent (see paragraph 3.7 of the WIPO Overview 2.0 which deals with and distinguishes acquisitions of existing domain name registrations from renewals). However, in the present case, the Panel considers that there is a distinct likelihood that the same controlling mind has been behind the registration of the disputed domain name since at least 2005 and possibly earlier, based principally but not exclusively on the historic WhoIs records which give the appearance of a chain of connected registrants operating under three different corporate names. For example, there are common and consistent address details between the present and past registrants of the disputed domain name. The historic records concerned were put to the Parties in Procedural Order No. 1. There are multiple other factors supportive of the notion of continuous underlying ownership of the disputed domain name since 2005.
In the first place, all known registrants of the disputed domain name have adopted the style of a domain name within their corporation name ─ first, DomainH, Inc.; secondly, The AmericanD, Inc.; and thirdly, the Respondent, F, Inc. This is not a unique style for a company to adopt but the Panel considers it to be relatively unusual and in particular to be rather more than coincidence where it appears within a continuous chain of registrants such as is presented here.
Secondly, all registrants of the disputed domain name including the Respondent have used the same address, each going to the additional extent of referencing "Suite H" in the location concerned. Thirdly, although the Respondent attempts to distance itself from the two previous registrants by averring that they merely share the same address for the registered agent for service of process, and explaining that DomainH, Inc. is the server host of the Respondent's website and email address, it is notable that when the Respondent initially issued its response to Procedural Order No. 1 it used the sender's email address of "DomainH " and then promptly reissued the response from the administrative contact email address associated with the disputed domain name some 10 minutes later. This strikes the Panel as indicating a closer relationship between the Respondent and "DomainH" than that of a mere web hosting arrangement, given that it is clear from the email address that a person acting on behalf of the Respondent has self-identified as "DomainH". It also runs contrary to the Respondent's submission that all legal correspondence or communications are made through the Respondent's official email address at the disputed domain name.
Fourthly, the Panel ascribes significance to the fact that the Respondent initially stated in two places in the Response that it had retained registration of the disputed domain name and its email addresses and website "for the past 16 years". While this might have been an "inadvertent misstatement" as the Respondent later contends, the Panel considers that it is only inadvertent in the sense that the Respondent seems to have confused a past involvement with the disputed domain name, arising from the close connection between the present and previous registrants, with the relative youth of the corporation which is the Respondent, perhaps because it was unaware when preparing its submissions of the extent to which the full history of apparently related parties was covered in historic WhoIs records. Fifthly, it is also of some significance that the Respondent argues that the Complainant had no legal presence or trademark in the Respondent's jurisdiction when the disputed domain name was registered in 1999. The Panel would have expected the Respondent to address itself purely to its alleged lack of knowledge of the Complainant upon incorporation and acquisition of the disputed domain name in 2013.
Sixthly, the record shows that the same website was associated with the disputed domain name in both 2010 and 2016, between which dates the disputed domain name has been held by all three identified prior registrants. Seventhly, and finally, it is notable that the Respondent categorically denies "the allegation that the [disputed] domain name was knowingly offered for sale specifically to the Complainant". The allegation to which the Respondent refers is the Complainant's assertion that in 1999 the then registrant of the disputed domain name offered it for sale, specifically to the Complainant, at a price of USD 8,000. In order to be in a position to categorically deny such allegation, the Respondent must have had a close connection to the registrant of the disputed domain name in 1999 and knowledge of its activities at that time.
In these circumstances, the Panel considers that it is reasonable to infer on the balance of probabilities that there is a chain of registration and beneficial ownership in respect of the disputed domain name with the same underlying controller or controllers dating back at least to 2005, if not as far back as the original registration in 1999. Given the extent of the apparent links between the registrants on the record in this case, there is also a possibility which cannot be discounted that the transfers between entities may have been made with deliberate intent to conceal the underlying owner's identity for the purpose of frustrating assessment of liability in relation to registration or use of the disputed domain name (on this topic, see the discussion in BME, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service,WIPO Case No. D2008-0882). In all of the above circumstances, the Panel considers it appropriate to review the entire history of use of the disputed domain name prior to and following its acquisition by the present Respondent corporation in the assessment of bad faith registration and use.
It seems likely to the Panel that the disputed domain name was originally registered by DomainH, Inc. This entity was certainly the registrant from 2005 onwards given the historic WhoIs entry and the relative screenshot of the website associated with the disputed domain name dated July 4, 2005. The screenshot shows a website entitled "DomainH" which notes that "DomainH also owns some of the finest domain names in the world. If you are interested in acquiring a domain name please send an email to sales@d". It has not escaped the Panel's notice that a Californian entity named DomainH, Inc. also features as the respondent in the case of Apple Computer, Inc. v. DomainH, Inc.,WIPO Case No. D2000-0341 in which it described itself as a trader in domain names. The panel in that case found that the respondent used the domain name and maintained a website there. The panel also found that the respondent DomainH, Inc. had registered a domain name identical or confusingly similar to the trademark of the complainant with intent to sell it to the public for valuable consideration in excess of its out-of-pocket costs and determined that this constituted registration and use in bad faith within the scope of paragraph 4(a)(iii) of the Policy. The Panel notes that the Complainant in the present case asserts that the disputed domain name was being offered for sale by the then registrant for an amount considerably in excess of the registrant's out-of-pocket costs in 1999 and, although the Respondent flatly denies any involvement in this activity, the past history of DomainH, Inc. as set out in Apple Computer, Inc. v. DomainH, Inc., supra coupled with the historic screenshot provides a degree of evidential support for the Complainant's contentions. Registration of the disputed domain name primarily for the purpose of selling it to a corresponding trademark owner in the circumstances described constitutes registration and use in bad faith in terms of paragraph 4(b)(i) of the Policy. The links between the Respondent and the previous registrants of the disputed domain name described above lead to a conclusion that, in the Panel's view, the Respondent is insufficiently distanced from such activity.
Although sponsored listings feature on some earlier screenshots, from December 2006 the consistent use of the disputed domain name in connection with pay-per-click advertising begins. Besides some unrelated links, such advertising focuses on real estate terminology and from 2008 onwards begins to feature the term "Manila Philippines", ultimately adding "Condos Philippines" in later screenshots. These terms when placed along with such typical real estate terminology, such as "homes for sale", leaves the Panel in no doubt that it is the Complainant's company name, unregistered mark and subsequently registered trademark that is being targeted by the website associated with the disputed domain name and thus by the former registrant of the disputed domain name.
The use of a domain name in connection with pay-per-click advertising is not necessarily activity in bad faith, although it is use in bad faith in terms of paragraph 4(b)(iv) of the Policy where the registrant has chosen to use the domain name in this manner because it is similar to a trademark, in the expectation that such similarity may lead to confusion among Internet users and may thus lead to elevated levels of traffic to the domain name and corresponding per-click revenue. That appears to the Panel to be the motivation and intent of the original registrant of the disputed domain name. As noted above, the Panel has been presented with no information which adequately distances the Respondent from the previous registrant's activity. A subsequent transfer of the disputed domain name to a newly incorporated entity, which in any event appears to be closely linked to and is based at the same address as the previous registrants, is unconvincing to the Panel.
Based on the screenshot information provided by the Complainant, which the Respondent has not disputed in the Response or in its response to Procedural Order No. 1, the website associated with the disputed domain name becomes the "Filinvest" real estate website at some point in 2010. In May 2013, however, historic screenshots show that the website associated with the disputed domain name briefly offers legal document services under the title "theAmericanD". This is also consistent with the historic WhoIs from approximately the same time. This website remains closely associated with the former activities of DomainH, Inc. in that it continues to offer domain name services "Thru our pioneering partner DomainH, Inc.". Finally, by August 2013, the present Respondent is listed on the WhoIs for the disputed domain name and the "Filinvest" real estate site is in place once again.
In light of the above considerations, the Panel has reached the view on the balance of probabilities that the disputed domain name was registered in bad faith with intent to target the Complainant's rights in the initially unregistered and subsequently registered trademark FILINVEST and was subsequently used in bad faith by the previous registrant for that purpose. Given that the Panel noted at the outset of its discussion on this topic that the original registration date was the appropriate date for assessment of registration and use in bad faith, this is sufficient for the Panel to conclude its discussion on this topic. However, the Panel has also reached the view that registration and use in bad faith may be made out even if the date of assessment were taken to be the date of acquisition by the Respondent and, as this was the Complainant's principal contention, the Panel will also set out its reasoning on that proposition for completeness.
As noted in the preceding section, the Complainant has explained the origins of its FILINVEST mark and the corresponding corporate name. The Respondent has remained notably silent as to why it should wish to select the disputed domain name as its corporation name. Absent any reasonable or obvious explanation, the Panel considers that this is an indicator of bad faith, given that the Panel accepts the Complainant's contention that the mark is a non-generic, non-dictionary, coined term. There is no basis which is apparent to the Panel by which the Respondent might have independently come up with the same unique name. It is not, for example, an obvious neologism or a combination of words which have some sort of connection with the restaurant or land agency trades. The notable lack of any attempt on the Respondent's part at an explanation for its selection is complicated further by the Respondent's apparent initial confusion as to whether it had maintained the disputed domain name for 16 years or 3 years and the patchy evidence of any actual commercial activity in connection with the disputed domain name over either of those periods. In particular, as discussed earlier, the Panel finds the Respondent's real estate agency website, including by way of historic screenshots, to be lacking the typical features of a genuine business of that type. The Panel therefore considers on the balance of probabilities that the present use of the disputed domain name is a somewhat inadequate veil which the Respondent has interposed between itself and the Internet user in order to provide an apparent justification for its continued holding, most probably with a view to maximizing the price of an eventual sale to the Complainant whose group of companies is the originator and, in the Panel's view, the only genuine user of the FILINVEST mark. This, in the Panel's opinion, is sufficient to constitute registration and use in bad faith in terms of the Policy.
Finally, on this topic, the Panel requires to address the Respondent's assertion that the Complainant had no trademark or legal presence in the USA when the disputed domain name was registered in 1999 and presumably, by extension, when the Respondent acquired it in 2013. By making such an argument the Respondent seeks to show that it could not have intended to target the Complainant or its rights as it was unaware of their existence at the material time. In anticipation of that point, however, the Complainant has shown by means of the "Google Books Ngram Viewer" that the term "Filinvest" was associated with the Complainant's group of companies and known in the USA at least as early as 1976. In any event, the fact that parties may be in different jurisdictions is not in and of itself conclusive on the issue of bad faith targeting. On this topic, the comments of the panel in the recent case of Fakir Elektrikli EV Aletleri Diş Ticaret Anonim Şirketi v. Development Services, Telepathy, Inc.,WIPO Case No. D2016-0535 are in the present Panel's view particularly instructive:
"There is also the fact that the Complainant has failed to show that the reputation of its mark was so great that the Respondent is likely to have become aware of it notwithstanding the fact that the Respondent and Complainant are based in different jurisdictions. The fact that a respondent is in a different jurisdiction than a complainant is something that some people can consider to be of greater significance than it actually is, particularly if the complainant has a significant online presence."
In that case, the panel went on to discuss the fact that the complainant had brought forward no evidence of any such online presence, while the respondent had produced evidence that such presence was minimal and perhaps even non-existent. This may be contrasted with the present case, where the Complainant has produced evidence of a very substantial corporate existence and background in the Philippines associated with the FILINVEST mark, both registered and unregistered. The Complainant has also submitted that it had become one of the largest real estate developers in the Philippines before the date of creation of the disputed domain name and had already begun at that date to enter foreign markets in pursuit of the expatriate Filipino diaspora. Of greatest importance, however, is the fact that the Complainant has additionally provided multiple examples of a significant online presence and an explanation as to the manner in which it uses the Internet to provide marketing and investment information on its various residential and commercial real estate developments and projects. In all of these circumstances, the Panel is satisfied that the Respondent's submission as to the Complainant's absence of any legal presence in its jurisdiction, and the significance of that issue for the Complainant's case, is lacking in merit.
In all of the above circumstances, the Panel finds on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith and accordingly that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. D. Reverse Domain Name Hijacking
The Respondent requests the Panel to make a finding of reverse domain name hijacking because the Complainant omitted to narrate paragraph 4(c)(ii) of the Policy in its entirety within the Complaint. For the reasons given at the end of section 6B above, the Panel considers that the Respondent's request is misconceived. Accordingly, the Panel declines to make a finding of reverse domain name hijacking in the present case. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: June 10, 2016
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