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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