The Freename Forum

A non-profit agency with the trade mark ‘AFS’ failed in UDRP proceedings concerning the domain af-ss.org due to the question of the similarity of the trade mark and domain. As it was represented by a law firm, the decision-maker in the proceedings also confirmed reverse domain name hijacking.

The North Seattle Community College Foundation DBA American Financial Solutions, a non-profit agency for credit counselling, financial education and debt consolidation, considers its rights to the ‘AFS’ trademark to have been infringed by the af-ss.org domain and, together with the law firm Fish & Richardson P.C., initiated UDRP proceedings against the domain owner Christopher Johnson before The Forum. The complainant has been the trademark owner since 2003 and last renewed the trademark registration in 2024. Since 2002, it has been the owner of the domain americanfinancialsolutions.com, which redirects to myfinancialsolutions.org. The opponent registered the domain af-ss.org in August 2024 and currently redirects it to a construction site. The complainant claims, among other things, that the domain infringes its trademark ‘AFS’, that the opponent is not known under the sign, that it does not have a licence to use the sign and that it is not entitled to use the trademark ‘AFS’ in any other way. The opponent did not respond. US attorney Terry F. Peppard was appointed as a panellist.

Peppard already dismissed the complaint on the issue of the similarity of the trade mark and domain and even found reverse domain name hijacking (RDNH) (Forum, Claim Number: FA2409002115900). As the opponent had not taken a position, Peppard had to rely entirely on the complainant's submission. He conceded that an ‘AFS’ trade mark was registered to the complainant, but saw no similarity between it and the domain that could give rise to confusion. For closer examination, he reduced the domain af-ss.org to its core: ‘afss’. The ending was dropped because it was a technical necessity, and the hyphen was dropped because it did not add any meaning or change the phonetic character (‘a hyphen adds nothing to the meaning, nor does it change the phonetic character’). What remains is an additional ‘s’ opposite the trade mark. ‘AFS’ and “afss” are not identical, but they are similar. However, it is not the similarity of the trade mark and domain that matters, but whether they can be confused. Peppard criticised the fact that the complainant had not given any indication as to why the opponent had added the second ‘s’ to the domain or to what extent this would create a link to the complainant. To illustrate the problem, Peppard cited other owners of ‘AFS’ trade marks whose business names are abbreviated by the acronym ‘AFS’. The question arose as to whether each of these owners of an ‘AFS’ trade mark could bring proceedings against the opponent on the grounds of confusing similarity within the meaning of the UDRP, or whether each of these trade mark owners could attack the complainant's trade mark. This shows that the Complainant's trade mark is simply not distinctive outside its field of business and the Complaint is not accompanied by sufficient documentation to provide any evidence that the Opponent is attempting to use the domain to exploit the Complainant's reputation in the market. Furthermore, the complainant offers no indication that the mere existence of the domain has led to any confusion or that this is likely in the future. Furthermore, the complainant does not claim that it is a typo domain. And the complainant does not provide any evidence to support its claim that the opponent knew or should have known of the ‘AFS’ trade mark when registering the domain. In Peppard's view, the complainant had thus failed to fulfil the first element of the proceedings. He spared himself the trouble of examining further requirements, especially as the complainant's submission also showed clear gaps in these.

However, Peppard took the time to examine the question of an RDNH and confirmed its existence, as the complainant was represented by a law firm. She knew that her trade mark ‘AFS’ was not distinctive outside her field of business, she had not proved that there was a connection between her field of business and the domain, she had not provided any evidence of confusion, she had not raised the allegation of a typo domain and she had not proved that the opponent knew her and her trade mark. Since she nevertheless started the UDRP proceedings, there was an abuse of the proceedings, which is a case of RDNH. Pappard thus ruled that the domain af-ss.org remained with the opponent and that the complainant was guilty of RDNH.

The UDRP decision on the domain af-ss.org can be found at:
https://www.adrforum.com/DomainDecisions/2115900.htm