The Complainant is Fridae.com Limited of the Cayman Islands, represented by Mr. Paul Thompson, Malaysia.
The Respondent is Domain Discreet Privacy Service / Stuart Koe Chi Yeow of Singapore.
The disputed domain names <fridae.com>, <fridae.net> and <fridae.org> are registered with Register.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2012. On February 1, 2012, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain names. On February 1, 2012, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center has verified that the Complaint satisfies 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 27, 2012. The Response was filed with the Center on February 25, 2012. The Complainant filed a Supplemental Filing with the Center on March 1, 2012. The Respondent filed a Supplemental Filing with the Center on March 2, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 8, 2012. 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.
The Complainant is a company incorporated in the Cayman Islands on June 15, 2000 and the owner of registrations in China, Taiwan, the USA, Thailand, Malaysia and Singapore for the trade mark FRIDAE (the “Trade Mark”), the earliest registration dating from April 26, 2001.
The Respondent is an individual with an address in Singapore.
The disputed domain names were registered on May 11, 2000, May 11, 2000 and May 12, 2000, respectively.
The Complainant made the following submissions in the Complaint.
The Complaint provides media related and other ancillary services with a specific focus on the gay and lesbian community in Asia. It operates the “Fridae” website (the “Website”), which was set up in December 2000, and was until November 11, 2011 linked to the disputed domain names. The Website provides news, city guides, articles, reviews and also marketing and branding services under the Trade Mark.
The Respondent was one of the co-founders of and a shareholder of the Complainant, and held various senior roles at the Complainant until his resignation on April 15, 2011, including executive director, from the date of incorporation of the Complainant, and CEO, from May 2003.
The disputed domain names are identical to the Trade Mark.
The Respondent has no rights or legitimate interests in the disputed domain names. As executive director and CEO, the Respondent knew of and consented to the registration of the Trade Mark by the Complainant. It was always the intention of the co-founders of the Complainant and its directors and shareholders, including the Respondent, that the Trade Mark and the disputed domain names would (1) form an integral part of the business of the Complainant; and (2) be owned by the Complainant. The Complainant points to the several business plans and fundraising proposals for the Complainant filed as exhibits to the Complainant. According to the Complainant, these support its submissions that, at all times, it was intended that the disputed domain names were to be owned and used by the Complainant as a fundamental part of the Complainant’s business.
From December, 2000 up until November, 2011, the disputed domain names were continuously linked to the Website.
Prior to his resignation from the Complainant, the Respondent took steps to obtain the passwords for the disputed domain names from an employee of the Complainant, and then changed the passwords.
Following his resignation from the Complainant, the Respondent claimed, by letter from his solicitors dated June 19, 2011, that he personally owned the disputed domain names. This led to correspondence between the parties’ solicitors and culminated in the Respondent cancelling the link between the disputed domain names and the Website on November 11, 2011.
The Respondent has since made no use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
The Respondent is not commonly known by the disputed domain names. The Respondent is not making a legitimate or fair use of the disputed domain names.
Following his resignation, the Respondent’s solicitors have claimed that the Respondent is the owner of the disputed domain names, and had previously granted the Complainant the right to use the disputed domain names on the condition that he is the CEO and a director of the Complainant. The Respondent’s solicitors have also stated that, following his resignation from the Complainant, the Respondent is now willing to license the use of the disputed domain names to the Complainant.
The Complainant contends that, following his resignation, the Respondent has been using his registration of the disputed domain names to hold the Complainant to ransom. The Complainant submits the Respondent’s conduct in changing the password for the disputed domain names, offering to license the disputed domain names to the Complainant, threatening to shut down the Website, and cancelling the link between the disputed domain names and the Website, all show that the disputed domain names were registered and have been used in bad faith, particularly as it was always the long standing understanding and agreement between the Complainant’s co-founders, directors and shareholders and the Respondent that the disputed domain names were to be owned and used by the Complainant.
The Respondent made the following submissions in the Response.
The Respondent is the majority shareholder in the Complainant, via various corporate vehicles. The Respondent submits that his resignation was brought about by a series of disagreements between the Respondent and the other directors and shareholders of the Complainant.
The Respondent claims that, following the death of the other co-founder of the Complainant, Robert Yeoh, in 2003, the Respondent personally repaid director’s loans owed by the Complainant to Robert Yeoh to Mr. Yeoh’s estate, so as to avoid the Complainant being wound up. The Complainant’s refusal to repay this sum to the Respondent and the ensuing dispute between the Respondent and the other directors and shareholders of the Complainant is, according to the Respondent, at the crux of this dispute and the reason for his resignation from the Complainant.
As the parties’ solicitors were unable to reach a settlement of the dispute, the Respondent issued proceedings against the Complainant and its directors and shareholders in the High Court of Singapore on December 11, 2011 seeking, inter alia, repayment of the money paid by the Respondent to Mr Yeoh’s estate.
The Respondent agrees that the disputed domain names are identical to the Trade Mark.
The Respondent submits that he is the true owner of the Trade Mark and the disputed domain names, having created the name “Fridae” himself, prior to the registration of the disputed domain names and prior to the incorporation of the Complainant. The Respondent claims that his personal registration of the disputed domain names was never concealed from the Complainant, and the Complainant never objected to the same.
The Respondent further contends that he is not using the disputed domain names for commercial gain or in a manner that would mislead consumers or tarnish the Trade Mark. The Respondent claims the website to which the disputed domain names are currently resolved contains announcements explaining the resignation of the Respondent and distinguishing between the Respondent and the Complainant.
As regards bad faith, the Respondent argues that, because the disputed domain names were registered before the date of the incorporation of the Complainant, they could not have been registered in bad faith as the Respondent could not have contemplated the Complainant’s then non-existent right. The Respondent further contends that, as the creator of the “Fridae” name, he had the sole right to register and use the disputed domain names as he saw fit.
Notwithstanding the intensification of the dispute between the parties over the last year, the Respondent claims nonetheless that none of his conduct from the date of registration of the disputed domain names to date amounts to bad faith use of the disputed domain names under the relevant provisions of the Policy.
Notwithstanding the fact there appear to be extant proceedings between the parties in the High Court of Singapore which, at least to some extent, relate to the issues raised in this proceeding, the Panel would note that, absent any specific court order from the High Court of Singapore (or indeed any other court of competent jurisdiction), the Panel is required, under the Rules, to carefully review the submissions and evidence filed by the parties, and make a determination in respect of this proceeding under the Policy in favour of one of the parties.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
Although the disputed domain names were registered shortly before the Complainant was incorporated and commenced first use of the Trade Mark, and almost a year before the earliest date of registration for the Trade Mark, the consensus view in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (Second Edition) (“WIPO Overview 2.0”) in relation to this issue is as follows:
“Registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP”.
The disputed domain name contains the Trade Mark in its entirety.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(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 organisation) have been commonly known by the domain name even if you have acquired no trade mark 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 trade mark or service mark at issue.
The disputed domain name is currently resolved to a website set up by the Respondent entitled “The ex-Fridae.com” and containing two postings entitled “Towleroad.com reports Fridae.com domain shutdown” (dated November 15, 2011) and “Faerwell Fridae” (dated November 11, 2011) (the “Current Website”). The first posting explains in brief the Respondent’s resignation from the Complainant due to his dispute with “an unsupportive Board”, and goes on to state as follows:
“For the past 6 months since my departure, I have tried but failed to resolve outstanding disputes with the existing management. Meanwhile, the Directors have exercised a clause to forfeit all the equity that was supposed to be allocated to the management as sweat equity. As it now stands, I no longer own a single share in the company I have invested most of my working life to build.
For all this, and many more reasons, “Fridae.com” is no longer the same company that the founders envisioned. And thus with great regret, I am hereby severing the connection between the domain “fridae.com” from Fridae the company and the service provider. In anticipation of this eventuality, you will have noticed that Fridae has redirected most of its traffic to “fridae.asia” since 1 June 2011.
More will be revealed in this blog in the days and weeks to come.
I would like to take this opportunity to thank each of you, our loyal members and supporters, without whom Fridae could not have been what it was. It has been both an honor and a privilege to serve you.”
The second posting states as follows:
“Towleroad.com reported last evening, “Stuart Koe, the founder of Fridae.com, one of the largest Asian websites for LGBTs, in existence since 2003, has shut its domain after conflicts with its board…””
The Current Website also contains a link to the Respondent’s Facebook page, and a link to the Website via the url <www.fridae.asia>.
Looking at the totality of the evidence, the Panel would suggest it is not unreasonable to infer that, even though the disputed domain names were registered personally in the name of the Respondent, it was always the intention of the co-founders, shareholders and directors of the Complainant, including the Respondent at least up until his falling out with his co-directors and shareholders, that the disputed domain names were to be used and owned by the Complainant. This conclusion is supported by the several samples of communications from the Respondent exhibited to the Complainant which suggest that, at least for several years following the establishment of the Complainant and up until his recent falling out, this was indeed the Respondent’s intention.
The postings made by the Respondent on the Current Website would support the conclusion that, only following his falling out with his co-founders, co-directors and shareholders, did the Respondent decide to assert personal rights in respect of the disputed domain names.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate, noncommercial or fair use of the disputed domain name. To the contrary, the Current Website is being used (1) to explain the Respondent’s falling out with his co directors and shareholders, and his resignation from the Complainant; and (2) to provide a link to the Respondent’s personal Facebook page.
In all the circumstances, the Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
This is not a case which falls neatly under any of the established categories of bad faith registration and use under the Policy. This proceeding is further complicated by the fact the disputed domain names were all registered shortly before the date of incorporation of the Complainant, and before the earliest date of registration for the Trade Mark.
Paragraph 3.1 of the WIPO Overview 2.0 suggests that, in cases where the date of registration of a disputed domain name predates the earliest date of use or registration of the trade mark upon which the complainant relies, it can be difficult to establish the third limb under the Policy, as it is arguable the respondent could not have contemplated the complainant’s then non-existent right.
This Panel agrees that, in order to establish the third limb under the Policy, it is necessary to show both bad faith registration and bad faith use of the disputed domain names by the Respondent.
Looking at the totality of the evidence in this proceeding, and in particular the conduct of the Respondent in respect of the disputed domain names following his falling out with the Complainant, the Panel concludes that the disputed domain names have been registered and used in bad faith.
As regards registration in bad faith, this is not a proceeding where it could be said the Respondent could not have contemplated the Complainant’s then non-existent right in respect of the Trade Mark and the disputed domain names at the time of registration of the disputed domain names. To the contrary, it is clear from the evidence that the disputed domain names were registered by the Respondent in anticipation of the impending incorporation of the Complainant and in anticipation of the setting up of the business of the Complainant. Whilst it may have been the case that the Respondent was one of the two co-founders of the Complainant, the majority beneficial shareholder in the Complainant and, at various times, an executive director and the CEO of the Complainant, the Panel can find nothing in the evidence to support the Respondent’s claim to ownership of the disputed domain names.
Crucially, it was not until the Respondent’s falling out with the Complainant that the Respondent first asserted rights in the disputed domain names. Up until then, the Respondent appeared content to proceed on the basis that the disputed domain names, like the Trade Mark, were at least de facto, if not de jure, owned by the Complainant. It was also not until after his falling out with the Complainant that the Respondent first offered, by his solicitors, to license the use of the disputed domain names to the Complainant.
In these circumstances, the Panel concludes the inference is certainly there to be drawn that the disputed domain names were registered by the Respondent in bad faith.
Whilst it is indeed unfortunate the parties have had a falling out, in all the circumstances of this case and viewing the totality of the evidence, and having regard in particular to the conduct of the Respondent in recent months, including his actions in severing the link between the disputed domain names, setting up the Current Website, and offering to license the disputed domain names to the Complainant, the Panel concludes the disputed domain names have also been used in bad faith.
On the evidence filed, the Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <fridae.com>, <fridae.org> and <fridae.net> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: March 19, 2012