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Recent Case Notes & Commentary

DOMAIN DISPUTES DO NOT ADJUDICATE TRADEMARK INFRINGEMENT


Silver Point Capital, L.P. v. Elisha Finman

 

FORUM Claim Number: FA2401002079392

 

February 13, 2024

 

RATIO

 

Relief was denied to the Complainant in this case on the grounds that it had failed to establish that the Respondent had registered the disputed domain names <silverpointequity.comand <silverpointequities.com> in bad faith and that the Respondent had no legitimate rights or interests in operating such domain name.

 

BACKGROUND

 

Silver Point Capital, L.P. (“the Complainant”), is a prominent SEC registered investment adviser founded in 2002, and has asserted its rights on the trademark SILVER POINT, based on the registration of such trademark with the USPTO under registration no. 3,739,107, registered on January 19, 2010. The Complainant has alleged that the disputed domain names <silverpointequity.comand <silverpointequities.com> are identical or confusingly similar to the SILVER POINT mark, and wholly contains such mark. The Complainant has further alleged that the Respondent is passing itself off as the Complainant in order to trick consumers into believing that it is offering real estate investing services.

 

Elisha Finman (“the Respondent”) has stated that she runs a small, family-run real estate investment company that trades under the name Silver Point Equity, named after its location at a local beach near Atlantic Beach, New York, called Silver Point. The Respondent further stated that she uses the Silver Point Equity business name for its business, online marketing, LinkedIn, social media and as part of her email. Stating that there are multiple businesses using the Silver Point name, the Complainant should not be allowed to monopolise it.

 

The Complainant stated in reply that a search of the New York State Department of State, Division of Corporations Corporation and Business Entity Database did not disclose any details about the Respondent, and the Respondent had apparently offered to sell the disputed domain names to the Complainant for a significant sum.

 

The Respondent then stated in reply that not having registered its business with the New York State is not evidence of her business not existing under Silver Point Equity. Moreover, on February 6, 2024, the Complainant’s representative had reached out to the Respondent asking her to quote a price for the disputed domain names, which she did. In reply, the Complainant’s representative conveyed that the price quoted was higher than they were anticipating.

 

DECISION

 

The Panelist reviewed the matter in accordance with the UDRP Rules.

 

Identical and/or confusingly similar

 

The Complainant has established that it owns a registered trademark on SILVER POINT, and that the disputed domain names entirely contain such trademark of the Complainant. Therefore, the disputed domain names were indeed identical or confusingly similar to the Complainant’s trademark and the first element in a domain dispute matter was satisfied.

 

Rights or legitimate interests

 

The Complainant has been unable to produce any evidence to satisfy that the Respondent was misleading consumers or engaging in fraudulent behaviour. Moreover, the Complainant’s offer to purchase the disputed domain names from the Respondent and the latter’s refusal to sell them, does not indicate that the Respondent’s use of the disputed domains was not bonafide. Even though it was concerning that the Respondent had not provided history of his business or evidence of when she adopted the Silver Point name, or that she had not registered her business with the New York State, the Panelist deemed this to be a ‘borderline case’, where based upon the rest of the evidence available, the Panelist was inclined to rule on the limited point it was not satisfied that the Respondent did not have rights or legitimate interests in the disputed domain names.

 

The Panelist acknowledged that the Respondent’s actions of operating the disputed domains could infringe the Complainant’s SILVER POINT trademark, or cause passing off to occur, but that was a definitive finding required to be provided by a different forum, and was not within the limited scope of the question of law being determined by the Panelist. The UDRP Policy and mechanism was designed to eliminate instances of cybersquatting and not thwart every sort of questionable business practices. The Complainant was welcome to initiate trademark infringement proceedings against the Respondent in a court of competent jurisdiction.

 

Accordingly, the Complainant had not established that the Respondent has no rights or legitimate interests in the disputed domain name, and had consequently failed to satisfy the second element in a domain dispute matter.

 

Registration and Use in Bad Faith

 

Considering the Panelist’s conclusions with regard to registration of the disputed domain names on the issue of rights or legitimate interests, there was no need to make a finding under the element of registration and use in bad faith.

 

ORDER

 

Having failed to establish all the three elements necessary in a domain disputes matter, relief was denied to the Complainant, and disputed domain names <silverpointequity.comand <silverpointequities.com> were to remain with the Respondent.

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