A three member UDRP panel just awarded the domain name FACI.com, owned by BuyDomains.com to FACI Industries of Bolingbrook, Illinois
Here are the relevant facts and findings by the panel:
“Complainant markets its wares under the trademark FACI, which was registered as a word mark by the United States Patent and Trademark Office (“USPTO”) in 1998 and 2011.”
“Respondent, since 1999, has been in the business of registering domain names that become available when an existing registration expires. Respondent maintains a large portfolio of domain names. Respondent asserts that its policy is to register and maintain “only those domain names that incorporate common and/or generic dictionary words, phrases, acronyms, abbreviations and/or descriptive terms for which the available evidence suggests no single party has exclusive rights.” Respondent offers some of the domain names it has acquired for sale.”
“Respondent registered the Domain Name on May 27, 2003 after the prior registrant allowed it to lapse. ”
“The Domain Name resolves to a splash page which states that the Domain Name is for sale. ”
“The sale price for the Domain Name was listed by the Respondent as USD 18,800. Complainant alleges, and Respondent does not deny, that this amount exceeds Complainant’s out-of-pocket costs directly related to the Domain Name.”
“Respondent asserts that it has the right to register and use the Domain Name, in part because the term “faci” is “not only a common acronym, but also a common surname and a dictionary term subject to a diversity of third party use.” Respondent also points out that numerous entities unrelated to Complainant have registered and are using domain names containing the term “faci.” Because, Respondent asserts, the term “faci” is “no more than a common acronym, a surname, or dictionary term in three languages,” Respondent was entitled to register and use the Domain Name in a “first come, first served” basis.”
“The pivotal question is whether Respondent may have a right or legitimate interest in respect of the Domain Name because FACI constitutes not only Complainant’s registered trademark but also a variety of other words, acronyms, names and marks in circulation. ”
“The Panel concludes that Respondent does not have a right or legitimate interest in the Domain Name here.”
“It is undisputed that Respondent was aware of Complainant’s FACI mark when it registered the Domain Name.”
“Further in this regard, the fact that other people and entities make use of the term “faci” in various contexts does not by itself legitimize Respondent’s activities vis-à-vis this Domain Name. Respondent asserts that it has rights and legitimate interests in the Domain Name because “faci” “is no more than a common acronym, a surname, or dictionary term in three languages, “however, as found in prior UDRP decisions, use of a domain name to resolve to a PPC or splash page is not of itself a legitimate use because the Respondent is not using the Domain Name in any way that is related to its generic meaning.”
“The mere fact that a word identical to the Domain Name exists as a defined dictionary term does not give rise to any rights or legitimate interests in the name on the part of a respondent who uses it in ways like this that are not tied to the generic meaning of that word.”
“Someone else actually named “faci” or actually using “faci” in some connection might have an easy time establishing rights or legitimate interests in the Domain Name, but Respondent has no such interest.”
“In sum, the Panel does not believe that Respondent has rights or legitimate interests in the Domain Name for purposes of the Policy simply because parties other than Complainant have made use of the term “faci.”
“Nor, in the Panel’s view, does Respondent acquire such legitimacy under the Policy merely because the Domain Name is offered for sale (for USD 18,800) to the public at large as opposed to being offered to Complainant in particular.”
“Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.”
“The Panel does not believe that one may defend against a claim under paragraph 4(b)(i) under these circumstances by arguing that parties in addition to Complainant were also offered the opportunity to buy the Domain Name at a steep profit to Respondent”
“In the final analysis, the Panel concludes that the registration and monetization of a domain name without a legitimate interest in the domain name and with knowledge that the domain name matches another’s trademark constitutes bad faith registration and use under the Policy.”
I’m hopeful BuyDomains take them to court to set precedent for all of us and future UDRP cases.
FACI(st)
UDRP is such a BS tool at this point. It was created for obvious cases of TM infringement, not as a cheap lottery ticket.
Panelists create precedents, then ignore them, then do whatever they want. It is a total kangaroo court.
If it is going to be this easy to bring a dispute, there should be a major penalty for RDNH and frivolous disputes.
Brad
let’s be frank. it’s not udrp… it’s icaan… which is basically a group of criminals that continues to raise their salaries and find new ways to cheat both trademark holders and domain owners by doing the job of one person who worked at network solutions and did the whole thing as a one hour part of his job.
This is a very bad precendent for other LLL, LLLL domain owners.
These panels are so inconsistent it is ridiculous.
This is a cost of doing business.
You speculate on domains, you have to be prepared to go long when you catch a “stick it to domainers” UDRP decision.
BuyDomains needs to file to invalidate their trademark.
I think it important to take note of the fact that it is apparently unwise to provide panelists with evidence indicating an awareness of an existing mark for the term in question. While I am uncertain as to whether or not it may have played out differently had the respondent denied knowledge of the mark the way the decsion is worded it would appear a denial as to the existance of the mark would have been more prudent. Still its all crap because there are tons of decisions where the panelists have chided respondants for not checking for competing interests. Here the respondent does their due dilligence, used the name in a non predatory fashion and still gets jobbed. Unfortunate.
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The respondent should file an injunction preventing the transfer of the name and sue for return of the domain and major damages.
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Awesome!! It’s pretty freaking simple. They had a trademark. Buydomains had a domain that was in violation of it… and didn’t have any legitimate reason for owning it. Domaining shouldn’t be held to separate standards of trademark law. Trademarks come first, advertising like yellow pages, print, (Domains,) will always have to be secondary 🙂
This is a disturbing decision. Better check trademark records and other variations of a domain name very thoroughly before parking a domain name and/or offering it for sale!
From my read, it’s not clear if BuyDomains paid the extra $2,500 for a 3-member panel.
Can anyone elaborate here?
This decision needs overturning or else it will be used as precedent in a free-for-all. Scary.
@LindaM,
You’re comments are almost always lacking in substance. You must be the long lost twin-sister of Louise.
I said what I meant to say, no more. Im sorry if my comment did not satisfy you, please feel free to skip past my brief contributions in future.
@Jimmy – “Awesome!! It’s pretty freaking simple. They had a trademark. Buydomains had a domain that was in violation of it… and didn’t have any legitimate reason for owning it. Domaining shouldn’t be held to separate standards of trademark law. Trademarks come first, advertising like yellow pages, print, (Domains,) will always have to be secondary ”
You don’t know what you’re talking about.
Nowhere does is state that Buydomains were profiting from the trademark. There are multiple trademarks for the word ‘Jimmy’ – should you be allowed to own jimmy.com?
A legitimate reason for buying a domain is capital growth on the asset – same as a plot of land.
Bad decision.
These lawyers and domains thieves, which are one and the same IMO, are singing this song:
Free for All
David
It was a three member panel
Really strange. The decision is dated April 13, 2012 but was published only today. Almost two weeks later. Is there something “behind the scenes” we are not aware of? According to the UDRP rules, WIPO is supposed to deliver decisions to parties within 3 days and it is unlikely that their automated publishing system requires 2 weeks to publish the decision which was received in electronic form from the panel on April 13th.
Panelist David E. Sorkin is known for a number of reasonable decisions in favor or domainers as respondents. But in this case he agreed with the majority and did not write any sort of dissenting opinion. Which allows to guess that the response itself was not composed well, for example why did the panel state that ““It is undisputed that Respondent was aware of Complainant’s FACI mark when it registered the Domain Name.”? Is the Complainant really that famous in the country of its incorporation (U.S.)?
@MHB – Yes, but did Faci or BD pay the $2,500 fee? I couldn’t determine from the decision text.
David
Its generally the respondent who asks for and pays for the 3 member panel but I have no way of knowing for sure
this is a really bad one… generic word, 4 letter acronym, etc etc. UDRP is starting to look pretty bad.
@MHB – How can we find out for sure? I think it would be an interesting point if it was Faci that paid vs BD.
Does anyone here have knowledge who paid the $2,500 upgrade fee to 3-member panel?
As Anon says “This is a cost of doing business.”
And …
Micromanaging the 14th Amendment of equal access out of UDRP opinions continues to make the .com’s that cannot be taken away worth that much more – that is what gets me to sleep at night.
– Just for starters, the Complainant does not have exclusive rights in FACI – therefore this opinion, prevents another FACI common law mark or a future FACI trademark from having access to FACI.com via a domain sale or some other 3rd party transaction.
Candidly – David Sorkin and the rest of the Panel is just putting Black folks in the back of the bus and telling them which stores they cannot shop at.
This is a poorly-reasoned turd of a decision.
It’s one thing to claim “Aha! The Respondent had notice!” but the Panel here does not seem to have realized that the Respondent’s notice of the registered trademark is what led the Respondent to ensure that the Complainant’s limited rights in that mark for a specialized product were NOT being violated.
That’s the opposite of “bad faith”.
I mean, sure, I’m perfectly aware that “BERRYHILL” is a federally registered trademark for a chain of Tex-Mex restaurants in Texas. Being aware of that fact, I have avoided opening a restaurant under that name, but I’m perfectly entitled to use the term for other things.
One of the panelists on this case, Mark Partridge, also appears to be MasterCard’s counsel in two UDRP cases it just lost:
http://domainnamewire.com/2012/04/27/mastercard-priceless-mark-isnt-priceless-panel-rules/
One must wonder if Mark Partridge’s flawed logic in these cases he just lost has any bearing on how this Faci.com UDRP case was ruled.
it’s jealousy i tell you. lol.
“wholesale registrants of 3-letter domain names need to be careful”. gimme a break.
if that’s true, if care needs to exercised, then in order to do so domainers need to check trademarks. it’s called due diligence.
it reminds me of the lawyers who used to tell software engineers not to read patents lest they expose the company to potential treble damages for wilfulness. do engineers understand why they are being told this? no. they just learn to fear patents. fear mongering.
all i want to know is if i typed in faci.com and hit the buydomains landing page, would i be shown ads for metal castings? if not, then it’s hard to argue i’d get confused as a consumer. and it’s hard to argue some company producing metal castings should be able to sue me, or file a udrp.
reading the decision, it appears some panelists just don’t like “first come, first served” when it comes to domain names. even though the law where they practice may routinely recognise “first to file” rules in other areas. it’s hard to take their “reasoning” seriously.
these previously web-agnostic businesses filing udrp’s do not have exclusive use of acronyms. they have to share them with other companies worldwide.
this is why domain names under the icann system are seriously flawed. they can’t be shared.
BuyDomains has taken them to court:
http://dockets.justia.com/docket/massachusetts/madce/1:2012cv10800/143754/
Plaintiff: Rare Names, Inc., d/b/a BuyDomains.com, Inventory Management
Defendants: Foster, Andrew & Co., Inc. and FACI Industries Corporation
Case Number: 1:2012cv10800
Filed: May 3, 2012
This is splitting hairs. The question is really whether a legitimate company in the course of doing business should have the right to purchase a domain name at a reasonable price that fairly represents their brand. Period. FACI, Inc. trademarked the name and should not have to pay extortional fees to a third party that does absolutely nothing with the site other than putting up questionable links.
@jamesd – Owning a domain name is not the same as owning a piece of land. That’s why the law is called the “Anticybersquatting Law” – “squatting” being the operative term here, i.e. not legitimate.