Complainant is FACI Industries of Bolingbrook, Illinois, United States of America, internally represented.
Respondent is BuyD, Inventory Management of Waltham, Massachusetts, United States of America, represented by NameMedia, Inc., United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2012. On January 27, 2012, the Center transmitted by e-mail to Tucows Inc. a request for registrar verification in connection with the Domain Name. On the same date, Tucows Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied 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 Respondent of the Complaint, and the proceedings commenced on February 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2012. The Response was filed with the Center on February 22, 2012.
The Center appointed Robert A. Badgley, Mark Partridge and David E. Sorkin as panelists in this matter on March 21, 2012. The Panel finds that it was properly constituted. Each member of 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. 4. Factual Background
Complainant manufactures industrial products such as metal castings, bearings, electric motor components, magnets, pressure gauges, and capacitors. 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.
According to Respondent, it did not register the Domain Name with Complainant’s, or anyone’s, trademark in mind. Respondent asserts that it “took several affirmative steps to ensure its registration and use of the [Domain Name] did not, and would not, impinge on any party’s trademark rights.” According to the affidavit of Respondent’s Chief Financial Officer, Respondent employs a proprietary technology to screen acquired domain names for “conflicts with exclusively-owned, descriptive, or fanciful trademarks applied for and/or registered at, among other places, the USPTO.” In connection with the Domain Name, Respondent’s CFO affirmed that, “[u]pon our acquisition of the subject domain name, the results for a query on ‘faci’ revealed that while Complainant had active trademarks, such trademarks were limited to use as to metal castings and [other products]. Thus, given that ‘faci’ is a common four-letter acronym, Respondent determined Complainant’s trademark did not foreclose use of the [Domain Name] for goods and services unrelated to Complainant’s goods and services.”
Respondent further asserts, and there is no evidence to the contrary, that at the website to which the Domain Name resolves there are no links to any goods or services related to or in competition with any of the goods or services covered by Complainant’s FACI trademark registrations. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has satisfied the three elements required under the Policy for the transfer of the Domain Name. B. Respondent
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 on a “first come, first served” basis. Respondent cites, among other cases, YIT Corporation v. Future Media Architects Inc.,WIPO Case No. D2007-0588 in aid of this proposition.
Moreover, Respondent argues that it is “well-established that the sale of domain names themselves constitutes a bona fide offering of goods and services where respondent is unaware of a party’s rights in a mark.” Respondent cites in support of this proposition several cases including InnoGames GmbH v. Buyd, Inventory Management,WIPO Case No. D2011-0085. To similar effect, Respondent cites Micron Technology, Inc. v. Null International Research Center,WIPO Case No. D2001-0608, for the proposition that “domain name speculation can be a legitimate interest if Respondent was not aware of Complainant’s trademark rights.” Respondent also claims that it was not targeting Complainant since the Domain Name is offered for sale to the public at large. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has rights in the mark FACI through registration and use. The Domain Name is identical to Complainant’s FACI mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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 trademark or service mark at issue.”
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. This fact distinguishes the present case from the chief UDRP authorities cited by Respondent. For instance, while the panel in the Micron Technology case observed that “domain name speculation can be a legitimate interest,” the panel there added the crucial qualifier “if Respondent was not aware of Complainant’s trademark rights.” Likewise, the respondent contended in the InnoGames case that “the sale of domain names constitutes a bona fide offering of goods or services” with the qualification “where the respondent is unaware of the complainant’s rights in a mark” (the panel itself in InnoGames did not make a finding in relation to the respondent’s rights or legitimate interests, finding for the respondent in that matter on factual grounds distinct from those in the instant proceeding).
The Panel does not quarrel with Respondent’s overall business endeavor, but only with the registration of the Domain Name with actual knowledge of Complainant’s registered trademark rights and the offering of the Domain Name for sale at a hefty markup above out-of-pocket costs. As was observed by the panel in one of the cases cited by Respondent, the YIT case, “wholesale buyers of 3-letter combinations have to be careful when registering domain names.”
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.” (CEAT Limited, CEAT Mahal v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd,WIPO Case No. D2011-1981). 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. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
For essentially the same reasons as were articulated above in connection with the rights or legitimate interests issue, the Panel finds that Respondent is in bad faith under paragraph 4(b)(i) of the Policy. Respondent registered the Domain Name with knowledge of Complainant’s trademark and put up the Domain name for sale for USD 18,800. 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 (see Sabanci v. iu,WIPO Case No. D2003-0498).
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.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Robert A. Badgley
Presiding Panelist
Mark Partridge
Panelist
David E. Sorkin
Panelist
Dated: April 13, 2012
Full & Egal Universal Law Academy