Panel hands down the wrong decision in FACI.com case.
A three member World Intellectual Property Organization panel has found that BuyDomains (NameMedia) registered FACI.com in bad faith.
The case makes no sense.
It seems that the panel’s judgement hinges on the fact that BuyDomains knew about the complainant’s trademark for FACI upon acquisition of the domain.
But BuyDomains made it clear that, although it became aware of the trademark, it was very limited in scope”.
[u]pon our acquisition of the subject domain name, the results for a query on â€˜faci’ revealed that while Complainant had active trademarks, such trademarks were limited to use as to metal castings and [other products]. Thus, given that â€˜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.
When it comes to acronym domains, there is some burden on the owner to make sure it doesn’t show PPC links related to existing trademarks don’t appear. But according to the findings of the panel, no keywords related to the complainant’s trademarks appeared on the parked page.
I also take issue with this conclusion by the panel:
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.â€
Although it’s not clear from the write-up whether BuyDomains became aware of the FACI mark before or after it bought the domain, the panel’s conclusion doesn’t make sense either way. Yes, you need to be careful when you acquire short acronym domain names. But as long as you don’t infringe on the mark, you are free to register these domains and sell them at any price you want. (Once again, a panel is deciding what a “hefty markup” is. I didn’t know these guys were domain appraisers.)
From how the panel describes the case, BuyDomains made sure not to infringe on the complainant’s trademark.
The panelists were Robert A. Badgley (Presiding Panelist), Mark Partridge, and David E. Sorkin,
I hope the company appeals to the courts.