Lawsuit over FACI.com is about more than just a single domain name.
In April I wrote about how a WIPO panel “stole” FACI.com from BuyDomains (NameMedia) in a faulty UDRP decision. I also mentioned that I hoped BuyDomains would turn to the courts to over the issue.
On Friday George Kirikos noticed that the company did indeed turn to the courts, filing a lawsuit in Massachusetts. The suit is fairly bread-and-butter for declaratory and injunctive relief.
NameMedia doesn’t always challenge adverse UDRP decisions in court. But filing this suit was a smart move. Here’s why.
It can keep the domain
This one is kind of obvious. By filing the lawsuit the UDRP will be stayed and NameMedia can keep the domain pending the outcome of the suit.
I’m not sure how much the company would have sold this domain for. Odds are it will spend more on the lawsuit than the domain is worth to it. But…
Ward off future UDRPs
The biggest reason to file a case like this is to put other potential complainants on notice: you’ll fight to protect your property.
Tucows has sent this message loud and clear. If you file a UDRP against the company they will take you to court. In Ontario, no less. It amazes me that some companies still file UDRPs against Tucows’ surnames portfolio. It’s a waste of money. If you win the UDRP you’ll find yourself on the other end of a lawsuit. I guess some complainants still don’t know how to use Google to find the many stories about Tucows doing this.
Have a cleaner image
UDRP losses can be used against you in future UDRP cases. If NameMedia wins this lawsuit, then any future complainant that cites the FACI.com loss will be greeted with a response about how that loss didn’t stick.
There’s also the issue of retroactive penalties for UDRP losses. ICANN’s guidebook for new top level domains labels anyone who has three “final” adverse cybersquatting rulings within a specified period of time as a bad apple. They (technically) can’t apply for new TLDs. Who knows when another retroactive penalty will be slapped on domain name owners?
John UK says
This is exactly why I took my lost UDRP to Court in Germany,and won the domain back. I was determined not to lose another domain that did not deserve to the lost. It cost me only $2000(for reasons I dont think I should say)from start to finish and the Complainant probably $25k. In future ,anyone who issue s a UDRP will face an immediate Court case.
Thomas says
I agree with NameMedia and Tucows. But if someone decides to put a complaint in one of my domains I will not wait for the desicion of wipo, I’m going to sue and take them to court no matter the desicion of the panel. And if the registrant decides to take interest in favor of the complainant be sure that too will be in court.
Thomas says
Sorry I meant Registrar.
Steve says
I bet the Ontario courts will let them keep the domain. Even if they were running faci ads on the site I am almost positive an Ontario court will decide it’s not a problem and let them keep it.
I have moved all of my most valuable names to Canadian registrars. I even asked godaddy to have a dedicated hosting/server site in Canada so I could have all of my names under a Canadian jurisdiction. They said they haven’t done that yet so I have to keep some at another Canadian registrar until they do.
John UK says
@Steve. Why do you say Canada is good jurisdiction ? Are there any Court decisions that show that yet ?
Steve says
I found this one in a quick search, but I for sure have heard of other instances and most stayed with the original registrant.
http://www.michaelgeist.ca/resc/html_bkup/july252002.html
the judge concluded that “simply because a domain name is identical or similar to a trademark name should not result in the transfer of the domain name to the trademark owner. In my view, unless there is some evidence that the use of the domain name infringes on the use of the trademark name, a person other than the owner of the trademark should be able to continue to use the domain name.”
Steve says
Another nice decision.
http://www.dimock.com/news.php?article=212
it will be easier for Canadian domain name registrants to seek adjudication of entitlement issues in their own
John UK says
@Steve Thanks for those 2 cases. Hmm, maybe Canada is better than Germany then.
John UK says
Will be interesting to see what Judgment the Court makes in the renner_com case ,if indeed it comes to trial/judgment stage. At least we now know it is quite possible to grab jurisdiction but that is only a part of what is required. Combined with the other Judgement in Canadian_biz it is making it look attractive anyway.
Steve says
At least if you live in Canada it looks like you may be able to keep it close to home if anything does happen.
John UK says
@Steve Remember though that under UDRP the complainant MUST submit to the Jurisdiction of either the Registrant address as stated in the whois , OR to the Registrar’s jurisdiction if that is stated in the Registrar-Registrant agreement when registering the domain. So, to be honest the case of renner_com does not give anymore than could have been gotten from the UDRP anyway. More interesting and useful is the Canadian_biz decision if other Canadian Court’s would follow that in future decisions.