This case is particularly dirty.
Italian machine tool manufacturing company FICEP SPA has been found guilty of reverse domain name hijacking in a UDRP for FICEP.com.
Czech Arbitration Court panelist Jane Seager got the call right as this is a very clear cut case of reverse domain name hijacking. It was a pretty dirty filing.
FICEP SPA filed a case against respondent FICEP in October. It was a clear-cut case that it lost.
Although FICEP SPA has been around for decades, it didn’t file for any trademarks on FICEP until last decade. The respondent is a French company incorporated in 1978 and its founder began providing services in 1973 under the term FICEP. It registered FICEP.com in June 1998.
That alone was enough to lose the first case.
The Complainant filed this second case against the respondent in February of this year. In a rather questionable error of omission, the complainant failed to specify whether any other proceedings concerning the Domain Name had previously been brought. One obviously had in the form of the first UDRP denied by Czech Arbitration Court just months ago.
Once correcting that “error”, FICEP SPA went on to make ridiculous arguments.
According to the Complainant, the Domain Name has been used since 1998 as a means to deceive the Complainant’s customers. Since 1998, and the complainant is just getting around to taking action? (It apparently first sent a letter to the respondent in 2011, more than a decade after the domain was registered.)
The Complainant also stated that the Respondent has not been commonly known by the Domain Name because the Complainant is commonly known by this term, and two companies cannot be commonly known by the same term.
The respondent replied that the arguments are bunk, and pointed out that the case doesn’t qualify for refiling.
The respondent also suggested he was being set up:
The Respondent also states that, since the Complainant filed the Second Complaint, it has received several emails and letters addressed to the Complainant, supposedly from suppliers or consumers. The Respondent asserts that such confusion has never happened before and states that the email address used (firstname.lastname@example.org) does not appear on the Respondent’s website (which refers to email@example.com), only on its business cards and commercial advertisements. In the Respondent’s opinion, this indicates that the senders probably did not go to the Respondent’s website but were given the address by the Complainant in an effort to demonstrate confusion between the two companies, thus showing the Complainant’s bad faith.
In this regard, the Respondent states that it has initiated a criminal procedure for fraud before the French criminal authorities and that the legal representative of the Respondent was heard by an officer of French police on 11 March 2014 as part of preliminary investigations.
FICEP SPA countered:
…The Complainant argues that the French police report submitted by the Respondent does not prove that the Complainant has committed any fraud, and that this is ultimately a question for a court to decide. Instead the Complainant argues that the report illustrates the Respondent’s bad faith as it did not reply to such emails and did not forward them to the Complainant. In the Complainant’s opinion, the Respondent clearly registered the Domain Name in order to prevent the Complainant (the trademark owner) from reflecting its trademark in a corresponding domain name, which is evidence of bad faith in accordance with paragraph 4(b)(ii) of the UDRP…
FICEP SPA claimed it wasn’t aware of the emails until the respondent brought them up, which is a clear indication that the Complainant is not linked to such correspondence.
I don’t have access to all of FICEP’s filings in this case, but it’s interesting how the panelist’s interpretation doesn’t include FICEP initially fully denying the accusation. In its first response, FICEP SPA merely said the allegations weren’t proven and needed to be handled by a court. Why not just come out and say the accusation was false in the first response?
Panelist Jane Seager found FICEP SPA guilty of reverse domain name hijacking on the grounds that its omission of completing the section on previous filings was likely on purpose and that it should have known its second filing would fail based on the clear-cut decision in the first case.