BREAKING: BuyDomains.com Takes The FACI.com UDRP Decision To Federal Court

Last week we told you that BuyDomains.com lost a UDRP on the domain name FACI.com in a poorly reasoned decision.

Yesterday Rare Names, Inc, d/b/a BuyDomains.com filed a federal court action in the Massachusetts District Court against the UDRP complainants, Foster, Andrew & Co., Inc. and FACI Industries Corporation.

Since a UDRP is not technically appeal-able, but a new action, BuyDomains asked the court to block the transfer and for a declaratory judgement that it did not infringe on FACI trademark

The case is here

Its case: 1:12-cv-10800-DJC

 

Hat Tip: George Kirikos

Comments

  1. Elliot says

    I’d love to know how much money has been paid in bribes over the years to UDRP panelists – I’ll bet the number would surprise even the most cynical of folks.

  2. Michael H. Berkens says

    Elliot

    I don’t think any bribes have been paid but there are clearly other issues including panelist also representing brand owners in other cases and the NAF itself which are barred from representing credit disputes in its home state due to documented improprieties

  3. Philip Corwin says

    Good for them.

    The decision was a significant departure from past UDRP practice and a large and unwarranted expansion of trademark rights at the expense of registrant rights. If the court reverses and finds for BuyDomains it will discourage other UDRP panelists from going down this road in future cases.

  4. Ron says

    The bribes issue is interesting, who monitors such actions, and accounts.

    We are not in a nickel, and dime industry anymore, we are talking billions now, there has to be some formality in actions, and judgements. Look how ICANN has fallen apart, they can’t keep their own pants up. I have paid ICANN over 5 figures in my domaining span, I am sure others have paid more, not a lot to show for it. I do not want to see anymore lobbies of 5 star hotels in their pictures.

  5. Richard Saperstein says

    I’m behind them all the way. I’m tired of generics being taken away for corporate greed. I hope they win and I back them 100%.

  6. Philip Corwin says

    One of the big problems here is that ICANN has accredited the UDRP providers — that is, empowered them to cancel or transfer domain registrations — but has no contracts with any of them setting limits on their power, requiring consistency of decisions across providers to prevent forum shopping, setting conflict of interest rules that would prevent panelists from also serving as counsel in other cases, or providing any disciplinary/enforcement tools short of de-accreditation (which isn’t likely to happen).

    In short, ICANN has given UDRP providers the power but takes little to no responsibility in overseeing their exercise of that power.

    Back In February ICA asked ICANN to investigate NAF because of some terrible UDRP decisions, and ICANN legal staff told us they were looking into it and we’d hear more soon. But we’ve heard nothing since, and our follow-up e-mails have gone unanswered. Rest assured we are not going to let up until we get some answers.

    Can you imagine what trademark owners would be saying and doing if ICANN had the ability to empower third parties to cancel or transfer their trademarks under similar circumstances? They wouldn’t stand for it. And there’s no reason that domain registrants should either because domains, just like trademarks, are valuable intangible assets that deserve reasonable due process protections.

  7. SF says

    The “system” is definitely broken and challenges like this could eventually lead to legislation that levels the playing field.

    Hope the judge tears them a new one!

  8. Passionately Indifferent says

    We have to fight the good fight against NAF, WIPO, the panelists, the dirty Complainants, and ICANN for how dirty a game they created and have us playing.

    I have specifically reserved cash to sock it to the next sucker(s) that tries stealing a domain from me and I will trash their name before it is all over and done with. They will have lost much more then they could have imagined being labeled a dirty domain thief and an unethical company.

    Way to go BuyDomains !!! Help us all set an example.

  9. adam says

    Guys! you have idiot UDRP panelists in US. They even famous for their stupidity in Europe.
    That`s why more and more foreign companies attack yours .com and will be even more in the future.

  10. BrianWick says

    “it will discourage other UDRP panelists from going down this road in future cases.”

    But these poor UDRP Panelist have bills to pay – who will pay their bills then ?

  11. gimmeabreak says

    udrp, and especially the proposed urs, is sort of like trademark counsel’s answer to not knowing how to register large numbers of domain names.

    they need to be able to file these quickly, without any vetting on the front end. the same way domainers need to be able to register 1000′s of domains at a time, without any vetting on the front end.

    each needs a semi or fully automated “bulk” filing/registration method.

    meanwhile, icann does nothing to try to fix things, and quietly makes easy money. for doing nothing.

    if icann believes these problems are unsolvable, and they cannot do anything to fix them, then what is the point of icann’s existence?

    answer: ?

  12. says

    It’s a joke. It’s like having a VP of the U.S. help start a war in the MidEast and give his last company he “resigned” from as its CEO a no-bid billion $$$$ contract to provide all the fun war materials and get our armed forces to protect those precious Halliburton tanker convoys to the coast. That’s ICANN. We’re the soldiers finding the power brands through our domain purchases.

    As far as ICANN, Insider info, influence peddling, and I like Elliot’s straight up and true accusation of BRIBES. MHB, it’s not believable that you are naive to think this doesn’t happen. Of course that happens.

    What should be established is this: Any domain name, whether one, two, three word phrases, is purchased by someone, that date of purchase should be LOCKED DOWN as a starting point for TM ownership. PERIOD. If you buy a domain name on Sept 10, 2003, and some company starts a new prodserv on Sept 11, 2003, they can’t sue you for TM rights AS LONG AS THE DOMAIN HOLDER STICKS TO ONE PRODSERV to be trademarked. “Blanket TM’s” are usually dismissed in court, but absolutely, consideration HAS TO BE GIVEN to a domain investor who bought a domain name before a company launches its new prodserv.

    If the company was worried about its TM on their new prodserv, then they should have bought the domain/s before they even started developing it.

    Simple, huh! We should be so lucky.

  13. Anon says

    How is this a poorly reasoned decision when BuyDomains acknowledged that they were aware of the trademark when they registered that domain? It is pretty clear cut to me – BuyDomains took advantage of the trademark and priced the domain for much more than their other 4 digit dot coms in their inventory and ended up paying for it.

  14. says

    As was said in the previous blog post, the trademark in question was not registered as the letters faci but was a graphic looking like faci. If the company filing the UDRP had been dba faci it would have had a good case vs. cybersuatting. But is that what happened? The circumspect actions of BuyDomains arguably do not amount to an admission of a trademark consisting of the text string faci existing.
    Anon’s reasoning may be faulty.

  15. says

    OTOH if BuyDomains jacked up the asking price on this 4 letter word in the hope that the eventual UDRP complainant would buy it out, and if that was the reason for mentioning the trademark logo in order to attract the attention of the complainant, then BD’s motive was akin to cybersquatting, and if this can be shown by a preponderance evidence in the new action, then BD could very well lose in Federal Court. Prior business practices of BD may come into play here, as evidence.
    In this latter scenario you have the FACI people just refusing to be held up for pocket change and filing a UDRP instead.

  16. says

    @Gaines

    oops, a fly in the ointment. Well said, and perfectly legit. Uh oh, am I now going to get my Afternic domains backlogged, beyond BD’s true focus on selling their own 750,000 domain catalog? I’m sorry I told the truth, as a domain industry insider. BD may want us all to to be outraged, as the Coyote set the traps for the Roadrunner,and then MEEP MEEP, coyote eats the big one.

    Then behind me, I heard “meep meep”, and I instantly knew that good or bad, all of us domainers know one thing:

    Cartoons rock! Every domainer uses lessons they learned from cartoons to reach where they are today. Don’t deny it, readers. You know most of your tactics and strategies were formed by thousands of cartoons you watched!

    Go ahead. I DARE one domainer to post that THEY did not watch cartoons, and that cartoons didn’t help them understand what domain positioning was.

    So yeah, I’ll be the first domain consultant to state: “Cartoons can help you understand strategy, recognition, and direct relationships if you understand the ethical and moral stance of the cartoon. This comment, although I know some “old timer” will hate this, because it doesn’t follow the first time cartoons have given credit and legitimacy to domain names. Never underestimate the source of education for you to grow your domain monetization.

    Contact Successclick to get pro advice on these delicate things. MHB wants you to do this. Really. He loves all of us at Successclick.com and secretly gets the real dirt,

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