WIPO Panel Allows FMA To Keep Domain Despite Trademark & Parking

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Well in an interesting WIPO decision, a sole panelist rejected a trademark holders claim even though they found the domain at issue, finaza.com “was confusingly similar to a mark in which Complainants have rights” and even through the domain was parked for some time.

“””The Panel is cognizant of other decisions (including those of this Panel) finding that “parking” a web site with a service that provides links to third party sites, including those that compete with complainants is not bona fide offering of goods and services.”

“”However, under the circumstances presented here, the Panel finds that Respondent’s prior use of the domain name, first parking it with the hosting service, then linking to Respondent’s Oxide search engine, when considered in combination with its current, actual use of the web site to display content, do constitute bona fide use.””

The saving grace here:

“”Respondent owns a Benelux registration for the mark FINAZA.COM, which it acquired in June 2008, prior to the filing of the Complaint. Further, Respondent has developed and operates a web site at the domain name entitled: “FINAZA: Outrageous People, Outrageous Stories.” The web site recounts true stories of extraordinary people and is intended to entertain and inspire.”

The domain is owned by Future Media Architects, Inc.

About Michael Berkens

Michael Berkens, Esq. is the founder and Editor-in-Chief of TheDomains.com. Michael is also the co-founder of Worldwide Media Inc. which sold around 70K domain to Godaddy.com in December 2015 and now owns around 8K domain names . Michael was also one of the 5 Judges selected for the the Verisign 30th Anniversary .Com contest.

Comments

  1. Aggro says

    I see FMA/Elequa are using the Benelux TM route (in an unrelated TM class) to protect their assets – plus developing a “real” website.

    This was against Finasa — but note that Finaza.com.br is a brazilian bank website and – no doubt – covet the .com. FMA would have known this (not least the huge traffic) and likely filed the TM (unrelated class) to protect the domain and to pre-empt the likely UDRP from Finaza.com.br

    I see a future where more domainers file cheap TMs in unrelated classes for their domains when they have a valuable (usually dot com) domain that has the same keyword as a company’s .ccTLD domain

    These days, it’s too much of a crap shoot not to.

  3. small domainer says

    Elequa is quiet but very sharp.

    What is the going cost for a Benelux TM?

    Whatever happened to all of the Benelux TMs iReit owned?
    Did they include the TM when they sold the .eu domains?