In a one panel decision issued today a the domain name FCM.com was handed over to the previous owner of the domain name.
Its an interesting decision because other panels have refused to allow the UDRP system to recover domain names that were allegedly stolen.
In this case its not even clear that the complainant had a trademark on the term FCM.
Here are the relevant facts and findings;
“”Complainant is an investment management firm which has operated under the name “Fermat Capital Management” and “FCM”. ”
“The record shows substantial use of the mark FERMAT CAPITAL MANAGEMENT by Complainant, but less extensive use of FCM as a mark.”
“”In 2007, Complainant acquired the Domain Name and began using it as its main web address to market Complainant’s investment services. “”
“”On December 23, 2011, Complainant’s technical contact for the Domain Name, M. Seo, received an e-mail purportedly sent from Complainant’s registrar company, GoDaddy.com, but in fact sent from a party unrelated to GoDaddy. The e-mail asked Seo to “log in and reactivate your account.” Seo did so, and unwittingly provided his contact information to Respondent, who is alleged to have “hacked” into Complainant’s GoDaddy account between December 23 and 25, 2011. Respondent then transferred the Domain Name to himself.””
“”On December 26, 2011, Complainant’s customers began to complain that their e-mails to the FCM accounts were being returned as undeliverable.””
“”Complainant filed a police report and took other actions, including the initiation of this proceeding under the Policy.
“”Since its acquisition by Respondent, the Domain Name resolves to a website providing links inter alia to Complainant’s competitors.
A. Identical or Confusingly Similar
There is some evidence in the record that Complainant has used FCM as a mark in commerce to identify and distinguish its investment services. The record also contains evidence that the media recognize FCM as an identifier for Complainant’s services. The Domain Name is identical to this service mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
“Respondent did not file a Response and hence did not effectively rebut any of Complainant’s assertions.”
“”There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.””
“”It has been alleged that Respondent acquired the Domain Name fraudulently through a “phishing” scam, and Respondent has not denied this. The allegation is plausible and unrebutted, and hence the Panel finds it as a fact in this proceeding.””
“”Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.””
“Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent is in “bad faith” under paragraph 4(b)(iv) of the Policy. Respondent’s bad faith registration is an inescapable conclusion here in view of the finding, noted above, that Respondent acquired the Domain Name through fraudulent means.””
“”Respondent’s bad faith use of the Domain Name is likewise clear on this record.””
“By pointing the Domain Name to a website containing hyperlinks to inter alia the competitors of Complainant’s business, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion between Complainant’s mark and the Domain Name””
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
So here is a case in which the complainant had no mark on the term in question yet was allowed the first prong by the panelists. The result was correct but the proceedure seems questionable. To all those who slam wipo as incompetent and bag man for TM holders what do you have to say about the fact that the policy was apparently expanded to allow for the transfer. Should they have let the perp keep the name forcing the former owner to go to court? Interesting question
Michael H. Berkens says
I agree that UDRP is not the proper forum for this issue.
interesting, as previous cases identical to this have been denied – recognizing that UDRP is not the proper channel for theft recovery, the court system is.
Reeha@printer toners says
I agree with you that UNRP is not a proper channel to get your theft and hacked websites. this issue is to solve through world courts that can solve your issue. nice info and great new case for me to get better info regarding UNRP.
Dave Zan says
If they were able to demonstrate common law trademark rights at least, that’s sufficient. UDRP covers both unregistered common law and registered trademarks.
I’ll try to remember when I can, but I kinda recall reading at least 2 UDRPs where (allegedly) hijacked domain names were returned to their respective owners. They still had to satisfy all 3 requirements, but they did.
UDRP may not be the “proper” venue to address domain hijackings. But if that’s what it takes to solve the problem, then…why not?
Dave Zan says
Ah, finally remember one: