« In a brilliant victory for domain name owners, a WIPO panel has declared that a Spanish company’s attempt to appropriate the domain name FCC.com from its legitimate owner without just compensation constitutes a « Reverse Domain Name Hijacking » attempt.
The Spanish company, FCC Fomento de Construcciones y Contratas, had alleged in a WIPO Complaint that the current owner of FCC.com had no legitimate rights in the domain name and was using it in bad faith.
FCC.com was represented by well known domain lawyer John Berryhill, who submitted a lucid masterpiece as his client’s defense.
To obtain the rights to a domain name under ICANN’s Uniform Dispute Resolution Policy (UDRP), the complainant must prove the following three elements:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
2. The respondent has no right or legitimate interest in respect of the disputed domain name.
3. The disputed domain name was registered and is being used in bad faith.
The WIPO panel, consisting of Tony Willoughby, Manuel Moreno-Torres and Nelson A. Diaz, ruled that.
1. FCC.com is indeed identical or confusingly similar to a trademark in which the complainant has rights. (John Berryhill argued that the complainant’s name is a trade name and not a trademark, and in Spain there are no common law rights that automatically give trade names the status of a trademark.)
2. However, the respondent does have rights or legitimate interest in FCC.com because he is using the domain with a bona fide offering of goods or services, in this case a news aggregation services on issues related to the Federal Communications Commission.
3. The domain is therefore not being used in bad faith.
Finally, the panel decided that the complainant abused the Administrative Proceeding because it is « obvious » that FCC.com is a legitimate site and that a complaint was therefore bound to fail. The complainant did not even include a printout of the FCC.com website, which according to the panelists cannot be explained by ‘innocent’ ineptitude or incompetence, but appeared as a high stakes gamble to play the system and trick the panel into a favorable decision. For in some cases, if a respondent fails to respond to a UDRP complaint, some panelists – unjustly so – do not even look at the website in question and issue a default ruling in favor of the complainant.
It’s worth reading the full decision as a splendid example of a landmark case that should serve both as a warning to potential reverse hijackers and a symbol of well-deserved relief for domain name owners around the world. »