A three member UDRP panel just awarded the domain name FACI.com, owned by BuyDomains.com to FACI Industries of Bolingbrook, Illinois

Here are the relevant facts and findings by the panel:

“Complainant markets its wares under the trademark FACI, which was registered as a word mark by the United States Patent and Trademark Office (“USPTO”) in 1998 and 2011.”

“Respondent, since 1999, has been in the business of registering domain names that become available when an existing registration expires. Respondent maintains a large portfolio of domain names. Respondent asserts that its policy is to register and maintain “only those domain names that incorporate common and/or generic dictionary words, phrases, acronyms, abbreviations and/or descriptive terms for which the available evidence suggests no single party has exclusive rights.” Respondent offers some of the domain names it has acquired for sale.”

“Respondent registered the Domain Name on May 27, 2003 after the prior registrant allowed it to lapse. ”

“The Domain Name resolves to a splash page which states that the Domain Name is for sale. ”

“The sale price for the Domain Name was listed by the Respondent as USD 18,800. Complainant alleges, and Respondent does not deny, that this amount exceeds Complainant’s out-of-pocket costs directly related to the Domain Name.”

“Respondent asserts that it has the right to register and use the Domain Name, in part because the term “faci” is “not only a common acronym, but also a common surname and a dictionary term subject to a diversity of third party use.” Respondent also points out that numerous entities unrelated to Complainant have registered and are using domain names containing the term “faci.” Because, Respondent asserts, the term “faci” is “no more than a common acronym, a surname, or dictionary term in three languages,” Respondent was entitled to register and use the Domain Name in a “first come, first served” basis.”

“The pivotal question is whether Respondent may have a right or legitimate interest in respect of the Domain Name because FACI constitutes not only Complainant’s registered trademark but also a variety of other words, acronyms, names and marks in circulation. ”

“The Panel concludes that Respondent does not have a right or legitimate interest in the Domain Name here.”

“It is undisputed that Respondent was aware of Complainant’s FACI mark when it registered the Domain Name.”

“Further in this regard, the fact that other people and entities make use of the term “faci” in various contexts does not by itself legitimize Respondent’s activities vis-à-vis

this Domain Name. Respondent asserts that it has rights and legitimate interests in the Domain Name because “faci” “is no more than a common acronym, a surname, or dictionary term in three languages, “however, as found in prior UDRP decisions, use of a domain name to resolve to a PPC or splash page is not of itself a legitimate use because the Respondent is not using the Domain Name in any way that is related to its generic meaning.”

“The mere fact that a word identical to the Domain Name exists as a defined dictionary term does not give rise to any rights or legitimate interests in the name on the part of a respondent who uses it in ways like this that are not tied to the generic meaning of that word.”

“Someone else actually named “faci” or actually using “faci” in some connection might have an easy time establishing rights or legitimate interests in the Domain Name, but Respondent has no such interest.”

“In sum, the Panel does not believe that Respondent has rights or legitimate interests in the Domain Name for purposes of the Policy simply because parties other than Complainant have made use of the term “faci.”

“Nor, in the Panel’s view, does Respondent acquire such legitimacy under the Policy merely because the Domain Name is offered for sale (for USD 18,800) to the public at large as opposed to being offered to Complainant in particular.”

“Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.”

“The Panel does not believe that one may defend against a claim under paragraph 4(b)(i) under these circumstances by arguing that parties in addition to Complainant were also offered the opportunity to buy the Domain Name at a steep profit to Respondent”

“In the final analysis, the Panel concludes that the registration and monetization of a domain name without a legitimate interest in the domain name and with knowledge that the domain name matches another’s trademark constitutes bad faith registration and use under the Policy.”

Source from http://www.thedomains.com/

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