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UDRP ICA UDRP DIGEST – VOL 2.22

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Faca.com decision highlights evolution in views towards domain name investors over the past decade

Sergio Juan Canamasas Español v. Whois Privacy Services by Domainca, Spsoft Co., Ltd / Lee Wongi, WIPO Case No. D2021-4392

<faca .com>

Panelists: Mr. Ik-Hyun Seo (Presiding), Mr. Albert Agustinoy Guilayn and

Mr. Ilhyung Lee

Brief Facts:
The Spanish Complainant is the owner at Plásticos FACA, S.A. which is in the business of manufacturing high-end plastic containers and packaging for cosmetic products for more than 50 years. The Complainant owns Spanish trademark since 1998 and the domain names <facapackaging .com> and <facasa .com> since January 11, 2017, and March 17, 1999, respectively. The disputed Domain Name was registered on September 18, 2001 by a Korean Individual, and resolves to a domain parking page with pay-per-click links. The Complainant asserts that the Respondent is commercially profiting from the fame of the FACA mark and the disputed Domain Name is parked for sale for USD $55,000. The Respondent explains that he is in the business of registering domain names and selling it later for profit and registered it for its potential commercial value since it consists of four letters only and is easy to pronounce and remember. The Respondent later became aware that the keyword also means “knife” in Portuguese and there are more than 1.5 billion Google results under this search term, most of them not referring to the Complainant at all.

Held: Based on the Respondent’s submissions which are supported by a simple Google search, this term correlates to a slew of other meanings wholly unrelated to the Complainant, including a Portuguese term for “knife”. Further, the disputed Domain Name is parked with a parking service but this is not per se illegitimate under the UDRP, especially for a Domain Name which consists of a dictionary term like “faca” and hosts pay-per-click links actually relate to the dictionary meaning of the word (knives and similar tools) with no evidence of trading on the trademark of the Complainant or its competitors. Although history may suggest the Respondent as a cyber-squatter, the record in this case does not support a finding of bad faith. There is no evidence to suggest that the Respondent knew of the Complainant at the time of Domain Name registration. Further, the offer to sell the disputed Domain Name or the Respondent’s use of the disputed Domain Name for Sedo parking, without additional supporting factors, do not necessarily indicate bad faith here. Therefore, based on the available record no reasonable inference can be made that the Respondent specifically targeted the Complainant in bad faith to free ride on the reputation and fame of the Complainant’s mark by registering and using the disputed Domain Name.

Complaint Denied

Complainants’ Counsel: Ferran Farré de Febrer, Spain

Respondents’ Counsel: Self-represented




Refiled Complaint Attempts to Target Domain Name on Sale


Camco Manufacturing, LLC v. Brian Wick / CheapCo .com, NAF Claim Number: FA2204001992264

<camco .com>

Panelists: Dr. Katalin Szamosi (Presiding), Ms. Diane Cabell and Mr. Richard Hill

Brief Facts:
The Complainant, incorporated in 1968, is an international manufacturer and seller of products related to ATVs, RVs, boats, camping, cleaning supplies, plumbing, and towing. The Complainant states that “This present action is a refiling of an action commenced by the Complainant on March 18, 2011 where the Forum dismissed (without prejudice) the previous action” (hereinafter “Camco I”). The Complainant argues that, prior to the Camco I decision, it had already established common law rights in the CAMCO mark; further, since the Camco I decision, it acquired numerous federal trademark and service mark registrations for the CAMCO mark. The disputed Domain Name was registered on September 08, 2003 and is being used as a platform to resell domain names. The Respondent contends he buys, sells, markets, develops, promotes and advertises generic, intuitive, geographic, surname and commonly used terms on the Internet. The Respondent reserved disputed Domain Name 19 years ago, when the Complainant was nowhere to be found in a sea of countless other CAMCOs all over the world, which is evident from the USPTO database, Secretary of State Filings and WIPO database as well. The Respondent began buying numerous domains ending in “….co .com”, such as Camco .com, Cheapco .com and Glassco .com – some of which are identified in the Response.

Held: The Panel finds that it need not determine whether the term “camco” should be considered to be generic, in the sense, it is a combination of the generic terms “cam” and “co”. The Panel agrees with the Respondent that the term “camco” is a commonly used term and the term was in common use by multiple parties at the time the disputed Domain Name was registered. The Complainant did not provide any evidence showing that the Respondent was targeting the Complainant in particular or that the Respondent had reason to expect that the Complainant had any exclusive rights in the term when the disputed Domain Name was registered. And even now, the Complainant’s rights are not exclusive except as to the limited class of goods for which the mark was registered. Further, the Respondent provided evidence containing amongst others screenshots of his business at <cheapco .com>, the center of the Respondent’s business network of generically held domain names for sale. Based on the foregoing, the Respondent has shown that prior to the dispute and the registrations of the CAMCO marks, the Respondent used the disputed Domain Name in connection with a bona fide offering of goods and services.

Complaint Denied

Complainants’ Counsel: Blake P. Hurt of Tuggle Duggins P.A., North Carolina, USA

Respondents’ Counsel: Self-represented




Read more case summaries @ https://www.internetcommerce.org/ud...story-always-matter-ica-udrp-digest-vol-2-22/
 
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