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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FCC Fomento de Construcciones y Contratas, SA v. “FCC.COM”

Case No. D2007-0770

1. The Parties

The Complainant is FCC Fomento de Construcciones y Contratas, SA, of Madrid, Spain, represented by Garrigues, of Madrid, Spain.

The Respondent is “FCC.COM”, of New York, New York, United States of America, represented by John Berryhill, Media, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <fcc.com> (the “Domain Name”), is registered with Moniker Online Services, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2007. On May 26, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 30, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 11, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2007. The Response was filed with the Center on July 12, 2007 (July 11, 2007 in the time zone of the Respondent). No issue appears to have been taken over the timing of the Response.

On July 25, 2007, following a request from the Complainant, the Center suspended this administrative proceeding until August 24, 2007 to enable discussions between the parties to take place.

On August 24, 2007, following a representation by the Complainant that settlement negotiations were ongoing and a request that the suspension be extended, the Center issued a suspension notice extending the suspension until September 23, 2007. However, on August 27, 2007 the Respondent disputed that any settlement negotiations were ongoing and objected to the extension of the suspension. There being no agreement between the parties as to the extension of the suspension of this administrative proceeding, the Center discontinued the extension and commenced preparations for appointment of the Panel.

The Respondent having requested a three-member panel, the Center appointed panelists, Tony Willoughby, Manuel Moreno-Torres and Nelson A. Diaz as panelists in this matter on September 28, 2007. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

At an earlier stage of this administrative proceeding, there appeared to be an issue as to the precise identity of the Respondent. In light of information provided by the Respondent, it is clear and not disputed that for the purposes of this decision the Respondent, its Administrative, Billing and Technical contact, Keith Levenson, and Mr. Levenson’s company, Acme Media LLC, should be treated as one. The Panel proposes to adopt that approach.

On October 5, 2007, following completion of the first draft of this decision the Complainant’s representative sent to the Center (copied to the Respondent and the Panel) the following email message:

“Further to your last e-mail of September 20, 2007, we would like to bring to you knowledge the efforts done by the Complainant to ensure the proceedings do not take much longer, however, we understand the appointment of three Panelists requested by the Respondent, have obviously caused a substantial delay. Moreover, and regarding the Complainant’s presence in the United States, there are new facts that further prove the reputation and recognition of the Complainant in the United States. In this sense, please find attached very recent documents sustaining the latter and copies of articles published by American Newspapers as well as the website links, where the Managing director of and leading shareholder in FCC (Esther Koplowitz), was awarded with the Business Leader of the Year Award. The above-mentioned links are as follows: http://www.newyorksocialdiary.com/node/2537?nid=2341; http://www.manhattan.smugmug.com/gallery/3553261#201304519; http://www.forbes.com/lists/2006/10/NBDS.html

http://www.tmcnet.com/usubmit/2007/09/28/2974016.htm

http://www.mctdirect.com/visuals/preview.htm?doc=KRT/krtabacaphotoslive/docs/297/833

Hoping this information and materials will be forwarded to the corresponding Panelists and it is considered when reaching the decision, we remain at your disposal.”

Notwithstanding the terms of the final paragraph, the Complainant’s representative ensured that the Panel would have access to the material in question by copying the members of the Panel on the email. The Center received an objection thereto from the Respondent in an email on October 8, 2007, as well as a reaction to such objection from the Complainant on October 9, 2007, both of which the Center forwarded to the Panel. However, having regard to the fact that the Panel’s decision does not turn on the fame or otherwise of the Complainant in the United States of America, and without therefore the need to revert further to either of the Parties, the Panel declined to consider the further material in question.

4. Factual Background

The Complainant is a Spanish company, the result of a merger of two much older companies, which took place in 1992. The Complainant is a very substantial company engaged in the field of construction and a wide variety of more or less related fields ranging from waste disposal to passenger transport.

The Complainant is the registered proprietor of several trademark registrations for marks featuring the acronym FCC in one shape or form. These registrations are Spanish registrations and CTMs, the earliest of which dates back to 1992. There is no registration of the letters FCC simpliciter.

The Domain Name was first registered in 1994. In December 2006, the registrant was Declude Inc. In late January, 2007, Declude Inc. put the Domain Name up for sale. On February 19, 2007, the Respondent (in the person of its Administrative, Billing and Technical contact, Keith Levenson) agreed to purchase the Domain Name for US$60,000 and shortly thereafter the Domain Name was acquired by the Respondent.

The Respondent (in the person of Mr. Levenson and Acme Media LLC) is a leading player in the field of domain development and domain name acquisitions and sales. A document produced by the Complainant declares “Under the leadership of its CEO, Keith Levenson, a seasoned Internet and real world entrepreneur, Acme Media is poised to become the most influential force in domain development, acquisitions and sales well into the 21^st century”.

The Respondent has used the Domain Name to connect to a website devoted primarily to the affairs of the United States Federal Communications Commission. It features Google Ads consistent with that topic.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its registered trademarks featuring the letters “FCC”. The Complainant produces a decision from the Spanish Trade Mark Office in which it is said that one of those registrations is a well-known mark such as to afford the Complainant a very broad ambit of protection for that mark. The Complainant also refers to its various domain name registrations, namely <fcc.es> (1996), <fcc.info> (2001), <fcc.biz> (2002), <fcc.com.es> (2003), <fcc.eu> (2006) and <fcc.mobi> (2006). Further, the Complainant claims that the Complainant is very well known by reference to the FCC acronym.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant refers to the examples of what for this purpose shall constitute ‘rights or legitimate interests’ as set out in paragraph 4(c) of the Policy and declares that none of them is applicable. Specifically, the Complainant contends that the Respondent’s purpose is to earn ‘pay-per-click’ revenue via the Google Ads on the Respondent’s site from Internet users looking for information on the Complainant. The Complainant challenges the Respondent to come up with a satisfactory explanation.

Further, the Complainant contends that the Domain Name was registered and is being used in bad faith. As indicated above, the Complainant’s primary allegation is that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In addition, the Complainant asserts that Mr. Levenson deliberately tried to hide his identity behind “fcc.com”, a false registrant identity given for the Whois database record. This of itself, so the Complainant contends, is evidence of bad faith. Moreover, the Complainant contends that the fact that its trademark is a famous mark is a basis for inferring bad faith on the part of the Respondent. AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088 is cited in support of that proposition. Finally, the Complainant contends that the fact that the Respondent “is becoming the most influential force of domain development, acquisitions and sales well into the 21^st century” is reason enough to conclude that the Domain Name was registered in bad faith.

B. Respondent

The Respondent denies that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Respondent contends that the Complainant’s trademark registrations, all of which are for marks which comprise other matter in addition to the letters FCC, are sufficiently dissimilar to render confusion unlikely.

The Respondent contends that Spain being a civil law jurisdiction, common law rights in passing off are not recognized, so the Complainant cannot rely upon any common law rights in respect of the FCC acronym.

The Respondent goes to some lengths to demonstrate that in both Spain and the United States of America the letters “FCC” mean many different organizations, not just the Complainant, and that, accordingly, the Complainant cannot contend for exclusivity. The Respondent contends further that there is insufficient distinctiveness to give rise to any real risk of confusion.

The Respondent asserts that it has rights or legitimate interests in respect of the Domain Name. The Respondent claims to have acquired the Domain Name for the purpose for which it has been using it, namely “to provide what is called a “news aggregation site” for items of current events relating to the Federal Communications Commission”.

The Respondent denies that the Domain Name was registered or acquired and is being used in bad faith. The Respondent points to its use of the Domain Name for a site related to the affairs of the FCC (i.e. the United States Federal Communications Commission, which it claims is a fair, legitimate use). It acknowledges that the site is supported by advertising revenue, but points out that the advertisements are primarily of a type likely to be of interest to companies interested in the Federal Communications Commission. None of the advertisements are Spanish and none relate to any goods/services associated with concrete.

The Respondent rejects the Complainant’s allegations associated with the Whois contact information relating to the Domain Name and the suggestion that the true identity of the Respondent was sought to be concealed by the Respondent. The Respondent points out that the changes to the database information were largely dictated by the mechanism of the transfer. The Respondent also observes that nobody has had any difficulty in identifying and making contact with the Respondent.

The Respondent contends that prior to the launch of this Complaint, the Respondent had never heard of the Complainant and notwithstanding the Complainant’s claims to its trademark being a famous mark.

The Respondent roundly rejects the Complainant’s suggestion that the Panel should make a finding of bad faith on the back of the information that Mr. Levenson “is becoming the most influential force of domain development, acquisitions and sales well into the 21^st century”.

Finally, the Respondent contends that the Complainant launched this administrative proceeding in bad faith and is guilty of Reverse Domain Name Hijacking. The Respondent points to (a) a false claim as to the date that the Complainant was founded; (b) a failure to disclose the true nature of the Complainant’s trademark registrations; (c) a failure to disclose the nature of the Respondent’s use of the Domain Name; (d) the Complainant’s defamatory suggestion that since the Respondent is a successful entrepreneur, he must be up to no good.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:

“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”

B. Identical or Confusingly Similar

The Domain Name comprises the letters “fcc” and the generic domain suffix “.com”. The Complainant’s trademark registrations feature the letters “FCC” prominently, albeit in a stylized form and/or accompanied by additional matter. Moreover, in Spain, a trademark can be infringed by oral use of the mark. In the case of many of the Complainant’s marks “FCC” is the only possible oral representation of the mark.

The Respondent correctly observes that there are many organizations with rights to the acronym FCC, but that does not mean that the Complainant cannot also have rights to the acronym. It may simply mean that the rights, such as they are, are of limited effect.

This hurdle is not intended to be a high hurdle for a Complainant to overcome, the objective simply being to ensure that the Complainant has a bona fide basis for launching the Complaint.

FCC is the acronym by which the Complainant is known. The Respondent says that this should be ignored by the Panel because (a) the Respondent’s name is a trade name and not therefore use as a trademark and (b) common law rights in passing off are unknown in Spain. In light of its finding below, it is not necessary for the Panel to come to a conclusion on this last point, but it is to be observed that in Spain if a competitor of the Complainant were to set up in business under the same acronym, it is inconceivable that the Complainant could not have that competitor injuncted by way of an unfair competition action (i.e. achieve precisely the same result as a plaintiff in a passing off action). It would be odd if the Policy discriminated in favour of Complainants from common law jurisdictions solely because common law rights in passing off are often described as unregistered trademark rights, whereas unregistered trademark rights are not known as such in civil law jurisdictions.

Be that as it may, the Panel is content to deal with this issue solely on the basis of the Complainant’s registered trademarks and finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Respondent has produced evidence to show that it acquired the Domain Name for the sum of US$60,000.

It is quite clear from the use that the Respondent has been making of the Domain Name that the Respondent’s purpose in acquiring the Domain name was, as the Respondent asserts, “to provide what is called a “news aggregation site” for items of current events relating to the Federal Communications Commission”. The site is littered with references to the United States Federal Communications Commission, which is widely known in the United States of America under and by reference to the acronym “FCC”. There is absolutely nothing on the site to suggest that the Respondent is in any way targeting the Complainant. The Respondent denies having been aware of the Complainant prior to the launching of this administrative proceeding.

The Respondent has been deriving an income from the advertisements on the site, but those advertisements have in the main been advertisements of a kind which one would not be surprised to find on a site associated with the affairs of the United States Federal Communications Commission.

There is nothing in the evidence before the Panel to suggest that the site is a ‘spoof’ site designed to defeat a complaint under the Policy; nor is there anything to establish that the Respondent’s denial of all knowledge of the Complainant is untrue.

The Panel finds that the Respondent has rights or legitimate interests in respect of the Domain Name within the meaning of paragraphs 4(a)(ii) and 4(c)(i) of the Policy, in that before any notice to the Respondent of the dispute, the Respondent’s use of the Domain Name had been (and continues to be) in connection with a bona fide offering of goods or services.

D. Registered and Used in Bad Faith

By the same reasoning, the Complaint must fail under this head as well.

E. Reverse Domain Name Hijacking

The Respondent contends that for the Policy to operate efficiently the parties must conduct themselves with propriety. The Respondent observes that this Complaint has put the Respondent to significant and wholly avoidable trouble and expense. The Respondent had no alternative but to fight this case. It was not as if the Domain Name was not in active use.

The Respondent contends that the Complainant launched this administrative proceeding knowing that the Complaint had no merit. The Respondent contends that the Complainant deliberately failed to include in the Complaint any information about the true nature of the Respondent’s website, precisely because the content of the website made it clear that the Respondent has been acting all along in good faith. The Respondent contends that in proceedings of this nature complainants are under a duty to act with candour; and certainly not to conceal material facts.

The Respondent complains of other subsidiary matters which it claims demonstrates the bad faith approach of the Complainant – i.e. failure properly to identify the scope of the Complainant’s trademark rights, false allegations about the Respondent’s motives behind the information provided for the Whois database and the drawing of defamatory inferences based upon the Complainant’s fame as an Internet entrepreneur.

The Panel dismisses the subsidiary complaints. The important one is the inexplicable failure on the part of the Complainant to exhibit a print-out of the Respondent’s homepage or, failing that, to include within the body of the Complaint a description of the content of that homepage.

If, as the Respondent suggests, it was a deliberate ploy to deceive the Panel, it may be said that it was a ploy doomed to failure. The Respondent was bound to draw the Panel’s attention to the site, the Panel was bound to examine the site and was bound to come to the conclusion that it has, namely that the Respondent’s acquisition and use of the Domain Name has been in good faith. On that basis it may also be said that the Complainant cannot have been that inept and cannot, therefore, have had any abusive intent.

However, that begs at least two questions. First, is the test for abuse in relation to Reverse Domain Name Hijacking a purely subjective test? Secondly, suppose the Respondent had not responded. Respondents sometimes do not respond not because they have no answer to the complaint, but because, for one reason or another, the complaint does not receive their attention in time.

As to the first of those questions, the Panel is in no doubt that the test has to contain an objective element. While the Complainant’s motives will of course be an important consideration, it cannot be the case that ‘innocent’ ineptitude or incompetence is a complete answer.

As to the second question, the Panel observes that if there had been no response, there would have only been one panelist (it was the Respondent who sought a three member panel) and it is known that some panelists take a more robust view than others where there is no response and some panels restrict their consideration solely to the papers before them. Accordingly, it is not inconceivable that a sole panelist might have decided the case without looking at the Respondent’s website and might have come to a different conclusion.

The Policy is designed to be a speedy effective alternative to litigation for the express benefit of trademark owners. It is incumbent upon trademark owners taking the benefit of the Policy with a view to eradicating abuse of the domain name system to act in good faith in their approach to the Policy. Deliberately launching a complaint, knowing that it is without merit, is inconsistent with that duty.

Anyone examining the Respondent’s website could see that it was a genuine site and that anyone¹ launching a complaint was bound to fail. The Complaint makes clear that the Complainant had visited the Respondent’s website. The Complainant mentions the fact that the Respondent’s website features revenue earning advertisements, but does not identify the nature of the advertisements; moreover, the Complainant uses the fact of those revenue earning advertisements (i.e. commercial gain) as a basis for its bad faith claim. The Panel is in no doubt that it was incumbent upon the Complainant in the circumstances of this case, noting in particular the nature of the domain name in question, to provide the Panel with sufficient detail of the Respondent’s website to enable the Panel to make a fair assessment.

The Panel finds that the Complainant’s failure to do so, irrespective of whether or not the failure was intentional (as to which the Panel makes no finding), constitutes an abuse of the Administrative Proceeding. The Reverse Domain Name Hijacking allegation succeeds.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: October 7, 2007

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¹ This is not to say, of course, that the Federal Communications Commission for example would in such a situation necessarily be found liable to a finding of reverse domain name hijacking.