Fabricators & Manufacturers Association, International filed a UDRP against Fabricator.com at the National Arbitration Forum. Until the decision was published on the NAF website, I was not sure who filed the UDRP given the generic nature of the “Fabricator” term. The domain name is owned by GoDaddy’s NameFind, and the company was represented by attorney Gerald M. Levine of Levine Samuel, LLP.
This morning, the NAF published the UDRP decision. The panel (only one panelist) ruled in favor of the domain name owner, so NameFind will retain the domain name and be able to sell it.
In order to prove its case, the complainant needs to prove that (paraphrased) the domain name is identical or confusingly similar to a trademark, the complainant has rights and legitimate interests in the name, and the domain name was registered and used in bad faith. In this particular case, the panelist ruled in favor of the domain owner on one element, so he did not feel the need to rule on the other aspects of the UDRP.
Here is the section of the UDRP decision I feel is most relevant to domain name owners, especially those who sell commonly used dictionary .com domain names:
“The Panel duly observes that it is well and long established rationale and principle of trademark laws across the countries that the exclusivity of a trademark right does not extend to non-distinctive terms, words, or devices which are subject to the free use of the public. Therefore, the Panel agrees with Respondent’s contentions that Complainant does not have any right to monopolize the dictionary word “fabricator” alone because the mark is indivisible: neither the article “the” nor the noun “fabricator” is distinctive in its own right. The Panel agrees that Complainant’s mark is distinctive only in its indivisible wholeness. See B2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Forum June 5, 2001) (holding that the complainant did not have exclusive rights to use of the terms “B2B” and “Works” in association with other words, even with a registered trademark for B2BWORKS). Further, where marks are similar, very small differences become extremely important. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) (“Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”). As such, the Panel observes that Complainant does not have rights to the “fabricator” term alone, and thus cannot enforce them. Therefore, the Panel concludes that the Complainant fails to satisfy paragraph 4(a)(i) of the Policy.”
I would not have been surprised to see a ruling of Reverse Domain Name Hijacking (RDNH) in this UDRP, but it was not mentioned in the decision and I am not sure if it was asked for or considered. There are no penalties for RDNH, so it doesn’t really matter.