Potential use as a fan site for a product saves domain name for respondent.
A single member World Intellectual Property Organization panel has denied a UDRP filed by Staedtler Mars GmbH for the domain name FIMO.club. Staedtler Mars GmbH sells a clay called FIMO that’s apparently popular with hobbyists.
The respondent was an unauthorized distributor of the product at a different business and admits to registering a number of domain names with FIMO in them. She said she registered this domain to set up what is essentially a fan site.
Panelist Brigitte Joppich determined the domain name wasn’t registered and used in bad faith. Joppich gave benefit to the doubt of the registrant:
However, the Respondent replied to the Complaint, did not provide false contact details and did not try to conceal her identity. Because of the above mentioned facts and the Respondent’s submissions in this matter, the Panel finds that the Complainant has failed to prove registration and use in bad faith.
She said the claim was premature because “it is conceivable that the Respondent will use the disputed domain name without seeking to unfairly profit from the goodwill attached to Complainant’s FIMO Marks, the Panel finds in the specific circumstances of this case that the Complaint was brought prematurely.”
She noted that, should the respondent in the future use the disputed domain name in bad faith, the complainant could file a new case.
Vivian Fan says
The case indicates a kind of Robber’s logistics from the complaint (Robber).
Christopher Hofman says
Hi Andrew,
Saw this at WIPO before seeing your post right now. I think, you can call it a pre-nominative fair use decision. It’s controversial and a signal to brands to get their domain names before their resellers