FCC mark inherently weak, rules panel

International

In Family & Children's Center Inc v Van Johns, a World Intellectual Property Organization (WIPO) panellist has refused to order the transfer of 'fcc.org' to the complainant. The panellist held that the complainant's unregistered FCC mark was inherently weak and it had failed to prove secondary meaning outside the State of Indiana.

Family & Children's Center Inc (FCC) was established in Indiana in 1959 and has since grown into one of the state's major non-profit human services agencies. It filed a complaint with WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP) following James Van Johns's (aka Damian Macafee) registration of 'fcc.org'.

Although FCC did not own a US trademark or service mark registration for its FCC mark, its counsel argued that FCC's common law rights in Northern Indiana provided an ample basis for filing a UDRP complaint against Van Johns. In previous UDRP actions, other trademark owners, such as Microsoft Corporation and Oxford University, had prevailed against Van Johns for his registration of domain names identical or confusing similar to their well-known marks.

In this case, WIPO panellist Ross Carson determined that the FCC mark was not well-known and was "limited to Northern Indiana at the time that the respondent registered the domain name in dispute". Further, FCC had failed to demonstrate that it had acquired distinctiveness or proof of secondary meaning in the FCC mark outside the State of Indiana. Carson also determined that Van Johns did not register 'fcc.org' in bad faith.

Since FCC could not satisfy the first prong of the UDRP, namely that the domain name was identical or confusingly similar to a trademark in which it had rights, Carson did not address whether Van Johns had rights or legitimate interests in the domain name.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC

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