Recent Case Notes & Commentary

FRISBY CRASHLANDS

Frisby S.A. v. Registration Private, Domains by Proxy LLC / Michael Appolonia

WIPO Case No. D2020-0706 (May 12, 2020).


Respondents often win UDRP cases where the domain name is a generic or common dictionary word. In one such case, just decided, the domain name was a generic word used to describe a very common and popular item, the frisby, or frisbee. The Respondent was able to ward off an attack from a trademark owner and keep the domain name, not because the word “frisby” is a generic word but, you guessed it, because of the evidence. Like all cases, it had its unique facts that contributed to the Respondent’s success.


The Complainant, who seems to have had a somewhat exaggerated idea of its own fame and prominence, was a fast food chain in Colombia, trading under the name Frisby and it had a series of international trademarks for FRISBY, consisting of that word but with design elements. It had a domain name that went to its website at www.frisby.com.co, but it also cast envious eyes on another domain name <frisby.com>, held by the Respondent.

The Complainant is a popular Colombian fast food chain

The Respondent had previously worked for a US company called Frisby, known as Old Co which, like the Complainant, did not make frisbys, but thermal management products. The Respondent had been a big shot in Old Co, but left in 2004 when it folded up and the domain name, registered in the name of the company, expired. Respondent started a new company the same year that was, like him, also into thermal management products. In 2008, he registered <frisby.com> in his own name, but never used it for a website.


The case quickly developed into whether the Respondent had registered the domain name in bad faith because, after all, you would have to have an explanation for why you registered a domain name based on “frisby”. The panel decided “No, he had not acted in bad faith.” The reason: the panel weighed up the evidence and decided that “the overwhelming likelihood” was that the Respondent registered the domain name for the reason he gave, that he was still involved in the type of work he had been engaged on when he worked for Old Co and when the company owned the domain name. He was still using Old Co’s “legacy” technology.


The reverse side of the coin also applied: Respondent, in the US, would hardly have been targeting the Complainant when it was in an entirely different industry, fast food, and in Colombia!


Nor did the Respondent engage in passive holding in bad faith-the Complainant in Colombia was not as famous outside Colombia as it thought, and certainly not in the US!


Also, those words that have saved many respondents - Respondent’s explanation for registering the domain name was “entirely plausible” and “credible”.


TAKE HOME MESSAGE: the scales were tilted in favour of the Respondent because of the evidence. Notice the words used by the Panel, that the evidence was “overwhelmingly likely” to support the Respondent’s case and his explanation was “entirely plausible”. Those words sum it all up.