Spanish man fails to secure domain over its Portuguese meaning

Sometimes similar sounding terms can have different meanings in different languages. Although these are pretty common and observed in all the languages, domain names give an economic angle to this. Sometimes, trademarks over a mark might mean something else in a different language.

Sergio Juan Canamasas Español, a Spanish citizen filed a complaint at WIPO regarding the registration and use of the domain name The complainant owns a packaging company named Plásticos FACA, S.A. The complainant established Spanish trademark rights over FACA, registered in 1999. It also owns the domain names and, registered in March 1999 and January 2017 respectively.

However, the disputed domain name was registered by a Korean entity in September 2001. The website is used to display PPC links. The Complainant argues that the Respondent is deriving profits from the popularity of the complainant. 

The respondent argues that as a domain investor, it is legitimate of him to invest in domain names of high value. The respondent gave the reasons that the domain name was a short 4-letter word which could be pronounced easily. When searched about the term, 1.5 billion results were associated with this term. In Portuguese, faca means knife. Most of the search results had nothing to do with the complainant’s mark.

The panel found that the reasons given by the Respondent were plausible. The panel stated that Google results support the respondent, as most of the results were unrelated to the Complainant. The panel didn’t find any reason that could prove that the Respondent registered the domain name in bad faith.

The complaint was denied.

Read the case in full detail here.


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