Kenyon Wins Critical UDRP Domain Dispute Clarifying Bad Faith and Use Requirements

Press Release

New York, July 29, 2008 - - Kenyon & Kenyon LLP  announced a favorable arbitration decision for its client, Future Media Architects (an Internet development company) in what it considered to be a reverse domain name hijacking dispute with credit reporting company Equifax, Inc.

At issue was the domain name EFX.com, which Future Media Architects had purchased and registered in 2004.  Equifax claimed to own trademark rights in the name EFX as its stock symbol.

The National Arbitration Forum Panel held that Equifax failed to prove that Future Media Architects registered and was using in bad faith.  Refusing to transfer the domain name to Equifax, the Panel’s decision reiterated the Uniform Dispute Resolution Policy (the “UDRP”) requirement that a complainant must prove each of the three elements:

• the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
• Respondent has no rights or legitimate interests in respect of the disputed domain name; and
• the disputed domain name has been registered and is being used in bad faith.

Equifax brought the dispute pursuant to the UDRP, claiming that it owned superior rights to the domain name despite having failed over the years to obtain it for itself.  The Panel stated that “[f]rom its review of the evidence the Panelist does not believe that Respondent targeted Complainant or its unregistered EFX mark at the time the disputed domain name was registered.”  The Panel did not go so far as to find reverse domain name hijacking, but did consider it.

 “We are very pleased that the right decision was reached and such a decision will hopefully dissuade others from trying similar tactics,” said James E. Rosini, a partner at Kenyon & Kenyon who represented Future Media Architects. “This Panel made clear that both bad faith registration and use must be shown   – something that has been missing from other UDRP decisions on this important Internet issue.”

About Kenyon & Kenyon LLP

Kenyon & Kenyon is consistently ranked by peers and in-house counsel as one of the top firms for intellectual property law. Since its founding in 1879, the firm has provided its worldwide clientele with litigation, prosecution, licensing and counseling services. Large and small enterprises and individuals choose Kenyon to design and implement intellectual property strategies when it matters most. The firm has offices in New York, Washington, DC, and the Silicon Valley.