A Comprehensive Analysis of WIPO Case D2018-0462: Domain Name Dispute and RDNH Decision

The World Intellectual Property Organization (WIPO) case D2018-0462 centered on the domain name “fama.com”. The complainant in this case was Fabricación de Maquinas, S.A. de C.V., a Mexican manufacturing company producing machinery, moulds, and equipment for the glass industry and a subsidiary of Vitro, S.A.B. de C.V. The respondent was WSC WorldSpace, WorldSpace Corporation. The decision for this case was made on June 29, 2018, by the sole panelist Clive L. Elliott Q.C.

The complainant, Fabricación de Maquinas, S.A. de C.V., argued that the domain name “fama.com” was identical to its registered trademark ‘FAMA’ in Mexico and claimed that its products, sold in approximately 40 countries, including the United States and Europe, had brought considerable recognition to the FAMA trademark. The complainant contended that the respondent had registered the domain name in bad faith and was passively holding it without having any legitimate interest or business use for it.

On the other side, the respondent, WSC WorldSpace, WorldSpace Corporation, denied the allegations of bad faith registration and claimed that ‘fama’ is a dictionary term in several European languages and is used by numerous entities globally. The respondent asserted that it had a bona fide interest in the name ‘Fama’ since at least 1994, when it became closely involved with an organization named Fama, founded by Suada Kapic in Sarajevo, Yugoslavia (today Bosnia Herzegovina). This organization initially focused on multimedia production and later shifted to cultural and artistic projects due to the war in Yugoslavia. The respondent provided extensive evidence of Fama’s activities and its involvement with WorldSpace Corporation.

After considering the evidence and arguments, the WIPO panel concluded that the respondent had a legitimate interest in the domain name and that there was no evidence to suggest bad faith registration or use of the domain name by the respondent. The panel denied the complaint, indicating that the complainant had not successfully demonstrated the respondent’s bad faith in registering or using the domain name. This decision highlighted the importance of considering the multifaceted nature of domain name disputes, especially when common or dictionary terms are involved.

The World Intellectual Property Organization (WIPO) case D2018-0462 centered on the domain name “fama.com”. The complainant in this case was Fabricación de Maquinas, S.A. de C.V., a Mexican manufacturing company producing machinery, moulds, and equipment for the glass industry and a subsidiary of Vitro, S.A.B. de C.V. The respondent was WSC WorldSpace, WorldSpace Corporation. The…