Daily Domainer

Investment advisory publisher The Motley Fool Inc., which owns the domain name Fool.com, has failed in its attempt to appropriate Fools.com without compensation from the domain's original registrant, Domain Works Inc. from Canada.

Domain Works had registered Fools.com in 1998. The company had initially redirected the domain to its corporate website and later set up a pay-per-click portal to earn advertising revenue.

Motely Fool Inc. owns U.S. trademarks such as THE MOTLEY FOOL and FOOL.COM, and - incredibly - trademarks for the generic words FOOL and FOOLISH.

The company's lawyers Cooley Godward Kronish LLP argued before WIPO that Fools.com is substantially identical to two of its marks (FOOL.com and FOOL), the only difference being the addition of an ‘s’.

To gain control of a domain name, UDRP rules require a complainant to prove the following three elements:

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. (WIPO, which in accordance with UDRP rules acts as willing executioner of even the most obviously flawed trademark registrations from around the world, decided that Fools.com is "confusingly similar to a trademark in which the Complainant has rights".)
2. The respondent has no right or legitimate interest in respect of the disputed domain name. (In light of the Panel’s finding under the third point, WIPO found it unnecessary to make a finding in relation to this issue.)
3. The disputed domain name was registered and is being used in bad faith. (WIPO's assessment: "[...] the Respondent’s position is that in 1998 when it registered the Domain Name it did not have the Complainant in mind and indeed could not have done so, because at that time it was unaware of the rights claimed by the Complainant in the marks FOOL and FOOL.COM. While it is possible that the Respondent is not telling the truth and, being an expert in the field of the Internet, was aware of the Complainant’s website at “www.fool.com” and was aware that in 1997 that site had been nominated for a prestigious Webby Award when it registered the Domain Name, it is for the Complainant to prove it to the satisfaction of the Panel. [...] The Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith.")

WIPO rejected the complaint and while the Daily Domainer applauds the decision, we once again have to point out the flaws in the UDRP's "bad faith" clause. The WIPO panel decided that Motley Fool Inc. had not proven Domain Works' awareness of the company's trademarks at the time of Fools.com's registration.

But how do you prove, or disprove such a thing? Other WIPO panelists, faced with similar challenges requiring telepathic hindsight, often come to an opposite conclusion based on random hunches and mental projections.

Who cares about a registrant's intentions and of his level of awareness at the time of domain registration anyway? Things that cannot be proven either way should be eliminated completely when judging the "bad faith" component of a domain dispute. WIPO even notes tongue-in-cheek that the respondent might not be telling the truth… but what would you expect him to say under these Big Brother rules where thoughts are crimes and honest admission of the truth results in the guaranteed loss of valuable assets?

We look forward to the day when a domain owner can openly say, "Yes, I was aware that they had a similar trademark but it didn't affect me because I had no plans to compete with them". If Domain Works had set up an investment advisory site, appropriated the Fool.com logo and republished articles from their site (similar to the YouTube.cl case), that would be clear proof of bad faith. But elusive thoughts someone had (or didn't have) nine years ago should not be taken into consideration at all.

In summary, Motley Fool has to be chided for this ill-fated attempt to hijack a domain name without compensation. They are certainly no fools; they openly tried to play the system and failed only because the WIPO panel came to the conclusion that there was no evidence that the domain registrant had been aware of the company when he registered the domain.

Also, it may be obvious but we reiterate that fool is a generic word, as is its plural fools. Motley Fool should have never been approved for a trademark over fool, especially if they now try to abuse this registration to rip off domain owners by stealing their domains without paying a fair price.