On February 4th, 2012, a board of three arbitrators of the WIPO (World Intellectual Property Organization) rejected the dispute resolution request submitted by Mediaset in Mediaset S.p.A. v. Didier Madiba, Fenicius LLC concerning the mediaset.com domain name. This was the exact opposite of the expected outcome to an apparently simple case.

Briefly, Italian broadcaster Mediaset allowed the mediaset.com domain name to expire, and it was promptly bought by Fenicius. Mediaset then brought an administrative case before the WIPO. Confident of its proven notoriety and identical registered trademarks, Mediaset asked the board to reassign the domain to them, maintaining Fenicius’s lack of entitlement and his bad faith in registering and using the domain. However, the board rejected the appeal, not because of a lack of bad faith in registering the domain, but because of the failure to show that Fenicius was using the domain in bad faith. Concerning the proof of use in bad faith, the board said that: “a mere allegation of bad faith which is not supported by facts or specific examples does not provide a sufficient basis for the Board to conclude that the respondent (Fenicius) has acted in bad faith”.

The case is not yet over, however, as Mediaset has already filed a suit with the Court of Rome. The Mediaset SpA case highlights how even powerful companies, which invest considerable sums in their internet presence, need to take great care to monitor the expiry of their domains.

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