UDRP complainant fails to recover domain name that exactly matches its trademark

International

In a recent case under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organisation (WIPO), a panel has denied the transfer of a domain name consisting of the registrant's first name, even though it exactly matched a company's trademark.

The complainant was Alessandro International GmbH, a manicure and pedicure company based in Germany and whose predecessor was Alessandro Cosmetics, formed in 1989. The complainant owned trademark rights in the term ‘Alessandro’ in several jurisdictions, including Germany, the European Union and the United States.

The respondent was Alessandro Gualandi, a person living in New York, United States.

The disputed domain name was ‘alessandro.com’. It was registered on November 17 1998 by the respondent and was first pointed to a website containing a gallery of pictures of individuals and friends, and then to a website with a list of domain names for sale, unrelated to the domain name. At the time of the decision, the domain name was pointing to a website with a list of news in Italian.

The respondent stated that the complainant itself or its representatives had contacted him several times to purchase the domain name and that he had always replied that the domain name was not for sale. On December 3 2014 the complainant filed a UDRP complaint with WIPO.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at Paragraph 4(a):

  1. the domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;

  2. the respondent has no rights or legitimate interests in respect of the domain name; and

  3. the domain name has been registered and is being used in bad faith.

With regard to the first part of the UDRP, the complainant successfully evidenced that it owned trademark rights in the term ‘Alessandro’. In addition, by comparing the trademark ALESSANDRO with the domain name ‘alessandro.com’, the panel noted that the domain name incorporated the trademark, except for the ‘.com’ generic top-level domain, which was generally irrelevant in this assessment. Therefore, the panel concluded that the domain name was confusingly similar to the trademark.

With regard to the second limb of the three-prong test, the complainant stated that the respondent had no rights or legitimate interests in the domain name since he had neither used the domain name nor made any preparations to use it for a good-faith offering of goods or services. The complainant also submitted that the respondent was neither commonly known by the domain name, nor was he making a legitimate non-commercial or fair use of the domain name without intent for commercial gain. On the contrary, the complainant asserted that the respondent was making a commercial use of the domain name by pointing it to a website offering other domain names for sale. In addition, the complainant argued that a company's trademark rights should prevail over a non-famous individual identical name in respect of domain name registrations.

The respondent argued that his own Christian name was Alessandro and that, therefore, he had the right to use it as a domain name, especially to point to a website containing his pictures. The respondent also claimed that the website was never used to run a business but only for his personal use.

The panel considered that the respondent had legitimate interests in the domain name and that, therefore, the complainant had not met its burden under Paragraph 4(a)(ii) of the UDRP.  The panel found that, for a brief period of time, the respondent was using the domain name not only to publish photos and news but also to offer for sale some other domain names.  However, these domain names were Italian dictionary words (eg, ‘atenzione.com’, ‘casebelle.com’ and ‘freshmozarella.com’) and did not contain either the complainant's trademark or the domain name itself. Therefore, the panel considered that the respondent's use of the domain name could not have affected the complainant's trademark or trade name.

Moreover, the panel pointed out that the domain name clearly reflected the respondent's name, and stated that the use of one's own first name in a domain name corresponded to a legitimate customary practice and was, as such, sufficient to evidence the legitimate interest of a party in a domain name. In light of this, the panel recognised the respondent's legitimate interests in the domain name as he had been commonly known by it, even if he had acquired no trademark or service mark rights in it (Article 4(c)(ii) of the UDRP). Finally, the panel rejected the complainant's assertion that a company's trademark should prevail over the personal name of a non-famous individual in respect of a domain name registration.

The third limb of the three-prong test under the UDRP requires a complainant to establish that a domain name was both registered and used in bad faith. Even though the analysis of this third condition was not required to decide the complaint because the complainant had already failed to prove that the respondent had no legitimate interests, the panel decided to consider the issue of bad faith as the respondent had raised a claim of reverse domain name hijacking (RDNH).

On the basis of Telstra Corporation Limited v Nuclear Marshmallows (WIPO Case D2000-0003), the complainant asserted that the respondent had not actively contacted him to sell the domain name, but, when contacted by the complainant, he replied that the domain name was not for sale, although ‘alessandro.ws’ could be purchased for €25,000. In addition, the complainant argued that the respondent had registered around 30 domain names, including three that contained the term 'Alessandro', which further supported the respondent's bad faith.

The respondent again asserted that he had registered the domain name at issue because of his own personal name and that he was not aware of the complainant's existence until the latter had contacted him. The respondent stated that each time the complainant had contacted him to purchase the domain name, he had always stated that it was not for sale.

The panel refused the complainant's argument relating to the respondent's offer to sell the domain name as the offer was initiated by the complainant. Indeed, the respondent did not contact the complainant to offer the domain name for sale or rent, and therefore there was no offer of the domain name for sale to the public. In addition, the panel considered that the argument regarding the offer for sale of the domain name ‘alessandro.ws’ was irrelevant as the dispute related to ‘alessandro.com’.

The panel noted that, at the time of the registration of the domain name, there was no evidence proving that the respondent was aware of either the complainant's existence or its trademark. The panel rejected the complainant's argument that the respondent's subsequent knowledge of the complainant's existence could turn a good-faith registration into a bad-faith one. The panel also considered that the registration of other domain names containing the term 'Alessandro' did not indicate that the respondent had registered the domain name ‘alessandro.com’ in bad faith. In light of this, the panel concluded that the respondent had not acted in bad faith when registering and using the domain name. The panel therefore denied the complaint.

RDNH is defined as "using the policy in bad faith to attempt to deprive a registered domain holder of a domain name". However, the panel concluded that the complainant may simply have overestimated the strength of its complaint after receiving the respondent's offer to purchase the domain name for €25,000 and a list of domain names sold for similar amounts. Therefore, the panel decided that the complainant did not act in bad faith when it brought the complaint and so RDNH was not made out.

This case is in line with previous cases under the UDRP whereby panels have refused to overrule the ‘first-come, first-served’ principle and generally find that registrants have a legitimate interest in their own names. One of the most famous cases involved the domain name ‘armani.com’ (GA Modafine SA v Mani (WIPO Case D2001-0537), where the panel refused to order a transfer to the famous couturier and ruled in favour of Mr AR Mani (the respondent’s real name). The panel found that not only did the respondent have a legitimate interest in the domain name, it had also not been registered in bad faith. 

Brand owners in this situation may therefore be advised to shun the UDRP in favour of national court proceedings, if trademark dilution or infringement (or another cause of action) may be a possibility. Thus the choice of forum for the attempted recuperation of a domain name reflecting a personal name should always be carefully considered, taking into account the particular facts of each case.

David Taylor and Jane Seager, Hogan Lovells LLP, Paris 

Get unlimited access to all WTR content