FRIDAY,27 February 2015 THE DOMAINS
In this case Alessandro Gualandi.
The one member panel of Pablo A. Palazzi however refused to find reverse domain name hijacking which I thought was appropriate under the circumstances
Here are the highlights:
“Complainant is a company dedicated to manicure and pedicure products. The predecessor of Complainant, Alessandro Cosmetics GmbH was founded in 1989 in Langenfeld, Germany and later expanded worldwide.
Respondent is Alessandro Gualandi, an individual with domicile in New York, United States of America.
Complainant states that it has registered the trademark ALESSANDRO in Germany, European Union, the United States and other jurisdictions around the world. According to the complaint, the disputed domain name is identical to Complainants trademarks.
Complainant also states that Respondent provided a list of domain name that were sold for multi-million dollar amounts and that Respondent mentioned that once he “bought a domain name for USD $3,000 from a person who did not know the real value of it and resold it for USD $100,000”.
Respondent showed a similar list to an employee of Complainant in a meeting they had in a New York bar.
According to the Complaint, this is another indication of bad faith, because Respondent is implying that he would be willing to sell the domain name for a million dollar price.
Finally, Complainant states that Respondent has not used the disputed domain name since it was registered in 1998 and that Respondent holds 33 domain names as a natural person, which leads to the conclusion that the domain name is being registered in bad faith, “at the latest, as soon as the Respondent became aware of Complainant, its business, its trademarks and its several attempts to reach an amicable settlement by purchasing the domain name”.
Respondent states that he is an individual who has no experience in domain name dispute matters. Respondent explained that over a period of several years Complainant or their representatives have contacted him to ask if Respondent would sell to Complainant the disputed domain name.
Respondent states that he has always responded that he was not interested in selling the domain name to them or anyone else.
Respondent asserts that his own Christian name is Alessandro, and that it is the name his parents gave him. He added that it is a name which is fairly common in the Northern part of Italy where he comes from. Respondent stated that he had no idea that a company called “Alessandro International GmbH” even existed, and he has never done anything to confuse his identity with Complainant.
Respondent states that he has registered the disputed domain name because he is proud of his name, and he wanted to set up a personal website at the disputed domain name and also to use it for his email. Respondent adds that he had once a personal website in the disputed domain name, but he took it down because he needed to change web hosting companies. He explains that the website was never used to run a business, and it existed only for Respondent own personal pleasure.
Respondent also adds that the disputed domain name was in use and the Respondent had his personal email at  for years, and that he had a simple, personal website with photos of Respondent and his friends online until he decided to switch web hosting providers and took it down.
Respondent states that Complainant has actually filed the Complaint in bad faith in an attempt to “Reverse Domain Name Hijack’ his domain name.
In addition Complainant states that Respondent has registered 39 domain names which according to Complainant is very uncommon for a natural person.
Complainant states that before filing the Complaint Respondent had 33 domain names registered and that currently and the time to reply to the Panel Order No. 1 Respondent has 39 domain names.
Respondent now owns three (3) domain names with the term Alessandro (namely alesandro.com, alessandro.ws and alessandro.nyc.
However for personal use, one domain name would be sufficient and the fact that Respondent now owns three (3) respective domain names indicates that he has registered them for the purpose of sale.
Complainant states that some of those registered domain names imply that they are not meant for private non commercial use such as , , , , , , or . The registration of those general terms as domain names indicates that the Respondent is aware of the fact that those domain names may generate good prices in domain market places.
Under the circumstances this Panel finds that Respondent has been using the disputed domain name for a personal use for several years. Complainant alleges that there was a commercial use because Respondent was offering for sale some domain names.
It is true that for a brief period of time, at the same time from posting personal photos, Respondent also used the disputed domain name to offer for sale some other domain names. However, the Panel notes that all these domain names were generic or dictionary words in Italian language (e.g., , , , , , or ). In addition it does not seem that this use, if considered commercial, is affecting Complainant’s trademarks since the disputed domain name is clearly a personal website without any reference to the Complainant tradename or trademarks.
In view of the evidence submitted by Respondent, this Panel finds that the disputed domain name clearly reflects Respondent’s given name, and the Panel concludes from the record as a whole that Respondent has rights or legitimate interests in the disputed domain name under paragraph 4(c)(ii).
The use of one’s own first name in a domain name corresponds to a legitimate customary practice and is, as a rule, sufficient evidence of a legitimate right or interest in the disputed domain name
Complainant also argues that the trademark right of a company should prevail over the fact that a non famous individual happens to have the same name as the company and its trademarks. It is the view of this Panel that the Policy was designed to curb cases of abusive registration of domain names (known as cybersquatting).
The requirements are clearly stated in the Policy (including bad faith registration and use as well as lack of legitimate interest or rights over the disputed domain name). Complainant assertion that the trademark of a company should prevail over a personal name of a non famous individual for a domain name disregards the extensive and settled case law decided under the UDRP and cited in the previous paragraph admitting legitimate interest in registering a domain name similar to the registrant personal name.
In light of the above, the Panel finds that Complainant has not met its burden under paragraph 4(a)(ii) of the Policy to demonstrate that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Even though the analysis of the third condition relating to the registration and use of the disputed domain name in bad faith would not be required for deciding on the Complaint (because the rejection of the second condition already means that the Complaint should be denied), the Panel finds it necessary in this case to address it in view of the arguments raised by the parties and because of the claim of RDNH which has been raised by Respondent (and which shall be addressed under section D below).
In addition, Complainant contends that Respondent registered the disputed domain name for the purpose of selling it for a price that clearly exceeds the costs paid in connection with its registration. In support of this contention, Complainant indicates that: (i) Respondent ended negotiations because he had not received an offer and accused Complainant of not dealing in good faith; (ii) Respondent also offered to Complainant the domain name for EUR 25,000; and (iii) finally Respondent provided a list of domain names that were sold for multi-million dollar amounts.
The Panel does not accept this allegation because the offer to purchase the disputed domain name (and the ensuing negotiation) was initiated by Complainant
The fact that the Respondent offer to sale the domain name is not in itself evidence of bad faith registration or use of the disputed domain name because this case is about the domain name and not the domain name .
According to the Panel, there is no evidence in the record showing that Respondent knew of Complainant’s trademark when he registered the disputed domain name, especially, when “Alessandro” is Respondent first name and the disputed domain name has been registered for nearly 15 years and used for a brief period to post personal photos. As stated in the previous Section, Respondent, Alessandro Gualandi has a right or legitimate interest to have a domain name with his first name.
Complainant seems to admit this when in its Complaints asserts “… which leads to the conclusion that the domain name is being registered in bad faith, at the latest, as soon as Respondent became aware of Complainant, its business, its trademarks and its several attempts to reach an amicable settlement by purchasing the domain name”. If this were the case, a registration in good faith by Respondent cannot turn into a bad faith registration later due to a late knowledge of the Complainant.
Complainant argued that the 39 domain names that Respondent has registered are additional evidence of bad faith.
In particular Complainant states that Respondent has registered three (3) domain names with the term “Alessandro” (namely , and ).
According to Complainant, the fact that Respondent now owns three (3) respective domain names indicates that he has registered them for the purpose of selling them.
The Panel visited the website using the Wayback Machine and was able to verify that Respondent offered for sale several domain names. The Panel notes that all of those domain names seem to be generic terms or dictionary terms in Italian language. Thus it is not possible to conclude that Respondent was acting in bad faith because Respondent was only offering for sale dictionary terms domain name.
In addition those domain names are not the disputed domain name, and Respondent clearly indicated that it was not on sale.
Finally the fact that Respondent has registered two other domain names with the term “alessandro” is not indicative that the disputed domain name was registered in bad faith.
First, as already stated, the disputed domain name was registered in the 1997 (according to Respondent) or in the year 1998 (according to the WhoIs record).
There is no evidence on the record that at the time of registering the disputed domain name Respondent knew of Complainant’s trademarks.
The registration of the two other domain names took place later on, but even if at that time Respondent was aware of Complainant trademarks due to the interchange of emails, such new registrations (with knowledge of Complainant) cannot “contaminate” the initial registration of the disputed domain name.
The Panel concludes from the record as a whole that Respondent has not acted in bad faith when he registered and used the disputed domain name.
D. Reverse Domain Name Hijacking
Respondent has requested a finding of Reverse Domain Name Hijacking (“RDNH”), which is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rules, paragraph 1.
Complainant may plausibly have overestimated the strength of its case after Respondent replied to one of his emails and offered for sale another domain name containing Complainant’s trademark () for EUR 25,000 and also mentioned a list of domain names sold for high amounts in the past.
Accordingly, the Panel does not believe that Complainant acted in bad faith in an attempt of reverse domain name hijacking when it brought the Complaint against Respondent.