Michele Dinoia has cybersquatted in the past, but was Materia.com different?
Michele Dinoia has filed a lawsuit in U.S. District Court against California company Materia, Inc., after Materia won a UDRP for Dinoia’s domain name Materia.com. The lawsuit seeks to stay the transfer and seeks a finding reverse domain name hijacking.
National Arbitration panelist Richard DiSalle found in Materia, Inc’s favor in a UDRP decision dated August 20. He ordered Dinoia’s domain name registrar, Name.com, to transfer Materia.com to Materia, Inc.
The domain name will be a nice upgrade for Materia, Inc., which uses the domain name Materia-Inc.com.
In reading the UDRP decision and lawsuit filing (pdf), I can’t help but wonder if panelist DiSalle’s decision was influenced by Dinoia’s past actions with other domain names. It’s abundantly clear that Dinoia has cybersquatted on famous brands in the past. Yet the instant case wasn’t so clear cut:
- Materia is a generic word.
- Dinoia registered Materia.com in 2001. Why did Materia wait 14 years to file a UDRP?
- Materia hired Domain Holdings to acquire Materia.com. It made offers of $10,000 and $50,000 for the domain name before filing the UDRP. Would a company that feels someone is cybersquatting really offer $50,000? It sounds like UDRP was a “Plan B.”
- Materia didn’t file for a trademark until 2012, citing first use in 1999. Materia also argued common law rights dating to 1999, but Panelist DiSalle didn’t require much in the way of evidence that the mark was popular and had secondary meaning at the time Dinoia registered the name in 2001. Also, Dinioa is in Italy, not the United States where the trademark was filed.
In many cases, these factors would be enough for a UDRP panelist to deny the case. It makes me wonder if Dinioa’s past actions influenced the panelist.
Materia.com has already been transferred to Materia, Inc., but Dinoia argues that it was transferred before the ten day deadline to file a suit and stay the decision.
Shouldn’t it influence their decision? I think it very well should. IF you are repeater offender, you get only so much benefit of a doubt. In this case, the owner was likely right, but not clear cut, and his past transgression came back to haunt hi.
C.S. Watch says
Well very well, but though Dinoia has at least 60 UDRPs, many are generics. He has or has had at least 16K domains and is a foreign national and an Italian-language speaker, so he may not be Satan, just a negligent SEO manipulator. (Which is also bad, of course. Unless Google proves it’s not…)
In court, he’ll definitely point out that his UDRPs have fallen off sharply since 2006. It’s probable that he expired out of most of his actionable domains around that time. Surely he wouldn’t invite himself to federal court with dirty mittens.
The ‘text links and the likelihood of consumer confusion’ issue is still writhing around in the courts today. He may have a sleeve full of points like that, which may be enough to make his past UDRPs unappetizing as evidence.
Interesting case, glad this site is on the scent.
That person’s name seems so familiar to me, I think I probably encountered her name years ago.
I don’t know if “materia” has any great value by itself outside the US, but I think I can say confidently that in the US it isn’t worth much at all, not even $1000. So unless it’s a gem of a word in some other part of the world, $50K sure seems like a big lost opportunity for it.
Andrew Allemann says
John, I agree that it seems a bit crazy to me to pass on the $50k offer. But that’s just me, and everyone had different circumstances.
Michele Dinoia should be banned from owning domain names. What an idiot, buying domains like “wwwcircuitcity.com” and “wwwhewlettpackard.com”.
Gives all domain investors a bad name.
Joseph Peterson says
Indeed, that’s an interesting case.
On the one hand, allowing past UDRPs to prejudice a future decision is some cause for concern. What if he’d lost a generic domain unfairly to a past UDRP? Should that open the door to easier rulings on other domains? In that case, once you lose a UDRP – right or wrong – you’re instantly a target for reverse domain hijackers.
On the one hand, this guy looks like a cybersquatter based on past behavior. And I’m tired of those real squatters tarnishing my reputation and the reputation of every other legitimate domain investor. Their bad-faith actions put the rest of us at risk and expose us to almost daily insults from under-informed members of the general public. So it may be a good thing if the cybersquatters out there realize that a single infringing domain puts ALL their other domains at jeopardy.
She lost in at least 50 UDRP decisions, wow… that’s a mess.
When are domain owners going to learn? Read what the panelists are saying…
“we reject Respondent’s argument and hold that this is a circumstance under which a bona fide offering of goods and services has not been evidenced” “domain name resolves to a webpage containing unrelated third party hyperlinks”, “Prior panels have declined to award a respondent rights where the resolving webpage contains unrelated third party hyperlinks”.
The first main issue with this UDRP is that it was judged by a sole panelist. I can’t say that Richard DiSalle appeared to be unbiased by the respondents 50 lost UDRP cases. I think he got this exceptionally wrong when it came to the ‘bad faith’ part, pertaining to the selling of the domain. It could have been that the respondent didn’t address it properly, but the complainant willing to pay an excess of out-of-pocket, especially $50k, should have voided any counter by the respondent.
If this were a panel of three, I think that the counter offer from the respondent would not have been judged as bad faith. There are countless URDP decisions where this has been the case.
In the end, the domain was poorly managed and poorly represented at URDP; a deserved loss.
Michele (Mi-ke-le) is a masculine name in Italy. The UDRP could not even get the gender right.
Every case should be independently adjudicated. This is not a court of law, piling up “past offenses” regardless of one’s track record.
This panelist seems to have given this very little effort or consideration.
Other panelist are able to get a persons gender right, even when the respondent is named Abby.
Mr. Abby Heykali
C.S. Watch says
Acro mentions that the panelist doesn’t know Michele is a man’s name in Italy. More worrying is the fact that the Panel didn’t particularly care that ‘materia’ means ‘matter’ in Italian. There are several hundred registered TMs containing ‘materia.’ Would we be clutching our pearls if John Smith registered ‘matter.com?’
The UDRP is routinely parochial and nationalistic, but a DC is going to be more self-aware. And probably hyperaware, because an Italian is in town about an Italian word, and so laxity about language doesn’t bog down the courts again.
Q: How do we know for sure that Michele Dinoia is male? A: Single panelist on a dictionary word complaint. (Entitled, foolhardy, and cheap? Us FTW!)
The court case has been resolved and the domain name remains with the Respondent.
Andrew Allemann says
Thanks for bringing this to my attention, Mike: