What’s Italian for domain hijacking?
Colussi S.p.A. of Milan, Italy has been found to have engaged in reverse domain name hijacking (RDNH) over the domain name Colussi.com.
The domain name is owned by Andrea Colussi, a cousin of the current Chairman and a shareholder of Colussi S.p.A., and nephew of Angelo Colussi, the founder of Colussi S.p.A.
This was a dead-on-arrival case. How could you show that someone whose last name is Colussi doesn’t have a legitimate interest in the domain name Colussi.com?
The complaint suggests that Andrea Colussi should have transferred rights in the Colussi name along with a business sale that took place in 1999. The World Intellectual Property Organization panelist reviewed the documentation around that agreement but probably didn’t need to. It seems to be outside the scope of a UDRP.
The panelist listed five reasons for finding RDNH. The first one was reason enough:
…the Complainant was clearly aware of the Respondent’s identity and of his family name, Colussi, which is identical to the disputed domain name, and thus the Complainant had a clear knowledge of the Respondent’s rights and legitimate interests in the disputed domain name.
That’s why my company name I invented (from my perspective) many years ago has become so valuable and desirable as a generic term because of new worldwide technology, and they could never get the .com this way, at least not in a just world.
What name is it?
I post anonymously in the blogs, NamePixie.
“How could you show that someone whose last name is Colussi doesn’t have a legitimate interest in the domain name Colussi.com?”
Easy.
First off, this wasn’t a good fit for resolution by the UDRP anyway, since the parties apparently have a long and tangled history.
But it is not at all unusual for family members to surrender the right to use their family name commercially, upon the re-organization of a business bearing the family name. The most entertaining set of lawsuits involving that common theme involves the Taylor family of New York, which is known for the Taylor brand of New York wines.
For years, the owner of what is now Bully Hill Winery, a Mr. Greyton Taylor of the Taylor family and formerly in the family wine business, pulled all kinds of stunts to get the name “Taylor” onto his wine labels. When he was finally enjoined from using “Owned by Greyton Taylor” or similar language on the label, he produced a set of new labels in which his name appeared to have been blacked out by a marker. The owners of the Taylor mark were reduced to arguing that you could still see his name under the ink that was used to black out his name.
These things turn into grudge matches, and the “domain name wasn’t included in the assignment of the company” argument is best resolved in court – similar to whether Heidi’s Powell’s domain name was, or was not, an asset that should have been listed in her previous bankruptcy. Obviously, whether Mr. Colussi is or is not entitled to have kept the domain name depends on interpreting that contract, which reduces this fiasco to a contract dispute, and not a domain name dispute per se.