Company argues man who registered surname as domain has no legitimate rights to it.
A shoe and sandal company in Abu Dhabi has been found (pdf) guilty of reverse domain name hijacking.
Speroni General Trading LLC filed a dispute against the domain name speroni.com. The domain’s owner? One Joseph Speroni, who registered the domain well before the Complainant existed.
Attorney John Berryhill summed up the case nicely with this line in the response:
The fact that the Respondent in this proceeding is Mr. Joseph Speroni should be the entirety of a sufficient response to the Complaint.
Even though that would be obvious to most, the shoe company argued:
The Respondent’s apparent surname does not provide a plausible good-faith explanation for the registration and retention of an exact-match domain name identical to the Complainant’s registered SPERONI trademark, particularly in the absence of any demonstrable legitimate use or preparatory steps toward such use…
…Given the identity between the disputed domain name and the Complainant’s trademark, there is no conceivable good faith use that the Respondent could make of the disputed domain name without infringing the Complainant’s rights or misleading consumers.
Hmm. Perhaps for a personal email or a personal website, just as the domain owner previously used the domain?
World Intellectual Property Organization panelist Andrew Christie found reverse domain name hijacking, writing in part:
…after receiving the Registrar’s verification response the Complainant continued the proceeding by filing an amended Complaint, in which assertions were made that the Respondent was passively holding the disputed domain name, had not used the disputed domain name for any bona fide or legitimate purpose, had registered and retained the disputed domain name with intent to target the Complainant’s trademark, and did not have any potential future use of the disputed domain name that would not inevitably mislead Internet users into believing that the disputed domain name was associated with, endorsed by, or connected to the Complainant – all of which were incorrect.
The failure of the Complainant to properly consider the revealed registrant information or undertake the obvious and simple step of using the Internet Archive Wayback Machine to inform itself of when, how, and by whom the disputed domain name had been used imposed an unnecessary and significant burden on the Respondent, who had to respond to a Complaint that had no foundation. This failure was inexcusable.
Al Tamimi & Company represented the Complainant.
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