Panel says Complainant, represented by a 100+-year-old IP law firm, has “simply not understood the Policy.”
Some UDRP filings have no chance of succeeding.
Consider the case (pdf) that Roberto Industria Alimentare S.r.l. filed against the domain name roberto.com. The Italian baked goods company filed the dispute against Reflex Publishing, which acquired the domain name over two decades ago.
You don’t have to be Italian to know that Roberto is a very common name. In fact, it’s one of the top 20 most common names in Italy.
Yet Roberto Industria Alimentare S.r.l. argued in its case that “ROBERTO” is not a common or descriptive term but is obviously a trade mark in which the Complainant has rights.”
Um, OK.
The World Intellectual Property Organization rightly found in Reflex Publishing’s favor. It noted that Reflex is a company in Florida and probably wasn’t aware of the Complainant. And even if it was aware of the Complainant, “Having regard to the fact of its varied potential uses and the Respondent’s intended use non-infringing of the disputed domain name, registration of it by the Respondent, would not have been abusive.”
The three-person panel then listed several reasons why this appears to be a case of reverse domain name hijacking:
- the Complainant has been professionally represented and many panels will find that such a party should be held to a higher standard.
- this was a misconceived Complaint in that the Complainant had no credible basis for alleging that its mark had a reputation in the United States and consequently that the Respondent was, or should have been, aware of it. Moreover, it adduced scarcely any evidence to support its assertions and it produced no evidence at all in relation to the alleged repute of its ROBERTO mark in the United States as at the date of registration of the disputed domain name.
- the record suggests that the Complainant bought these proceedings because its offer of USD 1,000 for the disputed domain name had been rejected by the Respondent. The Panel notes that the Complainant’s offer did not contain any allegation of wrongdoing on the part of the Respondent in its registration and use of the disputed domain name and was made some 23 years after the Respondent’s registration of it. Having recourse to proceedings under the Policy following an unsuccessful attempt to purchase a domain name is sometimes referred to as a “Plan B.”
Got it, so reverse domain name hijacking.
Except the panel let the Complainant off the hook, saying it probably just didn’t know what it was doing by filing the complaint:
In these proceedings, some of more egregious features associated with a finding of RDNH, such as manifestly untrue allegations against a respondent and attempts to mislead the panel, are absent. The overall impression is that the Complainant has simply not understood the Policy and the burden it has to meet. For this reason, by a very narrow balance, the Panel declines to make a finding of RDNH.
Wouldn’t you say that not mentioning that Roberto is a common first name was an attempt to mislead the panel?
And get this. The Complainant’s representative was Società Italiana Brevetti S.p.A. Go to its website, and you’ll see that it prominently displays “Intellectual Property since 1882” in Italian at the very top.
So it just didn’t know what it was doing? Hmm.
John Berryhill represented Reflex Publishing.
Post link: WIPO panel lets bakery off the hook
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