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guzzini.com wipo decision

Labeled as discuss in Legal Discussion started by anf, Apr 13, 2019.

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  1. anf

    anf Established Member

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    Here is the link: https://domaingang.com/domain-law/guzzini-com-korean-domain-registrant-wanted-100000-but-got-udrped/

    So, wtf happened? I just cannot understand it. Here the decision:
    So, guess what, any investor wants to sell a name for more than he payed. Does it mean that any investor is using all of his names in bad faith? WFT??

    Here are the paragraphs 4(b)(i) and (ii) of the Policy:
    According to the case, the Respondent regged the name in 2001. For 18 years, the web site displayed an “under construction” page. So, the Complainant contacted the owner and offered him money. The deal did not go through, and UDRP was fired.

    As i thought before, the indication of a bad faith is
    But the owner was sitting on this name for 18 years, he never contacted the Complainant. On the contrary, it's the Complainant who has contacted the owner. As i see it, there is absolutely no PROOF or even indication of
    Moreover, i always thought that any investor can say that he offers a domain name not
    primarily to the complainant, but to any party who wold like to buy it (and this is the true actually). Moreover,
    guzzini is such a term that can be used for anyting: tech company, food, recreational activity. There are a lot of similar trademarked names in different areas.

    The same with
    Where are the PROOFS?

    So, i completely cannot understand any reason behind this decision. There are no proofs of bad faith here.
    What do you think?
     
    Last edited: Apr 13, 2019
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  2. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    Seems like a fair decision to me. The complainant claimed prima facie that the domain owner had no rights or legitimate use of or interest in the name.

    The respondent responded and wasn't able to prove that they had legitimate interests in the name. They didn't use the name, they didn't have rights in the name and all they were able to confirm is that their only use of the name was responding to comms in relation to selling it and agreed a sale. When they tried to sell it, it was for more than they paid for it... Thus profit.

    Therefore, their primary use of the name was to sell it to the TM holder. So there's the answer to your question :xf.smile:.
    If the domain owner can't prove that they have legitimate rights then who can?
     
    Last edited: Apr 13, 2019
  3. tonyk2000

    tonyk2000 Top Member VIP ★★★★★★★★★★

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    Original source:

    https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2019-0039

    100% correct decision. In 2001 (domain registration date), the responded was fully aware that the complainant existed: "The Respondent claims that it acquired the disputed domain name in order to sell GUZZINI products on a website..." (quote end). At the same time, as per the Complainant, "The Respondent is not an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant".
    This alone is sufficient for the Complainant to prevail in UDRP dispute, since also there is a TM, the domain is similar, etc. Domain pricing issue is secondary here...

    A domainer could possibly win the dispute though. First, Guzzini is a last name. Could be parked with appropriate keywords such as "family albums" or "genealogy tree" manually selected. Second, in this case the responded was self-represented and was likely unaware how UDRP works. For example: Complainant offered 1500 Euros and later USD $7000? Fine. By doing so, Complainant actually has established the apparent legitimacy of Respondent's interest in the domain name - there are UDRP decisions supporting this point of view (good precedents, could be included).

    As a domainer, I'd personally avoid registering or bidding on such a domain though. As per google search, it has too strong secondary meaning in connection with just 1 TM holder.
     
    Last edited: Apr 13, 2019
  4. anf

    anf Established Member

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    Yes, i agree. But there is a big big BUT. The decision was based on 4(b)(i) and (ii)
    What you are describing is 4(b)(iv). If the decision was based on 4(b)(iv), i would agree with you. BUT the decision was based on
    That's it!!!. You want to sell for more than you bought = bad faith (according to the decision). But this is not the case here: to apply 4(b)(i) Complainant has to proof that
    Once again: The respondent was sitting on the domain for 18 years, and never contacted the Complainant. Therefore there is no evidence of 4(b)(i) (or 4(b)(ii), there is no indication that he regged the domain with sole purpose to sell it Complainant.



    Could you post some links please? And also: If i have a "for sale" (not to the holder of the trademark, but to anybody in different area) lander, does it mean that i have a legitimate interest?
     
    Last edited: Apr 13, 2019
  5. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    But there was no evidence that he was using it for anything else...? If you have proof of one and not the other then it feels to me that only one conclusion can be made. That's what it looks like to me.
     
  6. anf

    anf Established Member

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    In order to win udrp you need to proof ALL (not one, not 2, but ALL) of these:
    1) Similar to trademark
    2) No legitimate interest
    3) Bad faith

    "bad faith" was based on 4(b)(i) and 4(b)(ii), which is does not make any sense in my opinion.
     
    Last edited: Apr 13, 2019
  7. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    https://www.icann.org/resources/pages/policy-2012-02-25-en#4bi

    He admittedly registered the name, knowing that they exist, to sell their products. He didn't though. Leaving the only other thing that he did which was not use it and try to sell it for profit.

    Surely by registering the name to sell their product, then not being able to, then proves that he registered it and kept it for no other reason but to keep it from them.

    Thats my impression. Would like to know your opinion on this nontheless.
     
  8. anf

    anf Established Member

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    Yeh, i see your point, may be you are right.

    Just a quick thought: let's assume that domainer would say something like "i regged this name to sell products that are not related to the products of the Complainant" (like i regged apple.com to sell apples).

    Or something like this: "i regged the name to sell it to anybody whose business is not related to the Complainant's business."

    Would the decision be different?
     
  9. anf

    anf Established Member

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    Got it. Thanks!!!
     
  10. Jv1999

    Jv1999 Spamming Exo: Dark Merc of the Exo-Tower VIP

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    There should be a statute of limitations for infringing trademark. But I guess it could be said that it's an ongoing offense that happens everyday.

    Anyway, that said, just because 18 years passed doesn't mean your TM violation goes away lol. If i bought AmazonOnlineMarket.com in 2010, and hodl until 2019, that doesn't mean I can win a UDRP XD.
     
  11. anf

    anf Established Member

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    Yes, but if I regged AmazonAuto.com, thinking to sell it to somebody in the automarket business, i should be able to win a UDRP
     
    Last edited: Apr 13, 2019
  12. Kate

    Kate Domainosaurus Rex VIP ★★★★★★★★★★

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    This case is a classic. The respondent could not provide evidence of a legitimate purpose.
    He acknowledges that he knew about the TM, and the domain name was acquired with a specific end user/TM in mind. At this point, the case is already done.
    Bottom line, he has been holding a domain name embedding the TM without permission from the TM holder. An exact match on top of that.

    He could have come up with another excuse, then he might have prevailed.
    Panelists are not stupid, the sole panelist logically came to the conclusion that the respondent has been holding the name hostage, waiting for payday. Either way it's difficult to prevail in a case when you are the accused and you have weak arguments.

     
  13. tonyk2000

    tonyk2000 Top Member VIP ★★★★★★★★★★

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    https://www.wipo.int/amc/en/domains/search/overview3.0/

    "Generally speaking, panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor)." (quote end)
    A bunch of related links are in "relevant decisions" subsection of this WIPO document.

    I would add Prom Software v. Reflex Publishing, WIPO, No D2001-1154 where the Complainant offered to purchase the domain name. In finding a legitimate interest and denying the complaint, the panel stated that the complainant has failed to meet it burden of demonstrating that the respondent has no right or legitimate interest in the domain name and the complainant had actually established the apparent legitimacy of the respondent's interest.

    Also, in aspects of domainer's interests and rights to own, park and/or sell domains, UDRP cases where the Respondents were represented by mr. John Berryhill @jberryhill , are of particular interest (searchable on WIPO and NAF websites).
     
    Last edited: Apr 13, 2019
  14. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    On the case you mentioned Prom Software v. Reflex Publishing, WIPO, No D2001-1154 it is interesting to note that the email exchanges proved that the respondent didn't try to sell the name to the complainant. He said it wasn't for sale.

    Had the respondent in the guzzini.com case done the same, perhaps he would have prevailed.
     
    Last edited: Apr 14, 2019
  15. anf

    anf Established Member

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    He could not, because Complainant contacted the domainer first with the purpose to buy the domain. They reached an agreement but the deal did not go through, and after that the UDRP was fired.
     
  16. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    Sorry for the confusion. If the complainant had responded to the emails in the same way he may have prevailed.
     
  17. dande

    dande UNNATURE.COM VIP

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    I think this UDRP has to be scrapped. It's not helping domain investors in anyway. How can a judgement be talking about selling a domain name as "bad faith"? Who doesn't know that domain name buying and selling business exists?

    And some guys are here sounding like "righteous that thou" backdoor lawyers. When has it become illegal to buy domain names with the purpose of selling them for profits? How about newGTLD Registry premium, why isn't that interpreted as bad faith? Since they do pick vital names, including trade marked names and slap prices on them too.

    You see, it is far too easy to arm twist poor guys in their little business because no one will ever come to their defenses.
     
    Last edited: Apr 14, 2019
  18. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    @dande He literally admitted to registering that company's name to sell their products as evidence to the UDRP panel...

    Screenshot_20190414_121656.jpg

    What defence can you provide for it?
     
  19. dande

    dande UNNATURE.COM VIP

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    Well, I don't know about him, I am talking about UDRP in general
     

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