RDNH finding.
The UDRP against the aged, generic domain AdviceGroup.com, didn’t end well for the Complainant, Advice Group S.P.A., Italy.
The Complainant was found to be abusing the process to gain the domain, and was slapped with both a transfer refusal and a finding of Reverse Domain Name Hijacking.
The best part: the Respondent did not respond. The UDRP complaint referred to them as being a “cybersquatter” and this decision shows quite the opposite.
Full details about this decision for AdviceGroup.com follow:
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advice Group S.P.A. v. Privacy Administrator, Anonymize, Inc. / Michele Dinoia, Macrosten LTD
Case No. D2019-24411. The Parties
The Complainant is Advice Group S.P.A., Italy, represented by CLIP Legal, Italy.
The Respondent is Privacy Administrator, Anonymize, Inc., United States of America (“United States”) / Michele Dinoia, Macrosten LTD, Cyprus.
2. The Domain Name and Registrar
The disputed domain name <advicegroup.com> (the “Domain Name”) is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 17, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 22, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 27, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a marketing firm founded in March 2006 and headquartered in Torino, Italy, with additional offices in Rome and Bari and affiliates in Bulgaria, Kosovo, Portugal, Colombia, and Peru. It is organized as a public limited company under Italian law. The Complainant operates a website at “www.advicegroup.it” in Italian, English, and Spanish. The Complaint includes evidence that the Complainant has received awards and media recognition for its rapid growth and achievements in the marketing industry, particularly in Italy.
The Complainant holds Italian trademark number 2015000025292, registered on December 16, 2016, for a figurative mark for which it applied on June 18, 2015. The Complaint refers to this as the ADVICE GROUP mark, but it does not include the word “Group”. Rather, it consists of a stylized capital “A” followed by the English word “Advice”, over the English words “Progressive Marketing Thinking” in a smaller font. This is the mark that appears on the Complainant’s website.
The Complaint reports that the Domain Name was registered on September 14, 2005. At the time the Complaint was filed, the Domain Name was registered in the name of a domain privacy service. Following notice of this dispute, the Registrar reports that the Respondent Michele Dinoia of Macrosten LTD, with a postal address in Nicosia, Cyprus, is the registrant and has owned the Domain Name since September 19, 2014. The Panel will use this date as the relevant date on which the Respondent acquired the Domain Name, as the representation by the Registrar is the only evidence available in the record.
Macrosten LTD is listed as a private limited company, registered in Cyprus on January 13, 2014, in the online database operated by the Department of Registrar of Companies and Official Receiver of Cyprus. The postal address given is the same as in the Domain Name registration. The website at “www.macrosten.com” is not revealing, however, as it consists only of a contact page where site visitors can enter contact details to “Ask for Informations”.
The Domain Name resolves to a landing page advertising the Registrar’s services and suggesting that the Domain Name is for sale, with a link to “Contact Domain Owner for more information about this domain”.
The Complaint includes citations to UDRP proceedings in which the “Respondent” has been divested of domain names. Many of these concern the domain privacy service as the respondent, however, and have nothing to do with Mr. Dinoia or Macrosten LTD. Others do involve Mr. Dinoia and Macrosten LTD, and indicate that Mr. Dinoia is a domain name investor who has sometimes acquired domain names that are confusingly similar to trademarks. The Panel notes that on other instances Mr. Dinoia has successfully defended himself against UDRP claims, as in DIGITI limited liability company v. Privacy Administrator, Anonymize, Inc / Michele Dinoia, Macrosten LTD, WIPO Case No. D2018-2148 (where the panel concluded that the respondent had a legitimate interest in registering a domain name corresponding to an Italian dictionary word and granted a finding a reverse domain name hijacking) and GAMBERO ROSSO S.p.A. v. Mr. Michele Dinoia, Macrosten LTD, WIPO Case No. D2018-0697 (referring to other instances of denied complaints).
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its figurative ADVICE mark, for which the Respondent lacks permission and otherwise has no evident rights or legitimate interests.
The Complainant argues that the Respondent must have been aware of the Respondent because of its rapid growth and reputation “in Italy and abroad” and its awards from “trade associations and committees”, selecting the Domain Name and allowing it to be listed for sale in order to exploit the Complainant’s reputation. The Complainant points to the Respondent’s history as a “cybersquatter” to infer bad faith in this instance as well.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Complainant has a registered, figurative mark, in which the most prominent word element is “Advice”. The Domain Name comprises two words, “advice” and “group”. Neither the word “advice” nor the Domain Name are especially distinctive, but they may be considered minimally similar for purposes of the first element of the Complaint. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. Id., section 1.7. The timing of the acquisition of the mark and the Domain Name is not material for this standing requirement, although it may be for the other elements of the Complaint, as discussed below.
The Panel finds, therefore, that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Respondent made no Response and has not used the Domain Name for an active website of its own. There is no indication that the Respondent did anything but allow the Registrar to park the Domain Name with its usual messages advertising the Registrar’s services and suggesting that visitors could contact the Domain Name owner about purchasing it. The Domain Name comprises two English words, “advice” and “group”, sufficiently generic in meaning that a search engine query produces numerous examples of diverse organizations apart from the Complainant incorporating those words in their names, such as Advice Group (outsourcing and professional services, Brazil), Advice Group, LLC (lawyers in Ukraine), IT Advice Group (Belarus), The Advice Group (insurance and mortgage services in New Zealand), Milestone Advice Group (financial services in North Carolina), Money Advice Group (investment advice, United Kingdom), the Free Legal Advice Group (Alabama), FG Advice Group (IT services, Latvia), Certainty Advice Group (financial advice, Australia), Workplace Advice Group (United Kingdom), Trusted Advice Group (financial advice, United Kingdom), and Apex Advice Group (financial services, New Zealand).
Thus, the Respondent could well have added the Domain Name to the Respondent’s portfolio for its generic value in the course of legitimate domain name investing. The Respondent has not come forward to make that claim, however, and it is not necessary to make a finding under the second element, given the Panel’s finding on the third element of the Complaint, below.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
As discussed above in connection with the second element of the Complaint, the words “advice” and “group” that comprise the Domain Name are English dictionary words found in the names of many parties, in many countries, that offer advice in a wide variety of fields. The Complainant is active in marketing consulting in Italy and a few other countries, but the record does not persuasively establish that in 2014, when the Respondent acquired the Domain Name, the Complainant was the firm most commonly associated in Italy and internationally with the rather common and descriptive term “Advice Group” or that the Respondent had any direct or special knowledge of the Complainant. To the contrary, the record shows that the Complainant did not even apply for a figurative trademark featuring the word “advice” until June 2015, nine months after the Respondent registered the Domain Name. That trademark was not registered until December 2016, more than two years after the Domain Name registration. In short, the Complainant offers no evidence supporting its allegation that the Respondent must have registered the Domain Name in contemplation of the Complainant’s mark.
The Respondent’s subsequent conduct in allowing the Registrar to park the Domain Name with a contact link to the domain owner does not prove an original intent to sell the Domain Name for a price in excess of costs to the trademark owner: there was no trademark at the time of registration. Similarly, the Respondent could not trade on the Domain Name’s potential to misdirect Internet users because of its confusing similarity with a trademark that did not yet exist and of which there is no evidence that the Respondent had advance knowledge.
The Panel finds on this record that the Complainant has not established bad faith at the time of registration, as required under the Policy, paragraph 4(b), and thus concludes that the Complaint fails on the third element.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Thus, even in the absence of a Response requesting such a declaration, it is appropriate for the Panel to consider it.
Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.).
The Amended Complaint inappropriately relies on accusations of “cybersquatting” by the “Respondent”, citing proceedings that did not involve Mr. Dinoia and failing to show how the Respondent targeted the Complainant’s mark when the Registrar indicates that the Respondent acquired the Domain Name some two years before the Complainant obtained a trademark, and nine months before the Complainant even filed its trademark application. The Domain Name is a common English two-word term, and the Complainant offered absolutely no evidence to indicate that the Respondent had advance knowledge of the Complainant’s trademark plans and no reason to believe the Domain Name would ultimately be more valuable in relation to the Complainant, once those plans came to fruition, than for its generic sense. Given the plain language of the Policy, paragraph 4(b), and the resources available to counsel such as the WIPO Overview 3.0, it is inexcusable to ignore the obvious deficiency in evidence and reasoning in the Amended Complaint, once the Registrar disclosed details about the identity of the registrant and the timing of its acquisition of the Domain Name.
The Panel finds that the Complainant brought the Complaint in bad faith, in an attempt at Reverse Domain Name Hijacking.
7. Decision
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: December 2, 2019
hmm… where are the times when the italian mafia still had some money in order to BUY a domain-name ?
😉