Give Bogdan a cigar! Epic UDRP win for domainer from Ukraine

map-ukraineWhen it comes down to defending a domain UDRP, the general consensus is to always seek representation; preferably from a domainer-friendly law firm.

Bogdan Mykhaylets, a domain investor from Ukraine, represented himself quite aggressively, defending his domain name

Versalis S.p.A. of San Donato Milanese, Italy and their legal team, asserted that their VERSALIS mark was registered internationally more than 12 months before the matching .com.

Regardless, they offered 5,000 euro to the Respondent, using an outside counsel; then raised the offer to 6,000 euro.

The Respondent considered his options, and sent the Italian company a statement, that he is “ready to enter into a mutually beneficially agreement to transfer the rights to for 99 thousand euros, or as an option, in a 12-month rent-to-own with 9 thousand euro monthly payments”.

Apparently, that’s when Versalis S.p.A. got all upset, and filed the UDRP seeking to get the domain for free.

Bogdan clearly deserves a cigar, for this epic introduction to what domain investing is, and why his asking price was fair:

“Respondent, having a background in IT security and computer networking, became interested in investing and trading in domain names in 2008. He claims that he has been able, through the acquired knowledge of what makes a valuable domain name, to build through acquisitions on the publicly available aftermarket channels a portfolio of what Respondent believes are highly valuable domain names. This portfolio serves as a solid online brand consulting branch of his online advertising activities, which allows him to having at his disposal a high-marketing potential domain name (that can be easily spelled, is easy to pronounce, easy to remember and has a positive connotation), or assist clients who seek a domain name for their projects, and monetize in good faith the portfolio of domain names through sales and such means as pay-per-click advertising provided by domain monetization platforms in compliance with applicable regulations. Respondent’s portfolio of more than 1,000 domain names was collected by participating in the lawful trade in domain names which is an industry running into millions of dollars per week.”

As if that that intro to what is domaining wasn’t epic enough, Bogdan delivered another blow:

“Respondent acquired the disputed domain name in an auction, and believed that it represented the French city of Versailles. Respondent allegedly checked this on Google which treated the terms “Versalis” and Versailles interchangeably as meaning the same thing. According to Respondent, “Versalis” is a common word that has many different meanings in different languages such as “Versailles” in Lithuanian and “embodying” in Latin. Respondent acknowledges that he did not use the disputed domain name for some time until he was introduced to a spiritual master by the name of Mooji whose quotes Respondent wished to publish. According to Respondent the disputed domain name was perfect because the root part of “Versalis” would mean “ornate capital letter used to start a verse, paragraph of a manuscript; entire, whole and light”. Respondent proceeded with the development of the website under the disputed domain name and an accompanying Facebook community.”

Getting ready for strike three, the registrant of explained what happened during the communication with the Complainant:

“Respondent claims that he acquired the disputed domain name without prior knowledge of the Trademarks. The acquisition of the disputed domain name was not intended against Complainant, to sell it to Complainant or its competitors. Respondent acknowledges that Complainant owns the Trademarks but alleges that Complainant does not possess exclusive rights to the word “Versalis” which is a dictionary word commonly used by various entities around the world. Further, Complainant does not have an exclusive right to the disputed domain name. There are multiple entities in the world that have the same name but different website addresses not matching their name.

Respondent refutes that the website to which the disputed domain name resolved advertised that it was for sale for more than one week. The reason therefore being that Respondent had some temporary cash liquidity issues due to purchase opportunities and he decided to test the waters and see if there were any possible buyers for the disputed domain name amongst the growing Versalis project audience who would have interest in taking it over. When Respondent was first contacted about a possible purchase of the disputed domain name, such contact was not made by Complainant but by a third party who wrote Respondent on August 28, 2013: “As it is a mere attempt for us to acquire a new client and this domain name is one of the alternatives that we are considering (… but is the one that I personally prefer that I think will give us better chances), we have a somewhat limited budget for the time being.” Respondent believed this to border on bad faith and asked for his principal. In subsequent correspondence with Complainant’s outside counsel, who offered him money for the transfer of the disputed domain name, Respondent repeatedly refused, until April 2014 when, in a response to their request for a reasonable counteroffer, he asked for EUR 99,000. Respondent alleges that Complainant has not provided any evidence that Respondent used the disputed domain name to harm Complainant in any way, and Respondent claims that he neither used the disputed domain name in any way to harm the business of Complainant or infringe the Trademarks, nor has an intention to do so.

Respondent denies that he registered and used the disputed domain name in bad faith as Complainant has tried to mislead the Panel that a reasonable price is not decided or agreed upon to be the monopoly of Complainant. There is, according to Respondent, nothing to demonstrate that asking his price for the transfer of the disputed domain name constitutes bad faith as such pricing is not of itself evidence of targeting a particular trademark owner under the circumstances of this case.”

Bogdan Mykhaylets also asked for a finding of Reverse Domain Name Hijacking to be delivered, in order to seal this case and wrap it with a “Police Line – Do Not Cross” tape. 😀

A three member panel delivered a decision on behalf of the Respondent, denying that there was any bad faith involved in the domain’s registration. No RDNH finding was delivered, however.

An important part of the finding is the following passage, regarding the asking price for the domain name

“As such, the mere fact that Respondent asked for an amount which is presumably for valuable consideration in excess of his out-of-pocket costs directly related to the disputed domain name is not sufficient by itself to find bad faith. “

This is clearly a case that needs to be framed and delivered in every panelist’s office, from now on. For the full text of the UDRP decision, click here. Or listen to the Ukrainian anthem below.

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