Valloni.com UDRP: NameFind asset hit with Swiss trademark claims

The domain name Valloni.com was registered in 2012; the domain is owned by NameFind Cayman Islands, the Caymanian branch of GoDaddy-owned NameFind.

Lucien William Valloni is a Swiss national and a lawyer who trademarked the VALLONI mark in Switzerland and the European Union in 2023 and 2024 respectively.

The Respondent states that it acquired the disputed domain name in 2021 in the normal course of its business and maintains that it is not unlawful to register and use a dictionary word or a common surname for resale. The Respondent submits in this regard that “Valloni” is an Italian dictionary word which in English translates as “valley”, is a surname in Italy, France, Switzerland, and the United States, a brand name for a winery, and is being used by different people bearing the name Valloni, including the Complainant’s law firm.

The three member panel agreed that the domain’s registration and use were not in bad faith and are senior to the Complainant’s brandmark’s existence. One panelist found that there is Reverse Domain Name Hijacking involved, while two dissented.

Final decision: Deny the transfer of the domain name Valloni.com to the Complainant with no finding of RDNH.

ARBITRATION AND MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Lucien William Valloni v. Domain Administrator, NameFind Cayman Islands Ltd.
Case No. D2024-5126

1. The Parties

The Complainant is Lucien William Valloni, Switzerland, represented by staedeli legal partners gmbh, Switzerland.

The Respondent is Domain Administrator, NameFind Cayman Islands Ltd., United Kingdom, represented by Levine Samuel, LLP, United States of America (“Untied States”).

2. The Domain Name and Registrar

The disputed domain name valloni.com is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2024. On December 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 December 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2025. On December 27, 2024, the Respondent requested the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Center granted the requested extension and the new due date for Response was fixed at January 12, 2025. The Response was filed with the Center on January 7, 2025.

The Center appointed Assen Alexiev, Richard Hill, and Tobias Zuberbuhler as panelists in this matter on January 28, 2025. The Panel finds that it was properly constituted. Each member of 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 Swiss national and his surname is Valloni. He acquired an attorney patent in 1993 and commenced practice as an attorney-at-law in 1997. The Complainant is an expert in the field of sports law and dispute resolution, and has been active in international organizations, where he has acted as President of the World Association of Ice hockey Players’ Union, President of the Swiss Association of Ice hockey Players, and Founder and President of the Swiss Association of Football Players. In the period 2005 – 2021, the Complainant practiced as a partner in the law firm Froriep. In 2021, he founded the Swiss law firm Valloni Attorneys at Law, focusing on international and Swiss dispute resolution, especially in the field of sports law, litigation, and arbitration. The official website of the Complainant’s law firm is located at the domain name valloni.ch, registered on April 15, 2016.

The Complainant is the owner of the European Union trademark VALLONI with registration No. 018990120, applied for on February 23, 2024, and registered on August 23, 2024, for goods in International Classes 22 and 25.

On August 24, 2023, the Complainant filed a Swiss trademark application for VALLONI with application No. 10848/2023, for services in International Classes 41 and 45. This application has not proceeded to registration yet.

The Respondent is a domain name investor owned by the Registrar.

The disputed domain name was initially registered by the Complainant, and its registration lapsed in 2012. On May 31, 2012, the disputed domain name was registered by a third party, and on March 18, 2021, it was acquired by the Respondent. The disputed domain name currently resolves to a parking webpage of the Registrar and is being offered for sale for CHF 13,415.38.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that he has acquired unregistered trademark rights in his surname Valloni through its continuous and substantial use in connection with his professional activities, as a result of which his surname has become closely associated with his expertise and reputation in the field of sports law and dispute resolution and has become distinctive for legal services in these fields.

The Complainant submits that the disputed domain name is identical to his VALLONI trademark, because it incorporates the trademark in its entirety without any additional elements.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant maintains that the Respondent operates as a domain administrator and has registered the disputed domain name for resale.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. He maintains that he was a long-standing registrant of the disputed domain name, but due to the bankruptcy of the then registrar, no renewal reminder was sent and the registration of the disputed domain name lapsed. The Complainant notes that the Respondent has not used the disputed domain name for any bona fide purpose and submits that its sole intention appears to be speculative resale, since the disputed domain name is currently listed for sale at a price of CHF 13,415.38. The Complainant notes that the Respondent registered the disputed domain name shortly after its expiration and maintains that the timing of this registration and the lack of any demonstrable legitimate use of the disputed domain name indicate that the Respondent’s intent was to sell the disputed domain name to the Complainant. The Complainant adds that the indicated sale price far exceeds the Respondent’s out-of-pocket costs directly related to the registration of the disputed domain name.

B. Respondent

The Respondent states that its business involves the acquisition and resale of domain names composed of generic or common words and phrases.

The Respondent states that the disputed domain name became a dropped domain name that on May 30, 2013, was acquired by a third party and not by the Respondent. In 2019, the disputed domain name was acquired by another third party registrant. The Respondent states that it acquired the disputed domain name in 2021 in the normal course of its business and maintains that it is not unlawful to register and use a dictionary word or a common surname for resale. The Respondent submits in this regard that “Valloni” is an Italian dictionary word which in English translates as “valley”, is a surname in Italy, France, Switzerland, and the United States, a brand name for a winery, and is being used by different people bearing the name Valloni, including the Complainant’s law firm.

The Respondent maintains that the Complainant has failed to show having unregistered trademark rights in his surname, and its allegation that the same has become closely associated with his expertise and reputation in the field of sports law and dispute resolution is insufficient to demonstrate an unregistered mark, because the Complainant has not submitted evidence of acquired distinctiveness. According to the Respondent, the facts that the Complainant was once the registrant of the disputed domain name, that he was employed as an attorney in a law firm before he established his own law firm, and that he is the distinguished author of several legal treatises, are not relevant to the issue of rights to a dictionary word and common surname accruing prior to any trademark right.

The Respondent points out that its acquisition of the disputed domain name predates the Complainant’s registration of the VALLONI trademark and denies that it has registered or used the disputed domain name to target the Complainant. The Respondent notes that targeting infers actual knowledge of the Complainant and intent to take advantage of that particular trademark owner and submits that there is no evidence that the Respondent had any knowledge that someone with the surname Valloni residing in Switzerland and operating in a niche field would three years in the future register his surname as a trademark.

The Respondent requests the Panel sanction the Complainant with reverse domain name hijacking. The Respondent submits that a complainant would violate paragraphs 1 and 15(e) of the Rules if it uses the Policy as a tool to wrest a domain name from its lawful holder and where it must (or should) have been obvious to the Complainant that it could not possibly state a colorable claim of cybersquatting. The Respondent adds that Panels have found reverse domain name hijacking an appropriate sanction where the facts demonstrate that the complainant knew or should have known that it could not succeed as to any of the required three elements, such as indisputable evidence that the Respondent indeed has rights or legitimate interests in the disputed domain name and registered and is using it legally and in good faith.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The Complainant has shown rights in respect of the registered European Union trademark VALLONI for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The entirety of the Complainant’s European Union trademark VALLONI is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to this trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel therefore finds the first element of the Policy has been established.

The Complainant also claims having unregistered trademark rights in his surname Valloni. In support of this claim, the Complainant submits that he is a highly regarded expert in the field of sports law and dispute resolution, that he has numerous publications dating back to 1998, and that he has taken top positions in several international organizations. The Complainant notes that his expertise has been recognized through his appointment as a permanent guest lecturer at the Paris-Sorbonne University in Abu Dhabi since 2015. The Complainant further submits that in 2005 he became a partner in the Swiss law firm Froriep and was sought for his legal services as he was known as one of the most prominent sports lawyers in Switzerland. The Complainant adds that in 2021 he founded the Swiss law firm Valloni Attorneys at Law, which focuses on international and Swiss dispute resolution, in particular in the field of sports law, litigation and arbitration, and notes that the name of this firm reflects the Complainant’s surname and his reputation.

As discussed in section 1.3 of the WIPO Overview 3.0, to establish unregistered trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with its goods or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.

The Panel notes that, in general, a person’s first name and surname are not capable of distinguishing the goods or services provided by that person from those provided by other persons bearing the same name or surname. However, the long use of a name or surname in connection with certain goods or services may cause the name or surname to acquire distinctiveness and lead consumers to associate the mark with a particular source, manufacturer or producer. In such a case, the person claiming an unregistered trademark must demonstrate that it has acquired the necessary secondary meaning for consumers.

The Panel notes that “Valloni”, apart from being the Complainant’s surname, also means “large valleys” in Italian, and is the Italian name for the ethnic group of Wallonians in Belgium. As noted by the Respondent, there are also other businesses using this name and persons bearing it. “Valloni” therefore cannot be regarded as inherently distinctive, and there is a greater onus on the Complainant to present evidence that it has acquired a secondary meaning.

The Complainant has provided evidence that he was admitted to the Zurich Bar Association in 1993, that he was a member of the Swiss law firm Froriep from 1997 to 2021, and that he then founded his current law firm, Valloni Attorneys at Law. This evidence shows that the Complainant has indeed practiced law for many years and is an expert in sports law and dispute resolution, but it appears that until 2021 he provided legal services under the brand of his former law firm. The Complainant has also provided evidence that he has served or continues to serve as president or board member of several international organizations related to various sports, which shows that he is highly respected in the international sports community, but his activities in these organizations are not commercial in nature. The Complainant has demonstrated that he is the author of several legal treatises, but his authorship does not per se constitute use of a mark in relation to goods or services. The Complainant has not provided any evidence as to the amount of sales under the claimed mark and the nature and extent of advertising using it; there is no evidence as to the degree of actual recognition of the trademark by the public and no consumer surveys. Taken together, the evidence submitted by the Complainant is insufficient to establish unregistered trademark rights in his surname, as it does not show that the same has acquired a secondary meaning for consumers.

On this basis, the Panel finds that the Complainant has failed to establish that he has unregistered trademark rights in his surname. While not relevant to the finding above on the first element – given the registered mark – this particular finding as to claimed unregistered rights is nonetheless included insofar as it relates to the second and third elements.

B. Rights or Legitimate Interests

The Panel finds that, before notice to the Respondent of the dispute, the Respondent used the disputed domain name in connection with a bona fide offering of goods or services. WIPO Overview 3.0, section 2.2.

As discussed in section 2.1 of the WIPO Overview 3.0, Panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP. As also discussed in section 2.10.1 of the WIPO Overview 3.0, Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.

The disputed domain name contains the element “Valloni”, which is a surname and the Italian name of the Belgian Walloons and also means “large valleys” in Italian. It can therefore be considered to represent a dictionary word with different meanings that can be legitimately used for different purposes unrelated to the Complainant.

The Respondent submits that it is a domain name investor whose business includes the acquisition and resale of domain names corresponding to dictionary words. It has demonstrated that it acquired the disputed domain name in 2021 from a third party who in turn acquired it from the registrant who registered it in 2012 after the expiry of the Complainant’s previous registration. There is no evidence that the Respondent knew of the Complainant when it acquired the disputed domain name in 2021 and, in any event, the Complainant did not apply for its trademark in Switzerland until 2023 and did not obtain its registration in the European Union until 2024. The disputed domain name is currently offered for sale to the general public and the Respondent has never contacted the Complainant or placed any content relating to the Complainant or legal services on the disputed domain name. All of these circumstances support a finding that the Respondent registered the disputed domain name and advertised it without targeting the Complainant.

The Panel therefore finds that the second element of the Policy has not been established.

C. Registered and Used in Bad Faith

Notwithstanding that it was a prior registrant, he evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed domain name was to profit from or exploit the Complainant’s trademark. It may very well be that in the course of due diligence, the Respondent would have become aware of the Complaint’s status as a prior registrant, but the fact that the disputed domain name had changed hands several times would equally allow the Respondent to infer that it would be on safe ground to register the same given that the prior registrant did not then have a corresponding trademark registration.

As discussed above, the Respondent acquired the disputed domain name in 2021, while the Complainant filed his first trademark application for VALLONI only two years later, and there is no evidence in the case file suggesting that the Respondent knew of the Complainant in 2021 and targeted him with the acquisition of the disputed domain name and its subsequent offering for sale. This precludes a finding of bad faith on the part of the Respondent.

The Panel therefore finds the third element of the Policy has not been established.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the 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 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. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16.

The disputed domain name had been registered and used by the Complainant for several years and was lost in 2012 through no fault of the Complainant. There is no evidence that the Complainant knew at the time of filing the Complaint that the disputed domain name had been registered in 2012 by a third party and not by the Respondent, and that the Respondent did not acquire it until 2021. In these circumstances, it does not appear to the Panelists Alexiev and Zuberbuhler that it was obvious to the Complainant that the Complaint could not succeed, and therefore these two Panelists consider that a finding of RDNH is not warranted.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Assen Alexiev/
Assen Alexiev
Presiding Panelist

/Richard Hil/l
Richard Hill
Panelist

/Tobias Zuberbuhler/
Tobias Zuberbuhler
Panelist
Date: February 11, 2025

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