WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alessandro International GmbH v. Alessandro Gualandi
Case No. D2014-2111
1. The Parties
Complainant is Alessandro International GmbH of Düsseldorf, Germany, represented by Betten & Resch, Germany.
Respondent is Alessandro Gualandi of New York, New York, United States of America,
self-represented.
2. The Domain Name and Registrar
The disputed domain name <alessandro.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2014. On December 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 3014, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2014. The Response was filed with the Center on December 7, 2014.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 19, 2015. 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.
On February 9, 2015 the Panel issued an administrative procedural order (“Panel Order No. 1”) requesting the Respondent to provide further statements and relevant supporting material in relation inter alia to the identity of the Respondent which may include:
i) A copy of the citizenship indicating Respondent’s full name; or
ii) Respondent’s birth certificate; or
iii) Any other document that may prove Respondent’s identity.
4. Factual Background
Complainant is a company dedicated to manicure and pedicure products. The predecessor of Complainant, Alessandro Cosmetics GmbH was founded in 1989 in Langenfeld, Germany and later expanded worldwide.
Respondent is Alessandro Gualandi, an individual with domicile in New York, United States of America.
The disputed domain name was registered on November 17, 1998.
5. Parties’ Contentions
A. Complainant
Complainant states that it has registered the trademark ALESSANDRO in Germany, European Union, the United States and other jurisdictions around the world. According to the complaint, the disputed domain name is identical to Complainants trademarks.
Complainant states that Respondent has no right or legitimate interest in the disputed domain name since the domain name is registered but not being used. Respondent also has not taken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of good or services. Finally, the Respondent is neither not commonly known by the disputed domain name nor is Respondent making a legitimate non commercial or fair use of the disputed domain name, without intent for commercial gain.
With respect to bad faith Complainant cites the Telstra Corporation Limited v. Nuclear Marshmallows case, WIPO Case No. D2000-0003 and proposes to apply the passive test to determine bad faith. The Complaint states that Respondent did not actively contacted Complainant, but when contacted by Complainant in order to purchase the disputed domain name, he Respondent acted in a way that indicates bad faith. In one of the emails Respondent ended negotiations because he had not received an offer and accused Complainant of not dealing in good faith. In another email Respondent explained that the disputed domain name is not for sale but he offered to Complainant the domain name <alessandro.ws> for EUR 25,000. This email was ended with the sentence: “Thanks for your inquiry and meantime God bless your morning cup and may you coffee be hot and strong”.
Complainant also states that Respondent provided a list of domain name that were sold for multi-million dollar amounts and that Respondent mentioned that once he “bought a domain name for US D 3,000 from a person who did not know the real value of it and resold it for USD 100,000”. Respondent showed a similar list to an employee of Complainant in a meeting they had in a New York bar. According to the Complaint, this is another indication of bad faith, because Respondent is implying that he would be willing to sell the domain name for a million dollar price.
Finally, Complainant states that Respondent has not used the disputed domain name since it was registered in 1998 and that Respondent holds 33 domain names as a natural person, which leads to the conclusion that the domain name <alessandro.com> is being registered in bad faith, “at the latest, as soon as the Respondent became aware of Complainant, its business, its trademarks and its several attempts to reach an amicable settlement by purchasing the domain name”.
Complainant requests the transfer of the disputed domain name.
B. Respondent
Respondent states that he is an individual who has no experience in domain name dispute matters. Respondent explained that over a period of several years Complainant or their representatives have contacted him to ask if Respondent would sell to Complainant the disputed domain name.
Respondent states that he has always responded that he was not interested in selling the domain name to them or anyone else.
Respondent asserts that his own Christian name is Alessandro, and that it is the name his parents gave him. He added that it is a name which is fairly common in the Northern part of Italy where he comes from. Respondent stated that he had no idea that a company called “Alessandro International GmbH” even existed, and he has never done anything to confuse his identity with Complainant.
Respondent states that he has registered the disputed domain name because he is proud of his name, and he wanted to set up a personal website at the disputed domain name and also to use it for his email. Respondent adds that he had once a personal website in the disputed domain name, but he took it down because he needed to change web hosting companies. He explains that the website was never used to run a business, and it existed only for Respondent own personal pleasure.
With respect to the existence of rights or legitimate interests in respect of the disputed domain name, Respondent states that “… I think the fact that my name is “Alessandro” should give me obvious rights and legitimate interest in the domain name. While I am certain that Complainant is a highly respected winner of all the honors and awards they mention, it doesn't mean I have no legitimate interests in my own name”.
Respondent also adds that the disputed domain name was in use and the Respondent had his personal email at [<alessandro@alessandro.com>] for years, and that he had a simple, personal website with photos of Respondent and his friends online until he decided to switch web hosting providers and took it down.
With respect to bad faith, Respondent explains that he did not register nor use the disputed domain name in bad faith.
According to Respondent’s answer, the disputed domain name <alessandro.com> was registered for Respondent own´s use because his name is Alessandro, and he wanted to have a domain name representing his own name.
Respondent states that the Complainant itself is the real act of bad faith. Respondent explains that in 1997 he registered the disputed domain name because his name is Alessandro. At that time he was not aware that Complainant’s company existed. He has never contacted them except in response to the several times they reached him out. Respondent states that the Complainant even admits this fact in the complaint when they say “The Respondent did not actively contact the Complainant”.
Respondent states that Complainant mischaracterizes the history of the times they have approached Respondent to try to buy the disputed domain name by painting a false and misleading picture of the real facts. Each and every time Complainant contacted him, he told them clearly that the disputed domain name was not for sale and that he had no desire to sell it at any price. When Complainant subsequently pushed Respondent to name a price he was irritated, and he “may have responded with a wisecrack or a little bit of sarcastic humor”.
Respondent states that Complainant has actually filed the Complaint in bad faith in an attempt to “Reverse Domain Name Hijack’ his domain name.
Respondent requests the Panel to deny the claims of Complainant, and if appropriate, to find that this entire Complaint is a case of an attempt at Reverse Domain Name Hijacking (“RDNH”).
C. Procedural Order No. 1
On February 9, 2015 the Panel issued the Panel Order No. 1 requesting Respondent to provide further statements and relevant supporting material in relation inter alia to the identity of Respondent which may include:
i) A copy of the citizenship indicating Respondent’s full name; or
ii) Respondent’s birth certificate; or
iii) Any other document that may prove Respondent’s identity.
On February 10, 2015, in response to the Panel Order No.1, Respondent emailed to the Center the following two documents:
- United States Passport, and
- New York State Driver license.
Both documents were issued in the name of Respondent Alessandro Gualandi.
On February 13, 2015 Complainant’s reply to Panel Order No. 1.
Complainant states that the fact that Respondent given name is Alessandro does not constitute a right or legitimate interest in respect of the disputed domain name. Complainant states that the name Alessandro is a very popular and widespread Italian name. In that sense Complainant mention statistics of the use of the name Alessandro in Italy. Due to the high number of people named Alessandro it has to be concluded that Respondent is not commonly known by the name Alessandro because hundred of thousands of individuals have the same name as well. Therefore Respondent cannot claim any right or legitimate interest in respect of the disputed domain name because the name is not associated with Respondent in particular.
Complainant states that a given name can be distinctive per se when it is unusual and the holder of the domain name has gained certain recognition. Complainant cites as an example the cases of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 or Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431.
Complainant also argues that the trademark right of a company should prevail over the fact that a non famous individual happens to have the same name as the company and its trademarks. As an example Complainant cites the cases of Maybelline, Mary Kay, Sephora, Valentino and Mercedes, where those companies own their respective domain name despite the fact that some individuals may be named also by those names. The same should apply to Complainant as the proprietor of several “alessandro” trademarks registered before the disputed domain name was registered.
Complainant states that consumers are used to see a strong international brand as being displayed in a URL as the second level domain name, whereas natural persons usually do not only use their given name as a second level domain name but their given name plus their surname, or only their surname.
Complainant states that Respondent does make a legitimate or non commercial or fair use of the disputed domain name. Complainant states that Respondent used the disputed domain name for commercial gain: when browsing the website of the disputed domain name by using the Wayback Machine it shows that there was a website available between 2006 and 2007. Such website was used for selling domain name and therefore for commercial gain. This is indicative that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant reiterates the fact that Respondent provided a list of domain names sold for multi million dollar amounts as evidence of bad faith.
In addition Complainant states that Respondent has registered 39 domain names which according to Complainant is very uncommon for a natural person. Complainant states that before filing the Complaint Respondent had 33 domain names registered and that currently and the time to reply to the Panel Order No. 1 Respondent has 39 domain names. Respondent now owns three (3) domain names with the term Alessandro (namely <alesandro.com>, <alessandro.ws> and <alessandro.nyc>). However for personal use, one domain name would be sufficient and the fact that Respondent now owns three (3) respective domain names indicates that he has registered them for the purpose of sale.
Complainant states that some of those registered domain names imply that they are not meant for private non commercial use such as <atenzione.com>, <casebelle.com>, <cercasi.com>, <freshmozzarella.com>, <newpizza.com>, <prezzibassi.com>, or <tassevarie.com>. The registration of those general terms as domain names indicates that the Respondent is aware of the fact that those domain names may generate good prices in domain market places.
Complainant states that some of those domain names have been offered for sale by Respondent in the disputed domain name between the years 2006 and 2007. Complainant attaches Annex 14 with a copy of the Wayback machine.
The Panel notes that some of Complainant statements contain facts or assertions that should have been included in the original Complaint, in any event, they are going to be considered to preserve the due process of both parties.
D. Unsolicited filing
On February 16, 2015 Respondent emailed to the Center explaining that he has asked a friend (someone named Mr. Ross) to help him write a Response to the reply of the Complainant. He attached an email from Mr. Ross containing several portions of decisions “previously decided by WIPO UDRP panels in favor of respondents who have been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights”.
Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (“WIPO Overview 2.0”) paragraph 4.2).
In this case, Respondent has not justify why it was unable to provide that information in his response filed in due time. Because the Panel finds there are no "exceptional" circumstances to justify this filing, the unsolicited filing from Respondent are not accepted by the Panel.
6. Discussion and Findings
According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to the trademarks in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has shown that it owns trademark rights in the ALESSANDRO mark registered in several jurisdictions.
The disputed domain name <alessandro.com> incorporates the trademark ALESSANDRO in its entirety, adding only the generic Top-Level Domain (“gTLD”) suffix “.com”.
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s ALESSANDRO trademark.
B. Rights or Legitimate Interests
The Panel must decide whether Respondent has any rights or legitimate interests in respect of the disputed domain name. In doing so, regard may be had to circumstances which might demonstrate rights or legitimate interests to the disputed domain name as follows paragraph 4(c) of the Policy:
(i) before notice to the Respondent 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) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if it 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.
In addition, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name see WIPO Overview 2.0, paragraph 2.1.
Complainant states that:
- Respondent has no right or legitimate interest in the disputed domain name since the domain name is registered but not being used,
- Respondent also has not taken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of good or services,
- Respondent is neither not commonly known by the domain name nor is Respondent making a legitimate non commercial or fair use of the disputed domain name, without intent for commercial gain.
Respondent stated that his given name is Alessandro and that he has the right to use his own name as a domain name.
Respondent also stated that at the website the disputed domain name was “a simple, personal website with photos of Respondent and his friends online until he decided to switch web hosting providers and took it down”. Respondent asserted that “the website was never used to run a business, and it existed only for Respondent own personal pleasure”.
Use of the Wayback Machine by the Panel1 at “www.archive.org” shows that the disputed domain name was used in several ways. In the years 2001, 2002 and 20032 for a website containing a gallery of photos of individuals and friends. From September 2003 to July 2006 the website contained an “Under construction sign”. From December 2006 to October 2007 the website contained and old photo of two kids captioned “Alessandro e Rino”, some quotes from Tennessee Williams and then a list of domain names (mostly Italian dictionary words) for sale3 . The Panel notes that the disputed domain name was not included in that list. From October 2007 there was again a construction sign on the website. In the year 2010 the site contained a quote from Tennessee Williams and in the year 2011 there were again several photos. Currently the website contains a long list of news in Italian.
Under the circumstances this Panel finds that Respondent has been using the disputed domain name for a personal use for several years. Complainant alleges that there was a commercial use because Respondent was offering for sale some domain names.
It is true that for a brief period of time, at the same time from posting personal photos, Respondent also used the disputed domain name to offer for sale some other domain names. However, the Panel notes that all these domain names were generic or dictionary words in Italian language (e.g., <atenzione.com>, <casebelle.com>, <cercasi.com>, <freshmozzarella.com>, <newpizza.com>, <prezzibassi.com> or <tassevarie.com>). In addition it does not seem that this use, if considered commercial, is affecting Complainant’s trademarks since the disputed domain name is clearly a personal website without any reference to the Complainant tradename or trademarks.
In view of the evidence submitted by Respondent, this Panel finds that the disputed domain name clearly reflects Respondent’s given name, and the Panel concludes from the record as a whole that Respondent has rights or legitimate interests in the disputed domain name under paragraph 4(c)(ii).
The use of one’s own first name in a domain name corresponds to a legitimate customary practice and is, as a rule, sufficient evidence of a legitimate right or interest in the disputed domain name (See Penguin Books Limited v. The Katz Family and Anthony Katz, WIPO Case No. D2000-0204; Ken’s Foods Inc. v. kens.com, WIPO Case No. D2005-0721; Billerbeck Schweiz AG v. Peter Billerbeck, WIPO Case No. D2001-0825; GA Modafine S.A. v. Mani.Com, WIPO Case No. D2001-0388; Perfetti Van Melle S.p.A. v. Pi-Effe S.a.s., WIPO Case No. D2003-0067; Jewson Limited v. Doug Jewson, WIPO Case No. D2008-0676; WIKA Alexander Wiegand SE & Co. KG v. dbluco, Zackary Wika, WIPO Case No. D2011-1076; Hogue, Inc. v. Mark Hogue, WIPO Case No. D2011-2181; ALROSA v. Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. and Elisa Marina Mendoza Rosa / Whois Privacy Services Pty Ltd, Domain Hostmaster, WIPO Case No. D2013-0256 and Angélica Fuentes Téllez v. Angelica Jeannette Fuentes Chandía, WIPO Case No. D2014-1989).
Complainant also argues that the trademark right of a company should prevail over the fact that a non famous individual happens to have the same name as the company and its trademarks. It is the view of this Panel that the Policy was designed to curb cases of abusive registration of domain names (known as cybersquatting). The requirements are clearly stated in the Policy (including bad faith registration and use as well as lack of legitimate interest or rights over the disputed domain name). Complainant assertion that the trademark of a company should prevail over a personal name of a non famous individual for a domain name disregards the extensive and settled case law decided under the UDRP and cited in the previous paragraph admitting legitimate interest in registering a domain name similar to the registrant personal name.
In light of the above, the Panel finds that Complainant has not met its burden under paragraph 4(a)(ii) of the Policy to demonstrate that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Even though the analysis of the third condition relating to the registration and use of the disputed domain name in bad faith would not be required for deciding on the Complaint (because the rejection of the second condition already means that the Complaint should be denied), the Panel finds it necessary in this case to address it in view of the arguments raised by the parties and because of the claim of RDNH which has been raised by Respondent (and which shall be addressed under section D below).
Complainant invoked the passive test doctrine. In the Panel’s view, the mere recitation of the Telstra case without additional elements is not enough to prove bad faith.
In addition, Complainant contends that Respondent registered the disputed domain name for the purpose of selling it for a price that clearly exceeds the costs paid in connection with its registration. In support of this contention, Complainant indicates that: (i) Respondent ended negotiations because he had not received an offer and accused Complainant of not dealing in good faith; (ii) Respondent also offered to Complainant the domain name <alessandro.ws> for EUR 25,000; and (iii) finally Respondent provided a list of domain names that were sold for multi-million dollar amounts.
The Panel does not accept this allegation because the offer to purchase the disputed domain name (and the ensuing negotiation) was initiated by Complainant (See Promedon S.A. v. Andres Weber, WIPO Case No. D2006-1575; Angélica Fuentes Téllez v. Angelica Jeannette Fuentes Chandía, WIPO Case No. D2014-1989). Respondent did not contact Complainant to offer the disputed domain name for sale or rent. Nor did Respondent offer the disputed domain name for sale to the public. In fact, Respondent expressed several times that the disputed domain name was not for sale.
The fact that the Respondent offer to sale the domain name <alessandro.ws> is not in itself evidence of bad faith registration or use of the disputed domain name because this case is about the domain name <alessandro.com> and not the domain name <alessandro.ws>.
According to the Panel, there is no evidence in the record showing that Respondent knew of Complainant’s trademark when he registered the disputed domain name, especially, when “Alessandro” is Respondent first name and the disputed domain name has been registered for nearly 15 years and used for a brief period to post personal photos. As stated in the previous Section, Respondent, Alessandro Gualandi has a right or legitimate interest to have a domain name with his first name.
Complainant seems to admit this when in its Complaints asserts “… which leads to the conclusion that the domain name <alessandro.com> is being registered in bad faith, at the latest, as soon as Respondent became aware of Complainant, its business, its trademarks and its several attempts to reach an amicable settlement by purchasing the domain name”. If this were the case, a registration in good faith by Respondent cannot turn into a bad faith registration later due to a late knowledge of the Complainant.
In the Complainant’s reply to Panel Order No. 1, Complainant argued that the 39 domain names that Respondent has registered are additional evidence of bad faith. In particular Complainant states that Respondent has registered three (3) domain names with the term “Alessandro” (namely <alesandro.com>, <alessandro.ws> and <alessandro.nyc>). According to Complainant, the fact that Respondent now owns three (3) respective domain names indicates that he has registered them for the purpose of selling them.
The Panel visited the website using the Wayback Machine and was able to verify that Respondent offered for sale several domain names. The Panel notes that all of those domain names seem to be generic terms or dictionary terms in Italian language. Thus it is not possible to conclude that Respondent was acting in bad faith because Respondent was only offering for sale dictionary terms domain name.
In addition those domain names are not the disputed domain name, and Respondent clearly indicated that it was not on sale. Finally the fact that Respondent has registered two other domain names with the term “alessandro” is not indicative that the disputed domain name <alessandro.com> was registered in bad faith. First, as already stated, the disputed domain name was registered in the 1997 (according to Respondent) or in the year 1998 (according to the WhoIs record). There is no evidence on the record that at the time of registering the disputed domain name Respondent knew of Complainant’s trademarks.
The registration of the two other domain names took place later on, but even if at that time Respondent was aware of Complainant trademarks due to the interchange of emails, such new registrations (with knowledge of Complainant) cannot “contaminate” the initial registration of the disputed domain name.
The Panel concludes from the record as a whole that Respondent has not acted in bad faith when he registered and used the disputed domain name.
D. Reverse Domain Name Hijacking
Respondent has requested a finding of Reverse Domain Name Hijacking (“RDNH”), which is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rules, paragraph 1.
A finding of RDNH is appropriate “if Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use and nevertheless brought the Complaint in bad faith.” Futureworld Consultancy (pty) Ltd. v. Online Advice, WIPO Case No. D2003-0297; AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.L. v. Enspire Technologies (PVT) Ltd., WIPO Case No. D2008-1471.
Complainant may plausibly have overestimated the strength of its case after Respondent replied to one of his emails and offered for sale another domain name containing Complainant’s trademark (<alessandro.ws>) for EUR 25, 000 and also mentioned a list of domain names sold for high amounts in the past. In addition there was not on the record evidence of the name of Respondent until the Panel Order No. 1 was fulfilled. Accordingly, the Panel does not believe that Complainant acted in bad faith in an attempt of reverse domain name hijacking when it brought the Complaint against Respondent.
Respondent’s request for a finding of Reverse Domain Name Hijacking is also denied.
7. Decision
For the foregoing reasons, the Complaint is denied.
Pablo A. Palazzi
Sole Panelist
Date: February 16, 2015
1 “A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past…”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 4.5 and the following cases: Lan Airlines S.A. v. Joan F. Casas, Ks@s Intl, WIPO Case No. D2010-0008; La Francaise des Jeux v. Domain Drop S.A., WIPO Case No. D2007-1157 and G.U.C. S.A. v. Roberto Petralia, WIPO Case No. D2010-1865.
2 See Wayback Machine links for:
Year 2001: https://web.archive.org/web/20001027205057/http://alessandro.com/gallery1.html,
Year 2002: https://web.archive.org/web/20010202072500/http://alessandro.com/gallery1.html;
Year 2003: https://web.archive.org/web/20020609183742/http://alessandro.com/gallery1.html;
3 https://web.archive.org/web/20061224195413/http://www.alessandro.com/