Jan '24

WIPO panel lets bakery off the hook – Domain Name Wire

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Panel says Complainant, represented by a 100+-year-old IP law firm, has “simply not understood the Policy.” UDRP in red on a cream background
Some UDRP filings have no chance of succeeding.
Consider the case (pdf) that Roberto Industria Alimentare S.r.l. filed against the domain name roberto.com. The Italian baked goods company filed the dispute against Reflex Publishing, which acquired the domain name over two decades ago.
You don’t have to be Italian to know that Roberto is a very common name. In fact, it’s one of the top 20 most common names in Italy.
Yet Roberto Industria Alimentare S.r.l. argued in its case that “ROBERTO” is not a common or descriptive term but is obviously a trade mark in which the Complainant has rights.”
Um, OK.
The World Intellectual Property Organization rightly found in Reflex Publishing’s favor. It noted that Reflex is a company in Florida and probably wasn’t aware of the Complainant. And even if it was aware of the Complainant, “Having regard to the fact of its varied potential uses and the Respondent’s intended use non-infringing of the disputed domain name, registration of it by the Respondent, would not have been abusive.”
The three-person panel then listed several reasons why this appears to be a case of reverse domain name hijacking:
Got it, so reverse domain name hijacking.
Except the panel let the Complainant off the hook, saying it probably just didn’t know what it was doing by filing the complaint:
In these proceedings, some of more egregious features associated with a finding of RDNH, such as manifestly untrue allegations against a respondent and attempts to mislead the panel, are absent. The overall impression is that the Complainant has simply not understood the Policy and the burden it has to meet. For this reason, by a very narrow balance, the Panel declines to make a finding of RDNH.
Wouldn’t you say that not mentioning that Roberto is a common first name was an attempt to mislead the panel?
And get this. The Complainant’s representative was Società Italiana Brevetti S.p.A. Go to its website, and you’ll see that it prominently displays “Intellectual Property since 1882” in Italian at the very top.
So it just didn’t know what it was doing? Hmm.
John Berryhill represented Reflex Publishing.
Categories: Policy & Law
Andrew Allemann has been registering domains for over 25 years and publishing Domain Name Wire since 2005. He has been quoted about his expertise in domain names by The Wall Street Journal, New York Times, and NPR. Connect with Andrew: LinkedInTwitter/XFacebook
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John Berryhill says

When was the last time a cybersquatter was relieved of a finding of bad faith domain registration because they had “simply not understood the Policy”. Lawyers have an affirmative duty to know WTF they are doing. Inflicting their incompetence on others to their detriment is not acting in good faith.
Andrew Allemann says

I read the ICA UDRP digest this morning and it points out this law firm has filled 133 UDRP cases, making this decision even crazier.
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Joker has been buying and selling domains since the late 90's. He has worked with many portfolios and investors over the past decade as well.

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