Company claims women has no rights to her first name.
Let’s say your first name is, I don’t know…Andrew. And you register Andrew.com.
There are of course companies that use the name “Andrew” as well. Could they claim that you have no rights to the term “Andrew” and be able to get that domain name through UDRP? Of course not.
But that’s what Arnoldo Mondadori Editore S.p.A., which published an Italian women’s magazine Grazia, tried to do to a freelance writer and cook living in Portland. Grazia Solazzi registered the domain name Grazia.us a couple years ago, only to be hit with the UDRP this year.
The complainant’s arguments might just be the most wrong-headed I’ve seen published in a UDRP decision. Check this out:
Respondent has not been commonly known by the domain name. The mere fact that GRAZIA corresponds to her first name does not imply in any manner acquired or exclusive rights or legitimate interest in it.
Hey, they’re right. She doesn’t have exclusive rights in her name. But she certainly has a legitimate interest!
Remarkably, panelist Daniel B. Banks declined to find reverse domain name hijacking against the complainant because the complainant has a trademark for Grazia. He cited two cases to back up this decision. The first one is a case where the complainant won the case, so obviously that wasn’t reverse domain name hijacking. In the second case, the panelist declined to find RDNH because “The Panel believes there is a real dispute between the parties” that went beyond the UDRP. Neither of those circumstances is apparent here. Makes me wonder if the panelist even read those other decisions he referred to.
Acro says
Maybe if she didn’t park the domain she’d win that element of “reverse hijacking” 😉 All I see on grazia.us is ads about magazines and publications. Very understandable for the publisher to file a UDRP under the circumstances.
Andrew Allemann says
@ Acro – she didn’t park it. Her registrar did. I cannot expect the average domain registrant to understand that their registrar will put ads on their “coming soon” page.
Brunson says
What interest would a “Italian women’s magazine” have in a .US domain? From what I can tell they don’t (currently) publish a US version of their mag.
Acro says
Andrew – DomainTools shows her personal email account is associated with 29 domains. That’s hardly an indication of an “average domain registrant” 😉 By the time I had 3 domains I wasn’t one 😀
Andrew Allemann says
Acro – it’s certainly arguable. But if she meant to capitalize on the trademark and was any type of domain investor, she would have parked it herself.
Acro says
My point is, a personal name is not something you park but rather, use. The argument is not whether she tried to profit from parking it (the revenue would have been in the $x range) but whether by doing so she allowed the magazine publishers to file a UDRP on the ground of brand confusion. However, it should be noted that the publisher doesn’t own any major TLD either. The .net is an Italian electronic magazine unrelated to the tm holder and the .biz is parked as well. Finally, the .it isn’t owned by the Italian publisher as well. Agreeably, a very weak attempt at getting the .us but they seemed to have tried their best at it.
Andrew Allemann says
@ Acro – I’ll definitely give them an ‘A’ for effort!
Andrew Allemann says
The respondent brought up the .us presence issue. I wonder if they plan to expand to the U.S.?
Duane says
Something else to consider!
To own a .US domain you have to be a U.S. citizen. If the new owner is italien, Grazzia could come back and grab the name.
Acro says
Duane – that’s incorrect. Only US presence is required, either as a physical person or as a company entity.
Duane says
Who can register a .US domain name?
Any U.S. citizen or resident, as well as any business or organization, including federal, state, and local government with a bona fide presence in the United States can register a .US domain name.
One of the following eligibility requirements must be met:
*
A natural person (i) who is a citizen or permanent resident of the United States of America or any of its possessions or territories or (ii) whose primary place of domicile is in the United States of America or any of its possessions, or
*
Any entity or organization that is incorporated within one of the fifty (50) U.S. states, the District of Columbia, or any of the United States possessions or territories or (ii) organized or otherwise constituted under the laws of a state of the United States of America, the District of Columbia, or any of its possessions or territories, or
*
An entity or organization (including federal, state, or local government of the United States, or a political subdivision thereof) that has a bona fide presence in the United States. See Section B.3.1 of the Neustar proposal to the Department of Commerce for details concerning what constitutes a “bona fide presence.“
Andrew Allemann says
Duane, that confirms what Acro said. You need to be a citizen or a company entity in the U.S.
Henry says
I own my last name since 2000 and I sometimes have it as a landing page or right now it is forwarded, this does not mean anything at all! I am not going to sell it and for right now I am not going to develop it. I am also a domainer which own over 1,000 domains.
This does not mean anything. Just because you are a domainer does not mean that every domain you own is for sale! I own maybe 4 to 5 domains that I would not sell.
Stephen Douglas says
Acro’s argument is you better start building out a domain you buy right away, or someone else is going to come try to grab it from you. If they do, they have the advantage over you because that empty lot you own has weeds on it, instead of a nice parking lot or apartment building.
If Acro is right, I think 99% of the largest domain holders better get to developing! And quick!
Hawaiian Shirt Guy says
Ohferpetesake.
One can’t have one’s own name without staring down the barrel of a lawyer?
Hope she counter-sues…
pacelegal says
In what country wouldn’t you say a person isn’t known by a name they are known by.
It is asinine. Exactly what name would they be known by if not known by their legal name (especially where they havn’t adopted a nickname or stagename like Sting).
Her claim is much stronger than Sting.
On the evidence the complainant didn’t even have the US ‘presence required’ by the usTLD registrant rules.
byDomainers says
This is a new type of discrimination against women!
Mike says
@pacelegal, quite asinine. i love this part:
“The mere fact that GRAZIA corresponds to her first name…”
so their argument is essentially that “Grazia is not Grazia, Grazia merely *corresponds* to Grazia”
classic legal gibberish. its a shame this poor women actually had to respond to this and have her productive time wasted.
Andrew Allemann says
@Mike – and she had to pay a lawyer.
Mike says
double bogey
Juan says
I think Grazia have right for Grazia.us. It is her name. Maybe Grazia do not have trademark but that’s her name.