Arrigo Enterprises, Inc. lost it bid to grab the domain name Arrigo.com away from PortMedia Domains who was represented by Ari Goldberger of ESQwire.com.
The term Arrigo is a common Italian surname.
The domain name was owned by the domain holder for 12 years and the Complainants trademark was first registered in 2012.
The panel however declined to make a finding of Reverse Domain Name Hijacking.
Here are the relevant facts and findings by the three member panel:
Complainant has rights to the ARRIGO mark by way of registration of the mark with the USPTO (Reg. No. 4,271,171, filed April 15, 2012, registered on Jan. 8, 2013), in association with automobile dealerships, automobile financing, repair or maintenance of automobiles, and the leasing of automobiles.
Complainant further argues that it has used the mark in commerce since December 1989.
Complainant asserts that the mark is used specifically in furtherance of Complainant’s automobile dealership in Florida.
Complainant avers that its dealership is one of the largest Chrysler/Jeep/Dodge dealerships in the United States.
However, Complainant has not provided evidence to suggest the mark would be known beyond Southern Florida.
Accordingly, the Panel does not consider this account to provide a sufficient basis for secondary meaning in the ARRIGO mark and finds, for the purposes of Policy ¶ 4(a)(i) and the present case, that Complainant’s rights in the mark does not date back to at least December 31, 1989.
“Complainant asserts that Respondent has used the domain name for almost twelve years as merely a landing page where Internet users are solicited through an array of random hyperlinks.
“The Panel notes that Complainant does not provide evidence of the content of the disputed domain name, but the Response includes an image purporting to show that the domain name is used to host hyperlinks.
“The Respondent admits to pay-per-click advertising revenues. Respondent argues that its rights are in fact bolstered by the fact that Respondent receives such revenues. Respondent claims that its advertising services are bona fide, and Respondent is not alone in using hyperlink advertisements on its domain name content pages.”
“The Panel agrees that the hosting of a hyperlink website can, under the right set of circumstances, constitute a Policy ¶ 4(a)(i) bona fide offering of goods and services.”
“Complainant argues that Respondent has made a thinly veiled attempt to sell this domain name.
Complainant contends that the domain name’s content page explicitly tells the Internet user: “To purchase this domain name, click here.”
“Complainant believes that the fact that Respondent is willing to give up ownership to any buyer is evidence that Respondent lacks rights and legitimate interests.
“Respondent states that its offer to sell this specific common/generic term domain name is in itself a bona fide offering of goods. Respondent insists that there is no evidence that Respondent ever intended to register and offer the domain name for sale specifically to extort Complainant and its ARRIGO mark.
“Respondent notes that it owns thousands of generic-term and other brand-potential domain names. Respondent claims that its rights and legitimate interests rest in the fact that it holds onto “brandable” domain names, such as the domain name, because of the value on resale. Respondent states that it is careful to choose possibly brandable names, but makes sure that these names have no existing trademark registrations. Respondent avows that it in no way registered this domain name in an attempt to target Complainant and its ARRIGO mark.
“Previous panels have found that the holding of a domain name for resale can in some circumstances constitute a Policy ¶ 4(c)(i) bona fide offering of goods and services.
“The Panel agrees that Respondent’s Policy ¶ 4(a)(ii) rights and legitimate interests rests on the fact that it registers and sells generic domain names—an arrangement practiced by many business entities.
“The Panel accordingly finds that under the present circumstances, Respondent’s offer to sell this specific common/generic term domain name is in itself a bona fide offering of goods.
“Respondent further argues that Complainant’s mark is not exclusively used in Complainant’s business. Respondent claims that the ARRIGO mark merely embodies a common Italian surname. Respondent states that its decision to register this domain name reflects Respondent’s interest in obtaining generic terms, but not because these generic terms are a particular party’s intellectual property.
“The Panel agrees that when the term “arrigo” has been long used as a mere surname of Italians, the registration of a domain name including that term gives Respondent rights and legitimate interests in the generic value of embodying a generic term in the domain name. See
“The Panel holds that Complainant has failed to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds to the contrary, that Respondent does have rights and legitimate interests in the disputed domain name under policy ¶ 4(a)(ii).”
Because Respondent has rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii), it is axiomatic that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that while the doctrine of laches does not apply as a defense, and correspondingly chooses to disregard Respondent’s assertions, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem. “
As a matter of course, the Panel chooses to disregard Respondent’s assertions of a defense based on laches.
On the issue of Reverse Domain Name Hijacking, “even though the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. In order for reverse domain hijacking to exist, there must be a showing of bad faith on the part of the Complainant.”
“There is no evidence of bad faith on the part of the Claimant.”