Francois Carrillo Wins UDRP On ZUT.com

Francois Carrillo just defended a UDRP brought by Interbasic Holding S.A on the domain name ZUT.com

Francois was represented by Zak Muscovitch of The Muscovitch Law Firm, Canada.

Here are the relevant facts and findings by the three member panel:

“The Complainant is the owner of the following trademarks:

(i)          ZUT, International Trade Mark No. 701302 (registered October 20, 1998);

(ii)        ZUT, U.S. Trade Mark No. 2881956 (filed October 30, 1999 and registered September 7, 2004);  and

(iii)       ZUT, Community Trade Mark No. 5951843 (registered May 21, 2007) (together, the “Trade Marks”).

“The Respondent is Francois Carrillo, a French citizen residing in Juvignac, France.  The Respondent is the administrator of the business, Cybertonic, which was registered with the Tribunal De Commerce De Montpellier on August 1, 2004.”

“The Respondent purchased the Disputed Domain Name at a Sedo auction in 2008 for EUR 8,600.”

“There is no evidence that the generic Disputed Domain Name was registered for the purpose of profiting from the Complainant’s trade mark rights, therefore, there can be no finding of bad faith registration or use (see e.g., Ultrafem, Inc. v. Warren R. Royal, NAF Claim No. FA097682).  On this point, the Respondent submits the following:

(i)          it was not aware of the Complainant’s trade mark rights until it received notice of the Dispute;

(ii)        it never approached the Complainant to sell the Disputed Domain Name;

(iii)       it has not interfered with the Complainant’s business;  and

(iv)       it never attempted to intentionally deprive the Complainant of the Disputed Domain Name, the Complainant could have purchased the Disputed Domain Name itself at the auction, or could have purchased it at any time since its original creation date.””

“”The Respondent submits that Mr. Gallinari (who is not counsel, but a domain name specialist) approached the Respondent and made offers to purchase the Disputed Domain Name without any solicitation from the Respondent.  ”

“”He did not identify himself as being associated with the Complainant and did not assert any trade mark rights.  The Respondent replied to the first offer with “Zut!”, to express his displeasure at the offer.  The Respondent thought he was replying to an automated or general offer and not a genuine offer to purchase the Disputed Domain Name for market value.””

“”The Complainant has not provided any facts to support its allegation of bad faith registration. ”

“Accordingly there is no basis for a finding of bad faith registration ”

“The Complainant’s submissions on this element can be summarized as follows:  The Complainant owns a trade mark registration for “ZUT” and the Respondent, who is not commonly known by that name, is using the Disputed Domain Name without license from the Complainant.”

“This barely establishes a prima facie case.  ”

“The Respondent has provided substantial submissions to rebut the Complainant’s prima facie case, and in the opinion of the Panel, succeeds in doing so for the reasons set out below.”

“The Disputed Domain Name consists of a common and widely used dictionary word in the French language.”

“The mere registration of a domain name that is comprised of a common dictionary word may not of itself confer rights or legitimate interests in the domain name.”

“Generally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such a word) ”

“Both the Respondent and the Complainant have referred to the fact that the Disputed Domain Name leads to a website which advertises the Disputed Domain Name for sale by auction.  The Panel has verified this use through an examination of the relevant website.”

“The sale of domain names can be legitimate interest if a respondent was not aware of a complainant’s trade mark rights”

The Complainant has provided no evidence that the Respondent was aware of its trade mark rights at the time it registered the Disputed Domain Name.

The Respondent is a native French speaker, and resides in France.

“Zut” is a common French word.

“The Complainant’s Zut brand of perfume was launched in 1948, discontinued in 1954 and re-launched in 1998.  Although well-known in the 1940s, the brand is not so well known today.”

“There is no evidence that the Respondent was otherwise targeting the Complainant or its Trade Marks.  This conclusion is supported by the fact that part of the Respondent’s business is to register dictionary words in order to take advantage of the commercial value of such words as domain names, purchased the Disputed Domain Name at an auction for a substantial sum of money, and owns many domain names.”

“On the facts of this case, the Panel concludes that the Respondent purchased the Disputed Domain Name not for its association with the Complainant’s trade mark, but because of its dictionary meaning.  The Respondent’s subsequent use and conduct is consistent with that view.”

“For the Panel to decide in favour of the Complainant on this element, the Panel would in effect be deciding that a domain name owner who acquires a dictionary term domain name in good faith, and then warehouses the domain name, does not have rights or legitimate interests in the domain name.  This Panel is not prepared to reach such a broad conclusion.”

“The Respondent’s brief use of the Disputed Domain Name to host a “hangman” type game also evidences bona fide use, but the Panel does not need to rely upon such use for the purposes of this element.”

“In light of the above, the Complainant has failed to show that the Respondent lacks a legitimate interest.  The second element of the Policy is not satisfied.”

“There is no evidence of any bad faith registration or use of the Disputed Domain Name by the Respondent.  Specifically, the Panel concludes that:

(i)          the Respondent was unaware of the Complainant’s trade mark rights;

(ii)        the Respondent has never approached the Complainant to sell the Disputed Domain Name;

(iii)       the website which the Disputed Domain name redirects to does not sell goods/services which compete with the goods sold under the Trade Marks;

(iv)       the website which the Disputed Domain name redirects is not a pay-per-click website;  and

(v)         the Complainant provided no evidence that the public has been confused or misled by Respondent’s use of the Disputed Domain Name.”

“In light of the above, the Complainant has failed to show that the Disputed Domain Name was registered and is being used in bad faith.  The third element of the Policy is not satisfied.”

The panel denied the domain holders request for Reverse Domain Name Hijacking (RDNH) saying that:

The Rules define RDNH as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.  The onus of proving this is generally on the Respondent.”

“This is not an appropriate case for such a declaration.  Although the Complainant provides little evidentiary support for its allegations, it appears that the Complainant genuinely believes that the Respondent is attempting to profit from a bad faith registration of the Disputed Domain Name.  The Panel notes that the fact the Disputed Domain Name was being offered at such a high price may have led the Complainant to believe that this was an offer to sell in excess of out-of-pocket expenses.”

 

Comments

  1. Homero A. Gonzalez says

    Congratulations to Francois Carrillo! From now on, I will respond to any lowball offer on any of my domains with “Zut!” Lol!!

  2. says

    Finally, a UDRP decidedly fairly. But should our industry rely on hit and miss UDRP panelists? Shouldn’t it be an exact science that if a company neglects to register alphabets, they forever forego any claims to them? ZUT.com is totally different from ZUT alone, because the former has a .com in it. Just as ZUT.DE is different from ZUT.US, or ZUT.TV! For example, now that this UDRP panel has awarded ZUT.com to Francois, does that entitle Francois to ZUT.DE? Of course not! Do you know why? Those two domains are different. These bodies need to get it together, like this panel did.

  3. Francois says

    WOO HOO! CHAMPAGNE, WE WON!!!
    THANKS to Zak Muscovitch for having successfully defended MY DOMAIN.
    Now I like it two times more!!!

    Thanks Michael for breaking the news.

    Just for info they also fired an UDRP on the descriptive domain Shocking.com, so now you see the way they do business.
    Interbasic Holding S.A of Luxembourg is ternishing the reputation of Elsa Schiaparelli brand using such horrible practices.

    On my hand I am seriously thinking on how domain owners could unite to punish those domain hijackers.
    Their behavior is really a shame and they need to be publicly exposed so everyone know who they are and the way they act.

  4. BrianWick says

    Here is the Panel:

    Angelini, Fabio
    Cabell, Diane
    Swinson, John (Presiding)

    Realists – unlike fine folks like Richard Page – who continue to dig themselvces deeper by not respecting the US Constitution 14th Amendment – In the end it will haunt them and their careers

  5. Michael H. Berkens says

    Francois

    My honor and hearty congratulations.

    I have seen enough UDRP go horribly wrong, so I’m really happy for you and big shout out to Zak.

  6. says

    Zak and Zut went up a hill…. seriously though my first reaction was Zak who? Then I looked him up. Pretty impressive record. I wonder how Francois found him. A recommendation? Did the lawyer read about this and reach out to Francois. It certainly gets his name in lights. Who knew:

    • Zak Muscovitch Closes US $5,000,000.00 Sale of Major Domain Name Portfolio to Major US Domain Name Company. (October, 2006 


    • Zak Muscovitch Closes US $650,000.00 Purchase of Premium dot-com Domain Name and With Online Community. (October, 2006)
    • 

    • Zak Muscovitch Closes Ground-Breaking $2,500,000.00 Sale of Premium Generic .CA Domain Name Portfolio to Yellow Pages Group on Behalf of Montreal-Based, Emall.ca Inc. (May, 2006)

    Zak Muscovitch Closes 6-figure multi-year Domain Name Lease Agreement with Revenue Sharing for Major Premium Generic Domain Name Portfolio Owner (January, 2007)

    • Zak Muscovitch, domain name attorney, closes US $250,000 premium generic domain name purchase (April, 2007)
    Zak Muscovitch, domain name lawyer, closes US $300,000 premium generic domain name sale (June 2007)

    • Domain Name Lawyer Zak Muscovitch closes $1,000,000 domain name portfolio sale – March, 2009


    • Zak Muscovitch closes single word descriptive domain name sale for US $750,000.00 – February, 2009

    • UDRP Lawyer Zak Muscovitch Beats Google in Domain Name Dispute Over Groovle.com Read the decision. (December, 2009) – Read the Press Release here…

  7. Francois says

    @Adam
    The cost to defend an UDRP is $1K per panelist + legal fees depend on each lawyer (in average they charge $3K to $7K).

    @All
    Thanks for the congrats and I am very happy the panelists taken a fair decision.

    @Owen
    Zak is part from a long time of the most successful IT attorneys. He’s also one of the very few attorneys listed in the Domaining.com directory for his support to the domain industry, he is ultra reactive and have very solid business skills, he was the first to suggest me to defend my domain ZUT.com and I immediately accepted. The result is here, thanks again Zak!

  8. says

    Congrats Francois!

    I love it when any Domainer wins any UDRP case.
    (except ones where the owner has blatantly infringed tms etc)
    Clearly Francis didn’t with this one and thankfully he won.

    UDRP is an outrageous lottery and a defendant having to pay his/her own costs even when he/she is the victor is a travesty.

    Every defendants UDRP success is a victory for the Industry as it refutes yet another spurious attempt at theft.

  9. says

    Congratulations Francois and Zak.

    Francois, as you said, “I am seriously thinking on how domain owners could unite to punish those domain hijackers. Their behavior is really a shame and they need to be publicly exposed so everyone know who they are and the way they act.”

    I second that. Any one have any ideas?

  10. Bram says

    Congrats Francois! Seemed like a slam dunk case (in favor of Francois) to me but you never know with UDRP’s :)

    I’m glad the panel made the correct decision.

    @ Francois: Are the panel fees of respondent and complainant the same? (each party pays 50-50?)

  11. says

    Hey Francois,

    Heartiest Congrats,
    I like the way you are doing thing in this small community & are ready to help in the cause as you had been a nice person to deal.

    If i remeber right sometime back i had read the first article about this URDP case & had read some comments regarding diffenet loaction of hosting / registrar / owner . Does it made any affect to your case??

    Good luck to you.

  12. says

    And ZUT’s about it! justice served ;)

    It’s good to see a UDRP panel acknowledge the domain investors business model, congrats to Francois and hoping that you will pursue legal compensation – no maybe punitive damages and really stick it up’em, as the domain king likes to say! ;)

  13. says

    A breath of fresh air indeed! At last, a high profile attorney has come to our rescue. Did he actually overhear my suggestion on this platform a few days ago? Anyway, this is great stuff but… this is only one battle won… the war is still raging! Kudos to the panelists. Wonder if they care for a bottle of beer each!

  14. CB says

    Congratulations, Francois! :)

    The industry really needs a case they can point to where the respondent has won and then subsequently sued the claimant for damages and costs. I recall someone (it was possibly Chad Wright) successfully sued a claimant for six-figure damages.

  15. Francois says

    @Bram
    No, payment it’s not shared. It’s the one who want more panelists who have to pay them. With just one panelist it’s a true lottery.

    @Stephen Douglas
    Hi my friend! Just for info, this person who signs with my first name Francois and is asking who is Stephen Douglas is NOT me Francois Carrillo!!!

  16. BrianWick says

    Ira,
    When I saw this one – this first thing I thought of was you – not the Complainant – because I have never heard of them. In fact a lot of people of never heard of them – and going after a 3-letter domain requires a lot more noteworthyness than the Complainant – which is likely why the Panel came to their conclusion.
    Bri

  17. BrianWick says

    CB -
    The case involving Hayward.com was settled of of court with a mutually benefitial NDA as I was advised by Chad Wright over the phone more than a year ago. So “sued the claimant for damages and costs” is likely not an accurate statement. I know attorney Brett Lewis, who chimes in on thedomains from time to time, handled it.

    Furthermore it would seem a bit odd that a UDRP Complainant wins yet when they are taken to a US Count they could be liable for both party’s legal fees plus damages – even in challenging the validity of the TM itself.

  18. CB says

    @BrianWick – yes, it’s possible that it wasn’t Hayward.com or even Chad. Someone definitely had a successful damages case and it was published on their website as a warning.

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