WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Colussi S.p.A. v. Andrea Colussi
Case No. D2017-1293
1. The Parties
The Complainant is Colussi S.p.A. of Milan, Italy, represented by CREA Avvocati Associati, Italy.
The Respondent is Andrea Colussi of Milan, Italy, represented BSVA Studio Legale Associato, Italy.
2. The Domain Name and Registrar
The disputed domain name <colussi.com> is registered with EuroDNS S.A. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2017. On July 12, 2017, the Respondent filed a request for an additional four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time. The Response was filed with the Center on August 2, 2017.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on August 10, 2017. 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.
Having noted that the Complainant claims that between the years 1999 and 2000 in a side Intellectual Property rights agreement the Respondent waived all his Intellectual Property (“IP”) rights to the commercial name “Colussi” and that the Respondent, on the contrary, denies that the disputed domain name <colussi.com> was part of the agreement of October 27, 1999 and/or of a side agreement, the Panel, in order to clarify this matter, issued an Administrative Panel Procedural Order (the “Procedural Order”) on September 4, 2017.
The Procedural Order requested the Complainant to submit the side Intellectual Property rights agreement to the Center no later than September 6, 2017, and gave the Respondent the opportunity to comment on the Complainant’s submission, by September 8, 2017. The Complainant replied to the Procedural Order on September 6, 2017 without providing the side IP agreement, and the Respondent replied on September 7, 2017.
4. Factual Background
The Complainant, Colussi S.p.A., is a renowned Italian company that has been active since 1911 in the production and sale of high quality bakery products, like biscuits, snacks, breads and rusks. The COLUSSI trademark is the institutional brand of Colussi S.p.A. and comprises its company name and business designation, and it is used on many domain names owned and managed by Colussi S.p.A.
The Complainant has proven to be the owner of the COLUSSI trademark which enjoys protection through several registrations worldwide.
The Complainant is, inter alia, the owner of:
International Trademark no. 544753, COLUSSI, filed on October 17, 1989;
Italian trademark no. 782114, COLUSSI, filed on May 22, 1997;
Italian trademark no. 1595572, BISCOTTI PANETTONI COLUSSI MILANO, filed on September 2, 1964;
European trademark, no. 1009430, COLUSSI MILANO, filed on December 7, 1998.
The Respondent is the cousin of the current Chairman and a shareholder of Colussi S.p.A., and nephew of Mr. Angelo Colussi, the founder of Colussi S.p.A.
The Respondent has provided his personal identification data.
The disputed domain name <colussi.com> was registered on December 14, 1995.
The Complainant’s International trademark and the Italian trademark (no. 1595572) registrations predate the registration of the disputed domain name.
5. Parties’ Contentions
The Complainant claims that the COLUSSI trademark is a renowned trademark with strong reputation, that the disputed domain name is confusingly similar to the Complainant’s renowned COLUSSI registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
Regarding the Respondent’s rights or legitimate interests in respect of the disputed domain name, the Complainant claims that the Respondent has no rights or legitimate interest in the disputed domain name, for the following reasons:
1) On October 27, 1999, the company Biscotti Nord Italia S.p.A. (of which the Respondent was President of the Board of Directors) transferred its business and all IP rights to Biscotti Panettoni Colussi Milano S.p.A. Between 1999 and 2000, the Respondent left the Colussi Group and waived all its rights on the commercial name “Colussi”;
2) The disputed domain name remained unused for over 22 years, until a few weeks ago when it began to be used for a website that has nothing to do with the name “Colussi”; the use of the name “Colussi” as a Second Level Domain is not justified by a need for description of the Respondent;
3) The aim of the Respondent is to obtain thousands upon thousands of unwitting visits to its website.
Whereas regarding the registration and use in bad faith, the Complainant claims that:
a) The Respondent registered the disputed domain name with the sole purpose of selling it in the future for a very high sum;
b) The Respondent’s bad faith is to be found in the non-use of the disputed domain name <colussi.com> for over 22 years; and
c) The disputed domain name is identical to the well-known COLUSSI trademark, and therefore the simple holding of the disputed domain name infringes the rights of the Complainant and would never be legitimate.
The Respondent preliminarily affirms that in the event this dispute is brought before the Italian courts (which shall have jurisdiction), it will be dismissed under the statute of limitations specified in Articles 2934 and 2946 of the Italian Civil Code, which provide for a general ten-year period of prescription. Consequently, the Respondent requests that the Panel order, without the need for any examination of the dispute on the merits, that the Complaint be rejected and that this administrative proceeding be closed.
The Respondent, subordinately, refutes all the allegations made by the Complainant, and specifically claims that:
1. The Respondent has retained all rights and title in respect of the disputed domain name <colussi.com> since its registration (in 1995);
2. The Respondent’s family name, “Colussi”, is identical to the disputed domain name <colussi.com>;
3. The disputed domain name <colussi.com> was not part of the agreement of October 27, 1999, concerning the transfer of the “Biscotti Nord Italia” bakery business to “Biscotti Panettoni Colussi Milano”;
4. The Complainant’s statement that “every step of the merger [of “Biscotti Nord Italia” and “Biscotti Panettoni Colussi Milano” into “Colussi Perugia”] obviously has a side Intellectual Property rights agreement concerning the trademark, domain names and other IP rights” is untrue, as to the domain names;
5. The Respondent was personally alien to “every step of the great merger[of ‘Biscotti Nord ltalia’ and ‘Biscotti Panettoni Colussi Milano’ into ‘Colussi Perugia’]” that occurred after October 27, 1999 and, therefore,
6. The Complainant cannot claim, vis à vis the Respondent, any rights in relation to the disputed domain name <colussi.com>;
7. The Respondent did not sell or contribute the disputed domain name <colussi.com> to “Biscotti Nord Italia” prior to, on, or after October 27, 1999. Nor did the Respondent commit itself, prior to, on, or after October 27, 1999, to transferring the disputed domain name <colussi.com> to “Biscotti Nord Italia”, to “Biscotti Panettoni Colussi Milano”, to “Colussi Perugia”, or to any other party;
8. The Respondent has never offered the disputed domain name <colussi.com> for sale, and the Complainant has never asked to buy it from the Respondent;
9. The Respondent states that he has legitimately used the disputed domain name as platform for his email accounts, and that he intends to use the same for a website promoting the management and the offering to the public of short-term rentals of a number of properties in Venice owned by the Respondent and his sister.
Finally, the Respondent asks the Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”).
6. Discussion and Findings
6.1 Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is English. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. Both the Complainant and the Respondent filed their pleadings in English, except for the supporting documents, which were filed for the most part in Italian. Neither of the parties has asked for them to be accepted in Italian, nor has either party given any reason why they should be accepted in Italian.
However, the Panel notes that:
(a) The Center has appointed an Italian Panelist who is fluent in both languages, i.e. English and Italian;
(b) Both Parties are Italian; and
(c) The Respondent has not objected to the issue of the language of the proceeding.
Considering the above circumstances, the Panel finds that accepting documents filed in Italian is fair to both parties and is not prejudicial to either of the parties in their ability to articulate the arguments for this case.
The Panel has also taken into consideration the fact that requiring the supporting documents to be re-filed in English would in the circumstances of this case cause an unnecessary cost to the parties. Moreover, the proceeding would be unnecessarily delayed.
Having considered all the above matters, the Panel determines under paragraph 11 of the Rules that (i) it will accept the Complaint, the Response and all supporting materials as filed, i.e., in English and in Italian; and that (ii) English will be the language of the proceeding and the decision will be rendered in English.
6.2 Procedural Matter – Prescription of the Complainant’s Rights
The Respondent has affirmed that in the event the present dispute is brought before the Italian courts it will be dismissed under the statute of limitations specified in Articles 2934 and 2946 of the Italian Civil Code, which provide for a general ten-year period of prescription. Consequently, the Respondent has requested that the Panel order, without the need for any examination of the dispute on the merits, that the Complaint be rejected and that this administrative proceeding be closed.
The Panel notes that the Rules do not provide any specific prescription clause, and that as explained in section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), UDRP panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Panels have also noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief.
UDRP panels have therefore declined to specifically adopt concepts such as laches or its equivalent (e.g. prescription) in UDRP cases.
Therefore, while the Panel does note a substantial amount of time has passed before the filing of this Complaint, the Panel should proceed with the discussion of the case under the UDRP.
6.3 Substantive Matters
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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
The Complainant has established rights in the COLUSSI trademark. The disputed domain name is clearly identical to the Complainant’s COLUSSI trademark, save for the “.com” Top-Level Domain indicator.
Owing to the fact that the generic Top-Level Domain (“gTLD”) suffix is generally disregarded under the test for confusing similarity for the purposes of the Policy, the Panel finds that the disputed domain name <colussi.com> is identical or confusingly similar to, the COLUSSI trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Preliminary Issue: Respondent’s Waiving of Rights to the Name Colussi
The Complainant has claimed that the Respondent waived all his IP rights on the name “Colussi” between the years 1999 and 2000.
Specifically, the Complainant affirms that on October 27, 1999, the company Biscotti Nord Italia S.p.A. (of which the Respondent was Chairman of the Board of Directors) transferred its business and all IP rights to Biscotti Panettoni Colussi Milano S.p.A.; and that between 1999 and 2000, the Respondent left the Colussi Group and waived all his rights on the commercial name “Colussi”. The issue concerning the IP rights to the name “Colussi” was apparently contained in a side IP rights agreement.
The Respondent, on the contrary, affirms that the disputed domain name <colussi.com> was not part of the agreement of October 27, 1999, which concerned the transfer of the “Biscotti Nord Italia” bakery business to “Biscotti Panettoni Colussi Milano”, and that it is not true that the side IP rights agreement included the domain name.
Both parties have provided an unusually huge quantity of documents in support of their arguments. The side IP agreement, however, was not filed with the Complaint or in the response to the Procedural Order. For its part, the Respondent has strongly rejected the existence of a side agreement involving the transfer of the disputed domain name from the Respondent to the Complainant and/or the Respondent’s waiving of his rights to the Colussi name.
Therefore, based on the documentation available, this Panel notes the following:
1. As stated by the Respondent and thus contrary to the Complainant’s claim, from the document filed by the Complainant itself (Annex 11 to the Complaint, hereinafter the “Contract”), it appears that on October 27, 1999, the company Biscotti Nord Italia S.p.A. transferred the “Biscotti Nord Italia” bakery business and its IP rights related to the bakery business only, i.e. it did not transfer all its business (e.g., the activity related to the management of its own real estate properties), but only its bakery business unit (and the related IP rights). The fact that the IP rights that were transferred to Biscotti Panettoni Colussi Milano S.p.A. are exclusively those related to the bakery unit is explicitly specified in the Contract;
2. In addition, while the trademarks transferred are indicated individually, there is no indication and/or mention of any transfer of domain names;
3. In the Contract1 there is a non-competition clause prohibiting Biscotti Nord Italia S.p.A. from engaging in any activity competing with the bakery business of Panettoni Colussi Milano S.p.A., but nothing in the documents provided indicates that this prohibition extended to the use of the name “COLUSSI” for activities that do not compete with the bakery business (e.g., the real estate business). Moreover, the non-competition clause specifies a period of five years to run from the date of signing of the Contract.
4. Neither in the Contract nor in any other document provided by the Complainant is there any mention that the transfer of the “Biscotti Nord Italia” bakery business unit included any assets, IP rights and/or other properties (e.g., the disputed domain name) personally belonging to the Respondent; the Contract neither includes, nor does it mention, any waiving of rights to the name “Colussi” and its commercial use by the Respondent.
Finally, this Panel notes that the three documents provided by the Complainant in response to the Procedural Order (which should have demonstrated Respondent’s waiving of his rights to the “Colussi” name) contain obligations, warranties and waivers that were to be undertaken by “Biscotti Panettoni Colussi Milano”, i.e., a third party, and not by the Respondent. In addition, as affirmed by the Respondent: “None of the above documents is directly or indirectly attributable to the Respondent, nor even to “Biscotti Nord Italia”.
C. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
For a respondent to demonstrate that it (as an individual, business, or other organization) has been commonly known by the domain name or a name corresponding to the domain name, it is not necessary for the respondent to have acquired corresponding trademark or service mark rights.
The respondent must however be “commonly known” (as opposed to merely incidentally being known) by the relevant moniker (e.g., a personal name, nickname, corporate identifier), apart from the domain name. Such rights, where legitimately held/obtained, would prima facie support a finding of rights or legitimate interests under the UDRP.
Absent genuine trademark or service mark rights, evidence showing that a respondent is commonly known by the domain name may include: a birth certificate, driver’s license, or other government-issued ID (section 2.3 of the WIPO Overview 3.0).
In the present case the Respondent’s identity is undisputed by the Parties, and in any case the Respondent has duly documented, by providing a copy of his birth certificate and of his identity card, that his family name is indeed “Colussi”.
The use of one’s own surname in a domain name is generally sufficient evidence of a right or legitimate interest in a disputed domain name.
In this sense there are many previous decisions, including: Billerbeck Schweiz AG v. Peter Billerbeck, WIPO Case No. D2001-0825, (<billerbeck.com>): “The Respondent submitted documents showing that his surname is indeed Billerbeck. It appears that the Respondent registered the Domain Name in order to be identified by his surname, in line therefore with the provision of paragraph 4(c)(ii) of the Policy (José de Jesus Velasquez Jimenez v. Velasquez-Perez, CPA, WIPO Case No. D2001-0342). The use of one’s own surname in a domain name corresponds to a legitimate customary practice and is, as a rule, sufficient evidence of a right or legitimate interest in the domain name. The scope of the Policy is limited to cybersquatting. Trademark owners shall not be allowed to use the Policy to dispossess summarily a third party of a domain name reflecting his or her surname (G. A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537)”; and John Hayes v. Vaughan Enterprises, WIPO Case No. D2004-0531 (<vaughan.com>): “Furthermore, ‘VAUGHAN’ is part of the name of Respondent ‘VAUGHAN ENTERPRISES’. In this regard, the Policy indicates that if “(you [Respondent] as an individual, business, or other organization) have been commonly known by the domain name, even if you [Respondent] have acquired no trademark or service mark rights,” this fact demonstrates that Respondent has rights or legitimate interests in the domain name (Paragraph 4(c)(ii)).”
In addition, the Respondent has shown that before any notice of the dispute he has legitimately used the disputed domain name (as platform for the email accounts […]@colussi.com and […]@colussi.com), and that he has made demonstrable preparations to use the same in connection with a bona fide offering of goods or services (i.e., for a website promoting the management and the offering to the public of short-term rentals of a number of properties in Venice owned by the Respondent and his sister).
Regarding this last point, the Respondent has given explanations, which are credible and supported by relevant documents, of why it took him so long to enrich the website “www.colussi.com” with content aimed, inter alia, at promoting the management of, and offering short-term rentals of, a number of properties in Venice owned by the Respondent (and by his sister). Briefly, the homepage of the disputed domain name <colussi.com> remained without content until such time as the real estate properties located in Venice, which are now being promoted on the domain, became available and usable for short-term rentals. In order to do this, the Respondent had to wait for the expiry of the previous rental contracts for the real estate properties, and for the expiry of agreements in place with the Municipality of Venice, under which the properties were subject to restrictions on use for fifteen years, from 2000 to 2015, and for the completion of renovation and furnishing work.
Accordingly, the Panel finds that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.
To be successful, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
Owing to the conclusion reached in the previous paragraph, there should be no need to evaluate the possible existence of the Respondent’s bad faith registration and use of the disputed domain name. However, for the sake of completeness, the Panel notes that comparing the elements from which it is possible to infer the bona fide use of the disputed domain name with the elements that the Complainant claims show the Respondent’s bad faith, the results are favorable to the Respondent.
In point of fact, at the time of the registration of the disputed domain name the Respondent had not “waived” his rights, and this is an important issue, of which the Complainant was aware when it started this proceeding.
According to the Policy, to be successful, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
Consequently, regardless of the Panel’s finding under the second element of the Policy, the Complainant would in any case have failed to prove the Respondent’s bad faith registration of the disputed domain name, and thus to satisfy paragraph 4(a)(iii) of the Policy.
As a final note, the Panel observes that the actual Respondent is a physical person, and not Biscotti Nord Italia S.p.A. Nevertheless, to remove all doubt, even if the Respondent and Biscotti Nord Italia S.p.A. were to be considered a single “respondent”, the Contract between Biscotti Nord Italia S.p.A. and Biscotti Panettoni Colussi Milano S.p.A. was in any case solely related to the bakery business unit of Biscotti Nord Italia S.p.A., and thus based on the available record the latter never waived its rights to use the name “Colussi” for the other activities it was engaged in: principally, the activity related to the management of its own real estate properties.
E. Reverse domain name hijacking
The Respondent contends that the Complaint has been brought in bad faith and, accordingly, that the Complainants should be sanctioned by a finding of RDNH.
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
Paragraph 1 of the Rules defines the “Reverse Domain Name Hijacking” as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH.
As explained in the WIPO Jurisprudential 3.0, Section 4.16, the reasons articulated by panels for finding a RDNH include amongst others: “(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests (ii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview.”
In addition, given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard. See Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653 where it was held that: Professional representatives of parties in UDRP proceedings are expected to be aware of or at least familiarize themselves with the Policy and Policy precedent, and to abide by the Policy and Rules. See Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555; IUNO Advokatpartnerselskab v. Angela Croom, WIPO Case No. D2011-0806; Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609.
Applying those principles to the facts of the present case, the Panel’s view is that there are several reasons why a finding of RDNH should be made.
Firstly, the Complainant was clearly aware of the Respondent’s identity and of his family name, Colussi, which is identical to the disputed domain name, and thus the Complainant had a clear knowledge of the Respondent’s rights and legitimate interests in the disputed domain name.
Secondly, it appears that the Complainant is familiar with the WIPO Overview 3.0, which is quoted in support of the Complainant’s claim that the disputed domain name was passively held by the Respondent, but notably, this same Overview is disregarded when it comes to the second UDRP element, namely the one concerning how to assess whether a respondent lacks rights or legitimate interests in a domain name.
Thirdly, in support of its claim concerning the lack of a Respondent’s right or legitimate interest to the disputed domain name, despite his family name being Colussi, the Complainant has quoted Riemann Trading ApS v. Riemann, Michael, WIPO Case No. D2017-0111. In that case, it is clearly explained that “past Panels have determined that even where a complainant possesses trademarks, respondents do not require license or authorization to use family names in a domain name genuinely intended for noncommercial use (see Mathiesen S.A.C. v. Allan Mathiesen, WIPO Case No. D2009-0087)”. The panel went on to explain that it could not accept the bare assertion of the respondent that the disputed domain name was his personal name without the evidence of any document. Therefore, it is crystal clear that the respondent in that case did not prevail for the principal reason that he provided only a bare assertion that the disputed domain name was his personal name, and despite having received two opportunities to substantiate his claims, he did not provide any documentary evidence.
It therefore appears that the present Complainant disregarded these points, and tried to direct the attention of the readers (i.e., the Respondent and the Panel) to the sole fact that in the above quoted case the complainant prevailed despite the fact that the respondent’s surname, Riemann, was identical to the contested domain name, <riemann.net>.
Fourthly, the Complainant is represented by counsel;
Fifthly, as previously mentioned, at the time of registration of the disputed domain name in 1995 the Respondent had not “waived” his rights, something which the Complainant was aware of when it filed its Complaint. Accordingly, the Complainant should have known that it could not establish the Respondent’s bad faith registration, irrespective of the Respondent’s subsequent use of the disputed domain name.
For the above reasons, this Panel finds that the present Complainant knew it could not succeed as to any of the required three elements.
In all of these circumstances, the Panel finds that the Complaint was brought in bad faith in an attempt at RDNH and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Date: September 11, 2017
1 The (scanned version of) the document provided by the Complainant is of a quite poor quality, namely many pages are cut and thus not reporting all the contents, and one or more pages appear to be misplaced. However, a better quality and more complete copy of this document was provided by the Respondent.