One panelist strongly disagreed with the others.
The majority of a World Intellectual Property Organization panel has ruled (pdf) that Reza IP Holdings LLC attempted to reverse reza.com domain name hijacking.
The jewelry company, which goes by the name of Alexandre Reza and uses the AlexandreReza.com domain, attempted to obtain the name of Taha Alireza, a member of a prominent Saudi family.
It sure seems like it was an insurmountable case for plaintiff to win. Consider:
– The respondent’s surname is Alireza. Reza is a popular surname in Saudi Arabia and Alireza is a combination of the names “Ali” and “Reza”, written as the two words “Ali” and “Reza” in native Arabic. His family is well known in the country; the respondent’s grandfather Mohammed Alireza was the former Saudi Minister of Finance and Ambassador to France from 1972 to 1976, his brother, the respondent’s great-uncle, was the Saudi Ambassador to the United States from 1975 to 1979 and that the respondent’s father, Youssef, is the founder, director and shareholder of the family business Reza Investment Company
– Respondent’s family owns Reza Investment Co. Ltd. The respondent was in the process of selling the domain to the company prior to the proceeding.
On these facts alone, proving that the Respondent has no rights or legitimate interests seems impossible.
And yet, even though two panelists found this case so egregious that they determined it was reverse domain name hijacking, a the third panelist decided that the domain should be transferred to the complainant.
Here is what the majority, consisting of Luca Barbero and Richard Lyon, said about reverse domain name hijacking:
i) the Complainant, who is represented by a lawyer, should have appreciated the weakness of his file and the fact that the name “Reza” encompassed in the disputed domain name cannot be exclusively referred to the Complainant;
(ii) Complainant ignores several established precedents of the UDRP, including requiring evidence to support critical claims, failing to recognize that warehousing of domain names is not per se improper, that the responding to a Trademark Owner’s request to purchase the disputed domain name is not ordinarily inappropriate, and that the purchase price of a domain name that does not relate exclusively to a Trademark Owner is the market and not of the Panel;
(iii) the Complainant attempted to mislead the Panel about its anonymous request to purchase the disputed domain name, because the description in the Complaint (presenting the request as addressed by the Complainant) differs materially from the correspondence attached to the Response;
iv) the circumstances of the case show that this may be a speculative “plan B” launched by the Complainant after the failure to purchase the disputed domain name – via an anonymous third-party email address – from of the Respondent.
The majority also noted:
The Complainant is not excused by only learning of the proposed transfer to Reza Investment Company after the Complaint was filed. First, pre-complaint due diligence, such as a Google search, would have revealed that reza is a common and frequently used name in business names. Second, the majority of the Committee finds it hard to believe that an individual named Reza himself would not be aware of the ubiquity of that name. Third, Complainant at a minimum “had an obligation under this Rule [3(b)(xiii)] to explain to the Panel why » the Respondent’s surname and business name were not covered by Rule 4(c)(ii). See Wall-Street.com, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC, WIPO File No. D2012-1193. The Complainant did not even address the possibility that the Respondent chose the disputed domain name because of his last name, whereas such a circumstance could indeed be inferred from the name of the holder appearing in the public records WhoIs and in fact in the caption and text of the Complaint. Ignoring established political precedent alone justifies a finding of abuse, see Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598.
Panelist Emmanuelle Ragot concluded that the Respondent has no legitimate rights or interests:
Instead, one of the panel members finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the political given the correspondence of the disputed domain name with the well-known mark REZA of the Complainant and the corresponding sum of money requested by the Respondent to transfer the disputed domain name, which suggests a speculative intention.
So I guess it doesn’t matter that the respondent’s last name is Ali Reza and his family owns Reza Investment Company? The respondent offered to sell the domain for $250,000 when approached, but he did not know who the plaintiff was representing.
On the issue of registration and bad faith, Ragot found:
One of the panelists is of the opinion that the defendant registered the disputed domain name in bad faith because the plaintiff acquired a reputation in its mark, also known and used under the name REZA to distinguish jewelry products in internationally, for years well before 2016 in the jewelry industry. Indeed, in 1997, press reviews mention the reaction of REZA Paris staff after the information of Lady Diana’s death in Paris (while she was wearing one of REZA’s rings) and the consultation of all the pages including Wikipedia reporting this tragic event refers to REZA.
Therefore, this Panelist concludes that Respondent must have been aware of, and could not have been unaware of, Complainant’s rights when it registered the disputed domain name.
The Panelist also believes that the nature of the disputed domain name reinforces the false impression that the disputed domain name is somehow officially connected to the Complainant, as it may be perceived to be used in connection with one of the Complainant’s official websites. for sale, prompting interrogations. on the Complainant’s economic situation. Thus, by registering the disputed domain name, the Respondent created a risk of confusion with the Complainant’s trademark, because it is likely that the disputed domain name could mislead Internet users into believing that it is, somehow associated with the Complainant.
The same Panelist also specifies that the existence of an offer for sale to the public of a domain name on the website to which he refers is an indication of bad faith on the part of the Respondent (see Bayerische Motoren Werke AG c (This Domain is for sale) Joshuathan Investments, Inc, WIPO Case No. D2002-0787 and Ferrari SpA v. Allen Ginsberg, WIPO Case No. D2002-0033) and that the offer to sell the disputed domain name for USD 250,000 indicates that Respondent registered the disputed domain name for the sole purpose of reselling it to a third party for financial gain within the meaning of paragraph 4(b)(i) of the Policy.
The respondent’s attorney, John Berryhill, told me that the Wikipedia article was not entered into evidence. John couldn’t find this reference in a Wikipedia article about Lady Diana’s death, nor can I find it, but it may have been in a foreign language edition.
According to her PMOI profile, Ragot is a French national practicing in Luxembourg. The Complainant’s lawyer at Dennemeyer & Associates SA is also in Luxembourg and both studied at the same school (at different times).
I think WIPO would consider a case in which the panelists had such different points of view.