Friday, March 6, 2015

"Tough Luck" in UDRP Complaints: How Armani and Sony Lost UDRP Complaints

By Zak Muscovitch.

Sometimes even a famous brand owner just runs up against the wrong domain name owner. Take for example, the cases of Armani and Sony. Armani lost a UDRP complaint for Armani.com and Sony lost a complaint for SonyHolland.com. How? That's where the "tough luck" comes in. Both names were registered to individuals whose actual names corresponded to the respective domain names.

Armani.com
The Armani.com case goes back to 2001. The famous Italian fashion house, G.A. Modefine owned the world famous trademark, ARMANI. They commenced a UDRP Complaint against....Mr. A.R. Mani, of Vancouver, British Columbia. I think you know where this is headed now...The Respondent filed evidence showing that his full name was Anand Ramnath Mani, including even his baptismal certificate as proof. He also showed that he registered the Armani.com domain name in 1995, used the domain name for email, and that he registered the domain name because his initials were A.R. and his last name was Mani, adding up to, "ARmani.com".

The Respondent also showed that it was the Complainant who contacted him first, and not the other way around. In fact, the Complainant, through its intellectual property attorney, offered the Respondent the sum of $1,240 Canadian dollars to purchase the domain name. The Respondent refused, and demanded only $1,935 US dollars, which worked out to about $2,437 Canadian dollars - in other words just over $500 more than what the Respondent had demanded, which was a very "modest" and "reasonable" sum as the Panelist, Nick Gardener, pointed out in the decision. Moreover, the Complainant failed to disclose to the Panel that lengthy history including the offers, which resulted in a finding that the Complainant had abused the UDRP. The Panel eloquently pointed out as well, that it is "simply wrong" for the Complainant to think that just because it has a famous brand that it can use the ICANN UDRP procedure to "dis-posses summarily" the Respondent's domain name which consists of his initials and surname. According to historical Whois data, it appears that Mr. Mani ultimately transferred the domain name to the Complainant in 2004.

SonyHolland.com
More recently, a similar situation arose with Sony. Sony of course is also a world famous brand. In 2008, Sony Kabushiki Kaisha, otherwise known as Sony Corporation commenced UDRP Complaint against Sony Holland. The Complainant had trademarks all over  the world and operated its website at Sony.com and and also in Holland, at Sony.nl. Unfortunately for Sony however, it ran into  Sony Holland. Sony Holland was an individual who was born, "Sonia Einerson" and later took the name of "Sonia Peterson" when she was first married, and went by the name of Sony Peterson, even showing a hotel receipt from a Marriott in 1998 where her name was listed as Sony Peterson. She later maried Gerald Holland and became Sony Holland. She was a singer and had been using her name, Sony Holland for years before any notice of the UDRP dispute. She even showed copies of articles from Jazz Review and other publications, which all referred to her as Sony Holland.

The Panelists, Warwick A. Smith, Sandra A. Sellers, and William R. Towns, decided that that there was no evidence whatsoever of bad faith registration or use, and that the Respondent had an entirely plausible explanation of why she registered the domain name, and accordingly, the Respondent got to keep the domain name, although Reverse Domain Name Hijacking was not found. Today, you can visit SonyHolland.com, and read about Sony's latest performances, as she still owns the domain name.




1 comment:

DNsale said...

SonyHolland could be understood but very hard luck for Armani