When I initiailly saw the UDRP filing for the Giordana.com domain name at the World Intellectual Property Organization, my first thought was that Giordana was a girl’s name. This was bolstered by the fact that Giordana.com forwards Giordana.it, and there is a photo of a dog on the Giordana.it landing page. People give their pets “real” names, and I initially thought this might be the case.
Before writing an article about the UDRP filing as I tend to do when I see a keyword or common term .com as the subject, I did some background searching via Google. Most of the top results were for one company called Giordana, and the complainant in this UDRP case was the company’s founder. I couldn’t find much to support my assumption that Giordana is a common Italian first name. Additionally, I saw that a UDRP had been filed for this domain name in 2014, and the complainant lost.
The most recent UDRP was decided a few days ago, and I found the decision to be interesting. In this decision, the sole panelist found in favor of the complainant, and the domain name is set to be transferred. Here are some of the more excerpts from the decision:
Some of the complainant’s contentions:
“Respondent is an amateur cyclist, and a member of the AlÃ¨ Cycling Team. This team is sponsored by A.P.G. SRL, an Italian company that markets cycling clothing and apparel identified by the ALÃˆ mark.”
“The disputed domain name was the object of a UDRP proceeding between Complainant and the previous registrant of the disputed domain name (Pier Giorgio Andretta v. Federico Zecchetto,”
“Even assuming Respondent’s dog actually is named “Giordana”, which Complainant finds quite unlikely, in his position Respondent certainly knew or could not be unaware that GIORDANA is a brand of cycling apparel,”
Some of the respondent’s contentions:
“Respondent is using the disputed domain name to celebrate a dog having the name “Giordana”. “Giordana” is a real dog and, even if quite old, is still alive. The name “Giordana” has been derived from the family name of the famous basketball player Michael Jordan and is an Italianization of the American family name “Jordan” (“Giordano” for males and “Giordana” for females). In other words, the dog has been named “Giordana” after the famous basketball player Michael Jordan as a tribute to “his airness” (one of the nicknames of “Michael Jordan”). The dog is commonly known by the disputed domain name even if no trademark or service mark rights have been acquired because there is not any intention of any commercial use of the dog.”
“Respondent is making a legitimate noncommercial and fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademarks at issue”
There are more interesting facts presented by both sides in this UDRP, and you’ll want to have a read when you have a chance.
One thing this UDRP decision taught me is that I shouldn’t immediately judge in my head whether a UDRP filing is BS or not based on a preconceived idea of what is a common word or not. Prior to looking into the term, I had assumed Giordana would be a common name, but it doesn’t seem to be the case.
Basically, the Respondent pulled an explanation out of thin air – the dog does not belong to them, as the Complainant pointed out. The page and domain were most likely set up and handed over from the previous registrant, after the first UDRP failed, believing that would shield the domain. That, however, triggered a new UDRP as the registrant changed.
The real issue here, which has sadly been missed, is the fact that the first UDRP failed, and the second did not.
Why? Have the panelists been equally competent (or incompetent)?
The reason for the different results is that the registrant during the first UDRP had been a contractor and licensee of the Complainant when the domain name was registered, so it could not be said that the domain name was registered in bad faith. However, it seems the contractor then went into competition with the Complainant, and transferred the domain name to someone outside of the company to keep the domain name away from the Complainant while coming up with a ridiculous story about a dog whose existence was not shown by any evidence.
I do not know if it would have made a difference in the outcome but the domain owner made 3 obvious mistakes.
1. Did not have a sincere strategy on the use of the domain so it did not trigger another UDRP.
2. Did not hire a IP lawyer. Self representation on a valuable domain is foolish.
3. Did not require a 3 person panel. Having just one panelist is a major gamble.