D’Agostino Supermarkets filed a UDRP against Dagostino.com at the National Arbitration Forum (NAF). The decision was published this morning, and the New York City based supermarket chain lost the UDRP. In addition, the three member panel ruled that this was a case of Reverse Domain Name Hijacking (RDNH). The domain registrant was represented by Brett Lewis of Lewis & Lin.
The UDRP failed for a number of reasons, including the fact that “Respondent by competent evidence demonstrated that “D’Agostino” is her family name.” In fact, the domain registrant also showed that her father was the original registrant of the domain name and used it for his business until transferring it to the current registrant in 2006. That alone was almost certainly enough evidence needed to win the UDRP. The fact that D’Agostino is also a relatively widely used surname was also a factor in the decision.
I think there are a couple of noteworthy excerpts in the decision for investors to note:
Here’s an excerpt related to selling domain names:
“Offering to sell a domain name lawfully registered does not violate Sub¶4(b)(i) of the Policy. What the Panel holds in Fiberstar, Inc. v. Merlin Kauffman, FA1602001663188 (Forum April 11, 2016) is equally true of a party holding a domain name lawfully registered who decides to sell it. That Complainant happens to be among the universe of businesses and individuals who would like to take possession of the domain name does not give it a right greater than others who can equally hold the domain name without infringing third-party rights.”
Another part of the decision pertained to how common the D’Agostino surname is:
“Complainant’s argument under Sub¶4(b)(iv) is equally without merit. Claimant may have a strong commercial presence in the supermarket space but it nevertheless has a weak mark in being a well-distributed surname. Where, as here, the service mark is composed of a generic element such as a personal or surname, and where the domain name was registered in good faith, the fact that there may be some consumer confusion does not support an actionable claim for cybersquatting infringement. See BrightSign LLC v. Administrator, Domain / Vertical Axis, Inc., FA1103001370305 (Forum May 4, 2011) (“[T]he more descriptive a mark [or in this case generic] the more difficult becomes Complainant’s burden of proof to establish registration and use with Complainant’s mark as a target”). The consensus of UDRP panels is consistent with U.S. law on this issue. See KP Permanent Make-up, Inc. v. Lasting Impression I, Inc. 543 U.S. 111, 122 (2004). “
While Brett Lewis was the attorney who represented the domain registrant in this dispute, apparently attorney John Berryhill also played a role on behalf of the registrant. In the section discussing why the panel ruled it was a case of Reverse Domain Name Hijacking, the panel cited some prior discussion between the registrant’s representative and the complainant:
“This certification is undermined by the facts as they have emerged through Respondent’s Response and Annexes. Complainant’s cease and desist letter was addressed “Attn: Lulu D’Agostino Murphy”. Further, Complainant was on notice in a letter authored by John Berryhill, Esq., Respondent’s then counsel in response to Complainant’s cease and desist letter setting forth in great detail the relevant facts demonstrating Respondent’s rights or legitimate interests in (Annex L to the Response). Mr. Berryhill informed Complainant that the domain name was purchased by Respondent’s father Joseph D’Agostino and used by him in connection with his computer business, and subsequently transferred to and used by Respondent in her business in the same field. Complainant was also informed that if he were to proceed with the UDRP Complaint Respondent would counterclaim Reverse Domain Name Hijacking.
Complainant knew or should have known from Mr. Berryhill’s voluminous references to cases and law and that the domain name was registered and is being held by a member of the D’Agostino family, all set forth in detail, that its Complaint had no chance of succeeding on the merits. It was, in short, a complaint that should never have been launched.”
This is a good example of a UDRP that should not have been filed, and the panel, Gerald M. Levine, Steven M. Levy and Diane Cabell, Esq. made the right call.
Very interesting, thanks.
Shop at Morton Williams instead
Fairway on the UWS was where we shopped.
Was the Cease & Desist letter send by their attorney, Nicholas C. Katsoris?
If would be great if Brett Lewis or John Berryhill could upload the full letter here to be appended to this article.
How dense can the Complainant’s lawyer be? Or, perhaps he was just focused on his own cash flow needs during this time so he decided to bill his clients for this lost cause of a UDRP anyway.