Advice Group is an Italian company founded in 2006 and specialized in marketing. It is based in Turin but has offices in Rome, Bari and subsidiaries in Bulgaria, Kosovo, Portugal, Colombia and Peru.
Having noted the registration of the domain name <advicegroup.com> by a third party, the company turns to the WIPO Arbitration and Mediation Center for its transfer. The domain name was reserved in 2014 by Michele Dionia of Macrosten LTD, located in Cyprus. The domain name resolves to a page of commercial links and suggests that the name may be for sale (Internet users can make an offer).
The Respondent did not respond to the complaint.
The expert acknowledges the likelihood of confusion between the disputed domain name and the applicant’s Italian semi-figurative trademark, “A Advice Progressive Marketing Thinking”.
However, he decides not to rule on the issue of legitimate interest, referring to his observations on the issue of bad faith. Nevertheless, he makes several observations on the legitimate interest, in favor of the Respondent: the terms that make up the domain name are generic and the Respondent did not make active use of the name, he simply let the registrar promote its services and included a message advising Internet users to contact the registrant for the purchase of the name.
The expert also obviously did some research on his part, which he is not bound to do, since he notes that there are many companies called Advice Group throughout the world.
Concerning bad faith, the expert insists on the fact that at the time of the registration of the name, the applicant had not yet registered a trademark. The filing took place nine months after the reservation of the name in question and the obtaining of rights, two years later! Nothing suggests that the Respondent had the Complainant in mind when registering this domain name consisting of dictionary terms. Moreover, the fact that Internet users could propose the purchase of the name does not mean that the aim of Macrosten LTD was to resell it at a high price to Advice Group.
Thus, not only is the complaint rejected, but the expert also decides to qualify the complaint as a case of “reverse domain name hijacking”, i.e. it is considered that the complaint was filed with the sole purpose of depriving the domain name holder of the domain name. Here, the Complainant accused the Respondent of cybersquatting even though no evidence to that effect was provided and the name, consisting of generic terms, predates the Complainant’s trademark registration.
It should be remembered that proving the bad faith of a registrant when the domain name consists of generic terms is difficult. It is essential to show that the registrant had the applicant’s trademark in mind. In the present case, it can be assumed that even if the Complainant’s trademark had been older, this would not have been sufficient to ensure the success of the complaint. The setting up of a site similar to that of the Complainant or for the same activities, or contact made by the registrant are elements that make possible to constitute a relevant case . Here, the Complainant had no evidence to justify his position.
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