Domain name recovery under UDRP proceedings

Instituto Gastronómico Argentino (“IGA”), an Argentine based gastronomic institute which was planning to start doing business in Paraguay, entered into negotiations with SAT SRL (“SAT”), a Paraguayan company in the business of promotion and advertisement. As a result of negotiations on August 13, 2009 the parties executed an agreement by which SAT undertook to promote IGA’s services in Paraguay. The parties were represented by Andrés Basedovsky, IGA’s Director, and Ricardo Buse for SAT. 

On that same day and in clear bad faith, Ricardo Buse registered the domain name in his own name. A short time after, he built a website which offered competing services to those of IGA. Moreover, Mr. Buse offered to transfer the disputed domain name to IGA in return for a payment in cash.

Considering that they had better rights than Mr. Buse, on October 30, 2009 Brenda Vanesa Zicarrelli and Alejandro Javier Milberg (owners of the trademark “IGA” and shareholders for IGA) commenced administrative proceedings before the WIPO Arbitration and Mediation Center (the “Center”), alleging that the defendant had registered and used the domain name in bad faith; therefore, seeking the transfer of the disputed domain name in their favor in the terms of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), also known as UDRP.[1]

The Respondent filed a reply on December 7, 2009 mainly arguing that he had registered the disputed domain on the basis of the provisions of the agreement entered into between IGA and SAT.

On December 31, 2009 the Panel appointed by the Center decided to order the transfer of the domain name to IGA [2] based on the fact that it considered that IGA had proved the three elements of paragraph 4.a) of the Policy:

(i) to be the holder of a trademark identical to the disputed domain name,

(ii) that the defendant had no rights or legitimate interests in the domain name, and

(iii) that the defendant had registered and used the domain name in question in bad faith. 

Moreover, the Panel acknowledged that the agreement executed by the parties did not provide for any authorization whatsoever for the use of the trademark “IGA” nor for the registration of the disputed domain name. At the same time, the Panel noted that the disputed domain name was being used in connection with a website which offered competing services to those of the Complainant, which could not be considered a bona fide use of the disputed name.

The Center gave notice of the Panel’s decision upon the Registrar for its fulfillment and on February 18, 2009 the disputed domain name was effectively transferred to IGA.