The domain names villeroyandboch.com, .net and .org had been
registered by web solution provider David Gordon who lives in
Dublin. He had been instructed to register domain names on behalf
of his client, a licensed seller of Villeroy & Boch’s furniture
in Ireland.
The German company approached Gordon, demanding he transfer the
names or face legal action. Gordon explained that he had only
registered the names on the instructions of his client, but that he
would willingly transfer the names to of Villeroy & Boch for
payment of his expenses, which he calculated at €628 (around £390).
The German company refused and instead raised an action before the
World Intellectual Property Organistation (WIPO) – which costs
$1,500 (around £1,060).
The WIPO panellist refused to transfer the domain names,
pointing out that, since they were registered under the instruction
and on behalf of another company it could not infer that Gordon had
acted in bad faith. He added that, “to do otherwise would place
persons who act as agents for third parties in registering domain
names in a difficult position.”
An inference of bad faith is usually made where a domain name
that corresponds with a registered trade mark is offered for sale
to the trade mark owner for “valuable consideration in excess of
the documented out-of-pocket expenses directly related to the
domain name(s)”. The sum requested by Gordon was viewed as
reasonable in the circumstances.
