Reglikedomain industry desk

Lawsuit filed following Materia.com UDRP, and it’s an interesting case

Michele Dinoia has cybersquatted in the past, but was Materia.com different?

Michele Dinoia has filed a lawsuit in U.S. District Court against California firm Materia, Inc., following Materia won a UDRP for Dinoia’s domain name Materia.com. The lawsuit seeks to stay the transfer and seeks a finding reverse domain name hijacking.

National Arbitration panelist Richard DiSalle found in Materia, Inc’s favor in a UDRP decision dated August 20. He ordered Dinoia’s domain name registrar, Name.com, to transfer Materia.com to Materia, Inc.

The domain name will be a nice upgrade for Materia, Inc., which uses the domain name Materia-Inc.com.

In reading the UDRP decision and lawsuit filing (pdf), I can’t help but wonder if panelist DiSalle’s decision was influenced by Dinoia’s past actions with other domain names. It’s abundantly clear that Dinoia has cybersquatted on famous brands in the past. Yet the instant case wasn’t so clear cut:

  • Materia is a generic word.
  • Dinoia registered Materia.com in 2001. Why did Materia wait 14 years to file a UDRP?
  • Materia hired Domain Holdings to acquire Materia.com. It made offers of $10,000 and $50,000 for the domain name ahead of filing the UDRP. Would a firm that feels someone is cybersquatting really offer $50,000? It sounds like UDRP was a “Plan B.”
  • Materia didn’t file for a trademark until 2012, citing first use in 1999. Materia also argued common law rights dating to 1999, but Panelist DiSalle didn’t require much in the way of evidence that the mark was popular and had secondary meaning at the time Dinoia registered the name in 2001. Also, Dinioa is in Italy, not the United States where the trademark was filed.

In many cases, these factors would be enough for a UDRP panelist to deny the case. It makes me wonder if Dinioa’s past actions influenced the panelist.

Materia.com has by now been transferred to Materia, Inc., but Dinoia argues that it was transferred ahead of the ten day deadline to file a suit and stay the decision.

Also on the wire

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