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.