Lewis & Lin Defends Against Attempted Supermarket Sweep of Dagostino.com

L&L obtained a victory for our client and stopped the transfer of the domain name <dagostino.com>. The New York based supermarket chain D’Agostino’s filed a complaint with The Forum, alleging that our client lacked legitimate rights in the domain name and had registered it in bad faith. Respondent’s maiden name, which she still uses, is “D’Agostino.”

The Panel disagreed with the grocery chain and found that based on the evidence presented by Lewis & Lin, not only was the Respondent legitimately using the domain name, but there was no bad faith. Specifically, the Panel cited to the fact that Respondent is commonly known by her maiden name and used it in connection with her computer advisory business. Respondent’s attempt to sell the domain name, which was only after being solicited by the grocery store chain, did not prove otherwise, as a domain name is an “economic asset.”

Interestingly, the Panel cited to the 9th Circuit's decision in GOPETS  Ltd.  V.  Hise, Digital  Overture,  Inc, 657  F.3d  1024 (9th Cir.  2011) for the proposition that the transfer to Respondent by her father, who had initially registered the domain name in 1996, did not constitute a new registration.

Complainant was found to have engaged in reverse domain name hijacking. In its decision, the Panel cited to the grocer’s prior knowledge of Respondent’s surname and exclusion of such from its Complaint.