Recordati S.p.A. v. Domain Name Clearing Co.

Recordati S.p.A. (complainant) was an Italian pharmaceutical company and the owner in the United States of the registered trademark “Recordati.” In 1997, the Domain Name Clearing Company, LLC (Clearing) (respondent) registered the domain name recordati.com but did not set up a website using the domain name at that time. In 1998, Clearing put the site on hold at Recordati’s request but refused to use the domain name to make any connection to Recordati, arguing that the name was an intentional misspelling of the Italian word ricordati, which broadly meant to remember or suggested nostalgia. Clearing had not offered to sell the recordati.com domain name to Recordati, and there was no evidence that Clearing had engaged in a pattern of registering domain names incorporating registered trademarks for the purpose of preventing the owners of such marks from registering the domain names. There was also no evidence that Clearing was a competitor of Recordati. However, Clearing refused to transfer the domain name to Recordati. Recordati filed a complaint with the World Intellectual Property Organization, alleging that Clearing’s domain-name registration violated the Uniform Domain Name Dispute Resolution Policy (UDRP) because recordati.com was confusingly similar to Recordati’s registered trademark, and Clearing had no legitimate interest in the domain name.