WIPO Panel concludes Domain Trading in itself is not in bad faith unless Respondent, uses the Domain in a manner that infringes Trademark Rights of the Complainant.
In a three panel decision, Domain name <intocable.com> was declined to be transferred to the complainant for the lack of evidence provided by Complainant to prove the Bad faith element of the Respondent.
The facts of the matter are as follows.
- The complaint in the administrative proceedings was filed by Intocable Ltd. Which is a renowned musical group.
- The mark “Intocable” is a Spanish term for “Untouchables”.
- Complainant owns US Trademark Registrations for the mark “Intocable” in respect of his offerings of the musical services and goods.
- The complainant has used the mark since the year 1994 in respect of his goods and services.
- Complainant has spent money as well as time in promoting the mark “intocable” through advertising, marketing on various mediums including Internet.
- The Domain name <intocable.com> was first registered on March 21, 1998.
- More recently the Domain Name was registered in 2014-2015.
- Complainant filed UDRP against the third party registrant ( WIPO Case No. D2015-1256) and the matter was settled between the complainant and the third party wherein the domain name was transferred to the complainant. The complainant acquired the ownership of the Domain Name on August 22, 2015.
- The complainant then stated that due to no fault of his own, the Domain Name expired and he can not renew the same.
- The Respondent then purchased the Domain Name from an auction site Namejet in April 2016.
- Respondent was using the Domain Name to operate a parking page with Domain broker Sedo.com and making it available for sale as Premium Domain on Sedo. The Sedo pages were written in English language.
- The complainant immediately emailed the Respondent notifying him of his rights in the Domain Name but the Respondent declined to transfer the Domain Name.
- Complainant contends that after receiving the Complainant’s demand to transfer the domain name on May 3, 2016, Respondent put up a new SEDO page in Spanish Language with general information about “Untouchables”. However, the page still offers the Domain Name for sale and links to the Spanish Language version of the Sedo site where it is listed for sale as Premium Domain name.
- The complainant filed the instant complaint with WIPO being case no. 2016 – 1048.
- The complainant states that he has a Trademark rights in the mark “Intocable” which is a registered mark and has also been used in commerce since 1994.
- Respondent is in the business of registering Domain Names, development of websites and Trading in Domain Names.
- Respondent did not dispute the rights of the complainant in the mark “Intocable”.
- He further contended that “Intocable” is a common generic Spanish language dictionary word.
- The word “Intocable” means “Untouchable” when translated in English and is defined as “too powerful or important to be punished, criticized” or “too good to be equalled by anyone else”
- Respondent contended that
- given its demonstrable business interest,
- its dictionary word Domain Name portfolio containing many Domain Names similar to instant Domain Name,
- The generic and descriptive meaning of “Intocable” and;
- the lack of evidence that Respondent targeted Complainant’s Intocable mark,
The Respondent has rights and legitimate interests in the Domain Name.
- Respondent argued that where a Respondent registers the Domain Name consisting of Dictionary terms because the Respondent has good faith belief that the Domain name value derives from its generic or descriptive qualities, the use of Domain name consistent with such good faith belief may establish a legitimate interest.
- He further contended that Complainant has failed to put forth any evidence that Respondent is seeking to capitalize Complainant’s goodwill.
- Respondent CEO submitted sworn statement indicating he had no knowledge of Complainant or of any of its trademarks or music at the time he registered the Domain Name for Respondent.
- Respondent stated that Domain Name in particular has value in the technology/computer sector for a business venture seeking to offer reliable or untouchably safe cyber-security systems. Respondent stated that its vision for how the Domain Name can further that venture is expressed on the webpage currently linked to the Domain name.
- Respondent has other Domain Names comprised of and containing Spanish Language dictionary words align with hundreds of other inherently valuable, common use, generic, dictionary word domain names.
Findings of the Panel
- Identical or confusingly Similar
Since the Respondent never contested the first element of the policy and complainant had vested rights & extensive use of the Trademark “Intocable”, the first element was satisfied.
- Rights and legitimate interests.
The Panel determined that
- Respondent has, through the sworn statement of Respondent’s CEO and other information submitted, provided a measure of evidence to rebut Complainant’s prima facie case that Respondent has no rights or legitimate interests in the Domain Name.
- At the same time, the Panel observed that Respondent, a professional in the domain name business, purchased the Domain Name at auction, very shortly after the expiration of the prior registration (and Complainant alleges the registration lapsed through no fault of its own) and apparently without performing any due diligence on whether any third party had rights in the term “intocable”; held the Domain Name for less than a week before being contacted by Complainant and apprised of Complainant’s trademark rights; did nothing more than link the Domain Name to a Sedo.com webpage listing the Domain Name for sale; and immediately after being contacted by Complainant, shifted the webpage away from its pre-dispute content (offering the Domain Name for sale) to new improvised content with an inaccurate copyright notice.
- While Respondent is in the business of trading in Domain Names, the Panel does not regard these particular circumstances as sufficient to show Respondent’s use of this specific Domain Name “in connection with a bona fide offering of goods or services” under the Policy.
The Panel, however, did not reach to any decision regarding the rights and legitimate use of the Domain Name by the Respondent due to its decision for the third element mentioned below.
- Registered and used in Bad Faith
The Panel after reviewing the parties contentions and evidence as has been submitted by the parties concluded as follows -:
- while there is a risk that the statement of Respondent’s CEO is self-serving, the Panel is not in position to reject Respondent’s sworn evidence, even though Complainant’s musical group clearly has some degree of international reputation. On the balance of the probabilities, the Panel cannot find sufficient counter-vailing evidence to conclude that Respondent intentionally targeted Complainant and its INTOCABLE mark when it registered the Domain Name. The question then becomes whether Respondent, especially as a professional in the domain name business, had a duty at the time of registration of the Domain Name to determine whether registration would infringe or otherwise violate the rights of any third party.
The Panel to arrive at the decision referred to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.4 (Can constructive notice, or a finding that a respondent “knew or should have known” about a trademark, or wilful blindness, form a basis for finding bad faith
- Wilful Blindness: Some panels have applied a concept of wilful blindness in UDRP cases as a basis for finding bad faith. For example, a respondent’s registration of large numbers of domain names through automated processes, with no appropriate mechanism for ascertaining whether these may be identical or confusingly similar to such trademarks, may support a finding of bad faith. Panels holding that a respondent must accept the consequences of turning a blind eye to any third-party trademarks through failure to conduct adequate searches have tended to limit the application of this principle to cases in which the respondent is a professional domain name registrant, or has been found to have engaged in a pattern of abusive registration and use of domain names identical or confusingly similar to trademarks (although some panels have also noted that, in theory, such general principle may be just as applicable to non-professional domain name registrants, who, after all, are also subject to paragraph 2 of the UDRP, which provides: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
- The Panel concluded that Respondent, especially as a professional in the domain name business, and consistent with paragraph 2 of the Policy, did have a duty to ensure that registration of the Domain Name would not infringe the rights of a third party. It appears from the record that Respondent failed to perform such checks in relation to the term “intocable.” However, that fact alone is not determinative.
- Even if Respondent had performed such due diligence, the word “intocable” is not merely an acronym or fanciful term that could refer reasonably only to Complainant and its musical group; it is also a common Spanish language word. This case is therefore distinguishable from the UDRP cases, Sibyl Avery Jackson and Red Nacional, cited by Complainant. In those cases the domain names in dispute – <sibylaveryjackson.com> and <renfe.com> – referenced the distinctive personal name and acronym for the respective complainants, and carried no other common language meaning or plausible use.
- Even if Respondent had been aware of Complainant’s trademark rights, this knowledge would not have necessarily prevented Respondent from registering the Domain Name in good faith for its common meaning, so long as the Domain Name is not used by Respondent in a manner that infringes upon Complainant’s trademark rights. Obviously, if Respondent attempts to use the Domain Name in relation to Complainant or related musical goods or services, Respondent would cross the line.
The Panel further noted that any such use, or indeed other indicia pointing to pretext in disavowing knowledge of Complainant, could color Respondent’s conduct to indicate bad faith intent.
The Panel determined that, on the basis of the facts and circumstances in the record, this is not an appropriate case to apply concepts of constructive notice or wilful blindness as against Respondent
- The Panel also concluded that on the balance of the probabilities, that Respondent’s use of the Domain Name prior to notice of the dispute, linking it to a Sedo.com webpage where it was offered for sale, was not use in bad faith, especially in view of the sworn statement of Respondent’s CEO that he had no knowledge of Complainant, its trademarks or music. Respondent’s subsequent act, declining to sell the Domain Name in response to Complainant’s request, also does not constitute bad faith use.
In view of all of the above circumstances, the Panel determined that Complainant has failed to prove that Respondent registered and is using the Domain Name in bad faith.
- The three member panel herein determined the trademark rights of the Respondent.
- The Panel concluded could not decide the Rights and legitimate interest in favor of any party considering the submissions of the parties and has provided the decision on the basis of the third element of the policy that is “Registration and use of Domain Name in Bad Faith”
- Panel while concluding determined that though it was the duty of the Respondent being in the business of buying an selling of Domain Names to conduct due diligence about the third party rights in the Domain Name but the Panel notes that said ddetermination is not conclusive to find the bad faith intent of the Respondent.
Therefore, to conclude that the Domain name was registered in good faith, Panel noted that nothing precludes Respondent to register the Domain Name consisting of generic term for its obvious meaning so long as the Domain Name was registered in the manner that it does not infringe Complainant’s mark.
The decision is a promising move for the lot of Domainers who have invested heavily in the Domain names that are generic in nature. However, lot depends upon the facts and circumstances of each matter and any one relying on the decision must seek legal advise from the Domain Name attorney.
Nothing in the article constitutes any legal advise or constitute any legal relationship with the author. Readers should rely on the legal advise provided by the attorney after discussing the matter with them.
You can contact me by email. Contact details can be found at www.domainconsultant.tel or can connect on social networking websites “@iplawattorney”
© 2016, Gurpreet Singh Monga, www.doamainconsultant.tel