WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Red Nacional De Los Ferrocarriles Espanoles v Ox90

Case No. D 2001-0981

 

1. The Parties

The Complainant is Red Nacional De Los Ferrocarriles Espanoles, Avenida Pio XII, 110 Ė Estacion de Chamartin, Madrid 28036, Spain.

The Respondent is Ox90, 1870 N Scott Street, Arlington, VA, USA.

 

2. The Domain Name and Registrar

The Domain Name is <renfe.com>.

The Registrar is Internet Names Worldwide.

 

3. Procedural History

The Complaint was received by WIPO by email and hard copy on August 1, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). Internet Names Worldwide has confirmed that renfe.com ("the Domain Name") was registered through Internet Names Worldwide and that Ox90 is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On August 8, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was August 28, 2001. A Response was received by WIPO on August 29, 2001. The Complainant submitted a Supplemental Filing, which was received by WIPO by email on September 3, 2001, and in hardcopy form on September 10, 2001.

The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panelís Decision is October 24, 2001.

 

4. Factual Background

The Complainant was established in Spain in 1941 and is responsible for the commercial exploitation of much (if not all) of the Spanish railway system. Both as a result of long and extensive use of the term RENFE and by way of registration, it has acquired substantial trade mark rights in the term.

In August, 2000, the Complainant lodged a complaint against a previous registrant of the Domain Name and obtained a decision requiring the registrant to transfer the Domain Name to the Complainant. The transfer duly took effect, but as a result of "an administrative mistake" (no further details have been given), the registration lapsed and the Domain Name became available for registration again.

On April 5, 2001, the Respondent registered the Domain Name.

Prior to the launch of this administrative procedure the Complainant made contact with the Respondent and/or the Respondentís administrative contact, but the Complainant gives no details of what transpired, so the Panel concludes that nothing of significance to this Complaint occurred.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends as follows:

- The Domain Name is identical to the Complainantís name and trade mark save for the addition of the <.com> suffix.

- The Domain Name is the Complainantís name, which was allowed to expire by mistake.

- The Respondent has no rights or legitimate interests in respect of it.

- None of the examples set out in paragraph 4(c) of the Policy apply.

- The Respondent registered the Domain Name in bad faith and is using it in bad faith. Relevant extracts of the Complaint dealing with this allegation are as follows:-

"According to Article 4.b(ii) of the Rules, it is considered that there was bad faith at the moment the disputed domain names were registered if, through such registration, the Registrant was actually seeking to impede the holder of the corresponding trademark from registering the disputed domain name.

In the present case, there are no doubts that the Respondent registered the disputed domain names for the purpose to impede the use by RENFE of the disputed domain name, since it looks like the Respondent has no legitimate rights on the trademarks corresponding to the name "RENFE" and it is not using at all any of the disputed domain names.

Moreover, the name "RENFE" constitutes such a well-known trademark in Spain that it is practically impossible that there was a "miraculous coincidence" in the present case.

Indeed, the Complainant is convinced that the Respondent registered <renfe.com> having clearly in mind that it was registering a domain name corresponding to a third party trademark.

Such an impression is reinforced by that fact that the Respondent has also registered many domain names corresponding to third partiesí trademarks, as shown in ANNEXES 5 and 6.

In fact, such a behavior constitutes, in two senses, a clear breach of the Registration Agreement established by INWW. Indeed, on the one hand, Clause 13 (Warranty) of the Agreement states: "Registrant warrants that, to the best of Registrant's knowledge and belief, neither the registration of the domain name nor the manner in which it is directly or indirectly used infringes the legal rights of a third party".

In the present case it is clear that the Respondent registered the disputed domain name knowing that the name "RENFE" was referred to the trademark used by the Complainant for the development of its commercial activities.

On the second hand, Clause 4 (Application Details) of the above mentioned Agreement states: "Registrant warrants that all Information provided is accurate and reliable". As long as the Complainant has been able to find out, there exists no company or legal person named "0x90".

In addition, the Respondent has included the Holy See (Vatican City State) as the country of residence of the Administrative Contact, when it is actually the State of Virginia (US). Moreover, it seems that the real registrant of the disputed domain name was not the Respondent but Mr. Anthony Peppler.

Moreover, as shown previously, Mr. Peppler has developed a method for tracking and registering released domain names, whose registration period has recently expired, as it was the case of the disputed domain name. Apparently, Mr. Peppler is using such a method for further reselling those domain names to their legitimate owners, as it was the case of <everydayhate.com> domain name.

Consequently, in the present case it is clear that at the time of registering the disputed domain names, the Respondent was basing its behaviour on criteria completely opposed to good faith, as the Respondent perfectly knew that he was using a third partyís trademark.

Existence of bad faith by the Respondent in the use of the <renfe.com> domain names

In the present case, from the moment the Respondent registered the disputed domain name, he has linked it to a web page where services web mail, Internet search and domain name registration services are offered. A copy of the web page linked to <renfe.com> is included in ANNEX 7.

Indeed, the Respondent has adopted a passive attitude regarding the web page linked to the disputed domain name, by just redirecting the Internet users to the web pages linked to the domain name <visual.com>.

Such an attitude must be considered as a behaviour in bad faith under two possible points of view: (1) as an attempt to prevent the Complainant from reflecting the RENFE trademark in a corresponding domain name, (2) as an attempt to unfairly attract Internet traffic to the web site linked to the disputed domain name by using the Complainantís trademark.

Regarding the Respondentís passive behaviour as an evidence of his bad faith it is important to remind, for example, Decision no. D2000-0823 where in Letter (d) of Paragraph 6.3.3 the Panel considered that "the mere redirecting of a web page without contents to a web site really operative has been repeatedly considered as a lack of use and, consequently, as a use in bad faith".

Thus, by registering <renfe.com>, the Respondent was aiming at impeding the use on the Internet of the name for an international railway company, impeding therefore the normal development of its online activities.

Actually, it is and it will continue to be very important for an international railway company like the Complainant to have an adequate presence in the Internet, in order to develop online commercial activities.

According to this, it is obvious that in the present case, the Respondent acted in bad faith within the meaning of paragraph 4(b)(ii) of the Policy. Indeed, from its behaviour at the time of registering the disputed domain name and its subsequent lack of use, the respondent acted in bad faith.

The Respondentís behaviour vis-à-vis the disputed domain name may also be considered as adopted in bad faith in accordance to Article 4(b)(iv) of the Policy, since the Respondent, by using a domain name that corresponds to the Complainantís name, may divert people looking to RENFEís web site, improperly benefiting from the Complainantís reputation.

Such a risk is specially dangerous in the present case, given, on the one hand, the implantation and notoriety of the RENFE trademark in Spain and, on the other one, that the Complainant is already developing online activities through the Internet (For example, the online sale of tickets through the Ticknet service..)

Therefore, it is impossible to conceive any plausible, actual or contemplated active use of the said domain name by the Respondent that would not be illegitimate, resulting in infringement of the Complainantís trademark rights on the name "RENFE".

Indeed, the Public will be misled as to the origin and owner of the disputed domain name. People in search of the domain name of the Complainant, or people otherwise encountering the disputed domain name will believe it emanates from, is endorsed by, licensed by, approved by or otherwise associated with the Complainant.

Thus, the Respondent falsely suggests to the public that the owner of the disputed domain name is in some way associated or connected with the Complainant, or at least supports or endorses the web page linked to the disputed domain name, which is clearly untrue.

In accordance to what it has been stated, by using Complainantís name, Respondent diverts Internet traffic to VISUAL.COM web site, as when an Internet user searches for Complainantís name, he will find Respondentís web site address. In that sense, it is important to quote Decision no. D2000-0794, Helen Folsade Adu p/k/a Sade v. Quantum Computer Services, Inc., where the Panel established: "[The Administrative Panel] is convinced that the Respondent, despite its denials, has intentionally associated the said domain name with the Complainantís reputation and goodwill".

The Complainant considers that this argument is fully applicable to the present case since, by registering a domain name that creates a likelihood of confusion with Complainantís trademark, the Respondent was aiming at profiting from the Complainantís notoriety and reputation. Indeed, once the <renfe.com> web page is loaded, there appear up to four active banners advertising different products and services.

A print-out of the above mentioned banners is included as ANNEX 12 of this Complaint.

Consequently, every time a user visits the web page corresponding to <renfe.com>, the Respondent obtains a benefit by actively displaying advertising banners in the userís screen.

Thus, it must be concluded that the Respondent acted in bad faith by registering and using <renfe.com>."

B. Respondent

The principal contentions of the Respondent are as follows:

- Complainant alleges that the various entities connected with the Domain Name are "supposed" (Complaint, Paragraph 32.). Respondent submits that all entities are legal and operate in accordance with the laws of the respective states in which they have chosen to operate. Specifically, the owner of the Domain Name is the entity known as RealTimeInternet.com, Inc. (hereinafter "RTI"), a corporation duly organized under the laws of the state of Delaware. Anthony Peppler is the President of RTI. Ox90 is a sole proprietorship, duly operating under the laws of the state of Virginia. Ross Mueller is the operator of Ox90. Ox90 is an independent contractor of RTI.

- RTI is an Internet solutions company that offers many different services to its customers, including but not limited to, web hosting, development and design services, portal set-up services, domain name recovery services, free e-mail services and online shopping services.

- In order to perform the many services it offers, RTI regularly monitors the Internet to determine commonly-searched terms, trends in web sites (both content and design), types of services offered, and more. In order to more efficiently perform this activity and, consequently, better service its customers, RTI reviews the databases of several of the large search-engine organizations, i.e., Yahoo, Hot Bot, Alta Vista, which are available for free on the Internet. The purpose of this activity is to search these databases and determine the terms that are the most commonly searched by Internet users. The results of these searches enable RTI to create and register meaningful domain names for its customers. In addition, RTI creates and registers domain names for itself in order to offer its own services to consumers, for example, its free e-mail services and its online shopping services. Further, it must be noted that RTI does not intentionally target the trademarks, or other intellectual property rights, of third parties. Again, the purpose of this database searching is to determine what terms Internet users search most often, and then to register those terms as domain names.

- Occasionally, as a side effect of RTIís search-engine database searches, RTI may, unintentionally, register the trademark of a third party as a domain name because the mark was disclosed as a commonly-searched term. Several times, when requested by the owner, RTI voluntarily assigned such registration to the owner.

- Further, as noted in Paragraph 8(b), RTI offers a "domain name recovery" service to its customers. This service is similar to a trademark watching service, a type of service now offered by many different companies throughout the world. RTI's service enables customers to acquire names that were once registered, but were allowed to lapse or expire by their original registrants. The key item to note in connection with this activity is that RTI monitors expired domain name registrations, because, as stated above, it is not RTI's intent to target the trademarks or other intellectual property rights of third parties.

- As demonstrated by the foregoing explanation of Respondentís business, it is clear that Respondentís business does not compete with Complainantís business.

- Throughout the complaint, Complainant claims that the term "renfe" is a well-known trademark in Spain. Respondent does not dispute that this term is being so claimed; however, Respondent, when it first discovered the term, did not know what it meant and did not realize that anyone was claiming it as a trademark. (The term is not registered in the U.S. Patent and Trademark Office ["PTO"]. The PTOís site can be accessed at http://www.uspto.gov/web/menu/tm.html.) Respondent first came across the "renfe" term when it was performing one of its search-engine database searches to look for commonly-searched terms on the Internet. Later, while performing its expired domain name recovery services, Respondent noticed that the domain name <renfe.com> had expired and, therefore, was available. Consequently, because it had already determined that "renfe" was a commonly-searched term on the Internet, Respondent decided to acquire the <renfe.com> domain name. Respondent registered the Domain Name on April 5, 2001. This is the only domain name registration that Respondent owns that contains the term "renfe."

- Respondent does not dispute that someone from Spain telephoned Mr. Mueller and Mr. Peppler. The contact occurred approximately mid-July, 2001.

Mr. Peppler asked the caller to send or fax him information about "renfe," but never received anything. Mr. Peppler did not offer to sell the Domain Name to the caller at this time or any time subsequent thereto. Moreover, this was the first time Respondent learned that Complainant was claiming trademark rights to the "renfe" term. As noted, this contact occurred after the date Respondent registered the Domain Name.

- Additionally, it should be noted that Respondent has not engaged in a pattern of registering domain names containing the "renfe" element. In other words, Respondent has not registered the term in conjunction with other words or with different Internet extensions to create additional domain names. The only domain name with the "renfe" term that Respondent owns is <renfe.com>. Thus, Complainant is not completely blocked from using the "renfe" term in its domain names. Further, Respondentís use of the Domain Name on its site to promote its own services does not create a likelihood of confusion or imply an affiliation with Complainant because it is clear upon accessing the site that Respondent is not offering services in connection with a railroad.

- Respondent disputes the implications of wrongdoing repeatedly made throughout the complaint by Complainant when referring or characterizing Respondentís domain name recovery services. As previously stated, Respondent provides a monitoring service by watching and acquiring expired domain names. Respondent does not target the trademarks of others. Respondent further submits that there is nothing inherently wrong with acquiring expired domain names; further, the fact that they are expired signifies that the original owners/registrants are no longer interested in using them. In fact, Respondent has often found that these domain names were allowed to expire by their owners because their businesses had failed.

- Respondent disputes the implications of wrongdoing repeatedly made throughout the complaint by Complainant when referring to Respondentís services of registering commonly-searched terms as domain names. There is nothing inherently wrong with this activity either, and, again, Respondentís intent is to register commonly-searched terms as domain names, not the trademarks of other parties. Also, as previously stated, the purpose of registering domain names is to use them for creating web sites for Respondent's customers, as well as offering its own services. Respondent does not register them merely for further resale.

- Respondentís intent as stated in Paragraph 16 is, in fact, evidenced by the documents in Complainantís Annex 5. Of the 89 "Whois" records enclosed, the overwhelming majority are for common everyday words, or people's names, in the American language. Word examples include, allalone, backwards, blink, breakfast, businessman, businesswoman, captain, danger, discover, duet, drug, extended, geography, hut, insecure, jumpup, lab, melt, misery, negative, nix, phantom, revert, sad, scared, theunknown, and typo. Name examples include, Brigid, Cindy, Davis, Elanor, Katey, Lauren, and Leanne. These words and names are not trademarks, and even if there are some entities that may be using some of them as trademarks, that use does not detract from the common meanings or usages of the words or names, or delete them from ordinary, everyday language such that no other parties can ever use them. Additionally, Complainantís allegation that Respondent targets third partiesí trademarks is belied by some of the specific examples it cites (Paragraph 35 of the Complaint). Complainant states that Respondent has registered "simpsons.com" as a domain name and claims that Respondent has taken the mark THE SIMPSONS. Respondent submits that the term "Simpson" is a common last name in the American language (see Annex B, which is a photocopy of the Indianapolis, IN, U.S.A. telephone directory for the name "Simpson"); therefore, more than one entity can claim rights to the term. The same argument can be made for Complainantís allegations with respect to bounce (definition: to beat, bump, dismiss, fire, or bound), explorer (definition: a person who travels in search of geographical or scientific information), misery (definition: a state of suffering and want, or a state of great unhappiness and emotional distress), and slayer (definition: killer, or murderer).

- Complainant has not submitted any proof that Respondent is its competitor, that Respondent attempted to disrupt Complainantís business, or that Respondent attempted to sell the Domain Name to Complainant for an excessive fee. Thus, there was no bad faith on the part of Respondent when it registered the term "renfe.com."

- Respondent has not registered the Domain Name primarily to resell it to Complainant, nor has Respondent registered it for the purpose of preventing Complainant from using it or for disrupting Complainant's business. Lastly, Respondent has added a disclaimer to its web site indicating that Complainant is the owner of the RENFE mark.

- Based on the foregoing discussion, Respondent submits that Complainant has not met its burden of proof with respect to its claim that Respondent has no legitimate rights in the Domain Name. As demonstrated by Respondent, it registered and used <renfe.com> before it had notice of Complainantís claim to the "renfe" term. Additionally, Respondent is making a legitimate fair use of the domain name because there is no intent to misleadingly divert users from Complainantís site to its site for commercial gain. Thus, since Respondent has met not only one, but two, of the elements for counteracting a "no legitimate interest" claim listed in Paragraph 4(c) of the Policy, Complainantís claim must fail, and the request to transfer the Domain Name must be denied.

- Additionally, based on this discussion, Respondent submits that Complainant has not met its burden of proof with respect to its claim that Respondent registered the Domain Name in bad faith. As demonstrated by Respondent, it has shown that it:

(a) does not target the trademarks of others when it searches and registers terms as domain names; instead, Respondent searches for and registers commonly-searched Internet terms;

(b) does not make it a business practice to offer to sell the domain names it has registered, if they happen to be trademarks, to their owners;

(c) has not approached Complainant, nor offered to sell to it the Domain Name registration for any fee or an excessive fee;

(d) has not registered the Domain Name with the intent to impede Complainant from using the term "renfe";

(e) does not own other domain names that contain the term "renfe";

(f) had registered the Domain Name and created its own web site for the bone fide offering of its own services before it received notice of Complainantís claim;

(g) clearly indicates on its web site that Complainant is the owner of the RENFE mark;

(h) is not a competitor of Complainantís; and

(i) has not disrupted Complainantís business.

- Accordingly, the Domain Name was not registered primarily for selling it to Complainant for an excessive fee, was not registered in order to prevent Complainant from using the term in its own domain names, and has not created a likelihood of confusion as to the source of Respondentís services; thus, the element of bad faith has not been proven. Complainantís claim, therefore, must fail and the request to transfer the Domain Name must be denied.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Identical or confusing similarity

The Complainant has produced ample evidence to demonstrate its rights in the trade mark RENFE. The Domain Name comprises the name RENFE and the generic <.com> suffix.

The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.

Rights or legitimate interest of the Respondent

The Respondent is quite candid about how it selected the Domain Name. In paragraph 12 of the Response the Respondent states:

"Respondent first came across the Ďrenfeí term when it was performing one of its search-engine database searches to look for commonly-searched terms on the Internet. Later while performing its expired domain name recovery services, Respondent noticed that the domain name <renfe.com> had expired and, therefore, was available. Consequently, because it had already determined that Ďrenfeí was a commonly-searched term on the Internet, Respondent decided to acquire the <renfe.com> domain name."

Prior to registration of the Domain Name, the Respondent had no interest of any kind (legitimate or otherwise) in the term RENFE.

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which, if found by the Panel to be proven, demonstrates existence of the Respondentís rights or legitimate interests in respect of the Domain Name. None of those circumstances apply here. The Respondent has done nothing with the Domain Name save to connect it to a web page advertising its services. While the site purports to be a site of <renfe.com>, it is identical to the sites connected to others of the many domain names in the Respondentís catalogue. This advertising page appears to the majority of the Panel to be nothing more than a "placeholder," commonly used by cybersquatters for the purpose of making it appear that the Respondent is making a legitimate commercial use of the domain name. The Panel does not regard this situation as evidence of use of the Domain Name "in connection with a bona fide offering of goods or services," as required by the rules. The Respondent has not been commonly known by the Domain Name and there is no suggestion that the Respondent is making a legitimate non-commercial or fair use of the Domain name. The Panel is unanimously of the view that to take a domain name, with which one has no natural connection, knowing it to be a popular term used by Internet users and knowing that it was once the domain name of somebody else and without making any enquiries as to its provenance is not fair use of the Domain Name. Indeed in this situation, it seems like a reckless disregard of others rights not to investigate whether its popularity stems from the fact that it is the name or trademark of a third party.

Certainly, in the view of the Panel, the Respondentís registration and Ďuseí of the Domain Name has not been such as to give the Respondent any rights or legitimate interests in respect of the Domain Name.

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Bad Faith Registration and Use

Majority Decision of the Panel (Presiding Panelist Dissenting)

Rule 4(a) of the UDRP requires demonstration that the Respondent/Registrant registered and used the Domain Name in bad faith, and provides various tests as a possible means of determining bad faith. These are not exclusive tests, however, and the Panel is authorized to make its determination on any other basis of law or fact deemed appropriate. One test the Panel believes is in its purview relates to determining which facts and allegations to believe as between the parties.

Despite the breadth of the bad faith allegations against the Respondent and the detailed nature of the response to each of those allegations, the decision here seems to turn on a very narrow issue, so that the Panel sees no need to explore the wider issues. It is, however, a difficult case since it illustrates one of the problems of conducting arbitrations with only written materials and no opportunity for the Panel to actually see the parties and their witnesses, in order to judge the veracity and integrity of the evidence when it is in direct conflict.

In the final analysis, this decision does not turn specifically on the law or the UDRP rules, but on the evidence submitted by the parties and the Panelís assessment of what can reasonably be expected of the parties. Since a personís true intentions are rarely expressed in these cases, the Panel has come to its conclusion taking an objective view of what a reasonable person in the position of the Respondent can be expected to have known and understood.

In this case, the Panel is faced with diametrically opposed claims and an assertion of innocent registration of an expired domain name which the Respondent openly admits it selected and registered solely because it ascertained that it had a high "hit rate" or record of use from Respondentís examination of use of the domain as shown by various search engines. In so stating, Respondent establishes that it and its personnel obviously have far more sophistication in matters relating to the Internet and domain names than most users. The Panel also has here a situation in which the Respondent clearly is not using the domain name for anything other than as a ruse to make it appear it is using it in good faith. (See our finding, above, that Respondent has no rights in the domain name).

The UDRP requires a showing that the registration and use of the Domain Name be in bad faith. Thus, the question here is whether bad faith may be shown by the Respondentís convenient failure to know, find out, or realize that a domain was a strong, well known trademark in a foreign country, without imposing on Respondents a general obligation to do worldwide trademark searches or extensive research into the history of the Domain Name and its prior owners. This seems to us all the more important where the Respondent is an expert in the use and registration of domain names for commercial purposes, as the evidence shows is the case here.

This Panel wishes to make clear that it does not believe the UDRP ordinarily imposes on a typical Respondent any affirmative obligation to make extensive trademark or other factual searches, but it does believe that a Respondent cannot ignore the obvious. Respondent, however, is not an ordinary, unsophisticated Internet user, but an entity and persons who develop websites, own and have registered a number of domain names, and who demonstrated from their own comments that they know how to find expiring domain names, how to determine how they have been used in the past, and where this commercially valuable information exists. They seem, however, to believe they have no legal obligation to look at what they have available before they act, and that they can claim innocence of facts obvious to anyone with their sophistication in this area of business.

As one Panelist suggested, if one finds an automobile in front of his house, with the doors unlocked and the ignition key in the lock, one cannot blithely assume that because the car is available in this manner that no one owns it and that is available for the taking. There are clearly circumstances in which a domain name registrant has at least a minimal obligation to find out and consider the obvious facts. In the case of an expired registration that has an especially high hit rate, there has to be a reason the prior registration expired, and that reason cannot be ignored under a claim of good faith.

Respondentís claim that "the purpose of [its] registering [expired] domain names is to use them for creating web sites for Respondent's customers, as well as offering its own services," rings hollow when it claims that it did not know the domain was also a trademark or what the word "RENFE" stood for because it was a foreign term. Rational business people do not register a domain name for their own use or those of their customers when they have no idea what the word means or why it has a high hit rate. Such a claim stretches truth to the breaking point. Quite obviously, there has to have been some other reason to register the Domain Name, and that is because the Respondent either knew or should have known that if a domain has a high hit rate, it must belong to a business that has been using it. Given the facts of this case, the experience of the Respondent in selecting and using domain names, and what information is virtually automatically available when looking for domains with high hit rates, we simply do not believe Respondentís assertion that it did not know who RENFE is, or that it was likely a trademark. In our judgment, Respondent either actually knew or strongly suspected it was a trademark of a major business, and elected to ignore reality. This is not good faith registration and use. While there is no legal requirement of searching to learn for sure, one cannot argue good faith, and ignore the obvious.

The Respondent states categorically that when it first selected the Domain Name it did not know of the Complainant or that RENFE was the trade mark of the Complainant. Respondentís selection of the Domain name is claimed to have stemmed entirely from its database searches identifying (a) the term Ďrenfeí as a popular search term for internet users and (b) the expiry of the domain name, <renfe.com>. Tellingly, Respondent acknowledges the very way in which people customarily find out about the owners of domain names on the Internet, when it states: "Respondent first came across the "renfe" term when it was performing one of its search-engine database searches to look for commonly-searched terms on the Internet."

The Panel acknowledges that RENFE is not a name that is likely to be of any significance to anyone unfamiliar with Spain and its railways. In fact, two of the three Panelists acknowledge that they were unaware of the meaning of the acronym before this case. However, as a part of the Panelís effort to ascertain what information was available on these very same search-engines that Respondent admits to using, the Panel discovered that when doing a search on the RENFE term virtually every single search-engine used listed as the very first entry, a Spanish language entry listing <www.renfe.es> as the website of the Spanish Railway. For example, this is the first entry that the Google search-engine displays:

Renfe - [ Translate this page ]
Proveedores, Oficina virtual de atencion ... Público / 2001
(Ayudante Ferroviario). Copyright © 2000 Renfe.
Description: Red nacional de Ferrocarriles Españoles. Todos los horarios y estaciones con posibilidad de compra...
Category: World > Español > Países > España > Transportes > Ferroviarios
www.renfe.es/ - 14k - Cached - Similar pages

In fact, had Respondent made this search within a few weeks of the <renfe.com> domain expiring, it is likely that the search engine would also have listed, in English, the entry for the old website home page found at <www.renfe.com>, since such information is often still there for a number of months, even when a page is no longer available after the domain registration expired. In this single entry, Respondent would have seen that this domain name was the acronym of the Railroad and been placed on notice that it was improper for Respondent to register the Domain.

The Panel, to put it bluntly, does not believe that any experienced adult Internet user could find such an entry in the search-engines and not instantly recognize that the term "RENFE" was the designation for the Spanish Railway and most likely a trademark. Under these circumstances, the searcher is on at least constructive notice that the domain name was likely a trademark. In this factually limited situation, the searcher is not entitled to ignore the obvious. This is especially so when the current domain name registration forms all require an assertion by the registrant that he is not aware of anyone else that might have a claim to this name.

In the judgment of this Panel, the assertions of Respondent here are not credible, and we are unwilling to accept these statements in the Response as the truth. We therefore exercise our right as a Panel to reject Respondentís statements as unconvincing, and to accept the circumstantial evidence of bad faith inherent in the facts of this case.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith. Those circumstances involve the Respondent registering the Domain Name with intent to damage the Complainant in some way or to take unfair advantage of the Complainant or the Complainantís goodwill. We believe that in this situation Respondent deliberately registered the Domain Name knowing, or at least strongly suspecting, that the Domain Name was a trademark of another, which is not good faith under the UDRP. Whether Respondent actually offered to sell the Domain Name, or was just waiting for an offer to buy it back, is not relevant under the unique facts of this case.

The Panel holds that where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.

Therefore, the Panel finds that under the unique circumstances of this case, the Complainant has established that the Domain Name was registered in bad faith and is being used in bad faith by Respondent.

 

7. Cautionary Comments of The Panel

All members of this Panel are concerned that this decision not be misconstrued by subsequent Panels as holding that in every case a registrant is charged with conducting a detailed investigation into the reasons a domain name is available for registration. We do not believe that there is any such obligation on the part of a registrant, except in the unique circumstances and facts of this or other similar cases. Perhaps such an obligation might arise only where, as here, the name is available only because of its sudden expiration. For example, had the name expired for more than six months, it might be reasonable to assume that it had been intentionally abandoned, but that does not appear to be the case here.

Nor do we hold that a registrant has an obligation to conduct a world-wide trademark search before registering any domain name, since this would be costly and unnecessary in many, if not most, cases. Many registrants do, in fact, run a national trademark search before adopting a domain name, but there is no such requirement in the UDRP since these rules are intended only to deal with abusive or bad faith registration of domain names. We believe that on these peculiar facts, there was a bad faith registration and use, which is the only reason we are ordering the transfer of the Domain Name to Complainant here. We simply do not believe Respondentís claims of innocent registration of this Domain Name.

We hold here only that when the facts demonstrate clearly that someone else has been extensively using the Domain Name and that it has obvious value, at least some minimal investigation is required in order to dispel the logical inference that the Domain Name is someone elseís trademark or at least anotherís well known business name.

Intentional and conscious ignorance of the facts is not good faith registration and use.

 

8. Decision (by a majority)

The domain name <renfe.com> is ordered transferred forthwith to the Complainant for the reasons expressed in this decision.

 


 

Jose Carlos Erdozain
Panelist

G. Gervaise Davis III
Panelist

 


 

DISSENT

 

I respectfully dissent from the majority decision of the Panel.

By way of introduction I should stress that I am not favourably disposed towards the Respondentís modus operandi. I am of the view that the interests of internet users (and trade mark owners in particular) would best be served if the Respondentís activity under review here be prohibited. However, I do not believe that the UDRP, as currently framed, catches this activity.

The facts are reasonably clear. The Respondent has access to software, which enables him to identify commonly-searched terms on the internet. I take this to be specialist software very different from the normal search engines used by the average internet user. By this means he identified RENFE as a commonly-searched term. RENFE is a meaningless term in English, the Respondentís language. Indeed, it is likely to be meaningless to anybody unfamiliar with Spain and/or the Spanish railway system.

For all the Respondent knew, RENFE, as a commonly-searched term, might have been a place name, a personal name, a word in a foreign language, an acronym or a trade mark. He did not care. All that was important to him was that it was a commonly-searched term.

Subsequently, the Respondent learnt from other software available to him that the domain name registration for Ďrenfe.comí had lapsed and was available to him. The Respondent snapped up the Domain Name and connected it to a webpage advertising his services.

Having regard to the severe doubts of the majority of the Panel as to whether the Respondentís software in fact does what the Respondent claims it does, it is apparent from the Complaint and is acknowledged by the Complainant that the Respondent has access to and is familiar with the workings of extremely sophisticated name-tracking and name-grabbing software.

The majority of the Panel have branded <www.renfe.com> webpage as "nothing more than a Ďplaceholderí, commonly used by cybersquatters for the purpose of making it appear that the Respondent is making a legitimate commercial use of the Domain Name".

I am afraid that, while I agree that the Respondentís modus operandi cannot give him rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, I can see no justification for branding the Respondentís webpage as a Ďplaceholderí of the kind described. If I was an internet service provider and wanted to advertise my services and had access to domain names, which I knew to feature terms commonly-searched by internet users, I would welcome the opportunity of connecting those domain names to my website. In so doing I would know that I was advertising my services to a new and substantial category of internet users. Accordingly, I can see a good and justifiable commercial reason for the Respondentís modus operandi, quite distinct from the aims of cybersquatters, subject to the very important proviso, of course, that he does not know that the name in question is someone elseís trade mark (see below).

In my experience, so-called Ďplaceholderí sites are sites usually not of the alleged cybersquatter, but default pages of his ISP, advertising the services of the ISP. In this case, as is apparent from paragraphs 36 et seq. of the Complaint and acknowledged by the Complainant, the Respondent (alias Mr. Peppler) is an ISP and the Domain Name connects directly or indirectly to a variety of sites providing services of the Respondent (albeit under other names of Mr. Peppler). Exhibits 5, 7 and 9 to the Complaint confirm this.

As indicated, a problem only arises if the Respondent knows that the chosen name for the Domain Name is someone elseís trade mark. The Respondent says that when he registered the Domain Name he was not aware that it was the trade mark of the Complainant. While the majority of the Panel clearly have severe doubts as to whether the Respondent is telling the truth, the majority decision of the Panel proceeds on the basis that the Complaint should succeed even if he is telling the truth. I have no reason to doubt the Respondentís explanation and the onus is on the Complainant to disprove it.

The majority of the Panel have assumed that most, if not all, commonly-searched terms featuring as domain names will be "someone elseís trade mark or at least anotherís well-known business name". They say that there is a "logical inference" to that effect. I disagree. Many geographical names will be both commonly-searched terms and domain names. The same can be said of ordinary dictionary words and terms such as "IP rights", my own firmís domain name.

Nonetheless, the Respondent, had he devoted any time at all to the matter, must have realised that there was a real possibility that RENFE might have been somebody elseís trade mark. Manifestly, had he conducted the simplest of searches, he would have instantly learnt that RENFE was the name and trade mark of the Complainant.

While I have every sympathy for the Complainant and while I can understand my colleaguesí distaste for a practice, which enables internet opportunists to snap up names such as that of the Complainant, I cannot accept that this amounts to cybersquatting. To my mind a cybersquatter (within the UDRP definition) has to know of the existence of the Complainantís trade mark as a trade mark when registering the domain name in question. A simple search would have given the Respondent the requisite knowledge, but there is no evidence that he undertook that search.

If a concept of constructive knowledge (i.e. "he must have guessed and had he made the simplest of searches he would have known; he ought to have made the search, therefore he is to be taken as having known") is introduced into the UDRP, there is no knowing where this will all lead. The "Cautionary Comments" of the majority of the Panel acknowledge the risk. Had the name in issue been a global brand, which the Respondent could have been expected to know, I might have disbelieved his story, but in this case the name is not one that he could have been expected to have known. The only member of the Panel to have known the name was the panelist from Spain.

If, as may be the case, the modus operandi of the Respondent is to be condemned, the proper course is to amend the Policy, not to "stretch" the Policy to deal with an activity that it was not designed to cover. The duty of the Panel is to do justice within the terms of the Policy.

I am strongly of the view that the Complainant has failed to prove that the Respondent registered the Domain Name in bad faith and is using it in bad faith. Accordingly, I would have dismissed the Complaint.

 


 

Tony Willoughby
Presiding Panelist

Dated: November 21, 2001