WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intel Corporation v. Intelcompras SA de CV
Case No. D2012-0717
1. The Parties
The Complainant is Intel Corporation of Santa Clara, California, United States of America, represented by Arochi, Marroquin & Lindner, S.C., Mexico.
The Respondent is Intelcompras SA de CV of Hermosillo, Sonora, Mexico, represented internally.
2. The Domain Name and Registrar
The disputed domain name <intelcompras.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2012. On April 5, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same date, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on April 18, 2012.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2012. The Response was filed with the Center on May 9, 2012.
The Center appointed Adam Taylor as the sole panelist in this matter on May 25, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On May 30, 2012, the Panel issued Procedural Order No. 1 noting that both parties had included amongst their exhibits a number of documents in Spanish whereas the language of administrative proceeding was English. In accordance with paragraph 11(b) of the Rules, the Panel requested that, by June 5, 2012, both parties submit English translations of the non-English exhibits, or parts thereof, which they wished the Panel to consider. Each party supplied a batch of translations within that deadline.
4. Factual Background
The Complainant was incorporated in the United States of America on July 18, 1968, and has the distinction of having created the world’s first ever microprocessor. The Complainant is now a well-known global company which is engaged in the manufacturing of semiconductor chips, microprocessors, integrated circuits and other computer components.
The Complainant owns the following United States trade marks for the word INTEL: Nos. 938772 and 0939641, both dated February 19, 1971, and No. 1022562 dated October 21, 1974, all in international class 9.
The Complainant also owns the following Mexican trade marks for the world INTEL: (1) No. 277715 dated July 14, 1982, in class 26; and (2) Nos. 582460 and 582468, both dated June 5, 1998, in classes 38 and 58 respectively.
The disputed domain name was registered on May 24, 2004 by or on behalf of Eduardo Noriega and, since then, has been used for a website offering a range of third party goods for sale. Originally Mr. Noriega operated the business at the website as a sole trader using the name “Intel Compras”. On September 27, 2007, Eduardo Noriega incorporated the Respondent as a Sociedad Anonima in Mexico, which took over Mr. Noriega’s business. At some point following its incorporation, the disputed domain name was transferred into the name of the Respondent.
The Complainant sent a series of cease and desist letters to the Respondent starting in July 2011. The Respondent did not reply.
5. Parties’ Contentions
Identical or Confusingly Similar
On August 23, 2010, the Mexican Institute of Industrial Property (“IMPI”), issued a declaration of fame in México for the trademark INTEL, based on Mexican trade mark 277115. According to the Mexican Law of Industrial Property, this trade mark is protected under any class in Mexico since its registration in July 20, 1982.
UDRP panelists have recognized that use of famous trade marks in domain names is susceptible to confuse the public.
On May 28, 2004, the IMPI issued a ruling cancelling the trade mark INTEL MEX on the grounds that INTEL is a famous trade mark since at least October 23, 1998.
The Complainant owns a range of Intel-related domain names including <intel.com> registered March 1986.
The Complainant is the only company entitled to exploit the INTEL trade marks.
The disputed domain name is confusingly similar to the Complainant’s trade mark. The word “compras” means “purchases” in English. This is a descriptive element of the disputed domain name which does not distinguish it from the trade mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name. It owns no trade mark or other registration that would constitute a legitimate interest. It would be impossible for the Respondent to acquire a legitimate interest due to the fame of the Complainant’s mark.
It is clear that the Respondent is located in Mexico and is aware of the fame of the Complainant’s mark. The Respondent applied to register “INTELCOMPRAS” as a Mexican trade mark but this was rejected on the basis of the Complainant’s prior trade marks.
The Respondent is not known by the name “Intel” and cannot be so known because of the Complainant’s trade marks.
Even if the Respondent asserts that it is known as “Intelcompras”, this should be regarded as bad faith behaviour as the Respondent was taking advantage of the INTEL trade mark.
The Respondent was incorporated by means of “low trickery” in 2007, three years after the registration of the disputed domain name. This supports the Complainant’s argument as to the Respondent’s lack of legitimate interests and bad faith.
The Respondent lacks rights or legitimate interests because it is using the disputed domain name to attract and confuse Internet users seeking the Complainant’s products. On its website, the Respondent sells computers, memory devices, software, hardware, communication devices and other products covered by the Complainant’s trade marks.
Registered and Used in Bad Faith
The Respondent registered the disputed domain name to take advantage of the goodwill and fame of the Complainant’s trade mark. The Respondent has created confusion with the Complainant’s mark in order to divert Internet users to the Respondent’s website with a view to selling them the same products as those produced by the Complainant. This confuses Internet users into thinking that the Respondent is a licensee or authorized dealer / distributor of the Complainant’s products. The Respondent has registered and is using the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
The Respondent was aware of the Complainant’s fame when it registered the disputed domain name.
Furthermore the Respondent’s website includes products from competitors of the Complainant, such as AMD.
The Respondent provided a false address when registering the disputed domain name. This is further evidence of bad faith.
The Respondent has ignored the letters before the action and continued to use the disputed domain name.
Identical or Confusingly Similar
Due to of the special circumstance that the descriptive term in question “compras” is part of the Respondent’s legal and officially recorded name, the disputed domain name should not be split into two components for the purpose of a confusion assessment under the Policy.
The term “Intelcompras” is inherently and sufficiently distinctive on its own not to be confused with the INTEL mark from a visual, aural and overall impression standpoint.
In addition to the constituents of the disputed domain name, there are relevant extrinsic elements such as the absence of any likelihood of confusion amongst Internet users who have differentiated between the Complainant’s goods and the Respondent’s services for over eight years. A Google search for the term “Intelcompras” produces no results relating to the Complainant.
Rights or Legitimate Interests
The Respondent is one of the largest online market operators in Mexico with 120,000 visitors on average per month, sales in excess of 24 million pesos during 2011, and over 10,000 items on offer ranging from home theaters, gadgets, printers, cameras, supplies, power supply units, projectors, software, routers, blank CD’s, laptop cases, to remote control helicopters, office furniture, communication devices, extended warranties, TV mounts, and so forth.
The Respondent markets goods online for 121 leading manufacturers, none of which include the Complainant or its competitors.
To date, the website at the disputed domain name has been in use for nearly eight years without interruption in connection with the Respondent’s sales operations.
In addition, the Respondent has expertise in the setting-up and management of online stores for leading organisations.
Both Wikipedia and the highly reputable Merriam-Webster Dictionary confirm that “intel” is a widely used abbreviation for “intelligence”. A sworn statement from the Respondent’s founder confirms that it was in the context of intelligence that its abbreviation “intel” was chosen. The idea was that the customer was going to be able to make a “compra inteligente” (intelligent purchase), and because the Respondent is in the online selling business and its clients are expected to buy (comprar), its name made perfect sense.
The Complainant’s trade mark rights, whatever the degree of notoriety, do not preclude the existence of legal rights and legitimate interests on the part of the Respondent.
The scope of the Policy is limited to clear cases of abusive registration and bad faith use of domain names where it is demonstrated the respondent does not hold any rights or legitimate interests whatsoever.
The Complainant has not discharged its burden of demonstrating that the Respondent cannot avail of paragraph 4(c)(ii) of the Policy.
The Respondent’s corporate name is sufficient to generate rights and legitimate interests. A company name licence under Mexican federal law grants its holder the exclusive right to use the name in Mexico in connection with its commercial activities. These federal exclusive rights have been found to give rise to rights and legitimate interests under the Policy.
In addition, the Respondent has been genuinely trading under its company name, as evidenced by its annual tax returns amongst other things.
The Respondent also holds federal exclusive rights under Mexican Industrial Property Law arising from its use of the term “Intel Compras” as a trade name since May 2004. The name has been used on the website without interruption since May 2004. It was originally used by Eduardo Noriega as a trade name for his start-up business until the time that he incorporated the Respondent. The reason for incorporation was that his public sector customers asked him to do so to facilitate the government’s contracting process. His trade name rights are deemed to have been assigned to the Respondent.
Registered and Used in Bad Faith
The incorporation of the Respondent, the use of the name in commerce for nearly eight years and the content of the Respondent’s website all negate unfair advantage.
The Respondent’s website is not “spurious”. It does not offer or sell the same products as the Complainant or pass off as an entity related to the Complainant and does not copy the Complainant’s own website.
The Complainant has not alleged, nor could it prove, that the Respondent contacted the Complainant for the purpose of sale of the disputed domain name, or that the disputed domain name was auctioned or parked, or that that there has been infringement of the Complainant’s trade mark, or that there has been actual confusion on the part of Internet users.
The Respondent did not provide false information on the WhoIs database. This was an error on the part of the Complainant’s notary public.
The excessive eight-year delay by the Complainant in filing the case lends credibility to the Respondent’s case and detracts from the Complainant’s case.
The declaration of fame issued by IMPI is of itself insufficient to prove any of the three limbs under paragraph 4(a) of the Policy. Under Mexican trade mark law, the effect of a declaration of fame is limited to preventing registration of a confusingly similar trade mark but not the registration and use of a disputed domain name. Moreover, the declaration of fame was only issued in 2010 whereas the disputed domain name was registered in 2004 and the Respondent’s company name was legally adopted in 2007. Such declaration cannot have retrospective legal effect so as to affect a prior legal contract (domain name registration agreement), nor can it affect validly acquired legal rights such as the Respondent’s federal exclusive right to use its company name throughout Mexico.
Reverse Domain Name Hijacking
The following circumstances warrant a finding of Reverse Domain Name Hijacking:
1. The lack of merit and supporting evidence in the Complaint.
2. The Complainant’s actual knowledge of the existence and validity of the Respondent’s federal exclusive rights.
3. The Complainant’s inconsistent behaviour in alleging consumer confusion in the Complaint whilst its very own agents had either purchased goods or addressed inquiries to the Respondent about goods unrelated to the Complainant.
4. The Complainant’s failure to meet its burden of proof under each of the three requirements of the Policy
5. The Complainant’s failure to distinguish the precedents cited from the facts of this case.
6. The Complainant’s failure to presumptively demonstrate that the Respondent could not avail itself of the defences allowed by paragraph 4(c) of the Policy.
7. The Complainant’s false representation regarding the purported retrospective effect of IMPI’s declarations of fame.
8. The Complainant’s malicious allegations of the Respondent’s “low trickery” and its “spurious website” to fabricate a non-existing cybersquatting case.
9. The Complainant’s disparaging allegation that the Respondent provided a false address on the WhoIs database.
6. Discussion and Findings
A. Identity of Respondent
Before dealing with the substantive Issues, the Panel will address a procedural issue as to the identity of the Respondent. The Complaint named both Intelcompras SA de CV and Eduardo Noriega as co-Respondents. The Respondent argues that Intelcompras SA de CV is the sole registrant of the disputed domain name and that therefore only this entity should be named as Respondent in the proceeding. The verification response provided by the registrar does indeed name this company as sole registrant and the only mention of Eduardo Noriega is as administrative contact.
As the panel observed in AFMA, Inc. v. Globemedia, WIPO Case No. D2001-0558, neither the Policy nor the Rules provide expressly for the naming of multiple respondents. Rather, the Rules are explicit that the respondent in a UDRP proceeding is the registrant. Rule 1 states: "Respondent means the holder of a domain-name registration against which a complaint is initiated." There is no provision for naming as additional respondents any third parties, such as administrative contacts or officers of the registrant.
Accordingly, the Panel accedes to the Respondent’s request and dismisses Eduardo Noriega as a formally named Respondent in this proceeding.
B. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the mark INTEL by virtue of its registered trade marks as well as common law rights derived from the extensive and worldwide use of that name.
The disputed domain name consists of the Complainant’s trade mark combined with the descriptive term “compras”, which means “purchases” in Spanish.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. WIPO Overview 2.0 goes on to state that application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.
The Respondent argues that, because the disputed domain name equates to its legal recorded name, the disputed domain name should not be split into two components when assessing confusing similarity under the Policy but, rather, that it should somehow be considered as a unified term. However, the Panel does not see why the fact of embodiment of the disputed domain name in the Respondent’s corporate name should cause the Panel should take a different approach to the standard one outlined in WIPO Overview 2.0. In the Panel’s view, it is sufficient for the purposes of confusing similarity that the Complainant’s trade mark is clearly recognizable within the disputed domain name, accompanied by the term “compras”, which is plainly descriptive.
The Panel also disagrees with the Respondent’s assertion that the Panel should also take into account extrinsic factors such as the alleged lack of likelihood of confusion over the eight years of operation of the Respondent’s website, evidenced by Google searches for the Respondent’s name which allegedly do not show any mention of the Complainant. The Panel does not consider it appropriate to engage in a detailed assessment of such external criteria when dealing with this first factor under paragraph 4(a) of the Policy. As explained in WIPO Overview 2.0, at this stage the Panel is simply concerned with a direct comparison between the trade mark and the disputed domain name.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As a preliminary point, the Panel observes that, while it has concluded above that the current registrant of the disputed domain name, Intelcompras SA de CV, should be the only named Respondent in this proceeding, nonetheless there is no material distinction to be drawn between the company and its founder, Eduardo Noriega. Accordingly, unless stated otherwise, references to “the Respondent” below include Mr. Noriega (and, in particular, his activities before the incorporation of his company).
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name... If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Under paragraph 4(c)(i) of the Policy, the following, if found by the Panel based on its evaluation of all the evidence presented, is sufficient to demonstrate rights or legitimate interests: “before any notice … of the dispute, …use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services”.
The Respondent has undoubtedly used the disputed domain name in connection with an offering of goods or services since well before notice of this dispute. The issue is whether or not the offering was bona fide.
First, it is evident that, since 2004, the Respondent has carried on a real and substantial business in connection with the disputed domain name, including use of a trading name which corresponds to the disputed domain name. The Respondent has produced invoices and annual tax returns indicating use of the trading name “Intel Compras” (and variations) since well before it received notice of this dispute in July 2011. The Respondent has also provided evidence indicating that it operates a major sales website in Mexico, including Google Analytics statistics showing over one million unique visitors to its website over the period May 2011 to May 2012.
Furthermore, UDRP panels have noted that a plausible non-infringing explanation for selection of the domain name is evidence that use is bona fide, whereas deliberately infringing use should not be so viewed. See e.g., Webvan Group, Inc. v. Stan Atwood, WIPO Case No. D2000-1512.
The Respondent’s founder, Eduardo Noriega, has provided a sworn statement explaining his reason for selecting the name “Intel Compras”. Mr. Noriega, does not deny that he was aware of the Complainant at the time of registration of the disputed domain name in 2004, nor indeed could he credibly have done so. He does claim, however, that:
“[T]he Intelcompras’ identifier which makes up the corporate designation and the domain name under my company’s website, was devised independently with the aim of adopting an original name to convey the idea of “an intelligent purchase” where intel was used as an abbreviation of intelligence and without having made any mental association with any third party’s mark.”
The Panel does not of course automatically accept a respondent’s version of events, even if comprised in a sworn statement. However, the Respondent has also produced dictionary entries to the effect that “intel” is commonly used as an abbreviation for “intelligence”. And, importantly, Mr. Noriega’s explanation is corroborated by an application for a licence of incorporation filed with the Mexican Ministry of Foreign Affairs on September 27, 2007, which set out the proposed company names in order of preference as follows:
INTELCOMPRAS DE MEXICO
SU COMPRA INTELIGENTE”
The last name shown means “your intelligent purchase”, indicating that the name “intel” was indeed likely to have been chosen as an abbreviation of “intelligence”, as the Respondent says, and not by reference to the Complainant’s mark. While this application was made some three years after the Respondent started using the name, it is nevertheless a good indicator of the Respondent’s state of mind at the time of initial selection of the disputed domain name. The Panel thinks it highly unlikely that this potential name was added to the list as part of some convoluted plot to retrospectively justify the Respondent’s choice of name in case it was ever challenged by the Complainant. Certainly there is no evidence to such effect. Indeed it appears that the Respondent has been using “Su compra inteligente” as a marketing strapline since before incorporation of the Respondent. The Respondent has produced two invoices from March and May 2007, which are both headed “Intelcompras.com” and which state underneath: “Su compra inteligente”.
It is relevant also to consider the nature of the Respondent’s offering on its website. The Complainant says that the Respondent sells computers, memory devices, software, hardware, communication devices and other products covered by the Complainant’s trade marks and indeed it asserts that the Respondent’s very purpose in choosing its name was to generate confusion on the part of Internet users seeking such items. In support, the Complainant exhibits a page from the Respondent’s website offering processors supplied by AMD, a competitor of the Complainant. The Complainant also produces some other pages from the website which list laptops, monitors and other computer hardware for sale.
However, a review of the Respondent’s website as a whole shows that such items are a small part of the very wide range of products offered by the Respondent. The categories of products listed on the Respondent’s site include: home appliances such vacuum cleaners, microwave ovens, washers and driers, irons, hair dryers, refrigerators; television and digital video including TVs, digital video recorders, home theatre systems, remote controls, projectors, screens, accessories; audio and MP3 products; cameras, photography and video; cables and adaptors; cell phones; computers; servers; print, fax and scanning products; records and reports; blank CDs and DVDs; headphones and headsets; network equipment; telephony equipment and components; retail software including project management, administration and finance, antivirus etc.; office furniture including desks and workstations; calculators; typewriters; wall clocks; safety and security products; toys; board games; watches; video consoles; computer games and accessories.
The Respondent has also produced a list of total inventory “on hand” as of May 2012. This runs to some 9,000 different products.
It is not surprising that the massive selection of goods on the Respondent’s website includes some items which compete with the type of products for which the Complainant is known. The Panel does not infer from the relatively small degree of overlap that the Respondent chose its name for some malign purpose vis a vis the Complainant. If the Respondent’s offering had been narrower and more focused on the kinds of products for which the Complainant is known, then the Panel might have had more reason to doubt the Respondent’s explanation for its adoption of the term “intel”.
The Complainant invokes the fact of creation of the Respondent as an example of “low trickery” and as further evidence of a lack of rights or legitimate interests. However, the Panel does not read anything sinister into this step. The Respondent says that the reason for incorporation was to meet the requirements of the Respondent’s public sector customers who wished to deal with a company. In any case, there is nothing on the record to indicate that incorporation of the Respondent was anything other than an entirely natural process whereby a sole trader converts to a limited company for legal, tax or other legitimate reasons, and then carries on trading under the same name. The position might have been different if there were evidence of some ulterior motive for the incorporation, e.g. if the step has been taken immediately following receipt of a cease and desist letter complaint letter or some other action by the Complainant.
The Complainant further relies upon the declaration of fame issued by the IMPI in relation to the Complainant’s mark IMPI in 2010 and argues that it would be impossible for the Respondent to acquire a legitimate interest due to the fame of the Complainant’s mark whereas the Respondent strongly disputes the significance of the declaration of fame and, in particular, denies that it can have retrospective effect. The Complainant also points out that the Respondent’s own application for a trade mark for “INTELCOMPRAS” was rejected by the IMPI in 2008 by virtue of the Complainant’s prior trade mark rights.
But it is not within the role or competence of the Panel to assess the impact of the declaration of fame by IMPI or otherwise opine as to whether the activities of the Respondent are or might constitute trade mark infringement under Mexican law. These are matters for the Mexican courts to consider, if appropriate.
The Panel is simply concerned with the issue of whether, before any notice of the dispute, the Respondent has used the domain name in connection with a bona fide offering of goods and services for the purposes of the Policy. In the Panel’s view, neither the existence of the Complainant’s trade mark, even if famous, nor the failure of the Respondent’s own trade mark application, of themselves automatically preclude a finding of rights or legitimate interests on the part of the Respondent.
On the contrary, the Panel considers that the particular circumstances of this case as outlined above are indicative of a bona fide offering by the Respondent, including: (1) the evidence that for many years the Respondent has engaged in a real and substantial business in connection with the disputed domain name under a name corresponding to the disputed domain name; (2) the fact that the Respondent has come up with a plausible explanation for selection of the disputed domain name independent of the Complainant’s mark and which is supported by documentary evidence; and (3) the fact that the Respondent has used the relevant mark in connection with a wide range of goods, the vast majority of which are unrelated to the goods which the Complainant claims to produce or to be associated with and which, indeed, also fall well outside the ambit of the registered trade marks which the Complainant has exhibited in this case. See, e.g., Fuji Photo Film Co Limited and Fuji Photo Film USA Inc v Fuji Publishing Group LLC, WIPO Case No. D2000-0409, where a similar approach was taken.
Accordingly, having carefully weighed up all of the evidence from both parties, and mindful that the burden of proof always remains with the Complainant, the Panel has concluded that, for the reasons set out above, the Respondent has demonstrated rights or legitimate interests.
The Complainant has therefore failed to succeed under the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
It is unnecessary for the Panel to deal with this factor in detail, given its finding under the second element of paragraph 4(a) of the Policy. However, in light of the Panel’s comments above concerning the Respondent’s motive for selection of the disputed domain name, and also the manner of its use, the Panel can confirm that the Complainant would have failed under this head also.
E. Reverse Domain Name Hijacking (“RDNH”)
“Paragraph 15(e) of the UDRP Rules provides that, if "after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding". Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name...
WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP … or … misled the panel; a respondent's use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights..”
In the Panel’s view, this case falls very well short of RDNH. There is nothing to suggest that, when it filed the Complaint, the Complainant knew or should have known that it could not prove one of the essential elements required by the UDRP. Indeed, the Respondent did not choose to respond to the Complainant’s pre-action correspondence and so, at the time of filing the Complaint, the Complainant did not have the benefit of knowing the Respondent’s detailed explanation for its choice of the disputed domain name, still less the evidence which corroborated it. That was a critical issue in this case.
For all the foregoing reasons, the Complaint is denied.
Dated: June 25, 2012