WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intocable, Ltd. v. Paytotake LLC
Case No. D2016-1048
1. The Parties
Complainant is Intocable, Ltd. of Zapata, Texas, United States (“US”), represented by Fasthoff Law Firm PLLC, US.
Respondent is Paytotake LLC of Wilmington, Delaware, US, represented by Roberto Ledesma, US.
2. The Domain Name and Registrar
The disputed domain name <intocable.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2016. On May 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 26, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2016. The Response was filed with the Center June 21, 2016.
The Center appointed Christopher S. Gibson, Enrique Ochoa and Christopher J. Pibus as panelists in this matter on July 11, 2016. The Panel finds that it was properly constituted. Each member of 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 June 27, the Center received a supplemental filing from Complainant titled “Reply to Response to Complaint.” On Jul 2, 2016, the Center also received Respondent’s “Response to Complainant’s Unsolicited Supplemental Filing.”
As the Center has already indicated in a communication to the parties, the Rules provide for the submission of the Complaint by Complainant and the Response by Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. The Panel has considered whether to admit the parties’ supplemental filings and finds there are no exceptional circumstances, such as new and unanticipated evidence, to justify them. Each of the parties’ supplemental filings will not be admitted in this case.
4. Factual Background
Complainant is the business entity behind the musical group, Intocable, a successful Tejano/Norteño recording group. The band’s name is the Spanish word for “untouchable.” Since the band was formed and began recording and performing in 1994, it has recorded and released 16 studio albums, gained a large following and won numerous musical achievement awards. In 2003 Intocable performed at Reliant Astrodome Stadium in Houston and drew a crowd of 70,104, and they later become the first and only band from their genre to perform during the halftime show of a National Football League game.
The band has won multiple Grammy and Latin Grammy awards for Best Mexican/Mexican-American Album (2004) and Best Norteño Album (2005 and 2010), and has garnered seven Latin Grammy nominations, 13 Premios Lo Nuestro nominations and awards, as well as numerous nominations and awards from Latin Billboard, Billboard Regional Mexican Awards, and the American Music Awards. In 2010, Billboard magazine named Intocable the “Group of the Decade” for its genre, and the group was honored again by Billboard with a Lifetime Achievement Award in 2012.
Complainant owns United States trademarks nos. 3,736,728 and 3,736,687 for its INTOCABLE marks, under which the band, Intocable, offers its musical services and sells goods. For at least 20 years from 1994, Complainant has used the INTOCABLE mark in commerce. During this time, Complainant has spent money, as well as time and effort, in advertising, marketing, and promoting the INTOCABLE brand under the marks in the United States and throughout the world, in a wide variety of media formats, including print, television, radio, the Internet, and merchandise.
Complaint has for many years operated a website under the domain name <grupointocable.com>, and uses this domain name also for company email addresses through which it communicates internally, with customers, vendors, and the public.
Respondent is in the business of registering and developing domain names. Respondent’s CEO and founder is a Mexican citizen and resident of Costa Rica for the past 26 years, while maintaining a commercial presence through Respondent in Delaware, US. Respondent has registered hundreds of descriptive word, number and lettering domain names, including Spanish dictionary words. Respondent has never been a party in a UDRP proceeding before this case.
The Domain Name was first registered on March 21, 1998. More recently, during 2014 or 2015, the Domain Name was registered by a third-party and Complainant filed a UDRP case ( WIPO Case No. D2015-1256) against that party seeking transfer of the Domain Name. The case settled and Complainant acquired ownership of the Domain Name on August 12, 2015. Complainant states in detail that through no fault of its own, the registration for the Domain Name expired on March 23, 2016. The Registrar then placed the Domain Name up for auction with its affiliate, NameJet. The Domain Name was purchased at auction and registered by Respondent on April 28, 2016. Complainant emailed Respondent almost immediately on May 3, 2016, claiming alleged infringement of Complainant’s trademark rights and demanding transfer of the Domain Name. Respondent declined to transfer it.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant contends the Domain Name is confusingly similar to its INTOCABLE trademarks because it is comprised of Complainant’s mark in its entirety, plus the generic Top-Level Domain (gTLD) extension, “.com.” Because the gTLD is irrelevant to the Panel’s inquiry for this first element, Complainant contends that the Domain Name is confusingly similar to its INTOCABLE mark under Policy.
(ii) Rights or legitimate interests
Complainant asserts that Respondent has no rights or legitimate interests in or to the Domain Name. Respondent has never been commonly known by the Domain Name; has not used or made demonstrable preparations to use it; and is not making a legitimate noncommercial or fair use of it. Complainant has not licensed to Respondent the right to use the INTOCABLE mark, and Respondent is not otherwise authorized to act on Complainant’s behalf.
Complainant states that on May 3, 2016, the day before receiving a demand letter from Complainant, Respondent was using the Domain Name to operating a parking page with domain broker Sedo.com, and making it available for sale as a Premium Domain on Sedo. Both Sedo pages were written in the English language. After receiving Complainant’s demand to transfer the Domain Name on May 3, 2016, Respondent put up a new Sedo page, this time in the Spanish language, with general information about “untouchables,” which Complainant claims Respondent has used to support an argument that Respondent is acting in good faith by simply providing information to the public. However, the page still offers the Domain Name available for sale and links to the Spanish language version of the Sedo site where it is listed for sale as a Premium Domain.
Complainant states that Respondent put a copyright notice in the footer of the new webpage that appeared after May 3, 2016 (after Respondent had been contacted by Complainant’s counsel), claiming a copyright interest in the page’s content from 1998 through 2016. Complainant argues that this is a false representation intended to mislead, given that Respondent had only recently acquired the Domain Name and Complainant had owned it just prior to Respondent’s purchase of it.
Complainant contends this conduct does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. Complainant thus maintains that Respondent has no rights or legitimate interests in the Domain Name.
(iii) Registered and used in bad faith
Complainant states it has owned and used the INTOCABLE trademarks in commerce for more than 20 years. At the time the Domain Name was initially registered on March 21, 1998, the Intocable group was one of the fastest rising and most popular Tejano/Norteño bands in the world. By the time Respondent, who is fluent in Spanish, acquired the Domain Name in 2016, Intocable had been recognized by one of the music industry’s leading publications, Billboard magazine, as the “Band of the Decade.” That same publication also conferred a Lifetime Achievement Award upon Intocable in 2012, prior to the date on which Respondent registered the Domain Name. Complainant thus asserts that Respondent was undoubtedly aware of Complainant’s prominence in the entertainment industry when the Domain Name was registered. However, notwithstanding Respondent’s knowledge of the fame and goodwill associated with the INTOCABLE mark, Respondent intentionally registered, for commercial gain, the Domain Name comprised of Complainant’s trademarks.
Complainant contends that although the doctrine of constructive notice is applied in narrow circumstances under the UDRP, it should be applied here. According to Complainant, Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the Domain Name. In this regard, Respondent cites two UDRP cases, Sibyl Avery Jackson v. Jan Teluch, WIPO Case No. D2002-1180, and Red Nacional De Los Ferrocarriles Espanoles v. Ox90, WIPO Case No. D2001-0981, where the panels found bad faith based on the respondents’ constructive notice of the complainants’ trademarks. In Red Nacional, the panel reasoned that an experienced adult Internet user could have easily performed a search and recognized that the term “RENFE” was the designation for the Spanish Railway and most likely a trademark. Under these circumstances, the panel concluded that the respondent was on at least constructive notice that the domain name was likely a trademark and was not entitled to ignore the obvious. Complainant argues the same dynamic is at work in this case. When searching “intocable” on Google, every one of the 10 search results on the first page is a reference to Complainant. There is a link to the band’s website, its entry in Wikipedia, its Facebook page, and links to numerous concert venues and ticket brokers offering tickets to Complainant’s live performances. Thus, Complainant asserts that Respondent knew or should have known, and could have easily discovered, that the INTOCABLE mark was in use by Complainant.
Complainant also argues that, as in the Sibyl Avery Jackson and Red Nacional cases (where the domain name registrations had also expired as in this case), the term “intocable” in the Domain Name is a term highly recognizable by search engines, receiving an average of more than 74,000 keyword searches per month according to the Google Keyword Planner Tool. Complainant therefore claims that Respondent, knowing that the Domain Name consists of a single, highly-trafficked search term for a famous musical act, registered it to prevent Complainant from registering the Domain Name reflecting Complainant’s INTOCABLE mark, and Respondent did so in an attempt to extract significant payment from Complainant in exchange for the Domain Name. Complainant concludes this conduct is evidence of bad faith under the Policy.
(i) Identical or confusingly similar
For purposes of this element under the Policy, Respondent concedes that the Domain Name is comprised of a word which is virtually identical to a trademark in which Complainant has rights.
(ii) Rights or legitimate interests
Respondent contends that given its demonstrated business interests, its dictionary word domain name portfolio containing many domain names similar to the Domain Name, the generic and descriptive meaning of “intocable,” and the lack of evidence that Respondent targeted Complainant’s INTOCABLE mark, Respondent has rights and legitimate interests in the Domain Name.
Respondent states that the word “intocable” is a common, generic, Spanish language dictionary word – the word “intocable” means “untouchable” translated into English and is defined as “too powerful or important to be punished, criticized” or “too good to be equaled by anyone else.” Respondent asserts that the word “intocable” is not exclusively or distinctly associated with Complainant – instead, the term is primarily associated with its dictionary meaning.
Respondent’s business model involves registering domain names and developing websites as well as trading in domain names, where Respondent seeks to acquire domain names of value, which may then be held or offered for sale to the public. Respondent acquires generic domain names that may attract a premium price when auctioned in the secondary market. Respondent argues that its registration and use of hundreds of dictionary word domain names – including a number of Spanish language domain names – in connection with various online businesses is strong evidence of Respondent’s intent to use the Domain Name for a bona fide purpose. Respondent states it is well settled that the business of buying and selling dictionary word domain names is legitimate under the Policy. Similarly, purchasing a domain name at auction and offering it for sale is not per se improper and does not make its use illegitimate. Respondent states that a number of UDRP panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used generic term, even where the domain name is identical or confusingly similar to a complainant’s trademark. Moreover, Respondent argues that where a respondent registers a domain name consisting of dictionary terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. The Policy was never intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. Here, however, Complainant has failed to put forth any evidence that Respondent is seeking to capitalize on Complainant’s goodwill.
Respondent’s CEO has submitted a 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. There was never any intent to target Complainant – nor could there have been, as Respondent had no knowledge of Complainant at the time it registered the Domain Name. Instead, Respondent states the Domain Name was registered in good faith and in furtherance of its business practice of purchasing inherently valuable, common use, generic, dictionary word domain names and developing them into business ventures or offering them for sale to the general public, and not to take advantage of Complainant’s INTOCABLE mark. In particular, Respondent states the Domain Name has value in the technology/computer sector for a business venture seeking to offer reliable, or untouchably safe, cyber-security systems. Respondent states that its vision for how the Domain Name can further that venture is expressed on the webpage currently linked to the Domain Name.
Complainant’s claim that Respondent registered and used the Domain Name to target Complainant and to operate a parking page is not supported by the evidence. The evidence submitted by Complainant that Respondent operated a parking page is a screenshot of the landing page linked to the Domain Name that does not list the date it was captured, does not display any sponsored or pay-per-click links, and does not reference Complainant or Complainant’s music services. Respondent thus contends unsupported allegations are insufficient under the Policy, and evidence to meet the Policy’s requirements is necessary. Respondent concludes that it has rights and a legitimate interest in the Domain Name.
(iii) Registered and used in bad faith
Respondent contends that Complainant’s assertions of bad faith are not supported by any evidence. According to Respondent, the sole basis for Complainant’s allegation of bad faith is that Respondent, who is fluent in Spanish, was undoubtedly aware of Complainant’s prominence in the entertainment industry when the Domain Name was registered. Respondent argues that the notion that a Spanish speaking person would associate a common dictionary word (“intocable”) with a relatively obscure Tex-Mex Tejano/Norteño music group is absurd. While Complainant would like the Panel to infer that Respondent purchased the Domain Name at auction for the purpose of selling it to Complainant, such a conclusion is unwarranted in the absence of further evidence. It is not obvious or conceivable that Respondent, who is based in Costa Rica and Delaware, went to the auction with Complainant in mind to obtain a domain name that reflected the trademark or company name of Complainant. Complainant and Respondent are active in unrelated businesses and the INTOCABLE trademark is not generally known.
While Complainant relies on the Sibyl Avery and Red Nacional cases for the proposition that the doctrine of constructive notice should be applied, Respondent emphasizes that thesecases did not involve common dictionary word domain names and are thus distinguishable from the facts and circumstances at issue in the this dispute. Sybil Avery Jackson involved a personal name domain name <sibylaveryjackson.com> and Red Nacional concerned <renfe.com>, the well-known name of Spain’s national railway system.
Respondent urges that Complainant has filed this case in an abusive attempt to label Respondent a cybersquatter and to force Respondent’s hand in selling the Domain Name to Complainant. However, Respondent in good faith purchased the Domain Name at an auction and has not taken a step toward violating any trademark rights owned by Complainant. The mere act of purchasing a domain name at auction does not lead to an inference of bad faith. Moreover, being a domain name broker and investing in domain names does not, alone, make one a cybersquatter. Respondent states that UDRP panels have held that the registration and holding of domain names comprised of common generic and dictionary words for their commercial value may constitute use of the domain name in connection with a bona fide offering of goods or services (i.e., the sale of the domain name itself). Again, Respondent emphasizes that Complainant has failed to submit evidence that Respondent registered the Domain Name in an attempt to extract significant payment from Complainant. Indeed, the only evidence submitted by Complainant supports that Respondent did not register the Domain Name with the bad faith intent to profit from its sale: when approached by Complainant to sell the Domain Name, Respondent declined.
Respondent asserts that Complainant cannot and does not cite a single domain name owned by Respondent that is comprised of trademark terms. Respondent’s ownership of other domain names comprised of and containing Spanish language dictionary words, along with hundreds of other inherently valuable, common use, generic, dictionary word domain names, supports Respondent’s position that it registered the Domain Name for its dictionary word meaning. Nor has Respondent ever been a party in a UDRP proceeding before now. The third element under the Policy requires Complainant to establish that the domain name has been registered and is being used by Respondentin bad faith. Respondent acquired the Domain Name in an online auction on April 28, 2016 – after its prior owner had allowed it to expire. Even if we assume that a prior registrant of the Domain Name used it in bad faith, which is not the case here, bad faith cannot be imputed to Respondent based on the actions of an earlier registrant. Accordingly, because Complainant has not submitted any evidence to support a finding of bad faith registration or use under the Policy, the Complaint must be denied.
(iv) Reverse Domain Name Hijacking (“RDNH”)
Respondent asserts that Complainant has engaged in RDNH and that prior UDRP panels have found RDNH in similar circumstances where a complainant knew or clearly should have known at the time that it filed the complaint that it could not prove one of the elements required by the UDRP: that a respondent's use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith.
Respondent contends that here, Complainant’s effort to obtain transfer of the Domain Name on the basis of alleged cybersquatting of a generic word may itself be indicative of RDNH. Moreover, Complainant filed the Complaint only because it allegedly failed to properly maintain the Domain Name, and because Respondent, in particular, declined to sell after purchasing it at auction. Respondent argues that Complainant’s use of the Policy to attempt to redress its own negligence with no evidence to support its allegations against Respondent is an abuse of the Policy and was done to harass Respondent for refusing to transfer a dictionary word domain name it registered and used in good faith. The baseless arguments made by Complainant under the second and third factors of the Policy, as well as Complainant’s unsuccessful attempt to purchase the Domain Name from Respondent, and efforts to harass Respondent into transferring the Domain Name by filing the Complaint, establish that it was filed in a bad faith attempt to deprive Respondent of the Domain Name to which Respondent has rights. Accordingly, Respondent submits that this Panel should make a finding of RDNH.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
In this case, Complainant has demonstrated longstanding trademark rights in its INTOCABLE mark. The mark has been used in commerce since 1994 and reflects the reputation and goodwill established by the group Intocable, which as indicated above has been considered “Group of the Decade” for its genre by Billboard magazine. The Domain Name incorporates the INTOCABLE mark in its entirety and without any changes, and thus is identical to Complainant’s mark. Respondent does not contest this first element under paragraph 4(a) of the Policy.
Accordingly, Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Panel finds that Complainant in its Complaint made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant indicated that it has never authorized or licensed Respondent to incorporate Complainant’s INTOCABLE trademark in the Domain Name or to use it in any capacity. Complainant is not affiliated with and has never endorsed or sponsored Respondent. Respondent has not been commonly known as “Intocable,” and is not making noncommercial or fair use of it. Complainant also pointed out that on May 3, 2016, the day before Complainant first contacted Respondent about the Domain Name, Respondent was using it by linking the Domain Name to a parking webpage with the domain broker, Sedo.com, and making it available for sale. After receiving Complainant’s demand to transfer the Domain Name on May 3, 2016, Respondent put up a new Sedo page, this time in the Spanish language, with general information about “untouchables,” which Complainant claims Respondent used to support an argument that Respondent is acting in good faith by simply providing information to the public. However, the Domain Name was still available for auction on the Spanish language version of the Sedo site. Complainant also observed that the copyright notice in the footer of the new webpage (appearing after May 3, 2016) claimed a copyright interest in the page’s content from 1998 through 2016, which was false because Respondent had only just acquired the Domain Name. Finally, Complainant asserted that Respondent’s use was not bona fide because Respondent was undoubtedly aware of Complainant’s trademark rights, or should have known of Complainant’s rights, and was thus trading on the fame of Complainant’s mark.
Once a complainant has put forth a prima facie case pursuant to paragraph 4(a)(ii) of the Policy, the burden shifts to the respondent to respond, demonstrating rights or legitimate interests in the domain name, even though the overall burden in the case remains with the complainant.
Here, Respondent in its Response submitted evidence that it operates a business of registering, developing and trading in domain names, where Respondent acquires domain names of value that may be held or offered for sale. Respondent has registered over one hundred such domain names consisting of descriptive words, numbers and letters, including Spanish language words. In this respect, Respondent emphasizes that “intocable” is a common Spanish language word known for its dictionary meaning and not exclusively or distinctly associated with Complainant. Respondent’s CEO submitted a sworn statement indicating that he had no knowledge of Complainant, its trademarks or music at the time he purchased the Domain Name at auction for Respondent. He stated that he registered the Domain Name in furtherance of Respondent’s business practices, not to take advantage of Complainant’s INTOCABLE mark. Respondent further stated the Domain Name has value in the technology/computer sector for a business venture seeking to offer reliable, or untouchablysafe, cyber-security systems. Respondent also indicated that the evidence submitted by Complainant, that the Domain Name is linked to a parking page, shows a landing page that does not display any pay-per-click links and does not reference Complainant or its music services.
The Panel determines 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 observes 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. However, in view of the Panel’s decision under the third element of the Policy below, the Panel reaches no decision on this element, where Complainant has the burden of proving that Respondent has no rights to or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith.
Complainant alleged that Respondent knew of Complainant’s prominence in the entertainment industry when the Domain Name was registered and that, notwithstanding Respondent’s knowledge of the fame and goodwill associated with the INTOCABLE mark, Respondent intentionally registered it for commercial gain. Alternatively, Complainant has argued that, under a constructive notice theory, Respondent should be deemed to have known, and could have easily discovered, Complainant’s rights in the INTOCABLE mark, especially where, for example, the top 10 results of a Google search for the term “intocable” are references to Complainant’s Intocable musical group. Further, Respondent’s CEO is an expert in the use and registration of domain names for commercial purposes, speaks Spanish, is of Mexican nationality (where Complainant’s group has established a large following), and his company (Respondent) is located in the US where Complainant registered its INTOCABLE trademark rights. Complainant therefore claims that Respondent, knowing that the Domain Name consists of a single, highly-trafficked search term for a famous musical act, registered it to prevent Complainant from registering the Domain Name reflecting Complainant’s INTOCABLE mark, and Respondent did so in an attempt to extract significant payment from Complainant in exchange for the Domain Name.
In response to these allegations, Respondent’s CEO submitted a sworn statement that “I had no knowledge of Complainant or of any of its trademarks or music at the time I registered the disputed domain name to Respondent” and “I did not acquire the Domain Name, or any of my domain names, because of their value as trademarks.” In this regard, the evidence indicates that Respondent is in the business of buying and selling domain names, owns a large portfolio of descriptive domain names, and has never previously been a party to a UDRP case. Moreover, it is undisputed between the parties that the term “intocable” in Spanish carries the common meaning, “untouchable.” When Complainant did contact the Respondent inquiring whether Respondent would sell the Domain Name, Respondent declined.
Under these circumstances, 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. In this regard, guidance is provided in the 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 willful blindness, form a basis for finding bad faith?):
Willful Blindness: Some panels have applied a concept of willful 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 concludes 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, since 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 notes 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.1 In conclusion, however, the Panel determines 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 willful blindness as against Respondent.
The Panel also concludes, 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 determines that Complainant has failed to prove that Respondent registered and is using the Domain Name in bad faith.
7. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that if, after considering the submissions, the panel finds that the complaint was brought in bad faith 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.
In view of the Panel’s analysis above, and in particular fair questions concerning Respondent’s right or legitimate interest in the Domain Name, as well as Complainant’s lack of knowledge concerning Respondent and Respondent’s motives prior to the filing of this case, the Panel does not consider this a case of RDNH.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Christopher J. Pibus
Date: July 29, 2016
1 While the change in website content gives the Panel some pause as to Respondent’s assertions, and could be construed in some circumstances to imply an attempt to mask bad faith, such a conclusion would require a greater evidentiary exchange than Policy proceedings allow for.