WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dialoga Servicios Interactivos, S.A. v. Finlead AG
Case No. D2018-2768
1. The Parties
The Complainant is Dialoga Servicios Interactivos, S.A. of Bilbao, Spain, represented by LetsLaw, Spain.
The Respondent is Finlead AG of Wollerau, Switzerland, represented by Muscovitch Law P.C., Canada.
2. The Domain Name and Registrar
The disputed domain name <dialoga.com> is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2018. On December 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 14, 2018, the Center transmitted by email to the Complainant a request for clarification. On December 14, 2018, the Complainant submitted by email an amended Complaint in response to the Center’s request for clarification.
The Center verified that the Complaint, together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on December 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2019. On December 21, 2018, the Respondent transmitted by email to the Center a request for an extension of the Response due date. On the same day, the Center confirmed that the new Response due date was January 10, 2019. The Response was filed with the Center on January 7, 2019.
The Center appointed Andrew D.S. Lothian, Nicholas Weston, and Adam Taylor as panelists in this matter on January 25, 2019. 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.
4. Factual Background
The Complainant is a company based in Spain which provides cloud communications and telecommunications services. It was incorporated in 2007 and states that it has its own network in 29 countries, notably Mexico, Spain, Canada, the United States of America (“USA”), Denmark, and the United Kingdom (“UK”).
The Complainant is the owner of a variety of registered trademarks incorporating the term “Dialoga”, including (1) Spanish registered trademark no. M2754569, filed on February 9, 2007 and registered on August 23, 2007, for the mixed mark DIALOGA consisting of the word predominantly in blue text with the letter “g” made more prominent and in red; (2) Spanish registered trademark no. M2916381, filed on March 2, 2010 and registered on June 9, 2010, for the mixed mark DIALOGA consisting of the word in black text with a prominent red dot above the letter “i”; (3) European Union registered trademark no. 8917155, registered on August 24, 2010, for the figurative mark DIALOGA consisting of the word in black text with a prominent red dot above the letter “i”; and (4) International registered trademark no. 1271927, registered on September 2, 2015, for the figurative mark DIALOGA consisting of the word in black text with a prominent red dot above the letter “i”, designated for Mexico, Turkey, and Ukraine.
According to the WhoIs record, the disputed domain name was created on November 22, 2017, the original registration having expired on October 15, 2017 and such expiry being followed by the redemption grace period. Said original registration was the subject of a previous proceeding under the Policy in which the present Complainant was also the complainant, while the respondent was a previous registrant, namely Dialoga Servicios Interactivos S.A. v. dialoga.com s.a.s and Mr. Jheferson Edgar Saldivar Flores, WIPO Case No. D2017-0435. The complaint in that case was denied. The Panel notes in passing that, as the current Respondent is a new registrant unconnected to the original registrant, which has come into possession of the disputed domain name following expiration and re-registration, the present proceeding does not constitute a refiled case.
The present registrant and Respondent is a Swiss company which is in the business of investing in generic domain names. It owns and leases domain names such as, for example, <hearing.com> and <sound.com>.
The Complainant engaged in correspondence with the previous registrar of the disputed domain name prior to its then expiration date of October 15, 2017. On October 2, 2017, the Complainant requested said registrar to register the disputed domain name in the Complainant’s name with effect from its expiration. On October 2, 2017, said registrar informed the Complainant that it would “proceed to the transfer of [the disputed domain name] toward your company” on October 15, 2017. In later correspondence, such registrar acknowledged that the disputed domain name would only be available for registration via its website or via third party registrars following completion of the corresponding redemption period. The Complainant was unable to register the disputed domain name upon its expiration either via the arrangements which it attempted to put in place with the former registrar or via an alternative registrar.
On January 9, 2018, the Complainant engaged in correspondence with the Respondent. The Complainant initially enquired about the disputed domain name. The Respondent replied indicating that the Respondent was not using the disputed domain name and proposing a license or possible lease. The Complainant requested “conditions for all possible scenarios”. The Respondent replied proposing a license of the disputed domain name for “around EUR 3,000 per month and a possible long term contract with a one-way right to cancel”, along with a right of first refusal. In an internal communication in Spanish whose contents appear to have been inadvertently reproduced by the Complainant in the evidence submitted with the Complaint, and which has been translated by the Respondent, the Complainant proposes to call the Respondent and indicate that it is only interested in a purchase of the disputed domain name and would offer EUR 1,500. The Complainant notes that “the idea is to get them to imply that they will then do something else with it... something we can hold on to in order to prove bad faith on his part…”
On January 10, 2018, ICANN replied to a complaint issued by the Complainant, the substance of which has not been produced with the present Complaint, but from which it may be deduced that the Complainant engaged a backorder service for the disputed domain name which was unsuccessful. ICANN noted that the domain names are registered on a first-come-first-served basis, and that registration of the disputed domain name by a third party may give rise to a private dispute between the Complainant and such third party. ICANN also suggested alternatively that the Complainant reach agreement with such third party, wait and see if the disputed domain name expires, file a lawsuit in the appropriate court against such third party or bring an administrative proceeding under the Policy.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that its DIALOGA trademarks are identical to the relevant part of the disputed domain name. The Complainant adds that confusion could be greater if the fact that the name is identical to its group domain name <dialoga.es> is considered. The Complainant notes that this could greatly affect its internationalization process which has been underway for a long time.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name because it has not commercialized any services or products in connection with it and registered it after the Complainant registered its trademarks. The Complainant notes that the associated website is currently inactive and under construction. The Complainant adds that it has an international presence and that its DIALOGA trademark is commonly known in the telecommunications sector, more precisely in Switzerland where the Respondent has its registered office. The Complainant submits that the Respondent has no commercial or other interests which could relate its business with the disputed domain name and that the Respondent is using it with the unique purpose of obtaining economic benefits from the Complainant.
The Complainant submits that the disputed domain name was registered primarily for the purpose of selling, renting or assigning the title thereof to the Complainant. In this respect, the Complainant focuses on the Respondent’s offer to license the disputed domain name to the Complainant for EUR 3,000 per month, noting that this constitutes valuable consideration in excess of the Respondent’s out of pocket costs directly related to the disputed domain name and is a disproportionate price not corresponding with the registration cost. The Complainant adds that the Respondent rejected the Complainant’s offer to purchase the disputed domain name for EUR 1,500 which is still greater than the Respondent’s said out of pocket costs. The Complainant notes that the Respondent is not using the disputed domain name to develop its business or other good faith use and has placed it under construction since its registration, adding that inactive use or passive holding of a domain name can constitute use in bad faith, as can the mere offer of sale.
The Complainant submits that the Respondent cannot credibly claim to have been unaware of the Complainant’s trademark rights because the Complainant is a global telecommunications operator with widely known Spanish, European, and international trademarks, having its own network in 29 countries and the ability to provide in-house software solutions to other operators. The Complainant adds that it has about 100 employees who provide more than 120 million efficiently managed monthly minutes to companies of a variety of sizes and sectors and notes that it maintains corporate headquarters in Germany, Spain, the UK, USA, Mexico, France, Italy, the Netherlands, and Singapore.
The Complainant asserts that the Respondent knew of the high interest of the Complainant in the transfer of the disputed domain name and that the timing and circumstances of the registration evidences the Respondent’s bad faith. The Complainant adds that the disputed domain name was registered for the purpose of preventing the Complainant’s use thereof and to disrupt the Complainant’s commercial activity.
The Complainant notes various domain names listed on the Respondent’s website for considerable sums of money, including <soft.com> for USD 5,900,000 and <holding.com> for USD 990,000 and argues that this demonstrates bad faith in that the Respondent registers domain names primarily for the commercial purpose of selling, renting or assigning the title thereof.
The Respondent notes that the Complainant fails to acknowledge that the word “dialoga” is a common dictionary word in Spanish, Italian, and Portuguese, meaning variously discuss, converse, negotiate, talk, or dialogue. The Respondent adds that as a common word with an important meaning, “Dialoga” has been adopted by many different companies for different purposes, providing 13 examples including German, Italian, Spanish, Andorran, Dutch, Danish, and Swedish companies involved in diverse business areas. The Respondent notes that there are various third party trademarks in existence for DIALOGA including Spanish registered marks. The Respondent submits that it is indisputable that the Complainant is not the exclusive or even predominant user of the term, adding that before the Complainant’s adoption thereof and afterwards, it has been used by other parties for various purposes.
The Respondent states that no evidence has been submitted by the Complainant to establish to what degree its marks are well-known, if at all, that no evidence of its advertising and marketing efforts, expenditures and revenues have been produced and no information as to whether the brand is a business to business or consumer-facing enterprise. The Respondent notes that the Complainant’s claim to have 100 employees is relatively mid-sized and unusual for an international telecommunications company and argues that without supporting evidence this does not demonstrate that the Complainant’s mark is so well-known and exclusively or predominantly associated with the Complainant that the Respondent registered the disputed domain name because of the Complainant.
The Respondent narrates the means by which the Complainant has attempted to obtain the disputed domain name, namely via the original complaint under the Policy, by seeking a transfer from the then registrar, by using a back ordering service, by a complaint to ICANN, by making an offer to purchase the disputed domain name from the Respondent and ultimately by filing the Complaint. The Respondent narrates the terms of the Complainant’s internal communications, which it has had translated, and submits that this shows an attempt to purchase the disputed domain name when it was aware that its desired price was too low and also shows an intent to use the sales negotiation in a bad faith attempt to obtain evidence to assist with the present Complaint. The Respondent submits that the Complainant’s offer to purchase the disputed domain name does not show the Respondent’s bad faith but, in reality, shows the Complainant’s bad faith.
The Respondent states that it registered the disputed domain name after it became publicly available for registration on the first-come-first-served basis having recognized this as containing a common dictionary word and thus of inherent value, noting that it is found in several major languages spoken by hundreds of millions of people and adding that Italian is one of four official languages of the Respondent’s country. The Respondent states that it believed that the disputed domain name was incapable of being monopolized by any one person and was capable of a multitude of non-infringing uses by innumerable people. The Respondent demonstrates with reference to aftermarket sales data that descriptive dictionary words in domain names often have significant value and are traded on the open market. The Respondent acknowledges that it is the registrant of other so-called generic terms, noting that <sound.com> is leased to a music and sound repository for music professionals and that <hearing.com> was previously leased, among other domain names. The Respondent states that it has no intention to use the disputed domain name for any infringing manner and has not done so. The Respondent denies prior knowledge of the Complainant or its brand, adding that it did not solicit the Complainant at any point but was itself solicited.
The Respondent acknowledges that the Complainant’s marks are likely to be considered to be confusingly similar to the disputed domain name and that it likely meets the burden of standing pursuant to the first element test. The Respondent however notes that the Complainant’s marks are limited to a single class of services, telecommunications, and are limited geographically, and that the Complainant appears not to have any word marks. The Respondent speculates that this may be because the word “dialoga” is descriptive in Spanish of the nature of telecommunications services, noting that the Panel in Dialoga Servicios Interactivos S.A. v. dialoga.com s.a.s and Mr. Jheferson Edgar Saldivar Flores, supra, made a similar observation. The Respondent also submits that the Complainant does not primarily use the <dialoga.es> domain name but forwards this to its primary domain name, <dialo.ga> which is a Gabon country code domain name. The Respondent argues that the Complainant is thus seeking to upgrade its domain name for a preferable “international” one.
The Respondent notes that it registered the disputed domain name relatively recently and is under no obligation to commercialize it. The Respondent submits that it has been long held in UDRP disputes that where a domain name is “generic”, the first person to register it in good faith is entitled to the domain name regardless of any pre-existing trademark rights. The Respondent submits that it has an inherent legitimate interest in the disputed domain name because it is generic, adding that where a domain name and trademark comprise no more than a single, short, common word, the rights/interests inquiry is more likely to favor the domain name owner. The Respondent asserts that it is using the disputed domain name in connection with its business of creating and supplying names for new entities and that it has long been held that speculating and trading in so-called generic domain names constitutes use in connection with a bona fide offering of goods or services and thus a legitimate interest under the Policy.
The Respondent states that it had no awareness of the Complainant and that there is no evidentiary basis to conclude otherwise or to infer such awareness, noting that even if it had been aware of the Complainant’s marks there was no basis for the Respondent to conclude that these entailed exclusive rights over a “generic” word. The Respondent submits that it would not have been prevented from registering a dictionary word in good faith, considering how common and widespread its use is for all manner of things, adding that since such domain name became available following an expiry and in the Respondent’s words, thus “abandonment”, a domain name registrant should be more confident that it could lawfully register it.
The Respondent denies that the Complainant’s assertion that the disputed domain name was registered primarily for the commercial purpose of selling or renting it is bad faith as understood by the Policy, which it says requires that the purpose must specifically be to sell to the Complainant or a competitor thereof. The Respondent states that there is no evidence of such a purpose, noting that the Complainant fails to explain why the Respondent did not solicit the Complainant to purchase the disputed domain name. The Respondent notes that responding to an offer to purchase is not considered bad faith and that it had the right to set whatever price it deemed appropriate, and in particular to set a market price for a dictionary term domain name, regardless of the value the Complainant might have anticipated. The Respondent submits that in the absence of an intent to capitalize on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is also a generic term, adding that its value is not derived from the Complainant’s adoption of it as a brand. The Respondent states that the Complainant’s claim to being known globally is unsupported by evidence and contends that UDRP panels have generally rejected the concept of “constructive notice” of a complainant’s trademark, even when presented by evidence of widespread fame which is lacking in this case.
The Respondent contends that there is no evidence to support the Complainant’s proposition that the purpose of the registration of the disputed domain name was to disrupt the Complainant’s commercial activity and adding that such proposition ignores numerous third parties using the same or similar marks and overlooks the common dictionary meaning. The Respondent submits that the Complainant incorrectly relies on the concept of passive holding, noting that this is not determinative of bad faith use, absent a finding of bad faith registration. The Respondent notes that there is no evidentiary basis for a finding of bad faith registration, nor was the Respondent under any obligation to develop a website for the disputed domain name.
The Respondent seeks a finding of Reverse Domain Name Hijacking, arguing that this is a classic “Plan B” case, namely using the Policy after failing in the marketplace to acquire the disputed domain name. The Respondent asserts that the present case is “Plan F” following other attempts to seize the disputed domain name, including one involving an attempt to mislead the registrar into making a transfer. The Respondent argues that where a complainant has implicitly mischaracterized its trademark rights as conferring exclusivity over what it deems a generic term, along with unsupported arguments under the second and third elements of the Policy, it may be sufficient to show that the Complaint was filed in a bad faith attempt to deprive the Respondent of the disputed domain name and Reverse Domain Name Hijacking may be found.
The Respondent asserts that the Complaint lacks candor and omits numerous material documents and correspondence which would have shone light on the Complainant’s previous attempts to seize the disputed domain name, thus breaching its certification of completeness and accuracy regarding the Complaint, noting that Reverse Domain Name Hijacking may be found in these circumstances.
The Respondent submits that the evidence shows a calculated bad faith attempt by the Complainant to use its own purchase enquiry to create evidence which it could use against the Respondent to unduly pressure it to transfer the disputed domain name. The Respondent contends that proceedings must not be commenced in an unjustifiable attempt to pressure or intimidate a domain name owner into releasing a legitimately held domain name, particularly where a complainant is sophisticated and represented by able intellectual property counsel and the domain name concerned corresponds to a common “generic word”.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In order for the Complainant to make out its case under this element of the Policy, it must show that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to that trademark. The Panel notes in passing that there is little or no controversy around the first element analysis in the present case. The Respondent candidly acknowledges that the Complainant’s marks are likely to be considered to be confusingly similar to the disputed domain name and that it probably meets the burden of standing pursuant to Policy precedent for the first element test.
The trademark rights claimed are in respect of the Complainant’s Spanish mixed trademarks (a mark consisting of a combination of verbal and figurative elements) and its European Union and International trademarks which are both figurative in nature, all as described in the factual background section above. The Panel finds that the Complainant has UDRP-relevant rights in these trademarks.
The textual element of the Complainant’s marks may be distinguished without difficulty from the graphical element which, in this case, is simply a stylized form of representation of the word concerned (on this topic, see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The text thus separated is alphanumerically identical to the second level of the disputed domain name. The generic top-level domain (“gTLD”), in this case “.com”, is typically disregarded for the purposes of the comparison exercise. In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
There is no doubt in the Panel’s mind that the Respondent registered the disputed domain name soon after the previous registration expired and that it did so with intent to offer it for sale on the open market. This is the nature of its business and, on the facts of the present case, does not demonstrate registration in bad faith. The Respondent explains that the disputed domain name has value because it consists of a common word in no less than three languages which are spoken by many millions of people. The word itself is particularly attractive as a domain name, implying as it does both communication and dialogue. The Respondent shows that it holds a portfolio of domain names consisting of dictionary words and explains that it licenses, leases, or sells these. The Panel accepts this evidence. What is lacking in the Complainant’s case is any demonstration that the Respondent took this action with the Complainant or third-party trademarks in mind and thus registered the disputed domain name in bad faith.
The Complainant’s case focuses primarily on the provisions of paragraph 4(b)(i) of the Policy, namely that there are circumstances indicating that the Respondent registered the disputed domain name with intent to sell it to the Complainant or a competitor for an amount in excess of its out-of-pocket costs. In order to succeed, the Complainant would be required to show that trademark rights were being specifically targeted or singled out by the Respondent. There is however no evidence before the Panel of any substance which might demonstrate that this was the case. The Complainant has neglected to provide any evidence of the scale and reach of its trademark which might have led the Panel to infer that the Respondent must have had the Complainant or a competitor in its sights when it registered the disputed domain name. The Complainant has not put forward any evidence indicating that its trademark is, for example, a well-known mark which is very distinctive and functions as an arbitrary trademark. On the contrary, as the Respondent points out, the fact that the Complainant is in the telecommunications business arguably renders the textual element of its trademark somewhat descriptive given that in some languages it means “dialogue” or “talk”. In any event, the Complainant merely asserts without corresponding evidence that its trademarks are widely known, that it has an office in the Respondent’s territory and that it is active in 29 countries in which it has its own telecommunications network. No evidence is provided as to the extent to which it advertises its trademarks or even how they are used in general terms. This cannot lead to any inference that the Respondent must have had knowledge of the Complainant’s marks or, what is more, any intent to target its rights through the registration of the disputed domain name.
With regard to the Respondent’s offer to lease the disputed domain name to the Complainant, the Panel notes that it was the Complainant who first approached the Respondent to request terms or, as the Complainant put it, “conditions for all possible scenarios”. This is of some significance in that the Respondent had taken no steps to contact the Complainant prior to its approach and there is thus no suggestion arising from the Parties’ interactions that the Respondent was likely to have been targeting the Complainant or its rights. It seems more probable to the Panel that the Respondent had sought a domain name that could be used by multiple parties for multiple legitimate purposes and that it was entitled, when approached, to suggest leasing or licensing terms in common with the arrangements it had already made for other domain names in its portfolio. The Panel notes that it was only after a telephone call and two emails from the Complainant that the Respondent put forward possible terms. To the Panel, this does not support the Complainant’s assertion that the Respondent must have intended to target trademark rights at the point of registration. The Panel is equally unpersuaded that the timing of the registration of the disputed domain name itself demonstrates any such targeting. That timing simply accords with the expiry of the disputed domain name after it had been held by a third party. The Respondent’s case that it registered the disputed domain name at that point because of its possible generic value in line with its business of investing in such names is perfectly plausible.
Finally, the Panel notes that even had the Complainant been in a position to demonstrate that the Respondent had been aware of the Complainant or its trademarks prior to registering the disputed domain name, which it is not, this fact on its own would not necessarily have led to a finding of registration in bad faith. Something more would have been needed to demonstrate on the balance of probabilities that the Respondent also had an intent to target trademark rights as opposed to merely benefitting from the presence and attractiveness of the dictionary word in the disputed domain name leading to a variety of possible uses which would not necessarily conflict with the Complainant’s rights.
In all of the above circumstances, the Panel finds that the Complainant has failed to establish the third element under the Policy. The Complaint therefore fails.
D. 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, 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”. The Rules define Reverse Domain Name Hijacking as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Mere lack of success of the Complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking (see section 4.16 of the WIPO Overview 3.0). It is necessary to review all of the background to the Complaint, so far as known to the Panel, to assess whether it was brought in bad faith.
In the present case, much is made by the Parties of the Complainant’s abortive attempts to obtain the disputed domain name both by way of the previous administrative proceeding under the Policy and by its efforts with the previous registrar and ICANN. The Panel does not consider that these matters are particularly informative as to the Complainant’s state of mind when it brought the Complaint. In particular, the Complainant’s correspondence with the registrar pre-dates the present registration of the disputed domain name and appears to proceed on a misunderstanding and some mutual confusion as to whether the registrar could simply transfer the disputed domain name to the Complainant upon its expiry. This confusion was corrected by the registrar before the disputed domain name expired and the Complainant was correctly informed that it would require to back-order the disputed domain name. That it did, and when this failed, the Complainant complained to ICANN. The Respondent characterizes these matters as an attempt to strong-arm the registrar and/or ICANN into arranging for or ordering the transfer of the disputed domain name and likewise appears to suggest that such an approach also taints the manner in which the present Complaint was brought. Such characterization is a step too far for the Panel. Nevertheless, the Panel’s inquiry into this question has been hindered to some extent by the failure of the Complainant to produce all of its correspondence with ICANN. The Panel is left to deduce matters from ICANN’s reply to the Complainant. This omission is unsatisfactory and does not sit well with the Complainant’s certification of the completeness and accuracy of the Complaint.
Of greater concern to the Panel is the Complainant’s failure to produce all of its correspondence with the Respondent. The principal submission in the Complainant’s case on bad faith was that the Respondent’s primary purpose in registering the disputed domain name was to sell it to the Complainant. In these circumstances, the evidence of the Parties’ interactions was material to the outcome of the case. In particular, the Complainant required to make contact with the Respondent by telephone, following up with not one but two emails and finally insisting on being informed of “conditions for all possible scenarios” before the Respondent engaged in any discussion regarding a disposal of the disputed domain name. There was no unsolicited offer from the Respondent to support the Complainant’s contention that it had been targeted. This is a matter of fundamental importance, which was either deliberately concealed by the Complainant or, at best, carelessly overlooked. This is an issue which points in the direction of a finding of Reverse Domain Name Hijacking, particularly when it is borne in mind that the Complainant is represented by specialist counsel in this proceeding and that, given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the Rules, some UDRP panels have held that a represented complainant should be held to a higher standard (see section 4.16 of the WIPO Overview 3.0).
In addition to the possibly deliberate use of selective correspondence by the Complainant, the Panel notes its failure to address the dictionary word nature of the disputed domain name. In the opinion of the Panel, this matter rendered the Complainant’s case difficult from the outset. Indeed, the Panel notes that the Complainant was more probably than not aware of this fact, in light of the contents of its tactical note, which has been translated by the Respondent. On one reading, this indicates that the Complainant knew at the time it first communicated with the Respondent that it had yet to identify any circumstances demonstrating that the disputed domain name had been registered by the Respondent in bad faith. Nothing that the Respondent said to the Complainant could or should have changed its view, particularly in the context that the disputed domain name consisted of a dictionary word. A finding of Reverse Domain Name Hijacking has been made in previous cases under the Policy where the complainant or its representative knew at the time of filing the complaint that it could not prove the respondent’s bad faith registration (see for example New Forests Asset Management Pty Limited v. Kerry Schorsch, Global Advertizing, LLC, WIPO Case No. D2015-1415).
The general tenor of the Complaint is that the Complainant simply believes that it is a more appropriate owner of the disputed domain name than the Respondent. In the Panel’s opinion, that view is misguided and is not a basis for seeking any remedy under the Policy, nor does it demonstrate that the present Complaint was brought in good faith.
In all of these circumstances, the Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Andrew D.S. Lothian
Date: February 8, 2019