WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sociedad Puerto Industrial Aguadulce S.A. v. AbdulBasit Makrani
Case No. D2019-1378
1. The Parties
The Complainant is Sociedad Puerto Industrial Aguadulce S.A., Colombia, represented by Brigard & Castro, Colombia.
The Respondent is AbdulBasit Makrani, Pakistan, represented by Law Office of Howard M. Neu, PA, United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <aguadulce.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 June 14, 2019. On June 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2019, 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.
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 the Respondent of the Complaint, and the proceedings commenced on June 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2019. The Response was filed with the Center July 9, 2019.
The Center appointed Andrew D. S. Lothian, Fernando Triana, and Nick J. Gardner as panelists in this matter on July 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 incorporated according to the laws of Colombia. It is the operator of Puerto Aguadulce, a multipurpose marine terminal located in Buenaventura, Colombian Pacific Coast, Colombia, which has been in business continuously since February 16, 1996. The Complainant’s operation is supported and backed by two of the largest global port operators, which own over 70 ports between them. The Complainant is the owner of a variety of Colombian registered trademarks for the mixed/combined mark AGUADULCE and design, including Colombian registered trademark no. 374284, registered on February 23, 2009, in international class 35. The Complainant has continuously used the domain name <puertoaguadulce.com> to provide its Internet presence since its registration on September 9, 2004.
The disputed domain name was created on November 29, 2011. The Respondent, a domain name dealer, is an individual based in Pakistan. The Complainant’s screenshot of the website associated with the disputed domain name shows a market listing page provided by the Registrar stating that the disputed domain name is listed for sale and inviting interested parties to submit an inquiry to the seller. The Complainant also produces a screenshot of a web page provided by the Registrar dated May 12, 2019, which is headed “AguaDulce.com / Continue your negotiation with the seller below”. Below the header is a reply apparently from the Respondent to a person named “Alejandra” specifying the price of the disputed domain name as USD 36,888.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has 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 provides a “Google” search for the word “aguadulce” which it notes points the user in the direction of its own website. The Complainant asserts that its mark is strong and recognized by the consumer due to its use in connection with the Complainant’s port businesses. The Complainant argues that the Respondent is attempting improperly to capitalize on the Complainant’s recognition and goodwill.
The Complainant notes that six of its trademarks consist exclusively of the word AGUADULCE with a very simple graphic design, noting that said word is reproduced in its entirety in the disputed domain name. The Complainant states that such use in the disputed domain name is confusing and causes the public to believe that the Respondent is acting on behalf of or under the authority of the Complainant. The Complainant adds that the risk of such confusion is high due to the shared similarity and asserts that it is likely that an Internet user would mistakenly believe that the website associated with the disputed domain name is affiliated with the Complainant.
The Complainant submits that the Respondent’s personal website discloses that he is a professional domain name investor who publishes articles explaining how he negotiates and profits from domain names. The Complainant states that the Respondent’s site contains an article indicating that he has a knowledge of “.co” domain names and how to profit from them. The Complainant notes that the Respondent also refers in an article to the fact that domainers can be on the receiving end of a complaint under the Policy and at times do not bother to respond.
The Complainant notes that the Respondent has been the respondent in three cases under the Policy brought before the Center, namely Aurelon B.V. v. AbdulBasit Makrani, WIPO Case No. D2017-1679, Kitchn Norge AS v. Abdulbasit Makrani, WIPO Case No. D2016-1189, and Gerald Hill v. Abdul Basit Makrani, WIPO Case No. D2013-1959, together with unspecified others under the UDRP brought before another dispute resolution provider. The Complainant quotes from the panel’s decision in Gerald Hill, supra that the only purpose suggested in the case file was that the Respondent registered the domain name concerned with intent to sell it and that the Respondent’s website indicated that the Respondent traded in domain names. The Complainant points out that the panel ordered transfer of said domain name.
The Complainant submits that it has neither authorized the Respondent to operate under its mark nor to maintain or register the disputed domain name. The Complainant adds that the Respondent has no relationship with the Complainant, no rights to use the expression “aguadulce”, no corresponding registered mark and is neither commonly known by the name nor a licensee of the Complainant’s mark. The Complainant argues that the Respondent’s lack of relationship to the AGUADULCE mark creates a strong presumption that the Respondent lacks a legitimate interest in the disputed domain name, and that the Respondent’s unlicensed and unauthorized use of such mark is strong evidence of a lack of rights or legitimate interests therein. The Complainant concludes that there is no legitimate reason why the Respondent should use the term “aguadulce” bearing in mind the Complainant’s use of such name since 1996 and the creation of the disputed domain name on November 29, 2011.
The Complainant asserts that the Respondent is proposing to sell the disputed domain name for USD 36,888 and thus has never intended a to make a bona fide offering of goods and services or any legitimate noncommercial or fair use thereof, adding that the Respondent cannot put forward any motivation for the high value of the disputed domain name other than profiting from the Complainant’s registered marks and recognition. The Complainant adds that the Respondent is artificially elevating the price of the disputed domain name by creating a sense of relation between the Complainant’s mark and the disputed domain name which does not exist.
The Complainant contends that its longstanding use of the <puertoaguadulce.com> domain name and its strong reputation and high profile presence in the port sector lead inescapably to the conclusion that the Respondent was aware of the Complainant’s mark before registering the disputed domain name, adding that panels under the Policy have routinely found bad faith in circumstances where it is unlikely that the registrant would have selected an almost identical domain name without knowing of the reputation of the trademark in question. The Complainant asserts that its marks were launched and widely promoted for over two years prior to the creation date of the disputed domain name. The Complainant contends that bad faith can be found where a respondent is aware of a complainant and it is clear that the aim of the registration of the domain name concerned was to take advantage of resulting confusion between such domain name and any potential complainant rights.
The Complainant notes that the Respondent has attempted to sell the disputed domain name solely composed of the Complainant’s mark for a high price, asserting that the Respondent has no legitimate reason to charge such sum and has registered the disputed domain name primarily to sell it at a price exceeding the cost of registration.
The Respondent requests that the Complaint be denied.
The Respondent points out that the Complainant’s business and trademarks are limited to Colombia while the Respondent is a citizen and resident of Pakistan and denies having any knowledge of the Complainant and/or its trademarks when the disputed domain name was created. The Respondent asserts that the Complainant has provided no evidence that its trademark was well-known outside Colombia at the time the Respondent registered the disputed domain name in Pakistan or, for that matter, at any time since. The Respondent notes that “agua dulce” is a Spanish generic phrase for “sweet water”. The Respondent asserts that there is no reference whatsoever to “puerto aguadulce” or any possible competitor thereof on the website associated with the disputed domain name, and concludes that there can be no resulting confusion or infringement.
The Respondent explains that he purchased the disputed domain name for his generic domain name investment business, when it became available, without knowledge of the Complainant or its registered marks. The Respondent adds that he has registered many domain names containing generic dictionary words for the purpose of sale or lease including domain names featuring words in various languages. The Respondent lists two domain names in Spanish, two in Italian, and three in English as examples of dictionary word/phrases which he has registered, stating that this is “just to name a few”. The Respondent says that he neither registered the disputed domain name solely to sell it to the Complainant nor solicited the Complainant to purchase it, adding that he is willing to sell or lease the disputed domain name to anyone for the right price. The Respondent submits that when he was asked by the Complainant to provide a price for the disputed domain name, he proposed a reasonable figure for a domain name such as this. The Respondent asserts that his business has been deemed by previous panels to be legitimate, provided that he is not targeting a complainant or their trademarks.
The Respondent notes that in his own search for the term “aguadulce” (wrongly described as a “Google” search but apparently conducted on the search engine “www.bing.com”) the Complainant’s own domain name does not appear until the bottom of the second page, adding that the disputed domain name does not appear at all. The Respondent goes on to describe the other listings on the first two pages of said search which make reference to various geographic locations named either “Aguadulce” or “Agua Dulce” in Panama, Spain, and in California, USA. A further search conducted by the Respondent for “agua dulce tx” discloses a city in Texas named “Agua Dulce”. The Respondent denies that the disputed domain name diverts Internet traffic from the Complainant’s website and asserts that the Complainant has produced no evidence to this effect, adding that any diversion of users would be caused by the other 18 websites on the first two pages of his search.
The Respondent submits that the Complainant’s citation of three UDRP cases in which the Respondent was involved is disingenuous as two of such cases, Kitchn Norge AS v. Abdulbasit Makrani,supra and Aurelon B.V. v. AbdulBasit Makrani, supra were decided in the Respondent’s favor and the complaints were denied. The Respondent states that there is no evidence to suggest that he targeted the Complainant’s trademark via the disputed domain name and thus that there is no evidence of registration and use in bad faith. The Respondent asserts that his passive holding of the disputed domain name does not amount to bad faith in the circumstances of the present case.
The Respondent seeks a finding of Reverse Domain Name Hijacking and abuse of the administrative proceeding on the basis that the Complainant knew or should have known that it would be unable to prove bad faith, given that the Complainant’s trademark is Colombian, the Respondent is a resident of Pakistan, and that the Respondent had no way of knowing of the Complainant’s trademark or whether such mark would meet the threshold of being sufficiently famous. The Respondent states that the Complainant contacted the Respondent to purchase the disputed domain name and was not happy with the price quoted, adding that the Complainant did not allege in such contact that the disputed domain name infringed its trademark. The Respondent notes that the Complaint was prepared by legal counsel shortly after negotiations for the purchase of the disputed domain name were unsuccessfully concluded.
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 to make out its case in respect of the first element of the Policy, the Complainant is required to show that it has UDRP-relevant rights in a trademark in the first instance. Secondly, the Complainant must demonstrate that the disputed domain name is identical or confusingly similar to such trademark when compared on a straightforward side-by-side basis.
In the present case, the Complainant shows that it has UDRP-relevant rights in a variety of Colombian registered trademarks including the example cited in the factual background section above. Each of these trademarks is a “Marka Mixta”, in other words, a mixed or combined trademark which includes both word and figurative or stylized elements. The word element of each of the Complainant’s marks is AGUADULCE. Additional descriptive and explanatory text is provided, namely “PUERTO INDUSTRIAL. BUENAVENTURA. COLOMBIA”. The figurative element of said marks is embodied in the prominent AGUADULCE word element printed in a distinctive stylized typeface, below which the said explanatory text appears in a smaller font.
The Panel turns to compare the Complainant’s marks with the disputed domain name. The Panel first notes that it is a well-established feature of Policy jurisprudence that the generic Top-Level Domain (“gTLD”), in this case “.com”, of the disputed domain name does not require to be taken into consideration in the determination of identity or confusing similarity (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This leaves a comparison between the second level of the disputed domain name and the Complainant’s marks.
The Panel notes that the Complainant’s trademarks, being mixed or combined marks, consist of both word and design, with the word element being AGUADULCE. This being the case, the Panel could simply find identity between such marks and the disputed domain name (section 1.10 of the WIPO Overview 3.0). Nevertheless, even if the graphical component is brought into the comparison, it is clear to the Panel that the word elements are capable of being severed from their stylized depiction and that where this is done, the word AGUADULCE remains the most prominent, distinctive and non-descriptive element. On this alternative analysis, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s mark.
No matter which method of analysis is used in the present case, it is clear that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in that the disputed domain name is identical or confusingly similar to the Complainant’s mixed marks. The Panel notes in addition that the Response does not appear to raise any specific challenge on this topic. In these circumstances, the Panel finds the first element to be established and turns to consider the second and third elements under the Policy.
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
To establish this element, the Complainant requires to demonstrate that the disputed domain name has been both registered and used in bad faith by the Respondent, whether on the basis of the non-exclusive circumstances set out in paragraph 4(b) of the Policy or otherwise. Bad faith registration and use are conjunctive, and both must be found for the Complainant to succeed.
The Complainant must establish that the Respondent had knowledge of an AGUADULCE mark and intent to target such at the point of registration of the disputed domain name. This involves demonstrating that the Complainant (or another co‑existing trademark owner) and/or its rights were of sufficient notoriety at that point, so that it is more likely than not that the Respondent had the requisite knowledge. It is worth noting that merely establishing the Respondent’s likely knowledge of such mark on its own is unlikely to be sufficient to demonstrate registration and use in bad faith, given that the words in the trademark concerned can also serve as a phrase with a non-trademark dictionary meaning. Something more is required by way of evidence of the Respondent’s intent to target such marks. This could include, for example, evidence of the presence of pay-per-click links keyed to such line of business (as opposed to the dictionary meaning of the word/phrase) on the website associated with the disputed domain name or, alternatively, a demonstration of the presence of relevant factors concerning passive holding such as those described in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
It is understood and accepted by both of the Parties that they are based in different jurisdictions. Nevertheless, as the panel noted in Fakir Elektrikli EV Aletleri Diş Ticaret Anonim Şirketi v. Development Services, Telepathy, Inc., WIPO Case No. D2016-0535, “the fact that a respondent is in a different jurisdiction than a complainant is something that some people can consider to be of greater significance than it actually is, particularly if the complainant has a significant online presence”. In the present case, however, while there is evidence before the Panel that the Complainant has a website at “www.puertoaguadulce.com”, this has not been evidenced as a significant online presence which may be presumed to have come to the Respondent’s attention at or before the point of registration of the disputed domain name. No reason has been put forward as to why the unrelated mark would have stood out from other uses of the phrase “agua dulce” on the Internet.
In addition to giving details of its website, the Complainant puts forward a series of media articles relating to the activities of its port. These articles represent, in the Panel’s view, reasonably substantial and independent coverage of the Complainant’s activities and its use of the AGUADULCE mark. However, such coverage is in the specialist trade and business press only and some of it is presented in the Spanish language alone. At best, this establishes some notoriety of the Complainant within its own field of operations and, in particular, it reinforces the Complainant’s submission that it trades and is known as “Puerto Aguadulce” rather than as simply “Aguadulce”. It is true that the Complainant’s business features an obvious international dimension which might lead to the view that its notoriety extends beyond Colombia, at least within its own industry. However, there is no evidence before the Panel which demonstrates on the balance of probabilities that any such notoriety transcends the Complainant’s own field, or that this would have reached Pakistan in general or the Respondent in particular.
The Complainant seeks to bolster its case on the probability of the Respondent’s knowledge by reference to a “Google” search for the term “aguadulce”, featuring the Complainant’s website in prominent position. However, the Respondent reasonably counters with his own “www.bing.com” search which shows a single mention of the Complainant’s business portal website some distance down the rankings while, on the contrary, demonstrating a multiplicity of unconnected, mainly geographic, results. The discrepancy appears to result from the localization of the Complainant’s search. It is notable for example that its search returns are in Spanish, while the Respondent’s search returns are in English. In any event, the Complainant’s results are not conclusive of what the Respondent might be expected to have seen by way of a search in his own location.
What both Parties’ searches do demonstrate, taken together, is that a range of alternative meanings and possible uses of the term “aguadulce” (or “agua dulce”) exist, the majority of which do not denote the Complainant or its mark. There is considerable emphasis to be found on these alternative meanings or uses in the Respondent’s search and this provides adequate support for his case that he was not aware of the Complainant when he came to register the disputed domain name and that he did so to take advantage of its dictionary meaning. On the whole, the Panel considers that the results of the Parties’ searches could not be considered to be supportive of the Complainant’s case on registration and use in bad faith.
The Complainant points to an article on the Respondent’s website indicating that the Respondent has knowledge of and invests in “.co” domain names, being the country code for Colombia. The Complainant does not, however, submit that this fact alone could support an inference of the Respondent’s knowledge of Colombia itself or, by extension, of the Complainant or its trademark, nor in the circumstances would the Panel necessarily make such inference in the absence of other supporting evidence.
The Complainant also focuses on the Respondent’s past history concerning the registration of alleged dictionary word domain names. It cites three cases in which the Respondent was involved, on the basis that the Respondent’s bad faith intent, if established in these cases, might taint the Respondent’s protestations of good faith in the present proceeding. The Complainant is correct that the sole panelist in one of these cases, namely Gerald Hill v. Abdul Basit Makrani, supra, found against the Respondent. The complainant’s mark in Gerald Hill was CARIBBEAN-DIRECT and the domain name concerned was <caribbeandirect.com>. The Respondent did not reply to the complainant’s contentions and it is clear that the panel placed considerable emphasis on the Respondent’s failure to engage with the complaint. For example, the panel noted that “the only such purpose [for the registration of the domain name] suggested in the case file was the Respondent’s apparent intention to sell the disputed domain name [...]”. and “[...] the Respondent has not come forward to argue that he has any such rights or legitimate interests, in the face of the Complainant’s prima facie case against him. Following the majority of panel authority on this issue, referred to above, this would by itself be sufficient for the Complainant to establish that the Respondent lacks rights or legitimate interests.”
It is notable that the Complainant chose not to address the Panel in any detail on the other two cases which it cites involving the Respondent, namely Kitchn Norge AS v. Abdulbasit Makrani,supra and Aurelon B.V. v. AbdulBasit Makrani, supra. By contrast, the three-member panels in each of these cases reached decisions in the Respondent’s favor. These cases concerned the domain names <kitchn.com>, being intended by the Respondent as a contraction of the word “kitchen”, and <printfactory.com> respectively. While the facts are broadly similar to that of the present case, one difference is that the Respondent used both of these domain names to display pay-per-click links associated with the generic meaning of the words concerned. There was also, as here, a general offer of sale of the domain name concerned on each of the respective websites. The panel in each case found that there was no evidence that the Respondent’s use of the domain name demonstrated any intention on the Respondent’s part to target the complainant concerned and that there was no evidence that the Respondent had ever known of the rights of either of said complainants.
Before leaving this topic, the Panel notes that the Complainant also stated that the Respondent has been the respondent in other unspecified UDRP cases before another provider. The Panel has searched the records of the provider concerned for the Respondent’s name in a variety of alternative configurations and has not been able to find any such cases. The Panel also performed a “Google” search keyed to the same variations of the Respondent’s name with results limited to the provider’s website. This, too, did not return any relevant cases. The Complainant is clearly in the best position to provide the Panel with full citations of all and any cases upon which it seeks to rely. In the absence of such citations, this particular submission of the Complainant is to be disregarded. Accordingly, in all of the above circumstances, the Panel does not consider that the Respondent’s past history provides support to a material extent for the proposition that the Respondent is likely to have known of the Complainant’s marks and was targeting these by virtue of the disputed domain name.
The Panel notes in passing that the Complainant refers to the alleged use of the disputed domain name to obtain click-through revenue from the diversion of Internet users. However, the mechanism whereby such alleged click-through revenue is allegedly generated is not further described by the Complainant, nor do the corresponding screenshots produced by either the Complainant or the Respondent show the presence of any apparent pay-per-click or affiliate links.
The Complainant relies upon the case of Telstra Corporation Limited v. Nuclear Marshmallows, supra, to demonstrate use of the disputed domain name in bad faith as a consequence of the Respondent’s alleged passive holding thereof. The term “passive holding” as described in Telstra means circumstances of respondent inaction following the registration of a domain name. The panel in that case indicated that such circumstances could amount to bad faith in the meaning of the Policy, subject to a review of all the facts in each specific case. In Telstra itself, factors which the panel identified as demonstrating respondent bad faith were, first, that the complainant’s trademark was widely known nationally and internationally, secondly, that the respondent had provided no evidence of any actual or contemplated good faith use of the domain name concerned, thirdly, that the respondent had taken active steps to conceal its true identity, fourthly, that the respondent had actively provided and failed to correct false contact details, and fifthly, that taking into account all of these aspects, it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent which would not be illegitimate, such as by constituting passing off, an infringement of consumer protection legislation or an infringement of the complainant’s rights under trademark law.
On the facts of this case, the disputed domain name does not appear to the Panel to be passively held. It is being offered for general sale via the Registrar’s website and, rather than remaining passive, the Respondent has shown by its response to the Complainant’s inquiry that it replies to communications initiated through such site regarding possible sale of the disputed domain name. This could not be described as inaction, but even if it was, the Panel considers that the Complainant would not be able to fulfil the criteria described in the five factors in the Telstra case, nor any other similar criteria on the facts of this case.
Turning briefly to the Response, the Panel accepts that the term “agua dulce” can represent a dictionary phrase in the Spanish language meaning “sweet water” or, in an alternative and potentially more apt translation, “fresh water”. As a general rule, anyone can register such words in a domain name without transgressing the Policy and one cannot infer without evidence, which is lacking in this case, that one user of such words is necessarily being targeted. Some dictionary words may be so well-known in connection with a particular business or trademark (for example, DELTA, UNITED or APPLE) that the general rule would be displaced but that is not the case here. Similarly, a very specific combination of dictionary words might lead to an inference of targeting, for example, if the disputed domain name had contained the dictionary word “puerto” along with “aguadulce”. However, this is not the case with the Spanish translation of “fresh water” which could be of value to multiple organizations.
The Panel acknowledges that the registration of the disputed domain name appears to correspond to those others in various languages which the Respondent indicates are part of its stock-in-trade. It is not unlikely that the Respondent could have chosen the disputed domain name independently of a trademark in the circumstances of this case. The Panel further accepts the Respondent’s contention that a domain name consisting of a dictionary word or phrase in any particular language is likely to have an intrinsic value on the secondary market which would justify an uplift in price, such as that quoted to the Complainant when it expressed an interest in the disputed domain name. There is no evidence before the Panel that such uplift has anything to do with the goodwill inherent in a mark as opposed to some intrinsic value of the disputed domain name itself.
In all of the above circumstances, the Panel finds that the Complainant has not established the third element under the Policy and the Complaint fails.
D. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) in the present case. The definition of RDNH in the Rules is “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. It is generally accepted that mere lack of success of a complaint is not itself sufficient for such a finding. Further discussion as to the nature of RDNH and the typical circumstances in which it may be found are detailed in section 4.16 of the WIPO Overview 3.0.
In the present case, the majority of the Panel (Andrew Lothian and Nick Gardner) is of the opinion that the circumstances in which the Complaint was brought should lead to a finding of RDNH. The majority detects a lack of candor in the Complainant’s case which is inconsistent with its certification of completeness and accuracy in accordance with the Rules.
The majority of the Panel are of the opinion that the Complainant was doubly on notice regarding the importance of the dictionary phrase here due to the Complainant’s citation of past cases involving the Respondent, in which the Respondent’s registration of such words and phrases as domain names, and the corresponding uplift in value, is fully canvassed. The manner of such citation in the Complaint itself did not represent a fair presentation of the Respondent’s past history. The Complainant chose to highlight quotations from the no-response case Gerald Hill v. Abdul Basit Makrani, supra, in which a finding of registration and use in bad faith was made against the Respondent, and then merely to list two further cases in which he was involved. As outlined above, both of the latter two cases featured the decision of a three-member panel, a comprehensive response and a finding in the Respondent’s favor. The Complainant made no exposition of these cases at all. The Panel unanimously considers that the way in which the previous cases were quoted was at best careless and at worst misleading, given that the juxtaposition of the three cases in the manner put forth in the Complaint inevitably confers the wrongful impression that they were all decided on a similar basis to Gerald Hill. It was left to the Respondent to set the record straight in this regard.
As outlined above, the Complainant’s case asserted that the Respondent has also been party to cases before another provider of UDRP decisions. Despite making reliance on such unspecified cases, the Complainant failed to provide any details, including appropriate case numbers, which would have allowed the Panel to review and assess their relevance to the matter in hand. The Panel as a whole were unable to find any cases involving the Respondent before such provider. That is not to say that the Complaint is necessarily incorrect as far as this submission is concerned, but rather that the Panel is unimpressed by the making of an unsupported submission of this nature, particularly in light of the criticisms above regarding the three previous cases before the Center which were accurately cited in the Complaint. In the Panel’s opinion, this is indicative of a lack of care and/or of candor in the presentation of the Complainant’s case which cannot be overlooked in the assessment of RDNH.
Taking all of the above aspects together, while acknowledging the minority position on this topic as outlined above, the majority of 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
Fernando Triana, Esq.
Nick J. Gardner
Date: August 8, 2019