WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Administración Nacional de Telecomunicaciones (Antel) v. DevOps Hostmaster, riva net
Case No. D2020-2351
1. The Parties
The Complainant is Administración Nacional de Telecomunicaciones (Antel), Uruguay, represented by Lerman & Szlak, Argentina.
The Respondent is DevOps Hostmaster, riva net, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <antel.net> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2020. On September 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 15, 2020.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on October 13, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, founded in 1974, is the state-owned telecommunications company in Uruguay. It provides landline telephony services in Uruguay and is also a major provider of mobile phone services and Internet connectivity. The Complainant’s group has also operated in the United States since 2011.
The Complainant uses the trading name “Antel”, an abbreviation of its corporate name. The Complainant has registered the domain names <antel.com>, and <antel.com.uy> among others.
The Complainant owns a number of registered trade marks for stylised versions of the word ANTEL including Uruguayan trade mark No. 362787, filed on June 3, 2005, registered on July 20, 2005, in classes 9 and 38.
The disputed domain name was created on November 18, 1998.
As of around 2003, the disputed domain name was owned by “riva.net, inc”.
In 2004, the disputed domain name resolved to a website with photographs of cars.
An August 2009 screenshot of a page at the disputed domain name headed “riva.net” indicates that an entity using this name was supplying telecommunications services in the United States.
As of around November 2009, the registrant of the disputed domain name was “AGI Inc”, but with similar contact details as before.
In 2014, the disputed domain name resolved to a website with pay-per-click (“PPC”) links relating to movie downloads and pornography, along with a notice stating that the disputed domain name had expired.
By 2015, the registrant details had been changed to those of the Respondent.
As of November 13, 2018, the disputed domain name returned an error message.
By November 2019, the disputed domain name has been switched into a privacy service.
As of June and September 2020, when accessed from both Uruguay and the United States, the disputed domain name resolved to PPC links relating to the Complainant’s business such as “Wireless Internet” and “4G Service Providers”.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows.
The disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent is not known by the disputed domain name, nor making fair use of it. The Respondent has no legitimate connection with the Complainant’s trade mark, which has no meaning other than to refer to the Complainant.
The PPC links at the disputed domain name are evidence of commercial use as well as an intention to capitalise on the goodwill in, and reputation of, the Complainant’s well-known trade mark. This is classic cybersquatting.
The disputed domain name was registered and is being used in bad faith.
The Respondent knowingly registered the disputed domain name because it was identical to the Complainant’s trade mark in order to divert users to its website. The Respondent’s knowledge should be assessed as at 2018, when the current Respondent took ownership of the disputed domain name. The change of nameservers and website content supports an inference of change of registrant in 2018, when the disputed domain name expired and was registered by a new owner using a private registration, and shows that the Respondent set out to target the Complainant’s rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the mark ANTEL by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its extensive use of that name.
The disputed domain name is identical to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with PPC links to the same or similar telecommunications services that are supplied by the Complainant. Such use of the disputed domain name could not itself confer rights or legitimate interests. See section 2.9 of WIPO Overview 3.0 , which states that use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where, as here, such links compete with or capitalise on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
Likewise, the Panel does not consider that any of the other miscellaneous historic uses of the disputed domain name in evidence before the Panel constitute a bona fide offering, i.e., displaying photographs of cars; offering services similar to those of the Complainant; and resolving to a parking page with PPC links relating to movie downloads and pornography.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
While the registrant details had been changed to those of the Respondent by 2015, it is not clear exactly when the disputed domain name first came into the hands of its current owner and controller.1
The Complainant suggested that this occurred at the time of the switch to a privacy service in 2018, based on the change of nameservers and website content, amongst other things. However, the underlying registrant details disclosed by the Registrar following the filing of the Complaint (“DevOps Hostmaster, riva.net”) appear to connect the current owner with the entity that owned the disputed domain name in around 2003 (“riva.net, inc”).
As the Respondent has not come forward to propose an earlier acquisition date, the Panel considers it reasonable to proceed on the assumption that Respondent acquired the disputed domain name in or around 2003. Notwithstanding the length of this period of ownership, for the following reasons the Panel considers on balance that the Respondent registered the disputed domain name in bad faith to illicitly target the Complainant:
1. The Complainant traded under the name “Antel” for many years before 2003 (and even before 1998, when the disputed domain name was created originally).
2. It appears from the 2009 archive version of the website at the disputed domain name that, despite the other diverse uses of the disputed domain name, the Respondent was at one time operating in the same industry in which the Complainant is a major player and so likely to have been aware of the Complainant.
3. In any event, the name “Antel” is distinctive and unusual.
4. The Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any legitimate reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
The Panel considers that the Respondent has also used the disputed domain name in bad faith.
By using the disputed domain name, comprising the Complainant’s distinctive trade mark, in connection with a parking page with PPC links to services relating to the Complainant’s industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark in accordance with paragraph 4(b)(iv) of the Policy.
In the Panel’s view, the Respondent’s earlier use of the disputed domain name in connection with its own offering of services relating to the Complainant’s industry also constitutes bad faith use in accordance with paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <antel.net> be transferred to the Complainant.
Date: October 27, 2020
1 The Panel has undertaken a limited factual research into matters of public record considering that information about the change of registrant information could be useful to assessing the case merits and reaching a decision. See section 4.8 of WIPO Overview 3.0.