WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caracol Primera Cadena Radial Colombiana S.A., a.k.a Caracol S.A. v. Domains By Proxy, LLC / ABCSites, Inc.
Case No. D2015-1598
1. The Parties
Complainant is Caracol Primera Cadena Radial Colombiana S.A., a.k.a Caracol S.A. of Bogotá, Colombia, represented by Baker & McKenzie, Colombia.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / ABCSites, Inc. of Miami, Florida, United States, represented by Peretz Chesal & Herrmann, PL, United States.
2. The Domain Name and Registrar
The disputed domain name <caracol.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2015. On September 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 10, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 16, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on September 18, 2015.
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 Respondent of the Complaint, and the proceedings commenced on October 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2015. At request of the Parties, the Center extended the due date for Response to December 11, 2015. The Response was filed with the Center on December 11, 2015.
The Center appointed Robert A. Badgley, W. Scott Blackmer and Neil J. Wilkof as panelists in this matter on December 28, 2015. 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
Complainant is a major telecommunications and broadcasting company based in Colombia. Complainant has operated for more than 50 years. As of 1998 Complainant was operating 182 radio or television stations in Colombia and owned 54 stations outside Colombia. Complainant holds numerous trademark registrations for the mark CARACOL or CARACOL plus additional elements, with registrations in Colombia dating back to 1992.
The word "caracol" means "snail" in Spanish.
Respondent registered the Domain Name on November 4, 1997. On November 4, 2003, Complainant filed a Complaint under the Policy against this same Respondent, seeking a transfer of this same Domain Name. On January 30, 2004, a three-member panel denied the Complaint. See Caracol Primera Cadena Radial Colombiana S.A. v. ABCSites, Inc., WIPO Case No. D2003-0880 (the "Prior Case").
The panel in the Prior Case concluded that Complainant had established trademark rights in the mark CARACOL dating back to "at least 1992", and that the Domain Name was identical to the CARACOL mark. The panel in the Prior Case also concluded that Respondent lacked rights or legitimate interests in respect of the Domain Name.
With respect to the Policy's bad faith requirement, however, the panel in the Prior Case ruled in favor of Respondent. The entirety of the panel's discussion of the bad faith element is set forth below:
Complainant contends that "it is evident that the Respondent has intentionally attempted to attract, for financial gain, Internet users to the Respondent's website at "www.caracol.com", by creating confusion with the Complainant's names, trademarks, service marks and domain names, primarily for the purpose of selling, renting or otherwise transferring it to competitors or to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name, clearly constituting proof of bad faith registration and use by the Respondent." However Complainant has not proven that the registration of the domain name was made primarily with the purpose of transferring rights on the domain name for an amount in excess of out of pocket costs related to the domain name, (the Policy, Paragraph 4(b)(i), which is a circumstance of bad faith registration as required by the Policy, Paragraph 4(a)(iii). The offer for sale of the domain name in "www.paralaventa.com" is not by itself proof that the domain name was registered with the primary purpose of selling it to Complainant or to a competitor of Complainant. Furthermore, the word caracol is a generic word, meaning "snail" in Spanish. This genericness makes it less likely that the Respondent registered it with the intention to take advantage of the similarity between it and Complainant's trademark.
Complainant has demonstrated with Annex 12 to the Complaint that it owns offices in Miami, Florida, USA, and that Complainant is broadcasting radio with an AM station in Miami, Florida, the city where Respondent has its address. However, Complainant has not shown that Respondent knew that there was a broadcasting company operating under the name CARACOL, or that because of the existence of CARACOL as an AM broadcaster in Miami or because of the existence of Caracol's office in Miami, Respondent came to know or should have come to know Complainant's trademark before the domain name was registered, that is before November 1997. In any case it seems to be true that "Respondent has never mentioned Complainant's name in any of its websites, including "www.caracol.com" and has never linked to, or advertised, any entity that provides radio or television broadcasts". See Affidavit of Jaime de los Ríos, Jr., of December 9, 2003, paragraph 14, attached as Annex 1 to the Response. Complainant fails to show that Respondent's registration or use of the domain name was specifically aimed at Complainant's trademark and service mark, with the purpose of preventing Complainant to reflect its mark in a corresponding domain name. The Policy, Paragraph 4(b)(ii) requires "a pattern of such conduct", that is a similar conduct in respect of other domain names corresponding to trademarks or service marks belonging to third parties. Even if Complainant has certainly demonstrated with Annex 41 to the Complaint that <altolascondes.com> refers to Alto Las Condes, a well-known shopping center or mall in Santiago, Chile, belonging to Cencosud S.A.; or that per Annex 42 to the Complaint <cadenalco.com> contains the trade name CADENALCO, a major retail chain in Colombia, or that <galeriaspacifico.com> refers to Galerías Pacífico, a well-known shopping center in downtown Buenos Aires, Argentina, this Panel agrees with Respondent that Complainant failed to prove that --with the exception of the <caracol.com> domain name itself-- the other domain names registered in the name of Respondent are trademarks or service marks belonging to third parties, which could easily have been done by means of a simple trademark research in the corresponding countries.
Accordingly, the third element of Paragraph 4(a) of the Policy has not been met by the Complainant.
Because Complainant failed to prove registration and use in bad faith as required under the Policy, Paragraph 4(a)(iii), it is unnecessary for this Panel to examine Respondent's allegation that Complainant failed to object or to act for some six years after the registration made in 1997, and therefore acquiesced to the registration and use of the domain name at issue.
Complainant has filed the instant Complaint based on new information purportedly tending to prove that Respondent in fact registered and has used the Domain Name in bad faith within the meaning of the Policy. First, Complainant points to unsolicited email communications it received between April and June 2015. In the first email, dated April 9, 2015, Respondent's agent advised that she was "contacting potential buyers for this domain since our client has just put it up for sale". This email evidently was caught in Complainant's spam folder, but eventually Complainant responded that, yes, Complainant was interested in acquiring the Domain Name and asked about the price.
On June 8, 2015, Respondent's agent explained that Respondent had previously reached a deal with another party to sell the Domain Name for 500,000 (currency unspecified), but the deal fell through. Respondent's agent said: "Our client asks for 725,000 euros for this domain, but would be open to negotiation."
Complainant further alleges that, since the January 2004 decision in the Prior Case, Respondent has continued to make no use of the Domain Name in terms of establishing a website. Rather, the Domain Name (as of September 7, 2015) resolved to a rudimentary web page stating that the Domain Name was "for sale" and including a single advertising link for women's backpacks.
5. Parties' Contentions
Complainant maintains that it is entitled to a transfer of the Domain Name pursuant to this re-filed Complaint for the reasons articulated above in the Factual Background section and below in the context of the three elements of the Policy.
Respondent argues that Complainant is simply seeking "one more bite at the apple" after losing the Prior Case 11 years earlier. Respondent states that, in the 11 years following the decision in the Prior Case, it went more than 11 years after the Prior Case was decided before engaging a domain broker who approached Complainant. Such conduct after so many years, Respondent asserts, cannot taint the good-faith original registration in 1997 or supplant the panel's conclusion in the Prior Case that Respondent did not register the Domain Name primarily for the purpose of selling it at a profit.
In addition, Respondent asserts that it registered the Domain Name in connection with a "shopping mall portal website that subsequently failed." The main website for this shopping mall portal was to be "centroscomerciales.com: or "abcmalls.com." According to an affidavit sworn by Respondent's president, the Domain Name "was chosen in reference to several shopping centers around Central and South America, including Plaza Caracol shopping mall in Cancun, Mexico, which incorporate the word 'caracol' in their name." The Domain Name was to be redirected to the main portal site. Respondent's president states that Respondent spent four years and USD 90,000 to develop the portal site and "create a business around it." After the business plans were scrapped in 2001, Respondent president testifies in his affidavit, the Domain Name resolved to a "dedicated webpage" containing "links with information to shopping malls and other related locations".
According to Respondent's president, in 2008 the Domain Name was used as a "South Florida business blog/news site and to advertise local businesses, including Santa's Enchanted Forest, the World's largest Christmas theme park." It is not altogether clear why the affidavit refers to 2008; the annexes to the Response include nothing from 2008, but do include a 2003 web page and a 2013 web page to which the Domain Name resolved. The 2003 web page featured a number of links to businesses using "Caracol" in their name (Aparthotel Caracol, Caracol de Plata, Plaza Caracol in Cancun, Rancho Caracol, etc.), while the 2013 web page bore the header "Caracol.com – South Florida Business Networking" and featured a series of seemingly unrelated news items.
Respondent also denies having any knowledge of Complainant or its mark when registering the Domain Name in November 1997. Respondent also states that it has never made reference to Complainant or any broadcaster at its website, and that it has "never sold any domain names that did not consist entirely of generic terms".
Respondent cites to another decision involving a re-filed complaint under the Policy, Creo Products, Inc. v. Website in Development, WIPO Case No. D2000-1490. Respondent cites the following passage from Creo Products in support of its position here:
For circumstances to constitute evidence of bad faith registration and use under Paragraph 4(b)(i) of the Uniform Policy, those circumstances must be such as to indicate that selling the domain name to the Complainant for an excessive sum was the Respondent's primary purpose in registering the domain name. This requirement of Paragraph 4(b)(i) has particular significance in cases, such as this one, which are Refiled Complainants concerning acts that have occurred subsequent to the decision on the previous complaint. This is because a respondent, having succeeded in a complaint brought against it under the Uniform Policy, might well conclude that an economically rational way to deal with the disputed domain name is to offer to sell it to the unsuccessful complainant. Such an offer for sale, even if for a large amount, is not of itself evidence that the respondent in fact registered and is using the domain name in bad faith; rather, it might merely be evidence that the respondent is willing to allocate the domain name to another entity which values it more highly. For a post-complaint offer for sale to be evidence of bad faith registration and use of the domain name, all the circumstances of the respondent's activities must be such as to indicate that sale to the complainant for a sum in excess of out-of-pocket expenses was the primary purpose of the respondent's registration of the domain name.
Respondent relies on a second decision involving a re-filed complaint under the Policy, CAMPER, S.L. v. Detlev Kasten, WIPO Case No. D2005-0056, in further support of its position. Respondent quotes the following passage from the CAMPER decision:
In the circumstances of this case, the mere pricing of the Domain Name at a very high level cannot in itself indicate bad faith at the time of registration.
What else is there to suggest that the Respondent was acting in bad faith when he registered the Domain Name? The Complainant points to the lack of use. That was not something which impressed the original panelist and it does not impress this one.
Based on the foregoing facts and authorities, Respondent argues, Complainant cannot establish that Respondent's original registration of the Domain Name in 1997 was done in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel unanimously concludes, as did the Panel in the Prior Case, that the Domain Name is identical to the CARACOL trademark in which Complainant holds rights.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In view of the Panel's decision below under the bad faith head, the Panel does not decide here whether Respondent has rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Policy does not expressly allow or forbid the losing complainant in one case to file a second complaint against the same respondent and involving the same domain name. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), describes the consensus view of panelists on the issue of re-filed complaints in paragraph 4.4 (entitled "Under what circumstances can a refiled case be accepted?"). The WIPO Overview 2.0 states:
Consensus view: A refiled case concerns the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.
In certain, highly limited circumstances (such as where a panel found the evidence in a case to be finely balanced, and that it was possible that the future behavior of the respondent might confirm bad faith registration and use after all), a panel in a previous case may have found it appropriate to record in its decision that, if certain conditions were met, a future refiled complaint may be accepted. Where this has occurred, the extent to which any such previously-stipulated panel conditions may have been met in any refiled complaint may also be a relevant consideration in determining whether such refiled complaint should be accepted.
A re-filing complainant must clearly indicate the grounds allegedly justifying the refiling of the complaint. The provider with which such refiled complaint has been filed has responsibility for determining if, prima facie, the refiling complainant has indeed pleaded grounds which might justify entertaining the refiled complaint. An affirmative determination is a precondition for provider acceptance of the refiled complaint, and for panel determination of the refiling request and any decision on the merits. A re-filing complainant's failure to clearly identify that its complaint is a re-filing of an earlier UDRP complaint may constitute a material omission for the purpose of any panel assessment of reverse domain name hijacking.
In the CAMPER case quoted above (in the "Respondent's Contentions" section), the panel discussed the proper approach to re-filed complaints under the Policy, where the complaints were based on supposedly new evidence emerging after the initial decision adverse to the complainant. The CAMPER panel wrote:
The Panel believes that a broad, common sense approach is called for. The Panel proposes to approach the case before it on the basis that such new evidence, which was not available and could not reasonably have been anticipated to have been available at the time of the original complaint, is the core evidence by reference to which the decision will be arrived at. After all, it was this evidence which has led to the Complaint being accepted for hearing. Had the Complaint merely contained the original material supplemented by "more of the same" and material which could have been discovered earlier and ought to have been included in the original complaint, the Complaint would have been rejected out of hand. If following examination of that core evidence, the Panel is in any doubt as to what the correct decision should be, the Panel will look at that evidence in the context of the rest of the evidence to seek to resolve the doubt. If the Panel is still in any serious doubt, the Complaint must fail.
In the instant case, the Panel largely endorses the approach outlined in CAMPER and, based on the record here, concludes that this Complaint fails for want of evidence that Respondent registered and used the Domain Name in bad faith. A number of considerations figure in the Panel's decision.
First, the Domain Name is comprised entirely of a word, "caracol", which is a Spanish word meaning "snail".
Second, Respondent denies having had any knowledge of Complainant or its trademark in November 1997 when it registered the Domain Name. There is no evidence in the record to suggest otherwise, and this finding is plausible since the Domain Name, again, reflects a single generic word.
Third, there is a sworn affidavit from Respondent's president stating that the Domain Name was selected in conjunction with a shopping portal site that ultimately failed.1 The affidavit also states that since that time there has been sporadic use of the Domain Name by Respondent, even if there is an apparent lack of precision regarding the exact particulars of such use.
Fourth, there is a gap of nearly 18 years between the registration of the Domain Name in 1997 and the first attempt to sell the Domain Name to Complainant.
Fifth, the record here shows that Respondent engaged a domain broker in 2015 to market the Domain Name. There is reason to infer that the broker came up with the (admittedly hefty) asking price of EUR 725,000. In any event, this was presented to Complainant as an opening offer, and Respondent's agent stated that Respondent "would be open to negotiation".
Sixth, there is no evidence in the record that Respondent is a serial cyber-squatter.
The Panel finds the passages quoted earlier (in the "Respondent's Contentions" section) from the Creo Products and CAMPER decisions to be instructive here (the Panel is mindful of the fact that the complainant in the re-filed Creo Products case actually won, but the above-quoted analysis from that decision remains sound and applicable here). Both decisions recognize that the prevailing respondent in a case decided under the Policy may be perfectly within its rights to decide to sell the subject domain name to the unsuccessful complainant, even at a high price.
Indeed, like the instant case, the CAMPER case involved a domain name reflecting a common word (<camper.net>). The panel in the CAMPER case observed, among other things:
Following the dismissal of the first complaint and after the Complainant had approached the Respondent to find out whether the Respondent would be prepared to sell the Domain Name and after the Complainant had nominated a figure well in excess of the Respondent's out-of-pocket registration expenses, the Respondent nominated a much higher figure. Why, the Panel wonders, should this not be a reasonable perception on the part of the Respondent as to what a commercial entity desiring the Domain Name would be prepared to pay for it? After all, by this time, the Respondent was aware of the lengths (or some of them) that the Complainant was prepared to go to in order to obtain the Domain Name and he had in his favour a UDRP decision confirming that he was a legitimate holder of the Domain Name.
The matter can be approached another way. What would the Complainant have done if the Respondent had accepted the Complainant's offer of €3,000 for the Domain Name? Would the Complainant have sought to use the Respondent's acceptance as an indication of bad faith registration and use? If €3,000 was a proper offer to make to the Respondent, why was €45,000 not a proper riposte from the Respondent? Where would it have been appropriate to draw the line?
In the Panel's view, there is no sensible line that can be drawn. In the circumstances of this case, the mere pricing of the Domain Name at a very high level cannot in itself indicate bad faith at the time of registration.
The fundamental problem for the Complainant, as the previous panelist observed, is that the Complainant's trademark, while it is well-known as a trademark for the Complainant's goods, is an ordinary dictionary word capable of many entirely innocent uses. For the Complainant to succeed in this complaint, the Complainant needed cogent evidence to demonstrate that the Respondent's motives were other than entirely innocent at time of registration of the Domain Name. Nothing of that kind has been put before the Panel.
The Complainant's eagerness to acquire the Domain Name, combined with the expense to which the Respondent was put to defend the original complaint, may have been among the factors that led to the Respondent putting a very high price upon the Domain Name. At all events, the Panel is of the view that there could have been several reasons why the Respondent priced the Domain Name as he did and that it cannot fairly be inferred from that that the Respondent's motives at the time of registration over seven years ago must have been mala fide.
The only arguably factual distinction of relevance between this case and the CAMPER case is that the asking price here (EUR 725,000) is much higher than the asking price in the CAMPER case (GBP 45,000 for <camper.net>). The Panel here, however, is wary of drawing a principled line between the CAMPER case and this one based solely on the extent to which the asking price might appear to be excessive. Each domain name has its own value in the marketplace, and that value is determined by myriad factors, including the health of the domain name market in general at a particular time, the actual composition of the domain name, whether it reflects or resembles a trademark, whether it is short and easily remembered, whether it reflects a common word, whether it bears the coveted ".com" Top-Level Domain or some other extension, and so on and so forth. The Panel believes itself ill-equipped to peg a "fair" price on this Domain Name for purposes of distinguishing this case from other decisions.
That said, if the parties had engaged in back-and-forth negotiations over the price with little reduction from the initial asking price, namely EUR 725,000, in the ultimate amount asked by Respondent, one of the Panelists here would have urged the Panel to consider this fact as evidence of bad faith. However, because such negotiations did not occur, the Panel has no reason to decide this question. As the CAMPER panel put it: "In the circumstances of this case, the mere pricing of the Domain Name at a very high level cannot in itself indicate bad faith at the time of registration".
In view of the other factors cited above, including the lack of evidence that Respondent was aware of Complainant's mark in 1997, the decision in the Prior Case, and the 18-year span between registration of the Domain Name and the offer of sale to Complainant, the Panel is not inclined to base its decision on the apparent excessiveness of the opening offer made by Respondent's agent.
In sum, the Panel finds no basis in the record or in precedent under the Policy, particularly in view of the heightened scrutiny applied to re-filed cases, to disturb the panel's decision in the Prior Case that Complainant has failed to show that Respondent registered the Domain Name in bad faith.
Complainant has not established Policy, paragraph 4(a)(iii).
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
W. Scott Blackmer
Neil J. Wilkof
Date: January 19, 2016
1 The Panel notes that the other shopping center-related domain names registered by Respondent as described in the Prior Case would appear to correspond to third-party marks; it is not clear from that fact however that Respondent was targeting Complainant who operates in a different field in registering the Domain Name. Any evidence of such knowledge (if it did in fact exist) would likely require discovery outside the scope of the Policy.