Posts Tagged ‘AguaDulce.com successfully defended’

Third Consecutive UDRP win but this time with RDNH finding!

Hello and Assalamo Alaikum,

Not sure if this is the longest break I’ve taken in publishing posts but there were several reasons behind that but I feel of having more time in near future so that I can concentrate on blogging.

I wanted to thank my readers who contacted me during this break to know if everything is alright at my end. I really appreciate for their concern and glad to know many domainers want me to continue writing it.

So coming back to the main point of this post, first of all I would like to thank Mr. Howard who represented me in successfully defending the domain and that too with RDNH finding which is really a great feeling. Previously he represented me in two other UDRP cases which includes Kitchn.com, and PrintFactory.com. ALL credit goes to Howard Neu for saving another valuable domain.

In June I was hit with UDRP on AguaDulce.com which means “Sweet Water” in Spanish language and is municipality and city name as well in some part of the world.

Below is some part of the excerpt from the decision including RDNH:

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 . 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 , being intended by the Respondent as a contraction of the word “kitchen”, and 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

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.

Decision

For the foregoing reasons, the Complaint is denied.

The law firm (Brigard Castro) which according to their website says “a firm that is fully committed to its clients” who represented the complainant are bunch of morons and Reverse Domain Name Hijackers who not only mislead the panelists by falsely mentioning that I was involved in other cases whereas they failed to provide any such reference but they also concealed the entire proceedings and the final outcome of my last two UDRP decisions which went completely in my favor. Looks like their motto “a firm that is fully committed to its clients” means they’re fully committed to harm goodwill of their clients. They also asserted that I tried to instigate people on how to profit from .CO domains

It’s really satisfying to see the decision with complainant getting Reverse Domain Name Hijacking label. So everyone please remember that the Brigard Castro and their client are Reverse Domain Name Hijackers.

Once again I thank Mr. Howard Neu for representing and defending the domain successfully plus getting RDNH finding as well.

I wanted to convey a message to all people around the world, I will try my best to defend my properties and won’t let them go easily. Any one planning to file complaint against any of my domain in future, just remember that it’s not really easy to snatch any of my domain. Better to buy the domain in a proper manner through proper channel, else get ready for the hard consequences.

Any feedback is welcome.