In a Decision handed down on August 8th, a WIPO Panel consisting of Andrew Lothian, Fernando Triana and Nick J. Gardner in the case of SOCIEDAD PUERTO INDUSTRIAL AGUADULCE, S.A. v. ABDULBASIT MAKRANI, D2019-1378, denied the Complaint and found that the Complainant was guilty of Reverse Domain Name Hijacking.
Our client, who is a Domain Investor, owns AGUADULCE.COM and registered it in 2011. Makrani is a citizen of Pakistan, while the Complainamt’s business and pre-existing trademarks are in Colombia, South America.
It appears that Complainant’s big problem was that it cited 3 UDRP decisions in which Makrani was the Respondent. However, only one of those decisions which ordered the domain name transferred, was unopposed with no Response having been filed. The Complainant failed to mention that in the other 2 cases in which we represented the Respondent, the claims were Denied and Makrani kept the domains.
Here are a couple of excerpts from the Decision and the finding of RDNH:
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.
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.
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 viathe 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 Telstracase, nor any other similar criteria on the facts of this case.
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.
- 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.
