BODIS

Adventum.com : Another UDRP squashed by John Berryhill

Directnic

UDRP has been denied.

IP attorney, John Berryhill, squashed the dreams of yet another aggressor; the UDRP against Adventum.com, a 1999 domain registration, failed at the WIPO.

The Complainant is Adventum Real Estate, S.L. of Madrid, Spain, represented by Lerroux, Spain.

The Complainant owns a Spanish trade mark registration for ADVENTUM under number M-3011914 which was filed on December 30, 2011 and registered on April 16, 2012. It also owns the domain name adventum-re.es at which it maintains a website for its real estate business in Spain.

The Respondent notes that “adventum” is a generic Latin word meaning “arrival” or “coming” and is from the same root as “adventure” in English and corresponding terms in Romance languages. The Respondent says further that the Complainant has admitted that the ADVENTUM mark is in common usage and is not exclusively associated with the Complainant and that the Respondent has not used it to target the Complainant’s services.

A three member panel at the WIPO, consisting of Alistair Payne, Carolina Pina-Sánchez and Adam Taylor found that the Respondent entered into a bona fide acquisition from a long-standing registrant of a domain name that contained a generic Latin term.

Adventum.com was thus ordered to remain with the Respondent.

Full details on the UDRP decision can be found below.

Adventum Real Estate, S.L. v. Netincome Ventures Inc
Case No. D2017-1228

1. The Parties

The Complainant is Adventum Real Estate, S.L. of Madrid, Spain, represented by Lerroux, Spain.

The Respondent is Netincome Ventures Inc of Penticton, Canada, represented by John Berryhill, Ph.d. Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <adventum.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 26, 2017. On June 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2017, 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 July 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2017. On July 21, 2017, the Respondent filed a request for an additional four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time. The Response was timely filed with the Center on July 28, 2017.

The Center appointed Alistair Payne, Carolina Pina-Sánchez and Adam Taylor as panelists in this matter on August 15, 2017. 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 owns a Spanish trade mark registration for ADVENTUM under number M-3011914 which was filed on December 30, 2011 and registered on April 16, 2012. It also owns the domain name <adventum-re.es> at which it maintains a website for its real estate business in Spain.

The disputed domain name was first created on May 13, 1999 and was acquired by the Respondent in May 2016. The disputed domain name resolves to a website with pay-per-click links to travel related websites.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in the ADVENTUM mark as set out above and that the disputed domain name is identical to this mark.

The Complainant asserts that its ADVENTUM mark has no meaning in the English language and is not descriptive. It says that it has not permitted, authorised or licensed the Respondent to use its mark. In addition, it submits that the Respondent is not commonly known by the term “Adventum” and that there is no bona fide offering of goods or services using the disputed domain name.

The Respondent, says the Complainant, is in fact a company specialised as a broker in the acquisition and sale of domain names. The Complainant alleges that the Respondent’s purpose in acquiring the disputed domain name was to re-sell it at a profit and in the meantime to make money from it functioning as a landing page that features sponsored links using a company called Name Administration Inc. that provides advertising services using domain name parking techniques. This is not noncommercial use according to the Complainant and the Respondent’s intention to sell the disputed domain name and to use it as a “pay-per-click” landing page in the meantime does not amount to a legitimate interest.

As far as bad faith is concerned, the Complainant notes that the disputed domain name was acquired by the Respondent in May 2016, a little more than 4.5 years after the Complainant filed its ADVENTUM mark. It notes that the disputed domain name was previously owned by the Adventum Group, Inc. and says that at the date of acquisition the Respondent had no trade mark rights in “Adventum”.

The Complainant notes that there is a link on the website to which the disputed domain name resolves to another website upon which an Internet user can make an offer to acquire the disputed domain name. It notes that the minimum offer is EUR 13,410.82 and says that this is evidence that the disputed domain name was acquired by the Respondent primarily for the purpose of re-sale at a profit in terms of paragraph 4(b)(i) of the Policy. Further, the Complainant argues that, although the first pay-per-click links on the website to which the disputed domain name resolves are related to travel, this is not material as it is also possible for visitors to the website to search for real estate services in which case sponsored links to the Complainant’s competitors appear. Finally, the Complainant asserts that the Respondent is using a “robots.txt” file at the disputed domain name in order to avoid being crawled by software services such as Alexa.

B. Respondent

The Respondent admits that the Complainant has demonstrated that it owns registered trade mark rights for the name or mark ADVENTUM and that the disputed domain name is identical to this mark. However, the Respondent notes that “adventum” is a generic Latin word meaning “arrival” or “coming” and is from the same root as “adventure” in English and corresponding terms in Romance languages. The Respondent says further that the Complainant has admitted that the ADVENTUM mark is in common usage and is not exclusively associated with the Complainant and that the Respondent has not used it to target the Complainant’s services.

The Respondent submits that the Complainant has not fulfilled its burden of proof in demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name. In summary, it says that there is no evidence that the website to which the disputed domain name resolves features any links to real estate advertising services and is not in the Spanish language. It says that the links are principally for adventure travel services which is consistent with the fact that “adventum” is a Latin word that means arrival or coming and has resulted in related terms in English and in many Romance languages. Therefore, says the Respondent, the use of the disputed domain name to resolve to a website that has links to travel related sites in no way amounts to a targeting of the Complainant’s Spanish real estate business and is entirely legitimate.

Although the Respondent notes the Complainant’s submission that domain name monetization is illegal per se, it says that based on previous panel decisions, this is not the case where a domain name is generic unless its registration and sale were undertaken in bad faith or would amount to a targeting of the Complainant’s mark or business. The Respondent submits that “adventum” is generic, that the Complainant does not appear to have a very significant reputation relating to this mark such that the Respondent would necessarily have been aware of the Complainant’s business and in addition the Respondent has provided evidence that the term “adventum” is used in common by many businesses and across numerous industries both as a trade mark and as a domain name. Finally, the Respondent says that it has not been involved in a pattern of bad faith conduct in relation to domain names and that the decision quoted by the Complainant is ten years old and the Complaint omits subsequent decisions in which the complaint was denied.

In relation to bad faith, the Respondent says that there was no predatory intent in its acquisition of the disputed domain name from the prior owner (who it says is admitted by the Complainant as a legitimate original owner and registrant). It asserts that it has a strategy of searching for domain names that have expired but which are still in renewable condition and then proposing to the registrant to renew the domain name and then to purchase it. This approach says the Respondent ensures that the domain name is no longer required by the registrant and is likely to be free of conflicts in light of its longstanding registration by the other party and the Respondent says that this is exactly what has happened in this case.

As described earlier, the Respondent goes on to submit that there is no evidence of its targeting of the Complainant and that the links on the website to which the disputed domain name resolves are to travel related sites rather than real estate sites in the Spanish language and accordingly there is no evidence of use in bad faith. Further the Respondent explains that the reason that a robots.txt file is used by monetization engines and in relation to this website, is to ensure that only human visitors as opposed to automated systems visit the site.

In summary, the Respondent says that it believes that the disputed domain name is an apt name for parties wanting to use it in relation to “adventure” and that in the circumstances of the generic nature of the disputed domain name there is no evidence of targeting by the Respondent and it is not bad faith for the Respondent to attempt to sell the disputed domain name to third parties.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns a Spanish trade mark registration for ADVENTUM under number M-3011914 which was filed on December 30, 2011 and registered on April 16, 2012. The element of the disputed domain name before the generic Top-Level Domain “.com” is identical to this mark. The Panel therefore finds that the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

In view of the Panel’s findings under Section 6.C below it is unnecessary to comment on this factor in any detail. However the Panel briefly notes its finding that “adventum” is a Latin word that is free for general use and has in fact been demonstrated by the Respondent to be in common use as both a trade mark and as a domain name by a range of companies in a number of countries and across various sectors and that the Respondent has used the disputed domain name for a website featuring sponsored links relevant to the meaning of the generic term. In these circumstances, and as the Complainant has not submitted sufficient evidence to demonstrate that its ADVENTUM mark is very well reputed or well-known, such that it has developed a significant secondary meaning in relation to the Complainant and as there is no evidence to suggest that the Respondent has targeted the Complainant in any way, whether upon its acquisition or subsequent use of the disputed domain name, then the Panel finds that the Complainant has not met its burden of demonstrating a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As a result, the Panel finds that the Complaint fails under the second element of the Policy.

C. Registered and Used in Bad Faith

The Respondent acquired the disputed domain name after discovering that the disputed domain name was near expiration and that its very long-term owner and original registrant had changed its name. The Respondent reached a consensual agreement with the original owner to acquire the disputed domain name in 2016.

There is nothing on the record to suggest that the Respondent, a Canadian domain name broker, would have been aware of the Complainant, operating a Spanish real estate company under the mark ADVENTUM. In fact, based on the evidence presented by the Respondent it appears that this Latin term is in common use as a trade mark and as a domain name by numerous parties in various countries and that the Respondent may just as well have acquired the disputed domain name in order to sell it to any of those interested parties, as to the Complainant.

The Complainant has not put forward any evidence to suggest that the Complainant’s ADVENTUM mark is well known, or has developed secondary meaning in relation to the Complainant, or its business, such that the Respondent was likely to have been aware of it. This is clearly not a case in which a Respondent has registered a domain name containing a well reputed or well-known mark either knowingly or without thought for the consequences and the cases cited by the Complainant in this regard are not apposite.

Nor is the Respondent’s subsequent use of the disputed domain name for a parking site with pay-per-click links to travel related websites indicative of it having targeted the Complainant. The Panel notes that Complainant operates a real estate agency in Spain which is a field of activity far removed from travel. While the Complainant suggests that searches undertaken on the Respondent’s website page result in links to real estate related websites, it is apparent that these are not links which are automatically displayed to all website visitors and these Respondent-generated links do not suggest an intention of the Respondent to target real estate related links. Accordingly, the Panel finds that there is no evidence that the Respondent targeted the Complainant.

In summary, this is a case in which the Respondent, a domain name broker, entered into a bona fide acquisition from a long-standing registrant of a domain name that contained a generic Latin term. The Respondent subsequently used the domain name for a parking page featuring sponsored links relevant to the meaning of the generic term, without there being any possible suggestion that these links were in competition with, or targeted the Complainant. The Respondent also advertised the domain name for sale but there is no evidence that the Complainant was a sales target. Nor is there anything to suggest that the Complainant was so well known that the Respondent should have been aware of it. Overall there is no evidence of targeting by the Respondent and as a result the Panel finds the disputed domain name was neither registered nor used in bad faith. As a result, the Complaint fails under this element of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Alistair Payne
Presiding Panelist

Carolina Pina-Sánchez
Panelist

Adam Taylor
Panelist
Date: August 29, 2017


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