This is another UDRP case for the proverbial books.
An Ibiza cafe has managed to wrestle away the aged, generic domain CafeDelMar.com from its registrant of 17 years.
The Complainants are Carlos Andrea González, Ramón Guiral Broto and José les Viamonte of Ibiza, Spain, who own CafeDelMarMusic.com.
Registered in 1999, CafeDelMar.com means “sea cafe” in Spanish. The domain predates any claimed mark by the Complainant by at least 5 years.
The Respondent, Hubert Seiwert of Bonn, Germany, stated that he used the disputed domain name to host private web content wholly unrelated to the Complainants’ business in the early 2000s and that, as this is now more than 15 years ago, no public record and no private backup of this content still exists.
According to the Respondent:
The Respondent concludes that, because the disputed domain name consists solely of common dictionary words with the combined meaning of “café by the sea”, and because this name is used independently by hundreds of businesses around the world, the name must be considered generic in nature, and cannot be considered to specifically target or infringeon the rights of the Complainants.
The Respondent contends to have rights and legitimate interests in the disputed domain name because of the generic nature of the name and states that it the intent of its registration was not to resell it, although previous WIPO decisions support that a legitimate interest can exist for generic names even if reselling had been the intention.
The Respondent also informs the Panel that it registered several other generic domain names around the same time in 1999 which it still owns, such as <skyscraper.net> (registered on March 9, 1999), <coolcomputers.com> (on March 9, 1999) and <theexhibition.com> (on November 5, 1999), which have also been used to host private web content or as vanity domain names for Internet relay chat (IRC) and email, and were also not registered with the intention of resale.
The Respondent asserts that its registration and use of the disputed domain name have not been in bad faith at any point in time because:
– It did not register the disputed domain name to prevent the Complainants from using it, and did not specifically target the Complainant in any way;
– It never attempted to sell the disputed domain name to the Complainants. The Respondent submits that this is strongly evidenced by the fact that it chose not to respond to emails from the Complainants and other third parties seeking to buy it. The Respondent also indicates to have received many inquiries and unsolicited offers up to USD 8,000 from parties unrelated to the Complainants over the 17 years it has owned the domain, but chose not to accept these offers;
– It never hosted any content on the disputed domain name which presented itself as endorsed by the Complainants (or any other company), and never sought to profit from the Complainants’ reputation in any way;
– It primarily used the disputed domain name for private purposes, i.e. as a memorable URL for private content and communications, and not for the purposes of hosting any web content for public consumption.
Unfortunately for the Respondent, the sole panelist at the WIPO, Luca Barbero, had a different view of the Complainant’s claims.
The Respondent’s statements as to its use of the disputed domain name to host personal private content, which are not in line with the actual use shown by the historical screenshots, the Respondent’s use of robots.txt, the adoption of a privacy service to shield its contact details in the WhoIs records, as well as the current redirection of the disputed domain name to the Complainants’ web site, support the finding that the Respondent did not register and use the disputed domain name in bona fide without intention to trade upon a third party mark.
This is another case where in the panelist’s opinion, having a private WHOIS or disabling the access of search engine robots somehow amounts to “bad faith.” In our opinion, this is a flawed and dangerous view.
Luca Barbero thus ordered the domain to be transferred to the Complainant. For the full text of the UDRP, click here.
