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Antel.com : A 1999 #domain lost via the UDRP process due to PPC ad links

Antel.com, a domain registered in 1999, was challenged in the UDRP process at the WIPO.

The Complainant isn’t Intel, but rather an Uruguayan telecom company called Antel, asserting rights to the ANTEL mark going back to 1995. They operate from the domain Antel.com.uy.

The Respondent did not utilize the services of an attorney, opting instead to be self-represented, and stated that as a domain investor he registers brandable domains.

Antel.com was sold in 2018 on NameJet for the sum of $2,355 dollars, something that the panelist did not point out. Instead, the WIPO response focused on the fact that PPC ads appearing on the Uniregistry lander included links about the Complainant or his competitors.

Final decision: transfer the domain Antel.com to the Complainant. Full details follow:

ADMINISTRATIVE PANEL DECISION
Administracion Nacional de Telecomunicaciones (Antel) v. Privacydotlink Customer 3691928/Kwangpyo Kim, MEDIABLUE INC
Case No. D2020-1212

1. The Parties

Complainant is Administracion Nacional de Telecomunicaciones (Antel), Uruguay, represented by Lerman & Szlak, Argentina.

Respondent is Privacydotlink Customer 3691928/Kwangpyo Kim, MEDIABLUE INC, Republic of Korea, self-represented.

2. The Domain Name and Registrar

The disputed domain name <antel.com> (the “Domain Name”) is registered with GoDaddy Online Services Cayman Islands Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2020. On May 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 14, 2020, the Registrar transmitted by email to the Center its verification 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 May 21, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 25, 2020.

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 May 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2020. On June 15, 2020, Respondent requested an extension to the due date of Response due to ongoing COVID-19 conditions. In accordance with paragraph 5(e) of the Rules the extension to the due date of Response was granted and the new due date of response was June 28, 2020. The Response was filed with the Center on June 28, 2020.

The Center appointed Robert A. Badgley as the sole panelist in this matter on July 7, 2020. The Panel finds that it was properly constituted. 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.

On July 7, 2020, Complainant submitted an unsolicited supplemental filing. The Panel, in its discretion, has considered the supplemental filing.

4. Factual Background

Complainant is the Uruguayan state-owned telecommunications firm, founded in or around 1974. Complainant is the leading landline telephone and data services provider in Uruguay. Complainant provides its services under the trademark ANTEL, a mark registered in Uruguay as early as June 5, 1995 (Reg. No. 266680).

Complainant also has an Internet presence, including its main website at “www.antel.com.uy”, and social media (690,714 followers on Facebook, more than 174,000 followers on Twitter, etc.).

The Domain Name was originally registered on November 25, 1999. According to Complainant and screenshots put into the record, from 2015 forward the Domain Name resolved to a website containing pay-per-click (“PPC”) links and stating that the Domain Name was for sale. Some of the links at the site were “Antel Uruguay,” “Montevideo, Uruguay,” “Antel Celulares,” and “Best Internet Phone Services.”

It appears from the record that Respondent acquired the Domain Name on or about April 13, 2018. According to Respondent, it had no knowledge of Complainant or its ANTEL mark when it acquired the Domain Name. Respondent claims that it purchased the Domain Name because it was fairly short, and catchy, and could have “brandable value.” Respondent asserts that it has registered numerous short, generic domain names for this purpose. For instance, Respondent states that it owns domain names including the letters “tel,” such as <austel.com>, <ventel.com>, and <dreamtel.com>.

According to Respondent, it “hosts underdeveloped domain names with domain name parking services that pay a share of the advertising revenue they generate, an industry-wide accepted practice.” Respondent states that the Domain Name “is hosted with a service which places PPC advertising links based on a Google advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners.” Respondent adds (its emphasis):

“Respondent has used the Domain Name to display descriptive PPC advertising links related to the keywords of the Disputed Domain. Respondent does not have any links related to Complainant or its business on the webpage and the links are related to ‘Phone’ with links for ‘phone’ naming, ‘free phone’ and ‘phone systems.’”

Respondent states that the allegedly infringing content (discussed above) was on the website during the time before Respondent acquired the Domain Name. Respondent placed into the record a screenshot of its website, which does not contain any reference to Complainant or to Uruguay, Complainant’s country in which the ANTEL mark is known.

However, as emphasized in Complainant’s supplemental filing, there was a period of time, after the Domain Name was in Respondent’s possession, during which the Domain Name resolved to a website similar to the one discussed above, i.e., containing PPC links (including “Antel Uruguay” and “Montevideo Uruguay”) and stating that the Domain Name might be for sale.

Complainant alleges that, on March 23, 2020, Respondent (via a broker) contacted Complainant to ask whether Complainant was interested in buying the Domain Name. The broker allegedly sent Complainant follow-up emails on March 25, 2020, March 30, 2020, and April 13, 2020. Complainant states that it never responded to these emails.

Respondent alleges that Complainant had in fact initiated contact with the broker with an anonymous offer to purchase the Domain Name. Curiously, in its Complaint, Complainant appears to have anticipated this position, as it asserts that it investigated internally whether someone from within Complainant’s firm had initiated the contact with the broker, but found no evidence of that. Ultimately, the Panel need not resolve this question, as it is not dispositive of the outcome here. Indeed, the screenshots put into the record by Complainant, which show Respondent’s site referring to “Antel Uruguay,” are very recent, being dated March 30, 2020 and April 5, 2020.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent asserts that it has a legitimate interest in the Domain Name. Respondent also asserts that it did not register or use the Domain Name 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 concludes that Complainant has rights in the mark ANTEL through registration and use demonstrated in the record. The Panel also finds that the Domain Name is identical to the mark.

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.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. The chief problem Respondent faces in this proceeding is its lack of credibility with the Panel. In the face of Respondent’s stout denial of targeting Complainant and Respondent’s claim that the PPC links at its website did not refer to Complainant (and Respondent’s implicit assertion that such potentially infringing links were on the website only before Respondent acquired the Domain Name), Complainant provided evidence that these PPC links – including “Antel Uruguay,” the very first link on the website – were featured on Respondent’s website virtually up to the eve of the filing of the Complaint in this proceeding.

Respondent’s credibility gap as a result of this evidence colors Respondent’s other assertions, in particular, Respondent’s denial of knowing Complainant’s mark at the time Respondent acquired the Domain Name. Such a denial would not have been impossible to credit, given that Complainant largely operates in Uruguay and not extensively elsewhere. All said, Respondent’s apparent sophistication as a dealer in domain names with “brandable value” makes it somewhat more likely that Respondent would have had the ANTEL mark in mind when acquiring the Domain Name. To be clear, there is nothing inherently wrong with purchasing and reselling “brandable” domain names in principle; here however, the Respondent claims this is what he has done but then also has monetized the Domain Name with PPC links targeting the Complainant. He cannot have it both ways. (This is even without addressing the question of the possible offer to sell, which again the Panel does not make a determination on.) And, to repeat, Respondent’s apparent attempt to mislead the Panel here has severely undermined Respondent’s credibility.

Complainant has established Policy paragraph 4(a)(ii).

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 online 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 Panel concludes that Respondent registered and used the Domain Name in bad faith. The Panel incorporates its finding in the previous section that Respondent, on this record and given Respondent’s lack of credibility, was more likely than not aware of Complainant’s ANTEL mark when registering the Domain Name. The Panel further concludes that Respondent used the Domain Name in bad faith, by deriving PPC revenue based on consumer confusion, in violation of the above-quoted Policy paragraph 4(b)(iv).

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <antel.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: July 21, 2020


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Comments

One Response to “Antel.com : A 1999 #domain lost via the UDRP process due to PPC ad links”
  1. Riley says:

    Wow, pretty aggressively anti-registrant reasoning there.

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