#Incanto .com : Reverse #Domain Name Hijacking finding in #UDRP at the WIPO

The owner of the domain Incanto.com defended themselves at the WIPO, and won the UDRP, with a finding of Reverse Domain Name Hijacking.

Registered in 2003, the domain is a dictionary word. The Complainant, Brooksburnett Investments Ltd. of Limassol, Cyprus, used a Russian law firm to file the UDRP.

According to the UDRP, the domain’s generic qualities and age made a difference:

“The Respondent held the Domain Name for 16 years without contacting IFG or the Complainant; it was IFG that contacted the Respondent in January 2019. And as discussed in the previous section concerning the second element of the Complaint, the Respondent’s denial of awareness of the trademark in 2003 is plausible, given that its sales under the mark seem to have been limited to a few boutiques in Italy at that time. There is little likelihood that the Respondent in France was aware of the mark in the first place and would have troubled to acquire the Domain Name at auction in the hope that the owner of the Italian boutiques would ultimately try to purchase it.”

A three member panel found the complaint to contain misleading references, denied the transfer, and declared a finding of RDNH:

The Complaint was factually misleading and had little prospect of establishing bad faith in particular, given the very limited and localized use of the mark in 2003 by the Complainant’s predecessor in interest and the generic meaning of the term “incanto”. The Complainant contended repeatedly, with no basis, that this was a “coined” term associated distinctly with the Complainant. Arguing the Respondent’s “pattern” of bad faith based on a UDRP decision that actually found in favor of the Respondent is simply one more example of the egregious overreaching in the Complainant’s approach to this proceeding.

Full details on the UDRP decision for incanto.com follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brooksburnett Investments Ltd. v. Domain Admin / Schmitt Sebastien
Case No. D2019-0455

1. The Parties

The Complainant is Brooksburnett Investments Ltd. of Limassol, Cyprus, represented by Internet and Law Legal Company, Russian Federation.

The Respondent is Domain Admin / Schmitt Sebastien of Sainte Ruffine, France, self-represented.

2. The Domain Name and Registrar

The disputed domain name <incanto.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2019. On February 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 27, 2019, the Registrar transmitted by email to the Center its verification response 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 the Complainant on February 28, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 28, 2019.

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 the Respondent of the Complaint, and the proceedings commenced on March 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2019. The Response was filed with the Center March 13, 2019.

The Center appointed W. Scott Blackmer, Gabriela Kennedy, and The Hon Neil Brown Q.C. as panelists in this matter on April 5, 2019. 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.

After the filing of the Complaint and Response in this proceeding, the Complainant submitted Supplemental Filings dated March 18 and March 22, 2019, and the Respondent submitted Supplemental Filings dated March 21 and April 9, 2019.

4. Factual Background

Although the Complainant is represented by legal counsel (unlike the Respondent), and the Parties have each filed two rounds of Supplemental Filings with attachments incrementally filling in gaps in the history of the Complainant’s trademarks and business, the Panel has found it necessary to refer to public record sources to establish a number of material facts. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.

The Complaint shows the Complainant as a limited company headquartered in Limassol, Cyprus. The Complaint refers only to the Complainant in recounting the ownership of INCANTO trademarks and the history of related business activities, but it appears that the Complainant came into existence only in 2013: The online database of the Republic of Cyprus Department of Registrar of Companies and Official Receiver lists the Complainant as a private limited company established in Cyprus in April 2013. The Respondent, an individual in France, acquired the Domain Name a decade earlier, in 2003. Thus, it is critical to establish the Complainant’s interests in the relevant INCANTO marks and the extent to which they were likely to be known to the Respondent at the time of the Domain Name registration.

The Complaint states that the Complainant owns numerous trademarks protecting the designer underwear mark INCANTO, which originated in Italy in the 1980s. The Complainant’s website at “www.incanto.eu” tells the story a little differently, saying that this fashion brand originates from Italy but “started in the mid-90s”. The Complaint emphasizes that the Complainant has owned many INCANTO trademarks for “more than 37 years”; this claim is modified in the Complainant’s first Supplemental Filing to refer to trademarks “registered at different times by companies affiliated with the Complainant”. (Actually, it appears on further examination that many of the listed marks were originally registered by apparently unrelated entities such as Alcantara S.p.A. and later acquired by the Complainant.) The Complaint recounts that in the early 2000s the Complainant decided to expand geographically and opened its first retail store in the Russian Federation in 2005, followed in 2006 by its first franchise store. Today, according to the Complaint, there are more than 270 INCANTO-branded stores in 80 cities. The Complainant’s website similarly explains that the Italian fashion brand started “with a few boutiques in the South of Europe”, expanded to the Russian Federation in the 2000s, and now “the Italian brand output can be purchased in the major European, Russian[,] and CIS countries’ cities”.

INCANTO underwear is also sold online. The Complaint says that the Complainant (although it must have been a predecessor) registered the domain names <www.incanto.ru> in May 2003, <www.incanto.eu> in August 2006, <www.incantomoda.it> in September 2008, and <www.incanto.it> in October 2009. At the time of this Decision, the Complainant’s principal website appears to be at “www.incanto.eu”; the others named in the Complaint redirect to that website. The Complainant’s website at “www.incanto.eu” is headed “Incanto Italy” in English, but the site is presented first in Russian, with pull-down menus making the site available alternatively in Italian or English. The Complainant’s website lists a store address in Milan and a company headquarters address for Incanto Fashion Group s.r.l. in Desenzano del Garda, Italy. (The online business register of the Italian Chambers of Commerce lists Incanto Fashion Group s.r.l. [“IFG”] as a private limited company with its registered office in Milan.) The Complainant’s Facebook social media site (Incanto Fashion Group, @incantoofficialitaly) is similarly labelled “Incanto Italy”.

The Complaint, the Complainant’s website, and the Complainant’s Facebook page do not mention any INCANTO retail stores in France, and there is no French-language version of the Complainant’s website or Facebook page. The Panel notes that at the time the Respondent registered the Domain Name, it does not appear that IFG or any other company later affiliated with the Complainant had an online presence with an “incanto” domain name. The only “incanto” domain name mentioned in the Complaint that was registered before the Respondent registered the Domain Name is <incanto.ru>, registered in May 2003. But there is no evidence in the record that the Complainant’s predecessor actually launched a website associated with that domain name by September 2003, and the Internet Archive’s Wayback Machine has no archived screenshots associated with that domain name until January 2004. The archived screenshots show that this website, like the Complainant’s current website, was presented first in Russian, with versions available in Italian and English.

The Complaint cites multiple INCANTO trademark registrations, in numerous countries. Almost all of them have been registered since the time of the Domain Name registration in September 2003. However, the Complainant also acquired International Trademark Number 464547A for INCANTO as a word mark, registered on October 29, 1981, and European Union Trademark Number 7321102 for INCANTO as a word mark, registered on March 13, 2000. Those were based originally on Italian trademark registrations by an apparently unrelated company; the registrations had been acquired by IFG before it was itself acquired by the Complainant. There is no detailed evidence in the record of sales or marketing under the INCANTO mark before September 2003. It appears from the Complainant’s current website and archived screenshots of IFG web pages that IFG made retail sales only in “a few boutiques” in the “South of Europe” before establishing an online presence in 2004 and opening a shop in Moscow in 2005.

According to the Registrar, the Domain Name was registered on September 26, 2003, in the name of “Domain Admin”, showing a postal address in Sainte Ruffine, France. The Response in this proceeding was filed by the individual Schmitt Sebastien of that address (hereafter the “Respondent”). As described in the Response, the Respondent appears to be a “domainer” (see the Wikipedia article on “Domain Name Speculation”), a person in the business of purchasing domain names of potential value for website development, generic advertising, and possibly ultimate resale:

“Respondent (who speaks French, English[,] Spanish[,] and Italian) was often browsing lists of expiring domain names and [<incanto.com>] immediately stood out as a gem. It was a fantastic Italian dictionary word that was about to drop. Respondent was searching for domain names that could be used for naming a startup. When seeing [<incanto.com>] in the dropping list, Respondent was like a gold digger finding a big nugget.” The Response indicates, with supporting documentary evidence, that the Domain Name was originally created in 1997 and acquired by the Respondent at auction in September 2003.

“Incanto” clearly has recognition value as a dictionary word, and it is used far beyond the borders of Italy. According to the online Cambridge Italian-English dictionary, “incanto” (cognate to English “enchantment”) means “enchantment, spell, magic”. It can also refer figuratively to “fascination”, “wonder”, “dream”; alternatively, it can signify an auction. These generic denotations are all potentially valuable for a broad range of websites. The Italian “incanto” has close cognates in other languages (such as encanto in Spanish and enchantement in French), and a search engine query shows that the Italian word itself has been used for a wide variety of products, services, and commercial establishments within and outside Italy, ranging from an internationally acclaimed classical music album by Italian tenor Andrea Bocelli to a waterfront apartment complex in Washington, D.C. The online D&B Hoovers database lists more than 570 companies worldwide using “Incanto” in their name, and the Respondent found more than 550 domain names incorporating “incanto”. The WIPO Global Brand database lists more than 280 registered trademarks consisting of, or including, the word “incanto”; only a few of these belong to the Complainant.

It does not appear that the Respondent has ever developed a website associated with the Domain Name. The Panel notes that screenshots available through the Internet Archive’s Wayback Machine show that at times since September 2003 the Domain Name has resolved to an English-language landing page serving as an advertising portal with pay-per-click (“PPC”) third-party advertising links for a wide variety of products and services ranging from mobile telephone ringtones to espresso coffee machines, travel packages, and Viennese real estate sales. At the time of this Decision, the Domain Name resolves simply to a landing page headed “incanto” (with a small “I”), followed by a copyright notice and a contact email address using the Domain Name.

Counsel for IFG contacted the Respondent in January 2019 about purchasing the Domain Name. The Respondent declined, saying that he reserved the Domain Name for a “long term project” and used it for email. This proceeding followed.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its INCANTO trademark. The Complainant argues that the Respondent is using the mark in the Domain Name without permission and with no evident rights or legitimate interests, as (i) the Respondent and his business are not known by a corresponding name; (ii) “incanto” is not a dictionary word in French, the Respondent’s native language; and, (iii) the Respondent has not made any relevant generic use of an associated website.

The Complainant infers that the Respondent must have been aware of the “world-famous” INCANTO trademark, now owned by the Complainant, and sought to use it in bad faith for commercial gain and to deprive the trademark holder of a corresponding domain name in the “.com” generic top-level domain (“gTLD”) that is particularly valuable for the United States of America (“United States”) market.

The Complainant finds additional evidence of bad faith in the Respondent’s withholding full identification in the registration of the Domain Name, passively holding the Domain Name for years, and responding to emails from the Complainant with a reference to selling another domain name, <edugate.com>, for USD 1.5 million, which the Complainant characterizes as “a cybersquatter’s pattern of conduct”.

B. Respondent

The Respondent argues that the Complainant is vague and misleading in establishing when it acquired interests in the INCANTO trademarks and asserts that the Respondent had no prior knowledge of the mark when the Respondent registered the Domain Name in September 2003. The Respondent questions whether the Complainant can rely on trademarks registered or acquired after the Domain Name was registered.

The Respondent states that he acquired the Domain Name for its value as a dictionary word and held it for its potential value to start-up enterprises. The Respondent points out that he did not initiate contact with the Complainant to sell the Domain Name. The Respondent infers that the UDRP proceeding is the Complainant’s “Plan B” to acquire a more international domain name to supplement the Complainant’s .eu, .ru, and .it domain names.

The Respondent requests a finding of Reverse Domain Name Hijacking against the Complainant for pursuing a Complaint “primarily to harass Respondent”, which the Complainant knew it “could not prove on the second and third elements of the Policy”.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Supplemental Filings

The Complainant and the Respondent each submitted two Supplemental Filings. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview 3.0, section 4.6.

Much of the content of the Supplemental Filings in this case merely amplifies arguments made in the initial pleadings or examines material that was available to the parties at that time. However, the Panel accepts the Supplemental Filings to address the Respondent’s request for a finding of Reverse Domain Name Hijacking and to shed additional light on disputed claims concerning the Complainant’s interests in potentially relevant trademarks and businesses.

B. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. The Complainant indisputably holds numerous registered trademarks for the word mark INCANTO, which is identical to the relevant string in the Domain Name. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id.

For purposes of the first Policy element, it is not relevant whether the Complainant acquired or registered those trademarks after the registration of the Domain Name; they suffice to furnish the Complainant’s standing. The timing and the degree of recognition of the trademarks may, of course, be relevant for other elements of the UDRP Complaint.

The Panel concludes that the Complainant has established the first element of the Complaint.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, a lack of permissive use, and the failure to use the Domain Name for an active, relevant website. This shifts the burden to the Respondent.

Here, the Respondent states that his interest in the Domain Name was for its generic value as “a fantastic Italian dictionary word … that could be used for naming a startup”. The Respondent does not claim to have made preparations to develop a corresponding website, and it appears that over the 16 years since the Respondent registered the Domain Name it has only been parked at times for PPC advertising (probably by the Registrar, given the appearance of the archived screenshots).

UDRP decisions involving undeveloped websites, or domain names parked at PPC landing pages, have typically analyzed the second element by examining the nature of the domain name, any actual or demonstrably planned use to date, and the status and fame of the relevant mark. These factors help panels assess the probability that the respondent chose the domain name for its generic rather than trademark value. See WIPO Overview 3.0, sections 2.9 (“Do ‘parked’ pages comprising pay-per-click links support respondent rights or legitimate interests?”) and 2.10 (“Does a respondent have rights or legitimate interests in a domain name comprised of a dictionary word/phrase or acronym?”).

Here, the Complainant claims that the INCANTO trademark is a “world-famous”, “coined word, one that is “recognizable all over the world” as associated with the Complainant. The Complainant observes that the Respondent has never actually used the Domain Name for a relevant website and concludes that the Respondent must have selected the Domain Name simply to exploit the INCANTO trademark (presumably referring to the mark then held by the Complainant’s predecessors in interest).

This is not persuasive, however. “Incanto”, as the Respondent points out, is not a coined term but a dictionary word in Italian that is widely used, in Italy and internationally. As a domain name, it could reasonably be viewed as having a substantial resale and advertising value for a variety of enterprises due to its generic nature. The fact that the Complainant now holds numerous trademarks in many countries does not mean that the Complainant’s INCANTO mark is necessarily “world-famous”, much less that it was “recognized throughout the world” at the relevant time, 16 years ago, when the Respondent registered the Domain Name. The Complainant has not demonstrated evidence of sales and advertising at that time to support such a claim. To the contrary, it seems that in 2003 the business of IFG was essentially limited to a few boutiques in Italy, with no evidence of an online presence. The Respondent’s assertions concerning the rationale for registering the Domain Name in 2003 are plausible, and the Panel finds insufficient evidence to disbelieve the Respondent’s account, even though it is not supported by proof in the form of a developed website or demonstrable preparations for such. Speculating in intrinsically valuable domain names represents a legitimate business interest in itself, unless the evidence points instead to a disguised intent to exploit another party’s trademark.

On balance, the Panel finds in favor of the Respondent on the second element. This is dispositive of the Complaint, as the Complainant must prevail on all three elements, but because of the request for a finding of Reverse Domain Name Hijacking the Panel will proceed to consider the third element, bad faith, as well.

D. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or …

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

All of the Complainant’s arguments for bad faith depend on retrospectively arguing that the Respondent should have been aware, in 2003, of the INCANTO brand that has since flourished, and which the Complainant has since acquired. The Complainant argues that it was “willful blindness” for the Respondent to be unaware of the International and European Union trademarks held by IFG or its predecessor in interest. This might be a more persuasive argument in the case of a well-known and highly distinctive mark, especially involving a coined word or phrase. But the argument is unconvincing as applied to a domain name identical to a dictionary word that is used by many companies and individuals online. The Complainant overreaches in arguing that the “Respondent should have known about the Complainant’s trademarks despite he is French. The INCANTO trademarks are recognizable all over the world…”. The record simply does not support that conclusion at the time of the Domain Name registration in 2003, when IFG apparently had only a few boutiques in Italy and no online presence.

Moreover, to prevail on the element of bad faith, the Complainant must establish the probability that the Respondent was not only aware of the trademarks held at that time by IFG in connection with its boutique sales in Italy, but also chose the Domain Name for its value in relation to the corresponding trademark, rather than for its more obvious and more widely appealing generic value. This simply seems unlikely in the context of the apparently localized reputation of IFG in 2003. It is equally improbable, therefore, that the Respondent acquired the Domain Name in 2003 with the aim of misdirecting Internet users trying to find the Italian boutiques, or to prevent IFG from expanding into the United States market by acquiring a desirable “.com” domain name.

The Complainant’s “passive holding” arguments (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and WIPO Overview 3.0, section 3.3) fail not only on the ground that prior awareness of the mark was unlikely but because other factors cited in the passive holding cases are not present that would allow the Panel to conclude that there could not have been any plausible reason for registering the Domain Name other than ultimately to exploit the Complainant’s mark. The mark in this case is not a coined word (such as TELSTRA) that had become well known and over a substantial time uniquely associated with the Complainant, and the Respondent here had plausible reasons to value the Domain Name for its dictionary senses.

The Complainant also refers to the correspondence in early 2019 concerning the Complainant’s desire to purchase the Domain Name. At one point, the Respondent mentioned that he had sold another domain name, <edugate.com>, for USD 1.5 million. This hardly suffices to establish bad faith under the Policy, paragraph 4(b)(i), as proof that the Respondent acquired the Domain Name in 2003 “primarily for the purpose” of selling it to the Complainant (or the Complainant’s predecessor in interest, in this case). The Respondent held the Domain Name for 16 years without contacting IFG or the Complainant; it was IFG that contacted the Respondent in January 2019. And as discussed in the previous section concerning the second element of the Complaint, the Respondent’s denial of awareness of the trademark in 2003 is plausible, given that its sales under the mark seem to have been limited to a few boutiques in Italy at that time. There is little likelihood that the Respondent in France was aware of the mark in the first place and would have troubled to acquire the Domain Name at auction in the hope that the owner of the Italian boutiques would ultimately try to purchase it.

The Complainant refers as well to a “cybersquatter’s pattern of conduct” not only in negotiating for the sale of the Domain Name (but that is in the nature of domain speculation) and in first using a domain privacy service and then furnishing incomplete identification of the registrant. The Panel notes, however, that the Respondent always provided contact details, replied to the Complainant’s inquiries and communications from the Center, and submitted a Response in this proceeding. The Panel does not find a pattern of obfuscation or avoidance. The Complainant’s first Supplemental Filing cites an earlier UDRP proceeding naming the Respondent, PATRIZIA Immobilien AG v. Domain Admin / Sébastien Schmitt, WIPO Case No. D2010-1495, as evidence of the Respondent’s “earlier bad faith conduct” in registering a domain name coinciding with a “famous trademark”. The Complainant acknowledges that this complaint was denied but says the Respondent then “quickly sold this domain name” to the complainant, which “confirms bad faith and lack of rights or legitimate interests”. It is not clear how the Complainant learned of these subsequent developments, but they do not lead ineluctably to the Complainant’s conclusions. The three panelists in that proceeding unanimously determined that the complainant failed to demonstrate that this same Respondent lacked rights or legitimate interests or that the registration was made in bad faith. The Panel here, as in the earlier proceeding, does not find the Respondent guilty of a “pattern” of cybersquatting.

The Panel concludes that the Complainant has not met its burden of persuasion on the third element of the Complaint, bad faith.

E. Reverse Domain Name Hijacking

Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here.

Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel, as in this case) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.).

The Complainant’s first Supplemental Filing acknowledges that the “Complainant began to optimize the business recently, began to increase the efficiency of assets. The Complainant has plans for the US market, so drew attention to the problem of respective domain names and filed this Complaint.” This does seem to be a “Plan B” filing, after the Complainant recently tried without success to purchase the Domain Name from the Respondent some 16 years after the Respondent added the Domain Name to his portfolio. The Complaint made sweeping assertions about the Complainant’s business and trademark rights and recognition that simply did not match the facts in 2003 when the Domain Name was registered and offered little or no evidence to support its claims for the “worldwide” fame of the trademarks in 2003. It required two rounds of Supplemental Filings and additional research in public record sources for the Panel to reconstruct the circumstances in 2003. The Complaint was factually misleading and had little prospect of establishing bad faith in particular, given the very limited and localized use of the mark in 2003 by the Complainant’s predecessor in interest and the generic meaning of the term “incanto”. The Complainant contended repeatedly, with no basis, that this was a “coined” term associated distinctly with the Complainant. Arguing the Respondent’s “pattern” of bad faith based on a UDRP decision that actually found in favor of the Respondent is simply one more example of the egregious overreaching in the Complainant’s approach to this proceeding.

The Panel finds that the Complainant brought the Complaint in bad faith, in an attempt at Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Presiding Panelist

Gabriela Kennedy
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: April 16, 2019

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