Temaris dot .com : UDRP filed against #HugeDomains fails miserably at the #WIPO

UDRP has been denied.

A UDRP filed against HugeDomains for the domain Temaris.com failed miserably.

The drop-catching marketplace defended its rights, against the Complainant, Tenaris Connections BV of Amsterdam, Netherlands.

The Complainant claimed that “temaris” is similar to their TENARIS mark, and that it constitutes “typo-squatting.”

The Respondent presented the meaning of “temaris” in several languages, along with the registration patterns for other domain names in its inventory.

The three member panel found that the Respondent has rights in the domain name Temaris.com:

“In the present case the Disputed Domain Name is materially different from the word “tenaris” and there is no evidence at all of the Respondent having any knowledge of the Complainant or of seeking to target the Complainant.”

The WIPO panel also stated that previous UDRP cases where the Respondent was found guilty, don’t establish a pattern when they own millions of domain names:

“The Panel is also not persuaded by the fact that the Complaint has identified two previous UDRP decisions where the Respondent has been found to have registered and used a domain name in bad faith. Two such decisions when the Respondent has a portfolio of millions of domain names does not in the Panel’s opinion establish any sort of pattern of conduct on the part of the Respondent which would justify any adverse inference in the present case.”

One panelist, The Hon Neil Brown Q.C., stated that the Complainant is guilty of Reverse Domain Name Hijacking; being the dissenting minority, no such finding was delivered.

Full details of this decision follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tenaris Connections BV v. Domain Admin, HugeDomains.com
Case No. D2018-1849

1. The Parties

The Complainant is Tenaris Connections BV of Amsterdam, Netherlands, represented by Mitrani, Caballero & Ruiz Moreno Abogados, Argentina.

The Respondent is Domain Admin, HugeDomains.com of Denver, Colorado, United States of America (“US”), internally represented.

2. The Domain Name and Registrar

The disputed domain name <temaris.com> (the “Disputed Domain Name”) is registered with DropCatch.com 568 LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2018. On August 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 20, 2018, 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 August 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2018. The Response was filed with the Center September 7, 2018.

On September 14, 2018, the Complainant lodged a supplemental filing (the “Complainant’s Supplemental Filing”). On the same day the Respondent objected to this fling being introduced and requested that if it is introduced the Respondent be afforded an opportunity to reply to it.

The Center appointed Nick J. Gardner, Jacques de Werra, and The Hon Neil Brown Q.C. as panelists in this matter on October 5, 2018. 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 is a company incorporated in the Netherlands. It is a member of a group of companies all owned by Tenaris S.A. a company incorporated in Luxembourg (together the “Tenaris Group”). The Complainant is the company within the Tenaris Group which owns the group’s trademarks. The Complainant says that the Tenaris Group “is a leading global manufacturer and supplier of steel pipe products and related services used in the drilling, completion and production of oil and gas, in process and power plants, specialized industrial and other industrial applications such as automotive and high performance mechanical and structural applications”. There is no dispute that this is the case. It operates worldwide and employs over 19,000 people. Its customers include most of the world’s leading oil and gas companies as well as engineering companies engaged in constructing oil and gas gathering, transportation, and processing facilities.

The Tenaris Group’s origins date back many years under different names. In 2001 it adopted the name “Tenaris”. This was a coined word chosen after consultation with a specialist branding firm and was not a name that was used in commerce by anyone else anywhere in the world.

The Complainant owns numerous trademarks for the word “tenaris” including for example US registration No. 2679032, registered on January 21, 2003. These trademarks are referred to in this decision as the “TENARIS trademark”.

The Tenaris Group’s principal website is at “www.tenaris.com” and the Complainant owns many other Tenaris related domain names including <tenaris.org> and <tenaris.net>.

The Disputed Domain Name was registered by the Respondent on November 13, 2016. It is linked to a webpage which indicates that the Disputed Domain Name is for sale at a price of USD 3,195. That page does not carry any click through links or other advertising save for an offer to help finance the purchase of the Disputed Domain Name. The text on the webpage displays the Disputed Domain Name with the letters “t” and “m” capitalized, i.e., <TeMaris.com>.

5. Parties’ Contentions

A. Complainant

The Complainant says the Disputed Domain Name is confusingly similar to its TENARIS trademark. It says this is a “typosquatting” case and the substitution of the “n” with an “m” was deliberate.

The Complainant says that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and does not own a trademark for TENARIS.

The Complainant says that the Disputed Domain Name was registered in bad faith as the Respondent clearly knew of the Complainant. It says it is “inconceivable” the Respondent did not know of the Complainant’s goodwill. It says the Disputed Domain Name is offered for sale for USD 3,195 which exceeds the Respondent’s out-of-pocket registration costs and amounts to bad faith. It says the Disputed Domain Name was registered and acquired by the Respondent primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Tenaris Group.

The Complainant relies upon various previous UDRP decisions where it has been successful. It also relies upon previous UDRP decisions where the Respondent has been a respondent and lost. These are discussed further below.

The Complainant has in addition cited a very large number of previous UDRP decisions most of which seem to the Panel to concern arguments which are not controversial and where the relevant principles can readily be established by considering the appropriate section of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel only comments on these cases below if it is necessary to do so.

The Complainant says it is suffering an increasing number of typosquatting and/or cybersquatting and/or phishing attacks and that as a consequence it has a “zero tolerance” with regards to such cases/attacks and is legitimately taking defensive and offensive measures to protect its interests.

B. Respondent

The Respondent takes issue with the entirety of the Complainant’s case. The main point it makes are summarised below.

It denies that the term “temaris” or “te maris” is similar to “tenaris”. It says the Complainant has no rights in the terms “temaris” or “te maris”. It says that the Complainant does not use either of those terms.

It says the terms “temaris” and “te maris” are generic and have many meanings in different languages, as follows:

Temaris means “topics” in Catalan
Te maris means “you husbands” in French
Temaris means “topics” in Basque
Te maris means “you are married” in Chichewa
Temaris means “topics” in Corsican
Te maris means “you’re dead” in Esperanto
Temaris means “be afraid” in Esperanto
Temaris means “couples” in Filipino
Temaris means “topics” in Galician
Te maris means “the marsh” in Hausa
Te maris means “the marsh” in Hawaiian
Temaris” means “get it” in Hmong
Te maris means “the marsh” in Igbo
Temaris means “friend” in Indonesian
Temaris means “couples” in Javanese
Te maris means “your husband” in Khmer
Te maris means “your husband” in Lao
Te maris means “you sea” in Latin
Te maris means “the marsh” in Maori
Temaris means “couples’ in Mongolian
Temaris means “you will fear” in Portuguese
Temaris means “be afraid” in Irish
Te maris means “you’re dead” in Irish
Te maris means “you are married” in Sesotho
Temaris means “get it” in Somali
Te maris means “you are married” in Swahili
Temaris means “get it” in Tajik
Temaris means “be afraid” in Welsh
Te maris means “you’re dead” in Welsh

It also says that “temaris” can be used as the plural for “temari” which is highly used in Japan. It says a temari is a type of Japanese toy ball or thread ball.

The Respondent also says it issued a “crowdsourced survey via Amazon Mechanical Turk” asking 100 people “What does ‘temaris’ mean to you?”. It says that of the 100 responses, not a single person mentioned the Complainant or the Complainant’s business nor were there any mentions related to the Complainant’s industry. The exact questionnaire which was posted on Amazon Mechanical Turk and answered by 100 random participants has been provided and the Respondent summarizes the 100 answers to the questionnaire as follows:

a. I do not know (66%)
b. Words in another language (10%)
c. Japanese Art Balls/Toys (6%)
d. Japanese Cartoon (4%)
e. Food Related (3%)
f. Sounds High Quality, Upscale, Jewelry (3%)
g. A Person’s Name (3%)
h. A Restaurant (2%)
i. A Supplement (1%)
j. Party Games (%)
k. Name of a Planet (1%)

The Respondent says that it has rights and a legitimate interest in the term “temaris”. It says a Google search for that term produces thousands of results none of which relate to the Complainant or the Tenaris Group. It also relies on image searches and searches for the term “te maris” all to similar effect.

The Respondent says it is a reseller of Internet domain names that consist of common and generic terms and phrases. The Respondent registered the domain as a generic and widely used term which is in no way related to the Complainant or its TENARIS trademark.

The Respondent denies any knowledge of the Complainant or the Tenaris Group or the TENARIS trademark. It says the following: “When registering this domain, and up until the date of being served in the present UDRP case, Respondent had never heard of Complainant or Complainant’s business, nor would Respondent have any reason to as Complainant does not have trademark rights in ‘temaris’ or ‘te maris’ and does not use these terms. Complainant itself specifically says it made up the term ‘tenaris’ to use with its very specific business. Given the generic and widespread use of ‘temaris’ and ‘te maris’, uses which can be traced back to the origin of several languages, Respondent would have no reason, nor could they possibly have associated <temaris.com> with Complainant and Complainant’s recently made up word ‘tenaris’”.

The Respondent says it owns many domain names which are similar to the Disputed Domain Name, all of which are for sale and none of which infringe upon the Complainant’s rights in the term “tenaris”. It says this shows that the Respondent has a legitimate business practice of registering short and generic domain names. It identifies the following domain names:

<TeMark.com>
<TeMars.com>
<Gamaris.com>
<Jamaris.com>
<Komaris.com>
<MiMaris.com>
<Pamaris.com>
<VaMaris.com>
<ZamaRis.com>

The Respondent says it owns one of the largest portfolios of generic domain names in the world. With over a million domain names that it owns and has for sale, not a single domain name contains Complainant’s trademark for “tenaris”.

The Respondent protests forcefully about the nature of the Complaint. In summary it says that a complaint cannot be brought against a registrant for a domain in which a complainant (i) does not have trademark rights in; and (ii) based upon a meritless assertion of the potential for a future bad faith use of said domain.

The Respondent denies acting in bad faith. It says it has never targeted the Complainant, nor is it interfering with the Complainant’s business and activities under the term “tenaris”. It says it is not seeking to profit from the Complainant’s unrelated trademark for “tenaris”, and that the Complainant has not provided any evidence to support a case of bad faith registration and use by the Respondent.

The Respondent says that the Complainant has “abused the UDRP process and filed its complaint in bad faith with the intent of stealing an unrelated domain in which the Complainant does not have a legitimate claim to”. It says the Complainant’s evidence is vague and unsupported.

6. Discussion and Findings

Procedural Matters

The Panel declines to admit the Complainant’s supplemental filing. In large measure it repeats arguments contained in the Complaint and to the extent it introduces additional material that seems to the Panel to be material which could have been included in the original Complaint. Nothing in it would alter the Panel’s analysis. For completeness the Panel notes it introduces details of a further domain name owned by the Respondent which the Complainant says is also objectionable. That domain name should (if the Complainant wishes to pursue its complaint in that regard) be the subject of a separate complaint.
Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:

(i) the Disputed Domain Name is identical with 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.
A. Identical or Confusingly Similar

The Complainant has established that it owns the TENARIS trademark.

The Panel has been unable to reach agreement on whether it considers the Disputed Domain Name to be confusingly similar to the TENARIS trademark. Panelists Gardner and de Werra consider that it is confusingly similar, Panelist Brown disagrees (see separate opinion below). In view of the Panel’s unanimous conclusion under C below it is not necessary for the Panel to reach a conclusion on this issue.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent 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.

None of these apply in the present case. However this list is non-exhaustive. As a general principle the Panel considers that aggregators/resellers of domain names are entitled to register dictionary words, acronyms and common phrases and have a legitimate interest in so doing. That is subject to the proviso this is not done with the intent to target a specific trademark holder.

WIPO Overview 3.0 at section 2.1 addresses this issue as follows “For example, generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP”.

The Panel agrees with this view and considers the same principles apply where a domain name reseller registers a longer character string simply because it considers that string is attractive and likely to be of value. Again this must be done without intent to target a specific trademark holder.

For reasons discussed in section C below the Panel considers that the Respondent has simply registered a character string it considered attractive and likely to be of value, and did so without knowledge of the Complaint or the Tenaris Group or the TENARIS trademark.

Accordingly the Panel considers that the Complainant has failed to show the Respondent lacks a legitimate interest.
C. Registered and Used in Bad Faith

The difficulty the Complainant faces in the present case is that there is no evidence before the Panel to show that it, or the Tenaris Group, has any reputation outside the specialized field in which they operate. The Tenaris Group is clearly a very substantial organisation and the Panel has no difficulty in accepting that it enjoys recognition within the oil and gas industry and in related fields concerning steel piping for use in that industry. There is however no evidence before the Panel of any wider reputation. Accordingly there is no evidence that the wider public in general, or the Respondent in particular, would have any reason to have any knowledge of either the Complainant or the Tenaris Group or the TENARIS trademark.

It is quite clear that the Respondent is in the business of registering domain names that it considers may have value and then offering them for sale. It says it owns millions of such domain names. It has denied having any knowledge of the Complainant or the Tenaris Group or the TENARIS trademark prior to the present complaint. The Panel sees no reason to doubt that denial. The Panel does not agree with the Complainant when it says it considers it is “inconceivable” that the Respondent did not know of the Complainant or that the Disputed Domain Name was a deliberate case of “typosquatting”. There is nothing before the Panel to suggest that the name “tenaris” is known anywhere outside the oil and gas sector.

The Panel is not necessarily persuaded that the term “temaris” is generic or in common usage despite the fact it can be translated into many different languages (see above). It seems to the Panel more properly to be regarded as a seven letter character string, which has no particular meaning in English, but which is pronounceable in English and which may readily be regarded as being likely to be of potential value quite independently of anything to do with the Complainant. The fact the term translates into other languages and is also used by third parties (as shown in the Respondent’s Google search results) reinforces that view. The fact the Respondent has registered a significant number of other domain names of broadly the same nature (see above) also confirms that view.

It is also clear on the evidence that any searches that the Respondent might have done for the term “temaris” or “te maris” would not readily have revealed the existence of the Complainant or the Tenaris Group or the TENARIS trademark. This appears to be a direct consequence of the Complainant’s specialized reputation and lack of any wider recognition outside its field of activity. The Panel considers this reinforces the Respondent’s claim to have had no knowledge of the Complainant or the Tenaris Group or the TENARIS trademark prior to this complaint.

In reaching this conclusion the Panel has not attributed significant weight to the Amazon survey the Respondent relies upon (above) as it does not know enough about exactly how it was conducted. The Panel is however struck by the fact that it would seem that not a single person responding to the survey identified the Complainant or the TENARIS trademark in his or her answer, which seems consistent with the Panel’s view (above) as to the specialized sector the Complainant operates in.

If the Respondent had no knowledge of the Complainant or the Tenaris Group or the TENARIS trademark it cannot have registered the Disputed Domain Name in bad faith. There is also no evidence it has used it in bad faith. All it has done is offer it for sale. There is nothing wrong with offering for sale a domain name which has been registered in good faith, and seeking a price in excess of the costs of registration. The Respondent has done nothing that targets or in any way relates to the Complainant or its business. The Respondent is correct when it says the Complainant’s case is based upon what it says could be done with the Disputed Domain Name rather than what the Respondent has actually done.

The Panel is not persuaded that the various cases the Complainant relies upon where it has succeeded in the past are comparable to the present situation. Specifically:

Tenaris Connections BV v. WeiBing, WIPO Case No. D2010-0233, concerned <tenaris.tel>. That is an identical domain name and was being used to redirect web traffic to a competing manufacturer.

Tenaris Connections BV v. Stanley Pace, WIPO Case No. D2011-1448, concerned <tenari.com>. The panel did not consider the respondent’s case (that tenari was a common Italian surname and was registered for use as part of a vanity email service) was supported by any credible evidence.

Tenaris Connections BV v. Cristian Liviu Panea, BisonMedia, WIPO Case No. DEU2017-0007, concerned <tenaris.eu>. That was an identical domain name which the respondent had offered to sell to the complainant.

Tenaris Connections BV v. Whoisguard, Inc. / Eleven Xie, WIPO Case No. D2018-1121, concerned <tenariss.com>. The evidence showed the domain name being used to attempt a fraud upon a supplier to the complainant.

In the present case the Disputed Domain Name is materially different from the word “tenaris” and there is no evidence at all of the Respondent having any knowledge of the Complainant or of seeking to target the Complainant.

The Panel is also not persuaded by the fact that the Complaint has identified two previous UDRP decisions where the Respondent has been found to have registered and used a domain name in bad faith. Two such decisions when the Respondent has a portfolio of millions of domain names does not in the Panel’s opinion establish any sort of pattern of conduct on the part of the Respondent which would justify any adverse inference in the present case.

Accordingly the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Reverse Domain Name Hijacking

Reverse Domain Name Hijacking (“RDNH”) is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

Paragraph 15(e) of the 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 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”.

As set out in the WIPO Overview 3.0 section 4.16, reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence”.

The majority of the Panel (Panelists Gardner and de Werra) do not consider the Complainant’s conduct warrants a finding of RDNH. They consider the Complainant has overstated its case, and failed to consider fully the consequences of the fact that there was no evidence of the Respondent having targeted the Complainant. However in circumstances where the Complainant is seeking to be vigilant to prevent “typosquatting” in relation to its name, and where it has succeeded in previous UDRP cases (albeit with materially different facts) the majority are not persuaded the Complainant’s conduct falls within the above guidelines nor that it deserves the censure of a finding of RDNH.

Panelist Brown disagrees for the reasons set out in the separate opinion below.

8.Decision

For the foregoing reasons, the Panel unanimously finds that the Complaint is denied. By a majority the Panel declines to find the Complaint was brought in bad faith.

Nick J. Gardner
Presiding Panelist

Jacques de Werra
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: October 16, 2018
SEPARATE OPINION CONCURRING IN THE RESULT BUT DISSENTING ON CONFUSING SIMILARITY AND REVERSE DOMAIN NAME HIJACKING
The Honourable Neil Anthony Brown QC

1. CONFUSING SIMILARITY

Panelist Brown takes the view that the Panel should reach a decision on this issue and should find that the disputed domain name is not confusingly similar to the relevant trademark.

The argument that the Disputed Domain Name is confusingly similar rests on the basis that there is a minor spelling difference between it and the trademark, in particular that the domain name has the letter “m” where the trademark has the letter “n”, that this is typosquatting and that the domain name should be read as “tenaris”. Indeed, the Complainant argues that the alteration of the “n” into an “m” was done “on purpose”, for which there is no evidence and nothing from which such an inference could be drawn. The argument for confusing similarity is an oversimplification of the panel’s task and in any event it misstates that task for, after applying any and all aids to interpretation, it still remains to be decided if the domain name is confusingly similar to the trademark. This is to be determined by how an objective bystander would see the Disputed Domain Name. It is of course possible that some observers would read “temaris” as “tenaris”, and would be confused between the two, but it is not probable and in the opinion of this panelist it is highly unlikely. That is so for the following reasons.

First, a panelist is entitled to, and probably should, assume that any Internet user is capable of reading the Disputed Domain Name, comparing it with the relevant trademark, noting any differences and reaching a conclusion whether the former is invoking the latter or could reasonably be confused with it. It therefore requires a leap of faith to think that when internet users see the disputed domain name they would read it as something other than what it plainly is, namely the word “temaris”.

Secondly, it requires another leap of faith to conclude that Internet users being aware of TENARIS would think that was what they were reading when they were presented with a domain name that was <temaris.com>. The Complainant has adduced substantial evidence showing the prominence of the name Tenaris, especially in the oil and gas industry and how it has achieved such recognition. It is a mystery then as to why this awareness of the name, at least in the oil and gas industry, should now be set aside and ignored simply because there is a difference of one letter between the domain name and the trademark. In the opinion of this panelist, persons familiar with TENARIS would surely know when they see the name and when they see something different, which is the case when they are being presented with <temaris.com>. Most users of the Internet would therefore see “temaris” exactly as it is and would not be confused.

Thirdly, it is also entirely erroneous to argue that what is referred to as “typosquatting” means that a domain name is automatically confusingly similar to a trademark; some differences in spelling, even single letter differences, give an entirely different meaning to a word used as a trademark and most Internet users would be astute enough to realise when this has occurred. This is especially so when, as in the present case, the evidence is that the word “temaris” has many different meanings and uses and in many languages, any of which might be envisaged by the domain name. As an example of this point, it was not accepted in eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, and ors, WIPO Case No. D2004-0552 (September 11, 2004), cited by the Respondent, that the domain name <ispinthebottle.com> was confusingly similar to the trademark ESPINTHE BOTTLE, when one letter was different, as in the present case, enabling the panel to observe that “…the Panel believes that a single-letter difference does not automatically prove confusing similarity under paragraph 4(a)(i) of the Policy.”(emphasis added). In the present case, many Internet users would realise the names were entirely different and not confusing at all because, on the evidence, they would recognise the word in the domain name as having a particular and specific meaning in their own language and one different from the trademark.

This panelist therefore does not accept that the Complainant has discharged its evidentiary burden to show that the domain name is confusingly similar to the trademark.

2. REVERSE DOMAIN NAME HIJACKING

The Respondent submits that the Complaint is an “abuse of the UDRP arbitration process”, which is sufficient to raise the question of Reverse Domain Name Hijacking (“RDNH”) and in any event a panel is entitled to and probably should always consider the issue, whether such a finding is requested or not.

This panelist would find that the filing of the Complainant is an abuse of the proceeding.

That is so because the Complainant must have known that it had no case but nevertheless went ahead with the proceeding. The majority opinion shows just how reckless it was for the Complainant to present the case it did when it must have known that there was no factual basis for it. It was so reckless in the opinion of this panelist that, by itself, it justifies a finding of RDNH.

Two additional points must be made. First, the Complainant, properly advised, should have made some enquiries about how the domain name had been used in the past. Had it done so by, for example, looking at the Wayback Machine at “www.archive.org”, it would have found that the domain name had never been used for targeting of the Complainant or anyone else, or for any other improper use, but in fact had clearly been used as a generic expression and as the name for a legitimate business. That should have told the Complainant that the word at issue had obvious meanings and probably in several languages and that when Internet users saw the domain name they would probably gave it a generic meaning or a specific identifiable meaning in a foreign language rather than the far-fetched meaning the Complainant has chosen to give it. Thus, in 2008, the domain name was used for a website containing advertisements in the Spanish language, including advertisements for education and then advertisements for loans, music etc. For several years thereafter, the domain name was for sale. Then, from 2013 until 2016 it was continuously used to promote the Temaris Japanese restaurant in Miami, Florida, and then, of course, later for sale. This information might have prevented the Complainant from presenting a case that was based on sheer conjecture.

The second point, which sways the debate, is that the Complainant made some serious allegations against the Respondent for which it is hard to see any justification. In particular it alleged that the Respondent had engaged in bad faith registration and use of the domain name which was not only fanciful but was an allegation that should only have been made with specific and reasonable evidence to support the allegation. There is no evidence to suggest that the Complainant demonstrated any such caution.

For all of those reasons it is appropriate to make a finding of RDNH.


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