RDNH finding.
The UDRP against the aged three letter domain, UAX.com, has ended with a finding of Reverse Domain Name Hijacking.
Note: The Respondent was represented by ESQwire.com, advertisers on our publication. This information was obtained from a public source and does not constitute advertising.
When the Complainant’s failure to appreciate the weaknesses of its case, despite being placed on prior notice by the Respondent, is coupled to the fact that it only launched the Complaint after unsuccessfully attempting to acquire the disputed domain name at its own chosen price, the Panel accepts the Respondent’s submission that the Complaint was what is popularly known as a “Plan B case”, was brought in bad faith and constitutes an abuse of the administrative proceeding.
Full details on this decision follow:
Universidad Privada De Madrid, S.A. (UNIVERSIDAD ALFONSO X EL SABIO -UAX) v. Vince Harasymiak, Domain Capital
Case No. D2019-29251. The Parties
The Complainant is Universidad Privada De Madrid, S.A. (UNIVERSIDAD ALFONSO X EL SABIO -UAX), Spain, represented by Legal Things Abogados, Spain.
The Respondent is Vince Harasymiak, Domain Capital, United States of America (“United States”) , represented by ESQwire.com PC, United States.
2. The Domain Name and Registrar
The disputed domain name <uax.com> is registered with GoDaddy.com, LLC (the “Registrar”) .
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2019. On November 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2019, 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 December 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2019. On December 13, 2019, the Center received an automatic four day extension request from the Respondent pursuant to paragraph 5(b) of the Rules. Accordingly, the due date for a Response was extended until December 27, 2019. The Response was filed with the Center December 26, 2019.
The Center appointed Andrew D. S. Lothian, José Carlos Erdozain, and The Hon Neil Brown Q.C. as panelists in this matter on January 27, 2020. 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
Founded in 1993, the Complainant is the first private university to be authorized by the Spanish parliament. Its programs are adapted to European standards and it is currently engaged in some 8,800 collaboration agreements with private and public entities, providing its students with internships. The Complainant has used the acronym “UAX” since it was founded, representing the first letters of its name “Universidad Alfonso X”. The Complainant registered the domain name <uax.es> on February 22, 1995, and has used this for its official website since at least June 1996.
The Complainant is the owner of two registered trademarks which incorporate the term “UAX”, namely:
(1) European Union registered trademark no. 11245792 for a figurative mark featuring the stylized characters “open UAX” in blue and red respectively, with three squares of blue, red, and yellow, all overlaid upon a faint greyscale image of an emblem or seal which features the words “DIFFUSIVUM SUI BONUM EST” in an outer ring and “ALFONSO X EL SABIO” in an inner ring; registered on April 19, 2013, in use classes 16, 35, 41, and 42; and
(2) European Union registered trademark no. 8144933 for a figurative mark featuring the same emblem or seal in color with the words “UNIVERSIDAD ALFONSO X EL SABIO UAX” below in blue; registered on January 31, 2010, in use classes 16, 35, 41, and 42.
The Complainant’s wholly owned Foundation is the owner of Spanish registered trademark no. M3066570 for a combined mark featuring the same emblem or seal in color overlaid upon a pale blue device containing the stylized words “fundacion uax”, below which are the words “FUNDACIÓN UNIVERSIDAD ALFONSO X EL SABIO”; registered on August 12, 2013, in use classes 16, 35, 41, and 42.
The Complainant is also the owner of Spanish registered trademark no. M1710651, which does not contain the string UAX, namely a word mark for the term UNIVERSIDAD ALFONSO X EL SABIO in class 42; registered on June 1, 1994.
The disputed domain name was created on January 24, 1999. The Respondent is an entity that has been registering common word domain names for investment and development since at least December 2005. The Respondent purchased the disputed domain name in 2014 as part of an unspecified group of allegedly generic and descriptive domain names, which were being sold in a portfolio. The website associated with the disputed domain name states that it is for sale and invites contact with a named person by telephone and email.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that it benefits from worldwide prestige, due to its international activities, adding that more than 15% of its students are international and that it offers exchange programs with more than 160 universities around the globe. The Complainant provides evidence of its foundation in 1993, of its registration of the domain name <uax.es> in 1995, and produces two advertisements from 1996 and 1997 respectively which feature said domain name in the website address, “www.uax.es”. The Complainant also presents a press dossier featuring media coverage of its activities, in the Spanish language, dating principally from 2018 and 2019.
The Complainant asserts that the term “UAX” is a registered trademark according to the marks noted in the factual background above and submits that no one else but the Complainant and its Foundation has any right over this mark, in use since 1995. The Complainant notes that said term is included in the disputed domain name and that this meets the test for confusing similarity.
The Complainant states that the Respondent owns no registered trademark or company that could justify its registration of the disputed domain name, that the Respondent does not appear to be carrying out any legitimate activity thereunder, that the Respondent has no past or present relationship with the Complainant, and that the Respondent has never been authorized or licensed by the Complainant to use the disputed domain name. The Complainant submits that there is no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, noting that it was registered 20 years ago and has never been used.
The Complainant states that searches on “www.google.com” do not show references to other companies or institutions and do not refer to the Respondent, such that “UAX” only identifies the Complainant. The Complainant provides the first page of results from said search engine.
The Complainant submits that the Respondent only registered the disputed domain name to sell it to the Complainant or a competitor thereof for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The Complainant states that it attempted to contact the Respondent by telephone to purchase the disputed domain name and was quoted EUR 325,000, thus exceeding the cost of its registration and maintenance. The Complainant notes that it contacted the Respondent again by way of a written cease and desist notice, setting out its rights in the term “UAX” and indicating the Complainant’s wish to acquire the disputed domain name, noting that the Respondent’s counsel replied rejecting the Complainant’s arguments.
The Complainant states that the Respondent’s conduct suggests a pattern of bad faith in taking advantage of entities using acronyms, arguing that its request for an excessive amount of money evidences bad faith. The Complainant argues that the disputed domain name was acquired in the knowledge that a university such as the Complainant will attract “international diffusion and prestige”, adding that the Complainant’s international student contingent and activities widen the field of such knowledge beyond that of a company commercializing products on a local scale.
The Complainant submits that the Respondent has been the object of decisions under the UDRP in which transfer of the domain names concerned was ordered, namely (1) CompuCredit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints, WIPO Case No. D2007-0407; (2) Online Buddies Inc. v. Domain Capital, WIPO Case No. D2007-0541; (3) Quester Group, Inc. v. Domain Capital, WIPO Case No. D2010-0594; and (4) BTSA Biotecnologias Aplicadas, S.L. v. Gregg Freeman, Domain Capital and Macrosten Ltd., WIPO Case No. D2018-1726. The Complainant focuses on the latter case, which it says shows that a failure on the part of a sophisticated registrant to search or screen domain names against available online databases can provide a foundation for abusive registration on the basis of “willful blindness”. The Complainant also notes that transfer was ordered in a similar case in respect of the acronym “UJA”, namely Universidad de Jaén v. Domain Spa LLC, WIPO Case No. DES2010-0040 (“Universidad de Jaén”).
B. Respondent
The Respondent requests that the Complaint be denied.
The Respondent submits that the disputed domain name was registered in 1999 by its original owner, was re-registered in 2013 by a second owner, and then sold to the Respondent in 2014. The Respondent points out that the Complainant’s UAX marks were registered between 2010 and 2013. The Respondent notes that the Complainant waited over 20 years to take any action to challenge the disputed domain name and chose to do so after its unsolicited offer to purchase the disputed domain name was unsuccessful.
The Respondent states that it purchased the disputed domain name purely because it was a valuable three letter domain name with inherent value, which it believed that anyone would be entitled to register, adding that these are easy to remember and serve well as online identities. The Respondent denies knowing of the Complainant or its mark when it registered the disputed domain name. The Respondent provides a list of 21 three letter domain names, which it says that it has registered over the years, asserting that this demonstrates that the disputed domain name was acquired solely based on its generic nature. The Respondent states that it had no intent to sell the disputed domain name to the Complainant, to disrupt the Complainant’s business or to confuse the Complainant’s customers. The Respondent adds that it has presented a landing page offering the disputed domain name for sale and has not designed links to target the Complainant or mislead consumers.
The Respondent denies that the acronym “UAX” is exclusively associated with the Complainant, although noting that the Complainant has done a good job of optimizing the search engine results for that term. The Respondent provides evidence that the term also refers to the Unicode Standard Annex and is an acronym used by United Airlines, which it adds is the second largest airline carrier in the world. The Respondent goes on to show with eight examples that the presence of the letter “X” in an acronym is highly common as it stands for “exchange”. The Respondent adds that “X” can also stand for “extension” and that “.uax” is a file extension for audio files, which returns some 379,000 search results from Google.
The Respondent points out that the Complainant does not have a registered trademark for the letters “UAX” alone, adding that there is no evidence that the Complainant’s purported use has acquired secondary meaning and that global consumers associate the term exclusively with the Complainant. The Respondent submits that the Complainant’s University is not a global brand, stating further that obtaining secondary meaning for an acronym is highly difficult, and concluding that the Complainant has failed to establish that UAX is a distinctive mark or is capable of acting as a common law trademark in the absence of significant secondary meaning.
The Respondent argues that its registration of a three character domain name and use as an investment establishes rights and legitimate interests, noting that anyone can register domain names incorporating short letter combinations to which a complainant does not have exclusive rights and can resell these, and citing a variety of cases under the Policy in support of this proposition. The Complainant asserts that its evidence of third party use of the term “UAX” establishes its rights and legitimate interests, given that the Complainant does not have a famous or well-known brand, and makes it more difficult for a finding that the Respondent was aware specifically of the Complainant’s mark at the point of acquisition of the disputed domain name. The Respondent asserts that, absent any evidence of targeting, it cannot be presumed that the Respondent, or the two prior registrants of the disputed domain name, registered it with the Complainant in mind as the Complainant is not, nor was at the point of registration/acquisition, a well-known consumer brand or trademark. The Complainant submits that a business based on investing in domain names, demonstrated by its 21 three letter domain names, satisfies the legitimate interest requirement of the Policy, provided that there is no evidence that a trademark was targeted by the registrant.
The Respondent submits that the disputed domain name was not registered in bad faith, asserting that this cannot be established without proof of intent to profit from the Complainant’s mark. The Respondent argues that good faith registration is evident from the Respondent’s acquisition of a previously registered domain name of longstanding, which consists of three letters and is thereby inherently valuable, in the absence of any knowledge of the Complainant. The Respondent denies that the offer of sale of the disputed domain name or the making of a response to an unsolicited inquiry about the disputed domain name is evidence of bad faith, noting that past cases have found this to constitute a bona fide offering of goods or services where not undertaken with intent to abuse a trademark.
With regard to the Complainant’s telephone call regarding the disputed domain name, the Respondent notes that the Complainant did not identify itself and that the price quoted for the disputed domain name was a market price with reference to recent sales of corresponding generic domain names in the secondary market. The Respondent notes that once the Complainant’s legal counsel wrote to the Respondent identifying the Complainant, the Respondent had its own legal counsel respond. The Respondent asserts that the Complainant’s 20 year delay in taking action against the disputed domain name raises the inference that it did not truly believe that its registration and use were truly improper.
The Respondent seeks a finding of reverse domain name hijacking (“RDNH”), arguing that there is no basis for the Complaint, and that the Complainant was placed on notice of the weakness of its claims in the Parties’ prior correspondence. The Respondent concludes that the Complainant does not have a registered trademark for “UAX”, that its claim of common law rights is inadequate, that the Respondent has a legitimate interest in the disputed domain name, that its registration and ownership of the disputed domain name since 2014 shows no bad faith, and that this is a “Plan B” case where the Policy has been used after failing to acquire the disputed domain name in the marketplace. The Respondent asserts that RDNH has been found in cases with more favorable facts than the instant case.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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.
A. Identical or Confusingly Similar
The Respondent is correct in pointing out that the Complainant has no registered mark for the term “UAX” on its own. Furthermore, the Complainant has no word marks for this term and puts forward two figurative marks, along with a figurative mark owned by its affiliate. The Policy only requires that the Complainant has “rights in a trademark” for the first part of the first element test, and accordingly the Complainant’s figurative marks prima facie meet this requirement. In terms of comparing said marks to the disputed domain name, the generally accepted approach is to remove the graphical elements from any textual portion of the marks on the basis that domain names are alphanumeric only and do not feature graphics. The comparison proceeds between the textual portion (absent any disclaimed elements) and the disputed domain name.
In the present case, the fact is that the second level of the disputed domain name consists merely of the letters “uax” while the textual portions of the various cited trademarks contain more words and characters along with those letters in varying degrees of prominence. In these circumstances, it is evident that identity could not be found between mark and disputed domain name, and it is by no means straightforward for the Panel to find confusing similarity either. For example, it cannot be argued that the trademark is clearly recognizable within the disputed domain name during the comparison exercise. Only a part of the textual element, consisting of three letters, is visible and there is no basis for finding that this is a particularly prominent or dominant part of the cited trademarks.
In these circumstances, the Panel turns to the Complainant’s case regarding common law rights in the term “UAX”. The Panel considers that there was no serious attempt on the Complainant’s part to make out a common law or unregistered trademark for UAX in this case and only very limited evidence of the type normally adduced on this issue was put forward. The evidence on record does show that the Complainant adopted these three letters for its own domain name and corresponding website around 1995, in the comparatively early days of the Internet. Two examples were provided of said domain name used in advertising in 1996 and 1997, although the domain name itself features simply in a URL in small typeface at the foot of each and is not prominent, nor is the Complainant described in either of said advertisements as “UAX”. The Complainant shows more recent examples in 2018 and 2019 of media references to it as such, although the term “UAX” is rarely used in isolation and is generally presented as an abbreviation after the Complainant’s full name. The Panel accepts the Respondent’s submission that more compelling evidence than has been put forward by the Complainant on the present record would be required in order for it to establish a secondary meaning in the term “UAX”.
In all of these circumstances, the Panel considers that the first element assessment does not favor the Complainant on the present record, even though this is generally regarded as a low threshold test. The Panel therefore turns to the second and third elements of the Policy.
B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with the first and third element tests, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(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
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; 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.”
The Panel notes that the point at which registration in bad faith is to be assessed is at the date of acquisition of the disputed domain name by the Respondent, in other words, in 2014. The essence of the Complainant’s case is that due to the fame of its UAX marks and the extent to which it is known as such internationally, the Respondent must have had the Complainant and its rights firmly in mind at the point of acquisition of the disputed domain name. The Complainant focuses on paragraph 4(b)(i) of the Policy and submits that the Respondent intended to sell the disputed domain name to the Complainant or a competitor for a price in excess of its documented out of pocket costs.
The question for the Panel here is whether it is more likely on the balance of probabilities that the Respondent registered the disputed domain name because it was aware of the Complainant’s rights in the term “UAX”, in which the Complainant directly asserts that no-one else has or could have an interest (and/or that the Respondent was “willfully blind” to such rights) or that the Respondent was investing in an inherently valuable three letter domain name along with others, which was likely to be of interest or applicability to a wide variety of possible purchasers. The Panel is satisfied on the basis of the present record that the Complainant’s assertion that no-one other than the Complainant or its Foundation could have an interest in the term “UAX” is considerably overstated. In the first instance, the Respondent shows several examples of the term in use by other parties and to refer to various concepts including technical standards.
Secondly, the Panel notes that the Complainant’s own screenshot of a first page of Google search results for the term “UAX” does not demonstrate that this acronym exclusively refers to the Complainant, even in its own field of activity. The screenshot is presented in the Spanish language. Among the first few results is a “www.wikipedia.org” page marked “desambiguación” or, in English, “disambiguation”. The Complainant did not discuss this entry in the Complaint. The Panel notes that a page of this type is generally displayed on the website concerned where a term may have multiple meanings, so that users may identify on “www.wikipedia.org” the usage in which they are most interested. Following the link concerned on its own initiative, being a publicly available item placed into evidence by the Complainant, the Panel notes that the corresponding page states that “UAX” may refer to not one but two Universities, the second being stated to be “Universidad Anáhuac Xalapa of Mexico”. While the Panel does not place any special or particular reliance on this example, it is illustrative of the fact that any combination of three letters is likely to reference multiple different entities and concepts, thus reinforcing the Respondent’s submissions on this issue.
The Panel notes that the Respondent specifically denies being aware of, or targeting, the Complainant’s trademarks at the point of acquisition of the disputed domain name. Given the Complainant’s figurative marks, in which as noted above the term “UAX” is not particularly prominent and is surrounded by multiple other words and graphical elements, given the geographic separation of the Parties, and given the various other uses to which the acronym may be put, the Panel finds the Respondent’s denial to be reasonably credible. This is not to say that the possibility of the Respondent’s “willful blindness” to a violation of the Complainant’s rights should be overlooked by this Panel. “Willful blindness” is a term which refers back to the registrant’s representations in paragraph 2 of the Policy, and particularly the warranty that the domain name concerned will not infringe upon or otherwise violate the rights of any third party. It has been considered in UDRP cases in a situation where a registrant, usually a sophisticated domain name speculator, actively turns a blind eye to likely trademark rights in the manner of its registration or acquisition of domain names for commercial exploitation (see, for example, the discussion in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
As was noted by the panel in SK Lubricants Americas v. Andrea Sabatini, Webservice Limited, WIPO Case No. D2015-1566 (“SK Lubricants”), the obligation on the part of a registrant to determine that its domain name does not violate a trademark “is not however an absolute obligation which bars any registration of any domain name if someone else, somewhere in the world, has a trademark (however obscure) corresponding to the domain name. The question of when the registration will amount to a violation of rights is one of fact and degree, depending upon many factors, such as the geographical locations concerned, the nature and scale of the trademark owner’s business, how well known and/or famous the trademark in question is and so on”.
On that question in the present case, the Panel is satisfied that if the Respondent, as a sophisticated domain name investor, had made suitable trademark searches, and/or had it likewise conducted general Internet searches against the acronym “UAX”, these would not have disclosed the kind of exclusive and/or substantial rights vesting in the Complainant which ought to have suggested to the Respondent that its acquisition and exploitation of the disputed domain name would necessarily amount to a violation of the Complainant’s rights. The evidence on the present record shows that the Complainant uses and is sometimes referred to by its acronym and, being a University, that acronym is likely to be known internationally in the specific field of education. However, the Complainant’s rights are in no way on a par with a famous three character word mark such as BMW or IBM, which could be argued to transcend any particular field of activity, exclusively denoting the mark owner concerned, and thus might underpin a successful claim of “willful blindness” in the right circumstances. On the facts of this particular case, the Respondent’s wish to invest in and resell an inherently valuable three letter domain name seems to the Panel to be a reasonable activity that does not appear to be motivated or actuated by bad faith or, for that matter, to have been willfully blind to the rights of others. As the panel noted in S.P.C.M. SA v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator, WIPO Case No. D2014-0327, with reference to various decisions under the Policy, carrying on business in registering descriptive or generic domain names is not of itself objectionable, nor is offering such domain names for sale.
Furthermore, the Panel here agrees with the general remarks of the panel in SK Lubricants that “a three letter acronym of this type is likely to be of general application to many interested parties, and no one party is likely to be able to claim a monopoly on use of the acronym in all fields of activity. In these circumstances the Panel sees no reason why imputed knowledge of a particular registered trademark in a specific field should have precluded the Respondent […] from subsequently keeping and offering for sale the Domain Name”.
Before leaving this topic, the Panel will deal with the Complainant’s citation of previous UDRP cases involving the Respondent. The Panel notes that the Complainant cited those cases in which transfer had been ordered and not, for example, Hostess Brands, Inc. f/k/a Interstate Bakeries Corporation v. Domain Capital, WIPO Case No. D2009-1357, in which the panel found that the Respondent did not have any intent to target the complainant’s rights in its registration and offer for sale of the domain name <hostess.com> and Dean & Simmons, Sàrl and Heintz Van Landewyck S.à.r.l. v. Domain Capital / Moniker Privacy Services, WIPO Case No. D2015-0080, where the same was said of the domain name <fiesta.com>.
It is true to say that the cases cited by the Complainant did result in an order for transfer of the domain names concerned. As the panel in BTSA Biotecnologias Aplicadas, S.L. v. Gregg Freeman, Domain Capital and Macrosten Ltd., supra, itself noted, however, it is important that each case be considered on its own facts. Nevertheless, the Panel has carefully reviewed each of these cases and does not find a pattern of conduct which is linked to the facts and circumstances of the present case and which could lead to a reasonable inference of registration and use in bad faith here. One feature of these cases is that the Respondent had argued that it had financed the third party acquisition of the various domain names and was not responsible for how they had been used. While that argument was rejected by the panel in those cases, it was not made and does not apply here. Furthermore, contrary to the circumstances of the present case, there were examples in each of those cases of reasonably substantial trademark rights on the part of the complainants and the use of targeted pay-per-click links with references to the mark holder or its competitors on the associated websites.
The Complainant also relied upon a decision not involving the present Respondent, namely, Universidad de Jaén. This is a Spanish country code domain name dispute regarding the domain name <uja.es>. The form of the dispute is a variant of the UDRP. As in the present case, the complainant was a Spanish University and the respondent was an entity based in the United States. The panel ordered transfer of the domain name concerned. Although this case is determined in the Spanish language, the present proceedings are in English and the Complainant did not supply a translation of the decision, those members of the Panel who are not Spanish speakers have reviewed the decision in a machine translation and the Spanish speaking member of the Panel has reviewed it in the original language.
The Panel notes that there are significant differences between the factual background in Universidad de Jaén and that of the present matter. First, the complainant’s formal notice of its rights to the respondent went unanswered, whereas in this case the Respondent’s counsel produced a detailed reply denying the Complainant’s assertions and citing prior decisions for its position. Secondly, the respondent did not file a formal response in said case, whereas a detailed Response is forthcoming here. Thirdly, and most importantly, there appears to have been specific evidence in Universidad de Jaén of targeting of the mark owner’s rights by the respondent. Despite being based in the United States, it appears that the respondent registered and used a Spanish country code domain name which featured, among others, links to the university world with text in the Spanish language, including a link to the Spanish National Distance Education University, thus most probably targeting the Spanish education sector in general and the complainant’s University in particular. As noted above, the Panel finds no evidence of, nor any reason to suspect, such specific targeting in the present case.
In light of the above analysis, the Panel finds that the Complainant has failed to prove on the balance of probabilities that the disputed domain name was registered in bad faith. Accordingly, the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied and the Complaint fails.
D. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) in the present case. The definition of RDNH in the Rules is “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. It is generally accepted that mere lack of success of a complaint is not itself sufficient for such a finding. Further discussion as to the nature of RDNH and examples of certain past cases under the Policy in which it has been found are detailed in section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
As was discussed in SK Lubricants, the three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091, noted that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration on the issue of RDNH. The present Panel is of the opinion that such consideration applies to the Complainant’s conduct here. Based on the trend of past cases under the Policy, the Complainant and/or its counsel should have been aware that a complaint regarding a three letter acronym domain name was likely to face extremely challenging hurdles, particularly from an evidential perspective. Furthermore, in its detailed reply to the Complainant’s cease and desist letter, the Respondent’s counsel identified the issues which the Complainant’s case was likely to face and cited relevant decisions showing clearly how past panels had approached these. All of this should have alerted the Complainant to the fact that its Complaint did not have reasonable prospects of success.
The Complainant had an opportunity to reflect upon the Respondent’s counsel’s reply and to factor it into its decision to launch the Complaint. It is notable in particular that the Complaint, when launched, did not address to any extent what the Panel in SK Lubricants describes as “the multiplicity of previously decided cases dealing with similar issues in relation to short acronym type domain names”, nor did it attempt to distinguish those cases and/or to explain why the Complainant anticipated that the present Panel should take any different approach based on the present record. When the Complainant’s failure to appreciate the weaknesses of its case, despite being placed on prior notice by the Respondent, is coupled to the fact that it only launched the Complaint after unsuccessfully attempting to acquire the disputed domain name at its own chosen price, the Panel accepts the Respondent’s submission that the Complaint was what is popularly known as a “Plan B case”, was brought in bad faith and constitutes an abuse of the administrative proceeding.
7. Decision
For the foregoing reasons, the Complaint is denied. The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Andrew D. S. Lothian
Presiding PanelistJosé Carlos Erdozain
PanelistThe Hon Neil Brown Q.C.
Panelist
Date: February 10, 2020
