- The owner of various Colombian mixed/combined AGUADULCE marks sought the transfer of 'aguadulce.com ' under the UDRP
- The panel found that the complainant had failed to prove that its notoriety had transcended its own field and reached Pakistan, where the respondent was based
- Anyone could register the dictionary term 'aquadulce', unless it was established that such registration targeted one particular user of this term - which was not the case here
In Sociedad Puerto Industrial Aguadulce SA v Makrani (WIPO Case D2019-1378), a three-member panel has denied the transfer of a domain name consisting of the Spanish generic term 'agua dulce' ('sweet water' or 'fresh water' in English) under the Uniform Domain Name Dispute Resolution Policy (UDRP) due to the lack of sufficient evidence supporting the targeting of the complainant's trademark.
The complainant was Sociedad Puerto Industrial Aguadulce SA, the operator of a multi-purpose marine terminal located in Colombia, which had been in business continuously since 1996. The complainant owned a variety of Colombian trademarks for the mixed/combined mark AGUADULCE and design, one of which was registered in 2009. It had also used the domain name 'puertoaguadulce.com' to point to its website since 2004.
The respondent was AbdulBasit Makrani, a domain name dealer based in Pakistan. The domain name 'aguadulce.com' was registered on 29 November 2011 and was being used to resolve to a market listing page offering it for sale and inviting interested parties to submit an inquiry. The respondent previously specified the price of the domain name as $36,888 in response to the complainant's inquiry.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under Paragraph 4(a):
- the domain name registered by the respondent is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
With regard to the first limb, the complainant underlined that its trademarks consisted exclusively of the word 'aguadulce' with a very simple design. The domain name was therefore confusingly similar to its trademarks as it incorporated the term 'aguadulce' in its entirety. The respondent did not provide particular arguments to rebut the complainant's assertion. According to the panel, the fact that the complainant's trademarks were mixed or combined marks, which included the word element 'aguadulce' and the additional descriptive and explanatory text "Puerto Industrial Buenaventura Colombia", did not prevent a finding of confusing similarity under the UDRP since the term 'aguadulce' remained the most prominent, distinctive and non-descriptive element. The first limb was therefore satisfied.
Regarding the second limb, the complainant asserted that the respondent proposed to sell the domain name at the price of $36,888 and thus had never intended to make a bona fide offering of goods and services or any legitimate non-commercial or fair use of the domain name. The complainant further argued that the respondent's lack of relationship to the AGUADULCE trademark and his unlicensed and unauthorised use of this mark constituted strong evidence of the respondent's lack of legitimate interests.
The respondent explained that he had purchased the domain name for his generic domain name investment business and added that he had already registered many domain names containing generic dictionary words for the purpose of sale or lease, including those featuring words in various languages. The respondent insisted that he proposed a reasonable price when approached by the complainant to the extent that a domain name consisting of a dictionary word in any particular language would be likely to have an intrinsic value on the secondary market, which justified an uplift in price.
The panel, however, did not address the issues under the second limb as its findings under the third limb meant that this was not necessary.
As far as the third limb was concerned, the complainant submitted that its trademark was strong and recognisable by the consumer due to its use in connection with the complainant's port businesses, and was launched and widely promoted over two years before the domain name was registered. As evidence, the complainant put forward a series of media articles relating to its port activities and provided a copy of the Google search results for the term 'aguadulce' featuring its website 'www.puertoaguadulce.com' in a prominent position. On this basis, the complainant contended that its strong reputation and high-profile presence in the port sector left no doubt as to the respondent's awareness of its trademark when he registered the domain name, which was clearly in bad faith. The respondent's attempt to sell the domain name to the complainant for a high price constituted further evidence of his bad faith. Finally, the complainant referred to the respondent's involvement as a respondent in at least three prior UDRP proceedings and quoted one decision ordering the transfer of the domain name at issue.
The respondent denied any prior knowledge of the complainant by stressing that the complainant's business and trademarks were limited to Colombia, while he was based in Pakistan. In particular, the respondent provided his own search results for the same term using the search engine Bing instead of Google, where the complainant's own website only appeared at the bottom of the second page and the domain name did not appear at all. The respondent therefore claimed that any diversion of internet users would rather be caused by the other websites on the first two pages of his search. With regard to the three UDRP cases quoted by the complainant, he pointed out that two decisions were actually rendered in his favour and his business had been deemed by previous panels to be legitimate.
Given the generic nature of the term 'aquadulce', the panel was of the opinion that it was not sufficient to merely establish the respondent's likely knowledge of the complainant's trademark. Further evidence was thus required to prove that the respondent was particularly targeting the complainant, such as the presence of pay-per-click links related to the complainant's port activities on the website associated with the domain name. The panel added that some dictionary words may be so well known in connection with a particular business or trademark (eg, 'delta' and 'apple') that such further evidence would not be necessary, but it was not the case here as the complainant had failed to provide tangible evidence establishing that its notoriety had transcended its own field and reached Pakistan, where the respondent was based. In this regard, the panel referred to the discrepancy between the two parties' search results for the same term, which in the panel's opinion probably resulted from the localisation of each party's search, as the complainant's results were in Spanish and the respondent's results were in English.
Regarding the respondent's involvement as a respondent in three UDRP cases, the panel noted that the complainant chose not to address the other two cases, where the panels found that the respondent's use of dictionary word domain names to display sponsored links associated with their generic meanings was not indicative of bad faith. By analogy, the panel held that the prior panels' approach should also apply to the respondent's general offer for sale of the domain name in the present case. The panel therefore accepted that anyone could register the dictionary term 'aquadulce', unless it was established that such registration targeted one particular user of this term (such as the complainant), which was not the case given the evidence submitted by the two parties. The panel further underlined that, if the domain name contained the dictionary word 'puerto' along with 'aquadulce', this might lead to an inference of targeting. However, this was not the case with the mere Spanish term 'aquadulce', which could be of value to multiple organisations. Based on the above, the panel found that the complainant had failed to establish the respondent's bad faith under the third limb. The complaint was therefore denied.
This decision illustrates once again that, under the UDRP, the registration of a generic word domain name for the sole purpose of resale may give rise to a legitimate interest, unless it is established by tangible evidence that such registration targets a particular trademark consisting of the same generic word. This is particularly the case when it is not straightforward to establish that the generic term in question is strongly associated with a particular trademark or business.
Published in World Trademark Review
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