Intocable, Ltd. of Zapata, Texas, lost its attempt to re-gain control domain name intocable.com
The case has pretty interesting facts The Complainant gained control of the domain name through the UDRP in August 2015 when the previous owner transferred the domain to settle the UDRP.
Complainant states in detail that through no fault of its own, the registration for the Domain Name expired on March 23, 2016. The Registrar then placed the Domain Name up for auction with its affiliate, NameJet. The Domain Name was purchased at auction and registered by Respondent on April 28, 2016. Complainant emailed Respondent almost immediately on May 3, 2016, claiming alleged infringement of Complainant’s trademark rights and demanding transfer of the Domain Name. Respondent declined to transfer it.
There is some very good language for domainers contained in the decision.
Here are the highlights:
“Complainant is the business entity behind the musical group, Intocable, a successful Tejano/Norteño recording group. The band’s name is the Spanish word for “untouchable.” Since the band was formed and began recording and performing in 1994, it has recorded and released 16 studio albums, gained a large following and won numerous musical achievement awards.
In 2003 Intocable performed at Reliant Astrodome Stadium in Houston and drew a crowd of 70,104, and they later become the first and only band from their genre to perform during the halftime show of a National Football League game.
The band has won multiple Grammy and Latin Grammy awards for Best Mexican/Mexican-American Album (2004) and Best Norteño Album (2005 and 2010), and has garnered seven Latin Grammy nominations, 13 Premios Lo Nuestro nominations and awards, as well as numerous nominations and awards from Latin Billboard, Billboard Regional Mexican Awards, and the American Music Awards. In 2010, Billboard magazine named Intocable the “Group of the Decade” for its genre, and the group was honored again by Billboard with a Lifetime Achievement Award in 2012.
Complainant owns United States trademarks nos. 3,736,728 and 3,736,687 for its INTOCABLE marks, under which the band, Intocable, offers its musical services and sells goods.
For at least 20 years from 1994, Complainant has used the INTOCABLE mark in commerce.”
The Domain Name was first registered on March 21, 1998
Complaint has for many years operated a website under the domain name , and uses this domain name also for company email addresses through which it communicates internally, with customers, vendors, and the public.
Respondent is in the business of registering and developing domain names.
Respondent’s CEO and founder is a Mexican citizen and resident of Costa Rica for the past 26 years, while maintaining a commercial presence through Respondent in Delaware, US. Respondent has registered hundreds of descriptive word, number and lettering domain names, including Spanish dictionary words. Respondent has never been a party in a UDRP proceeding before this case.
More recently, during 2014 or 2015, the Domain Name was registered by a third-party and Complainant filed a UDRP case ( WIPO Case No. D2015-1256) against that party seeking transfer of the Domain Name.
The case settled and Complainant acquired ownership of the Domain Name on August 12, 2015.
Complainant states in detail that through no fault of its own, the registration for the Domain Name expired on March 23, 2016.
The Registrar then placed the Domain Name up for auction with its affiliate, NameJet.
The Domain Name was purchased at auction and registered by Respondent on April 28, 2016. Complainant emailed Respondent almost immediately on May 3, 2016, claiming alleged infringement of Complainant’s trademark rights and demanding transfer of the Domain Name. Respondent declined to transfer it.
Complainant states that on May 3, 2016, the day before receiving a demand letter from Complainant, Respondent was using the Domain Name to operating a parking page with domain broker Sedo.com, and making it available for sale as a Premium Domain on Sedo.
Complainant states that Respondent put a copyright notice in the footer of the new webpage that appeared after May 3, 2016 (after Respondent had been contacted by Complainant’s counsel), claiming a copyright interest in the page’s content from 1998 through 2016. Complainant argues that this is a false representation intended to mislead, given that Respondent had only recently acquired the Domain Name and Complainant had owned it just prior to Respondent’s purchase of it.
Respondent contends that given its demonstrated business interests, its dictionary word domain name portfolio containing many domain names similar to the Domain Name, the generic and descriptive meaning of “intocable,” and the lack of evidence that Respondent targeted Complainant’s INTOCABLE mark, Respondent has rights and legitimate interests in the Domain Name.
Respondent states that the word “intocable” is a common, generic, Spanish language dictionary word – the word “intocable” means “untouchable” translated into English and is defined as “too powerful or important to be punished, criticized” or “too good to be equaled by anyone else.” Respondent asserts that the word “intocable” is not exclusively or distinctly associated with Complainant – instead, the term is primarily associated with its dictionary meaning.
Respondent’s business model involves registering domain names and developing websites as well as trading in domain names, where Respondent seeks to acquire domain names of value, which may then be held or offered for sale to the public. Respondent acquires generic domain names that may attract a premium price when auctioned in the secondary market. Respondent argues that its registration and use of hundreds of dictionary word domain names – including a number of Spanish language domain names – in connection with various online businesses is strong evidence of Respondent’s intent to use the Domain Name for a bona fide purpose. Respondent states it is well settled that the business of buying and selling dictionary word domain names is legitimate under the Policy.
Respondent’s CEO has submitted a sworn statement indicating he had no knowledge of Complainant or of any of its trademarks or music at the time he registered the Domain Name for Respondent. There was never any intent to target Complainant – nor could there have been, as Respondent had no knowledge of Complainant at the time it registered the Domain Name.
Instead, Respondent states the Domain Name was registered in good faith and in furtherance of its business practice of purchasing inherently valuable, common use, generic, dictionary word domain names and developing them into business ventures or offering them for sale to the general public, and not to take advantage of Complainant’s INTOCABLE mark.
In particular, Respondent states the Domain Name has value in the technology/computer sector for a business venture seeking to offer reliable, or untouchably safe, cyber-security systems. Respondent states that its vision for how the Domain Name can further that venture is expressed on the webpage currently linked to the Domain Name.
The three member panel of Christopher S. Gibson, Enrique Ochoa and Christopher J. Pibus found that “the evidence indicates that Respondent is in the business of buying and selling domain names, owns a large portfolio of descriptive domain names, and has never previously been a party to a UDRP case. Moreover, it is undisputed between the parties that the term “intocable” in Spanish carries the common meaning, “untouchable.” When Complainant did contact the Respondent inquiring whether Respondent would sell the Domain Name, Respondent declined.”
“Under these circumstances, while there is a risk that the statement of Respondent’s CEO is self-serving, the Panel is not in position to reject Respondent’s sworn evidence, even though Complainant’s musical group clearly has some degree of international reputation. On the balance of the probabilities, the Panel cannot find sufficient counter-vailing evidence to conclude that Respondent intentionally targeted Complainant and its INTOCABLE mark when it registered the Domain Name.”
The question then becomes whether Respondent, especially as a professional in the domain name business, had a duty at the time of registration of the Domain Name to determine whether registration would infringe or otherwise violate the rights of any third party.
Willful Blindness: Some panels have applied a concept of willful blindness in UDRP cases as a basis for finding bad faith. For example, a respondent’s registration of large numbers of domain names through automated processes, with no appropriate mechanism for ascertaining whether these may be identical or confusingly similar to such trademarks, may support a finding of bad faith. Panels holding that a respondent must accept the consequences of turning a blind eye to any third-party trademarks through failure to conduct adequate searches have tended to limit the application of this principle to cases in which the respondent is a professional domain name registrant, or has been found to have engaged in a pattern of abusive registration and use of domain names identical or confusingly similar to trademarks (although some panels have also noted that, in theory, such general principle may be just as applicable to non-professional domain name registrants, who, after all, are also subject to paragraph 2 of the UDRP, which provides: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”)
“The Panel concludes that Respondent, especially as a professional in the domain name business, and consistent with paragraph 2 of the Policy, did have a duty to ensure that registration of the Domain Name would not infringe the rights of a third party. It appears from the record that Respondent failed to perform such checks in relation to the term “intocable.” However, that fact alone is not determinative, since even if Respondent had performed such due diligence, the word “intocable” is not merely an acronym or fanciful term that could refer reasonably only to Complainant and its musical group; it is also a common Spanish language word.”
“Even if Respondent had been aware of Complainant’s trademark rights, this knowledge would not have necessarily prevented Respondent from registering the Domain Name in good faith for its common meaning, so long as the Domain Name is not used by Respondent in a manner that infringes upon Complainant’s trademark rights.”
“Obviously, if Respondent attempts to use the Domain Name in relation to Complainant or related musical goods or services, Respondent would cross the line. The Panel further notes that any such use, or indeed other indicia pointing to pretext in disavowing knowledge of Complainant, could color Respondent’s conduct to indicate bad faith intent.1 In conclusion, however, the Panel determines that, on the basis of the facts and circumstances in the record, this is not an appropriate case to apply concepts of constructive notice or willful blindness as against Respondent.
The Panel also concludes, on the balance of the probabilities, that Respondent’s use of the Domain Name prior to notice of the dispute, linking it to a Sedo.com webpage where it was offered for sale, was not use in bad faith, especially in view of the sworn statement of Respondent’s CEO that he had no knowledge of Complainant, its trademarks or music. Respondent’s subsequent act, declining to sell the Domain Name in response to Complainant’s request, also does not constitute bad faith use.
In view of all of the above circumstances, the Panel determines that Complainant has failed to prove that Respondent registered and is using the Domain Name in bad faith.
Reverse Domain Name Hijacking
In view of the Panel’s analysis above, and in particular fair questions concerning Respondent’s right or legitimate interest in the Domain Name, as well as Complainant’s lack of knowledge concerning Respondent and Respondent’s motives prior to the filing of this case, the Panel does not consider this a case of RDNH.
