A UDRP was filed against Dialoga.com at the World Intellectual Property Organization (WIPO Case #D2018-2768). The complainant in the UDRP was Dialoga Servicios Interactivos, S.A. of Bilbao, Spain, and the domain registrant is Finlead, a domain investment company with a nice portfolio of generic domain names.
The UDRP was decided, and the decision was published earlier today. The domain registrant won the UDRP, and the three-person panel found that this was a case of Reverse Domain Name Hijacking (RDNH). The domain registrant will get to retain the Dialoga.com domain name. According to the respondent, “’dialoga’ is a common dictionary word in Spanish, Italian, and Portuguese.”
In the decision, the WIPO panel reaffirmed that selling generic / descriptive domain names is a legitimate business practice. Although this should not be seen as extraordinary, it is always worth noting. The panel also noted that the respondent did not reach out to the complainant to attempt to sell the domain name. Finally, I think it is important to note that the panel acknowledged the domain registrant bought the domain name because of the likelihood that there would be many prospective buyers rather than just one looking to protect its brand. I think this reaffirms the legitimacy of buying generic domain names – even those in different languages.
Here’s an excerpt from the section about registering and using the domain name in bad faith in the decision:
“There is no doubt in the Panel’s mind that the Respondent registered the disputed domain name soon after the previous registration expired and that it did so with intent to offer it for sale on the open market. This is the nature of its business and, on the facts of the present case, does not demonstrate registration in bad faith. The Respondent explains that the disputed domain name has value because it consists of a common word in no less than three languages which are spoken by many millions of people. The word itself is particularly attractive as a domain name, implying as it does both communication and dialogue. The Respondent shows that it holds a portfolio of domain names consisting of dictionary words and explains that it licenses, leases, or sells these. The Panel accepts this evidence. What is lacking in the Complainant’s case is any demonstration that the Respondent took this action with the Complainant or third-party trademarks in mind and thus registered the disputed domain name in bad faith.
The Complainant’s case focuses primarily on the provisions of paragraph 4(b)(i) of the Policy, namely that there are circumstances indicating that the Respondent registered the disputed domain name with intent to sell it to the Complainant or a competitor for an amount in excess of its out-of-pocket costs. In order to succeed, the Complainant would be required to show that trademark rights were being specifically targeted or singled out by the Respondent. There is however no evidence before the Panel of any substance which might demonstrate that this was the case. The Complainant has neglected to provide any evidence of the scale and reach of its trademark which might have led the Panel to infer that the Respondent must have had the Complainant or a competitor in its sights when it registered the disputed domain name. The Complainant has not put forward any evidence indicating that its trademark is, for example, a well-known mark which is very distinctive and functions as an arbitrary trademark. On the contrary, as the Respondent points out, the fact that the Complainant is in the telecommunications business arguably renders the textual element of its trademark somewhat descriptive given that in some languages it means “dialogue” or “talk”. In any event, the Complainant merely asserts without corresponding evidence that its trademarks are widely known, that it has an office in the Respondent’s territory and that it is active in 29 countries in which it has its own telecommunications network. No evidence is provided as to the extent to which it advertises its trademarks or even how they are used in general terms. This cannot lead to any inference that the Respondent must have had knowledge of the Complainant’s marks or, what is more, any intent to target its rights through the registration of the disputed domain name.
With regard to the Respondent’s offer to lease the disputed domain name to the Complainant, the Panel notes that it was the Complainant who first approached the Respondent to request terms or, as the Complainant put it, “conditions for all possible scenarios”. This is of some significance in that the Respondent had taken no steps to contact the Complainant prior to its approach and there is thus no suggestion arising from the Parties’ interactions that the Respondent was likely to have been targeting the Complainant or its rights. It seems more probable to the Panel that the Respondent had sought a domain name that could be used by multiple parties for multiple legitimate purposes and that it was entitled, when approached, to suggest leasing or licensing terms in common with the arrangements it had already made for other domain names in its portfolio. The Panel notes that it was only after a telephone call and two emails from the Complainant that the Respondent put forward possible terms. To the Panel, this does not support the Complainant’s assertion that the Respondent must have intended to target trademark rights at the point of registration. The Panel is equally unpersuaded that the timing of the registration of the disputed domain name itself demonstrates any such targeting. That timing simply accords with the expiry of the disputed domain name after it had been held by a third party. The Respondent’s case that it registered the disputed domain name at that point because of its possible generic value in line with its business of investing in such names is perfectly plausible.
Finally, the Panel notes that even had the Complainant been in a position to demonstrate that the Respondent had been aware of the Complainant or its trademarks prior to registering the disputed domain name, which it is not, this fact on its own would not necessarily have led to a finding of registration in bad faith. Something more would have been needed to demonstrate on the balance of probabilities that the Respondent also had an intent to target trademark rights as opposed to merely benefitting from the presence and attractiveness of the dictionary word in the disputed domain name leading to a variety of possible uses which would not necessarily conflict with the Complainant’s rights.”
As mentioned earlier, the panel also ruled this was a case of RDNH, which is no surprise given what I read in the decision.
Attorney Zak Muscovitch represented the domain registrant in this UDRP proceeding.
Some strong wording in that decision.
It reads as if the law firm that represented the complainant withheld some evidence and emails… Why would you do that? Plain stupid.
Where in the world are you getting that idea?
Well, probably because I read the darn thing…
“Nevertheless, the Panel’s inquiry into this question has been hindered to some extent by the failure of the Complainant to produce all of its correspondence with ICANN. The Panel is left to deduce matters from ICANN’s reply to the Complainant. This omission is unsatisfactory and does not sit well with the Complainant’s certification of the completeness and accuracy of the Complaint.”
“Of greater concern to the Panel is the Complainant’s failure to produce all of its correspondence with the Respondent.”
Zak is an excellent IP attorney. And def in the pantheon of attorneys with expertise in domain/URL matters.
The guy is a one man wrecking crew.
“Zak attack” struck again! 🙂 And that was easy. Congrats!