Registrant Wins Costa.com UDRP (Again)

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A UDRP was filed against the Costa.com domain name at the World Intellectual Property Organization (WIPO), and the domain registrant prevailed. This was the second time a UDRP was filed against this domain name – and this UDRP was filed by a different company. In both UDRP cases, the domain registrant was represented by ESQWire.com (Ari Goldberger and Jason Schaeffer).

In 2012, the UDRP was filed by a company called Cross Optical Group, Inc. The most recent UDRP was filed by Costa Crociere S.P.A., the company that operates Costa Cruises. The decision has not yet been published, but it will likely be uploaded to the WIPO website today or tomorrow and can be accessed here when it is available.

In looking at the Costa.com landing page, it is not a surprise that the cruise company would want to file a UDRP. In fact, the complainant cited them in the UDRP: “The Complainant exhibits an example of the Respondent’s web page which contains links to “Costa”, “Cruise”, “Cruise Line”, “Cruise Ship” and “Small Cruise Ship.” Given these links, it would not have been a big surprise to me if the complainant prevailed in the UDRP proceeding.

When I was reading the decision, it looked like the links might doom the domain owner, despite the fact that the “costa” term was considered a dictionary term. Here’s what the majority of the panel wrote about the PPC links:

“In the view of Panelists Maier and Carabelli, the Respondent’s use of the disputed domain name at the time of the Complaint is more consistent with a targeting of the Complainant’s trademark than with genuine use of the disputed domain name in connection with its dictionary meaning. The Panelists note that the web page exhibited by the Complainant contains links which are overwhelmingly cruise-related and which include at least one link to a competitor of the Complainant. Such use is not consistent with the Respondent’s assertion that the term “costa” also relates to a multitude of business unrelated to cruising. Nor are the Panelists persuaded by the Respondent’s explanation that that the advertising links are selected by an algorithm: as a professional domainer who obtains income on the back of the pay-per-click links in question, the Respondent cannot be indifferent to such links as may impinge on third party rights. Panelists Maier and Carabelli therefore find that, as of the date of the Complaint, the Respondent has no rights or legitimate interests in respect of the disputed domain name. Panelist Brown dissents on this topic (see below). “

At this juncture, it should be noted the importance of having a 3 member panel decide the UDRP. Perhaps the decision would have been different had only one panelist been involved.

I want to share the full section about the domain name being registered and used in bad faith. Not only does the panel rightly point out that “Retroactive Bad Faith” can no longer be cited, but the panel also provides a solid opinion regarding the domain owner’s reported $1 million asking price. In particular, this aspect stands out to me: “it is reasonable to expect the registrant to seek the full price it believes to be achievable for the sale of that name.”

Here’s the section from the decision where the panel shared its findings about whether or not the domain name was registered and is being used in bad faith:

“In order to prevail in its Complaint, the Complainant must meet the conjunctive requirement of showing both that the disputed domain name was registered and that it has been used in bad faith. It has also been emphasized in recent decisions under the UDRP that bad faith at the time of registration may not be retrospectively attributed to the Respondent merely by reason of currently abusive use of the domain name in question.

In the view of Panel, the Complainant has failed to establish on the balance of probabilities that the Respondent registered the disputed domain name in bad faith. Any such finding would require not only that the Respondent knew (or should be taken to have known) of a relevant trademark in which the Complainant had rights, but also that it registered the disputed domain name with the intention of benefitting unfairly from the goodwill attaching to those rights.

In this case, as of the date of registration of the disputed domain name, the Complainant did not have a trademark consisting of the word COSTA alone. While it is clear that the Complainant had made use of that term in connection with cruises, and had established a reputation in that area, the Panel finds that the term “costa” is not only a Spanish dictionary word, but is also a term that has at all material times been used by numerous other parties in connection with a wide range of business areas. In the circumstances, the Panel does not accept that, as of the date of registration of the disputed domain name, Internet users would have been likely to assume that the disputed domain name referred to the Complainant or its business, or that the registration of the disputed domain name represented an impersonation of the Complainant. While the Complainant has pointed to the date of registration of the disputed domain name being shortly after its takeover by Carnival Corporation had been publicized, this does not affect the Panel’s view that there is no compelling reason to believe that Internet users would assume the disputed domain name to refer to the Complainant, or that the Respondent registered the disputed domain name primarily for the purpose of targeting the Complainant.

Concerning the Respondent’s initial use of the disputed domain name, based on the Panel’s own review of archived web pages at “www.archive.org”, the disputed domain name does not appear to have resolved to any active web page until May 22, 2001 and appears on that date to have resolved to a parking page containing links to a wide variety of goods and services which did not including cruising. The more recent use of the disputed domain name, to resolve to cruising-related links, does not therefore appear to have been present at, or for some years after, the date of registration of the disputed domain name.

Turning to the Respondent’s asking price of USD 1 million for the disputed domain name, it is the view of the Panel that, where an investor in domain names legitimately registers a domain name which appreciates in value, it is reasonable to expect the registrant to seek the full price it believes to be achievable for the sale of that name. The Respondent made no approach to the Complainant for 21 years and quoted the price in question in response to an enquiry from the Complainant. In the view of the Panel, the facts of the case overall are more supportive of an inference that the Respondent registered the disputed domain name because of its Spanish dictionary meaning and in the hope that it would appreciate in value generally, rather than with the specific intention of selling it to the Complainant or a competitor of the Complainant for an excessive price.

In the view of the Panel, therefore, the Complainant has failed to establish that the disputed domain name was registered in bad faith and the Complaint must therefore fail.”

This decision could easily have been made in favor of the cruise company, so kudos to ESQWire.com on the defense.

2 COMMENTS

  1. “it is reasonable to expect the registrant to seek the full price it believes to be achievable for the sale of that name.”

    Could be a game changer… But then again: Asking $500k for a 3-letter signals bad faith, but $1m for a generic one word domain is considered reasonable? Where is the consistency? The whole system is flawed.

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