ADMINISTRATIVE PANEL DECISION
Libertad Servicios Financieros, S.A. de C.V. S.F.P. v. Telepathy, Inc.
Case No. D2011-1635
1. The Parties
The Complainant is Libertad Servicios Financieros, S.A. de C.V. S.F.P. of Estado de Querétaro, Mexico, represented by Langlet, Carpio y Asociados, S.C., Mexico.
The Respondent is Telepathy, Inc. of Washington DC, United States of America, represented by ESQwire.com Law Firm, United States of America (â€œUSâ€).
2. The Domain Name and Registrar
The disputed domain name <libertad.com> (the â€œDisputed Domain Nameâ€) is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the â€œCenterâ€) on September 27, 2011. On September 27, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the Disputed Domain Name. On September 28, 2011, Name.com LLC 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 â€œPolicyâ€ or â€œUDRPâ€), the Rules for Uniform Domain Name Dispute Resolution Policy (the â€œRulesâ€), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the â€œSupplemental Rulesâ€).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response October 23, 2011. The Response was filed with the Center October 21, 2011.
The Center appointed Gabriela Kennedy, Ada L. Redondo Aguilera and The Hon Neil Brown QC as Panelists in this matter on November 29, 2011. 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.
On December 8, 2011, the Center received a Supplemental Filing from the Complainant, which was forwarded to the Panel on December 9, 2011. Following the Panelâ€™s review of this Supplemental Filing, and the Respondentâ€™s request for leave to file supplemental submissions in reply (transmitted to the Center on December 15, 2011 and forwarded to the Panel on December 16, 2011), the Panel issued the Administrative Panel Procedural Order No. 1 on December 16, 2011, inviting supplemental submissions in reply from the Respondent on or before December 23, 2011. The Center received the Respondentâ€™s Supplemental Submissions on December 16, 2011.
4. Factual Background
The Complainant is a Mexican company engaged in the provision of financial services. The Complainant owns various trade mark registrations for LIBERTAD (and variations thereof) in Mexico, the earliest of which, according to the certificates provided by the Complainant, was registered in December 1990. The Complainant also operates websites at two domain names, held by Abastecedora de Conectividad, S.A. de C.V., incorporating LIBERTAD, namely <libertad.com.mx> and <libertad.mx>, the registrations for which date from July 13, 1998 and June 26, 2009 respectively.
The Respondent is a US company engaged in the business of registering common word domain names and hosting undeveloped domain names with domain name parking services, with a view to developing such domain names or reselling them to other entities.
The Disputed Domain Name was registered by the Respondent on February 23, 1999. As at the date of this decision, the Disputed Domain Name resolves to a website (the â€œWebsiteâ€) containing miscellaneous sponsored links displayed in the English language, and links to pages of sponsored links displayed in the Spanish language, largely relating to offers of employment.
5. Partiesâ€™ Contentions
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainantâ€™s LIBERTAD mark, in which the Complainant has rights:
(i) the Complainant is the owner of the famous and well-known LIBERTAD trade mark (and numerous variations thereof) in Mexico and uses the <libertad.com.mx> and <libertad.mx> domain names;
(ii) the Complainant, incorporated in 1960, is one of the largest financial companies in Mexico. It has over 1.2 million clients and 120 offices located all over the country;
(iii) the Disputed Domain Name incorporates the famous and well-known LIBERTAD mark in its entirety;
(iv) the Disputed Domain Name is confusingly similar to the Complainantâ€™s own domain name <libertad.com.mx> at which the Complainant operates a website, and is identical and confusingly similar to the Complainantâ€™s LIBERTAD marks; and
(v) the Disputed Domain Name is so clearly similar to the Complainantâ€™s LIBERTAD mark that it is likely to cause confusion among the Complainantâ€™s customers and the consuming public.
(b) The Respondent does not have legitimate interests or rights in the Disputed Domain Name:
(i) the Complainant has no affiliation with the Respondent. The Complainant never authorised the Respondent to register or use the Disputed Domain Name or the LIBERTAD mark;
(ii) the Respondent is not commonly known by the name â€œLibertadâ€ or any variation thereof and the Respondent has no trade mark rights in the LIBERTAD mark;
(iii) the Complainantâ€™s adoption and registration of the LIBERTAD mark in Mexico precedes the Respondentâ€™s registration of the Disputed Domain Name;
(iv) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather, it is apparent that the Respondent has intentionally registered the Disputed Domain Name for the purpose of making illegitimate or unfair use of the Complainantâ€™s LIBERTAD marks by using the Website to advertise and sell products that are not authorised by the Complainant; and
(v) the Respondentâ€™s use of the Disputed Domain Name for a for-profit Website selling products that compete directly with the Complainantâ€™s products is not use in connection with a bona fide offering of goods and services.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) given the widespread publicity and fame of the Complainantâ€™s LIBERTAD mark, it is indisputable that the Respondent had knowledge of the Complainantâ€™s mark prior to registration of the Disputed Domain Name;
(ii) the use of a domain name, which is identical or confusingly similar to a trade mark, in order to drive traffic to a website and generate revenue, constitutes bad faith, whether these efforts consist of an attempt to capitalise on initial interest confusion or through â€œcash parkingâ€. The Respondentâ€™s unauthorised use of the Complainantâ€™s trade mark to generate pay-per-click revenue or to sell competitive products constitutes bad faith;
(iii) the Respondentâ€™s repeated references to the LIBERTAD trademark by displaying â€œlibertad servicios financierosâ€ (libertad financial service) on its Website confirms its awareness of the LIBERTAD mark;
(iv) the Respondent has registered and is using the Disputed Domain Name intentionally to misdirect and divert customers looking for information about the Complainant to its for-profit Website;
(v) the Website displays the following notice (in Spanish): â€œthis domain participates in domain parking by Sedoâ€, which corresponds to a typical case of registration and use of a domain name in bad faith; and
(vi) the Respondentâ€™s lack of rights or legitimate interests in the use of the Disputed Domain Name renders the issue of bad faith registration unnecessary to even be considered.
The Respondentâ€™s contentions can be summarised as follows:
(a) The Complainant should be barred by the doctrine of laches because the Complainant waited more than 12 years to initiate this proceeding:
(i) the Disputed Domain Name was registered over 12 years ago on February 23, 1999, which represents a substantial, unreasonable delay by any measure and an eternity in â€œInternet timeâ€ on the part of the Complainant;
(ii) the Complainant does not explain why it waited so long to initiate this Complaint;
(iii) this long delay bars the Complainant under the doctrine of laches, which has been recognised under the Policy; and
(iv) even if the Panel does not deny the Complaint on the basis of laches, the long delay also raises an inference that the Complainant did not truly believe the Respondent engaged in bad faith registration and use of the Disputed Domain Name was in bad faith.
(b) The Complainant does not have exclusive rights to the word â€œLibertadâ€:
(i) the Respondent registered the Disputed Domain Name because it is the common Spanish word â€œlibertadâ€, which means â€œfreedomâ€ or â€œlibertyâ€. It is clear that the Complainant does not have exclusive rights to this extremely common word; and
(ii) based on the Complainantâ€™s submissions, it appears that only one of the Complainantâ€™s registered trade marks for LIBERTAD (as a stand-alone term) was registered prior to February 23, 1999 (the registration date of the Disputed Domain Name). Accordingly, the application for Trade Mark No. 395236 is the only relevant trade mark for the purposes of this proceeding.
(c) The Respondent does have legitimate interests or rights in the Disputed Domain Name:
(i) the Respondentâ€™s rights and legitimate interests are established because the Respondent registered the Disputed Domain Name based on its meaning as a common Spanish dictionary word and not to target a trade mark;
(ii) there is no evidence showing that the Respondent registered the Disputed Domain Name with the Complainantâ€™s trade mark in mind. The Respondent has provided sworn testimony that it had no knowledge of the Complainant or its trade mark and did not register the Disputed Domain Name to target the Complainant;
(iii) the Complainantâ€™s trade mark was not well-known to the general public outside of Mexico when the Respondent registered the Disputed Domain Name over 12 years ago on February 23, 1999. The Mexican trade mark registry was not available online at the time the Disputed Domain Name was registered. Many WIPO UDRP decisions have shown that a party cannot infer that just because they have a trade mark registration in their home country, the mark is well-known in another country where the domain name registrant resides;
(iv) the Respondent has registered hundreds of common Spanish word domain names, which supports the fact that the Respondent does not target trade marks. It targets only common dictionary words. In fact, within 90 days of registering the Disputed Domain Name, the Respondent registered 29 Spanish common word domain names; and
(v) the Disputed Domain Name provides users of the Website the opportunity to locate general topics of interest including: jobs, hotel, music and goods. The Respondentâ€™s legitimate interest is bolstered by the fact that it uses the Disputed Domain Name to display general and descriptive advertising links.
(d) The Disputed Domain Name has not been registered and is not being used in bad faith:
(i) there is no evidence of bad faith registration or use. The Respondent simply registered the Disputed Domain Name because it incorporated a common Spanish word;
(ii) the Respondent did not register the Disputed Domain Name with the Complainantâ€™s trade mark in mind and had no knowledge of the Complainant, its website, it business name or trade mark at the time of registering the Disputed Domain Name. Further, there is no clear proof that the Complainant was advertising or holding itself out to the general public in the US in February 1999 when the Disputed Domain Name was registered; and
(iii) the Complainant did not initiate these proceedings until over 12 years following the Respondent’s registration of the Disputed Domain Name. Even if the Panel does not deny the Complaint on the basis of laches, the long delay raises an inference that the Complainant did not truly believe that the Respondent’s registration and use of the Disputed Domain Name was in bad faith.
(e) Reverse Domain Name Hijacking:
(i) the lack of any evidence that the Respondent targeted the Complainantâ€™s trade mark and the likelihood that the Complainant was aware that the evidence was lacking when it filed the Complaint, establishes Reverse Domain Name Hijacking; and
(ii) because the Complainant has brought forth a case with no basis, and which it must have known had no basis, the Panel should find that the Complainant has abused the proceedings.
C. Partiesâ€™ Supplemental Submissions
The Complainantâ€™s Supplemental Submissions
The Complainantâ€™s supplemental contentions can be summarised as follows:
(a) Background issues and allegations:
(i) the Respondent is using the Disputed Domain Name, which wholly incorporates the famous and well-known LIBERTAD mark, in an obvious effort to divert persons interested in financial services like those provided by purchasing and/or reading the content at the Complainantâ€™s website located at â€œwww.libertad.com.mxâ€, to the Website; and
(ii) the Respondent registered and is using the Disputed Domain Name pursuant to a â€œcash parkingâ€ program as a landing page featuring pay-per-click links to third party sites and none of the links leads to a website that is authorised by or affiliated with the Complainant.
(b) Issues arising from the Response filed by the Respondent:
(i) regarding the Respondentâ€™s contentions on delay / the doctrine of laches, many Panels have recognised that the Policy does not establish a deadline to initiate proceedings and consequently if the Complainant is successful in evidencing the three requisite elements, the Disputed Domain Name shall be transferred in its favour;
(ii) regarding the Respondentâ€™s contentions that the Complainant does not have exclusive rights to the common word â€œlibertadâ€, such arguments are to be dismissed given that the Complainant has fully evidenced that it is the holder of the LIBERTAD trade mark registrations, which registrations are in full force and effect;
(iii) the arguments raised by the Respondent with the aim of keeping the Disputed Domain Name (such as the application of the doctrine of laches or the Complainantâ€™s delay in bringing an action, that â€œlibertadâ€ is a common word, and that the Disputed Domain Name was registered without knowledge of the Complainantâ€™s trade mark registration in Mexico and/or the existence of the Complainant), are not sufficient to prove that the Respondent has a better right than the Complainant to the Disputed Domain Name. That is, the Complainant has a trade mark registration for LIBERTAD and the Respondent does not; and
(iv) the use of the Disputed Domain Name to attract consumers to sites of companies that compete directly with the Complainant is an act of unfair competition.
The Respondentâ€™s Supplemental Submissions
The Respondentâ€™s supplemental contentions can be summarised as follows:
(a) Doctrine of laches:
(i) in Converse Trading, Ltd. V. Vertical Axis Inc., WIPO Case No. D2011-1616, involving a domain name composed of the common Italian dictionary word â€œtruccoâ€ meaning â€œmakeupâ€, the panel found that the respondent had a legitimate interest and did not register the domain name <truccco.com> in bad faith. The panel also stated that: â€œ[a]s to the respondentâ€™s reliance on the fact that the disputed domain name has been registered for almost ten years, without any action taken by the complainant, the panel agrees with the respondent that this makes it more difficult to accept the complainantâ€™s arguments that the disputed domain name was both registered and used in bad faithâ€; and
(ii) the above panel specifically noted the doctrine of laches stating, among other things, that â€œa delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits; particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faithâ€.
(b) Reverse Domain Name Hijacking:
(i) the Respondent cited the decision Planate Management Group LLC v. Vertical Axis, Inc. / WhoIs Privacy Services Pty Ltd, WIPO Case No. D2011-1535 as a Reverse Domain Name Hijacking decision, addressing a domain name dispute involving [the] English dictionary word â€œplanateâ€, meaning â€œflattened plane,â€ or alternatively, a misspelling of the word â€œplanetâ€, in which the panel noted the legitimacy of registering dictionary words and their misspelled variations.
6. Discussion and Findings
A. Doctrine of Laches
Prior to addressing its findings in accordance with paragraph 4(a) of the Policy, the Panel will address the Respondentâ€™s contention that the Complaint should be barred on the basis of the Complainantâ€™s delay in filing the Complaint after the registration of the Disputed Domain Name. It is commonly accepted that the doctrine of laches does not apply under the Policy, and that a delay in bringing an action does not prevent a complainant from recovering a domain name (See paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (â€œWIPO Overview 2.0â€)). Therefore, the Panel finds that the Complainant is not prevented from recovering the Disputed Domain Name by virtue of it bringing these proceedings 12 years after the registration of the Disputed Domain Name. The Panel notes that the WIPO UDRP decision cited by the Respondent in its Supplemental Submissions, in support of its argument for applying the doctrine of laches, namely Converse Trading, Ltd. v. Vertical Axis Inc., WIPO Case No. D2011‑1616, expressly recognises the view held by many panelists that â€œthe doctrine of laches, as such does, not generally apply under the UDRP; and that delay in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements.â€ Further, the Panel notes that the panel in this previous UDRP decision does not state a preference for the (minority) view that the doctrine of laches / delay should be applied, but merely that arguments for both views were heeded in its decision. Accordingly, the Panel will now proceed to address its main findings in these proceedings.
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the LIBERTAD trade mark on the basis of its various registration for such mark in Mexico dating from December 1990.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case â€œ.comâ€, may be disregarded (Rohde & Schwartz GmbH & Co. KG v. Pertshire Marketing Ltd, WIPO Case No. D2006‑0762).
The Disputed Domain Name incorporates the LIBERTAD trade mark in its entirety and in terms of both visual and aural characteristics, is an identical reproduction of the Complainantâ€™s trade mark.
The Panel accordingly finds that the Disputed Domain Name is identical to the LIBERTAD mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview 2.0 states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of producing evidence that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent is not connected or associated with the Complainantâ€™s business and is not on any other basis licensed or authorised to use its LIBERTAD mark. Further, the Complainant submits that the Respondent does not own any registrations for trade marks incorporating the â€œLibertadâ€ name and has never been commonly known by the â€œLibertadâ€ name (or variations thereof). Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the Respondent has the burden of production of evidence that it does possess such rights or legitimate interests.
The Respondent contends that â€œLibertadâ€ is a common Spanish dictionary word (meaning â€œfreedomâ€ or â€œlibertyâ€) to which it has rights and legitimate interests to use in relation to the display of general and descriptive advertising links (related to general topics of interest, including jobs, hotels, music and goods) on the Website. The Respondent also contends that its registration of the Disputed Domain Name is consistent with its practice of registering generic words as domain names, as evidenced by its registration of numerous dictionary words in the Spanish language as domain names (including domain names incorporating the words: â€œfinancierasâ€ (financial); â€œactivacionâ€ (activation); â€œpartidaâ€ (game) and â€œcentrosâ€ (centers)) within 90 days of registering the Disputed Domain Name. The Panel notes that according to paragraph 2.2 of the WIPO Overview 2.0, a respondent does not automatically have rights or legitimate interests in a domain name comprised of a dictionary word, but such rights or legitimate interests can be inferred if the respondent is able to show one of the three circumstances under paragraph 4(c) of the Policy and in light of other relevant factors, including the status and fame of the trade mark in question, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning.
In respect of the Disputed Domain Name, the Panel accepts that in light of the facts that: (a) there is no evidence, whether submitted by the Respondent or otherwise, that the Respondent has been commonly known by the Disputed Domain Name; and (b) that the hosting of sponsored links on the Website for revenue precludes any argument that the Disputed Domain Name is used on a noncommercial basis, the only circumstance that the Respondent could potentially demonstrate under paragraph 4(c) of the Policy is that it is using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Panel notes that the Respondent’s use of the Website to host various sponsored links can constitute a bona fide offering of services capable of giving rise to rights or legitimate interests for the purposes of the Policy, particularly where the Disputed Domain Name is used in a descriptive (and not trade mark) sense, to describe the sponsored links hosted (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424). Given the wide meaning of the word â€œlibertadâ€ (â€œfreedomâ€) and the consequent versatility of its application, the Panel finds it difficult to accept any argument that the Disputed Domain Name is not descriptive of the various sponsored links hosted on the Website, particularly in the context of employment, which is the subject matter to which numerous links on the Website relate. The Panel also notes the absence of any evidence of use of the Disputed Domain Name or the Website in a trade mark sense, given that the Website content appears, at least as at the date of this decision, to be automatically generated (with different sponsored links appearing with each refreshed view of the Website) rather than predetermined by the Respondent. Further, considering the lack of evidence of the status and fame of the Complainant’s LIBERTAD mark outside of Mexico, and also given the Respondentâ€™s record of registering domain names incorporating generic or dictionary words in both the Spanish language (as mentioned above) and in the English language, as recognised by various panelists in other domain name proceedings (see Geometric Software Solutions Co. Ltd. v. Telepathy Inc., WIPO Case No. D2007-1167, in respect of the word â€œgeometricâ€; X6D Limited v. Telepathy, Inc., WIPO Case No. D2010-1519, in respect of the word â€œexpandâ€ spelt as â€œxpandâ€; Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc, WIPO Case No. D2002-0658, in respect of the word â€œnatureâ€; U.S. Nutraceuticals, LLC v. Telepathy, Inc. c/o Development Services, NAF Claim No. 0365884, in respect of the phrase â€œnaturedirectâ€; and Shoe Land Group LLC v. Development, Services c/o Telepathy Inc., NAF Claim No. 1255365, in respect of the phrase â€œshoelandâ€), the Panel is persuaded that the Respondent did have rights and/or legitimate interests to and in registering the Disputed Domain Name for the purpose of hosting the Website.
The Panel accordingly finds that the Complainant has not satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
D. Registered and Used in Bad Faith
As the Panel finds that the Complainant has failed to discharge its burden of proof under paragraph 4(a)(ii) of the Policy, it considers it unnecessary to proceed to consider the satisfaction or otherwise of the requisite elements regarding bad faith under paragraph 4(a)(iii).
E. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is defined in the Rules as â€œusing the Policy in bad faith to attempt to deprive a registered domain name holder of a domain nameâ€. The Panel notes that the onus of proving bad faith on the part of the Complainant is generally on the Respondent and finds that in the present case, this burden has not been discharged by the Respondent, who has raised the allegation of Reverse Domain Name Hijacking in the absence of supporting evidence. The Panel does not find that the Complainantâ€™s arguments under a required element of the Policy, namely the Respondentâ€™s lack of rights or legitimate interests under paragraph 4(a)(ii) of the Policy, failed by such an obvious margin such as to indicate that the Complainant must have appreciated this at the time of filing the Complaint (Mondial Assistance S.A.S. v. Compana LLC, WIPO Case No. D2007-0965; Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279), given the Complainantâ€™s apparent misconceptions that the hosting of sponsored links can under no circumstances constitute legitimate use under the Policy and that its trade mark registrations for LIBERTAD confer exclusive rights over the Spanish dictionary word â€œlibertadâ€. Although the Panel does not consider it necessary to discuss its findings under the third element required under paragraph 4(a) of the Policy, it acknowledges that the Complainantâ€™s contentions in relation to bad faith, namely that the Website contains an offer for sale of the Disputed Domain Name and, as at July 12, 2011 (the date of the Certified Statement of Facts annexed to the Complaint) the Website contained a reference to the Complainant, which was listed as one of the â€œRelated Linksâ€, are factors capable of indicating bad faith in combination with other relevant circumstances (which the Panel notes are absent on the facts of the instant case), such that the Respondent’s contention that the Complainant has brought forth a case with no basis, cannot be sustained. The Panel also notes that the WIPO UDRP decision cited by the Respondent in its Supplemental Submission in support of its argument for Reverse Domain Name Hijacking, namely Planate Management Group LLC v. Vertical Axis, Inc. / WhoIs Privacy Services Pty Ltd, WIPO Case No. D2011-1535, relates to a case where the respondent’s registration of the domain name in question predated the complainant’s relevant trade mark rights by at least three years, which fact is clearly distinguishable from that of the present case. Accordingly, the Panel finds that the Complainant has not engaged in Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied.
Dated: January 10, 2012
8. Opinion of The Hon Neil Brown QC Dissenting in Part
I agree with the result of these proceedings, but I respectfully disagree with the majority view on the issue of laches or delay.
In all of the circumstances, I would find that there should be a finding against the Complainant in part because of the delay in bringing the proceedings and, in one sense more importantly, that the delay is unexplained, despite the Respondent having expressly put the issue into contention.
The respective positions of the parties on this issue can be summarised as follows. In its Response, the Respondent submitted that the Complaint was in effect barred because of laches and that it would rely on that issue as a defence and that, as an alternative, the inordinate delay of over 12 years showed that the Complainant had never believed that the registration of the Disputed Domain Name had come about as an act of bad faith by the Respondent. There is no doubt that this submission put the Complainant on notice that delay was an issue and could put the outcome of the case at risk if the Complainant did not come forward with some explanation. Indeed, the delay was such that there was probably already an obligation on the Complainant to explain it, for there may have been a good reason why it had occurred. But when the Respondent expressly raised the issue, the obligation on the Complainant to give some sort of an explanation was put beyond doubt.
The Complainant, in its Supplemental Submission, gave no explanation for the delay. Instead, it simply relied on the standard arguments that the defence known as laches was not available in UDRP proceedings and cited some of the decisions to that effect. Its sole argument was in substance that there was no time limit or statute of limitations that applied to these proceedings. It did not refer to or seek to distinguish in any way the more recent and unanimous three person panel decision in The New York Times Company v. Name Administration Inc. (BVI), NAF Case No. 1349045 which held in effect that laches is â€œa valid defense in any domain dispute where the facts so warrant.â€
But the most notable absence from the Supplemental Submission was any explanation for the delay; nothing was provided to assist the Panel on such obviously significant matters as whether the Complainant knew of the Disputed Domain Name and Website, when it became aware of them, its reaction to that news, whether it made any protest or demand for the Respondent to cease and desist and, if not, why not. These are not peripheral or difficult questions; they concern matters of facts that are solely within the knowledge of the Complainant and are matters that reasonable diligence should have convinced the Complainant that it had to volunteer whatever facts it could contribute on those matters. The omission of any such evidence is significant, as is the omission of any reason why the Complainant is not contributing to the evidence in this manner. Moreover, its omission is made, at least to this Panelist, the more egregious as the Complainant was at pains to submit and prove that it is â€œa top notch financial companyâ€, that it had conducted its business since 1960, carried out a wide marketing campaign over the Internet from Yahoo! to Facebook, was heavily engaged in the media and â€œrecognis(ed) the importance of the Internet as a means of communication between the Complainant and the publicâ€¦â€. The Complainant is clearly a well-established enterprise in a competitive field and a sophisticated user of the Internet and all manner of modern communications. All of that being so, the inference must be drawn that one of the matters of great interest to the Complainant was, or should have been, any possible abuse of its name and trade mark that might have been perpetrated on the Internet. Consequently, it is hard to accept that the Complainant was not aware of the Disputed Domain Name, especially when it had an opportunity to show that it was not aware of it, if that were the case, but declined to do so.
Accordingly, the Panel has been left in the situation where there is an unexplained delay in bringing these proceedings of over 12 years since the Disputed Domain Name was registered, which is an extraordinarily long period of time for anything relating to the Internet.
It should be stated clearly that it would not be appropriate to rule that a claim under the UDRP is automatically barred because of laches or delay. But it is equally inappropriate to say that such a defence cannot even be considered or that relevant facts cannot be taken into account or weighed in the balance in the course of making a proper decision. There is an obligation on panels under the UDRP to consider all of the facts and circumstance of a given case and to make a decision in the light of those matters and, in the opinion of this Panelist, that must include the Complainantâ€™s knowledge of the Disputed Domain Name, its conduct in the light of that knowledge and the reasons for any delay in instituting the proceedings.
Accordingly, although the issue of delay will not determine by itself the outcome in this case and although it will probably be only in rare cases that delay will have that effect, the issue must always be held in reserve for consideration where the facts require it and especially so in cases where the delay is considerable and unexplained.
Reverse Domain Name Hijacking
I respectfully disagree with the way the decision on Reverse Domain Name Hijacking has been expressed and with some observations made on the issue of bad faith. In general, the totality of the evidence does not indicate any bad faith intention either with respect to the registration or the use of the Disputed Domain Name.
One is reluctant to make a finding of Reverse Domain Name Hijacking except in the clearest of cases and this Panelist has declined to follow many submissions that such a finding should be made. That is because complaints that are over-optimistic are not necessarily irresponsible or deserving of censure. In the present case, the matter is difficult to decide. On the one hand, the case was always very dubious because the Disputed Domain Name consists of the essentially common word â€œlibertadâ€ in the Spanish language, the equivalent of â€œlibertyâ€ in the English language, a word that invokes the very notion of liberty that the Internet has promoted. As such, it was always an uphill battle to show that a domain name adopting such a generic notion could ever be found to be abusive. Moreover, this Panelist has been very concerned by the apparent lack of candour on the part of the Complainant in explaining what, if anything, it knew of the Respondentâ€™s Website and the Disputed Domain Name when all the circumstances tend to suggest that it was or should have been aware of them. Furthermore, the Complainantâ€™s case was misconceived. It summarised its case by submitting the following: â€œthe Complainant has a trademark registration of the word LIBERTAD and the Respondent does not have a trademark registrationâ€. On the other hand, the Complainant was probably entitled to be concerned at the potential confusion that might be engendered in the minds of Internet users from the use of the Disputed Domain Name and if that were the case it might well be reasonable for it to decide to challenge it by filing the Complaint.
On balance, the case is probably best categorised as one on the over-optimistic side rather than one deserving of censure. However, complainants should always carefully weigh these considerations when deciding whether to file a complaint, as the power to make a finding of Reverse Domain Name Hijacking is always available for panels to use in appropriate cases.
The Hon Neil Brown QC
Dated: January 10, 2012
9. Opinion of Ada L. Redondo Aguilera
I agree with the decision as supplemented / amended by the Opinion of The Hon Neil Brown QC.
Ada L. Redondo Aguilera
Dated: January 10, 2012