Domain Holder of The IDN, Cabañas.Com Beats Back A UDRP Challenge By The Owner of Cabanias.com
A three member UDRP panel just ruled in favor of the domain holder of the IDN domain name which means CABAÑAS.COM
The Complainant was Marco Rafael Sanfilippo of Buenos Aires, the owner of the domain name cabanias.com and the owner of a trademark for the term CABAÑAS in several countries.
The domain holder is Estudio Indigo of Buenos Aires, who was represented by Zac Muscovitch of The Muscovitch Law Firm, Canada.
The UDRP involved a IDN which officially is listed as xn--cabaas-zwa.com, but which is the generic word CABAÑAS.COM with the accent mark.
Here are the relevant facts and finding by the three member panel
“Through the “www.cabanias.com” website, Complainant operates a portal where cabañas (Spanish for huts or cottages), apartments and bungalows in Argentina, Uruguay, Brazil, Chile, etc., are offered for temporary rent.”
“Complainant owns the following trademark registrations with INPI, the Argentine trademark office:
“CABAÑAS.COM WWW.CABANIAS.COM, mixed mark, Reg. No. 2093959, Reg. date June 29, 2006, filed on December 1, 2004, covering all services of International Class 35.
“CABAÑAS.COM WWW.CABAÑAS.COM, mixed mark, Reg. No. 2266605, Reg. date January 14, 2009, filed on December 27, 2007, covering all services of International Class 35.
“According to the corresponding WhoIs database, the record for the <xn--cabaas-zwa.com> disputed domain name was created on August 29, 2005. <xn--cabaas-zwa.com> is the internationalized domain name (IDN) equivalent to <cabañas.com>. (Panel emphasis).”
“Respondent operates the “www.xn--cabaas-zwa.com” website, to which the disputed domain name resolves, offering cabañas for rent and other accommodation in different tourist places in Argentina, Brazil, Chile and Uruguay.”
“Because Complainant and Respondent are offering the same or similar services in the same market, they compete with each other.”
“Respondent is using the disputed domain name in a corresponding website where cabañas are being offered for temporary rent in Argentina, Uruguay, Chile and Brazil. ”
“Respondent has shown copies of communications both internal and with clients that he has been advertising the rental of cabañas in association with the disputed domain name on its website for several months between January 29, 2010 and September 3, 2010, that is before receiving Complainant’s cease and desist letter through which he was put on notice of the present dispute. ”
“The Panel believes this is evidence of a bona fide offering of services pursuant to Policy, paragraph 4(c)(i), and thus, of rights or legitimate interests in the disputed domain name.”
“Clearly, Respondent’s use of the cabañas term in its descriptive or generic sense is not illegitimate. ”
“Cabañas is a common designation for huts or cottages in Spanish, the language used in the website into which the disputed domain name resolves. ”
“In fact, cabañas is so obvious a term for such offering that it is used both by Respondent and Complainant in their websites for competing commercial purposes and approximately in the same manner. ”
“Because offering goods or services by using the corresponding descriptive or generic term is a legitimate use of the term, the Panel concludes that Complainant has failed to prove the second element of the Policy.”
“Since Complainant failed to establish Respondent’s lack of rights and legitimate interests in the disputed domain name, the Panel need not deal with the bad faith element.”
The panel however denied the domain holders request for a finding of reserve domain name hijacking (RDNH):
“Complainant may plausibly have overestimated the strength of its case after Respondent replied to Complainant’s cease and desist letter by announcing that he would be taking down the content of the website at the disputed domain name, and asked Complainant not to institute any lawsuit against him, even if the Panel does not consider that Respondent’s reply to Complainant’s cease and desist letter was a recognition of Complainant’s rights. ”
“Accordingly, the Panel does not believe that Complainant acted in bad faith in an attempt of reverse domain name hijacking when he brought the Complaint against Respondent.”