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.”

 

Comments

  1. Moris says

    Is there a way to make sure that the Trade-Mark Clearing House in the new gTLD program will not include generic names??

    This has many implications for .com owners!!

    The more people think that its acceptable to trademark a generic term -and manage to get it into the TMCH the more chances they have of reverse hijacking generic domains.

    If generic names will be put in the TMCH and on hold in new gTLD for Trademark owners they will use that in future UDRP’s as evidence that ICANN too gives them priority on generics and accepts the fact that they have rights over these domains.

    This will seriously affect .com owners as they will go after them way more than today and will have more ammo to use backed by the TMCH.

  2. Michael H. Berkens says

    Morris

    The Trademark clearinghouse certainly will include plenty of generic names.

    The TM clearing house is a for profit business meaning those who want to apply will have to pay.

    If they have the TM’s then they will be more than welcome to apply and IBM will be more than happy to take the money

  3. says

    I predict fewer UDRP’s going forward, after the gTLD’s launch. This year is the last big wave of them (UDRP’s).

    Would not be a bit surprised to see ICANN revamp the entire UDRP process next year anyway – it’s like the Wild West right now in UDRPville, it won’t last.

  4. Orangelo says

    So basically, Marco Rafael Sanfilippo of Buenos Aires, the owner of the domain name cabanias.com and the owner of a trademark for the term CABAÑAS, appears to be nothing more than a dirty domain thief who tried to steal both a domain and a business from the Respondent, since if he got the domain he also would have gotten all the leads.

    Let the world know that some of us think that Rafael San filippo of cabanias.com likes to play dirty business and is just a scummy UDRP domain thief. I’d never do business with this person or company.

    When you time comes Marco I hope you pay for it dearly for what you have done and for you dirty, sick heart. I also hope your business dwindles and you go under and someone takes advantage of you.

  5. Orangelo says

    I’d like to say another thing about this UDRP.

    Why the hell did this make it based the initial review for UDRP worthiness ?

    This is a generic domain and even the panelists clearly state that there is no doubt it is generic.

    The Respondent should have never had to pay the UDRP fee or the lawyer fee. Total UDRP process thievery .

    The NAF and WIPO need to have higher standards, but they are letting money dictate whether these UDRP move forward or not. Sickening.

  6. says

    @Help,

    Not sure why you’re calling me out here, but we’ve had two solid, written offers of over $50,000 in the past 18 months for this domain. It’s a strong brandable and we aren’t desperate to sell, so the final sales price someday will likely surprise you (yes, we’ll report to dnjournal when it sells).

  7. Michael H. Berkens says

    Orangelo

    “”Why the hell did this make it based the initial review for UDRP worthiness ?”

    There isn’t one

    Anyone can file a UDRP against any domain holder with or without reason and the case will progress to a decision unless dropped by one of the parties before the decision

  8. Moris says

    Michael

    In general generics are not allowed to be trademarked. The fact that people are gaming the system – doesn’t mean it should be allowed. No generic should have priority in a sunrise.

    Some companies tried to register a TM for a dot whatever and were not allowed. Some tried and succeeded but once USPTO was alerted by others their TM was revoked.

    In Russia they tried to do the same with the last launch of .rf and there was a big stink about it. The companies who got those generic domains in the sunrise, lost them as their domains were taken away from them.

    Its just not right.. they should not have priority.

    By the way what if a new gTLD like .BLOG decides to reserve some names for future auction like sex.BLOG, but someone got a trademark in to the TMCH. Does that mean that they get first priority and it cant be auctioned?

    If you are saying generics will be accepted in the TMCH that means that many new gTLD’s who thought they would auction certain names and keep them as reserved will have a lot less names available to auction…

  9. Pete says

    rick schwartz compares domain hijacking to child molestation

    i wonder if they compared the seriousness of the matter to child molestation as well?

    or maybe ricks just imprisoned by money

  10. Interesting says

    isn’t Rick Schwartz the domain king, the guy who owns the traffic conference?

    doesn’t he give out the industry awards?

    sounds like a pillar of the domain community lol

  11. Barnet says

    Here is an insert of a comment on Ricks blog:


    To the guy who keeps crying about how Rick despises Reverse Domain Hijackers as much as child molesters, you need to wake up. The very worst things in life are dishonest things like this.

    Could you please explain Rick here, if you wont post and answer a question on your own blog?

    Michael I only post here because you’re all connected, hope you dont mind.

  12. johnson says

    imagine if he was in politics, that comment would have him thrown out of office, but in the domain world it’s just swept under the carpet and Rick will be up there awarding domainers of the year lol

    one day people ll wake up to this guy

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