In a UDRP decision just handed down, the domain holder beat back a challenge on the domain name Costa.com
The Complainant wound up being Cross Optical Group, Inc. (“Complainant”), the domain holder, Electric Online, Inc. (“Respondent”), was represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey.
Another good decision for domain holders as Costa is a generic term and means Coast in Spanish.
Here are the facts and findings by the three member panel:
“Complainant alleges that it owns rights in the following marks through registration with the United States Patent and Trademark Office (“USPTO”):
COSTA DEL MAR (Reg. No. 1,723,449 registered October 13, 1992)
COSTA (Reg. No. 3,857,379 registered October 5, 2010)
“Complainant alleges use of its various COSTA marks to promote its sunglass and eyewear business, which has allegedly been in operation under the COSTA DEL MAR mark since 1983.”
“Respondent registered the costa.com domain name on October 24, 1997, nearly fifteen years before Complainant initiated this proceeding.”
“The date of first use cited in United States Reg. No. 3,857,379 for Complainant’s COSTA mark is January 1, 2010.“
“Respondent hosts underdeveloped domain names with domain name parking services which pay a share of the advertising revenue they generate, an industry-wide accepted practice.”
“Costa” is a common term with a number of generic meanings.
“While Respondent argues that its registration of the costa.com domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary”
“Moreover, while Respondent contends that the Disputed Domain Name is comprised of a common and generic term and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary ”
“Although the costa.com domain name is confusingly similar to Complainant’s registered marks, the Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy”
“Here, Complainant has not made a prima facie showing that Respondent lacks rights or legitimate interests in the Disputed Domain Name.:”
“In its response, Respondent argued that its use of the Disputed Domain Name is a bona fide offering of goods or services or a legitimate noncommercial or fair use.
“Respondent established that it uses the Disputed Domain Name to display descriptive advertising links, as well as to provide website visitors “the opportunity to locate topic[s] related to the descriptive meaning of the word ‘coast.’”
“Regardless of whether better uses might exist for the Domain Name, the Panel finds that displaying hyperlinks and content related to the descriptive word “coast” at the resolving website are not illegitimate uses
“Therefore, the Panel concludes that Respondent does use the Disputed Domain Name to make a bona fide offering of goods or services under the Policy”
“Additionally, because the term COSTA as it appears in the Disputed Domain Name is common and generic in the Spanish dictionary, the Panel finds that Respondent can establish rights or legitimate interests in the Disputed Domain Name pursuant to the Policy”
“In summary, Complainant has not established that Respondent lacks rights or legitimate interests in the disputed domain name.”
“Complainant registered its unitary COSTA mark years after Respondent’s registration of the Disputed Domain Name.
“Although Complainant has used COSTA DEL MAR since at least as early as 1983, the record establishes that Complainant did not use the singular name “Costa” to identify its business until January 1, 2010.”
“Moreover, the Disputed Domain Name is comprised entirely of a common Spanish term meaning “shore” or “coast” and has meaning apart from use in Complainant’s COSTA mark.”
“The Panel agrees with Respondent’s contention that the registration and use of domain name comprising a common term such as COSTA is not done in bad faith.”
“In light of the Panel’s finding that Respondent has rights or legitimate interests in the Disputed Domain Name pursuant to the Policy the Panel also finds that Respondent did not register or use the Disputed Domain Name in bad faith pursuant to the Policy ”
“Nor has Respondent violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to the Policy ”
“The Panel also finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ”
“Specifically, the Panel notes that a respondent is free to register a domain name consisting of common terms and that the Disputed Domain Name that is the matter of this dispute is comprised of such a name. In light of this determination, the Panel finds that Respondent did not register or use the costa.com domain name in bad faith under Policy”
“With respect to Respondent’s contentions that Complainant’s action is barred by the doctrine of laches, the Panel finds that the doctrine of laches does not apply as a defense.
Regarding the Domain name holder request for finding of Reverse Domain Name Hijacking the panel said:
“While the Panel is troubled by Complainant’s attempt to secure the Disputed Domain Name, a domain name that has been registered to and used by Respondent for years prior to initiation of this action and prior to the use of COSTA as a standalone mark by Complainant, in light of Complainant’s legitimate and senior rights in COSTA DEL MAR, the Panel does not find the Complaint was brought in bad faith under paragraph 15(e) of the Rules.
“The Panel therefore does not find that reverse domain name hijacking has occurred.”
Congrats to Ari and the domain holder.