Panel admonishes publisher for cybersquatting complaint.
A World Intellectual Property Organization panel has found (pdf) that Revista Emprendedores S.L. engaged in reverse domain name hijacking.
The company publishes a Spanish-language magazine called Emprendedores, which translates to Entrepreneurs in English.
It filed a cybersquatting claim against emprendedores.com, a site used to promote online courses about starting a business. That domain is owned by Rafel Mayol, Emprendedores Online LLC. It acquired the domain for $45,000 in 2019.
Notably, the Respondent has a European Union trademark for emprendedores.com, and a supplemental register trademark in the U.S. for the same mark.
The panel found the Complainant lacking and found for the Respondent on the issues of rights or legitimate interests and registration and use in bad faith.
It went a step further by finding reverse domain name hijacking. The three-member panel noted that:
i) the Complainant, which is represented by counsel, should have appreciated the weakness of its case and the fact that the term “emprendedores” encompassed in the disputed domain name cannot be exclusively referable to the Complainant;
ii) the Complainant attempted to claim some notoriety of its trademark EMPRENDEDORES by simply providing some 1997 circulation numbers and mostly its 2020 and 2021 circulation numbers, whilst it did not even attempt to prove – even in its Supplemental Filing – any kind of notoriety as of 2019, when the disputed domain name was acquired by the Respondent;
iii) the Complainant made claims that the Respondent is copying its website colors and stylizations based on current uses, while the evidence submitted by the Respondent shows differences in 2019. Moreover, the Complainant failed to mention that its online courses only began recently in 2022, thereby attempting to suggest to the Panel that such courses have been around for a while and before the Respondent started its use of the disputed domain name for its online courses; and
iv) in view of the circumstances of the case and considering the Respondent’s existing trademark registrations for EMPRENDEDORES, the Complainant’s attorneys should have appreciated that the present matter is a trademark dispute which cannot be decided under the Policy, since the annulment of trademark registrations is a competence of National and Regional Administrative and / or Judiciary bodies.
And what’s up with people trying to claim exclusive rights to the word entrepreneur?
The Complainant was represented by ECIJA and the domain owner was represented by Law.es.