The Complainant is Solverde, S.A., Portugal, represented by Inventa International, SA, Portugal.
The Respondent is Rojas Espinoza, Servicios de Lexicografia S.A., Portugal / Pierluigi Buccioli, Turn Invest Group Ltd, Seychelles, represented by ESQwire.com PC, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2020. On November 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2020, the Registrar transmitted by email to the Center its verification response confirming that the original 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 “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the original Respondent of the Complaint, and the proceedings commenced on December 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2021. The original Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2021. The Registrar contacted the Center on January 28, 2021 and informed that the disputed domain name had been auctioned and is now registered by a new registrant. On February 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the original named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 1, 2021. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the current Respondent of the Complaint, and the proceedings commenced on March 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021. The Response was filed with the Center on March 25, 2021 by the current Respondent. The Center appointed John Swinson, Tobias Malte Müller and The Hon Neil Brown Q.C. as panelists in this matter on May 5, 2021. 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. 4. Factual Background The Complainant is a Portuguese company that operates casinos and hotels in Portugal. The Complainant also operates a licensed online sports betting business. Since 1974, the Complainant has operated the landmark Casino Esphino near the city of Porto. The Complainant uses the branding “SOLVERDE CASINOS HOTEIS” on its websites. The Complainant owns several trademark registrations for SOLVERDE. These include Portuguese trademark number 48722 for SOLVERDE filed on June 16, 1986, Portuguese trademark number 583784 for CASINO SOLVERDE filed on June 8, 2017 and Portuguese trademark number 597481 for SOLVERDE filed on March 2, 2018. The disputed domain name was first registered on November 27, 2002. The disputed domain name was registered by the current Respondent as part of an auction process conducted by the Registrar in early January 2021 while these proceedings were pending. The Registrar emailed the Center on January 28, 2021 as follows: “Last year, you asked one of the parties to confirm to the Center as soon as possible (copying the Registrar) once the necessary arrangements have been made with the Registrar to ensure the domain name remains active since the domain name expired on November 27th, 2020. Neither party has reached out to me for renewal. Therefore, the domain name continued the expiration process. We have a system set up for auctions on domains that are at the end of the expiration process and this domain name was picked up by another registrant through that auction instead of going into delete.” The Respondent registers domain names for investment and development. At the time of this decision, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant made the following submissions in the Amended Complaint: Identical or Confusingly Similar The Complainant is a well-known company in Portugal. The Complainant was founded in 1972 in Espinho, Portugal. The company works in the touristic field. In 1973, the Complainant won the gambling concession in Espinho, and started operating is 1974. Eight years later, in 1982, the current building of “Casino Espinho” was inaugurated, considered at the time to be the largest in the country and one of the biggest in Europe. Two years later, the Complainant inaugurated the “Hotel Apartamento Solverde”, also in Espinho. In 2017, the Complainant commenced operation of the Online Casino Solverde, certified by the Game Regulation and Inspection Service, and in 2020 began an online sports betting business. The Complainant owns several trademark registrations for SOLVERDE. The Complainant provided a list of Portuguese trademark registrations in the Complaint. These registrations cover classes 9 (sport betting applications), 16 (Hotel directories), 28 (games, sport games), 41 (casino and betting games), 42 (game design) and 43 (hotels). The disputed domain name is identical to the Complainant’s SOLVERDE trademark. Rights or Legitimate Interests The Respondent does not have permission from the Complainant to use the Complainant’s trademarks or to register a domain name that is identical the Complainant’s trademarks. The Respondent has no trademark rights in Portugal. The Respondent is not commonly known by the name SOLVERDE. For the past 18 years, and today, there has been no website in operation at the disputed domain name. The disputed domain name is listed for sale for USD 24,888. At the time the disputed domain name was registered, the Complainant was well-known, so the Respondent would not have any bona fide legitimate interest or rights in the domain name which incorporates the Complainant’s trademark. Registered and Used in Bad Faith The previous owner of the disputed domain name registered the disputed domain name in 2002, at which point in time the Complainant was well-known, and so one could conclude that the previous owner was aware of the Complainant and its trademarks. The same can be said for Respondent. When the disputed domain name was supposedly auctioned and registered to the Respondent, the Respondent knew or could not have been unaware of the Complainant’s operations and its trade names and trademarks. At the time the Respondent acquired the disputed domain name, it was already the subject of an ownership dispute under the Policy. The Complainant, when informed by the Center that the disputed domain name was to expire during the pendency of this dispute, contacted the Register asking to backorder the disputed domain name. No response was received from the Registrar. The Complainant was completely surprised when informed by the Center that the disputed domain name was auctioned and purchased by the Respondent while this dispute was pending. Registration of the disputed domain name by the Respondent is blocking the Complainant’s international expansion. The previous owner of the disputed domain name registered several other domain names that included well-known Portuguese trademarks and brands. One of these domain names was the subject of a successful UDRP complaint (WIPO Case No. D2009-0658). The Respondent is a domain name speculator. B. Respondent The Respondent made the following submissions in the Response: The Complainant took no action in relation to the disputed domain name for 19 years. The Respondent purchased the disputed domain name at auction from the original owner of the disputed domain name. The Complainant’s claim is rife with allegations against the prior owner for the prior owner’s purported bad faith (which alleged took place over a span of two decades). The main arguments set forth in the Complaint do not pertain to the Respondent. The Respondent has no relationship with the prior registrant and even, assuming the prior registrant was a bad actor, its actions cannot be imputed to the Respondent. This is a case of laches and the Respondent should not be held accountable for the Complainant’s extremely long inaction. On January 4, 2021, the Respondent was the winning bidder during a domain name auction at NameJet. In the NameJet auction, the Respondent competed against 21 other parties and ultimately winning the bidding after 52 bids. Identical or Confusingly Similar The Respondent accepts that the Complainant holds valid trademarks. Rights or Legitimate Interests The disputed domain name is comprised of descriptive terms. The more descriptive a trademark, the more difficult becomes the complainant’s burden of proof to establish registration and use with complainant’s mark as a target. The Complainant has failed to show that its trademark is well known all over the world. Here the obvious combination of two dictionary words “Sol” and “Verde” are not exclusively associated with the Complainant and have a descriptive, brandable quality independent of the Complainant. The disputed domain name has descriptive meaning as combination of two Spanish words “Sol” (Sun) and “Verde” (Green). Google search results for “Sol Verde” show many pages of third-party results and Google’s suggested search terms when typing “Sol Verde” auto populate restaurants, a campground, and other results unrelated to the Complainant. The fact the disputed domain name was being sold by its prior owner who had first registered the disputed domain name in 2002 should be a positive indication that the disputed domain name is free from any claims. The Respondent has provided sworn testimony that he had no knowledge of Complainant or its trademark and did not register the disputed domain name to target Complainant. The registration of domain names that contain common words are permissible on a first-come, first-served basis, and such registration establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind. A respondent who is a generic domain name reseller with numerous similar domain names can have rights or legitimate interests under the Policy. Speculation in domain names may itself constitute a bona fide activity under paragraph 4(c)(i) of the Policy. Registered and Used in Bad Faith The Respondent registered the disputed domain name simply because it incorporated a descriptive term that became available when its prior owner decided to sell the disputed domain name. The Respondent purchased the disputed domain name solely because it is a valuable, brandable .COM domain name with inherent value, which the Respondent could develop, sell to a third-party end user, or resell on the secondary market. The Respondent also purchased the disputed domain name because it was an aged domain name (almost 2 decades old). The Respondent has been registering common word domain names for investment and development, since at least 2009. Over the past 12 years, the Respondent has registered other short and memorable .com domain names, similar to the disputed domain name, that incorporate the word “Sol” or ‘Verde” including but not limited to: The Respondent did not register the disputed domain name with the Complainant’s trademark in mind or with the intent to sell to the Complainant, to disrupt the Complainant’s business, or to confuse consumers seeking to find the Complainant’s web site. The Respondent was not aware of the Complainant when he was bidding to purchase the disputed domain name at the NameJet auction and only learned of the Complaint on February 17, 2021 when he was copied on an email from the Center that contained the Complaint. At no time did the Respondent target or intend to target the Complainant. The registration of previously registered domain names can be a signal to prospective registrants that it is available and can be registered in good faith. Where the prior owner appears to have had continual ownership for 19 years and offers it for sale, it is a signal that there is no competing third-party trademark claim. A party cannot infer that just because they have a trademark in their home country that the trademark is well-known in another country where the registrant resides. It is well established that the Policy does not require a respondent to conduct trademark searches in every country of the world. It does not constitute bad faith to offer descriptive term domain names for sale. Registering generic domain names for investment – including the sale of the domain name – has been found to constitute use of the domain name concerned in connection with a bona fide offering of goods or services provided that the registration of the domain name was not undertaken with intent to profit from or otherwise abuse a complainant’s trademark rights. The Respondent’s decision to list the disputed domain name for sale, after being the winning bidder does not support a finding of bad faith. The Respondent’s good faith purchase of the disputed domain name, after the Complainant slept on its purported rights for 19 years should not be held against the Respondent. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The onus of proving these elements is on the Complainant. Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar The Complainant has clearly proven ownership of numerous and long-standing registered trademarks for SOLVERDE in Portugal. The disputed domain name is identical to that trademark, disregarding the Top Level Domain “.com”. The Respondent does not dispute that the Complainant holds valid trademarks. The Complainant succeeds on the first element of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The Complainant asserts that the Respondent does not have permission from the Complainant to use the Complainant’s trademarks or to register a domain name that is identical the Complainant’s trademarks. The Respondent does not dispute this. The Complainant asserts that the Respondent is not commonly known by the name SOLVERDE and has not operated a website using the disputed domain name. The Respondent does not dispute this. There is no evidence before the Panel that the Respondent has trademark rights in SOLVERDE or similar. The Respondent purchased the disputed domain name at auction in January 2021 and immediately listed it for sale for USD 24,888. The Respondent asserts rights or legitimate interests in the disputed domain name on the basis that the disputed domain name comprises two common words, and that a respondent who is a generic domain name reseller with numerous similar domain names can have rights or legitimate interests under the Policy. The Respondent argues that speculation in domain names may itself constitute a bona fide activity under paragraph 4(c)(i) of the Policy. The Panel does not consider SOLVERDE to be a dictionary word or phrase. SOLVERDE is a distinctive trademark and not a descriptive or generic term. It is correct that SOLVERDE consists of two dictionary terms in Spanish language (sol, verde). However, the composite term “solverde” is in the Panel’s view not descriptive or generic. There is no “green sun” and to best of the Panel’s knowledge “solverde” is neither a dictionary term nor a common expression. In addition, the Respondent’s explanations referring to further domain names that he owns that include the word “sol” or the word “verde” do not change this finding. To the contrary: These domain names show that the composite term “solverde” as a combination is unusual. As explained in a prior decision concerning the term “BANKWEST”: “The Respondent claims to have a legitimate interest in the Disputed Domain Name as he says it is descriptive and/or generic. The Panel is not persuaded this argument is correct. Clearly the term “bankwest” comprises two ordinary English words each of which on its own is manifestly generic and inherently non-distinctive as to the subject matter covered by that term. However, combining two ordinary words may give rise to a term which either is, or is capable of being, distinctive. In the present case the combined word “bankwest” is not a dictionary word in its own right and it seems to the Panel it is not a term which would readily be coined as a matter of English usage. The Panel does not agree that it would readily be used to refer to a bank that happened to be located in a geographically western area (whether western in a given town, or city, or some wider geographic area). Indeed, to the Panel it seems to be rather a clumsy usage of language that seems unlikely to be readily used or adopted in a descriptive (or generic) manner but rather would only likely to be used having been coined as part of a deliberate decision to use the term.” Commonwealth Bank of Australia v. Registration Private, Domains By Proxy, LLC / Ravindra Patel, gbe,WIPO Case No. D2017-0807. Even if the Panel were incorrect on this point, prior panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on a respondent. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. There is no evidence that the Respondent intends to use the disputed domain name in respect of a “green sun” product or service. Accordingly, the Panel finds the Complainant succeeds on the second element of the Policy in relation to the disputed domain name.1 C. Registered and Used in Bad Faith This is a very close case. Ultimately, the Panel concludes on the basis of the specific facts established by the evidence, that the Complainant has carried its burden of proving that the Respondent registered and use the disputed domain name in bad faith. The Respondent acquired the disputed domain name via auction during the pendency of this dispute. The Panel does not rely upon any of the evidence regarding the bad faith of the prior registrant of the disputed domain name. There is evidence before the Panel that the Complainant’s SOLVERDE trademark is well-known in Portugal, but there is little evidence of the reputation of this trademark outside of Portugal. The Respondent submitted a signed declaration that states in part: “I did not register the Disputed Domain with Complainant’s trademark in mind or with the intent to sell to Complainant, to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s web site. I was not aware of Complainant when I was bidding to purchase the Disputed Domain at the NameJet auction and only learned of Complaint on February 17, 2021 when I was copied on an email from WIPO that contained the Complaint. I am a resident of the United Kingdom with no connection to Complainant’s operative country, Portugal At no time did I target or intend to target the Complainant.” The Respondent is a sophisticated domain name investor, and has been in this business since 2009. Despite providing a detailed declaration, the Respondent did not provide any details of searches or due diligence the Respondent undertook prior to acquiring the disputed domain name at auction. A Google search of “SOLVERDE” conducted by the Panel resulted in many search results for the Complainant on the first page of the search results. Moreover, if the Respondent had searched the UDRP SEARCH database at “www.udrpsearch.com”, the Respondent would have seen that the disputed domain name was subject to an “active case”. The Respondent relies upon the fact that the disputed domain name had been registered for 19 years by the prior registrant, and that this “is a signal to Respondent that there is no competing third-party trademark claim.” In some circumstances, that may be true, but here, simple Internet searches would have shown the Respondent that the disputed domain name was subject to an actual and pending UDRP complaint. These findings are confirmed by Exhibits 5 and 6 to the Response, which are a screenshot of the Google autocomplete (i.e., the terms suggested by Google) when searching for the terms “sol” and “verde” (written separately) on the one hand side and a Google search for the terms “sol” and “verde” (written again separately) on the other side. Even ignoring that these searches do not refer to the distinctive composite sign “solverde” but to the dictionary terms “sol” and “verde” written separately, it results from the Google autocomplete that the search engine nevertheless associates these terms to the Complainant: in fact, the only hit in the Google autocomplete containing the composite sign “solverde” (written in one word) refers to the Complainant’s business (i.e., “solverde casino”). Two further hits also refer to the Complainant (“sol verde hotel [Portugal]” and “sol verde espinho”). One other hit is not related at all to the search “sol verde” but refers to “Sul Verde Restaurant” (Bermuda). Therefore, the overwhelming impression conveyed by the Google autocomplete in the Panel’s view is that the composite term “solverde” relates to the Complainant. In addition, the five pages of Google search results for the terms “sol” and “verde” also reveal many hits directly associated with the Complainant (4 out of 6 on page 3, 1 out of 6 on page 4, 3 out of 6 on page 5). The most these search results show in support of the Respondent’s case is that there is also a Mexican restaurant located in Bend/Oregon (15 hits), a Colombian online shop and a camping ground in Liberia operating, respectively, under the business name “Sol Verde”. Consequently, there is no evidence in the Google search before this Panel that anyone uses the term “solverde” descriptively or to describe any business. The Google search results rather show use of the terms “sol” and “verde” as distinctive business identifiers. The Panel therefore concludes the Respondent has failed to prove any generic or descriptive use of the term “solverde”. The Respondent relies upon Career Guidance Foundation v. Ultimate Search,WIPO Case No. D2003-0323. However, in that case, the disputed domain name had lapsed and was purchased after lapsing and was not the subject of a pending UDRP complaint. The composite expression “SOLVERDE”, being as it is an unusual combination of words, connotes and gives the impression that it is invoking a specific named product or brand. Accordingly, the expression puts a potential registrant of the disputed domain name on notice that he may well be about to use another person’s trademark and that he should, before acquiring the disputed domain name, conduct some form of search to ascertain whether this is so or not. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754. In Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304, the panel stated: “… where a respondent has registered a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name’s value derives from its generic qualities, that may constitute a legitimate interest and the offer to sell such a domain name is not necessarily a sign of bad faith. Where, in contrast, a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.” It was also entirely within the Respondent’s power to put up a website which created no prospect of consumer confusion vis-à-vis the Complainant’s services and trademark. Had Respondent done so, he might have been able to prevail in this case. Instead, the evidence is that the Respondent immediately listed the disputed domain name for sale for USD 24,888. The disputed domain name wholly incorporates the Complainant’s trademark, which is distinctive. In light of the above, including the critical fact that the disputed domain name was subject to a pending UDRP complaint when acquired by the Respondent, the Panel concludes that the Respondent acquired the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. For completeness, the Panel does not consider laches. Because the Respondent acquired the disputed domain name during the pendency of this case in January 2021, it cannot be said that the Complainant delayed in bringing the case against the Respondent by amending the Complainant to join the Respondent less than 2 months after the Respondent acquired the disputed domain name. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name John Swinson Tobias Malte Müller The Hon Neil Brown Q.C. 1 Note added by Panelist Brown: Panelist Brown agrees with the overall result and the order for transfer in this case because of the unique circumstances of this case which have been revealed by the evidence and only because of those unique circumstances. For reasons not fully explained in any detail, the Respondent bought the domain name after the Complaint had been filed, which raises the inference that the Respondent knew or could easily have ascertained that the domain name was subject to a claim by a trademark owner, but nevertheless proceeded to acquire the domain name. This negated what would otherwise have been a good defence on the second of the third elements that have to be proved by the Complainant. The Respondent may well have a right and legitimate interest in the domain name because it has all the attributes of being a generic word and there is no evidence that the Respondent ever used it to besmirch the Complainant or its trademark or engage in any other improper conduct. In that regard, Panelist Brown does not agree that the word “solverde” is not generic or descriptive or that the fact that it is derived from two generic and dictionary words is an obstacle to the combined word being seen as generic or in common use. The word clearly invokes the sun and the colour green and that was presumably the reason the Complainant chose the word to describe its holiday resort and it seems to be the way in which the Complainant also uses the word in its advertising. The Complainant itself therefore seems to regard the combined word as having a generic meaning and the Respondent is doing no more than giving it the same meaning. Nor is there any rule of law that a party in the Respondent’s position must actually use the word in the generic sense. A registrant is entitled to use a generic word in whatever way it wishes, sell it or even not use it at all, provided that it does not act inimically to the interests of a trademark owner or engage in any other improper conduct, which the present Respondent has not done. The difficulty for the Respondent in an otherwise persuasive case which would have established a right or legitimate interest, is that it has generated an inference that is in the evidence and cannot be ignored, that it probably knew or could have ascertained that there was a claim by a trademark owner against the domain name. Without that inference being raised, the Respondent would have prevailed, in the opinion of this Panelist. The same approach applies to the issue of bad faith. Here again, a persuasive case has been made out that the Respondent did not register or use the domain name in a way that would ordinarily be thought of as constituting bad faith; trying to sell a domain name is not acting in bad faith other than in the circumstances set out in the Policy. The Respondent would therefore probably have prevailed had it not been for the unique circumstance that the Respondent bought the domain name during the proceeding and either knew or could have ascertained that there was a trademark owner’s claim already on foot.
Presiding Panelist
Panelist
Panelist
Date: May 25, 2021
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