When 'Sweet Water' Becomes Bitter

Author:Mr David Taylor and Ying Lou
Profession:Hogan Lovells
 
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The owner of various Colombian mixed/combined AGUADULCE marks sought the transfer of 'aguadulce.com ' under the UDRP The panel found that the complainant had failed to prove that its notoriety had transcended its own field and reached Pakistan, where the respondent was based Anyone could register the dictionary term 'aquadulce', unless it was established that such registration targeted one particular user of this term - which was not the case here In Sociedad Puerto Industrial Aguadulce SA v Makrani (WIPO Case D2019-1378), a three-member panel has denied the transfer of a domain name consisting of the Spanish generic term 'agua dulce' ('sweet water' or 'fresh water' in English) under the Uniform Domain Name Dispute Resolution Policy (UDRP) due to the lack of sufficient evidence supporting the targeting of the complainant's trademark.

Background

The complainant was Sociedad Puerto Industrial Aguadulce SA, the operator of a multi-purpose marine terminal located in Colombia, which had been in business continuously since 1996. The complainant owned a variety of Colombian trademarks for the mixed/combined mark AGUADULCE and design, one of which was registered in 2009. It had also used the domain name 'puertoaguadulce.com' to point to its website since 2004.

The respondent was AbdulBasit Makrani, a domain name dealer based in Pakistan. The domain name 'aguadulce.com' was registered on 29 November 2011 and was being used to resolve to a market listing page offering it for sale and inviting interested parties to submit an inquiry. The respondent previously specified the price of the domain name as $36,888 in response to the complainant's inquiry.

UDRP requirements

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under Paragraph 4(a):

the domain name registered by the respondent is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights; the respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and is being used in bad faith. Decision Identity/similarity

With regard to the first limb, the complainant underlined that its trademarks consisted exclusively of the word 'aguadulce' with a very simple design. The domain name was therefore confusingly similar to its trademarks as it incorporated the term 'aguadulce' in its entirety. The respondent did not provide particular...

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