Case Number: D2019-1378
Complainant: Sociedad Puerto Industrial Aguadulce S.A.
Represented by: Brigard Castro
A Colombia-based transportation and logistics company has been found guilty of Reverse Domain Name Hijacking by the World Intellectual Property Organization, after attempting to grab the Spanish-language domain aguadulce.com. Aguadulce means “sweet water” or “fresh water” in Spanish, and it is a small town in the Seville region of Spain. It is also the name of a port and marine terminal in Buenaventura, Valle, Colombia. The eponymous Puerto Aguadulce is run by the company Sociedad Puerto Industrial Aguadulce, which attempted to grab aguadulce.com from AdbulBasit Makrani, a Pakistani investor. The company was represented by the law firm of Brigard Castro. Mr. Makrani was represented by attorney Howard Neu.
The complainant noted it held several trademarks in Colombia, which were granted in 2009. The disputed name was registered in 2011. Attorneys for the port operator also asserted that Sociedad Puerto Industrial Aguadulce was well known globally due to its connection with large industrial partners in global shipping and port operations. They also pointed out the company’s domain, puertoaguadulce.com, was registered in 2004.
But the complainant’s arguments hinged largely on its ownership of various Colombian trademarks containing the word, “aguadulce”, and they attempted to impeach the legitimacy of the domain owner’s rights by noting he had been involved in other UDRP cases.
The panel’s decision came down to the issue of whether Mr. Makrani had registered the domain in bad faith. Panelists wrote that while the complainant did have legitimate trademark rights, the reputation of the port operations company did not appear to extend to a global audience, or even a broad-based national level in its native Colombia, let alone Pakistan. Panelists further noted the terms contained in the domain name have multiple generic meanings and are also used in several regional names.
“As a general rule, anyone can register such words in a domain name,” the panelists wrote. “One cannot infer without evidence, which is lacking in this case, that one user of such words is necessarily being targeted.”
While not a unanimous ruling, the majority of the three-member panel asserted the complainant brought its own case in bad faith. However, all members of the panel did agree the complainant was attempting to obfuscate the truth, noting the attorneys’ selective introduction of evidence designed to cast a pall of illegitimacy on the domain owner.
“The Panel unanimously considers that the way in which the previous [UDRP] cases were quoted was at best careless and at worst misleading,” the panelists wrote. “It was left to the Respondent to set the record straight in this regard.”
The ruling was handed up August 8, 2019.