201910.16

UDRP: pabloescobar.com, transferred 20 years after its registration

In this UDRP proceeding (NAF, FA1908001859584, Escobar, Inc. v. Neil Okrent / Ivan Munguia, October 7, 2019), the complaint originated from a Colombian company with at least unusual and tumultuous history: Escobar, Inc, created in 1984 by Pablo Escobar and managed by his brother, Roberto. The complainant sought to obtain the transfer of the domain name pabloescobar.com, registered by a third party on November 26, 1999, twenty years earlier, at a time when Escobar, Inc. was no longer active. It would have been back in business in 2014, the trademark “Pablo Escobar” having been registered in 2017 with the United States Patent and Trademark Office (USPTO). The domain name pabloescobar.com was therefore unquestionably registered prior to the trademark. As is often the case with celebrity squatting, it was therefore necessary to demonstrate the existence of a common law trademark prior to the registration of the domain name. To this end, Escobar, Inc. has simply stated that since 1986, it has marketed “a multitude of consumer goods under the brand PABLO ESCOBAR“, supported by hundreds of millions of dollars injected into the marketing field.

As for the domain name, according to the UDRP complaint and at the time it was filed, it gave access to a page including the indication that a website was under construction. In addition, the domain name holder had offered to transfer the domain name for $ 3 million.

In terms of the limitation period, it is worth remembering that the filing of a UDRP complaint is not subject to any time bar:

Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.

Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations.

Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases.

Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.” (WIPO Jurisprudential Overview 3.0, para. 4.17).

In this case, the story of Escobar, Inc. appears to be in its favor. We do not know if, at the time of registration of the domain name, in 1999, Escobar, Inc. was legally dissolved before being re-incorporated in 2014 or if only its activities had been suspended. In the first case, the time elapsed between the registration of the domain name and the filing of the complaint is only five years. In the second, it is 20 years. This distinction does not appear in the decision. Certainly, in the case of the domain name pabloescobar.com, the importance of this issue is limited as the defenses were poor, and even inexistant. However, in a more adversarial procedure, twenty years and five years, it is not the same thing and this difference could be material in the final outcome. On this issue of delay, it could have been advised to the heirs of Pablo Escobar (see “UDRP: transfer of Mandela.org to the guardians of the memory of Nelson Mandela”; “kingofpop.com: the beneficiaries Michael Jackson and other celebrities facing the issue of domain names”.) to act in the UDRP only a few weeks after the registration of pabloescobar.com since the UDRP procedure was available from the beginning of December 1999. However, it must be recognized that at the time, the Internet was insufficiently developed in Colombia. In addition, cybersquatting detection tools (such as Detective by IP Twins) were almost non-existent. In any case, a procedure could have been undertaken well before 2019, including as early as 2014, the year of the rebirth of Escobar, Inc.

On the merits, the website appeared “under construction” and the defendant agreed to transfer the domain name against a transfer of three million dollars. In the absence of additional elements, which the defendant could have brought, it must be admitted that the bad faith was characterized. In these circumstances, the domain name had to be transferred.

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