UDRP Perspectives - UDRP Perspectives

0. Preliminary Issues

0.1 Scope of the Policy

The UDRP is not intended to resolve all kinds of disputes. Rather, it is only designed and intended for clear cut cases of cybersquatting. Other disputes are not intended to be resolved by the expedited and administrative nature of the UDRP procedure.

The limited scope of the Policy is confirmed by its legislative history, namely the “Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy” (“ICANN Second Staff Report”) 1999, par. 4.1.c. It confirms that the Policy applies to “a small, special class of disputes” and “except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties)…” The “Final Report of the WIPO Internet Domain Name Process”, April 30, 1999 (“WIPO Final Report 1999”) states that the UDRP’s scope is limited to “abusive registrations or cybersquatting” and only to “egregious examples of deliberate violation of well-established rights…” (see par. 160). The limited nature of the UDRP has been highlighted as a “feature, not a flaw” (see ICANN Second Staff Report, par. 4.1.c). The Policy should not be applied inter alia to “good faith disputes between competing right holders or other competing legitimate interests…” or to “domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial consideration” (see par. 172 of the WIPO Final Report 1999). See also 2.10 of this Document (“Free Speech”).

The Policy requires Panels to discern those cases appropriate for resolution and to dismiss those that are not. Courts, which are equipped with robust discovery and cross-examination, should be deferred to where a case involves material unreconcilable facts and versions of events or where credibility is a key issue and is unable to be determined.

Complexity alone per se is not necessarily a reason to dismiss, however. Some cases may have complicated facts or complex legal arguments and still be appropriate for resolution under the UDRP. Nevertheless, where the complexity of facts or law cannot be satisfactorily resolved under the limited procedural framework of the UDRP such as where cross-examination and discovery would be appropriate, or where the legal issues at play call into question whether it is a clear case of cybersquatting, dismissal remains appropriate. Panels should not however be dissuaded from adjudicating appropriate cases just because a Respondent has attempted to obfuscate with complexity, what are otherwise appropriate facts and legal arguments to resolve in the UDRP.

Additional Information

Relevant Decisions

Kostel, LLC and Constantin Calugher v. mohamad atef, Forum FA2405002100428, <alternativepods.com>, 3-member, Denied

The Panel thus has discretion to terminate or continue with the UDRP administrative proceeding when outside litigation related to the domain name is pending. UDRP panels have often proceeded to a decision despite concurrent court proceedings when the domain name issues are ancillary to other issues in those proceedings and the domain name issues can be resolved without reference to the remedies at issue in the judicial proceedings…In this case, control of the domain name is central to the other remedies sought in the court cases, as it is the only means by which the parties’ customers can gain access to the parties’ retail outlets. More importantly, resolving the domain name issue in this case necessarily involves sorting through the same competing factual allegations that will determine the other issues in those cases…This case arises out of the dissolution of a previous business relationship. As such it is outside the scope of the UDRP, and resolving the factual issues involved in this matter is well beyond the limited means available for that purpose under the UDRP. The Panel will exercise its discretion in favor of terminating this proceeding.

Consejo General del Notariado c. Andrés Martínez, WIPO D2024-0956, <portalnotarial.com>, Denied

[Translated from Spanish] The protection of public functions, beyond the deletion of registration and abusive use of domain names, is not the objective of the Policy. Nor is it the objective of the Policy to estimate the value of a domain name to facilitate its sale. Therefore, the Expert considers that the present case falls outside the scope of the Policy.

Clear Blue Waters, Inc. v. Frank Becker / Cubby Lures, Forum FA2402002086236, <CubbyLure.com>, 3-member, Denied

Given the Respondent’s relationship with the Complainant’s predecessor, the analysis of which is beyond the scope of the UDRP and needs to be further analyzed in an appropriate forum, since it is essential for the correct judgment of the ownership of the disputed domain name. The Panel finds that the above-mentioned evidentiary and legal issues, as well as others raised by this dispute, are not appropriate to the very narrow scope of the Policy and would best be dealt with in a forum with more robust evidentiary tools

Team-One Employment Specialists, LLC v. Christian Valdez / TeamOne Staffing, Forum FA2401002078854, <teamonestaffing.biz>, Denied

Assessing whether Respondent’s claimed ignorance of the TEAM ONE Trademark is credible is a task that is beyond the ability of the Panel in this proceeding, because “the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent’s credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process.” General Motors LLC v. Chad Clegg, WIPO Case No. D2012 2196 (citing Jumblatt v. SlantMedia, WIPO Case No. D2012-1011 (“[t]he Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names”).

Bayer Intellectual Property GmbH v. Bediamond GmbH, WIPO D2023-5303, <bevigra.com>, Denied

In view of the above circumstances, the Panel considers that the disputed domain name is part of a much wider and more complex dispute that involves typical issues of trademark infringement and unfair competition law cases, and, therefore, is not taking part in a typical straightforward domain name dispute under the UDRP. Against this background, the Panel recalls that the Policy is not designed to adjudicate all types of disputes that relate in any way to domain names, but rather the Policy establishes a streamlined, inexpensive administrative dispute resolution procedure intended only for cases of “abusive cybersquatting.

Lämpöpuuyhdistys Ry v. Transfer Agent, Dan.com, Global Forest Lumber Company LLC and Blue Lake Lumber LLC, WIPO D2023-4796, <thermowood.com>, Denied

The dispute in this proceeding really seems to be a dispute about the terms and scope of Blue Lake’s rights through the licence from Novawood. A proceeding under the Policy is not the appropriate venue for the determination of a dispute of this nature in these circumstances. All the more so if, as Blue Lake claims (but has not substantiated), it has made substantial investments in promoting the disputed domain name.

Steri-Clean, Inc. v. Jeffrey Dabdoub / Florida Property care llc, Forum FA2311002069041 <xstericlean .com>, Denied

However, a true determination of whether the use of a mark by a third party infringes upon the rights of a trademark owner requires a complete evidentiary record, the opportunity to present witnesses, expert opinions, and to cross examine those witnesses and experts. The evidentiary and legal issues that are required to make a finding of infringement are not appropriate to the very narrow scope of the Policy and would best be dealt with in a forum with more robust evidentiary tools.

Boyd Gaming Corporation v Moises Cohen, Forum FA2310002067853 <stardustmiami.com>, Denied

However, the question of trademark infringement is beyond the scope of the present proceeding, which is summary in nature and hence the evidence that Respondent operates a hotel in Miami known as the Stardust Hotel is a sufficient basis to find that the Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the Domain Name.

VOODOO v. CreoBits LLC, WIPO D2023-0071 <hole-io.com> and <paper-io.com>, 3-member, Transfer

The Respondent objects that this dispute is beyond the competence of the Panel given that it concerns software copyright and factual and legal questions that the Panel is not authorised to resolve. The Panel rejects the Respondent’s objection to its competence. The Panel does not need to make any findings concerning software copyright in order to decide the issues raised in the Complaint concerning, primarily, bad faith targeting under the Policy. This is particularly so given that the issues concerning software copyright were introduced by the Respondent. Regarding any factual differences between the Parties, the Panel considers that the evidence before it is sufficient to determine those on the applicable standard of balance of probabilities.

Century Time Gems Ltd v. Century Aluminum SysAdmins, Century Aluminum, WIPO D2023-3480 <century.com>, Denied

Given that the Policy is intended to determine relatively straightforward cases of “cybersquatting” and related activity, the Panel does not consider the allegations raised by the Complainant, which would require an investigation into alleged fraud and criminal activity, to be matters properly within the remit of the Panel.

MYKA DESIGNS INC. v. Ran Erez, CAC-UDRP-104245 (2022) <myka.com>, 3-member, Denied without prejudice

The dispute at hand contains certain factual issues and legal claims which impact the rights or defenses of the parties in the case as they relate to the disputed domain name. In particular, the parties make contentions regarding, among others, the validity and extent of the Complainant’s and the Respondent’s rights over the “Myka” mark, trademark infringement claims, and claims related to an alleged cyber incident which might have criminal relevance. The Panel finds that those issues are beyond the Policy’s limited cybersquatting scope and would be better addressed by the competent courts and bodies (national and regional trademark offices).

Yosemite / Bass Lake Activities, Inc. v. Miller’s Landing Resort, Inc., WIPO D2020-0719 <basslakewatersports.com>, 3-member, Denied

In sum, this appears to be a dispute ill-suited for disposition of the UDRP, which is best applied to clear cases of cybersquatting. Whether Complainant could make out a case for trademark infringement against Respondent in a court of law or other forum is not for the Panel to say. In any event, the record here does not reflect a clear case of cybersquatting.

Digest Commentary

Digest Vol 4.25 <tommystatefarm.com>, Denied
Digest Vol. 4.19 <dailyworkouts.com>, Denied, RDNH
Digest Vol. 2.45 <cloverskypay .com>, Transfer
Digest Vol. 2.34 <palex.com>, Denied

0.2 Standard of Proof

Complainants must demonstrate that they are entitled to relief under the Policy. That involves fulfilling the three-part test under the UDRP. To meet that three-part test, a Complainant must provide supporting evidence. Failure to meet that three-part test results in dismissal.

The Policy requires that the evidence meets the civil standard of a “balance of the probabilities” or “preponderance of the evidence”. The balance of probabilities standard literally requires no more than a 50.1% likelihood however a notional 50.1% probability that the evidence supports a particular finding, means that there is a 49.9% probability that it does not. In practice, a Panel will be unable to arrive at such a precise calculation of probability. Instead, a Panel may either be clearly convinced of a party’s allegation or may to one degree or another, be less certain. Being less than 100% certain can of course still meet the balance of probability standard because the Policy does not require certainty or “proof beyond a reasonable doubt”. Nevertheless, if a Panel’s level of certainty is so low, such as a notional 50.1% level of certainty, that leaves 49.9% uncertainty, which amounts to not much more than a coin flip. If a Panel determines that the case is so finely balanced that it could go either way, this is a good indication that the case is not a “clear cut case”. Likewise, if a Panel incrementally leans towards one party’s position over another, that may also be an indication that the case is not a clear-cut case of cybersquatting.

In such disputes where the evidence for each side is closely balanced, the Panel’s main consideration may not be the standard of proof but instead the proper scope of the Policy, as discussed above in 0.1. As an expedited administrative procedure without many of the safeguards provided in courts of law, the UDRP is only intended for and only equipped to resolve clear cut cases of cybersquatting where there is no reasonable counter-narrative to the Complainant’s allegations of cybersquatting. A Panel may determine that in disputes that do not clearly favor one party over the other, the overriding consideration is the appropriate scope of the Policy such that such cases are best left to the courts which are equipped and intended to resolve unclear cases.

Likewise, Respondents should provide more than mere allegations to support their claims with appropriate levels of documentary and other evidence.

In assessing whether a party’s allegations have met the balance of probabilities standard, the Panel must rely on evidence. It must disregard conclusory allegations unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants and respondents could simply claim anything without any proof. For this reason, Panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence.

Additional Information

Relevant Decisions

OneTab Ltd v. Ankit Oberoi, WIPO No. D2024-2412, <onetab.com>, 3-member, Denied

On the record before it, the cumulative weightings of the factors for either Party are so close that the Panel cannot say with confidence that either outweighs the other. The Panel’s view is that it would require the evidentiary tools available to a court having greater probative capacity such as discovery, cross examination, subpoenas, criminal sanctions for perjury etc., to decide which of the Parties’ positions is the more likely. Given that the burden of proof is on the Complainant, the Panel finds the third element of the Policy has not been sufficiently established. However, this should not be understood as an approval of the Respondent’s actions, but rather a consequence of the Panel’s view, on the record before it, that this case is better suited to court adjudication.

MARLINK SA v. ahmed mahmoud fakhr eldin, webeasystep, WIPO D2024-1591, <msarlink.com>, Denied

Complainant has not provided enough information about the renown of its mark or the extent of its activities in Egypt (or the Arabic-speaking world) to lead the Panel to conclude that Respondent probably targeted Complainant’s mark. The Panel is not saying that it accepts at face value Respondent’s largely uncorroborated explanation for registering the Domain Name, but Respondent’s account does not appear implausible on its face or contradicted by anything else in the record. Again, because the burden of proof rests with Complainant in this proceeding, the lack of evidence on both sides here compels a denial of this Complaint.

Young Pharmaceuticals, Inc. v. Xiaopeng Zhou, WIPO D2024-1699, <young.com>, 3-member, Denied, RDNH

An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants and respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence.

Universal Music Group N.V. and Universal City Studios LLC v. JT U Animation / U Animation, Forum FA2402002085375, <universalmusicgroup.com>, 3-member, Transfer

The Panel does not accept the Respondent’s claim that Respondent has presently or ever held trademark rights in the THE UNIVERSAL MUSIC GROUP. For the reasons set out in the Complaint the Panel finds that the evidence submitted by the Respondent in support of this contention to be a series of clumsy and obvious forgeries…There is simply no independent, verified or trustworthy evidence to support the contention that Respondent acquired the Domain Name for $250,000 from Universal Studios in 2003 and there is a weight of evidence casting doubt on this claim.

Silver Point Capital, L.P. v. Elisha Finman, Forum FA2401002079392, <silverpointequity.com et. al.>, Denied

This is clearly a borderline case. However, noting that a panel has to be positively satisfied that a respondent lacks rights and legitimate interests under this element of the Policy, in my evaluative judgement of the evidence before me, I am not satisfied that the Respondent lacks rights and legitimate interests. I consider that this question of fact is better resolved in a venue that has explicit forensic powers which a Panel under the Policy does not have.

Katepal Oy v. taeho kim, Dzone Inc., WIPO D2023-5188, <katepal.com>, Denied

Furthermore, while the Panel finds the Respondent’s explanation for its registration of the disputed domain name to be somewhat improbable, it cannot be definitively excluded. While the Respondent, too, has failed to exhibit relevant evidence in this regard, it is the Respondent who must receive the benefit of the doubt in circumstances where the Complainant has not been able to produce requisite historical evidence (in part no doubt due to the lapse of time).

Tencent Holdings Limited v. He Huang, Working Venture Capital Inc., WIPO DAI2023-0024, <tencent.ai>, 3-member, Transfer

In all of these circumstances, the Panel finds on the preponderance of the evidence that the Respondent is not making and has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services, and that the alleged coin collecting website is more probably than not a pretext for cybersquatting. The Respondent has not rebutted the Complainant’s prima facie showing.

West Technology Group, LLC v. charafa saliou, charafa saliou, WIPO D2023-4617, <globnewswire.com>, 3-member, Transfer

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Vanguard Group, Inc. v. Pieter van Staden / Jobz4Afrika (Pty) Ltd, Forum FA2202001983161, <vanguard-wealth.com>, Denied

Fourth, the Complainant states that its VANGUARD trademarks are famous, but did not submit any evidence of this statement. It might well be that these trademarks have a certain fame or status, but it is up to the Complainant to provide evidence thereof. The Panel finds that the Complainant did not provide sufficient argumentation or evidence that the Respondent had knowledge or should have had knowledge of its trademark rights. In particular, the Complainant did not substantiate that its trademarks are “well-known” or “famous” trademarks, let alone in South-Africa, i.e., the home country of the Respondent.
The burden of proof under Paragraph 4(a)(ii) of the Policy lies ultimately and predominantly with the Complainant and the Panel believes that the Complainant did not meet this burden. The Panel emphasises that it is bound by Article 15 (a) of the Rules: “A Panel shall decide a 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.”

Sberbank of Russia v. Enge Li Enge Li, CAC-UDRP-104070 (2022), <sbergames.com>, Denied

The Complainant mentioned about having operations in China but did not include any supporting evidence. Furthermore, Complaint mentioned that Respondent is parasitizing with the disputed domain name on Sberbank’s reputation and its well-known among the consumers, however, there is no evidence about the famous or well-known status of Complainant’s trademarks.
It might be the case that the Sber trademarks are in fact “well-known” or “famous” but the Complaint has the obligation to formulate such claim in a convincing manner and bring the evidence to support the allegation.

The Indian Hotels Company Limited v. Roger Price, WIPO D2018-2325, <indianhotels.com>,3-member, Denied, RDNH

The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. The touchstone, however, is that an asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, Panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence.

Teva Pharmaceutical Industries Ltd. v. SecureMedical, CAC-UDRP-101610 (2017) <tevasildenafil.com>, 3-member, Transfer

The Panel notes that the Respondent claims that it intends to use the disputed domain name for comparing the sildenafil-based generic medication of the Complainant with other (branded) sildenafil-based medication. However, the Panel also notes that the Respondent fails to provide any evidence of such intended use.
The Panel furthermore finds no evidence of the Respondent’s use of (or demonstrable preparations to use) the disputed domain name in connection with a bona fide offering of goods or services or indeed evidence of preparations to establish a separate comparison website.

Digest Commentary

Digest Vol. 4.17 <trimble.ai>, Denied
Digest Vol. 4.5 <knp376.com>, Denied, RDNH
Digest Vol. 3.9 <billionairebay.com>, Denied
Digest Vol. 2.48 <MashaBearCafe .com>, Transfer
Digest Vol. 2.45 <cloverskypay .com>, Transfer
Digest Vol. 2.34 <Palex .com>, Denied
Digest Vol. 2.17 < redmito .com>, Transfer
Digest Vol. 2.8 <maaden.com>, Transfer with a dissenting opinion

0.3 Independent Panelist Research

Panelists are not charged with investigating allegations. Rather, the Panelist has a much more modest duty; to decide a case based upon the evidence presented by the parties themselves. Where that evidence is found wanting, that is not the Panelist’s problem to solve, nor should they attempt to. Nevertheless, it is sometimes a Panelist’s duty and well within a Panelist’s ambit, to verify some basic factual allegations, such as the existence and content of a relied upon trademark registration and the existence and content of a website associated with the disputed domain name. Beyond that, a Panelist should be wary of wading into an inquisitorial approach to cases rather than relying upon the adversarial process.

For example, a Panelist should verify that a trademark registration remains valid and has not been cancelled or assigned, and that the Complainant is the true owner of the trademark. A Panelist should also ensure that the trademark registration does not claim a disclaimer or that it is on the U.S. supplemental register. When verifying the existence and content of a website associated with the Domain Name that is relied upon by the Complainant, the Panelist may also wish to visit the website to verify that the Complainant’s exhibits fully and accurately show the content. This may be particularly relevant to do when PPC advertisements are alleged, as more fully discussed below at Section 2.9.

Independent Panelist Research may be particularly appropriate in some cases where no response is filed, for example in order for the Panelist to satisfy itself of a Complainant’s allegation that it is the sole user of a particular trademark or that it has no other meanings or uses. Where a Complainant’s trademark is highly distinctive and well-known, independent verification of the Complainant’s allegation of exclusive use will usually not be required. However, where a trademark appears to possibly lend itself to other meanings or uses or where it is not well-known, a Panel may determine that it is appropriate to check publicly available records, such as trademark databases and Google searches. However, where such independent research results in information that sways the outcome of the decision, it is appropriate for the Panel to issue a Procedural Order presenting the results of the Panel’s research to the Parties and providing them with the opportunity to address this new evidence.

A Panel should exercise great caution in both the extent and the conclusions to be drawn from any independent research. A Panel should not make a party’s case for them if the case is deficient. Nor should the evidence uncovered by the Panel itself by determinative of the outcome without first providing both parties an opportunity to review and comment on the evidence that the Panel itself uncovered and that is not otherwise in the record

Additional Information

Relevant Decisions

Mediacom Communications Corporation v. DANIELE RUSSO / MEDIACOM PAY S.R.L., Forum FA2402002084217, <mediacom-pay.com>, Denied

In its Procedural Order, the Panel stated that it had conducted an Internet search, from which it appeared that Respondent may be operating a legitimate business. The Panel requested Complainant to provide evidence showing that Respondent does not operate a legitimate business; and evidence, if any, that emails associated with the disputed domain name may have been used for phishing.

Ford Motor Company, Ford Motor Company of Canada, Limited v. Domain Admin, Whois Protection / Domain Administrator, Radio plus, spol.s r.o., WIPO D2022-0954 <fordirect.com>, 3-member, Denied without prejudice

From the Dissent: Falling into these three practical categories, the performed searches pursued the mentioned purpose of ascertaining, as reasonably possible, the fairness and accuracy of the Panel decision. They concerned matters of public record invoked by the respective parties and their results were shared with the Panel for consideration and potential inclusion in the decision; these results were further included in some of the various drafts on the table of the deliberations of the Panel (none of them final). In this process, the Presiding Panelist furthermore remained open (and offered) to the Panel granting the parties an opportunity to comment on the results, if it considered that appropriate, although the rest of the Panel declined such option. From the Majority: After the Presiding Panelist presented the Panel with several draft decisions containing her extensive research, the undersigned stated more than once the firm opinion that it was unnecessary and incorrect to conduct that level of private research, effectively adding to one party’s case for them.

Rechtsanwälte Lampmann, Haberkamm & Rosenbaum Partnerschaft v. Privacy Department, IceNetworks Ltd. / Domain Admin, Whois Privacy Corp., WIPO D2021-1083, <ihr-law.org>, Transfer

The Response observes that the Complainant has failed to provide evidence of the content of the allegedly defamatory website at the disputed domain name. This is a reasonable point and the failure of the Complainant to supply a screenshot of the content of the website at the disputed domain name to which it objects, along with a translation into English, the language of the proceeding, is a surprising omission. However, section 4.8 of WIPO Overview 3.0 notes that UDRP panels may undertake limited factual research into matters of public record if they consider such information useful in assessing the merits of the case and reaching a decision. This includes visiting the website linked to the disputed domain name, which the Panel has indeed reviewed and which does in fact appear to contain content critical of the Complainant, describing it at one point as “a trickster”.

Berry Fresh LLC v. Domain Administrator, See PrivacyGuardian.org / Ryan Cooper, WIPO D2019-3091, <berrysweet.com>, 3-member, Denied

Given that “berry sweet” appears to be a commonly used designation, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties and the Panel conducted a limited Google search for the term “berry sweet.”

Digest Commentary

Digest Vol. 4.13 <mediacom-pay.com>, Denied
Digest Vol. 4.3 <hackensackmeridianhealth.xyz>, Denied
Digest Vol. 4.2 <thenaturesconservancy.org>, Transfer
Digest Vol. 2.47 <stylage.com>, Transfer
Digest Vol. 2.42 <fordirect.com>, Denied without prejudice

0.4 Withdrawal After a Response is Filed

Withdrawing a Complaint after a Response is filed is not always permitted. Complainants sometimes want to withdraw their Complaint after receiving a Response that disproves a Complainant’s allegations of cybersquatting and requests a finding that the Complaint was brought in bad faith, i.e. Reverse Domain Name Hijacking. Respondents in such circumstances may want to see a Complaint proceed to a final determination on the merits and particularly on the request for a finding of RDNH. A Respondent may also want the case to proceed to determination on the merits where a Complainant purports to withdraw its Complaint but “without prejudice” – meaning that a Complainant could simply refile the Complaint at a later date.

Permitting a Complainant to simply withdraw a Complaint in such circumstances puts the Respondent to considerable effort and expense and can encourage Complainants to try their luck with an abusive Complaint, knowing that if they are called out for it by a defending Respondent, that they can simply withdraw and even try again later with no repercussions.

Where a Complainant requests termination and the Respondent objects after filing its Response, that will generally be a sufficient reason for the Panel to proceed to a decision. In the same way as a Complainant is prima facie entitled to ask for a full decision so that its position is publicly vindicated, so is a Respondent. This is particularly so where the respondent has actively sought a finding of Reverse Domain Name Hijacking. Rule 10(b) of the Rules, namely that the Panel shall treat the parties with equality and ensure that each is given a fair opportunity to present its case supports this approach.

The case law is clear that where a Response has been filed, a Respondent may have a valid objection to a unilateral Complainant request to terminate the proceedings, particularly where; a) the Complainant has not asked for termination with prejudice; b) where the Respondent desires an adjudication on the merits; and/or c) where the Respondent has requested a finding of RDNH.

Additional Information

Relevant Decisions

Hale Law, P.A v. Roger Hale, WIPO D2023-0084, <gotohale.com>, Denied, RDNH

This Panel finds, as in Intellect Design, it is clear from the provisions of the Response, read with Respondent’s emails of March 21, 2023, that Respondent’s objections lie in the fact that Respondent has been put to the time and expense of preparing a Response to a Complaint which Respondent considers to be wholly lacking in merit, entitling Respondent to a finding of RDNH. Thus, terminating the proceedings at this stage would result in Complainant avoiding consideration of the merits in general and the issue of RDNH in particular, leaving Respondent in a disadvantaged position.

Fieldd Pty Ltd v. Jessica Duarte, WIPO D2022-4980, <fieldd.com>, 3-member, Denied with a dissenting opinion

Respondent promptly objected to termination of the proceeding on two grounds, namely that the Respondent seeks a decision on the merits to justify her expense and trouble in preparing a Response to what she views as an unfounded Complaint; and a finding under Paragraph 15(e) of the Rules. The Panel considers these grounds for objection to be justifiable.

ITF v. Anonymize, Inc. / Domain Admin, Sébastien Schmitt, WIPO D2022-2196, <veripro.com>, 3-member, Denied, RDNH

The Panel considers that it is necessary to continue for two principal reasons. First, a dismissal of the Complaint without addressing the merits could leave the door open to the Complainant refiling the Complaint at some point in the future (subject to the considerations on refiling, see, section 4.18 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). It is notable that the Complainant did not request that the Complaint be terminated on a “with prejudice” basis, or subject to any other indication that it would not seek to refile this. Secondly, the Panel considers that it would be unfair to dismiss the Complaint without addressing the merits when the Respondent has already taken the time and trouble to submit a substantive Response, and particularly where it seeks a finding of Reverse Domain Name Hijacking (see the discussion in Thomas Wang v. Privacydotlink Customer 546843 / Blue Nova Inc., WIPO Case No. D2018-1316).

Digest Commentary

Digest Vol. 4.24 <rocketship.com>, 3-member, Denied, RDNH
Digest Vol. 3.18 <gotohale.com>, 3-member, Denied, RDNH
Digest Vol. 2.38 <veripro.com>, 3-member, Denied, RDNH

0.5 Supplemental Filings

It is well established that additional submissions are not generally permitted whether designated “replies” or “rebuttals”. Paragraph 12 of the Rules provides for additional statements only at the Panel’s request in its sole discretion. Additional submissions are limited to “exceptional cases” only, as otherwise it would defeat the intention of the UDRP which is to provide for expeditious and streamlined dispute resolution with minimal resources being expended. If additional submissions were to become unexceptional, the dispute resolution procedure would become significantly more resource-consuming to all the actors. Such an outcome is contrary to the clear intention of ICANN.

Exceptional circumstances would chiefly involve a Complainant learning of new facts or evidence that it was not previously aware and which it could not reasonably have anticipated in filing its Complaint. Exceptional circumstances do not include an opportunity for the Complainant to merely rebut a Respondent’s arguments, to raise new arguments that could have been made in the Complaint, or to improve its case by submitting new evidence that it could have produced in its Complaint.

Where a Complainant believes that exceptional circumstances exist which justify the filing of an additional submission, the preferred procedure is for the Complainant to make its request to the Panel, accompanied by a brief explanation of the basis for the request. The Respondent should be provided an opportunity to briefly respond to the request and the claimed exceptional circumstances. The Panel may then adjudicate on the request and if approved, the Complainant may proceed to file its additional submission within any confines or parameters determined by the Panel. The Respondent should be provided adequate time to review and to respond to the Complainant’s additional submission.

Additional Information

Relevant Decisions

Csi Danışmanlık Ve Destek Hizmetleri Anonim Şirketi v. Ghadah M, WIPO No. D2024-2062, <shirvanhotels.com>, 3-member, Denied

Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear… Having accepted a supplemental filing from the Complainant, the Panel ordinarily would allow the Respondent an opportunity to respond in order to ensure that the parties are treated equally. Here, the Respondent has not requested such an opportunity, and in light of the Panel’s decision in the Respondent’s favor, the Panel did not deem it necessary to expressly invite the Respondent to submit a response, if it so desired.

Century Time Gems Ltd v. Century Aluminum SysAdmins, Century Aluminum, WIPO D2023-3480, <century.com>, Denied

In this case, it is unclear why the Complainant could not have carried out relevant investigations (and otherwise as may have been appropriate) before issuing the Complaint, so as to have been in a position to furnish the Panel with its concluded submissions from the outset. The Panel does not find there to be an exceptional or compelling reason to permit the Complainant to submit additional material of this nature at this stage in the proceeding.

Automobili Lamborghini S.p.A. v. Domain Administrator, See PrivacyGuardian.org / Richard Blair, WIPO D2022-1570, <lambo.com>, 3-member, Transfer with dissenting opinion

The Panel subscribes to the view that unsolicited supplemental filings are to be discouraged. Accordingly, save for noting the most recent change of ownership details of the disputed domain name (discussed below), the Panel does not admit the Complainant’s supplemental filing, which mainly comprises submissions, which the Panel does not require, together with the results of a Google search against the term “Lambo” which the Complainant could (and should) have considered appending to its original Complaint.

One.com Group AB v. Stan N, CAC-UDRP-103567 (2021), <0ne.com>, Denied

The Panel has a very wide discretion on these issues and this Panel decided to allow both additional submissions. This is a highly contested case and it is better that the material be allowed and considered. That said, the Complainant filed a light complaint and effectively gave itself a reply. This is really unfair and puts the Respondent to extra work and costs and a disadvantage. That is to be discouraged and is unfortunate but it is still better to let the material in, in this case in the view of this Panel. The Respondent fully answered.

Saudi Arabian Mining Company (Ma’aden) v. Fundacion Privacy Services LTD, WIPO D2021-3590, <maaden.com>, 3-member, Transfer with a dissenting opinion

In the present case, the Panel has unanimously resolved to admit the Parties’ unsolicited supplemental filings. The Complainant could not reasonably have anticipated the nature of the Response when it filed the Complaint. By the same token, mindful of its duties under paragraph 10(b) of the Rules to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, the Panel unanimously considered it reasonable to admit the Respondent’s supplemental filing.

Digest Commentary

Digest Vol 4.23 <opns.domains>, Denied
Digest Vol 4.14 <euronet.com>, Denied, RDNH

0.6 Informal Responses

An informal response is a response that lacks the certification provided in Rule 5c)(viii).

Some UDPR Panels ignore informal or “deficient response” and do not consider it at all due to lack of certification, see e.g. Morgan Stanley Domestic Holdings, Inc. v. Dimar Manigao, Forum FA2308002057390 (etraderwave.com): “The Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5). The Panel finds that Respondent’s communication to Complainant is not a legitimate Response in compliance with ICANN Rule 5, and thus it decides not to consider Respondent’s communication to Complainant”.

However, one should take into account that unrepresented respondents often lack knowledge about the procedure and that “in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” (Rule 10 (b)).

Based on this, informal responses may be considered by Panels for the purpose of serving justice and procedural fairness. UDRP Panels may take note of the lack of Respondent’s certification. An informal response may assist a Respondent if it is supported by other evidence and information available in a particular dispute and if it provides a convincing explanation of Respondent’s story.

The quality and substance of an informal response play a significant role.

Informal response by one respondent in cases of multiple respondents may also indicate that consolidation is not appropriate.

Additional Information

Relevant Decisions

Paladin Labs, Inc. v. Giovanni Cagnoli, PALADIN PHARMA SPA, WIPO D2024-1044 <paladinpharma.com>, Denied

According to the informal communications from a representative of the Respondent, the Respondent registered the disputed domain name for use in connection with its export business. Given the nature of the business described on the website at “www.paladinpharma.it”, this strikes the Panel as reasonably plausible.

Bal du Moulin Rouge v. David Millar, WIPO D2024-0877 <katiesmoulinrouge.com>, Transfer

The Panel recognizes that Respondent has put nothing forward and no evidence to support (neither by means of a formal response nor in its informal email correspondence with the Center) why it needed to rely on Complainant’s famous MOULIN ROUGE trademark as part of the disputed domain name…

Fenix International Limited v. Thanawat boonchai, WIPO D2024-0340<onlyfanstarth.com>, Transfer

Indeed, the Respondent’s informal response appears to confirm Respondent’s lack of any rights or legitimate interests in the disputed domain name.

Zetland Capital v. Steve King, WIPO D2024-0264 <zetland.info>, Denied

The Respondent’s informal response aligns with the geographic meaning and use of “Zetland”.

Wanavit Manufacturing Co., Ltd v. Phan Van Thong, WIPO D2023-3198 <hatarico.com>, Denied

The Respondent did not formally reply to the Complainant’s contentions… The Respondent sent an email to the Center stating that the Respondent was not good at English and had to rely on Google translate and did not understand why there was a domain name dispute. The Respondent stated that HATARI was its trademark and attached a copy of a Viet Nam trademark certificate with registration number 394656, although it is not apparent what mark it relates to.
In order to consider all the circumstances of the case, the Panel has decided to admit the Respondent’s email and attachment in evidence.

Goldenvoice, LLC v. Rhonna Leigh Mac Knight / OmniCorps, Forum FA2311002072607 <ingoldenvoice.com>, et, Denied

Respondent’s informal Response is deficient as it was unsigned and did not certify, as required by Rule 5(c)(vii), “that the Response was complete and accurate.” However, the Panel considers that, in the circumstances of this case, it is appropriate to take into account Respondent’s informal Response as set out below.

GLOCK, Inc. v. Andrew Turigel / Karim Nasereddin / Hamza Kh / Aymane Bokhamy / griffin clarke / My Store / water glock / WaterGlock / Talha Boga / SplashyGlock / Benjamin martin / Glock Splash / Lennart van Wimersma Greidanus / Glock Water Gun / David Kincaid / AquaGlock / tajai cilien / Super Soaked Glock / Marius, Forum FA2306002047074 <hydroglock.com>, et., Transfer in part and denied in part

Informal responses from the registrants of <glockwatergun.com> and <water-glock.com> were also received… The Panel finds that Complainant has not sufficiently presented evidence demonstrating that the domain names are controlled by related entities… Moreover, in the course of the proceedings Forum has received communications in respect of the Complaint from four different entities; one formal response, two informal responses and one general query. This further indicates that the domain names the subject of the Complaint are not under common control.

Melinda French Gates v. John Clendenon, Forum FA2207002003541 <melindagates.com>, 3-member, Denied

Accordingly, the Panel concludes that it is in the interests of justice that Respondent’s Response be considered for all appropriate purposes in coming to a decision in this proceeding. See, for example, Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum January 7, 2011) (deciding that, while a response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).

Altron Limited, Altron TMT Limited v. ALTRON LIMITED DOOEL export- import Skopje, WIPO D2022-4163 <altron.ltd>, Denied

Software in the Public Interest, Inc., The Debian Project, and Debian.ch v. IT Manager, Free Software Contributors Association, WIPO D2022-1524 <debian.community>, 3-member, Transfer

However, the Panel notes that all three versions are submitted with a certification followed by the mark of an anonymous “Volunteer”, whereas paragraph 5(c)(viii) of the Rules requires the certification of the Response to be followed by the signature of the Respondent or its authorized representative. In view of this circumstance the Panel finds that the Respondent has failed to submit a formal Response in accordance with the Rules. Nevertheless, in accordance with its powers under paragraph 10(a) of the Rules, the Panel will consider the merits of the timely original Response de bene esse.

Rothschild & Co Continuation Holdings AG v. Gary Williams / Edmundson Carlyle & Calyton, Forum FA2206002001953 <rothchildcapital.com>, Transfer

Given this fact, in the absence of more detailed information from Respondent (which the Respondent has chosen not to provide, notwithstanding that it filed an informal response to the Complaint) the Panel cannot conclude from the Respondent’s Website alone that Respondent is operating a legitimate business (as opposed to creating a website for fraudulent purposes), let alone made a bona fide offering of goods and services or a legitimate non-commercial use of the Domain Name.

Arm Limited v. Keith Wilkes, Get Steamed, WIPO D2021-0974 <arm.global>, Transfer

The Respondent submitted no formal Response, but as has already been recorded in the Procedural History section of this decision, sent an email to the Center on September 28, 2021. However, this email is problematic on a number of levels and the Panel is not prepared to give any evidential weight to the claims contained therein.

Digest Commentary

Digest Vol. 3.21 <indiaknowledgeacademy.org>, Transfer
Digest Vol. 3.12 <tuvpak.com>, Denied
Digest Vol. 3.11 <cic.marketing>, Transfer
Digest Vol. 2.47 <citustech.com>, Denied

0.7 Consolidation Against Multiple Respondents

Under Rule 3(c) a UDRP Complaint may relate to multiple domain names “provided that the domain names are registered by the same domain-name holder”. The phrase “same domain-name holder” means either that the same person holds all of the disputed domain names or that the domain names are under common control. Circumstantial evidence can establish a single domain name holder, such as;

-all domain names are registered through the same registrar,

-the domain names are registered within a relatively short time-period,

-common pattern (e.g. all domain names represent mark + generic/geographic term),

-content of the websites by the domain names (if any),

-registrants’ contact information.

Where a single domain name holder is not established, a party may request consolidation of multiple domain name disputes under Rule 10(e) which provides for the general powers of a Panel. Consolidation of multiple domain name disputes may not be appropriate where the respondents are different parties such as when there is a response from one of the respondents.

Additional Information

Relevant Decisions

Harley-Davidson Motor Company, Inc. v. lina, CAC-UDRP-106559 (2024), <harley.vip>, <harleyy.vip>, <harley-davidson.vip>, Rejected

The fact that the active disputed domain names are used to purportedly offer crypto asset services and the other commonalities to which the Complainant refers, do not together reach a threshold sufficient for the Panel to conclude that on the balance of probabilities the three disputed domain names are held or controlled by a single entity or entities acting in concert. HARLEY-DAVIDSON is a very famous mark and is not implausible that two or more different registrants, with no connection with each other, would choose and adopt the mark and incorporate it into domain names.

Blackstone TM L.L.C. v. Williams Euphemia / Jones Geoffrey, Forum FA2405002097463, <blackstoneaig.com> et. al., Denied

Complainant has therefore failed to prove that all of the disputed domain names are held by the same registrant or even by different registrants acting in concert. The application to consolidate the proceedings in respect of all of the disputed domain names must therefore be refused. Given the large number of domain names, at issue and that the registrants are differently identified in the WhoIs information, it would probably have been more appropriate and efficient to bring two separate applications.

The Procter & Gamble Company v. Shi Lei / wojciech drewniak, Forum FA2404002095179, <pggodeveryday.com> and <coupontide.com>, Transfer in part, Denied without prejudice in part

The Panel finds that allegation (a) above does not necessarily indicate that the domain names are under common control. Allegation (b) it contradicted by the evidence set forth by Complainant, which shows that both domain names are not being used. Thus the Panel finds that Complainant has not presented sufficient evidence to find that both disputed domain names were registered by the same person or entity. Under the Forum’s Supplemental Rule 4(c), the Panel must determine which domain names are commonly owned and elect which Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel is then required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent. Accordingly, the Panel will rule only on the <coupontide.com> domain name, and it will dismiss, without prejudice, the complaint regarding the <pggodeveryday.com> domain name.

Deutsche Börse AG v. Tsolakis Costas and others, CAC-UDRP-106151 (2024), <radeurex.com>, et. al., Partial transfer

In the opinion of the Panel and again for the reasons it set out in the Meta Platforms, Inc case, there are strong arguments that the requirement of “common control” is no longer fit for purpose and it would be better if it were replaced with a provision that gave a discretion to panels to allow claims brought against multiple names registrants, subject to the proviso that the panel be satisfied that doing so would be equitable and procedurally efficient… The difficulty in this case is that at least one of the registrants has participated in these proceedings and contends that although it controls 31 of the disputed domain names, it is not responsible for the others; claiming that these other domain names are controlled by other entities that are using similar Google scanning techniques to identify and register domain names and create websites that are in a form that is similar to but in places different from those of this registrant.

Morgan Stanley v. tony ferris / Shantanu Rangnekar, Forum FA2309002061514, <morganstanley-canada.com> and <morganstanleyca.com>, Transfer in part, denied in part

The Panel finds that Complainant’s allegations do not necessarily indicate that the domain names are under common control: the registrar and hosting service are well known and used by large numbers of registrants; the domain names were not registered on the same day; the resolving pages are parked pages from the hosting service, so their content is not necessarily specifically composed by the registrants. Thus the Panel finds that Complainant has not presented sufficient evidence to find that both disputed domain names were registered by the same person or entity. In light of the joint communication from Complainant and one of the named Respondents (see below), the Panel will rule only on the <morganstanleyca.com> domain name, and it will dismiss, without prejudice, the complaint regarding the <morganstanley-canada.com> domain name.

Wilson’s Gun Shop dba Wilson Combat v. Hieu Nguyen / Dane Schemel / Southern Trapper, Forum FA2305002044813, (<wilsoncombatmagazines.com>, <wilsoncombatcqb.com>, <wilsoncombat1911.com>, <wilsoncombatholster.com>, <wilsoncombatberetta.com>, <wilsoncombatglock.com> and <wilsoncombatedcx9.com>, Transfer with a dissent

Majority View: Having in mind the teaching of Rule 10(c) that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition,” we elect in these exceptional circumstances to exercise the discretion granted to us by Rule 10 to do essential justice by construing Rule 3(c) as applying here, not at the moment of filing, but at the moment of decision. The practical consequence of this construction is that, once the claim against Respondent Schemel has been disposed of by an agreed transfer of a single domain name between the two affected parties and the case has thus been terminated as to that Respondent, the unrepresented Complainant may proceed against the remaining Respondent without offending either the letter or the spirit of Rule 3(c). Importantly, our determination in this regard will work no injustice upon any party… We also have in mind that our brief and non-exhaustive survey of UDRP decisions reported out of both the WIPO system and that of Forum has not revealed any decision treating the precise procedural question before us here, so that it appears to be a case of first impression. One like it may never occur again. But, if it does, panelists should know that they are free in the proper case to interpret and apply the rules in a way that is sensible, flexible and humane without working unfairness upon any party. Finally, we take note of the history of our calling, which records that modern arbitral practice in the commercial sphere, including the UDRP system, was adopted precisely to provide a platform on which the parties could find a fair resolution to a commercial dispute free of the too often crushing waste of time, process and cost that have become the hallmarks of commercial litigation. Simplicity, expedition, economy and overarching fairness are thus the foundation of modern arbitration. Rigid administration of the process, even when propelled by the best of motives, eats away at that foundation. Dissenting opinion: The phrase “same domain name holder”, in Rule 3(c), has been construed liberally to include registrants who are not the same person but under circumstances suggesting that the domain names are controlled by a single person, entity, or related entities… Upon a review of the evidence presented, this Panelist believes that we are dealing with two separate cases here.

Meta Platforms, Inc., Instagram, LLC, WhatsApp, LLC v. Domains By Proxy, LLC / Emir 100k / fdsf dfsds / lnstagram help, lnstagram Yardim Merkezi and others, WIPO D2022-0212, <fbhelpservice.com>, et. al., Transfer

6.18. It is inherent in this description of panel practice and its reference to “common control”, that previous panels have adopted a wide interpretation of “same domain name holder. 6.19 In this particular case, common factors that connect all of the Domain Names is that they were all registered with a single Registrar over a relatively short period of time. 6.20 It is also clear that certain groups of Domain Names are undoubtedly controlled by the same person…

Basic Trademark S.R.L. v. David Klein, Tom Nadel, Annett Mehler, Frank Sommer, Jens Schulze, Markus Wolf, Jens Scholz, Patrick Baier, Julia Eisenhauer, Dieter Theissen, Anja Abend, Christ Bieb, Andreas Rothstein, Annett Schmid, Daniel Kalb, ZhuangLi Feng , WIPO D2021-4255, <kappa-chile.com and 33 other Domain Names>, Transfer in part, Denied without prejudice in part

However, the Panel does not find a sufficient basis in the record to infer that the disputed domain names <discountkappa.com> and <kappaclearance.com> are under common control with the other 32. It is true that these two disputed domain names incorporate the same trademark as the others plus another word, but they were registered over two years earlier, by registrants in China, and they do not follow the pattern of including a geographical term.

Digest Commentary

Digest Vol. 3.32 <zelleandcustomer.com> and 48 others, Transfer
Digest Vol. 3.29 <waterblastglock.com> et. al., Split Decision
Digest Vol. 3.25 <dogandcatsshots.com> et. al., Transfer

0.8 Inferences in No Response Cases

Even in no-response cases, Panels must evaluate the allegations and the evidence presented by the complainant to determine whether the Complainant has proven each of the Policy’s three elements. Panels have denied over 1,500 Complaints – even where the Respondent has not responded – because of a Complainant’s failure to meet its burden of proof. Moreover, in some of these no-response cases RDNH was found, thereby demonstrating that Panels must take care in carefully evaluating cases no matter whether a Response is filed or not.

Material factual allegations must be proven and not simply alleged, even in no-response cases. The problem with drawing a rebuttable inference of bad faith where the Respondent has not appeared is that it nearly assures a finding of bad faith registration in every no-response case since after the Respondent fails to rebut the allegation of lack of legitimate interest, bad faith can be imputed as a result. The guidance provided in Rule 14 that a Panel may make inferences “as it considers appropriate” from a respondent’s failure to appear does not grant permission to Panels to make speculative inferences that are not grounded in solid evidence. Panels must only draw reasonable inferences that are supported by evidence rather than inferences drawn from a mere failure to respond.

Additional Information

Relevant Decisions

Mediacom Communications Corporation v. DANIELE RUSSO / MEDIACOM PAY S.R.L., Forum FA2402002084217, <mediacom-pay.com>, Denial without prejudice

Respondent has replied neither to the Complainant nor to the Procedural Order. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. In the instant case, the Panel does not consider it appropriate to draw substantive inferences from Respondent’s failure to reply.

Sanofi v. Privacy Service Provided by Withheld for Privacy ehf / Matt Gordon, Monogram Naming, WIPO D2022-1610 <initiv.com>, Denied, RDNH

A respondent default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In certain cases, e.g., involving wholly unsupported and conclusory allegations advanced by a complainant, panels may find that – despite a respondent’s default – a complainant has failed to prove its case.

Compass Banca S.p.A. v. Steve Quinn, CAC-UDRP-104395 (2022), <compass.computer>, Denied

A respondent’s default does not automatically result in the transfer of the domain name to the Complainant (WIPO Overview 4.3: “Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. In cases involving wholly unsupported and conclusory allegations advanced by the complainant, or where a good faith defense is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to prove its case.”).

Berry Fresh LLC v. Domain Administrator, See PrivacyGuardian.org / Ryan Cooper, WIPO D2019-3091, <berrysweet.com>, 3-member, Denied

Here, although Respondent has failed to respond to the complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true.

GROUPE CANAL + v. Danny Sullivan, CAC-UDRP-102809 (2019), <studiocanale.com>, Denied

Although no Response has been filed, considered that the burden of proof rests with the Complainant and that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence” (i.e. a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true – WIPO Overview 4.2), the Panel, based on the poorly supported and conclusory allegations of the Complainant, retains that the Complainant has not prevailed on all three elements of the paragraph 4(a) of the Policy and, therefore, rejects the Complaint.

Digest Commentary

Commentary: Cohen and Muscovitch, “UDRP Panelists: Getting the Standard Right Where No Response is Filed”, CircleID, 2019)

0.9 Appropriate Use of Procedural Orders

Procedural Orders are permitted under Rule 12’s general power granting the Panel the right to request further statements or documents from the parties. Nevertheless, Procedural Orders must be used cautiously and sparingly. Procedural Orders should not be used to enable a party to improve upon its case because it is up to the party to make its case and not to the Panel to do so on a party’s behalf. Where a Panel recognizes that a party’s case is wanting, for example insufficient evidence is presented or a party fails to allege requisite elements of the three-part UDRP test, a Panel should generally avoid attempting to rectification via issuing a Procedural Order and instead, dismiss.

If however, justice demands that a party be alerted to a simple and inadvertent oversight a Procedural Order may be appropriate but more often it is likely that dismissal without prejudice is the more appropriate solution. Whenever a Procedural Order is issued and it results in further argument or evidence, Rule 10(b)’s requirement that the parties be treated equally and that each be given a fair opportunity to present its case, generally means that the other party be given an opportunity to respond to the further argument or evidence.

Additional Information

Relevant Decisions

Sonata Software Limited v. Narendra Ghimire, Deep Vision Architects, WIPO No. DAI2023-0051, <sonata.ai>, 3-member, Denied

On January 25, 2024, the Complainant submitted a Supplemental Filing to the Center. On January 25, 2024, the Respondent submitted an objection to the Complainant’s Supplemental Filing and requested a chance to file a Supplemental Filing, if the Complainant’s is to be considered by the Panel. The Panel issued Procedural Order No. 1 on February 21, 2024, admitting the Supplemental Filing in part, and giving the Respondent an opportunity to respond to the admitted parts of the Supplemental Filing.

Novartis AG v. Giselle Perez (Epsilon Comunicacion SL), CAC-UDRP-105977 (2023), <novartisx.com>, <xnovartis.com>, Transfer

The Panel issued Procedural Order No.1 in respect of the language of the proceeding… Instructed the Complainant to submit a translation of the Complaint into Spanish not later than on 16 January 2024; Invited the Respondent to submit a Response in either Spanish or English within 7 days of the submission by the Complainant of the Complaint translated into Spanish…

Automobili Lamborghini S.p.A. v. Domain Administrator, See PrivacyGuardian.org / Richard Blair, WIPO No. D2022-1570, <lambo.com>, 3-member, Transfer over a dissent

Majority opinion:

Having regard to the fact that paragraph 12 of the UDRP Rules enables a panel, in its sole discretion, to request any further statements or documents from the parties that it deems necessary, the Panel considered whether it was appropriate to issue a procedural order inviting the Respondent to file further evidence in support of his claim. A procedural order might be made, for example, in circumstances where a party makes a prima facie credible assertion the confirmation of which would benefit from additional supporting evidence; see section 4.7 of the WIPO Overview 3.0. However, in these proceedings, the Respondent has explained that he is a professional domainer and his Response has shown familiarity with the terms of the Policy and its application and therefore, there are no persuasive reasons for granting him the considerable leeway of, in effect, having another bite at the cherry. This is particularly the case as the shortcomings in the Response on this issue do not amount to a minor lacuna in otherwise satisfactory evidence which, for clarity, the Panel wishes to have filled, but are appreciably more extensive. In these circumstances, the majority of the Panel has concluded that it would be inappropriate to invite the Respondent to file additional evidence and that the Respondent has not established that he is commonly known by the disputed domain name.

Dissent:

It seemed therefore to this panelist that in the state of the evidence as it was, it was appropriate to issue a procedural order to enable the Panel to test the assertions of the Respondent and elicit in the Panel’s own way and under its own supervision, whatever evidence there was to show, one way or the other, whether the Respondent was commonly known as Lambo. It also seemed to this panelist that to give equal opportunity to both parties it would be probative to invite the Respondent to clarify some of his evidence. If this were not done, there was a real risk that the parties would, in the case of the Respondent, not be treated equally and would not have a fair opportunity to present its case. The majority of the Panel was not able to see its way clear to agree to this proposal which is a serious barrier to finding that the Respondent has “no” rights or legitimate interest in the domain name, when clearly he had some rights and may well have more. He may have some rights that could come to light only as a result of the procedural order.

Digest Commentary

Digest Vol. 3.28 <dentless.com>, Denied
Digest Vol. 3.16 <hclsoftware.com>, Denied
Digest Vol. 3.9 <multitrack.com>, Transfer

0.10 Dismissal without Prejudice

Where a Complaint is dismissed, it generally cannot be brought again absent exceptional circumstances such as new evidence which was not available at the time of the original Complaint. Implicitly, dismissal is therefore “with prejudice”. Panels may however occasionally dismiss a Complaint “without prejudice”, meaning that the Complainant is expressly given the opportunity to bring its case again without having to meet the usual strict requirements for a refiled case.

Dismissal “without” prejudice may occasionally be appropriate where circumstances and justice dictate that a Complainant should be allowed to refile in order, to for example, correct a very technical deficiency or minor oversight in a Complaint. Dismissal without prejudice is therefore an alternative to issuing a Procedural Order and may be a fairer resolution because it appropriately denies a deficient Complaint but doesn’t foreclose the possibility of a Complainant correcting the deficiency on its own via a refiled Complaint, without a Panel directly soliciting rectification from a party and thereby being perceived to have expertly assisted a Complainant in improving its case.

Where the Respondent has filed a formal response, a dismissal without prejudice can be unfair to the Respondent. The Respondent has likely expended considerable time and expense in preparing a Response. If the Complainant has failed to adequately support its allegations, then the Respondent is entitled for the Complaint to be Denied with prejudice, rather than for the Panel to extend an invitation to the Complainant to refile the Complaint and to therefore put the Respondent to the burden of needing to respond again. If new circumstances develop after the decision is issued that are relevant to the outcome of the dispute, then even if the Panel has denied the complaint with prejudice, the Complainant can petition for a Refiled Complaint to be accepted by a new Panel by attempting to convince the new Panel that the high threshold for refiling a Complaint that has previously been Denied with prejudice has been met. Thus where the Respondent has filed a formal response and the Complainant has not prevailed, dismissals are with prejudice in the ordinary course, and it is only in exceptional cases where dismissal should be without prejudice.

Additional Information

Relevant Decisions

Authentic Brands Group, LLC v. Shipley Marmion, Forum FA2406002104055, <authentlc.com>, Dismissal without prejudice

Accordingly, it is Ordered that the Complaint be and it hereby is DISMISSED. This Order is based upon a failure of evidence as to one of the three elements, which evidence was not presented but may well exist. Under these circumstances, and recognizing that Complainant appeared herein without legal counsel, the Panel’s Order is entered without prejudice to Complainant’s right to file another UDRP administrative proceeding involving the domain name supported by competent evidence.

Mediacom Communications Corporation v. DANIELE RUSSO / MEDIACOM PAY S.R.L., Forum FA2402002084217, <mediacom-pay.com>, Dismissal without prejudice

However, the Panel notes that it has been almost one year since the disputed domain name was registered, and thus there can be legitimate doubts with respect to Respondent’s actual intentions regarding use of the disputed domain name. Consequently, the Panel will dismiss the Complaint without prejudice.

Silver Point Capital, L.P. v. Elisha Finman, Forum FA2401002079392, <silverpointequity.com> et. al., Denied

The Panel notes that in the event that further information arises that suggest that the motives of the Respondent in registering the Domain Names were anything other than the intention to use in respect of his Silver Point Equity firm, there may be grounds to consider a refiled complaint, subject to the applicable criteria.

Insperity, Inc. v. Atif Javed / Insperity Global Services, Forum FA2309002063250, <insperityglobalservices.com>, Dismissal without prejudice

The Panel could suspend the proceedings until Respondent implements a live website, which website could provide sufficient evidence to determine whether Respondent does have rights or legitimate interests, and whether the disputed domain name was registered and used in bad faith. In this context, the Panel notes that the resolving webpage appears to be a customized page and not a page automatically provided by the registrar. However, that may result in a significant delay in disposing of the instant case, and that would not be consistent with the basic purpose of the Policy… Thus the Panel declines to suspend the proceedings and it will dispose of the case by dismissing the Complaint, without prejudice.

Pioneer Natural Resources USA, Inc. v. FU, LEI, Forum FA2303002034572, <pioneernrc.com>, Dismissal without prejudice

Nevertheless, as the Complaint appears to have been drafted and submitted by an in-house individual at Complainant’s company who may have very limited knowledge of the Policy, and taking into account the fact that Complainant is a publicly traded company whose shareholders and others may be misled or harmed if its website has indeed been compromised, the Panel has denied this case without prejudice thus allowing Complainant to consider refiling the case, perhaps by a professional who has knowledge of and experience with UDRP cases and standards.

AMUNDI ASSET MANAGEMENT v. Didier Bommier, CAC-UDRP-105591 (2023) <amundietf.info>, Dismissal without prejudice

As the domain name was registered just three weeks before the complaint was filed, the Respondent did not have any obligation to make any use of the domain name so quickly… As such, the Complaint fails, and the domain name shall remain with Respondent. Of course, this decision is without prejudice to Complainant’s right to bring a future action under the Policy, in the event the domain name is used in bad faith.

Altarea v. alta rae, alta rae, WIPO D2022-3706, <altrarae.shop>, Denied

The Complaint was filed just nine days after the registration of the disputed domain name, and thus it is not unnatural that the disputed domain name still resolved to an inactive page at the filing of the Complaint. The Respondent’s bad faith registration and use of the disputed domain name is not established in this case by the fact that the webpage of the disputed domain name is inactive, and the disputed domain name seems to be used for email forwarding purposes. If, however, the Complainant learns of infringing content that makes clear that its rights were being targeted by the Respondent, that may support grounds for a refiling.

Digest Commentary

Digest Vol. 3.44 <insperityglobalservices.com>, Denial without prejudice
Digest Vol. 3.16 <pioneerrnc.com>, Denial without prejudice
Digest Vol. 2.49 <altarae.shop>, Denied

0.11 Refiled Complaints

Complainants are obliged to disclose if they have previously filed a Complaint over the same domain name as a result of the certification requirements for a “complete and accurate” Complaint pursuant to Rule 3(b)(xiii) and also as a result of the requirement to disclose “any other legal proceedings” pursuant to Rule 3(b)(xi).

Since there is no official repository of ICANN UDRP decisions Providers will not generally flag a refiled Complaint to Panels nor are they obliged to. A particularly cautious Panel might check itself to see if the Complainant has previously filed if the Panel has reason to suspect, but generally a Panel will rely upon the Complainant’s duty of disclosure and the Respondent’s ability to point out a refiled Complaint in its Response.

Unless the refiled Complaint followed a dismissal without prejudice, a refiled Complaint is not permitted absent new evidence that could not have reasonably been obtained by the Complainant in the last proceeding. This is a very high threshold which should be strictly enforced in order to prevent Complainants from repeatedly bringing an unsuccessful Complaint at the expense of the Respondent. New evidence which could not have been previously discovered could for example, be evidence of a recent change in the use of a domain name. Complainants who refile a Complaint should fully explain why the refiled case should be allowed and explain why the new evidence was unavailable in the previous case.

Additional Information

Relevant Decisions

Art4Now, Inc. v. Gerald Waggoner / The Waggoner Law Firm, Forum FA2312002074746, <bayouwear.com>, Denied

The Panel is not so convinced. Of the handful of exceptional circumstances identified by the WIPO Overview, it is only the issue of whether new and material evidence is presented that was previously unavailable to Complainant which arises for consideration. The majority of the “recently-discovered domain names” were extant before the Original Decision. Likewise, the decision of the Tennessee Supreme Court’s was published in 2023 before the Original Decision but, in any case, the matter concerned violation of legal professional conduct and lacks sufficient nexus to the creation of the disputed domain name. In terms of the criteria laid out in Ladd v. Marshall, the Panel finds that the new evidence could have been obtained with reasonable diligence and included in the first complaint and, in the case of the disciplinary ruling, also lacks sufficient materiality.
The Panel finds that Complainant has not met its burden of demonstrating that the re-filed case falls within the limited grounds on which re-filed cases should be entertained.

Amnack Limited t/a Doncaster Cables v. 刘青云 (liu qing yun), 唐卡斯特（广东）电缆科技有限公司 (tang ka si te guang dong dian lan ke ji you xian gong si), WIPO D2023-4852, <doncastercable.com>, Transfer

The Complainant filed its previous complaint regarding the disputed domain name without the benefit of legal representation. The previous panel concluded that the Complainant had not shown, to its satisfaction, that any of the three elements of paragraph 4(a) of the UDRP were fulfilled. However, the previous panel rejected the previous complaint expressly on a “without prejudice” basis

Wilson Sonsini Goodrich & Rosati v. matthew Jonas, Forum FA2309002060818, <wsgrllp-us.com> et. al., Transfer

The instant case is a refiling of the complaints against <wsgrllp-us.com> and <wsgr-uk.com>, initially filed in Wilson Sonsini Goodrich & Rosati v. matthew jonas / andrew jonnes, FA2308002056444 (Forum Aug. 30, 2023). In that case, the complaint against <wsgrllp-us.com> and <wsgr-uk.com> was dismissed without prejudice because the Panel found that there was insufficient evidence to demonstrate that all the disputed domain names were registered by the same person or entity.
According to paragraph 4.18 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), panels have accepted refiled complaints where the case has previously been decided expressly on a “without prejudice” basis.
Accordingly, the Panel accepts the instant refiled Complaint.

Veikkaus Oy v. Raketech Group Limited, CAC-UDRP-105201 (2023) <urheiluveikkaus.com>, Denied

In conclusion, for the reasons explained above, the Panel finds no exceptional circumstances occur to justify reconsideration of the Prior Complaint and as such cannot accept the Complaint in this refiled case. The Panel will therefore not discuss the merits of this Complaint.

Majid Al Futtaim Properties LLC v. LuLu Group / LuLu Group International, Forum FA2106001949322, <mallofoman.com>, 3-member, Denied

First, it is important to note that in the previous decision regarding the Disputed Domain Name, the Panel found that “the Complainant has failed to establish that the disputed domain name was registered in bad faith,” largely because the Disputed Domain Name was registered before Complainant filed its applications for the MALL OF OMAN Trademark. But the new development cited by Complainant (redirection of the Disputed Domain Name to another website) relates only to how the Disputed Domain Name is now being used – almost 14 years after registration of the Disputed Domain Name.. In the Panel’s view, this new development does not relate to the issue on which the previous panel decided the dispute (that the Disputed Domain Name was not registered in bad faith) and, therefore, cannot be relied upon as the basis for refiling. (Had the previous panel found that the Disputed Domain Name was not being used in bad faith – as opposed to not having been registered in bad faith – then the Panel here might find the change in use cited by Complainant to be relevant.)

Spase, Inc. v. Domain Admin / Mrs Jello, LLC, Forum FA2011001921922, <spase.com>, Denied, RDNH

As a result of the WIPO Case the Complainant must have been aware that the Domain Name could not have been registered in bad faith as the Complainant lacked the relevant rights in the SPASE name at the time of registration of the Domain Name. As such the Panel has no alternative but to hold that this Complaint is a case of Reverse Domain Name Hijacking.

Novartis AG v. Contact Privacy Inc. Customer 1246111874 / Andrew C. Sikula, Negotiation Matters Inc., WIPO D2020-1738 <novartispodcast.com>, Transfer

6.8 The Panel accepts that the change in the content of the website after the CAC Decision was published amounts to new material evidence. This new material is highly relevant to, and calls into question, the factual conclusions of the panel in the CAC Decision as to for what reasons the Domain Name was registered.
6.9 That is sufficient to justify this refiling. But the Panel is also concerned that there appears to have been a breach of natural justice which would also justify a refiling.

Digest Commentary

0.12 Validation of Registered Trademarks

Although Panelist independent research should generally be avoided it is nevertheless generally obligatory for Panelists to verify the trademark registrations relied upon by a Complainant. At its most basic level this required examination of the trademark registrations themselves as furnished by the Complainant. This examination should encompass ensuring that the current owner of the trademark registration corresponds to the Complainant, the date of the registration, whether any portion of the trademark is disclaimed, and in the case of U.S. trademarks whether the trademark is registered on the Principal or the Supplemental Register. It is unsatisfactory for a Complainant to fail to provide proof of the trademark registrations however where a Complainant identifies the trademark registration by registration number for example, a Panelist may check the trademark registry and conduct the same kind of examination. Conducting such an examination of registered trademarks is crucial to avoid the error of allowing a Complaint that is reliant upon a trademark registered to someone else, or reliant upon a registration that contains a disclaimer of a key term, or is on the Supplemental Register.

Additional Information

Relevant Decisions

Hobby Fun, LLC v. Savannah Schellenschlager-Damer / The Garden Savvy, Forum FA2402002083049, <thegardensavvy.com>, 3-member, Denied

The Complainant claims that it filed a trademark application with USPTO for the mark “Garden Savvy” but the application was rejected. On this basis, the Panel is of the view that the Complainant has failed to prove that it has registered trademark rights on “Garden Savvy”.

Float Pod LLC dba floatpod.com v. Derek Cleveland, Forum FA2304002042283 <floatpod.com>, Denied

Complainant asserts that it has rights in the United States registered trademarks FLOAT POD (86123660) and FLOATPOD.COM (97908128). It makes no claim to have acquired common law rights in either of those marks.
Complainant has provided no evidence to support its claim to have rights in the mark FLOAT POD. A search by the Panel of the USPTO website reveals that the FLOAT POD mark, Serial No. 86123660, was registered on August 5, 2014 (Reg. No. 4582054) in the name Nick Janicki and remains live. Accordingly, the Panel is not satisfied that Complainant has established that it has rights in the FLOAT POD mark.

Revued, LLC v. Andrew Jack, Forum FA2309002061242 <revued.com>, Denied

The Complaint states that “The Revued® Mark is incontestable” while Respondent claims that “[t]he trademark is not valid because the Holder has not applied for a Declaration of Use (or Excusable Non-use) before the 6 year Limit”. The Panel notes that both statements appear to be incorrect as a current inspection of the USPTO database shows that no incontestability filing has yet been made for this Registration but, as the registration date is April 3, 2018, the 6-year window for such filing doesn’t close until April 3, 2024.

Digest Commentary

Digest Vol. 3.42 <zerocoder.com>, Denied, RDNH

0.13 Responsibilities on Complainant When Privacy is Lifted

Complainants should be given the opportunity by the Provider to amend their Complaint upon notification of the underlying Whois details from the registrar pursuant to Appendix E of the Temp Spec. This opportunity should be to not only amend the name of the Respondent to reflect the Whois details provided but can also entail amending the arguments and evidence included in the Complaint to include evidence and argument tailored to the newly discovered identify of the Respondent.

Complainants often do not take the opportunity to amend the substance of their Complaint and are not obliged to. Nevertheless, the failure of a Complainant to take into consideration the newly discovered identify of a Respondent could prejudice their Complaint, and in some cases result in a finding of RDNH. This may occur for example, where the Complainant proceeded despite the identity of the Respondent having been revealed to be exculpatory, such as where the Respondent’s surname corresponds to the disputed domain name.

Additional Information

Relevant Decisions

Charles Schwab & Co., Inc. v. Simon Schwab, Forum FA2210002017845 <schwabfinancialcare.com>, 3-member, Denied with dissent, RDNH

Majority on RDNH:
Such a finding is justified only in rare cases, such as instances where a complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy… In the view of a majority of the Panel, this case is such an instance. Complainant re-initiated the Complaint in this matter on December 2, 2022, knowing of Respondent’s rights or interests in the disputed domain name.
Dissenting View as to Bad Faith:
Panelist Sorkin dissents from this finding, noting that Respondent knew of Complainant’s famous mark, chose to register a domain name combining the mark with a generic term for Complainant’s industry, and is using it for a website purporting (apparently falsely) to provide services related to that industry. There does not appear to be a bona fide business operating as “Schwab Financial Care” or indeed any legal entity registered under that name, and Respondent has failed to come forward with any evidence of bona fide use occurring over the nearly two years since he registered the domain name and launched the corresponding website.

Law and Business Enterprises Worldwide S.L. v. Ann Labe, WIPO D2022-1040 <labe.com>, Denied, RDNH

That would have been still more evident after the Center provided the Respondent’s name and address details to the Complainant, which amended the Complaint to make “Ann Labe” the Respondent.

Bartko Zankel Bunzel & Miller v. Perfect Privacy, LLC / Jan Bartko, WIPO D2022-0043 <bartko.com>, Denied, RDNH

Once the Registrar identified the underlying registrant as the Respondent Jan Bartko, an individual with a family name corresponding to the Domain Name, the Complainant should have amended the Complaint to address the obvious implications for its arguments concerning the Respondent’s prima facie legitimate interests and bad faith. The Complainant amended its Complaint, but only to add Mr. Bartko’s name to the caption.

Digest Commentary

0.14 Inaccurate Whois/Identity of Respondent

A distinction should be made between material and immaterial inaccuracies in Whois information. Likewise a distinction should be made between false and inaccurate Whois information. False Where an error exists in Whois details or the Whois details are outdated, this may be an immaterial inaccuracy which does not reflect upon the Respondent’s good or bad faith. Where Whois information is shown to be or is clearly false, this can be an aggravating factor when combined with evidence of bad faith use and registration and lack of rights or legitimate interest, but alone should not generally be determinative. Panels should also be cognizant of the fact that Whois details may become inaccurate and outdated over time or that a registrant may not have taken any particular care in ensuring their accuracy despite having no malintent.

Additional Information

Relevant Decisions

ConsumerDirect, Inc. v. SMARTCREDIT up, Forum FA2404002093940 <smartcreditup.com>, Transfer

Further, that Respondent registered the domain name in bad faith with false Whois information and is using it in bad faith by masquerading as Complainant for the purpose of phishing for personal and financial information.

AVM Computersysteme Vertriebs GmbH v. 3DNS Privacy, LLC, John Doe, WIPO D2024-0706, <fritz.box>, 3-member, Transfer

Little is known about the Respondent, which has not participated in the administrative proceeding. It has provided a patently false or fictitious name, false address and false telephone number to the Registrar… In cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed. Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.4.5.

Taylor Wimpey PLC and Taylor Wimpey Holdings Limited v. Musa Abdul, WIPO D2024-0073 <taylorswimpey.com>, Transfer

The fact that the Respondent is associated with competitors of the Complainants and has provided false contact details to the WhoIs database also indicated bad faith.

LifeWave Inc. v. Wolfgang Klein, WIPO D2023-3333, <x39s.com>, Denied

The Respondent’s address was disclosed as an address in Düsseldorf, Afghanistan. Düsseldorf is in Germany, not Afghanistan, and the address supplied by the Respondent appears to be a genuinely German address including postal code. While not conclusive of the issue, the Respondent’s name also appears to be German in origin. The Panel considers that the Respondent most probably provided Afghanistan as its country erroneously when completing the registrant details for the disputed domain name. This is not an entirely uncommon error which can result from the fact that Afghanistan is often the first country in a list of possible countries provided in the form of a drop-down menu for the registrant to choose during the registration process. If the registrant does not select an alternative country via the menu, Afghanistan may remain as the default.

Delta Plus v. Domain Admin, WIPO D2023-2698 <deltaplus.com>, Denied

The Complainant included evidence to attempt to prove that the address of the Respondent in the Registrar’s records was inaccurate. This evidence shows that the address provided by the Respondent is a residential address, and does not prove bad faith.

Royal Caribbean Cruises, Ltd. v. Anonymize, Inc. / Synergy Technologies, LLC, D2023-1708 <starofthesea.com>, 3-member, Denied, RDNH

In response to the Center’s request for registrar verification, the Registrar stated: “The registrant of the domain is a client of Epik and is utilizing Anonymize as a private proxy. Anonymize [is] a Whois proxy service provider, which this domain is currently using. Thus, the current registrant is: Anonymize, Inc.” It is unclear from the record what the relationship is between the Registrar and Anonymize, Inc., but the Panel notes that the website at <anonymize.com> states: “Epik is happy to offer you WHOIS Privacy via Anonymize Inc.” Therefore, it would appear that the Registrar is in a position, but has refused, to identify the underlying registrant, as typically occurs in similar proceedings. Further, the Response states that Synergy Technologies is the registrant of the Disputed Domain Name and that “the Registrar is acting in violation of ICANN Rules by not updating the Respondent information upon receipt of a valid Complaint.” For purposes of this proceeding, the Panel considers the Respondent to be Synergy Technologies, LLC.

Rechtsanwälte Lampmann, Haberkamm & Rosenbaum Partnerschaft v. Privacy Department, IceNetworks Ltd. / Domain Admin, Whois Privacy Corp., WIPO D2021-1083, <ihr-law.org>, Transfer

The Panel notes that the underlying owner of the disputed domain name has not been clearly identified. Instead, there is a “Russian doll” scenario whereby the registrant “disclosed” by the Registrar following the filing of the Complaint turned out to be yet another privacy service. Section 4.4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), notes that such “multi-layered obfuscation” may support an inference of bad faith, e.g., as an attempt to shield illegitimate conduct from a UDRP proceeding.

Digest Commentary

Digest Vol. 3.41 <starofthesea.com>, Denied

0.15 Language of Proceeding

UDRP Rule 11 specifically states that unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Under Rule 11 (b) the Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.

A Panel should not depart from the general requirement that the proceeding be in the language of the registration agreement, absent exceptional circumstances. Panels should take into account that a Respondent should be assumed to have purposefully selected its registrar because of the language of its registration agreement and the right to therefore have the UDRP proceedings conducted in that language.

Panels should also be careful to ensure that the language of the registration agreement is conclusively determined as sometimes a Complainant will furnish a registration agreement that has been translated by the registrar for a particular market rather than in the language of the registrant’s registration agreement.

Where a Complainant has requested a language other than the language of the registration agreement and has not provided exceptional circumstances as to why it should be permitted, a Panel should generally insist upon the Complainant filing its Complaint in the proper language. This is not terribly onerous for a Complainant since practically speaking, Complainants can file a machine translated version even if it is not as readable if they want and still satisfy the requirement.

Exceptional circumstances must truly be exceptional. Panels sometimes incorrectly consider unexceptional factors to be exceptional. For example, convenience to a Complainant is not exceptional nor is the Complainant’s lack of facility in the required language. Just because the disputed domain name or the associated website is in a particular language also does not generally constitute exceptional circumstances. Panels must be cognizant of the fact that ICANN drafted Rule 11 in full contemplation of such ordinary circumstances where the parties are in different jurisdictions and speak different languages or where a Complainant may prefer to proceed in its own language other than the language of the registration agreement yet nonetheless instituted the Rule as a uniform and consistent default that should be applied absent exceptional circumstances.

Fairness requires that a Respondent fully understands the allegations made against it. Knowing enough English to register an English domain name, for instance, does not prove that the Respondent has sufficient capacity to understand and to respond to Complaint written in sophisticated legal English. Ultimately the objective of the Rule is to afford the Respondent an opportunity to defend in its own language. It is also therefore unfair for a party to rely upon documents that are not in the language of the proceeding where the other party does not speak that language, even if the Panel may.

The underlying principle is that a Respondent is not disadvantaged in due to the Complainant’s use of an unfamiliar language. Where a Panel determines that the Complainant has failed to adequately support its allegations based on an insufficiency of evidence presented in the Complaint itself such that the Complaint must fail regardless of whether or not the Respondent presents a Response, then in the interests of efficiency, the Complainant need not be put to the trouble of translating its Complaint and attached documents, and the Respondent is not disadvantaged, as the Panel has determined the outcome in the Respondent’s favor based on the Complaint alone.

In some cases, the totality of circumstances may demonstrate that a language change request is justified (e.g. previous decisions against the same respondent, content of the website, if any, prior communication between the parties, locations of the parties, etc.). Panels may also consider accepting submissions from both parties to the proceeding in different languages or not requesting translation of any annexes to the language of the proceeding as provided in Rule 11 (b) if a Panelist is fluent in both languages and when it is fair to both parties.

Additional Information

Relevant Decisions

Inera AB v. Oskar Zajączkowski, WIPO D2024-0773, <inera.cloud>, Denied

The language of the Registration Agreement for the disputed domain name is Polish. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement…
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the page 4 proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1). Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English…
Given the paucity of evidence of trademark targeting and the fact that the burden of proof rests with Complainant, this Complaint must fail.

Patronato de la Alhambra y el Generalife v. Domain Admin, Indefinite Ltd, WIPO D2024-0182, <alhambra.com>, 3-member, Denied

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the
language of the proceeding shall be English. The Panel identifies no special circumstances from the
Complainant’s submission that would reasonably indicate that any departure from the language of the
Registration Agreement should be made. The Panel consists of an English/Spanish speaker and two English speakers who do not speak Spanish. The Complaint, while apparently machine-translated, was supplied by the Complainant upon the Center’s request that it file a version in English. In light of its decision above, the Panel considers it appropriate to work from the English version of the Complaint wherever possible, noting that the Respondent has sought to answer this version in the Response, which is also in English.

Caterpillar Inc. v. Gaik Kazaryan, Forum FA2403002089212, <catparts.pro>, Denied Without Prejudice

Convenience and expense are important factors in determining the language of a UDRP proceeding. Of paramount importance, however, is fundamental fairness. Requiring a party to conduct a UDRP proceeding in a language in which it is not proficient enough to enable it to do so, to understand the claims and defences asserted by the other party and to assert its own claims and defences, is simply not fair. In this case, the registration agreement is in Russian, the Respondent’s Website is in Russian, the Respondent is based in Russia, and the Respondent’s sole communication with Forum was in Russian…
Complainant’s request for these proceedings to continue in English is DENIED. Under the circumstances present in this case, the Panel concludes that ordering the Complaint to be translated into Russian and proceeding from this point in Russian, in which the Panel is not proficient, would be neither efficient nor productive. Accordingly, the Panel orders that the Complaint be dismissed, without prejudice. Complainant may if it so desires file a new Complaint and proceed in the Russian language, or provide persuasive evidence that Respondent is proficient in English.

Rugvista AB v. Yavuz Özdemir, Diva Teppich Center, WIPO D2023-2803, <carpetvista.shopping et. al.>, Transfer

By letter to the Center of July 6, 2023, the Respondent insisted on German as the language of proceedings, pointing out that the Registration Agreement was in German and that the Respondent was a German company… Taking into account the circumstances of this case, notably the fact that the Complainant has provided evidence that the Parties had communicated in English prior to the initiation of the UDRP proceeding and that the website under the disputed domain name has also an English version, the Panel does not consider it prejudicial to the Respondent if English were adopted as the language of the proceeding and notes that the Respondent is familiar with English. The Panel finds that substantial additional expense and delay would likely be incurred if the Complaint and annexes thereto had to be translated into German. In view of the Policy’s aim of facilitating a time and cost-efficient procedure for the resolution of domain name disputes, the Panel finds it appropriate to exercise its discretion according to paragraph 11(a) of the Rules and allow the proceeding to be conducted in English. The Panel accepts the Complaint as filed in English and the Respondent’s email communications as submitted in German and English and will proceed in its discretion to render its decision in English.

BFD, Inc. and Barefoot Dreams, Inc. v. kanggeng sheng, Forum FA2205001997581, <bfd.com>, 3-member, Denied

Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese by default.
Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. ..
In the present case, Respondent’s correspondence with the Forum, its Response, and its Additional Submission show that it is fluent in English. The Response is in Chinese. Complainant’s rebuttal of the Response in its Additional Submission shows that it is fluent in Chinese. That is, both parties are fluent in both languages and are able to respond to each other’s submissions. Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition and cost-effectiveness, are best satisfied by delivering the decision in English without requesting translation of the case materials from the parties.

PaySend Group Limited v. Quan Zhongjun, CAC-UDRP-104796 (2022), <paysedn.com>, et. al., Transfer

In this particular instance, the Complainant tried to request change of languages of proceedings in light of Chinese language Registration Agreement by showing that 1) The translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter; 2) all 5 disputed domain names were initially registered with one single registrar – “Cosmotown, Inc.” and the registration agreement for all 5 domains was in English; 3) in many previous UDRP decisions against the same Respondent UDRP panels accepted the English language as the language of the proceeding. In light of the scenarios and equity, the Panel is of the view that conducting the proceeding in English is unlikely to heavily burden the Respondent, and it is likely that the Respondent can understand the English language based on a preponderance of evidence test.
Without further objection from the Respondent on the issue, the Panel will proceed to issue the decision in English.

Intesa Sanpaolo S.p.A. v. Mario Lobascio, CAC-UDRP-104384 (2022), <INTESANTFROD.COM>, Denied

(i) There is no evidence showing that the Respondent can understand the language of the Complaint. The Complaint was drafted in English; (ii) The disputed domain name is not identifiably in any language; (iii) there is no website associated with the disputed domain name and therefore there is no content available; (iv) the Complainant has cited no past cases involving the Respondent in its submissions; (v) there is no evidence of prior correspondence between the Parties from which the Respondent’s working language(s) could be inferred…

Dagi Giyim San. Ve tic.a. ş. v. PrivacyDotLink Customer 4594967 / Domain Admin, WIPO D2022-2730, <dagi.com>, 3-member, Denied, RDNH Taken as a whole these reasons seem to the Panel to involve the Complainant assuming that because the

Complainant is Turkish and its trademarks are (it says) well known in Turkey, that means the proceedings can take place in Turkish. That is not what the Rules provide…In all the circumstances the Panel considers that there is no proper basis for departing from paragraph 11 of the Rules, as to do so would manifestly disadvantage the Respondent who does not speak Turkish. Accordingly the Panel concludes that these proceedings should be in English. The Panel has treated the version of the Complaint translated into English as the Complaint. Insofar as various other documents filed by the Complainant are in Turkish the Panel has not found it necessary to require further translations given one member of the Panel is a native Turkish speaker.

T.C. Pharmaceutical Industries Co., Ltd v. junzhi wang, beijing hongniuyinliao xiaoshouyouxiangongsi, WIPO D2021-1297, <hongniu.cc>, et., 3-member, Transfer with dissenting opinion

The Panel observes that both the Complaint and Response were filed in English, although some annexes are in Chinese. It is clear that both Parties understand English and Chinese, as does the Panel. Therefore, the Panel considers that requiring either Party to translate any document that it has not already translated would create an undue burden and delay whereas accepting all submissions in their original language without translation, where none was provided, does not create unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept annexes as filed in English or Chinese with or without translation.

Digest Commentary

Digest Vol. 4.9 <barnessa.com>, Transfer
Digest Vol. 3.20 <ruckusnow.com>, Dismissed without prejudice

0.16 Determining the Date of Registration

Determining the date of a disputed domain name’s registration of often crucial where there is a question of whether the domain name registration or trademark rights came first. Nevertheless, the date of registration is often unknowable by a Complainant prior to bringing a Complaint because Whois privacy has deteriorated historical Whois records which could often be previously used to determine when a domain name changed hands to the current registrant.

Parties and Panels sometimes are misled about the registration date. Such misinformation can come from the “Creation Date” which is not in fact usually the registration date of the current registrant since the domain name has changed hands since it was originally created. Other times misinformation can come from the Registrar Verification sent by the Registrar to the Provider and which is sometimes disclosed to the Complainant or both of the parties. A Registrar may state in its Verification that the domain name was registered on a particular date, however the Registrar will usually only actually be providing the date that the domain name was registered at that particular registrar, leaving the possibility that prior to that the domain name was registered by the registrant at another registrar.

Although registration dates may not be easily or conclusively determined by Complainants, Complainants must still make the effort to investigate registration dates. Complainants can do this by compiling circumstantial evidence of when a domain name was registered by the Respondent. Such circumstantial evidence can include for example, evidence of the change of use of a domain name based upon historical web archives or a change of registrar. Such evidence if sufficient can sometimes be used to draw a reasonable and supported inference of the registration date or at least try to narrow down the date range.

Complainants and even Panels sometimes make the error of assuming the Creation Date is the registration date when the Creation Date far precedes the current registrant’s registration date. Panels should not investigate themselves but rather Complainants should furnish evidence of the registration date to the Panel where the registration date is relevant to the dispute. Respondents should be clear and forthcoming on their registration date and not represent by commission or omission, the Creation Date as their date of registration. Respondents should be expected to make an effort to furnish the Panel with evidence of their registration date, such as a registration or transfer receipt. Where such documentary evidence is no longer available to a Respondent, a Respondent may try to prove its registration date through circumstantial or declaratory evidence.

Additional Information

Relevant Decisions

Moelis & Company v. Lei Jiang, WIPO D2024-1990, <moelist.com>, Denied

Notably, the Registrar does not state that the registration date which it provided refers to the point at which the disputed domain name was first registered in the name of the Respondent, and accordingly, the discrepancy in the Registrar-provided information may potentially be explicable as the date on which the disputed domain name was transferred to it from the previous registrar of record.

SMARTCATCH v. Domain, Administrator, NameFind LLC, WIPO D2024-0544<smartcatch.com>, Denied, RDNH

The Complainant should similarly have known that the “Updated Date” in a WhoIs search does not by itself establish a transfer of ownership (if there would be other evidence such as a change in content that may support such a claim, but that is not the case here), yet there is no evidence of any enquiries it may have conducted concerning the ownership history of the disputed domain name.

Lifeware SA v. Chris Smith, WIPO D2024-0556 <lifeware.com>, Denied, RDNH

The changing history of the use, or non-use, of the disputed domain name revealed by the Wayback Machine extracts included in the Complaint suggest that there may have been changes to the registrant of the disputed domain name over time. That conclusion, however, is really a matter of speculation. There is not sufficient evidence before the Panel to conclude that the current registrant was not the original registrant or, if the Respondent was not the original registrant, when the Respondent became the registrant.

Fieldd Pty Ltd v. Jessica Duarte, WIPO D2022-4980 <fieldd.com>, 3-member, Denied with dissenting opinion

Majority:
Complainant has not brought forth evidence that there was any break in the ownership continually held by the same named organization from 2014 to mid-2022. There is no allegation that the registration of the disputed domain name had lapsed during that time. The Panel does not find the dissolution of the Fieldd Software Service L.L.C. entity in 2017 extinguished domain name rights.

Dissent:
It is not claimed that the registration of the Domain Name by Fieldd Software L.L.C in about May 2014 was in bad faith. It was clearly not. But the registration back into the name of Ms Duarte some time after June 2022 is potentially different and the exact timing of that change in registration details is potentially important.

Automobili Lamborghini S.p.A. v. Domain Administrator, See PrivacyGuardian.org / Richard Blair, WIPO D2022-1570, <lambo.com>, 3-member, Transfer with dissenting opinion

The Domain Report attached to the Complainant’s supplemental filing does, in fact, establish from historical WhoIs data, that, until February 28, 2018, the disputed domain name was registered in the name of a John F Lambeth. The date that the Respondent acquired the disputed domain name is relevant to his allegation of delay on the part of the Complainant in bringing these proceedings against him. As the change of registrant details in 2018, from the original registrant, was not evident from either the WhoIs search appended to the Complaint nor the registrant verification information provided by the Registrar and communicated to the Complainant by the Center on May 3, 2022, the Complainant could not have anticipated that the Respondent would make such an assertion. It is therefore helpful for the factual position in this respect to be clarified, particularly when the Respondent has not stated in his Response the date on which he acquired the disputed domain name.

Digest Commentary

Digest Vol. 4.16 <lifeware.com>, Denied, RDNH
Digest Vol. 3.22 <thechosentv.com>, Denied
Digest Vol. 2.35 <neometals.com>, Transfer
Digest Vol. 2.8 <oovo.com>, Denied, RDNH

0.17 Stolen Domain Names

Although Panels may be sympathetic to Complainants who have had their domain name stolen, stolen domain names are not recoverable via the UDRP per se, unless the Complainant happens to meet the standard three part-test. In this sense, the UDRP is inadequate to address stolen domain names unless the Complainant has demonstrable trademark rights corresponding to the disputed domain name. This becomes particularly problematic for Complainants when the disputed domain name corresponds to a common or unregistered term, even where the Complainant may have been using it for their website for business for many years. Under such circumstances, a Complainant will have to prove common law trademark rights and that is exceedingly difficult when it comes to descriptive or generic terms.

Some disputes involving allegations of stolen domain names or fraudulent transfers may be outside of the scope of the Policy (see also 0.1 – Scope of the UDRP), e.g. when they involve material unreconcilable facts.

Since the UDRP is inadequate when it comes to stolen domain names generally, ICANN should consider creating a dispute mechanism specifically for such instances.

Additional Information

Relevant Decisions

Sawnee EMC v. faris ALMALKI, WIPO D2024-2087, <sawnee.com>, Transfer

the Complainant submits that the Respondent illegally transferred the disputed domain name to itself by hacking the Complainant’s account with the then registrar of the disputed domain name, and then approached the Complainant with a demand for payment of USD 15,000 for its return to the Complainant. These allegations are supported by evidence and have not been disputed by the Respondent, which has not provided any plausible explanation or evidence as to how and why it acquired the disputed domain name and why its actions should be regarded as legitimate. In the Panel’s view, the above supports a conclusion that the Respondent more likely than not illegally acquired the control over the disputed domain name, targeting the Complainant in an attempt to receive financial gain by selling it back to the Complainant

Staten Island Oral and Maxillofacial Surgery, PC v. Jamie Licznerski, WIPO D2024-0961 <statenislandoralsurgery.com>, 3-member, Denied

The evidence is insufficient for the Panel to find by a preponderance of the evidence that Respondent fraudulently induced the transfer of the Disputed Domain Name. For this reason, the Panel finds that Complainant has not established the second and third element of the Policy, paragraphs 4(a)(ii) and 4(a)(iii). Moreover… panels have tended to deny the case not on the UDRP merits but on the narrow grounds that the dispute between the parties exceeds the relatively limited ‘cybersquatting’ scope of the UDRP, and would be more appropriately addressed by a court of competent jurisdiction.” The Panel finds this case fits in that category and provides an additional basis for the denial of the Complaint.

Aleksandr Danilchuk v. WhoisGuard Protected, WhoisGuard, Inc. / Vadym Didenko, WIPO D2020-1981 <igroutka.net>, Denied

This dispute however concerns the question of who is the rightful owner of the disputed domain name and whether the Respondent has acquired it legitimately or through forgery and theft. The Policy was not designed to decide whether a domain name was taken with or without the Complainant’s knowledge or consent and to deal with allegations of forgery and theft, as there is generally no hearing available and no opportunity to examine witnesses or to conduct cross-examination. Simply put, this is not the appropriate forum to deal with these issues.

Digest Commentary

Digest Vol. 4.28 <sawnee.com>, Transfer
Digest Vol. 4.2 <century.com>, Denied
Digest Vol. 3.49 <floridasunweddings.com>, Transfer
Digest Vol. 3.28 <e-craft.com>, Transfer

0.18 Redaction

Under par. 4(j) of the Policy all UDRP decisions shall be published in full, except when an Administrative Panel determines in an exceptional case to redact portions of its decision. Rule 16 (b) states that “Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), the Provider shall publish the full decision and the date of its implementation on a publicly accessible web site”. Redacted portions may include personal information or any other information.

For instance, Panels may redact Respondent’s name when there is evidence of identity theft. Publication of Respondent’s name in such cases may adversely affect her/his rights and redaction is justified. This can be done by the Panel at its own initiative when facts and evidence indicate identity theft or at the Respondent’s request. Other information can be redacted in other exceptional circumstances such as Complainant’s name, domain names and names of any individuals. At the same time Panels should carefully consider requests for redaction and keep in mind that the Policy allows this in “exceptional” cases only.

Additional Information

Relevant Decisions

BFORBANK v. redacted, CAC-UDRP-106429 (2024), <BFORBK-ONLINE.COM>, Transfer

In light of the potential identity theft, in line with the approach taken by other panels in similar cases (see for example WIPO Case No. D2017-1520), the Panel requests that the Respondent’s name is redacted from the public version of this Decision. Indeed, the publication of the third party’s name in these circumstances might adversely affect him.

Automobili Lamborghini S.p.A. v. Domain Administrator, See PrivacyGuardian.org / Richard Blair, WIPO D2022-1570 <lambo.com>, 3-member, Denied with dissenting opinion

It is for a respondent to show why this is necessary and why it has an exceptional case that would justify such a redaction. The Respondent has not put forward argument or evidence to support his request, nor does the Panel consider this case to be exceptional. The unanimous view of the Panel therefore, is to decline to direct that the Respondent’s name be redacted from this Decision.

Software in the Public Interest, Inc., The Debian Project, and Debian.ch v. IT Manager, Free Software Contributors Association, WIPO D2022-1524 <debian.community>, 3-member, Transfer

The Respondent requests that this Decision redact all names and identifying details and refer to persons by their roles. Paragraph 4(j) of the Policy provides that all decisions under the Policy will be published in full over the Internet, except when a panel determines in an exceptional case to redact portions of its decision. In the present case, the Panel sees no exceptional circumstances, such as identity theft, that would justify redacting portions of this Decision. Nevertheless, the Panel notes that the former Debian developer to whom both Parties refer in their submissions (whether by name, photograph, former role, or otherwise) is not identified as a Party in the amended Complaint. The Panel sees no compelling reason to record the name of that person or other individuals in the Decision in order to reach its conclusions under the Policy.

[Name Redacted] v. ludashi us / jack zhang, Forum FA2208002009845 <[redacted].com>, Transfer

Complainant requests that her identity, including the Domain Name, be redacted from this decision or that the decision be privately archived, stating: “My privacy is of grave concern, and I do not want my name to hold any association with the explicit obscene content on the website in question, nor any association with the respondent…” The Panel has been unable to find a case in which a complainant’s name has been redacted from a UDRP decision. The only published decisions the Panel has found in which the name of a party has been redacted are decisions in which the domain name was registered in the name of a victim of identity theft, in which case it would be grossly unfair for the respondent to be publicly accused or found guilty of cybersquatting. In the present case this decision vindicates Complainant from any suggestion that she has promoted pornography. However, having regard to Complainant’s legitimate concerns as to her privacy and safety, the Panel determines that this is an exceptional case in which it is appropriate that the name of Complainant, her trademark and the Domain Name, which both contain her name, should be redacted from the published decision.

Mountain Top (Denmark) ApS v. Contact Privacy Inc. Customer 0133416460 / Name Redacted, Mountaintop Idea Studio, WIPO D2020-1577 <mountaintop.com>, 3-member, Denied, RDNH

The Respondents have not explicitly requested that the Panel redact the Respondent Individual’s name, however have made submissions that the Respondent Individual will suffer loss by his name being published. Here, the Panel agrees with the Respondents that many of the Complainant’s allegations are demonstrably false and that the Respondents will be harmed by them if the Respondent Individual’s name is included in this Decision.

Seven Network (Operations) Limited v. Knock Knock WHOIS Not There, LLC / [Name Redacted], WIPO D2017-0498 <name redacted-d2017-0498.com>, Transfer

Given the exceptional circumstances of the existence and the effect of the Website Suppression Order, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules the Panel has resolved: (i) to issue this Decision with the disputed domain name, the name of the second-named Respondent and certain other potentially identifying information redacted from it; (ii) to list the disputed domain name and the name of the second-named Respondent in the Annex to this Decision; (iii) to direct the Center to not publish the Annex to this Decision; and (iv) to direct the Center to provide to the Registrar, solely for the purpose of implementing this Decision, the Annex to this Decision.

Digest Commentary

Digest Vol. 2.49 <tevapharmamumbai.com>, Transfer
Silver “In “Exceptional Case,” Panel Redacts Complainant from UDRP”, October 11, 2022

1. Identical or Confusingly Similar to Trademark

1.1 Demonstrating Common Law Trademark Rights

For a Panel to award common law rights to any expression, thereby granting it the same status as a registered trademark, without proper evidence would be improper and unjust. To support a claim of common law trademark rights, the Complainant should present strong and serious evidence of constant use by the Complainant and recognition of the trademark from the customers of the associated goods or services.

Proof of common law trademark rights cannot be based on conclusory allegations. A Complainant will have failed to establish common law rights in its mark where it makes mere assertions of such rights, which are insufficient without accompanying evidence to demonstrate that the public identifies a Complainant’s mark exclusively or primarily with a Complainant’s products.

Additional Information

Relevant Decisions

Hobby Fun, LLC v. Savannah Schellenschlager-Damer / The Garden Savvy, Forum FA2402002083049, <thegardensavvy.com>, 3-member, Denied

The Complainant also asserts that it has used its domain name <gardensavvy.com> since 2019 but failed to present any evidence about the use of the domain name or the development of secondary meaning…For the foregoing reasons, the Panel finds that the Complainant fails to establish unregistered or common law trademark rights due to lack of evidence provided to support that the mark “Garden Savvy” has generated a secondary meaning.

Chai Research Corp. v. Andrew Haynes, CAC-UDRP-105900 (2023), <CHAI-APP.com>, Transfer

The Complainant claims common law rights in the CHAI mark as a result of its extensive use of the mark for leading research and applications of chat dialogs with artificial intelligence since January 2022. The Panel finds that the Complainant has established common law rights in the CHAI mark prior to the registration of the disputed domain name under Policy paragraph 4(a)(i) because consumers in the relevant market are likely to recognize the mark “CHAI” as a source indicator of the Complainant’s app products and services…

Amit Kolambikar (Space Falcon LLC) v. John ladrok, CAC-UDRP-105490 (2023), <spacefalcon.com>, Transfer

Although the evidence of the use and extent of the Complainant’s trademark covers little more than a year, considering factors such as the type and scope of market activities and the nature of the Complainant’s goods and services, namely “online gaming, blockchain and NFTs”, and the fast growth shown in terms of users and followers, this Panel considers that there is nevertheless sufficient material in the present record to find that the SPACE FALCON trademark has acquired a secondary meaning and therefore that the Complainant has unregistered trademark rights therein for the purposes of the Policy.

In particular, the Complainant is able to show that before the registration of the disputed domain name its SPACE FALCON online game had already reached over 160 thousand followers, had raised several million US dollars from investors, and all this was announced with several articles on internet blogs.

iCommand Ltd v. Johnny Gray, ArtWired, Inc., WIPO D2020-1438, <downpat.com>, 3-member, Denied

Complainant asserts that it has taken certain preparatory steps to use the DOWNPAT trade mark. It also relies on its pending Australian Trade Mark Application and its ownership of the domain name <downpat.com.au>. However, Complainant acknowledges that it has not actually used the DOWNPAT trade mark in the course of trade. That being the case, Complainant cannot have acquired rights in DOWNPAT as an unregistered/common law trade mark. Without trade mark rights, Complainant cannot satisfy the first requirement of the Policy. Under the circumstances, the Complaint must fail, and it is unnecessary to address the additional grounds.

DAY PASS LLC v. GymClub International Limited, CAC-UDRP-102552 (2019), <daypass.com>, 3-member, Denied

Although the complainant appears to have used the term Day Pass as part of its company name for some time, there is no real evidence of how that term has become understood by the relevant public. The Complainant’s website has changed over time and it seems clear that as late as 2016 this was one of a number of phrases that the Complainant was considering using as a trade mark. Further, there is no evidence whatsoever before the Panel of sales or advertising. Further, although there is a reference to media coverage, there has been no real attempt to properly collate and present material to the Panel in this respect.

The Indian Hotels Company Limited v. Roger Price, WIPO D2018-2325, <IndianHotels.com>,3-member, Denied, RDNH

In that regard, Complainant must establish that its claimed INDIAN HOTELS mark has become a distinctive identifier which consumers associate with Complainant’s goods and/or services. Proof of such rights cannot be based on conclusory allegations, particularly where, as here, a claimed trademark consists of a combination of two generic words. Id. For this reason, Panels have generally required that a complainant make a strong showing with relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) through a range of factors, such as (i) the duration, extent and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Id. and cases cited therein.

NTI CADCENTER A/S v. Domain Admin, Ashantiplc Limited, CAC-UDRP-101591 (2017), <nti.com>, 3-member, Denied

The Panel is comfortable to state that, three-letter marks have, in general, low distinctiveness (NB: the few exceptions that exist are confirming the rule). What is more, “NTI” can be found on the web to mean many different things in world commerce. The fact, mentioned by the Respondent, that a plethora of other domain names exist for “NTI” (nti.org, nti.net, nti.nl, nti.ch, etc.) reinforces this opinion of the Panel. It would, admittedly, be far-fetched to recognize -in the absence of at least one registered trademark- exclusive, common law rights on “NTI” to the Complainant, only on the basis of some limited use of “NTI” in the marketplace, which is clearly not enough to establish common law rights.

Chandler Horsley v. Fundacion Private Whois, NAF FA1305001497825 (2013) <degreesearch.com>, Denied, 3-member

The common law rights may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. Hence, to prove common law rights, it is necessary to file evidence regarding the extensive and continuous use, enough to be considered sufficient by the Panel as to identify the goods or services specified by the trademark owner…The Panel considers that “common law rights” should not be taken as a “last resource” when a Complainant does not have a trademark registration… As trademark registrations, common law right must be seriously demonstrated, since under the Policy both trademark recognition systems are enforceable as equals. Awarding common law rights to any expression to ultimately granting the same status of either a trademark or service mark without proper evidence, would be improper behavior of this Panel and also very unjust[.]

Digest Commentary

Digest Vol. 4.33 <vikimgcloud.com>, Denied
Digest Vol. 4.23 <opns.domains>, Denied
Digest Vol. 4.20 <barbosaforcongress.com>, Transfer
Digest Vol. 3.43 <wilkesbarrerugby.com>, Transfer
Digest Vol. 3.29 <spacefalcon.com>, Transfer
Digest Vol. 3.27 <integrity.com>, Denied, RDNH
Digest Vol. 3.9 <multitracks.com>, Transfer
Digest Vol. 2.44 <baseballcoachtraining .com>, Transfer

1.2 Establishing Secondary Meaning

Secondary meaning is acquired when in the minds of the public, the primary significance of a product feature is to identify the source of the product rather than the product itself. Direct evidence of secondary meaning includes: (a) direct consumer testimony, and (b) consumer surveys. Circumstantial evidence of secondary meaning includes: (c) exclusivity, length, and manner of use, (d) amount and manner of advertising, and (e) amount of sales and number of customers.

The fact that a Respondent targeted Complainant’s mark per se is insufficient to establish secondary meaning in the absence of other evidence.

Additional Information

Relevant Decisions

Invest St. Louis LLC v. Femby Femby, CAC-UDRP-106459 (2024), <investinstlouis.com>, Transfer

The Complainant has established or declared that:
-it has used the Signs for more than 10 years, notably on its website formerly linked to the disputed domain name and on social media;
-it has closed more than $250M worth of real estate transactions over the course of its operations under its company name “Invest St. Louis LLC”;
-it has also advertised its services under the Signs through third-party websites;
its website that was linked to the disputed domain name used to receive regular traffic.
Based on the above, the Panel finds that the Signs, although being comprised of descriptive terms which are not inherently distinctive, probably have become distinctive identifiers which consumers in Saint-Louis can associate with the Complainant’s real estate business. The fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the Complainant from establishing trademark rights (and as a result, standing) under the UDRP (see section 1.3 WIPO Overview 3.0).

Smartkoin, OPC v. Simong Kingsly, WIPO D2024-0362, <bsss-ph.com> and <smartk0in.net>, Denied

The evidence presented provides the Panel with no information regarding public recognition of the Complainant and its relied upon trademarks. Taking all of this as a whole the Panel concludes there is no evidence to show that the terms SMARTKOIN and BSS-PH.COM have become “a distinctive identifier which consumers associate with the complainant’s goods and/or services… In addition, the Complainant’s argument is circular – if accepted it would mean any email fraud of this nature automatically results in the term in question being held to be a trademark – that is not necessarily the case. Whilst a domain name can often be a trademark, that still needs to be proved by appropriate evidence – which the Complainant has failed to do here,

Family Policy Foundation v. John Skinner, WIPO D2024-0098, <familypolicyfoundation.org>, Denied, 3-member

Complainant also submits that per WIPO Overview 3.0, section 1.3, the fact of Respondent targeting Complainant (which is clear based on usage of “Family Policy Foundation” in the Domain Name and on Respondent’s website) supports Complainant’s assertion that its mark has achieved significance as a source identifier. That same section, however, notes that the strength of the claimed mark remains a relevant consideration. The Panel also observes that WIPO Overview 3.0, section 1.15, suggests that the website content is usually disregarded under the first element, and that where it is taken into account, this would be to confirm confusing similarity where a trademark is being targeted. This case presents a complex and unusual scenario, and while it is clear that Respondent is targeting Complainant, as explained above, it is also the case that Complainant has not established the requisite foundation for purposes of the first element.

OpenBots, Inc. v. Luciano Coelho, Forum, FA2206001999065, <openbots.com>, Denied

Documentation of this registration provided by Complainant makes clear that this registration is on the “Supplemental Register” at the U.S. Patent and Trademark Office (“USPTO”). As set forth in section 1.2.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights.” However, other than conclusory, unsupported statements (such as, “Complainant has invested significant time and resources in developing and protecting its name and trademark”), Complainant has shown no such secondary meaning.

Elodie Games, Inc. v. Wood Gavin, Forum FA2202001986021, <elodie.game>, 3-member, Transfer

To establish common law rights in a mark, a complainant must prove that the mark has acquired a secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor… On the foregoing evidence the Panel has no trouble finding that Complainant has demonstrated its rights in the ELODIE mark for the purposes of Policy ¶ 4(a)(i).

CEMEX UK Operations Ltd. v. Privacy Service Provided by Withheld for

Privacy ehf / Cargo Logistics Transportation Services, Cargo Logistics

Transportation Services; South Coast Shipping Company, South Coast

Shipping Company; and Cargo Logistics, Cargo Logistics Transportation

Services, WIPO D2022-1445, <south-coast-company.com>, et., Denied

The Complainant however also relies on the fact of the Respondents’ use of the Disputed Domain Names is itself evidence that relevant unregistered rights exist. WIPO Overview 3.0 addresses this as follows (section 1.3): “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.” The Panel takes the view that this approach may support a case where there is other evidence which is of a doubtful or marginal nature, but normally it would not constitute the sole evidence of unregistered rights. If that was not the case then the test would be entirely circular and any term used in a domain name could be said to support a finding of unregistered trademark rights – which is clearly not the intention of the Policy.

The Barack Obama Foundation v. michael board / Championshipblackjack, Inc, Forum FA2107001954598, <obamapresidentialcenter.com> et. al., 3-member, Transfer

Complainant contends that former United States President Barack Obama owns common law rights to Complainant’s Marks. This question raises the contentious issue of whether a personal name that has not been registered as a trademark can ever constitute a common law trademark… the consensus view among UDRP panelists is that a complainant may show that his or her personal name has taken on such a cachet that it has become a trademark, but that to succeed in doing so the complainant will have to show that the name has actually been used in trade or commerce.

Caleb Marshall v. c/o Weebly Domains, Forum FA1901001826454, <thefitnessmarshall.com>, Denied

common law rights require proof of secondary meaning. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder… Secondary meaning generally requires the claimant indicate specific data such as the length and amount of sales under the trademark, the nature and extent of advertising, and consumer association through surveys and media recognition.

Digest Commentary

Digest Vol. 4.15 <familypolicyfoundation.org>, Denied
Digest Vol. 3.43 <wilkesbarrerugby .com>, Transfer
Digest Vol. 3.17 <droit-technologies .org>, Transfer

1.3 Mere Incorporation or Mere Domain Name Registration Does Not Confer Trademark Rights

That a Complainant corporation’s corporate name corresponds to a disputed name is insufficient alone to demonstrate common law trademark rights. As with any claimed common law mark, common law rights require proof of secondary meaning. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder.

As with a mere corporate name, the registration of a domain name itself does not confer any trademark rights without strong and serious evidence of common law trademark rights arising from use of the domain name. Where there is no, for example, evidence of website traffic, online sales, consumer awareness, reputation etc., there is no basis to find any trademark rights arising from Complainant’s registration.

Additional Information

Relevant Decisions

ABD Cosmetics GmbH v. Bah Silver, CAC-UDRP-106217 (2024), <abdcosmeticsgmbh.com>, Denied

The Complainant does not own a trademark registration for ABD Cosmetics GmbH, however, the Complainant claims that the Disputed Domain Name is identical to the Complainant ́s company “ABD Cosmetics GmbH” to which the Complainant claims trademark use rights… For the current case, the Complainant provided with only some limited evidence which cannot prove a long and continuous use of the mark and, therefore, it is impossible to confirm that the mark has become a distinctive identifier which consumers associate with the complainant’s goods and services.

Costa Rica Recovery, SA SAH Holding Company, LLC Scott A Huseby v. Ryan Rivard, CIIDRC 21459-UDRP, < costaricarecovery.com> (2023), 3-member, Transfer

The evidence submitted by the Complainants does show that the phrase has acquired some distinctiveness as both a trade name and trademark in the field of drug and alcohol treatment services. The Web archive evidence shows that the Complainant’s services have been marketed as “Costa Rica Recovery” since at least 2008. The patient testimonials from 2012 and 2018 also demonstrate that the Domain Name: costaricarecovery.com program is known to patients and others as “Costa Rica Recovery”… The Panel concludes on a balance of probabilities that the phrase ‘COSTA RICA RECOVERY” functions as a trademark or service mark, in that it identifies the Complainant Costa Rica Recovery as the source of those services and that it has acquired distinctiveness through Complainants’ use of the mark.

Paragon Protection Ltd. v. Webhosting Department/ Candev Systems Inc., CIIDRC 20348-UDRP (2023), <paragonsecurity.com>, Denied, 3-member panel

The only other evidence provided by the Complainant consists of excerpts from the Company Register of the Province of Ontario, which show the registration of the company PARAGON SECURITY LTD. and the business name PARAGON SECURITY. However, these registrations, in themselves, do not confer rights under the Policy.

Digest Commentary

Digest Vol. 4.24 <rocketship.com>, 3-member, Denied, RDNH

1.4 Descriptive Marks

Descriptive terms are capable of acquiring distinctiveness but the more descriptive the term, the more evidence will be required to establish a secondary meaning. When it comes to descriptive terms, evidence required to show acquired distinctiveness or “secondary meaning” is directly proportional to the degree of non-distinctiveness of the mark at issue. Panels should be wary of easily conferring common law rights upon complainants where the claimed trademark comprises what appears to be a mere common descriptive term. In such cases, the conferral of common law rights upon a merely descriptive term may serve to unjustifiably provide standing to a Complainant under the Policy when in reality the Complainant is just one of many users of a common descriptive term in the marketplace. As Lord Herschell in Eastman Photographic Material Co., Ltd. v. Comptroller-General of Patents, Designs and Trade Marks, [1898] AA.C. 571 at p. 580: “The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent other members of the community from using it for purposes of description, a word which has reference to the character of quality of the goods.”

The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.

Additional Information

Relevant Decisions

Sleep Number Corporation v. Omri Shalom / Silver Scope Media, Forum FA2309002062168, <beds.com>, 3-member, Denied, RDNH

The Panel notes that the disputed domain name comprises solely of a descriptive term which is not inherently distinctive. In such case, there is a greater onus on Complainant to present evidence of the acquired distinctiveness or secondary meaning.

Federación Nacional de Cafeteros de Colombia v. Vince Harasymiak, Domain Capital, WIPO D2022-4022, <colombiancoffee.com>, 3-member, Denied

Even if the Panel were to accept that the design elements of the mark do not overtake the textual elements in significance, an additional difficulty for the Complainant is that in either language those words are descriptive.

uSwitch Limited v. FreeSatServices, CAC-UDRP-104446 (2022), <youswitch.biz>, Denied, RDNH

However, not all rights are the same. No-one can own a number or dictionary word to the exclusion of the rest of the world. This is the point that the Respondent is making in the response –is if you select a common word or a number/highly descriptive mark, you cannot expect any exclusivity in it and small differences must be tolerated.

One.com Group AB v. Stan N, CAC-UDRP-103567 , (2021), <0ne.com>, Denied

No-one can own a number or dictionary word to the exclusion of the rest of the world. They are inherently lacking in the distinctiveness required for trade mark law. Trade marks are badges of origin that enable the public to identify the goods and services of a trader so they can make a repeat purchase safe in the knowledge that the quality should be the same the second time around. An ordinary word or number cannot function in that way for obvious reasons. That is, unless they have what we call “acquired distinctiveness” or secondary meaning so that they are so famous that it is the brand that the relevant public bring to mind and not the dictionary term. That is not really possible with a number or a common word –so that in their original meaning, they remain the property of and available to, all. This forms the basis of the prohibition on descriptive and generic marks which recognises that many traders want to use descriptive terms for their informational values and that no one trader should be able to monopolise them. Those selecting such terms as marks have to tolerate confusion and the Policy reflects this by protecting such as fair or legitimate use. Furthermore, consumers are not easily confused by such terms as they understand they are common ordinary terms, employed by many undertakings, with a low degree of distinctiveness.

Global Personals, LLC v. Daniel Carvallo, Skyloop Digital Ltd, Forum FA2205001995514, <flingpals.com>, Denied

Taking into account that the trademark is compound by a descriptive term (FLING describes the services developed by Complainant) its trademark rights are weak. This weakness also provides from the fact the specification of goods is very narrow, and in a way to try to avoid rejection by the USPTO based on the descriptiveness. This Panel concludes that Complainant’s trademarks are at the very least quasi-descriptive for the services identified by it and it derives in an extremely narrow scope of protection.

Digest Commentary

Digest Vol. 3.49 <glassesshop .com>, Transfer
Digest Vol. 3.44 <beds.com>, Denied, RDNH
Digest Vol. 3.5 <colombiancoffee.com>, Denied
Digest Vol. 2.44 <baseballcoachtraining.com>, Transfer
Digest Vol. 2.31 <tampawatertaxi.com>, Transfer
Digest comment 26 February, 2023 <multitrack.com>, Transfer

1.5 Disclaimed Words

The USPTO has indicated that “[t]he purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone and therefore do not function as a trademark.”

Where an asserted registration consists of a design mark and the relevant words have been disclaimed apart from the mark as a whole, this requires the Complainant to provide additional evidence that the words have acquired a secondary meaning and, thus, status as a trademark as required by policy.

A disclaimer disclaims any right in the disclaimed term apart from the mark as shown in its entirety.

Additional Information

Relevant Decisions

Nostrum Oil & Gas Plc v. MERCY 3fold, JOY, WIPO D2024-1519, <zhmnllp.com>, Denied

The Complainant has shown rights in respect of the Complainant’s trademark. However, the verbal elements “LLP”, “ZHAIKMUNAI” and “A MEMBER OF THE OIL & GAS GROUP ” of this trademark are disclaimed as non-protectable… However, if the similar elements of the domain name are made up exclusively of disclaimed terms, trademark rights under the Policy may not be found unless the complainant can show sufficient secondary meaning in the disclaimed terms.

USA QP ENTERPRISES Inc. dba USA Quickprint v. Admin Support / CR Consulting Ohio LLC, NAF FA2310002066056 (2023), <usaquickprint.com>, Denied

Where an asserted registration consists of a design mark and the relevant words have been disclaimed apart from the mark as a whole, this requires the complainant to provide additional evidence that the words have acquired secondary meaning and, thus, status as a trademark as required by Policy ¶ 4(a)(i).

Scentsational Shoppe, Inc. v. Jeffrey Potts, The Common Scents, Inc., WIPO D2023-3525 <perfume-oils.com>, Denied

If “the similar elements of the domain name are made up exclusively of disclaimed terms, trademark rights under the Policy may not be found unless the complainant can show sufficient secondary meaning in the disclaimed terms”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.3.

riskmethods GmbH v. LEVEL2 LLC / Lever 10 inc., WIPO D2019-0286 <riskmethods.com>, Denied

The disclaimer affects only the registration in the United States. No disclaimer has been given in respect of the other registrations.

Eric Levy v. Joseph Ahmadi, WIPO D2014-1369 <YourNeighborhood.com>, Denied

This omission is important, because it obscures the fact that the registration specifically disclaims any right in the text YOURNEIGHBORHOOD apart from the mark as shown. The Panel suspects legerdemain on the part of Complainant. Not only was this important information omitted from the Complaint, but Complainant actually asserted in the pleadings that “the Domain Name completely incorporates Complainants’ [sic] Mark.” The manifest falsity of that statement persuades the Panel that Complainant was trying to pull a fast one.

Digest Commentary

Digest Vol. 4.4 <UCRregistration.com>, Denied, RDNH
Digest Vol. 2.37 <ExclusiveBeauty.com>, Transfer
Digest Vol. 2.9 <USGreens.com>, Denied

1.6 U.S. State Trademarks

State trademark registrations are not always granted the same deference as national trademark registrations because they are sometimes issued automatically. In case Complainants rely on state TM registrations, unless there is proof that such state registrations go through substantive examination procedure, Complainants are expected to provide evidence of common law trademark rights.

Additional Information

Relevant Decisions

Erase Technologies, LLC v. Web Presence LLC, NetReputation.com, WIPO D2022-3797 <GuaranteedRemoval.com>, 3-member, Denied, RDNH

The Panel finds that Complainant’s New York State service mark registration establishes that it has rights in the GUARANTEED REMOVALS mark. However, state trademark registrations are not always granted the same deference as national trademark registrations because they are sometimes issued automatically. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.2. This does not appear to be the case in New York where the New York State trademark registration statute and related regulations provide on their face for substantive review, including consideration of descriptiveness.

Peymon Mottahedeh v. AbdulBasit Makrani, Forum FA2010001918379, <FreedomChurch.org>, 3-member, Denied

Under Policy ¶ 4(a)(i), Complainant must also establish that he owns rights to a FREEDOM CHURCH service mark. To that end, Complainant has submitted a mark registration document issued by the state of Florida. But, because such registrations are not subjected to the rigorous examinations required under the United States Patent and Trademark Office, or other national or regional trademark authorities throughout the world, prior Policy panels have not generally recognized state issued mark registrations as probative of mark ownership. The Panel agrees with that reasoning and determines that Complainant’s Florida registration is insufficient to sustain Complainant’s claim to rights in a FREEDOM CHURCH service mark.

Digest Commentary

Digest Vol. 3.25 <DogAndCatsShots.com>, Transfer
Digest Vol. 3.3 <GuaranteedRemoval.com>, Denied, RDNH
Digest Vol. 2.31 <TampaWaterTaxi.com>, Transfer

1.7 ‘First Use in Commerce’

It is well established that the claimed date of first use in commerce on a US trademark registration certificate is, alone, not evidence of common law rights as of that date. Such assertions therefore need to be supported by the same kind and volume of evidence required to demonstrate common law trademark rights, but as of the date of claimed first use in commerce.

Additional Information

Relevant Decisions

Empower Media Partners, LLC v. M. Jarrar, Forum FA2301002030007 (2023), <EmpowerMedia.com>, 3-member, Denied, RDNH

The Panel acknowledges that the Complainant may have had a common law trademark for either or both of these expressions, but the issue for the Panel is whether there is any evidence to support the contention and there is none. It is certainly not evidence that the Complainant stated in its filing for the registered trademark that it had a first use and a first use in commerce from January 3, 1999. It is not evidence because it is now well established that the claimed date of first use in commerce on a US trademark registration certificate is, alone, not evidence of common law rights as of that date.

Equity Trust Company v. Domain Vault / Domain Vault LLC, Forum FA2112001976315, (2022), <equitytrustcompany.com>, Denied

Complainant has provided no evidence that it had acquired unregistered trademark rights prior to Respondent’s registration of the domain name.

Handy Guy Inc. v. Merlin Kauffman, Forum FA2205001998214, <handyguy.com>, 3-member, Denied, RDNH

Nor is the claimed date of first use in the application definitive evidence that the mark actually was used and valid prior to the filing of the application. Rather, as Respondent points out, where there is a dispute between parties as to the validity of a mark in the period prior to the filing date, “a date of use must be established by appropriate evidence. A date of use set forth in an application or registration owned by applicant or registrant is not evidence on behalf of that applicant or registrant.” Trademark Manual of Examining Procedure 903.06 (miscited by Respondent as 903.07).

Franki Global Inc. v. Privacy service provided by Withheld for Privacy ehf / Golden Dream, The Stay Gold Co / Samantha Jurashka, WIPO D2021-2901, <befranky.com>, Denied

The date of first use in commerce claimed on a trademark application is of limited evidentiary value in administrative proceedings brought under the Policy. For the purposes of the present proceeding, this date amounts to a mere assertion which would still require to be suitably evidenced. Absent additional supporting evidence, which is lacking on the present record, the Panel is not prepared to find that the Complainant had unregistered trademark rights in a relevant trademark at the material time.

Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO D2009-1033,<marketwatch.net>, Denied

The dates of first use and first use in commerce claimed on a trademark application do not establish an evidentiary presumption in favor of a trademark registrant. As McCarthy notes: ‘The allegation of a date of first use in a use-based application for registration is not evidence of a date of first use on behalf of an applicant or registrant.’ [footnote omitted] 3 McCarthy on Trademarks and Unfair Competition § 20:28 (4th ed.) McCarthy also notes: ‘In inter partes proceedings, a trademark registration resulting from a use-based application is proof of use only as of its filing date, not of the date of first use alleged in the application.’ [footnote omitted] (Id.)”

Digest Commentary

Digest Vol. 3.11 <empowermedia.com>, Denied, RDNH

1.8 Confusingly Similar

A side-by-side comparison of the domain name and the trademark determines whether the disputed domain name is confusingly similar to a Complainant’s trademark. Mere “similarity” is insufficient under the Policy, it must be “confusing similarity”. Confusing similarity does not depend on evidence of actual confusion by the public. Rather, the question is whether the appearance of the domain name itself causes confusion with the trademark.

Confusing similarity is a higher threshold than mere similarity but in most cases it is not a difficult test to meet. Where a domain name merely adds on a descriptive term such as “shop” or “store” to a distinctive trademark or where a the domain name is a typo of a distinctive mark, Panels will generally find that a domain name is confusingly similar. Where however, the inclusion of additional characters or words results in a new term, a sufficiently different term, conveys a different meaning, or otherwise sufficiently differentiates or distances itself from the trademark, the domain name may not be confusingly similar. Although the first part of the test can be considered preliminary in the sense that only an identical or confusingly similar trademark qualifies for a UDRP and thereby confers “standing” so that the Complainant can proceed onto the second and third parts of the test, it is no more nor less important than the other parts of the test. Panelists should apply an appropriate amount of focus on this part of the test as they do the other parts of the test.

Sometimes Panels may consider broader circumstances of a case to establish confusing similarity such as content of the website, registrant’s conduct, any use of the mark by the Complainant (e.g. use of an abbreviation of the mark). However, “broader circumstances analysis” should be used as an additional factor in assessing confusing similarity rather than a substitute for a confusing similarity test.

Additional Information

Relevant Decisions

Nostrum Oil & Gas Plc v. MERCY 3fold, JOY, WIPO D2024-1519, <zhmnllp.com>, Denied

Here, the only non-disclaimed term of the Complainant’s trademark is “NOSTRUM”, and there is no similarity between the disputed domain name and this term.

Athesia Kalenderverlag GmbH v. Heroux Leslie, WIPO D2024-1590, <harenshop.com>, Transfer

The Panel finds the HARENBERG trademark is recognizable within the disputed domain name, because its dominant part “haren” is included as the first part of the disputed domain name, and the trademark and the disputed domain name share the same structure “haren + [dictionary word]”. The second part of the HARENBERG trademark is the German word for “mountain”, while the second part of the disputed domain name is the dictionary word “shop”. Also, although the addition of other terms (here, “shop”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the HARENBERG trademark for the purposes of the Policy. Accordingly, the disputed domain name is confusingly similar to the HARENBERG trademark for the purposes of the Policy. See WIPO Overview 3.0, sections 1.7 and 1.8. It is also notable that the website at the disputed domain name offers Harenberg calendars and contains the header “& Harenberg Kalender Online Geschaft – Harenshop” (translated in English as “& Harenberg Calendar Online Shop – Harenshop”), which prima facie indicates that the Respondent seeks to target the HARENBERG trademark through the disputed domain name. See section 1.15 of the WIPO Overview 3.0.

The Optimism Foundation v. Feiling Huang, Forum FA2404002095155, <opns.domains>, Denied

To state that the letters “opns” in the disputed domain name are confusingly similar to the trade mark OPTIMISM and that the disputed domain name “incorporates Complainant’s trademarks” is a stretch, since the trade mark OPTIMISM is not at all recognizable within the domain name. The Panel does not agree as a general principle that abbreviations per se can be said to be confusingly similar to a trade mark. Each case has to be considered based on its own facts and argued on its own merits.

Blick Art Materials, LLC v. hai hong, Forum FA2404002092839, <blickdick.com>, Transfer

The Disputed Domain Name, <blickdick.com> is confusingly similar to Complainant’s mark as Respondent merely reverses the order of the words in DICK BLICK and adds a .com gTLD to the end of the mark.

1800TruckWreck, LLC v. Randall MPR / Randall Marketing and Public Relations, Forum FA2404002093210, <1800truckaccident.com>, Denied

When making the assessment under this element, the Panel notes that Complainant’s registered trademark is a relatively descriptive mark, comprising the toll free number “1 800” followed by the descriptive terms “truck” and “wreck”.

Alpha Bank S.A. v. Ehren Schaiberger, WIPO D2024-0818, <alpha.fund>, 3-Member, Denied

The Panel finds that the Disputed Domain Name [alpha.fund] is confusingly similar to the Complainant’s ALPHA BANK trademarks as it reproduces the dominant element of the trademark in question, namely the term “alpha”. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

BFORBANK v. Obada Alzatari, CAC-UDRP-105198 (2023), <bf-bank.com>, Denied

The Complainant has stated that the names BFORBANK and BF-BANK are similar. However, this is not the case. The names are neither visually nor phonetically similar, nor are they conceptually so close that they cannot be distinguished. The concept conveyed by the “BF-BANK” is different to that of the BFORBANK.

Tencent Holdings Limited v. He Huang, Working Venture Capital Inc., WIPO DAI2023-0024, <tencent.ai>, 3-member, Transfer

The Panel finds the entirety of the mark is reproduced within and is alphanumerically identical to the SecondLevel Domain of the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the Respondent suggests that the mark should be compared to the entirety of the disputed domain name, inclusive of the TLD, the TLD is typically viewed as a standard registration requirement and as such is disregarded under the first element page 5 confusing similarity test. WIPO Overview 3.0, section 1.11. In any event, even if the TLD were to be included in the comparison exercise along with the Second-Level Domain, the Complainant’s trademark would remain fully recognizable therein and would thereby pass the test for confusing similarity.

Morgan Stanley v. James Honeygreen, Forum FA2303002035429, <ms-privatewealth.com>, Transfer

The disputed domain name consists the term MS, a common acronym for Complainant’s business name Morgan Stanley and mark MORGAN STANLEY, a hyphen, the descriptive term “private wealth”, and the gTLD .com…Further, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) states under 1.7: “In specific limited instances, … the broader case context such as website content trading off the complainant’s reputation … may support a finding of confusing similarity.” In the instant case, the disputed domain name is used specifically to trade off Complainant’s reputation, because it is used to pass off as Complainant in emails in furtherance of a fraudulent phishing scheme. Such use provides further justification for a finding of confusing similarity to Complainant’s mark.

Fox Factory, Inc. v. Guo Xing, Forum FA2311002071285 <foxsuspensions.com>, 3-member, Transfer

Therefore, the additional word “suspensions” that appears in the Disputed Domain Name does nothing to prevent a finding of confusing similarity – and, in fact, may actually increase confusing similarity because [c]onfusion is only heightened when the generic word added by a respondent is descriptive of a complainant’s goods or services marketed in relation to the mark.” Media West-DMR et al. v. Phil Nagy, WIPO Case No D2005-1322. Because Complainant’s trademarks are registered for use in connection with vehicle suspensions, the panel finds that Complainant has proven the first element of the Policy.

Microtech Knives, Inc. v. Wachira Chaina / Natty?s Store, Forum FA2310002065667, <nattyoutdoorstore.com>, Denied, RDNH

Complainant alleges that the disputed domain name <nattyoutdoorstore.com> is confusingly similar to its registered marks ANTHONY L MARFIONE and OUTBREAK. It is not… Complainant’s assertion that the disputed domain name <nattyoutdoorstore.com> is confusingly similar to its ANTHONY L MARFIONE mark does not pass even a straight-face test, and its assertion that the domain name is confusingly similar to OUTBREAK is not much better.

BOURSORAMA SA v. BRS, CAC-UDRP-103657 (2021), <brs.contact>, Transfer

The Panel takes the view that the threshold required by the First Element of the Policy is met. As a matter of fact the element “BRS” could indeed be considered as an abbreviation of the BOURSORAMA trademark as confirmed also by the registration and use by the Complainant of domain names composed by BRS (see – <brsimg.com>; < brsourama.com >; < brsp.app >). The Panel considers of relevance also the way the disputed domain name is used. The Complainant has submitted evidence that the Respondent used <brs.contact> to impersonate itself as the Complainant

One Freelance Limited v. TrafficTerminal, CAC-UDRP-102537 (2019), <affordablepapers4u.com>, Denied

In the Panel’s view, the scope of the concept of “confusing similarity” (not a mere “similarity) must be taken into account… Internet user’s are aware of the fact that the term “AFFORDABLE PAPERS” is legitimately and commonly used by various subjects on the Internet, both as a part of domain names or within Internet content (e.g. on websites, etc.) and, therefore, that they do not associate this term solely with the Complainant or its business…The Panel believes that for a domain name to be regarded as confusingly similar to the Complainant’s trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the Complainant and/or its services. As it follows from the above, this is not the case.

Digest Commentary

Digest Vol 4.23 <opns.domains>, Denied
Digest Vol. 4.17 <smartcontracts.com>, Transfer
Digest Vol. 4.15 <wynncruelty.com>, Denied
Digest Vol. 4.5 <knp376.com>, Denied, RDNH
Digest Vol. 3.49 <jodii.com>, Denied, RDNH
Digest Vol. 3.44 <nattyoutdoorstore.com>, Denied
Digest Vol. 3.40 <mountainsmoky.com>, Transfer
Digest Vol. 3.32 <fuck3cx.com>, Denied
Digest Vol. 3.25 <xpornonly.com>, Denied
Digest Vol. 3.24 <paihvesshop.com>, Denied
Digest Vol. 3.5 <colombiancoffee.com>, Denied
Digest Vol. 2.37 <kiltandkilts.com>, Denied

1.9 Personal Names

Personal names as such are not protected by the Policy. This is an inherent limitation of the UDRP reflected in the WIPO Final Report 1999 (par. 167) and confirmed later by the “ Report of the Second WIPO Internet Domain Name Process ” 2001 (see in particular section 5 and par. 201): “The most cogent of the arguments against modification of the UDRP is, we believe, the lack of an international norm protecting personal names and the consequent diversity of legal approaches deployed to protect personal names at the national level”.

Therefore, a personal name enjoys protection as an unregistered (common law) trademark, if it has become a trademark-like identifier and has acquired secondary meaning (see also 1.1 and 1.2 above).

Being famous or popular on its own may not be sufficient. Not every famous individual is
engaged in business activity under her/his own name. The use of the personal name for a
commercial enterprise is key. Where a name was used in a political campaign without any
commercial activity, for example, the personal name may not serve as a trademark under common law.

The standard of establishing common law trademark rights for personal names should be the
same as for other marks, namely specific and strong evidence of acquired secondary meaning
rather than mere allegations.

Additional Information

Relevant Decisions

Raymond Dalio v. charles one, Forum FA2406002101828, <raydalio.life>, Transfer

Here, Complainant presents ample evidence of longstanding use, media recognition, and promotional material/advertising that are evidence of secondary meaning. Therefore, the Panel finds that Complainant established common law rights in his RAY DALIO mark, with rights predating the first registration of the disputed domain name.

Izzy Yetnikoff v. 1337 Services LLC, CIIDRC 21873-UDRP (2023), <izzyyetnikoff.com>, Denied

The Panel observes that in the case files there are no specific evidence supporting assertions of acquired distinctiveness is included in the Complaint. In this sense, the Panel verified merely an application filed for “IZZYYETNIKOFF.COM” before the USPTO on September 27, 2023 (annex 2 of the Complaint), was made after the registration of the disputed domain name. On the other hand, documents relating to the registration of Complainant’s law firm called Yetnikoff Law Offices, PLLC (annex 3 and 4 of the Complaint) are merely registrations of a business, failing to prove relevant evidence that the personal name has achieved “secondary meaning”…The Panel understands that the evidence submitted by Complainant is not enough to grant unregistered or common law rights pertaining to the name Izzy Yetnikoff.

Nazan Saatci v. 林得, CAC-UDRP-105526 (2023), <nazansaatci.com>, Transfer

The Complainant as a performer being a Turkish actress and known for her performances in Tokatçi, Ölümsüz and Hulchal and the second runner-up in Miss Asia Pacific beauty pageant in 1983, has amassed over 600 audio recordings of fairy voices and nearly 300 video recordings of different fairy appearances since 2018.

Daniel Tobok v. lubing ta, WIPO No. D2023-2946, <danieltobok.com>, Transfer

In this case, the Panel is satisfied on the evidence provided by the Complainant as summarized above that he has become established, over many years, as a leading expert on cybersecurity matters such that his personal name has become a distinctive identifier of the services that he provides on a commercial basis. The Panel moreover notes that for over a decade the Complainant held the disputed domain name – bearing his unadorned name – which may also be seen to serve as a form of source identifier, and therefore finds that the Complainant has common law rights in the trademark DANIEL TOBOK for the purposes of the Policy.

Tiffany Chhuom, PLLC d/b/a Ethtech, Tiffany Chhuom, Peter Chhuom v. J S, WIPO No. D2023-2930, <peterchhuom.com>, et. al., Denied

While the Policy does not specifically protect personal names, in situations where a personal name that is not registered as a trademark is being used in commerce, a complainant may be able to establish common law or unregistered rights in such personal name. See WIPO Overview 3.0 at section 1.5.2. Proving such common law or unregistered rights requires a complainant to show that the personal name has become a distinctive identifier which consumers associate with the complainant’s goods or services. WIPO Overview 3.0 at section 1.3. Merely having a famous or well-known name without showing that a personal name has been used in a sufficiently trademark source identifying way will not, in and of itself, establish such common law or unregistered rights. See, e.g., Philippe Pierre Dauman v. Diner Business, WIPO Case No. D2013-1255. The touchstone for a complainant to establish common law or unregistered rights in a personal name requires proof that the personal name has achieved “secondary meaning” (even if such only exists in a particular geographical area or market niche). Relevant evidence of such “secondary meaning” typically includes the duration and nature of the use of the personal name as a mark, the amount of sales under the personal name, the nature and extent of advertising using the personal name, consumer surveys, and the degree of actual consumer, industry and media recognition of the personal name. WIPO Overview 3.0 at sections 1.3 and 1.5.2.

Melinda French Gates v. John Clendenon, Forum FA2207002003541, <melindagates.com>, 3-member, Denied

The exhibits accompanying the Complaint detail a handful of events in connection with which Complainant was featured in published reports for her charitable giving in the less than three years running from 1997 through early May of 1999. In one of those instances, Complainant’s name was reported in connection with creation of the Gates Library Foundation, her name not being mentioned in the title of the institution, while in the others Complainant was credited with philanthropic giving jointly with her spouse, rather than in her name alone. In more recent times Complainant appears to have become well known for charitable and public-spirited undertakings in her own right, but our analysis here must be confined to events and circumstances in the timeframe preceding registration of the contested domain name…
On the record before us, therefore, we find that Complainant has not proven that her personal name had ripened into a protectable common law mark by the time Respondent registered the <melindagates.com> domain name. Complainant has thus failed to show that Respondent registered the domain name in bad faith when that occurred in May of 1999.

Roman Polanski v. Matan Uziel, WIPO No. D2022-4360, <imetpolanski.com>, 3-member, Denied

The Panel recognises, however, that it is conventional for the director of films of the kind made by the Complainant to be identified by name in the credits and the Panel infers that has occurred in this case, most likely under his full name. The number of films the Complainant has made over his long career and the large number of prestigious awards he has received, including Academy Awards and Cesar awards, demonstrate an international reputation in his name…In any event, the identity of the director of a motion picture is often an important selling point for the film, as is often the case for the principal actors. The services of such directors are highly sought after. The public’s reception of films made by such directors affects the films they are offered, the budgets and the fees they may command…The Panel finds therefore that the Complainant has sufficiently demonstrated rights in at least his name “Roman Polanski” as an unregistered trademark.

K1 Promotions, LLC v. Jordan Fabel / Brandon Myers, Forum FA2006001900944, <kylermurray.com> and <kylermurray.org>, 3-member, Transfer

Complainant provides articles covering Complainant’s early sports career as a high school athlete as well as Complainant’s subsequent highly successful career and sponsorship deals. The Panel finds this evidence sufficient to establish extensive and continuous use of the mark as well as consumer recognition that Complainant is the source of the relevant goods or services, and finds that Complainant has common law rights in the KYLER MURRAY mark.

Steve Jobs Archive, LLC v. jongsubkim, Forum FA1909001861755, <stevejobs.com>, 3-member, Transfer

The Panel observes that the name ‘Steve Jobs’ has satisfied the factors to consider when determining whether a name has acquired common law trademark protection in the case
Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 (WIPO Dec. 21, 2005), namely: (i) the extent to which the commercial community identifies the individual with the company; (ii) the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company; (iii) the extent of the personal ownership of the company by the individual; (iv) the degree of personal control that the individual exercises over the enterprise; (v) the extent to which the individual is identified with any major achievements of the enterprise; and (vi) whether it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use. As such, the Panel concludes that the name STEVE JOBS acquired common law trademark rights across the globe prior to December 21, 1999, the date of Respondent’s registration for the <stevejobs.com> domain.

Digest Commentary

Digest Vol. 3.23 <DanielImhof .com>, Transfer
Digest Vol. 3.10 <SheldonSolow .com>, et. al., Denied
Digest Vol. 2.40 <melindagates .com>, Denied

2. Rights or Legitimate Interest

2.1 When a Finding as to Rights or Legitimate Interest is Appropriate

A Respondent only needs to show that he has “a” legitimate right or interest. A Respondent does not need to show that his rights or legitimate interests are better (however measured) than those of Complainant.

Panels may be tempted to skip over determining whether a Respondent has rights and a legitimate interest. This is often done for reasons of judicial economy, as strictly speaking a case can be dismissed on one prong of the three-part test and therefore the decision need not address any additional, extraneous grounds. Nevertheless, Panelists should generally make an affirmative finding of rights and legitimate interest if the facts so warrant, due to the implicit obligations of Rule 15(c).

Paragraph 15(c) of the Policy expressly entitles a Respondent to “prove” its rights and legitimate interests and implicitly directs a Panel to make such a finding if so proven:

“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):…”

A Respondent who has had its bona fides challenged and been falsely accused of what essentially amounts to a type of fraud, may deserve some vindication and confirmation of their rights and interests as the Policy provides for.

Additional Information

Relevant Decisions

SCIPIO BIOSCIENCE v. Christian SCIPIO, CAC-UDRP-106285 (2024), <scipio.email>, Denied

The Respondent has served a Response in this UDRP administrative proceeding and provided documentary evidence of his name being ‘Christian Scipio’ since 2020, by virtue of marriage. The coincidence of facts and circumstances in the present case is somewhat perplexing to the Panel: an individual who works in the biotech industry sector in the vicinities (a neighbouring country) acquires, by marriage in 2020, a (rare!) family name which is identical to the name of an unrelated enterprise (incorporated in 2017) which however operates in the same industry sector and owns trade mark rights in such name since 2022. Despite the present case involving a great deal of head-scratching, the Panel cannot fail to note that the Respondent effectively has a right in the name ‘Scipio’ as his surname by virtue of marriage. As unfortunately a reality to the Complainant as it may be, ‘Scipio’ is Respondent’s surname after all. This suffices for the Panel to find in favour of the Respondent under this UDRP Policy ground, namely that the Respondent has rights or legitimate interests in the disputed domain name.

Tox Pressotechnik GmbH & Co. KG v. TFourth LLC, WIPO D2022-3270, <tox.com>, 3-member, Denied, RDNH

The Panel finds that the Respondent has established a legitimate interest in investing in a short domain name, one that also corresponds to a common prefix and suffix and abbreviation found in English dictionaries and used in the medical field.

Hallmark Licensing, LLC and Hallmark Cards, Incorporated v. Privacy Administrator / Anonymize, Inc., Forum FA2104001941032, <mahogany.com>, 3-member, Denied

The Panel finds that the Respondent has rights and a legitimate interest in the Domain Name because it corresponds to a well-known descriptive dictionary word. “Mahogany” is a common and well-known dictionary word used by numerous people and companies.

Sage Global Services Limited v. Narendra Ghimire, Deep Vision Architects, WIPO DAI2023-0010, 3-member, Denied with two concurring opinions

From the concurring opinion of Tony Willoughby: On that basis the Respondent, in my view, acquired at the very least a legitimate interest in respect of the disputed domain name when he purchased it from Sage Health. To find otherwise necessarily involves the Panel branding the Respondent, who has declared under penalty of perjury that he was unaware of the Complainant until he received the Complaint, a liar.

Digest Commentary

Digest Vol. 4.25 <icessna.com>, Transfer
Digest Vol. 4.16 <because.com>, Denied
Digest Vol. 3.41 <revued.com>, Denied
Digest Vol. 3.20 <thursday.com>, Denied, RDNH
Digest Vol. 2.49 <tox.com>, Denied, RDNH
Digest Vol. 2.37 <redgrass.com>, Denied, RDNH

2.2 Legitimate Interest arising from a Registration prior to the Complainant’s Trademark Rights

Without evidence of a complainant’s trademark rights at the time of a respondent’s registration, there is simply no foundation to conclude that a respondent has no rights in the domain name. Logically, a Complainant cannot meet this initial threshold of showing that a respondent has no rights, if the Complainant itself had no demonstrable rights at the time of registration. Indeed, upon registration of the Domain Name, the only person who had any rights or legitimate interest in the Domain Name, was the Respondent since the Complainant had no trademark rights at that time.

Additional Information

Relevant Decisions

Csi Danışmanlık Ve Destek Hizmetleri Anonim Şirketi v. Ghadah M, WIPO No. D2024-2062, <shirvanhotels.com>, 3-member, Denied

From this correspondence, therefore, it appears that the Respondent had adopted SHIRVAN for its hotel more than one month before the Complainant filed its application to register the trademark in Guinea. The Complainant has not provided any evidence, either in the Complaint or its supplemental filing, which would provide a basis for the Panel to conclude the Respondent had somehow got wind of the Complainant’s plans before deciding to rebrand its Jeddah hotel. In these circumstances, there is no basis for the Panel to conclude that the Respondent adopted the name SHIRVAN HOTEL to usurp the Complainant’s rights.
Here, however, the Respondent’s adoption and use appears to have commenced before the Complainant’s rights. In light of the Respondent’s prior use, the Complainant has not, at least on the record before the Panel, sustained its burden of showing that the Respondent’s use was infringing and therefore not legitimate. In these circumstances, therefore, the Respondent has demonstrated it is using the disputed domain name in connection with a bona fide offering of hotel services

WEX Inc. v. Tom Soulanille, Forum FA2204001991413, <wex.com>, Denied, RDNH

On those basic facts, Complainant has to show, prima facie, that Respondent has no right to the domain name and no legitimate interest in it. That seems to the Panel to be an impossible task; prima facie, the Respondent had every right to register the domain name as it was the first in time to come to the table and was clearly not copying another party, as no other party had registered a similar domain name.

Klir Platform Europe Limited v. David Hendrix, CIIDRC 15008-UDRP (2021), <klir.com>, 3-member, Denied, RDNH

The Panel finds the Respondent had a right and legitimate interest when he acquired the Domain Name in 2016, before the Complainant or any related entity had any rights or interest in the KLIR trademark or trade name, and continues to have a legitimate interest in the Domain Name.

Riveron Consulting, L.P. v. Stanley Pace Forum, FA1002001309793, <riveron.com>, Denied

Because the <riveron.com> domain name registration pre-dates Complainant’s trademark registration as well as Complainant’s first use of the RIVERON mark, under Policy 4(a)ii and as discussed below 4(a)iii, Complainant logically needs to show either that it had common law trademark rights in RIVERON at the time the disputed domain name was registered despite the first use date reflected on its USPTO registration, or show that Respondent’s rights and interests in <riveron.com>, although ripe at the time of registration, have since been vitiated.

Digest Commentary

Digest Vol. 3.27 <integrity.com>, Denied, RDNH
Digest Vol. 2.21 <wex.com>, Denied, RDNH

2.3 Nominative Fair Use

The Oki Data case from the early days of the UDRP has been relied upon for criteria as to when a respondent can rely upon a nominative fair use defense. The OKI Data test established the following principles as a part of four-part test, to determine if the disputed Domain Name is being used legitimately:

Respondent must actually be offering the goods or services at issue.
Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.
The site must accurately disclose the registrant’s relationship with the trademark owner.
The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

Although the Oki Data test has consistently been applied since 2001, it is best used as a guide and adapted as necessary by Panels. In other words, it is not enshrined in stone, but rather can be a helpful yardstick by which to measure the good or bad faith of a particular reseller.

More recently, a modified version of the Oki Data test has been adopted by some panelists that adopt a more holistic approach to the Oki Data criteria, in particular whether the absence of a prominent disclaimer necessarily makes the Respondent’s use illegitimate. Under this more holistic and less rigid approach, Panels look at multiple factors including domain name composition, website content that may either confirm or deny affiliation with the Complainant as well as any other circumstances relating to the use of the domain name and Respondent’s business.

It should also be noted that failure to establish legitimate interest under a nominative fair use doctrine does not necessarily mean Respondent’s bad faith.

Additional Information

Relevant Decisions

Textron Innovations Inc. v. Robert Vondersaar, Forum FA2407002106243, <lycomingoverhaul.com>, Denied

On its face, the Respondent’s use of the disputed domain name appears to violate the second element of the Oki Data test. However, the Fluke summary of the Oki Data test does accurately summarize the entirety of element 2 of the Oki Data test. Element 2 of Oki Data states “Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.” (emphasis added) In other words, the primary concern underpinning element 2 is to prevent Respondents from using “the trademark to bait Internet users and then switch them to other goods.” The decision further clarifies that “It is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names.” …
Following this approach, the Panel’s overall assessment is that, on balance, the Respondent’s references to providing support for other non-Complainant engines do not constitute bait-and-switch selling or an attempt to divert Internet users in a manner contrary to the Complainant’s interests.

Law School Admission Council, Inc. v. Nathan Cepelinski / City Jingles, Forum FA2405002098803, <masterlsat.com>, Denied

Contrary to the unsupported assertions in the Complaint that the Domain Name and Respondent’s Website “falsely suggest that they are associated with Complainant” there is nothing in the Respondent’s Website that would imply to a visitor that Respondent is anything other than what it is, namely a business offering a LSAT preparation service independent of Complainant. As noted in the Response, the Respondent’s Website makes no claim, explicit or implicit to be affiliated with the Complainant. There is no obvious assertion that Respondent is connected to Complainant and no apparent use of Complainant’s get-up or copyrighted material on the Respondent’s Website. The Panel accepts the Respondent’s submissions that there is simply no reasonable way to advertise its services as a private LSAT tutor without mentioning “LSAT” on the Respondent’s Website and that and no reasonable consumer would interpret the mere reference to LSAT alone as affiliation with the Complainant…
Indeed, there is no reason to distinguish between nominative fair use principles whether the user is authorized or unauthorized. Either way, if the use is fair and non-confusing, it should be permitted.

Textron Innovations Inc. v. Mike Brannigan / Dquery.io, Forum FA2404002095240, <hiobeech.com> and <bayareabeech.com>, Denied, RDNH

Respondent’s use of the disputed domain names clearly meets the established Oki Data test:
He uses the site to provide services related only to Complainant’s trademarked goods and no other aircraft;
The Website accurately discloses that Respondent has no relationship with Complainant; and
He is not trying to corner the market in domain names relating to the Trademark.
In light of the facts of this case, including in particular the prominent disclaimer on the Website, Complainant ought to have appreciated that it would be unable to establish both the second and third limbs under paragraph 4(a) of the Policy in this proceeding.

Law School Admission Council, Inc. v. Vandalay Media / sean Matthews, Forum FA2405002096289, <lsatdoctor.com>, et. al., Denied

Indeed, there is no reason to distinguish between nominative fair use principles whether the user is authorized or unauthorized. Either way, if the use is fair and non-confusing, it should be permitted.

Law School Admission Council, Inc. v. CALLED Inc, Forum FA2405002096201, <lsatexperts.com>, Transfer

The web site attached to the Domain Name features a log in page with the Complainant’s mark in its masthead. It does not make it clear that there is no connection with the Complainant. The Panel finds this use is deceptive and passing off. As such it cannot amount to the bona fide offering of goods and services.

KT & G Corporation, and Philip Morris Products S.A. v. Ieva Kalnina, WIPO D2024-0555, <lilsolid.com>, Transfer

Furthermore, the Panel does not find the Oki Data criteria to be satisfied in this case. Those criteria, if fulfilled, may enable a respondent such as a reseller or independent service provider to demonstrate rights or legitimate interests in respect a domain name which incorporates a trademark owners’ mark. However, this is a high – if not insurmountable – hurdle in a case where the disputed domain name itself is inherently misleading. In this case the Panel finds the Respondent’s “Legal notice” to fall very far short of the requirement for an accurate and sufficiently prominent disclaimer which makes clear the relationship (or lack thereof) between the website operator and the trademark owner. The disclaimer is accessible only by a link from an inconspicuous item, “Legal notice”, included towards the end of the website footer, which fails in any significant respect to command the attention of the website visitor. The Respondent’s website content itself is (or was prior to the Respondent’s changes) moreover highly suggestive of an affiliation between the website and the Complainants, including the prominent use of the Complainant’s trademarks and official product images, and the Panel finds the “Legal notice” to be in no way effective to offset the misleading impression created by this website content and the choice of the disputed domain name itself. In this case, insofar as the identical disputed domain name communicates a message of affiliation, it does so in a misleading manner.

Airbus SAS v. Ben Riecken, WIPO D2023-3842 <a320guide.com>, Denied

From an inspection of the Respondent’s website at the disputed domain name, the Panel finds that the Respondent is actually offering for sale Airbus A320 training materials, and – at least on the evidence before the Panel – only Airbus A320 training materials, as the disputed domain name implies, not using the Complainant’s trademark to “bait and switch” customers to other products and/or services: the Respondent appears to use the term A320 in a nominative fair use sense to refer to the Airbus A320, adding to it the descriptive term “guide”. WIPO Overview 3.0, section 2.8.2. The Panel expresses some concern that while the Respondent’s website accurately and prominently explains that the Respondent is an independent entity and is not affiliated with the Complainant, this disclaimer may be removed with a single click and then no longer appears.

Thor Tech Inc. v. Eric Kline, WIPO D2023-4275 <airstreammarketplace.com>, Denied with concurring opinion

The Panel finds, however, that Respondent’s has not complied with Oki Data’s requirement that “the site itself must accurately disclose Respondent’s relationship with the Mark owner.” The threshold question is whether the relationship between Complainant and Respondent needed any clarification. The Panel finds that the answer is “yes.” The addition of “marketplace” to Complainant’s Mark is ambiguous. On one hand, “marketplace” is a neutral term that connotes a free market that is not controlled by the participants. Merriam-Webster defines “marketplace” as “an open square or place in a town where markets or public sales are held.”
On the other hand, the conjunction of “marketplace” with the trademark AIRSTREAM does not inherently (and clearly) communicate that the “marketplace” is not affiliated with or sponsored by the trademark owner.
Even though Respondent failed to clarify its relationship with Complainant as required by Oki Data, the Panel is not persuaded that Respondent registered the Disputed Domain Name in bad faith. Panelists frequently observe that the UDRP is meant to address intentional bad faith conduct and not “ordinary” trademark infringement. This case illustrates the distinction.

SEGWAY INC.v. Segway Firenze Srl, ADNDRC HK-2301782 (2023), <ITALYSEGWAYTOURS.COM> , Denied

While such a disclaimer may have assisted in demonstrating that there is no relationship between the parties (and thus assisting to show that consumer confusion is unlikely), lack of such a disclaimer is not fatal to the Respondent’s case. This is because the overwhelming evidence of the Respondent’s legitimate business and fair use of the disputed domain name makes such a disclaimer unnecessary.

Sub-Zero, Inc. v. Daniel Ellis / Joel Gonzalez / SEO Repair Shop / Elite Sub-Zero Repair, Forum FA2210002014882, <elitesubzerorepairsanantonio.com> and <subzerorepairsanantonio.com>, 3-member, Split Decision

It is necessary to consider the underlying policy when deciding whether the second factor is satisfied, namely to avoid “bait and switch” scams (for example if Respondent was using Complainant’s trade mark to advertise a general refrigerator repair services at Respondent’s Website). Respondent’s Website promotes Respondent’s business offering specialist repair services for SUB-ZERO products. It does not refer to any other brand of refrigerator company nor does it link to any other websites where Respondent advertises expertise in repairing any refrigerator brands other than those of Complainant. While Respondent, as stated on Respondent’s Website (not highlighted in any way) may rarely work on other high-end brands, this in no way changes the “character” of the Respondents’ Website and this is not a case where the Domain Name is used for a “bait and switch” exercise. Respondent’s use of the Domain Name for the Respondent’s Website is consistent with the stated purpose which is to advertise that Respondent offers specialized repair services for Complainant’s appliances in the San Antonio area. …
In summary it appears that Respondent operates a legitimate business repairing Complainant’s appliances and there is no evidence that that Respondent is seeking to take advantage of any similarity between the Domain Name and SUB-ZERO Mark beyond that which arises from a truthful use of the SUB-ZERO Mark to describe the services that Respondent’s business provides.

Shopify Inc. v. Don Shine, CIIDRC 17459-UDRP (2022), <expertshopify.com> , Transfer

However, where the Respondent does run afoul of the third part of the test, is the Respondent express statement on his website; “Working with us, official shopify partners…”, thereby apparently falsely claiming that he is in fact an official Shopify partner and thereby affiliated with and authorized by the Complainant.

Fluke Corporation v. Erwin Bryson / fixmyfluke / Nelson Bryson, Forum FA2203001988399, <flukerepair.com> and <fixmyfluke.com>, Denied with dissenting opinion

Majority Opinion:
In view of the said uncertainty, one has to consider the broader facts and circumstances, including the associated website content. In this regard, section 2.5.2 of the WIPO Overview 3.0 provides that some of the factors to be considered in the assessment”. Here, the words which make up the <flukerepair.com> and <fixmyfluke.com> domain names do not definitively trigger an inference of affiliation though they also don’t overtly indicate the contrary.
In sum, the notice on Respondent’s website is clear in conveying the message that no formal affiliation with Complainant exists and the overall content of the site does not give the impression that it originates from or is formally associated with Complainant.
Dissent:
Respondent’s casual third party references to Complainant in the body of its website are not enough to disconnect the implication that Respondent is sponsored by or affiliated with Complainant left by the <flukerepair.com> domain name itself as well as by the look and feel of Respondent’s website. Notably, any ambiguity as to Respondent’s association with Complainant could have been mitigate by Respondent’s use of a less suggestive domain name and/or a website designed to allay the impression that Respondent is in anyway connected with Complainant.

Sub-Zero, Inc. v. Adrian Loughlin / Factor Appliance, Forum FA2101001927129, <centricsubzerorepair.com>, 3-member, Denied

Respondent appears to use the Domain Name for a legitimate purpose and in respect of a bona fide offering of services, namely the repair services of SUB-ZERO-branded products. The repair services do not extend to products of a competing brand(s). Respondent’s referential use of the SUB-ZERO mark appears to be valid and bona fide. Respondent’s website accurately discloses the nature of its business and that it is not affiliated with Complainant. There is nothing in the content of Respondent’s website which suggests affiliation with or endorsement by Complainant. The Panel finds that the disclaimers on Respondent’s website are sufficiently prominent and clear enough such that it would be evident to consumers that Respondent is not affiliated to or endorsed by Complainant. Neither is there any evidence of a pattern of conduct by Respondent of registering domain names containing the trademarks of Complainant or of third parties. The Panel finds that the evidence shows Respondent satisfies the four elements of the Oki Data test. Respondent uses the Domain Name for its business of repair of SUB-ZERO appliances, which is consistent with what is reflected in the Domain Name.

Digest Commentary

Digest Vol. 4.24 <thelsatgenius.com>, Denied
Digest Vol. 3.46 <a320guide.com>, Denied
Digest Vol. 3.43 <italysegwaytours.com>, Denied
Digest Vol. 3.40 <countrycompaniesinsuranceclaimsajusting.com>, Denied, RDNH
Digest Vol. 2.48 <subzerorefrigeratorservice.com>, Denied
Digest Vol. 2.39 <usaainsuranceclaimsadjusting.com>, Denied, RDNH

2.4 Rights and Legitimate Interest in Descriptive and Generic Terms

Where a domain name is descriptive or generic such as a dictionary word, the first person to register it in good faith is entitled to the domain name and this is considered a “legitimate interest.” The first person to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest. Where the domain name and trademark in question are generic – and in particular where they comprise no more than a single, short, common word – the rights/interests inquiry is more likely to favor the domain name owner, absent evidence of targeting (see also 3.3 below). An established domain name resale enterprise that restricts its portfolio in a good faith effort to avoid misleading the public qualifies as a legitimate interest and a defense under Section 4(c)(i)

The system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights which may be applicable to impugn a registration and targeting, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes”

Additional Information

Relevant Decisions

Abnormal Security Corporation v. Narendra Ghimire, Forum FA2405002099733, <abnormal.ai>, 3-member, Denied

The word “abnormal” is an ordinary dictionary word in the English language and therefore, in the absence of compelling evidence of bad intention or other reason to doubt the propriety of the Respondent’s conduct, it has the right to use it and hence a legitimate interest in it. Indeed, all things being equal, anyone has such a right to use such an ordinary dictionary word in a domain name. That conclusion may well be very different, of course, if the word in question, despite being a dictionary word, were also a world famous mark (e.g. “Apple”), although even then the context would be determinative and it may be that, even then, the word was being used simply as a dictionary word rather than as invoking the trademark. In the present case, the Complainant does not show by evidence that either of its marks is famous or prominent, despite their use and recognition. Thus, there is no evidence to rebut the presumption that the Respondent is entitled to use this dictionary and generic word in its domain name.

SMARTCATCH v. Domain, Administrator, NameFind LLC, WIPO D2024-0544 <smartcatch.com>, 3-member, Denied, RDNH

The Panel finds in this case that the mark SMARTCATCH is comprised of two dictionary words, “smart” and “catch”, and that, even in combination, the terms “smartcatch” or “smart catch” have been used in commerce by a variety of different parties – although the Panel is not necessarily in agreement with the Respondent’s contention that the term as a whole is a common English phrase. Aside from the third-party trademark registrations identified by the Respondent, a simple Google search of the term “smartcatch” produces results relating to, for example, fishing technology, food preparation and insect control.

Apnea Sciences Corporation v. Private Domain / Above Privacy, Forum FA2310002065870 <SleepRX.com>, 3-member Panel, Denied, RDNH

Fourthly, although there is some overlap with other grounds showing a right or legitimate interest, UDRP panels have often held that a domain name holder may well have such an interest if the domain name consists of dictionary words and phrases, common expressions, or generic and descriptive terms. Rights will not automatically be found and will often be rejected when the domain name is a commonly used word but is then used to encompass the goods or services of a trademark owner, to target it, or where the domain name is used to promote goods and services that are not covered by the normal meaning of the domain name. But in the present case, the domain name is clearly descriptive of sleep and also the notion of medical prescriptions (rx) for conditions related to sleep, such as sleeplessness and snoring. Thus, the Respondent has a basic right to register and use such a domain name that simply uses the English language in its normal meaning. In that regard, the Respondent has used the domain name to promote what the Complainant refers to as “sleep testing services” which the Panel apprehends to mean tests to assess patients’ sleep patterns which may then lead to prescriptions to alleviate the condition of sleeplessness or snoring…Thus, the Respondent has a right or legitimate interest in the domain name on this ground as well as on the ground that the domain name is being used legitimately. All in all, the evidence shows that the Respondent’s use of the disputed domain name comes within the ambit of the ordinary meaning of the domain name and with no inappropriate uses that might negate that finding.

Oystershell Consumer Health, Inc. v. Titan Networks, CAC-UDRP-103658(2021), <rid.com>, 3-member, Denied with concurring in part and dissenting in part opinion

Acquiring attractive domain names that may by happenstance correspond to current marks and holding them in inventory for future sale on the secondary market has long been held to constitute a right or legitimate interest. And so it is here. Common words are just that and no-one can have a monopoly or any exclusivity in them –as many traders will want to use them for their informational value. Small differences will avoid infringement and confusion must be tolerated by traders who select highly descriptive terms for trademarks.

FPPM INTERNATIONAL / FLORENT POIRIER v. Above Privacy/Mira Holdings, Inc, CAC Case No. 103801 (2021), < PAULMARIUS.COM>, 3-member, Transfer

Ordinarily, generic terms are easy to recognize. Indeed, Respondent draws the Panel’s attention to a number of UDRP decisions involving generic terms consisting of dictionary words, acronyms, and common expressions. These cases are distinguishable from the case here involving <paulmarius.com> in that none of them exhibit the distinctiveness of Complainant’s mark, and as generic terms they might therefore support a right or legitimate interest… Complainant’s ownership of PAUL MARIUS is unquestioned because, if for no other reason, there are no other PAUL MARIUS trademark owners and Respondent has offered no rebuttal to the contrary. The Panel concludes that Complainant is one of a kind.

Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks v. Yui Quan, NAF FA2110001970005 <lumos.com>, 3-member, Denied, RDNH

Respondent has established that the dominant element of the Disputed Domain Name, “lumos,” is generic in the sense of its being commonly used and its meaning easily comprehended. This commonness is established principally by the fact that the term is widely employed as a trademark or service mark by numerous persons offering a variety of goods and services in the US and around the world… Complainant contends that the term “lumos” is not generic or descriptive. It points out that during “the registration process the USPTO never issued an office action or other refusal to register the Lumos Mark on the ground that ‘Lumos’ was descriptive or generic.” It contends that this silence makes perfect sense given that the term is not found in the dictionary. Further, Complaint’s Mark has become incontestable, and under US trademark law (both parties being US residents) the issue of descriptiveness cannot now be raised. Neither argument is persuasive. The USPTO application process occurs in a wholly different environment with its own set of rules, requirements, goals, and incentives. Whereas it is impossible to say that events occurring during the prosecution process or determinations therein made could never be relevant, the Panel does not believe the purported silence of the USPTO on this issue is relevant to this case. The same is true about incontestability. The incontestability of any particular mark does not address its distinctiveness or wide-spread use by others in the market. The greater the number of users of a particular sign, the lesser its strength. It is in this environment that a respondent’s acquisition in connection with its domain name business is to be considered.

Hallmark Licensing, LLC and Hallmark Cards, Incorporated v. Privacy Administrator / Anonymize, Inc., Forum FA2104001941032 <mahogany.com>, 3-member, Denied

Consequently, the Panel finds that the Respondent has rights and a legitimate interest in the Domain Name because it corresponds to a well-known descriptive dictionary word. “Mahogany” is a common and well-known dictionary word used by numerous people and companies.

PLAINWELL OVERSEAS CORP. v. NameTrust, LLC, CAC-UDRP-102207 (2018) <options.events>, 3-member, Denied

The notion that the word “options” in plural in and of itself denotes the Complainant simply does not hold water. As such, the evidence on record indicates that it is more likely than not that the domain name was registered in light of its dictionary meaning, for use in connection with the Respondent’s link-shortening services forming part of the Respondent’s domain name portfolio. There is nothing in the record to suggest that the Respondent’s business model is a pretext to mask a pattern of bad-faith domain name registration, nor is there anything to suggest that the Respondent registered the disputed domain name with the Complainant in mind.

Digest Commentary

Digest Vol. 4.23 <acrobat.ai>, Transfer
Digest Vol. 3.37 <sage.ai>, Denied
Digest Vol. 3.34 <screencast.ai>, Transfer

2.5 Use Not Required for Legitimate Interest

There is no requirement that a domain name registrant use or have any use for the domain name at the time of registration; not even for a domain name that might be similar to an existing trademark. A domain name holder is under no obligation to immediately begin operating a website upon registering the domain name, if he/she can prove legitimate interest otherwise.

Additional Information

Relevant Decisions

GoSecure Inc. v. Billa Bhandari, Forum, FA2107001954083, <gosecure.com>, 3-member, Denied

The Panel notes that Respondent does not deny that the disputed domain name is currently inactive, although its proof does support the contention that for many years it was actively used. Rather, it contends that it has nonetheless continuously used the domain name for email operations… The Panel finds that Respondent’s rebuttal and evidence is persuasive on the issue of rights and legitimate interests. Accordingly, Complainant has not succeeded on this element of the Policy.

Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks v. Yui Quan, NAF FA2110001970005 <lumos.com>, 3-member, Denied, RDNH

While passive holding may be a factor in conjunction with other evidence to counter a respondent’s assertion of right or legitimate interests, it cannot be conclusive by itself as the above cited cases indicate. The Panel notes that Respondent is a professional domainer, and to her the Disputed Domain Name is stock-in-trade, just as a can of soup is for a grocer, an automobile is for an auto dealership, and a computer is for an electronics store. None of these merchants, nor any other, is required to make a functional use of its inventory in order to avoid the risk of it being taken away; Respondent should not be required to do so either. As such, Respondent’s passive holding of the Disputed Domain name is not inconsistent with or fatal to her claim of a legitimate interest. The same reasoning applies to passive holding with respect to the issue of bad faith.

Digest Commentary

Digest Vol. 3.49 <granitegearlab .com>, Denied
Digest Vol. 2.17 <mohu.com>, Transfer
Digest Vol. 2.12 <lionshead.com>, Transfer

2.6 Investing in Domain Names in General

Speculating in and trading in domain names when done without intent to profit from other’s trademarks can in and of itself, constitute a “legitimate interest” under the Policy – even without actually using the domain name in connection with its dictionary meaning.

Speculating in and trading in domain names can indeed constitute a legitimate interest under the Policy. Such a practice may constitute use of the domain name in connection with a bona fide offering of goods or services (i.e. the sale of the domain name itself)

Where a Respondent is in the business of investing in domain names, a legitimate interest may be found since the Complainant’s arguments as to a lack of a legitimate interest, will have been rebutted.

The business of creating and supplying names for new entities is a “legitimate activity in which there are numerous suppliers.

Additional Information

Relevant Decisions

All Star C.V., Converse, Inc. v. Narendra Ghimire, WIPO DCO2024-0014, <converse.co>, 3-member, Transfer

Respondent rightly defends that the Policy does not prohibit a domain name owner from charging a buyer any price it wishes, but that misses the point, which is that, when combined with Respondent’s admitted awareness of the famous Mark, the price is a window into Respondent’s probable intent. The Panel does not deny that there could be purchasers willing to pay the set price based on the dictionary, geographic, or surname meanings, but the Panel finds that this is not probable in the circumstances of the present case. The Panel notes that Respondent has disclosed it purchased the Disputed Domain Name for USD 306, and, the Panel simply finds it implausible that Respondent immediately directed the Disputed Domain Name to Afternic, placing it for sale for approximately USD 300,000, merely in consideration of the dictionary value of the term “converse”.

Academy, Ltd. v. Ramesh Singh, ForumFA2301002026883 <redfield.com>, 3-member, Denied, RDNH

Investing in common-word domain names is a perfectly legitimate business and can qualify as a bona fide offering of goods or services so long as the Respondent did not target a specific complainant or protected mark with a particular domain name…In short, there is nothing in the evidence before the Panel to suggest that Respondent was aware of Complainant or its REDFIELD mark when he acquired the Domain Name, and thus no evidence of targeting.

Sage Global Services Limited v. Narendra Ghimire, Deep Vision Architects, WIPO DAI2023-0010, 3-member, Denied with two concurring opinions

From the concurring opinion of Tony Willoughby
There is no dispute between us that domain name dealing is a legitimate activity. The Respondent purchased the disputed domain name from a legitimate source and there is no evidence that the Respondent has made any use of it save to advertise it for sale, a legitimate use in the context of a legitimate form of business.

ASDA Trade Ltd v. NAMEFIND CAYMAN ISLANDS LTD., CAC-UDRP-103505 <linkon.com> (2021), 3-member, Denied

The Respondent plainly states its business as trading in domain names. Whereas previous decisions under the Policy are not binding, panels nevertheless strive for consistency in the application of the Policy. As many decisions have reaffirmed, trading in domain names is not, in and of itself, illegitimate… Domain names are traded on an open market. Purchase and sale prices are agreed between buyer and seller. It is not a function of the Policy to interfere in such transactions except under the strict terms of the Policy itself. Absent registration and use of a domain name in bad faith, such as the targeting of trademark holders, a respondent may monetise its stock of domain names by way of advertising and may set the asking prices for them.

“V Kontakte” LLC v. zhou cai”, WIPO D2018-2939 <vk.app>, 3-member, Transfer

The Respondent is principally correct in stating that a domain name investor would have a legitimate interest in registering short domain names, including two-letter domain names in appropriate cases, if it does not target others’ trademarks, but in the light of the unchallenged evidence, this is of no help to it here…Moreover, the evidence submitted by the Complainant shows that prior to this proceeding the Respondent contacted the Complainant with the following message: “We are contacting you concerning the domain name ‘vk.app’. We own this domain name and are in the early stages of listing this domain for sale. As you own the corresponding domain name ‘vk.com’, we’d like to offer you the opportunity to purchase this domain name before we offer it for auction. We feel ‘vk.app’ is quite suitable for your online social media mobile application and complements your main domain ‘vk.com’.” The Respondent has submitted no comments on this message…

Digest Commentary

Digest Vol. 4.23 <converse.co>, 3-member, Transfer
Digest Vol. 3.37 <sage.ai>, Denied
Digest Vol. 2.49 <mindgym.com>, Denied, RDNH
Digest Vol. 2.14 <cocochoco.com>, Denied

2.7 Investing in ‘Brandable’ Domain Names

Registering domain names because of their potential value as a brandable domain name is supported by the Policy. The well-established legitimate interest in aggregating and holding domain names for resale consisting of acronyms, dictionary words, or common phrases can be bona fide and also extends to made-up terms which have no dictionary meaning. Registering a made-up domain name because it may in the future be of interest to someone who wants to adopt a new unique brand, can constitute a right and legitimate interest under the Policy.

The business of creating and supplying names for new entities is a legitimate business activity where there are numerous suppliers. Where a domain name investor or branding agency registers a made-up term because of its attractiveness and without knowledge of or intention to target a particular trademark owner, a Complainant will have failed to establish the second element of Paragraph 4(a) of the Policy.

Registering domain names because of their potential value as brandable domain name for a new entrant to the market is supported by the Policy. Even if a term does not appear to be a common dictionary term, if a Respondent’s reason for registration a disputed domain name is its potential value as a brandable domain name, a right and legitimate interest may be found and constitutes a legitimate business model.

Where a Respondent can show that it is in the business of offering brandable domain names for sale and in particular where the Respondent demonstrates a pattern of registering comparable brandable domain names in good faith, a Respondent will have established its rights and legitimate interest under the Policy because the domain name was not registered to profit from or exploit a Complainant’s trademark.

Additional Information

Relevant Decisions

Venderstorm Ventures GmbH & Co. KG v. Domain Administrator, PTB Media Ltd, WIPO D2024-1287, <babista.com>, 3-member, Denied

Turning to the Respondent, it asserts that the disputed domain name was selected because “babista” has valuable qualities, i.e., it is short in length, pronounceable in English and other languages, easy to spell, and brandable for any number of potential uses. The Respondent asserts that the disputed domain name is also evocative of the word “barista” and has a potential connotation of an expert or specialist in babies or babes…In the Panel’s view, in the circumstances of this case, the more plausible available explanation for the registration of the domain name is that it was part of a naming pattern within the Respondent’s portfolio.

AKAPOL S.A. v. Ehren Schaiberger, WIPO D2023-2284 <plasticol.com>, 3-member Panel, Denied

the same principles apply where a domain name reseller registers a “portmanteau” word simply because it considers that word is attractive and likely to be of value. Again this must be done without intent to target a specific trademark holder. For reasons discussed below the Panel considers that the Respondent has simply registered a “portmanteau” word he considered attractive and likely to be of value, and did so without knowledge of the Complainant or the PLASTICOLA trademark.… The range of other domain names the Respondent has registered involving the word “plastic” or ending in “ol” corroborates the Respondent’s account of his reasons for registering the Disputed Domain Name.

Nobli Ltd. v. Cykon Technology Limited, WIPO D2022-2970 <nobli.com>, Denied, RDNH

The disputed domain name consists of a term, “nobli”, that has no meaning in English. The Panel accepts the Respondent’s claim that it registered the disputed domain name because it “may in future be of interest to someone who wanted to adopt a new unique brand”. As explained in section 2.1 of WIPO Overview 3.0, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the Policy. In the Panel’s view, depending on the circumstances, this practice may also extend to made-up phrases.

Limble Solutions, Inc. v. Domain Admin, Alter.com, Inc, WIPO D2022-4900, <limble.com>, 3-member Panel, denied

Respondent’s evidence, including a declaration by its owner signed under oath, shows that it is running a business offering brandable domain names and development services which business model has been recognized by prior UDRP panels as capable of establishing rights or legitimate interests under the Policy, provided the domain name was not registered to profit from and exploit a complainant’s trademark.

Zydus Lifesciences Ltd. (formerly known as Cadila Healthcare Ltd.) v. Jewella Privacy LLC / DNS, Domain Privacy LTD, WIPO D2022-0880, <zydus .com>, 3-member, Denied, RDNH

The term “zydus” is a coined word with no meaning in the English language. It is however a five-letter character string which is pronounceable and likely to be of inherent value as a domain name for that reason. The Panel regards with skepticism the Respondent’s claim that it registered the Disputed Domain Name because of its meaning in Lithuanian. It can however accept it registered it because of its inherent value as a five-letter character string.

Veho Oy Ab v. Jewella Privacy Services, LLC / Domain Manager, Orion Global Assets, WIPO Case No. D2021-4272, <veho.com>, 3-member, Denied

In the Panel’s view, the term “veho” does not appear to be a common dictionary term, however, a plausible explanation for the Respondent’s registration of the disputed domain name is its potential value as a brandable four‑letter domain name.

Finwise BV v. Anne-Jan Hempenius, NameAvenue, WIPO D2020-3135, <finwise.com>, 3-member, Transfer

The Complainant has provided evidence showing that the disputed domain name is not the only domain name in the Respondent’s inventory that is identical to a trademark registered in the European Union. The Respondent’s other domain names include <alterra.net>, <caerus.net>, <claritas.net>, <finova.net>, and <mentis.net>, in each of which the operative element is identical to a European Union registered trademark, while at least one, <hylion.com> is identical to the registered trademark “hyliion” but for a typographical error, and others may be similar to registered trademarks. This evidence indicates that the Respondent is, at best, indifferent to the possibility that his chosen domain names – including the disputed domain name – infringe third party trademark rights.

Stonz Wear Inc. v. Domain Admin, Level2 LLC, WIPO D2019-0217, <stonz.com>, 3-member, Transfer with a Dissenting Opinion

Majority View: The majority fully acknowledges that some consumers may read “stonz” as a homonym of “stones”, and acknowledges the Respondent’s assertion that it registered the disputed domain name because it has a practice of registering domain names that substitute “z” for “s” such as <framez.com>, <rockerz.com>, <roez.com>, <spadez.com> and <cyclez.com> (though even there, Respondent’s argument is a bit inconsistent given that the disputed domain name is <stonz.com>, not <stonez.com>). The majority agrees that a domain name registrant may well have a legitimate interest if it registers a domain name containing a creative spelling of a dictionary word if it then uses the domain name in ways consistent with the dictionary word and does not otherwise infringe, dilute, cybersquat upon, or violate Complainant’s rights. That, though, is not what this Respondent has done. Instead, even before the Respondent acquired the disputed domain name, it targetted the Complainant through its agent with an offer to sell the disputed domain name, not because of its value to the Complainant as a creative spelling of a dictionary word but rather because its value to the Complainant as an exact spelling of its registered trade mark – see section 6D below. That misconduct is the antithesis of a legitimate interest, Dissenting View: Moreover, there is something to be said for panelists recognising that people will adopt and indeed make up novel ways of spelling common words, in some cases to avoid confusion, in other cases because the literal word may not be available to them and in other cases for no reason at all. But provided that the actual meaning is clear, there is no reason why for all practical purposes the ordinary and traditional meaning of the word used should not be accepted and used for determining if the registrant has a right or legitimate interest in the domain name.. it gives rise to a right or legitimate interest in the domain name on the part of the Respondent, unless the Respondent registered it because of the Complainant’s STONZ trademark, of which there is no evidence whatsoever and which seems extremely unlikely, given that the Respondent bought the domain name when its previous registration expired. The right that the Respondent acquired could of course be negated if it then used the domain name to compete with the Complainant, tried to pass itself off as the Complainant, sought to mislead the public or engaged in any other untoward conduct. But not only is there no evidence of any such misbehaviour, the evidence that there is shows the contrary, namely that the Respondent used the domain name to provide legitimate links to items of general interest which is a lawful and regular practice.

Prinker Korea Inc. v. Kwang pyo Kim, ADNDRC KR-1900204 <prinker.com> (2019), 3-member, Denied

Respondent contends that it has rights or legitimate interests in respect of the disputed domain name: i) Respondent acquired and is using the disputed domain name in good faith for his own business purpose. Respondent purchased the disputed domain on February 20, 2018, through namejet.com auction because the disputed domain name is a short, brandable domain name… The Panel finds that Respondent’s response to Complainant’s inquiry to purchase the disputed domain with the offer of US$85,000 itself does not constitute targeting the Complainant’s mark. Respondent put a price on the disputed domain name when Complainant asked him to do so. It is not appropriate for this Panel to say if it was a good, a low or a reasonable price. Respondent did not target Complainant or do anything to do it damage.

Digest Commentary

Digest Vol. 4.29 <babista.com>, Denied
Digest Vol. 4.12 <nestra.com>, Denied
Digest Vol. 3.35 <plasticol .com>, Denied
Digest Vol. 3.13 <limble.com>, Denied
Digest Vol. 2.40 <nobli.com>, Denied
Digest Vol. 2.27 <zydus.com>, Denied, RDNH
Digest Vol. 2.9 <kididoc.com>, Transfer

2.8 Purchasing Domain Names at Public Auction

A domain registrant should be more confident, not less so, that there is no competing trademark claim relating to the domain name that has expired and listed for sale at public auction. These auctions are comprised of expired domain names, i.e. generally domain names that the former registrants no longer wanted and had abandoned.

Where there is no evidence that the Respondent was aware of the Complainant when the domain name expired and came up for public auction among abandoned domain names, targeting will not be found since there is no evidence that the Respondent’s aim in registering the domain name was to exploit the Complainant’s trademark.

Where a Respondent purchases a domain name in the ordinary course of its domain name investment business at public auction because the domain name is appealing, such as a short domain name, or includes a keyword or common phrase that would be in demand, it shows that the Respondent is engaged in a legitimate activity and exercising its undoubted right to buy domain names as part of its business.

Additional Information

Relevant Decisions

Medaxis AG v. Arash Ansari, WIPO D2024-2027, <medaxis.com>, 3-member, Transfer

In conclusion, given that the term in the disputed domain name has the appearance of a trademark rather than that of a dictionary word or phrase, the Respondent, as a domainer, should have shown a high level of attention and particular diligence when acquiring the disputed domain name from an expired domain names auction. In that regard, the Respondent need have looked no further than a brief trademark search or a Google search for the trademark owner’s official website. Indeed, one search or the other would more probably than not have disclosed the Complainant’s interest. It seems unlikely to the Panel (although possible) that the Respondent performed no such investigations, but if he did not, then the Panel considers that he should have done so and that his recklessness or willful blindness to the Complainant’s rights does not absolve the Respondent from the consequences of the Policy.

SRL BOWTEX v. Mira Holdings, WIPO D2024-1632, <bowtex.com>, 3-member, Transfer

In conclusion, given that the term in the disputed domain name has the appearance of a trademark rather than that of a dictionary word or phrase, the Respondent, as a domain name investor, should have shown a level of due diligence when acquiring the disputed domain name from a drop catching auction. In that regard, it need have looked no further than a brief trademark search in the jurisdiction where it is based, and/or a basic search on the history of the disputed domain name, and/or a Google search for the trademark owner’s official website. Indeed, one search or the other would more probably than not have disclosed the Complainant’s interest. It seems implausible to the Panel that the Respondent performed no such investigations especially given its awareness of the Internet Archive, but if it did not, then the Panel considers that it should have done so and that its willful blindness to the Complainant’s rights does not absolve it from the consequences of the Policy.

Apnea Sciences Corporation v. Private Domain / Above Privacy, Forum FA2310002065870, <sleeprx.com>, 3-member, Denied, RDNH

Secondly, the fact that the Respondent bought the domain name on May 15, 2022 also does not negate a finding that the Respondent has a right or legitimate interest in the domain name. Rather, it shows that the Respondent acquired such a right and interest in the domain name from the time it bought it. That is so because the evidence is that the Respondent runs a legitimate business of buying, developing and, where it occurs, selling domain names…
Thus, the panel delivering the three-person unanimous decision in that case was able to say that registering the domain name, far from showing an intent to target the complainant trademark owner, showed that it was part of a legitimate domain name business. That conclusion is equally appropriate in the present case where the Respondent bought the domain name at a public auction in which it took part but in which the Complainant did not. All of these considerations point to the Respondent engaging in a legitimate activity and exercising its undoubted right to buy domain names as part of its business.

Equentia SCF Technologies Private Limited v. Huang ShaoHuai, WIPO D2023-4724, <credable.com> , Denied

On one hand, the Respondent has made a plausible case of a legitimate interest in the disputed domain name which consists of a variation of the word “credible”, also being potentially read as “cred” and “able”.On the other hand, the evidence produced by the Complainant does not show the alleged international reputation of its CREDABLE trademark, also there was no evidence submitted that would indicate that the Respondent was aware of the Complainant when the disputed domain name expired and came up for public auction among abandoned domain names in July 2022.

UHS of Delaware, Inc. v. Private Domain, Above Privacy / Mira Holdings, Inc., WIPO D2022-3835, <prominencehealth.com>, 3-member, Transfer

Respondent viewed this Domain Name as being worth several times the price (USD 755) for which Respondent bought the Domain Name at auction in April 2021. Respondent is correct that acquiring domain names for resale is not in itself an illegitimate undertaking. In this case, however, the Panel concludes that Respondent’s acquisition of this Domain Name is not legitimate. Respondent admittedly conducted a USPTO trademark search, which revealed Complainant’s registered trademark, PROMINENCE HEALTH PLAN. That trademark is obviously very similar to the Domain Name. In the Panel’s view, the similarity is so close that Respondent should have realized that it would be capitalizing on Complainant’s registered trademark by acquiring the Domain Name and selling it for a profit.

iEnterprises, Holdings, LLC v. Private Domain, CAC-UDRP-103374 < icrm.com> (2020), 3-member, Denied

The Respondent bought the disputed domain name at an auction and did not approach the Complainant to speculate on the resale of the domain name. Rather, the Complainant tried to purchase the disputed domain name from the Respondent twice, but the Respondent considered its offer too low. Given the nature of the disputed domain name, and the fact that the Respondent does not appear to be trading off the Complainant or its trademark, the Panel considers that Respondent’s request for the sale of the disputed domain name amounts to a bona fide offering of goods and services.

Digest Commentary

Digest Vol. 4.32 <medaxis.com>, 3-member, Transfer
Digest Vol. 4.30 <bowtex.com>, 3-member, Transfer

2.9 PPC Links and Rights/Legitimate Interest

PPC links related to the subject matter of a domain name can demonstrate rights or legitimate interest in the domain name. Moreover, a Respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the Respondent’s aim in registering the disputed domain name was to profit from and exploit the Complainant’s trademark.

Additional Information

Relevant Decisions

Royal Caribbean Cruises, Ltd. v. Anonymize, Inc. / Synergy Technologies, LLC, D2023-1708 <starofthesea.com>, 3-member, Denied, RDNH

Here, the PPC links on the website associated with the Disputed Domain Name – as shown in Complainant’s own exhibit – are unrelated to Complainant or Complainant’s trademarks and instead are solely related to the religious meaning of the phrase “Star of the Sea.” Accordingly, the Panel finds that Respondent has demonstrated that it has rights or legitimate interests in the Disputed Domain Name.

Hallmark Licensing, LLC and Hallmark Cards, Incorporated v. Privacy Administrator / Anonymize, Inc., Forum FA2104001941032 <mahogany.com>, 3-member, Denied

Complainant rests heavily upon the recent instance of a PPC page which contains links for “Best Prices on Hardwood Flooring” and “Entry Door”, terms which are clearly related to the meaning of the Domain Name. This constitutes bona fide use prior to notice of the dispute pursuant to Paragraph 4(c)(i) of the Policy.

iEnterprises, Holdings, LLC v. Private Domain, CAC-UDRP-103374 <icrm.com> (2020), 3-member, Denied

Previous panels have recognized that the use of a domain name to host a page comprising pay-per-click links would be permissible where the domain name consists of an actual dictionary word or phrase and is used to host pay-per-click links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark. The same obviously applies to domain names consisting of acronyms, like in the subject matter. In the instant case, the links associated with the disputed domain names mostly refer to the principal meaning of the acronym CRM, which usually stands for “Customer Relationship Management” (and related words such as “software”, “salesforce”, etc.). None of the pay-per-click links appearing on the parking page of the disputed domain name refer to the Complainant or to its competitors.

Digest Commentary

Digest Vol. 3.41 <starofthesea.com>, Denied

2.10 Free Speech and Criticism Sites

Paragraph 4(c) (iii) of the UDRP expressly provides an absolute defense if a Respondent can prove that it is making a legitimate noncommercial or fair use of a domain name. Such legitimate noncommercial or fair use can take the form of using a domain name for criticism of a brand or of a company.

UDRP panels should not evaluate the nature of criticism, whether it is correct or incorrect, whether it is defamatory, or whether it is reasonable or outrageous. Rather panels should determine if the domain name was registered and used as a mere sham or “pretextual” rather than being a legitimate exercise of freedom of expression.

UDRP legislative history confirms that the Policy was never intended to restrict legitimate free speech use of domain names: “Domain name registrations that are justified by legitimate free speech rights would likewise not be considered to be abusive”, see par. 172 of “Final Report of the WIPO Internet Domain Name Process”.

Par. 4 (c)(iii) of the Policy does not restrict the safe harbour afforded to domain names legitimately used for free expression or criticism; it applies to all domain names, whether they are identical or confusingly similar to the Complainant’s trademark.

Some panelists have taken the position that a domain name cannot rely upon the safe harbour provisions where the domain name itself does not signal criticism or otherwise sufficiently differentiate itself from the trademark such as – <mark.tld> vs <mark + sucks or another qualifier>.

Other panelists, however, support free speech as a legitimate interest of UDRP respondents whenever the use is genuine, non-commercial and non-pretextual irrespective of domain name composition. The “holistic” approach that recently gained support among some panelists is a variation of the second view.

Under the holistic approach, panels need to consider take a more nuanced approach, taking into a variety of factors into account such as the domain name composition and the website content, as articulated in <scrumsalliance.org> (see below) and in <momsdemand.org> (see below) that takes into account not only the domain name composition but also other factors, including actual use of a domain name and the website content.

Taking into account the totality of factors is appropriate when evaluating whether a Respondent has a right or legitimate interest based upon free speech. The key is whether the use is a ruse rather than a legitimate exercise of free speech. It is immaterial what the Panelist may think of the quality, utility or lawfulness of the exercise, e.g. whether it may be scandalous, not worth protecting, or defamatory. Such issues are beyond the scope of the UDRP, see also Scope of the Policy in 0.1 above.

Additional Information

Relevant Decisions

Tiffany Chhuom, PLLC d/b/a Ethtech, Tiffany Chhuom, Peter Chhuom v. J S, WIPO D2023-2930, <peterchhuom.com> et. al., Denied

The Panel wants to make clear that this factor does not require a panelist to assess the merits of the criticism or whether it is unfounded or defamatory. Rather the touchstone is for the panel to assess as best as it can on the record before it whether the alleged criticism is not merely a pretext for cybersquatting or meant to essentially further a commercial purpose or interest for the benefit of the respondent. By way of example, a website with alleged criticism or commentary with links to other websites or that solicits personal identifying information and email addresses might put into question the genuineness of such criticism and its noncommercial nature.

Watch Tower Bible and Tract Society of Pennsylvania v. Vincent Moore, WIPO D2023-2034, <thejw.org>, Denied

The Panel finds that it would be readily apparent to Internet users (including Jehovah’s Witnesses) upon visiting the Website that it is not the Complainant’s website, but is rather a website critical of the Complainant. In all the circumstances, the Panel finds that a holistic approach assessing the totality of factors in this case supports the Respondent’s claim to a right or legitimate interest for the purposes of the second element under paragraph 4(a) of the Policy.

Robert Half International Inc. v. WeAllSay.Gay / WE ALL SAY LLC, Forum FA2306002050855, <roberthalf.gay>, Transfer

Respondent makes various assertions and arguments to support its entitlement to use and register the Disputed Domain Name, including that the Disputed Domain Name resolves to a website that offers commentary and criticism around the current political attacks towards the LGBTQIA+ community. In particular, Respondent asserts that the purpose of the Disputed Domain Name is to amplify LGBTQIA+ issues and rights through public commentary and corporate criticism and, therefore, Respondent’s use of the Disputed Domain Name is protected by free speech. However, there is simply no connection between the ROBERT HALF Marks and the LGBTQIA+ content found on the resolving webpages. The political content on the resolving website does not make Respondent’s use fair or non-commercial.

Everytown for Gun Safety Action Fund, Inc. v. Contact Privacy Inc. Customer 1249561463 / Steve Coffman, WIPO D2022-0473 <momsdemand.org>, Transfer

While the Panel supports an approach as expressed through an “impersonation test” as set forth in Dover Downs, the Panel nevertheless has reservations about adopting a blanket use of an “impersonation test.” Such an approach if applied too broadly or without looking at other case factors, could in the Panel’s view, create an undue burden on respondents in cases involving parties based only in the United States where a domain name identical to a trademark is being used for a bona fide noncommercial criticism site that would be protected under the First Amendment as applied by some United States federal court decisions…
To the Panel, the use of an “impersonation test” is an important factor to be considered in cases of claimed free expression involving a domain name that is identical or nearly identical to another’s trademark along with other factors that panels have focused on, such as (i) the genuineness and nature of the criticism or commentary, (ii) the possible pretextual nature of the respondent’s website, (iii) the commercial or noncommercial aspects of the respondent’s website, (iv) the nature of the domain name itself potentially including any additional terms or plays on words, (v) the use of disclaimers, and (vi) other factors that could inform whether a respondent is using the disputed domain for bona fide noncommercial criticism concerning a complainant or to take advantage of a complainant’s mark in a bad faith or abusive way for the benefit of a respondent. The Panel believes the approach should be more holistic and focus on the totality of factors and should not necessarily be determined, at least for parties legitimately based in the United States, on one factor alone (albeit one that perhaps sets the scene for the consideration of others).

Roman Polanski v. Matan Uziel, WIPO D2022-4360 <imetpolanski.com>, 3-member, Denied

On balance the Panel finds that the Respondent has successfully demonstrated his website is for the purposes of criticism or “whistleblowing” and not a pretext for cybersquatting. Accordingly, the manner of use qualifies as fair use for the purposes of the Policy. Thus, the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the disputed domain name.

Law Office of Graham C. Fisher, LLC v. Jack Toering / FindLocal, Inc, Forum FA2212002023163, <grahamcfisher.com>, Denied

This Panel takes the view that the goals of the Policy are limited… The purpose of the Policy is limited to rectifying cases of obvious cyber-squatting. Complainant has failed to prove that Respondent lacks a legitimate interest in the Domain Name. In particular, it has failed to prove that Respondent is not entitled to the protections of paragraph 4(c)(iii) of the Policy, which provides that a Respondent has a legitimate interest if it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

Scrum Alliance, LLC v. Contact Privacy Inc. Customer 1247644697 / Matthew Barcomb, WIPO D2021-2932, <scrumsalliance.org>, Denied

This Panel’s dicta in Dover Downs Gaming & Entertainment, Inc., supra, which suggested that only the domain name should be considered in assessing impersonation, does not give sufficient deference to all of the factors that should be considered in assessing impersonation. A more nuanced assessment of all the factors is required. Florida Power & Light Company, supra; cf. Network Automation, Inc. v. Advanced Systems Concepts, 638 F.3d 1137, 1148 (9th Cir. 2011) (likelihood of confusion should be analyzed flexibly as some factors “may emerge as more illuminating on the question of consumer confusion”).

Rechtsanwälte Lampmann, Haberkamm & Rosenbaum Partnerschaft v. Privacy Department, IceNetworks Ltd. / Domain Admin, Whois Privacy Corp.,WIPO D2021-1083, <ihr-law.org>, Transfer

UDRP jurisprudence recognises that the use of a domain name for fair use such as noncommercial free speech would in principle support a respondent’s claim to a legitimate interest under the Policy. See section 2.6 of WIPO Overview 3.0 . However, as explained in section 2.6.1 of WIPO Overview 3.0 , the criticism must be genuine. For the reasons given in section 6F below, it seems likely that any criticism on the website at the disputed domain name did not reflect genuine client experiences but, rather, was part of a scheme to extract money from the Complainant.

Brenntag Holding GmbH v. Domain Admin / Honey Salt Ltd., Forum FA2109001962136 <brenntag.sucks>, 3-member, Transfer

Thus, Respondent cannot invoke the free speech defense as it does not exercise any free speech rights itself. Rather, Respondent is a third party without any direct relationship to person or entity who can invoke rights of free speech, and further Respondent has taken the out-of-context critical comments (while ignoring any accompanying positive comments from the same source) in a manner that is prejudicial and calculated for tarnishment of Complainant’s mark.

Cargotec Oyj/ Cargotec Patenter AB v. Honey Salt ltd, CAC-UDRP-103423 <cargotec.sucks> (2020), 3-member, Transfer with a dissent

Majority:
We two Panelists are in general fully aware of the need to protect free speech and the freedom of ex-pression in domain law cases. But in this special case, it is important to note that the Respondent is not the person who is said to be making the allegedly free speech commentary or criticism…The alleged criticism seems to have been added as an afterthought between that date and the date when the Response was filed, further calling its genuineness into question…The cases apply an “all circumstances” view which the Panel believes is consistent with its own analysis above. Importantly, in each of these cases, the respondent, in whose favour the panel found, was the person seeking to make genuine criticism or to publish genuinely held views/commentary about the complainant. It was not a third party, as in the present case.

Dissent:
The Complainant opposes the public criticism/ criticism of its business and wants to ideally stop or at least to demote it – to protect its reputation. The Respondent and Everything.sucks Inc run a business that facilitates and enables the expression of others.

HAI Global v. Dane Rose, CAC-UDRP-102016 (2018), <humanawarenessinstitute.org>, Denied

The statement in the Jurisprudential Overview as of 2017 is too closely tied to the specific mention of the First Amendment to the US Constitution, and has already been overtaken by a broader range of decisions. Instead, the Panel notes that close attention to the implications of a decision under the UDRP for the ability to criticise reflects an important point in municipal and international law regarding the need to balance property rights with other rights (including freedom of expression, which is famously protected in one way in the US Constitution but by diverse means in many other systems). There is a more promising approach (see e.g. Case 101294 Upwork v Sunny Kumar, at the present Provider) of taking all of the circumstances into account, consistent with the balance between intellectual property rights and freedom of expression, neither of which are absolute in many legal systems (the Panelist in Case 101294 identifies European Union law). The Panel finds this approach an important contribution to the debate, especially in light of the ambiguous language of the latest Jurisprudential Overview.

Digest Commentary

Digest Vol. 4.26 <drmarkfuller.com>, Transfer
Digest Vol. 3.47 <mexico-bariatric-center-warning .com>, Denied
Digest Vol. 3.30 <thejw.org>, Denied
Digest Vol. 3.29 <south32 .com>, Denied
Digest Vol. 3.28 <lumsa.university>, Transfer
Digest Vol. 3.21 <vallhallan .com>, Denied
Digest Vol. 3.20 <SouthWoke .com>, Denied
Digest Vol. 3.3 <grahamcfisher.com>, Denied
Digest Vol. 2.50 <stopspectrum .com> and <spectrumkills .com>, Transfer
Digest Vol. 2.15 <momsdemand.org>, Transfer

3.0 Bad Faith Registration and Use

3.1 And not Or

Both bad faith registration and bad faith use are required under the Policy. These are two distinct concepts and are both integral to a finding of bad faith as understood by the Policy.

The Policy’s requirement and the consensus view since the Policy was implemented in 1999 has been that the conjunctive ‘and’ indicates that there must be bad faith both at the time of registration and subsequently.

A Respondent’s motivation and state of mind at the time of registration is key. A Panel must determine whether at the time of registration, the Respondent targeted a Complainant or its trademark, or at least had the Complainant in mind when it registered the disputed domain name. Although relatively rare, in some instances a Complainant will only allege or prove bad faith use, without bad faith registration in the first place. This is inadequate under the Policy since both bad faith registration and use are required. For example, if a domain name was registered in good faith during the pendency of a business relationship with the Complainant but is later used in bad faith after the business relationship ended, that will generally be insufficient under the Policy (see 3.9 – Prior business relationship).

Additional Information

Relevant Decisions

Oris Holding AG v. On-Ramp Internet Services, WIPO D2024-1708, <oris.com>, Denied

As the Complainant has failed to prove to the Panel’s satisfaction that the disputed domain name was registered in bad faith, it is not necessary to consider the use of the disputed domain name as the point is moot.

Shenzhen Growatt New Energy Co., Ltd. v. Waqas Azfar, ADNDRC HK-2401866 (2024), <growattinverters.com>, Denied

The Respondent’s evidence shows that when he registered the disputed domain name, he was trying to help the Complainant and TCP International FZE to promote the Complainant’s products.
The Complainant must have been aware of the disputed domain name at some point between 2020 and 2022 when the two companies were working closely together. It found no reason to object to the use being put to the website.

South32 Limited v. South32, South32 is a trademarked film company, WIPO D2023-1808 <south32 .com>, 3-member, Denied

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the disputed domain name has been registered in bad faith, and that it is being used in bad faith. These two requirements are conjunctive and each must be proved, on the balance of probabilities, if the Complainant is to carry its burden in connection with the third element of the Policy.

Writera Limited v. Baklan Iaroslav, CAC-UDRP-104234 (2022), <customwritings.co>, Denied

It is clear from the terms of paragraph 4(a)(iii) of the Policy as well as confirmed by numerous decisions under it that the two elements of this third requirement are cumulative; both registration and use in bad faith must be proved for a complaint to succeed.

Toast, Inc. v. Jared Isaacman / Harbortouch, Forum FA2208002007428, <toastpos.com>, Transfer

A significant question in this case is whether the Respondent acquired the disputed domain name before a time when Complainant had demonstrable rights in its TOAST trademark. This invokes the familiar concept that, since Policy ¶ 4(a)(iii) requires proof of both bad faith registration and use, and that if a domain name was acquired by a respondent prior to the coming into existence of a complainant’s trademark rights, targeting of the mark, and thus bad faith registration, is impossible…
The most likely reality is that the domain name was acquired by Respondent very early in 2021. As Complainant’s trademark rights were, by this time, well established through registration and, as the disputed domain name first resolved to the website of Complainant’s competitor in early 2021, the Panel concludes, by a preponderance of the evidence, that Respondent’s acquisition creates a new “registration” and that the disputed domain name was registered by the present Respondent with knowledge of Complainant’s trademark and with the intent of targeting it in bad faith.

GL Concepts, LLC d/b/a Goodlife v. Perfect Privacy, LLC / Amitava Saha, Firstcry, WIPO D2022-0451, <goodlife.com>, Denied, RDNH

The Policy requires the Complainant to establish that the Respondent has both registered and used the disputed domain name in bad faith. Since the Complainant has failed to establish bad faith registration, the Complaint must fail, and it is not necessary to decide whether the disputed domain name has been used in bad faith.

Chrisofix AG v. Sano-Trend Orthoservice GmbH, CAC-UDRP-103529 (2021), <chrisofix.com>, 3-member, Denied

However, applying the requirement that a Complainant show that both registration and use of a disputed domain name is in bad faith, the Panel concluded that the Respondent did not register the disputed domain name in bad faith, taking account of the then agreement between the parties regarding registration of the name, and the purpose for which registration took place, in the context of the Respondent’s then role as a distributor or seller.

Helen of Troy Limited v. Kim Ju Man, Forum FA2112001977582, <oxokorea.com>, Denied

In order to establish bad faith, Complainant must demonstrate that Respondent registered and has used the Disputed Domain Name in bad faith. Both are required.
Complainant has demonstrated that Respondent is using the Disputed Domain Name, which is confusingly similar to Complainant’s Mark, without Complainant’s permission for the purpose of intentionally creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of his website. Indeed, Respondent states he is using the Disputed Domain Name to sell his inventory of Complainant’s products. This conduct falls within the scope of Policy ¶ 4(b)(iv).
However, Respondent’s registration of the Disputed Domain Name on or about May 16, 2016, was not in bad faith.

Digest Commentary

Digest Vol. 4.18 <foodclub.com>
Digest Vol. 4.16 <lifeware .com>
Digest Vol. 3.14 <retailinsite .com>

3.2 Trademark Must Predate Domain Name Registration

UDRP Panels routinely determine that a domain name could not have been registered in bad faith when the registration pre-dates a trademark right. It is axiomatic that a Respondent could not have registered a domain name in bad faith before a Complainant acquired rights in the corresponding trademark.

For bad faith registration to have occurred, the trademark must predate the Respondent’s domain name registration. There is one limited exception to the general rule, namely where the domain name was registered because of “nascent” trademark rights, such as where the Respondent registered the domain name as a result of the Complainant’s announcement of a new corporate name or where the Respondent registered the domain name because of the Complainant’s trademark application.

Additional Information

Relevant Decisions

The New York Times Company v. Zhalgas Abishev, Forum FA2405002096513, <wordlegame.org> and <wordle.game>, 3-member, Transfer

Given the structure of the domain names (both adding the word “game” to Complainant’s mark) and the timing of their registration, only days after the significant media attention given to the game, the Panel is satisfied that Respondent had the Wordle game in mind when registering the domain names. Although Complainant had not then acquired its rights in the game and had not then applied to register its WORDLE trademark, that publicity shows that Mr. Wardle had invented the name of the game and that its popularity was likely to give rise to trademark rights, whether registered or at common law, even if it is unclear whether such rights existed when the domain names were registered. The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Mr. Wardle’s nascent rights in the WORDLE mark when Respondent registered the <wordlegame.org> and <wordle.game> domain names and that Respondent’s intent in registering the domain names was to unfairly capitalize on Complainant’s predecessor’s then nascent trademark rights. This demonstrates registration and use in bad faith.

Tencent Holdings Limited v. CATCHDADDY LLC / Registration Private, ADNDRC HK-2401883 (2024), <lightofmotiram.com>, Transfer

The Respondent registered the disputed domain name very short time after the Complainant applied for its LIGHT OF MOTIRAM trademark. The timing of the registration of the disputed domain name as described in detail above cannot be purely coincidental. It is more likely than not that the Respondent was monitoring the Complainant’s trademark applications, and the disputed domain name was registered in response to the application of the LIGHT OF MOTIRAM trademark. This indicates that the Respondent was targeting the Complainant and its trademark, was well aware of the Complainant and its trademark, and sought to capitalize on it by registering the disputed domain name

South32 Limited v. South32, South32 is a trademarked film company , WIPO D2023-1808 <south32.com>, Denied, 3-member

In all of these circumstances, the Panel considers that it is reasonable on the basis of the present record for it to find on the balance of probabilities that the Respondent is indeed the original registrant of the disputed domain name. Given that finding, there can be no suggestion that the Respondent registered the disputed domain name in the knowledge of the Complainant’s rights and with intent to target these, since they were not in existence at the material date, nor could they be said to be “nascent” or capable of anticipation by the Respondent in any way. Having reached that conclusion, the Panel notes for completeness that it rejects the Complainant’s argument that such a finding should not prevent it from succeeding in the Complaint due to the nature of the remedies under the Policy. In the Panel’s view, the wording of the Policy is plain, calling for registration in bad faith, and the onus of proving this falls upon the Complainant. Registration in bad faith means bad faith at the point of registration, and not at any later date.

Universal Remanufacturing Co. LLC d/b/a Phoenix Chassis v. Super Privacy Service LTD c/o Dynadot and Domain Sales (expired domain caught by auction winner c/o Dynadot), WIPO D2022-3700, <phoenixchassis.com>, Transfer

The timing of the Domain Name registration, a mere four days after the USPTO application was filed, and the fact that the words “phoenix” and “chassis” are an unlikely combination, make the Panel immediately suspicious of Respondent’s motives. Respondent’s failure to explain itself or deny Complainant’s well-pleaded and plausible allegations reinforce the case against Respondent here. Based on the undisputed record here, the Panel concludes, on a balance of probabilities, that Respondent more likely than not had Complainant’s nascent PHOENIX CHASSIS mark in mind when registering the Domain Name.

Redgrass SA v. Domain Admin, HugeDomains.com, WIPO D2022-2433 <redgrass .com>, 3-member, Denied, RDNH

The Respondent acquired the registration of the disputed domain name over two years before the earliest registration of any of the Complainant’s trademarks, which occurred on March 28, 2020. The Panel recalls that, where a disputed domain name was registered before a complainant’s trademark rights accrue, panels will not normally find bad faith on the part of a respondent.

Kampachi Worldwide Holdings, LP v. Registration Private, Domains by Proxy, LLC / Robin Coonen, Blue Ocean Mariculture, LLC, WIPO D2021-0371,<kingkampachi.com>, 3-member, Transfer

Here, everything about Respondent’s actions smell fishy. As discussed above, evidence on record strongly suggests that Respondent registered the disputed domain name based on some kind of inside knowledge of Complainant’s brand name selection plans and nascent trademark rights…On the whole, Respondent’s selection of domain names identical to four of the prospective brand names generated through Complainant’s market study simply seems too extraordinary to be a mere coincidence. As prior UDRP panels have noted, what actually matters here is (a) whether at the time of registration of the domain name the relevant term embodied in the domain name was being (or about to be) used in a trademark sense by the complainant and (b) whether the domain name was registered with knowledge of that use and with the intention of taking advantage of the reputation that had or would attach to that term by reason of that use.

Alfaleads Limited v. Perfect Privacy, LLC / Frank Kube, WIPO D2019-3089 <alfaleads.com>, Denied

Respondent registered the disputed domain name already back in 2012, when Complainant, according to its own contentions, had not yet even started its business, and had not yet acquired any rights in relation to the term “Alfaleads”, either as trademark, domain name, or in any other way. Moreover, the case file does not contain any indication whatsoever that the registration and making use of the disputed domain name at any point of time targeted at Complainant, its business or its ALFALEADS trademark.

Samsung Electronics Co., Ltd. v. Affordable Webhosting, Inc., ADNDRC KR-1900196 <galaxystore.com> (2019), 3-member, Denied, RNDH

The registration of the disputed domain name predates the earliest registration date of the Complainant’s mark, even the first- ever launching of the Complainant’s GALAXY smart phone in 2009, which was obviously at least five years after Respondent registered the disputed domain name.

Digest Commentary

Digest Vol. 3.29 <south32 .com>

3.3 Targeting

The onus is on the Complainant to prove its case and this includes providing evidence of the Respondent’s intention to target a specific Complainant rather than anyone who may have a trademark for the corresponding or similar term. Respondent can show that it registered the domain name in good faith, for example, by showing how the Complainant wasn’t well known and is therefore an unlikely target, or how the value of the domain name is derived from the nature of the term rather than the Complainant, or that the Respondent’s registration fits a pattern of registering comparable domain names for investment purposes. In the absence of evidence that Respondent registered the Domain Name specifically because of the Complainant or that its value was derived exclusively from Complainant’s mark, the Complaint must fail. It is in general essential to a finding of bad faith registration and use under the Policy, that a Respondent must have targeted Complainant or its trade mark, or at least had Complainant in mind, when it registered the disputed domain name.

The key to demonstrating bad faith registration is “targeting”. Targeting is where the Respondent registered the domain name specifically because of a Complainant’s trademark to interfere with the Complainant. Such interference can be for example, to harness misdirected traffic, prevent the Complainant from reflecting its trademark in a corresponding domain name, to sell to the Complainant or a competitor of the Complainant, for fraudulent sales, or phishing.

Targeting can be established by either direct evidence (e.g. content of the website) or circumstantial evidence such as strength of the mark and nature of a disputed domain name (e.g. mark plus a term describing Complainant’s business), timing of registration of a domain name and timing of trademark registration, geographic proximity of the parties. Targeting is easier to prove where the domain name corresponds to a highly distinctive mark primarily associated with one single holder or a well-known mark and less easy to prove where it corresponds to a common term. For example, CITIBANKLOGIN.COM would clearly show targeting of Citi Bank whereas MAHOGANY.COM would likely have been registered for its generic or descriptive meaning than because a greeting card company had adopted this term for a trademark. Absent direct proof that a domain name which has a multitude of meanings and uses, was registered solely for the purpose of profiting from a specific complainant’s trademark rights, there can be no finding of bad faith.

Additional Information

Relevant Decisions

DrFuhrman Online, Inc. v. Jason Crook, WIPO D2023-4432, <eattolive.com>, 3-member, Denied

Even if we assume that Respondent conducted the search before he purchased the disputed domain name, this would not require a finding that Respondent thereafter acted in bad faith when he purchased the disputed domain name. The Panel appreciates Respondent’s candor in disclosing the fact of his Google search and accordingly accepts his assertion that “my only thoughts were that maybe that’s who let the domain expire since its 20 years old maybe he didn’t need it anymore and didn’t think any more about it.” The Panel finds that Respondent’s learning of a 20-year-old book title is not alone enough to put him on notice of Complainant’s rights, especially when considered together with the other circumstances of this case discussed above and below.

OneTab Ltd v. Ankit Oberoi,WIPO No. D2024-2412, <onetab.com>, 3-member, Denied

Paradoxically, the fact that the Respondent doubled his asking price for the disputed domain name upon learning of an enquiry from an interested buyer, unprincipled as it may have been, may point away from the Respondent having targeted the Complainant at the time of initial acquisition of the disputed domain name.

Alpha Bank S.A. v. Ehren Schaiberger, WIPO D2024-0818, <alpha.fund>, 3-member, Denied

In the Panel’s view, the fact that the Disputed Domain Name’s gTLD is “.fund” does not mean that the Respondent is targeting the Complainant. In fact, as evidenced by the Respondent, the term “alpha” appears to be widely used in the specific finance sector and can thus not be exclusively linked to the Complainant or the Complainant’s ALPHA BANK marks. According to the Panel, there is insufficient evidence showing that the Respondent specifically targeted the Complainant or its marks when registering the Disputed Domain Name.

NOMEN International v. Niklas Järvikare, Proaudit Oy, WIPO D2024-0803, <nomenagency.com>, Denied

The issue in the present case turns on the question of whether the Respondent knew of the Complainant and/or its mark when it registered the disputed domain name and whether, in such knowledge, it then proceeded with such registration in order to target the Complainant’s rights unfairly. There is insufficient evidence before the Panel demonstrating that the Respondent might have had any such knowledge at the material time. The only evidence before the Panel from which such knowledge might be inferred is the Complainant’s Google search for the term “nomen”, showing the Complainant’s presence in the first two results. The remainder of the Complainant’s case is based entirely upon conclusory allegations that it or its mark are well-known, which are not supported in the record by any other evidence.

ALTILINK Real Estate Hungary KFT v. Domain Administrator, SK Creations, Inc., WIPO D2023-5401 <nestra.com>, 3-member Panel, denied

Importantly, there is no evidence that the Respondent has targeted the Complainant in any way. There is no evidence of abusive use of the Domain Name. There are several stakeholders globally with an interest in “nestra”.

Tencent Holdings Limited v. He Huang, Working Venture Capital Inc., WIPO DAI2023-0024, <tencent.ai>, 3-member, Transfer

In all of these circumstances, the Panel considers it more probable than not that the Respondent registered the disputed domain name with the primary intent of selling it to the Complainant for an amount in excess of its out of pocket costs as anticipated by paragraph 4(b)(i) of the Policy. The Panel concludes that the Respondent sought to disguise its intent by constructing a pretextual coin collecting business so that it would have a plausible explanation that would avoid the thrust of the Policy should the Complainant approach it. The Respondent would then be in a position to fix a high price for the transfer of the disputed domain name. This business, however, the Panel finds to be merely a pretext for the Respondent’s cybersquatting and in fact supportive of the notion that the disputed domain name was acquired and has been used by the Respondent in bad faith.

Sage Global Services Limited v. Narendra Ghimire, Deep Vision Architects, WIPO DAI2023-0010 <sage.ai>, Denied, 3-member

Even if the Respondent had been aware of the Complainant’s trademark rights, this knowledge would not have necessarily prevented the Respondent from acquiring the disputed domain name in good faith for its common meaning, so long as the disputed domain name is not used by the Respondent in a manner that infringes upon the Complainant’s trademark rights. Obviously, if the Respondent attempts to use the disputed domain name in relation to the Complainant or related software goods or services, the Respondent will cross the line. Intocable, Ltd. v. Paytotake LLC, WIPO Case No. D2016-1048 (“the Intocable case”). In short, knowledge of the existence of a trademark is of no help to the trademark owner unless the domainer is making a use of it indicating that the trademark or its owner is being targeted.

E Group BV v. Justian de Frias, WIPO D2023-5032, <ecosaver.com>, Denied

The verbal component of the Complainant’s ECOSAVERS mark is comprised of two dictionary words that appear to be largely descriptive of the Complainant’s business. The verbal component of the Complainant’s mark is therefore not particularly distinctive inherently, and the Complainant has presented no evidence showing that its mark has acquired distinctiveness or a reputation through use. In cases involving marks that are comprised of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning

Astellas Pharma Inc. v. Sumit Biswas / Astellaz Pharmaceuticals, WIPO D2023-3327, <astellaz.com>, 3-member, Transfer

In the absence of a convincing explanation from the Respondent about how its confusingly similar name came to be adopted in connection with pharmaceutical goods and services, therefore, the Panel infers that the Respondent adopted its name and the disputed domain name to take advantage of their resemblance to the Complainant’s trademark.

Carrefour SA. and Atacadão – Distribuição, Comércio E Indústria LTDA. v. Nikolai P. Golovenkov, WIPO D2023-2576 <atacadão.com>, Denied

Considering the above, and on the balance of probabilities, the Panel finds no reasonable inference may be drawn that the Respondent specifically targeted the Complainant in bad faith to take advantage of the reputation and fame of the Complainant’s mark at the time of registering the disputed domain name. Therefore, the Complainant has not satisfied paragraph 4(a)(iii) of the Policy.

Red Bull GmbH v. Redbull forex, redbulforex, WIPO DIO2023-0027 <redbul.io>, Transfer

In light of the use of a logo similar to the Complainant’s Red Bull logo, the use of a slight misspelling of the Complainant’s name and Mark, as well as the undoubted notoriety of the Mark and the Complainant’s recent activity in the field of NFTs, the Panel considers it most likely that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name.

EBS Enterprises LLC v. Ade Aji / Wired Elite Inc, Forum FA2211002021799, <airsculpting.com>, 3-member, Transfer

Respondent admits that before he registered the <airsculpting.com> domain name, he conducted a trademark search that revealed Complainant’s AIRSCULPT mark. He says a Google search for Air Sculpt showed a number of web sites using AIRSCULPT for cosmetic and plastic surgery (Response Exhibit B). However, that Exhibit shows a search for “air dried sculptures”, not “Air Sculpt”. As noted above, the majority of the results of a Google search for “air sculpting” (Exhibit D to Respondent’s Additional Submission) relate to body contouring treatment, including some that use the word “sculpting” in relation to such treatment. Under these circumstances the Panel finds it likely, on the evidence before it, that, in light of the confusing similarity between Complainant’s AIRSCULPT mark and Respondent’s <airsculpting.com> domain name, many Internet users will mistakenly expect that the domain name and the site to which it resolves are connected with Complainant. Although Respondent’s parked website reflects no mention or reference to Complainant’s business, Respondent could hardly have been unaware of the likelihood of such initial interest confusion when he chose to register the domain name, and the Panel infers that Respondent registered the domain name intending to take advantage of the traffic resulting from this confusion.

Zenith Payments Pty Ltd v. BPW / Mysin Vadim Yurievich, WIPO D2022-3156 <universalgiftcard.org>, Transfer

In the present circumstances the fact that the Domain Name was used to link to the Website, which impersonated the Complainant and which was fraudulent in nature leads the Panel to conclude the registration and use were in bad faith.

TEVA Pharmaceutical Industries Limited v. Privacy service provided by Withheld for Privacy ehf / Oren Harrison, Pacific States Insulation and Acoustical Contracting Inc., WIPO D2022-1977 <tevapharm.careers>, Transfer

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Victron Energy B.V. v. Privacy Administrator, Anonymize Inc. / SARVIX, INC., WIPO D2022-1186, <victron.com>, 3-member, Transfer with Dissenting Opinion

Majority View: All the above leads the majority of the Panel to the conclusion that it is more likely than not that the Respondent has purchased the disputed domain name because of its potential to be resold at a profit mainly to the Complainant or to one of the other parties having rights over the name “Victron”, and that the Respondent has targeted them with the acquisition of the disputed domain name and its subsequent putting up for sale. The fact that more than one entity has been targeted by the Respondent does not mean that such targeting would be legitimate, and the purchase of the disputed domain name with the expectation to set up a bidding war between two trademark owners is plainly a speculative attempt to exploit the trademark significance of the disputed domain name.

Dissenting View: This Panelist believes that the “value” referenced by the Respondent was not an admission that it would be targeting trademark owners to engage in cybersquatting, but rather that given there are several current users of the mark, there potentially could be many other users of the mark in a non-infringing manner… In sum, the majority has found registration and use in bad faith based upon a new generalized targeting standard to conclude that Respondent must have acquired the disputed domain name to “extract profit” from the Complainant or another entity that holds a trademark. But the standard is not a generalized standard, but a very specific one where the Complainant must prove that the Respondent registered the disputed domain name specifically to sell that name to the Complainant. However, there is simply no evidence in the record establishing that.

Matias Eduardo Araya Varela v. Jason Newby, WIPO D2021-4256, <reimex.com>, 3-member, Transfer with Dissenting Opinion

Majority View: The Respondent acquired the disputed domain name knowing about the existence of the Complainant’s trademark, acquiring the disputed domain name in consideration to the disputed domain name identity to the Complainant’s REIMEX mark, as well as its identity or similarity to other brands owned by third parties including or consisting of the term “reimex”. The Respondent acquired the disputed domain name due to the value that he knew it would have for the Complainant and other third parties, due to the fact that the disputed domain name is identical to the Complainant’s trademark and identical or similar to other existing trademarks. The majority of the Panel considers that the fact that the Respondent targeted the Complainant’s trademark in bad faith cannot be cured by the allegation that this target was not alone or exclusively to the Complainant and his trademark, but included as well other third parties’ brands. In this respect, the majority of the Panel finds that the fact that the Respondent targeted more than one trademark does not cure or dilute his existing bad faith in relation to each of the targeted brands. In other words, the Respondent has admitted he had specifically in mind the Complainant and his REIMEX mark when he acquired the disputed domain name; and this fact cannot be cured by the Respondent’s allegation that he had also in mind other potential interested parties in the disputed domain name. Dissenting View: The Panel majority has delivered an opinion forfeiting <reimex.com> to Complainant on a theory of liability that is inconsistent with UDRP jurisprudence. It is based on a subjective conclusion that in registering an expired domain name corresponding to a mark that is multiply used by other parties to market their goods or services Respondent acted in bad faith… This view of the law is a departure from consensus. This is particularly so since there is no evidence that “Respondent’s only purpose [was] to sell the disputed domain name to [Complainant or] a known prior user thereof” (my emphasis). Respondent’s purpose as it alleges in the response is that it recognized an opportunity to add the expired domain name to its portfolio of domain names for possible future sale to any party who might find it attractive for their new brand… The cited cases and the WIPO Overview illustrate the consensus view of the law, namely, to have an actionable claim there must be targeting. The evidence in this record does not support such a claim for the reason that “Reimex” is not a sign associated alone with Complainant. The Panel majority emphasizes the length of time Complainant previously held <reimex.com> before Complainant allowed it to drop. While the Panel majority may find this a compelling and sympathetic fact, it cannot be the legal basis for reclaiming <reimex.com> in a UDRP proceeding. Had “Reimex” truly been a coined word solely associated with this Complainant this Panelist would have joined the majority. This Panelist dissents not because the word is not coined which at some point in the past it may have been but because the coinage has become common property as evidenced by the many who are using it to market their goods or services.

Corning Incorporated v. Domain Admin, HugeDomains.com, WIPO D2021-0549, <corming.com>, 3-member, Denied

Needless to say, it was incumbent on Complainant to establish with evidence that Respondent intentionally targeted Complainant and its CORNING mark, as Complainant contends. However, there is nothing in the record that shows that Respondent registered the disputed domain name to take advantage of Complainant’s claimed rights in CORNING, apart from Complainant’s unsubstantiated assertions which are entitled to no weight.

Sociedad Puerto Industrial Aguadulce S.A. v. AbdulBasit Makrani, WIPO D2019-1378, <aguadulce.com>, 3-member, Denied, RDNH by majority finding

The Complainant must establish that the Respondent had knowledge of an AGUADULCE mark and intent to target such at the point of registration of the disputed domain name. This involves demonstrating that the Complainant (or another co‑existing trademark owner) and/or its rights were of sufficient notoriety at that point, so that it is more likely than not that the Respondent had the requisite knowledge. It is worth noting that merely establishing the Respondent’s likely knowledge of such mark on its own is unlikely to be sufficient to demonstrate registration and use in bad faith, given that the words in the trademark concerned can also serve as a phrase with a non-trademark dictionary meaning… Turning briefly to the Response, the Panel accepts that the term “agua dulce” can represent a dictionary phrase in the Spanish language meaning “sweet water” or, in an alternative and potentially more apt translation, “fresh water”. As a general rule, anyone can register such words in a domain name without transgressing the Policy and one cannot infer without evidence, which is lacking in this case, that one user of such words is necessarily being targeted. Some dictionary words may be so well-known in connection with a particular business or trademark (for example, DELTA, UNITED or APPLE) that the general rule would be displaced but that is not the case here. Similarly, a very specific combination of dictionary words might lead to an inference of targeting, for example, if the disputed domain name had contained the dictionary word “puerto” along with “aguadulce”. However, this is not the case with the Spanish translation of “fresh water” which could be of value to multiple organizations.

ASSOCIATION FRANCAISE CONTRE LES MYOPATHIES v. Yemliha Toker, CAC-UDRP-102229 (2018), <telethon.online>, Denied

In particular, no evidence that the Respondent specifically targeted the Complainant is available in this case. The word “Telethon” is not associated exclusively or primarily with the Complainant and is used by different organizations. From the evidence available in this case there is no indication that the Respondent based in Turkey was aware of the Telethon event organized and conducted by the Complainant in France. There is no evidence to demonstrate that the Complainant’s marks were popular or famous in Turkey. The Complainant did not provide any proof that the Respondent registered the disputed domain name targeting the Complainant specifically and not because of its value and attractiveness as a dictionary word.

Digest Commentary

Digest Vol. 3.44 <doncastercable.com>, Denial without prejudice
Digest Vol. 3.41 <atacadão.com>, Denied
Digest Vol. 3.38 <redbul.io>, Transfer
Digest Vol. 3.37 <sage.ai>, Denied
Digest Vol. 3.4 <airsculpting.com>, Transfer
Digest Vol. 2.14 <reimex.com>, Transfer with a dissent
Digest Vol. 2.4 <revitam.com>, Transfer

3.4 No Constructive Notice Under UDRP and No Duty to Search, Generally

There is no place for the concept of “constructive notice” of trademarks under the Policy. The essence of a Complaint is an allegation of bad faith targeting of the Complainant. For that bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant, the trademark owner. If the registrant is unaware of the existence of the trademark owner, it cannot sensibly be regarded as having any bad faith intentions directed at the Complainant. If the existence of a trademark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would be unjustifiably subject to UDRP proceedings.

It is well established that a respondent is not obliged to search the records of foreign trademark offices and that foreign trademark registrations do not put domestic domain name registrants on constructive notice of foreign trademarks. For example, a trademark registered in Germany does not put a United States respondent on notice of the Complainant’s German trademark.

Some UDRP Panels rely on the “willful blindness” doctrine to establish Respondent’s bad faith when, in Panels’ view, a Respondent fails to undertake good faith efforts to avoid the registration of trademark-abusive domain name. At the same time “willful blindness” should be applied sparingly as the general rule is that bad faith requires actual intent and there is no place in the UDRP for constructive knowledge. Moreover, in any such instances of the application of “willful blindness” it should be strictly limited to very well-known and distinctive marks such that it would be implausible for a Respondent to be unaware of the mark and put the domain name to any good faith use.

Additional Information

Relevant Decisions

ALTILINK Real Estate Hungary KFT v. Domain Administrator, SK Creations, Inc., WIPO . D2023-5401 <nestra.com>, 3-member Panel, denied

The Panel notes that domain name traders buying bulk or automated registrations may have an extra obligation to avoid registration of trademark-abusive domain names, such as using online databases to avoid trademark-abusive registrations. See WIPO Overview 3.0 section 3.2.3. In this case the Respondent asserts it has made such good faith efforts. Based on the case file, the Panel does not believe that the Respondent deliberately has acted under the concept of willful blindness.

Sage Global Services Limited v. Narendra Ghimire, Deep Vision Architects, WIPO DAI2023-0010, <sage.ai>, 3-member, Denied with two concurring opinions

From the concurring opinion of Tony Willoughby:
While some Panels take the view that domainers should conduct trade mark searches in respect of the names they register/acquire, such a view cannot sensibly apply to dictionary words in respect of which there are necessarily innocent, unobjectionable uses of the word/name irrespective of any trade mark registrations which may appear from the search.

Credit du Maroc v. Mira Holdings, Inc., WIPO D2022-4987 <cdmbank.com>, 3-member, Denied

Even though the Respondent is a professional domain name investor, on the facts of this case, the fact that the Respondent did not conduct searches of the Moroccan trademarks register is not evidence of bad faith.
In this case, the Respondent does not seem to have had actual knowledge and should not have constructive knowledge of the contents of the Moroccan register.

Kubota Corporation v. Media Matrix LLC, WIPO D2022-3397, <kubota.net>, 3-member, Transfer with Dissenting Opinion

Majority View:
Professional domainers making bulk acquisitions of domain names should not be held to any lesser standard than any other domain name registrant. The blind registration in bulk of domain names some of which obviously incorporate well reputed marks and their subsequent use to trade off the benefit of the reputation attaching to those marks, without any apparent attempt to mitigate the associated risks, should not be condoned under the Policy.
Dissenting View:
As noted above, in the present case, the Respondent has produced evidence that the word “Kubota” is not distinctive of the Complainant alone and indeed is in common use in several countries in different ways, including as a geographical term in the United States, where the Respondent is located. Under these circumstances, this Panellist is of the opinion that the Respondent’s registration of a large portfolio of domain names based upon the revenue generated by the portfolio, without being aware that the disputed domain name was part of that portfolio, should not be regarded as willful blindness towards the Complainant’s KUBOTA trademark.

Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks v. Yui Quan, NAF FA2110001970005 <lumos.com>, 3-member, Denied, RDNH

Complainant contends that Respondent should be deemed to have had constructive knowledge of Complainant’s Mark because it is federally registered…However, most panels take the opposite view. The limited circumstances under which it may be applied are not present in this case…This Panel believes that the correct approach does not impute to Respondent constructive knowledge of Complainant and Complainant’s Mark.

FPPM INTERNATIONAL / FLORENT POIRIER v. Above Privacy/Mira Holdings, Inc, CAC Case No. 103801 (2021), < paulmarius.com>, 3-member, Transfer

In the panel’s view, where a respondent acquires a domain name lapsed or otherwise corresponding to a trademark that has become distinctive of a complainant’s brand, and where the Complainant is the sole owner of that mark as it is here, a defense that respondent purchased the domain name without knowledge of complainant’s mark, ceases to be persuasive. This is particularly so since, as earlier noted, Complainant tops the Google searches in both versions for “Paul Marius” and Respondent is admittedly a professional domainer. One indicator of genericness is that the mark is actually used by many other users, as appears in the cases Respondent cites. This is not the case here. In fact, Complainant is the sole registrant of PAUL MARIUS. The Panel finds that PAUL MARIUS is not generic, but rather specific to Complainant as the only registered user of the mark.

Digest Commentary

Digest Vol. 4.33 <appscience.app>, Transfer
Digest Vol. 4.6 <christus .org>, Denied
Digest Vol. 3.44 <beds.com>, Denied, RDNH
Digest Vol. 3.28 < dentless.com>, Denied
Digest Vol. 3.23 <siteanalytics .com>, Transfer
Digest Vol. 3.15 <cdmbank .com>, Denied

3.5 Setting a Price and Offering for Sale

If a Respondent has a legitimate interest in a Domain Name, the Respondent is entitled to offer its business asset for sale at market price and this is not bad faith. Where a Respondent has a legitimate interest in a domain name and it forms part of a Respondent’s stock-in-trade, it constitutes “use of the domain name in connection with a bona fide offering of goods or services”. In such circumstances, a Respondent has the right to convey rights in its domain name for whatever price it deems appropriate regardless of the value that a Complainant may ascribe to the domain name.

Selling domain names with commercial value can itself be a bona fide offering of goods or services and a general offer to sell a domain name is not evidence of bad faith absent any specific intent derived from exploitation of the goodwill associated with an incidental trademark. Dealing in domain names in the secondary market is a legitimate trading activity and by its very nature, is speculative. A domain investor usually has the intention of reselling domain names at a price in excess of the purchase price. Some domain names sell and some sit on the shelf unsold. Being a domain name investor is a risky business and is not always profitable but trying to make a profit by reselling domain names is not bad faith per se.

As a lawful registrant, a Respondent has the right to sell a domain name for whatever price it deems appropriate regardless of the value that a Complainant or an appraiser may ascribe to the domain name. Panels are generally ill equipped to judge market prices.

In some cases, an offer for sale can be an indication of bad faith but is not necessarily in and of itself evidence of bad faith having regard to the circumstances. Panels are required, as stated in 4(b)(i) of the Policy, to determine whether an offer to sell is “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.

Factors that may be taken into account in order to determine the “primary purpose” may include for example; a) the distinctiveness of the Complainant’s mark; b) the strength and reputation of the Complainant’s mark on the date of domain name registration; c) the number of third-parties making commercial use of a term that is similar to the Complainant’s mark and/or the term that forms the basis of the disputed domain name; d) the scope of any third-party usage in comparison with that of the Complainant; e) the ownership and usage of the domain name prior to the acquisition by the Respondent, if any, as a possible indication of third-party appeal; f) the nature and composition of the Disputed Domain Name; g) the prior conduct of the Respondent; h) the plausibility of the Respondent’s explanation for originally registering the domain name, such as use of the Disputed Domain Name for Respondent’s own business or any other project; and i) if the Respondent is a domain name investor, whether the Respondent can demonstrate a practice of registering domain names with comparable inherently appealing characteristics or which follow a similar naming pattern.

Panels should exercise considerable caution when attempting to draw an inference from an asking price alone. Panels are typically not experts in valuations in the domain name aftermarket nor do they typically have a clear grasp of the pricing required to support a domain investor business model. An inference drawn from an asking pricing is best treated as confirming or undercutting a finding drawn from other evidence, rather than as the primary basis for a finding. For example, if other evidence indicates that the Respondent registered a domain name primarily for the purpose of targeting the Complainant, an exceptionally high asking price that could reasonably be justified only due to the value of the Complainant’s goodwill could assist in supporting such an inference.

On the other hand, if other evidence suggests that a domain name investor registered the Disputed Domain Name based on a business strategy of registering domain names that fit a similar pattern, if the Respondent can demonstrate that it consistently listed and/or sold such domain names at prices that were similar to that set for the Disputed Domain, then the asking price could support an inference of good faith registration and use.

Even where a Respondent is aware of a Complainant and its marks and solicits them for the purchase of the domain name, bad faith may not necessarily be established if the Respondent can demonstrate, for example, that the primary purpose of the registration was not the Complainant specifically, but rather the universe of numerous parties who all share what is a common term and therefore may all share an interest in the domain name.

Where the sole value of the domain name appears to be due to the use by an existing trademark owner rather than due to its possible appeal to potential new entrants to the marketplace, unless it can be satisfactorily demonstrated that the term is of sufficiently common usage or appeal such that no single trader could reasonably claim exclusive rights to it, then the explanation from the Respondent will likely be unsatisfactory and insufficient to rebut the Complainant’s allegations of bad faith.

Outreach to the Complainant with an offer to sell a domain name is not necessarily evidence of bad faith intent (See also Perspectives 3.3 Targeting). If the Respondent can demonstrate that the registration did not target a particular trademark owner but rather was registered due to its broad appeal and therefore the Respondent reached out to several companies that were identified because the disputed domain name might appeal to them, then the outreach may not support an inference of bad faith targeting.

Additional Information

Relevant Decisions

Young Pharmaceuticals, Inc. v. Xiaopeng Zhou, WIPO D2024-1699, <young.com>, 3-member, Denied, RDNH

Owning a large portfolio of domain names is not bad faith per se. Dealing in domain names in the secondary market is a legitimate trading activity. A domain name investor usually has the intention of reselling domain names at a price in excess of the purchase price…
There is no evidence that the Complainant was singled out as the “real” target of the Respondent. The Respondent cites Royal Caribbean Cruises, Ltd. v. James Booth, BQDN.com, WIPO Case No. D2019-1042 to illustrate the point that a direct approach from a broker does not automatically demonstrate targeting in and of itself. The Panel agrees.

AVM Computersysteme Vertriebs GmbH v. 3DNS Privacy, LLC, John Doe, WIPO D2024-0706, <fritz.box>, 3-member, Transfer

Turning to the fact that the disputed domain name has been offered for sale in a substantial amount, the Panel notes that this in itself could give rise to a finding of registration and use in bad faith in the circumstances of this case. It is clear, taking the disputed domain name as a whole, that it is intended to mimic the Complainant’s internal or private domain name as well as its trademarks. The Panel is satisfied, therefore, that the Respondent is targeting the Complainant, and that while the disputed domain name appears to be being offered for general sale, it is nevertheless clear that the Respondent expects the disputed domain name to be purchased by the Complainant for a substantial sum in the hope of avoiding the threat to its customers of potential name collisions, and that the Respondent has fixed the price accordingly.

YPF S.A. v. Internet Portfolio SA, WIPO DCO2024-0038, <ypf.co>, Denied

The Respondent submits that the disputed domain name was registered due to its interest and appeal as a three-letter domain name. Based on the record of this proceeding, the Panel finds this explanation plausible. Given that three-letter domain names are relatively rare, the Panel is ill-equipped to judge whether the Respondent’s asking price of EUR 10,000 for the disputed domain name better reflects its value to the Complainant or a competitor of the Complainant as a domain name identical to the YPF mark, rather than its potential value to a wider group of third parties as a three-letter acronym.

Calmino group AB v. Domain Administrator, DomainMarket.com, WIPO D2024-1579, <proibs.com>, Denied

In some circumstances, the price of the disputed Domain Name could be a factor that may allow the panel to infer that because only a business of the size of the complainant could or would pay that price, the respondent is targeting the complainant. On the other hand, if the disputed Domain Name in fact is registered without knowledge of the complainant and otherwise in good faith, then setting a high price would be a matter purely for the respondent in view of its business plans.

IBA SA v. Ousmane Ba, WIPO D2023-3619, <iba.com>, Denied

In any event there is nothing inherently wrong in asking a high price for a domain name which is legitimately held and the fact that the Disputed Domain Name is, as the broker put it “a premium domain name” would mean that such a suggestion was not surprising. The Respondent has subsequently indicated to the Complainant that if it wants to purchase the Disputed Domain Name it should make an offer. There is nothing wrong with this. Offering for sale, or inviting offers to purchase, a legitimately held domain name is not per se a bad faith use.

Sage Global Services Limited v. Narendra Ghimire, Deep Vision Architects, WIPO DAI2023-0010, <sage.ai>, 3-member, Denied

Concurrence of Tony Willoughby:
In paragraph 29 the Complainant objects to the exorbitant price being sought for the disputed domain name by the Complainant, but of itself there is nothing objectionable in a seller seeking whatever price he or she likes for a domain name. The bad faith cases registering an exorbitantly high price for a domain name invariably involve some other factor leading to that inference. The only portion of the second case (COBEGA,S.A. v EAGERBIZ,S.L., WIPO Case No. D2003-0375) which has been translated reads: “In fact, it should be noted that several panel decisions have established that the offer of the domain name for sale to the public is an important indication of the existence of a lack of legitimate interest in the domain name.”

Travellers Exchange Corporation Limited v. Erol Basar, WIPO D2023-4023, <travelx.net>, Denied

The Panel has taken note of the use that the Respondent makes of the disputed domain name. The maximum selling price that he is asking for it is much higher (USD 99,999) than his purchase price. The Complainant submits that therefore the Respondent seeks to use its connection with the TRAVELEX brand as a means of enticing a sale, either to the Complainant, or to a competitor of the Complainant. However, the Panel is ill-equipped to judge whether the Respondent’s asking price (which is presented as an opening offer) is more likely than not to reflect the value of the disputed domain name to the Complainant or its competitors as a typographical error (even of a global brand). The Complainant has not, for example, presented arguments or evidence to show that it (or a competitor per UDRP paragraph 4(b)(i)) has been targeted insofar as it alone would be in a position to pay the asking price (based on its turnover) versus other third parties using “travelx” (who may not be in as strong a financial position) who would be incapable of realistically paying the Respondent’s asking price.

Automobili Lamborghini S.p.A. v. Domain Administrator, See PrivacyGuardian.org / Richard Blair, WIPO D2022-1570, <lambo.com>, 3-member, Transfer over a dissent

Majority Opinion:
Third, the very high prices at which the disputed domain name has been offered for sale on the website to which it has resolved (particularly bearing in mind the Respondent’s assertion that prospective purchasers would not have been able to acquire the disputed domain name at the lower prices at which it was offered for sale on the third party platforms) are clearly indicative of the Respondent’s belief that a company might be willing to pay a sum approximating or approaching the exceptionally high sum sought by the Respondent and the very high asking price for the disputed domain name tends to affirm the likelihood of targeting by the Respondent…However, having regard to the very widespread use of the word “Lambo” to denote the Complainant’s vehicles and the likely value of this term to the Complainant, the only conceivable buyer of the disputed domain name at the level of consideration sought by the Respondent is the Complainant or, conceivably, a competitor of it.
Dissent:
Putting the domain name up for sale is the only use to which he has put the domain name and that use is entirely lawful, no matter what the price the seller asks.

Arm Limited v. Harrison Canning, HTC Enterprises, WIPO D2022-1129 <cortexcomputer.com>, Denied

There is no evidence currently before the Panel that suggests the Respondent’s asserted motive for registering the disputed domain name is simply a cloak for some other, mal-intentioned, motive. It is true that the Respondent assigned a “personal value” of USD 20,000 to the disputed domain name, when rejecting the Complainant’s proposal for settlement of the dispute. It seems to the Panel that this “personal value” of USD 20,000 is almost certainly influenced by commercial considerations – that is, it reflects a perception of the disputed domain name’s commercial value, not just the degree of personal attachment the Respondent has to it. However, being influenced by commercial considerations when assigning a value to a domain name is not, of itself, evidence that the holder of the domain name does not have rights or legitimate interests in it. If, as is the situation here, the holder of the domain name makes out a case that they have rights or legitimate interests in it, that case does not fall away simply because the holder places a high – and, perhaps to others, an unrealistic – value on the domain name. In the context of the particular facts of this case, the Panel does not consider that the willingness of the Respondent to transfer the disputed domain name to the Complainant for a sum significantly in excess of his admitted out-of-pocket costs related to the domain name establishes that the Respondent’s motive in registering the disputed domain name was other than the one he asserted and supported with evidence.

Saudi Arabian Mining Company (Ma’aden) v. Fundacion Privacy Services LTD, WIPO D2021-3590, <maaden.com>, Transfer with a dissenting opinion

Majority:
The Respondent saw the sale of the disputed domain name as an opportunity to later sell it to the Complainant at some point in the future for large sums of money, as evidenced by the Respondent’s attempt to sell it for USD 500,000, a price tag clearly directed at a company the size of the Complainant.
Dissent:
Responding to unsolicited offers alone are not evidence of bad faith regardless of how outrageously high the Complainant believes to be the price.

“V Kontakte” LLC v. zhou cai, WIPO D2018-2939, <vk.app>, 3-Member, Transfer

It appears that the Complainant was the first entity to which the Respondent offered the disputed domain name for sale and no evidence has been submitted that the Respondent also offered the disputed domain name to parties other than the Complainant. The content and timing of this message satisfy the Panel that it is more likely than not that the Respondent registered the disputed domain name targeting the Complainant and with an intent to offer it for sale to the Complainant at a high price.

Costa Crociere S.P.A. v. Yoshiki Okada, WIPO D2018-1632, <costa.com>, 3-member, Denied

Turning to the Respondent’s asking price of USD 1 million for the disputed domain name, it is the view of the Panel that, where an investor in domain names legitimately registers a domain name which appreciates in value, it is reasonable to expect the registrant to seek the full price it believes to be achievable for the sale of that name. The Respondent made no approach to the Complainant for 21 years and quoted the price in question in response to an enquiry from the Complainant. In the view of the Panel, the facts of the case overall are more supportive of an inference that the Respondent registered the disputed domain name because of its Spanish dictionary meaning and in the hope that it would appreciate in value generally, rather than with the specific intention of selling it to the Complainant or a competitor of the Complainant for an excessive price.

Digest Commentary

Digest Vol. 4.29 <young.com>, 3-member, Denied, RDNH
Digest Vol. 4.26 <ahnu.com>, Denied
Digest Vol. 3.49 <travelx.net>, Denied
Digest Vol. 2.46 <trx.com>, Transfer

3.6 PPC Advertising and Bad Faith

PPC advertising can be evidence of bad faith use, however it is often misunderstood. PPC advertising can be offered by a Respondent or by a domain name registrar. It can sometimes be difficult to differentiate the two but for the purposes of gauging a Respondent’s bad faith, generally registrar-populated ads done on a default and automatic basis where the Respondent does not receive any remuneration, is not reflective of a Respondent’s intentions in registering or using a domain name in bad faith, particularly where the Respondent was unaware of such PPC or where the Respondent is not a sophisticated domain name registrant. PPC advertisements are often a function of not only the subject matter of the domain name, but also the geographic location of the visitor and the visitor’s past Internet searches and interests derived from cookies stored on the visitor’s computer or known by the visitor’s browser. As such, care must be taken in assuming that what a Complainant sees is the same as what the Respondent or a Panelist sees.

Additional Information

Relevant Decisions

Venderstorm Ventures GmbH & Co. KG v. Domain Administrator, PTB Media Ltd, WIPO D2024-1287, <babista.com>, 3-member, Denied

The Complainant alleges that the Respondent’s recent use of the disputed domain name indicates an intention to trade off the goodwill of the Complainant. It presents screenshots of the landing page associated with the disputed domain name offering the disputed domain name for sale and showing PPC links related to clothing, which resolve to websites of the Complainant’s competitors. The Parties dispute when these links began to appear. Given that the screenshots were taken in January 2024, 19 years after the registration of the disputed domain name, they do not allow the Panel to infer anything regarding the intentions behind the registration of the disputed domain name in 2005.

Toros Tarım Sanayi ve Ticaret Anonim Şirketi v. Rosa Maria Vicente Casado, Bulevar Informatica, S.L., WIPO D2023-5383, <toros.com>, 3-member, Denied, RDNH

In the present case, however, the Respondent has submitted evidence to show that a person in Spain seeking to navigate to “www.toros.com” would not be shown PPC links. Instead, they would be shown the “No sponsors” page described in section 4 above. In these circumstances, the Respondent had no means of knowing the use being made of its disputed domain name. Accordingly, it is not appropriate to attribute to the Respondent liability for conduct which it could not know about.

West Technology Group, LLC v. charafa saliou, charafa saliou, WIPO D2023-4617, <globnewswire.com>, 3-member, Transfer

The Panel also finds that Respondent is using the Disputed Domain Name to generate ad revenue. In the banner at the top of the Website, there is a placeholder for advertisements. The Panel finds that Respondent is using the Disputed Domain Name in bad faith to attract, for commercial gain, Internet users to the Disputed Domain Name by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, or endorsement of Respondent’s website. This is textbook bad faith use.

Royal Caribbean Cruises, Ltd. v. Anonymize, Inc. / Synergy Technologies, LLC, WIPO D2023-1708 <starofthesea .com>, 3-member, Denied, RDNH

the evidence shows that “Star of the Sea” is a known religious reference to the Virgin Mary and that Respondent has registered and used the Disputed Domain Name in connection with a PPC page that contains links unrelated to Complainant or Complainant’s trademarks and instead solely related to the religious meaning of the phrase “Star of the Sea.” Previous panels have found that use of a disputed domain name in connection with a PPC page that provides links connected to a common or dictionary meaning associated with the domain name, and unrelated to a complainant or a complainant’s trademarks does not constitute bad faith.

Zydus Lifesciences Ltd. (formerly known as Cadila Healthcare Ltd.) v. Jewella Privacy LLC / DNS, Domain Privacy LTD, WIPO D2022-0880 <zydus .com>, 3-member, Denied, RDNH

The Complaint rather than placing in evidence a copy of the webpage it relies upon, sought to describe it, but in any event its description of that page is of a generic PPC page without any evidence of any specific targeting. The Panel considers that in circumstances where a domain name has been legitimately acquired for its generic properties, linking that domain name to a parking page which automatically generates links to third party websites based on the generic properties of the domain name does not amount to bad faith use absent any specific targeting of the Complainant. The Complaint describes the Respondent’s website as showing advertisements related to “Zydus Pharma”, “India Pharma” and “Job Vacancies”.” If the Panel is correct that these are algorithmically generated links, and the page was accessed in India (as seems likely) the Panel is not particularly surprised it returned links which may relate to the Complainant. While the presence of “click through” links may in appropriate cases form a basis to show targeting, in the specific circumstances of this case, and in particular without additional supporting evidence of targeting, the facts as described in the Complaint do not in the Panel’s opinion establish that the Respondent was deliberately targeting the Complainant. The Panel therefore concludes that in this case even if the Disputed Domain Name was used in the manner described by the Complainant that does not support any finding of bad faith.

Enterprise Products Partners L.P. v. Domain Admin / Media Matrix LLC, NAF FA2212002025287 <enterpriseproductsllc .com>, 3-member, Denied

There is nothing inherently wrong with operating a pay-per-click website. That becomes wrongful only if the respondent seeks to attract Internet users to its website by creating confusion as to the source, sponsorship, endorsement or affiliation of the website with the complainant. That cannot be proven if the respondent was not aware of the complainant and its rights in the relevant mark. Complainant has failed to prove that Respondent had actual knowledge of Complainant and its marks when it registered the Domain Name or that it has sought to trade upon the goodwill and reputation of Complainant.

Oystershell Consumer Health, Inc. v. Titan Networks, CAC-UDRP-103658 (2021), <rid.com>, 3-Member panel, Denied with concurring in part and dissenting in part

The fact of automatic linking is not to be congealed to a categorical rule. Rather, the majority sees it as a factor among others. In fact, the Respondent has anticipated this argument: “The inclusion of the single Complainant-related link was unintentional and inadvertent and was not placed there by Respondent but rather was apparently automatically generated by the Domain Name’s platform using an algorithm.”

Saudi Arabian Mining Company (Ma’aden) v. Fundacion Privacy Services LTD, WIPO D2021-3590, <maaden.com>, Transfer with a dissenting opinion

Majority View: Over the years, the PPC links on the landing page for the disputed domain name have directed consumers to competitors of the Complainant, including several other mining and construction companies. The Respondent has profited from diversion of Internet users attracted by the likelihood of confusion with the Complainant’s mark and the Complainant’s website “www.maaden.com.sa”. The Respondent is ultimately responsible for the content of its website regardless of how that content is generated. The reason the PPC links point to construction companies is because the Complainant’s mark is synonymous with and prevalent in this sector. If the Respondent was aware of the Complainant’s mark at the time of acquisition, it must also have known that the PPC links would point to the Complainant’s competitors. The Respondent should have ensured that the links pointed towards “metals” or “minerals”, or a blank homepage or otherwise addressed the content of the PPC links, and its failure to do so implies that it understood that the disputed domain name was causing confusion among consumers. Dissenting View: PPC link technology has evolved considerably since its early days where such links were either static, or if they were dynamic, they were based on the content of the site and the domain name itself. Putting the privacy implications aside, today many PPC links display advertisements based on previous search results of the user. In this case, that is what I believe we have here. When visiting the disputed domain name, this Panelist did not get links to the Complainant or to any of its competitors, but rather links that were related to previous searches I performed (one related to my daughter’s college search and another about laptops that I was researching). Therefore, the evidence provided by the Complainant could just as likely have been based on the previous activity of the Complainant as opposed to the use of the domain name to profit off the third-party mark.

Epic Systems Corporation v. Domain Administrator, See PrivacyGuardian.org / CGM Publishing LLC, WIPO D2021-0702, <mychart.org>, 3-member, Transfer

The record is unambiguous that the disputed domain name was used for a pay-per-click site that was linked to advertisements placed by Complainant’s competitors and others connected to the healthcare industry. There is no evidence that Respondent attempted to mitigate this use of the disputed domain name. It is the view of this and previous panels that Respondent cannot disclaim responsibility for the sponsored links, even if automatically generated.

Costa Crociere S.P.A. v. Yoshiki Okada, WIPO D2018-1632, <costa.com>, 3-member, Denied

Concerning the Respondent’s initial use of the disputed domain name, based on the Panel’s own review of archived web pages at “www.archive.org”, the disputed domain name does not appear to have resolved to any active web page until May 22, 2001 and appears on that date to have resolved to a parking page containing links to a wide variety of goods and services which did not including cruising. The more recent use of the disputed domain name, to resolve to cruising-related links, does not therefore appear to have been present at, or for some years after, the date of registration of the disputed domain name.

Digest Commentary

Digest Vol. 3.8 <enterpriseproductsllc .com>, Denied
Digest Vol 2.27 <zydus.com>, Denied, RDNH

3.7 Passive Holding in General

The concept of “passive holding” refers to the “non-use” of a disputed domain name. It originates with the Telstra case in 2000. In this early UDRP case, the Panel attempted to find a basis in the Policy for “bad faith use” when the disputed domain name remained unused and determined “in the circumstances of this particular Complaint, the passive holding by the Respondent amounts to the Respondent acting in bad faith”. The particular facts of the Telstra case have since been construed as the Telstra test and involve five criteria:

(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

Accordingly, “passive holding” is a concept is a product of the Telstra case and for it to apply, the Telstra test must be met. Crucially, the Telstra test requires a strong reputation of the mark and the impossibility of conceiving any plausible or actual good faith use of the particular domain name. Such a determination would generally arise only where the disputed domain name corresponds to a particularly distinctive and famous mark. Where a domain name is unused, it may be considered to be “passively held” but that alone does not amount to bad faith use absent meeting the narrow requirements of the Telstra test.

Panels when considering passive holding, must contemplate whether there is any plausible good faith use for the disputed domain name. Where there is, the Telstra test will not have been met and passive holding will not amount to bad faith use.

Additional Information

Relevant Decisions

Sage Global Services Limited v. Narendra Ghimire, Deep Vision Architects, WIPO DAI2023-0010, <sage.ai>, 3-member, Denied

The Telstra case is long standing but relatively narrow in operation. In that case, the complainant’s trademark was unique and one of the most famous in Australia, the complainant provided substantial evidence of its reputation in Australia, the respondent had an Australian address and was likely aware of the complainant, and the respondent used a fake name (Nuclear Marshmallows) to conceal his or her identity. In the present case, the Complainant has not presented strong evidence to satisfy the test set out in Telstra. Merely asserting that the Complainant has a trademark and that the Respondent has not used the disputed domain name is typically not sufficient to satisfy the Telstra test. Unlike Telstra, the Panel here can consider uses of the disputed domain name that would be in good faith.

Hong Kong Exchanges and Clearing Limited v. Time Cowork Ltd., ADNDRC HK- 2101563, HK-2101564 and HK 2101565, <hkex.com>, <hkex.net> and <hkex.org> (2022), 3-member, Denied

The Panel does not consider that there are no other possible uses of the disputed domain names and, that, therefore, the doctrine of passive holding is not applicable in this case.

Bytedance Ltd v. liu xin, ADNDRC HK-2201645 (20222), <tiktokparati.com>, et., Transfer

The Panel finds evidence in support of the contention that the Complainant’s “TIKTOK” app with a large internet presence through its primary website <tiktok.com> is one of the most popular apps globally in recent years… It is inconceivable that the Respondent would not have known of the Complainant’s “TIKTOK” brand or trademark at the time of registration of the Disputed Domain Names in 2021.

Rosetta Stone Ltd. v. Digital Privacy Corporation / Stuart Thomas, WIPO D2018-2322 <rosettastone.app>, 3-member, Transfer with dissenting opinion

Majority:
The disputed domain name does not resolve to an active website. However, as discussed in section 3.3 of the WIPO Overview 3.0, the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Taking into account the circumstances of this case, the majority of the Panel accepts that many of these factors are present in this dispute. There is no dispute between the Parties that the ROSETTA STONE trademark is well known, and the Respondent has not presented evidence of any actual or contemplated good faith use of the disputed domain name.
Dissent:
In that regard, the principle discerned from Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003 is clearly not applicable in the present case, as the evidence is unequivocal that the Respondent intended to make an active and entirely legitimate use of the domain name, in clear contrast with the situation in the Telstra case, where that was not the intention of the registrant.

Digest Commentary

Digest Vol. 4.2 <tractus.com>, Denied
Digest Vol. 3.26 <terravita.shop>, Denied

3.8 Applying the Passive Holding Doctrine in the Absence of a Response

Where the Telstra doctrine of passive holding is relied upon by a Complainant, the Panel will firstly have to determine whether the Complainant has provided sufficient evidence to meet the test and in particular, whether it has proven that there are no plausible good faith uses for the domain name. If a Complainant fails to provide such evidence, then a Panelist may dismiss the Complaint for failing to meet the burden of proof. A Panelist also has additional options for how to proceed. A Panelist could conduct limited factual research of public records such as a Google and trademark search in order to determine whether there are any third party or common uses of the corresponding term. A Panelist could alternatively issue a Procedural Order requesting evidence of the implausibility of good faith use, however such an approach, especially in the absence of a Response, could be viewed as unfairly favoring the Complainant by assisting it in correcting its case. Lastly, a Panelist could dismiss the Complaint ‘without prejudice’ thereby affording the Complainant the opportunity to rectify its Complaint by refiling and thereby provide the Respondent with a fresh opportunity to decide whether to defend or not based upon the new record.

Additional Information

Relevant Decisions

Biofarma v. Taiwo Oni, CAC-UDRP-106585 (2024), <wegocoveram.com>, Denied

The Complainant relied on the “passive holding doctrine” and one of the important criteria of passive holding is “the implausibility of any good faith use to which the domain name may be put“. The Panel conducted its own independent research for the term “wegocoveram” in “Google” in accordance with Rule 10 of the UDRP Rules and sec. 4.8 of WIPO Overview 3.0. … As described in the Procedural Factors section above, the Panel, keeping in mind the limitations of the “passive holding doctrine”, the Complainant’s burden of proof even in default cases (see also sec. 4.3 of WIPO Overview 3.0) and a limited scope of the UDRP as confirmed, inter alia, in the ICANN “Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy” (see par. 4.1 c.), conducted its own “Google” searches for the exact match of the second level domain – “wegocoveram” that contained both results prior to the date of creation of the disputed domain name (March 31, 2022) and on the actual date of the search (July 8, 2024). … Yet the Complainant fails to explain why the disputed domain name does not have plausible good faith use and the Complainant failed to argue that point even in its additional submissions noting only that “the probability of a good faith use of the disputed domain name is still low”. Based on the above, it appears that there is a plausibility of good faith use of the disputed domain name.

Klarna Bank AB v. Bezdetko Ilya Semenovich, CAC-UDRP-105153 (2023), <klarna-sofort.com>, Transfer

iii) the implausibility of any good faith use to which the disputed domain name may be put – the Panel does not find any circumstances under which the Respondent could legitimately use the disputed domain name that is so closely associated with the Complainant, its “Klarna” trademark and “The Klarna Group” business. Any possible explanation of a potential legitimate use is solely within the Respondent’s knowledge and the Respondent failed to respond and provide any explanations.

Laboratoire Terravita v. Sasha Antanasov, Terra Vita, WIPO D2023-3130, <terravita.shop>, Denied

The Panel’s own limited Internet searches for “terravita” reveal that there are many third parties that use TERRAVITA as a trade mark… In the circumstances, factors (i) and (iv) of the passive holding doctrine are against the Complainant. Given that the onus is on the Complainant to prove its case on balance of probabilities regardless of the Respondent’s default, the Panel finds that there is insufficient evidence of bad faith targeting of the Complainant.

Digest Commentary

Digest Vol. 4.30 <qwikqlik.com>, Transfer
Digest Vol. 4.29 <wegocoveram.com>, Denied
Digest Vol. 4.21 <fairmont.group>, Transfer
Digest Vol. 4.9 <barnessa.com>, Transfer
Digest Vol 4.3 <hackensackmeridianhealth.xyz>, Denied
Digest Vol 3.36 <terravita.shop>, Denied
Digest Vol 3.21 <fbsolution.info>, Transfer

3.9 Prior Business Relationship

Panels often determine that disputes involving parties with a prior business relationship, where the involvement of a domain name is ancillary to the main issues in dispute, are outside of the proper scope of the UDRP. The evidentiary and legal issues that are required to resolve such a complex dispute may not be appropriate to the very narrow scope of the Policy and would best be dealt with in a forum with more robust evidentiary tools including witnesses, cross-examination, discovery, etc. As such, the dispute may be inappropriate for adjudication under the Policy.

Even if a Panel were inclined to consider the dispute within the scope of the UDRP, the circumstances of such disputes may involve a domain name that was registered in good faith in furtherance of the mutual business relationship and then, according to the Complainant, repurposed for a bad faith use after the dissolution of the business relationship. Since the UDRP requires demonstrating both bad faith registration and use (see 3.1 And not Or), under such circumstances the Complaint would typically fail the bad faith conjunctive requirement.

Yet the existence of a prior business relationship between the parties does not necessarily require a finding that a dispute is outside the scope of the Policy, or that the Disputed Domain Name was registered in good faith. Circumstances that may serve to demonstrate a registration in bad faith include evidence that the registration of the disputed domain name occurred after a dispute has arisen in the business relationship or that the Respondent failed to follow the Complainant’s instructions to initially register the disputed domain name with the Complainant’s contact information.

Additional Information

Relevant Decisions

FONAR Corporation v. Admin, Domain, Forum FA2404002094549, <standupmri.com>, Denied

The Panel observes that the Complainant omitted to mention relevant information about its relationship with the Respondent in its Complaint… As to the assessment of the subsequent use of the Disputed Domain Name, the Panel finds that the evolution and potential end of the relationship/agreement between the Parties remain unclear. Therefore, it is impossible for the Panel to take an informed decision on the good or bad faith character of the Respondent’s use of the Disputed Domain Name. Such assessment would rather fall within the jurisdiction of the appropriate local or national courts.

Emerson Electric Co. v. Ed Morrissey / Integrity, Forum FA2402002084365, <emersontower.com>, Transfer

Additionally, given the prior business relationship between the parties (Respondent, located in the same city of Complainant, had provided marketing consultancy services to Complainant), it is inconceivable that Respondent could have registered the domain name confusingly similar to Complainant’s EMERSON trademark for a mere chance without actual knowledge of the Complainant, its business and its rights in the renown EMERSON trademark and the intention to exploit such reputation by diverting traffic away from Complainant’s website or to tarnish such mark or to prevent Complainant from owning the disputed domain name.

Kostel, LLC and Constantin Calugher v. mohamad atef, Forum FA2405002100428, <alternativepods.com>, 3-Member, Denied

Two court cases involving these parties, the same business relationship they previously shared and the domain name are currently pending…In this case, control of the domain name is central to the other remedies sought in the court cases, as it is the only means by which the parties’ customers can gain access to the parties’ retail outlets. More importantly, resolving the domain name issue in this case necessarily involves sorting through the same competing factual allegations that will determine the other issues in those cases. The UDRP was intended to resolve cases of clearly abusive registrations… This case arises out of the dissolution of a previous business relationship. As such it is outside the scope of the UDRP, and resolving the factual issues involved in this matter is well beyond the limited means available for that purpose under the UDRP.

Need Pty Ltd, Need Essentials IP Pty Ltd, Ryan Scanlon v. Steven Hay, LooseLabel, WIPO No. D2024-1491, <needessentialseu.com> and <needessentialsuk.com>, 3-member, Denied

In the absence of any contrary arguments or evidence, the above statements of the Complainants support a conclusion that they have given their consent (whether explicitly, or in light of the distributorship) for the registration and ownership of the disputed domain names by the Respondent and for their use by the Respondent for the distribution of the Complainants’ products in the European Union and the United Kingdom. The situation changed after the termination in 2023 of the distributorship, when the Respondent’s continued use the disputed domain names to sell its remaining stocks of the Complainants’ products was objected to by the Complainants, but this does not necessarily mean that the registration in 2016 of the disputed domain names was made in bad faith.

Manhattan Review, Inc. v. Nishin Kolakaluri, WIPO D2023-4940, <manhattanreviewglobal.com> and <manrevglobal.com>, Transfer

This case presents somewhat differently from the typical case under the Policy involving prior business relations between a complainant and a respondent. In the typical case, the domain name concerned is usually registered at the outset of the parties’ business discussions or at least during the currency of the commercial agreement between them with the intention that it be used in furtherance of certain mutual business purposes. In many such cases, it can be difficult for a complainant to show that such a domain name registration was probably motivated by bad faith, not only due to the passage of time but also because it can be difficult to impute a bad faith motivation to a person who appears to be engaging in prima facie good faith commercial activities. Here, the disputed domain names were only registered by the Respondent a decade after the Respondent’s company had ceased to make payments in terms of the franchise agreement.

Liqui-Moly GmbH, Meguin GmbH & Co. KG Mineraloelwerke v. Registration Private, Domains By Proxy, LLC / Sayed Zainul Islam, Sadia Zain Shah Meguin Auto Panels LLC, Naseem Shah, WIPO No. D2022-0011, <meguin.com>, 3-member, Transfer

This is a complex case, with relevant dealings stretching over 10 years, with many disputed factual issues…In this case, the Panel considers that, despite having many facts, it is suitable for determination under the Policy. The parties raising many difficult issues does not necessarily make the dispute unsuitable for resolution under the Policy.

Chrisofix AG v. Sano-Trend Orthoservice GmbH, CAC-UDRP-103529 (2021) chrisofix.com, 3-member, Denied

However, applying the requirement that a Complainant show that both registration and use of a disputed domain name is in bad faith, the Panel concluded that the Respondent did not register the disputed domain name in bad faith, taking account of the then agreement between the parties regarding registration of the name, and the purpose for which registration took place, in the context of the Respondent’s then role as a distributor or seller.

Xerafy (Shanghai) Co., Ltd. v. Dennis KHOO / Khoo Hock Chuan / personal, Forum FA1905001843266, <xerafy.com> and <xerafy.co>, 3-member, Transfer

Complainant also contends that because Respondent was not only an employee, but CEO of Complainant, there is little question that he knew of Complainant’s rights in its marks XERAFY and XERAFY VERIFY. QUANTIFY, when he registered the disputed domain names in his own name without Complainant’s permission. By registering the disputed domain names with knowledge of Complainant’s rights in its marks, Respondent acted in bad faith. UDRP panels have consistently held that registration of a trademark-related domain name by an employee with knowledge of the trademark owner’s rights in the mark constitutes bad faith.

Digest Commentary

Digest Vol. 4.21 <puntoblum .com>, Denied
Digest Vol. 4.20 <lubuntu .net> , Denied, RDNH
Digest Vol. 3.29 <lofficielarabia .com>, Denied

4.0 RDNH

4.1 Obligation of Panelists to Consider RDNH

Declarations of Reverse Domain Name Hijacking play a critical role in the UDRP by deterring abusive use of the Policy and preserving the integrity of the UDRP for legitimate claims. A Panel will not have satisfactorily discharged its duty under the UDRP without an express consideration of RDNH where the facts and circumstances warrant. This is so, not just because of Rule 15(e) which requires a Panel to consider RDNH, but also because RDNH is essentially a kind of “counterclaim” that the Respondent is entitled to adjudication of. Indeed, it has been considered expressly “unfair” to deprive a Respondent of the adjudication of its request for a finding of RDNH – even when the Complainant purports to withdraw its Complaint, as the parties are to be treated “equally” under Paragraph 10(b) of the Rules. Even when RDNH is not expressly requested by a Respondent – indeed even in ‘no response’ cases – a Panelist must still consider RDNH where appropriate. Where an RDNH request or circumstance exists, a Complainant may not even be permitted to withdraw its Complaint and thereby avoid an RDNH finding.

Additional Information

Relevant Decisions

Daily Workout Apps, LLC v. Abhinash Reddy Bellamkonda / MYRALABS LIMITED, Forum FA2404002091710, <dailyworkouts.com>, Denied, RDNH

Although Respondent did not specifically seek a finding of RDNH, “it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH.” WIPO Overview 4.16. Rather, it is the Panel’s obligation to enter a finding of RDNH when the evidence supports such a finding.

Neurocog Pty Ltd v. Domain Administrator, CentralNic Ltd, WIPO D2024-1076, <neurocog.com>, Denied, RDNH, No Response

It is the Panel’s obligation to consider whether a finding of RDNH is appropriate even if the Respondent has not requested such a finding, and even in the absence of a Response.

Innoviti Technologies Private Limited v. Richard Cardenas, INNOVITI S.A.S., WIPO DCO2023-0108, Denied, RDNH, No Response

The Panel is unfortunately left with the distinct impression that the Complainant and/or its representatives will have been well aware that the Respondent’s Website indicated the Respondent was carrying out a bona fide business and chose not to tell the Panel that was the case. The Panel should be able to rely upon the certification given in the Complaint and deplores what appears to be an attempt to mislead the Panel. The only sanction available to the Panel is to make a finding of Reverse Domain Name Hijacking and the Panel so finds.

Everiii & Partners International Co. Ltd. v. Nien Chen, Hearty Creative Inc., ADNDRC HK-2301847, <startupislandtaiwan.com>, Denied with RDNH

The Complainant cannot even justify itself saying, for example, that it ignored the Policy and the well-established UDRP case law. Parties are free to self-represent themselves in UDRP disputes, but they also have to bear the consequences of not seeking appropriate legal counsel. This is particularly true considering that the Policy has been in place for 25 years and the decisions rendered by UDRP panels are publicly available.

Vantage Solutions, LLC v. zhu yan, FA2312002076392, <knp376.com>, Denied, RDNH, No Response

The Respondent did not reply to this Complaint. However the failures in this Complaint inevitably bring considerations of Reverse Domain Name Hijacking into question.

Digest Commentary

Digest Vol. 4.7 <innoviti.com.co>, Denied, RDNH, no response
Digest Vol. 3.47 <b4banking.com>, Denied, RDNH considered, not granted
Digest Vol. 2.38 <veripro.com>, Denied, RDNH
Digest Vol. 2.37 <kosmos.com>, Denied, RDNH
Digest Vol. 2.28 <openbots.com>, Denied, RDNH not considered
Digest Vol 2.27 <bfd.com>, Denied, RDNH considered, not granted
Digest Vol. 2.18 <hdt.com>, Denied, RDNH not considered
Digest Vol. 2.15 <bartko.com>, Denied, RDNH, no response
Digest Vol. 2.9 <usgreens.com>, Denied, RDNH not considered

4.2 When a Finding of RDNH is Appropriate

RDNH can take many forms. The website, RDNH.com tracks RDNH cases and categorizes them by type. There have been over 500 RDNH cases to-date. For example, there are so-called “Plan B” cases, i.e. using the Policy after failing in the marketplace to acquire a disputed domain name TOBAM v. M. Thestrup / Best Identity, WIPO Case No. D2016-1990). There are “selling price gripe” cases such as Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653, where the Complainant’s only real complaint was the Respondent’s selling price. A species of this kind of case is where the Complainant commences a UDRP to increase leverage in negotiations. This has been called a “highly improper purpose” in BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1811.There are “fatally weak” cases such as Zenni Optical, LLC. v. DNS Administrator / Cykon Technology Limited, WIPO Case No. D2009-1594, where the Complainant should have known that its case was fatally weak due to the absence of evidence of targeting. There are “breach of certification” cases such as Pick Enterprises, Inc. v. Domains by Proxy, LLC, WIPO Case No D2012-1555, where RDNH is found because the Complainant breached its certification of completeness and accuracy. One of the most common types of RDNH is where a Complainant brought a Complaint despite the fact that it knew or ought to have known that it could not succeed since the Complainant’s trademark rights post-date the domain name registration, such as Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM (WIPO Case No. D2006-0905).

It is important to remember that Rule 15(e) provides very broad parameters for a finding of a bad faith by a Complaint. Indeed, RDNH per se, is considered by the Rules to be merely a single example of the type of Complaint that can be brought in bad faith.

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The Rules define “Reverse Domain Name Hijacking” as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Accordingly, aside from attempting to unjustly deprive a Respondent of a domain name (RDNH), harassment is enumerated as well, but a Panel can find that a Complaint was brought in bad faith for any number of appropriate reasons.

Sometimes, if not more often than not, it is the Complainant’s counsel that is primarily responsible for filing an abusive complaint. This was the case in Sothys Auriac v. Nonie Creme, WIPO Case No. D2022-3862 where the Panel noted that the fault likely lies solely with the Complainant’s counsel.

Additional Information

Relevant Decisions

Young Pharmaceuticals, Inc. v. Xiaopeng Zhou, WIPO D2024-1699, <young.com>, 3-member, Denied, RDNH

This dispute involved a domain name that is a dictionary word and common surname. In the circumstances, one would expect that the Complainant would have provided substantial evidence of both the fame of its trademark and the bad faith conduct of the Respondent. Instead, the Complainant relies upon older outdated cases, and those in which the fame of the trademark concerned was established and makes exaggerated arguments. For example, to say that the Respondent selected the disputed domain name “at least to disrupt the business of Complainant” is a statement not supported by any evidence, and to assert that it is not possible to conceive any legitimate use of the disputed domain name is simply nonsense.

Alpha Bank S.A. v. Ehren Schaiberger, WIPO D2024-0818, <alpha.fund>, 3-Member, Denied, Declined to make RDNH finding

In the case at hand, the Panel finds no evidence that the Complaint was brought in bad faith. The Complainant has valid trademark rights and seems to have been legitimately convinced that, when registering the Disputed Domain Name, the Respondent was targeting the Complainant. The Complainant may have erroneously believed that the registration of the Disputed Domain Name for resale purposes constitutes a strong argument in support of bad faith together with the fact that the Disputed Domain Name was registered under a gTLD which may be related to its financial activities.

BFORBANK v. Hassen Kadhim, CAC-UDRP 106448 (2024) <biorbank.com>, Denied, RDNH

In the present case, the Complainant must have been aware that it filed a copy of its website in English, while its actual website is only available in French, which is an indication of the Complainant not being entirely truthful as it did not mention this and offer an explanation. While the Panel does not give much weight to this, the Complainant’s arguments were further merely based on its allegation that the Respondent was a cyber squatter, without real evidence and ignoring facts which could point in a different direction, such as the contents of the website which was already available at the time of the Complaint, the parties’ possibly different markets, and without contacting the Respondent first to obtain a better understanding of the facts.

Sonata Software Limited v. Narendra Ghimire, Deep Vision Architects, WIPO DAI2023-0051, <sonata.ai>, 3-member, Declined to make RDNH finding

The Complainant’s SONATA trade mark was registered before the disputed domain name, at least in a number of jurisdictions outside of the United States, and used in trade for over 30 years prior to registration of the disputed domain name…On balance, it is not implausible that the Complainant formed a sincere view that the disputed domain name constituted cybersquatting. It cannot be said that it is more likely than not that the Complainant acted with some ulterior purpose in mind, rather than genuinely believing the disputed domain name to constitute cybersquatting.

DNVB, Inc. d/b/a Thursday Boot Company v. Larry Angell, ZombieCorp LLC (aka Uncrate LLC), WIPO D2023-0532, <thursday.com>, Denied, RDNH

Here, the Panel determines that a finding of RDNH against Complainant is proper. Complainant, represented by counsel, brought its Complaint with clear knowledge that Respondent had registered the Domain Name long before Complainant and its trademarks existed.

Handy Guy Inc. v. Merlin Kauffman, Forum FA2205001998214, <handyguy.com>, 3-member, Denied, RDNH

In the face of these facts, if Complainant wanted this domain name, it should have bought it. Indeed, it tried to buy it, but rejected Respondent’s $10,000 offer as exorbitant. Whether that price is too high or not, it is Respondent’s prerogative to set the price for a domain name in which it has rights. Complainant’s resort to the UDRP is a classic “Plan B” UDRP that reflects bad faith abuse of the UDRP by Complainant.

Matias Eduardo Araya Varela v. Jason Newby, WIPO D2021-4256, <reimex.com>, 3-member, Transfer with Dissenting Opinion

Majority View against RDNH: The Respondent alleges that the Complaint was filed in bad faith, indicating that the Complainant thought that the price for the disputed domain name was too high, and preferred to file the Complaint to attempt to acquire it. On the contrary, the Complainant indicates that he contacted the Respondent requesting the transfer of the disputed domain name, only in an effort to find out its price, obtain information and evidence for the Complaint. The majority of the Panel considers that the Complainant’s conduct is not uncommon. The Complainant evidently and understandably wanted to recover the disputed domain name (which appears to have been owned by the Complainant and used in connection to his business prior to its acquisition by the Respondent for more than 12 years). It is not uncommon, to contact the owner of a domain name before filing a Complaint under the UDRP, in order to find information for the preparation of the Complaint. Minority View in favor of RDNH: On the issue of reverse domain name hijacking, the record reflects that Complainant reached out to Respondent to purchase the domain name, and then finding that the price was unacceptable commenced this UDRP proceeding. This is generally regarded as a Plan B scheme that supports sanctioning complainant. In this case, Complainant most likely genuinely believed that because it was the prior registrant of the domain name which it lost by inadvertence in renewing it, it had the right to recover what it had lost. It was mistaken because, as the record reflects, “reimex” was not a one-of-a-kind word solely associated with this rights holder. Its attempt to recover <reimex.com> by approaching the Respondent is probably attributed to inexperience in dealing with domain name disputes under the UDRP. It was represented by professional counsel. For this reason, a reverse domain name hijacking sanction is the appropriate remedy.

Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks v. Yui Quan, Forum FA2110001970005 <lumos.com>, 3-member, Denied, RDNH

As such, the questions then become what did Complainant know or what should it have known about these issues, and based on this, was Complainant’s filing so weak as to leave no other rational explanation than in initiating the UDRP Complaint was impermissibly exercising its “Plan B.”

AVK Holding A/S v. Best Web Limited, CAC-UDRP-102848 (2020), <avk.com>, 3-member, Denied, RDNH

Although the Complainant, represented by counsel as well, was informed about the Respondent’s arguments and previous UDRP decisions related to the circumstances described in paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, the second Complaint has been brought without addressing the issues raised by Respondent during the first proceeding. Bringing two UDRP actions 16 years after the registration of the disputed domain name and failing to conform to the simple UDRP requirements within the first proceeding has cost the Respondent substantial sums to be paid for the legal advice of his counsel, when there was very small chance of proving that the Respondent had acted in bad faith and without having any rights or legitimate interests in the disputed domain name (because of the existence of the previous decisions of the UDRP Panels and the lack of the evidence proving the existence of Respondent’s bad faith). The UDRP was intended to serve as an efficient means of redress against cybersquatters, not a cheap alternative to commercial negotiation with legitimate domain name holders. The Panel therefore finds and declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding, and accordingly that the Complainant attempted Reverse Domain Name Hijacking within the meaning of the Policy.

Costa Crociere S.P.A. v. Yoshiki Okada, WIPO D2018-1632, <costa.com>, 3-member, Denied, Declined to make RDNH finding

While the Panel considers that the present proceedings were misconceived, it accepts that the Complainant may have considered its claim to be justified in view of the Respondent’s more recent use of the disputed domain name in connection with cruise-related links. For that reason, the Panel declines to make a finding that the Complaint was brought in bad faith.

LOGOCOS Naturkosmetik AG v. Anything.com, Ltd., CAC-UDRP-101988 (2018) <sante.com>, 3-member, Denied, RDNH

None of the requirements of the UDRP is met. The complaint is so devoid of any evidence of bad faith on the part of the Respondent that the Panel finds that it is a case of reverse domain name hijacking.

Digest Commentary

Digest Vol. 4.26 <gsf.com>, Denied, No RDNH
Digest Vol. 4.8 <gpi .com>, Denied, No RDNH
Digest Vol. 3.1 <BeautyGarde .com>, Denied, RDNH

Preliminary Issues

IDENTICAL or CONFUSING SIMILAR to Trademark

Rights or Legitimate Interest

Bad Faith Registration and Use

4.0 RDNH

Zak Muscovitch and Igor Motsnyi, editors

Topic Perspectives Updated August 30, 2024 (Previous Version)

Welcome to UDRP Perspectives

The UDRP Topics and Relevant Decisions

0. Preliminary Issues

0.1 Scope of the Policy

Additional Information

0.2 Standard of Proof

Additional Information

0.3 Independent Panelist Research

Additional Information

0.4 Withdrawal After a Response is Filed

Additional Information

0.5 Supplemental Filings

Additional Information

0.6 Informal Responses

Additional Information

0.7 Consolidation Against Multiple Respondents

Additional Information

0.8 Inferences in No Response Cases

Additional Information

0.9 Appropriate Use of Procedural Orders

Additional Information

0.10 Dismissal without Prejudice

Additional Information

0.11 Refiled Complaints

Additional Information

0.12 Validation of Registered Trademarks

Additional Information

0.13 Responsibilities on Complainant When Privacy is Lifted

Additional Information

0.14 Inaccurate Whois/Identity of Respondent

Additional Information

0.15 Language of Proceeding

Additional Information

0.16 Determining the Date of Registration

Additional Information

0.17 Stolen Domain Names

Additional Information

0.18 Redaction

Additional Information

1. Identical or Confusingly Similar to Trademark

1.1 Demonstrating Common Law Trademark Rights

Additional Information

1.2 Establishing Secondary Meaning

Additional Information

1.3 Mere Incorporation or Mere Domain Name Registration Does Not Confer Trademark Rights

Additional Information

1.4 Descriptive Marks

Additional Information

1.5 Disclaimed Words

Additional Information

1.6 U.S. State Trademarks

Additional Information

1.7 ‘First Use in Commerce’

Additional Information

1.8 Confusingly Similar

Additional Information

1.9 Personal Names

Additional Information

2. Rights or Legitimate Interest

2.1 When a Finding as to Rights or Legitimate Interest is Appropriate

Additional Information

2.2 Legitimate Interest arising from a Registration prior to the Complainant’s Trademark Rights

Additional Information

2.3 Nominative Fair Use

Additional Information

2.4 Rights and Legitimate Interest in Descriptive and Generic Terms

Additional Information

2.5 Use Not Required for Legitimate Interest

Additional Information

2.6 Investing in Domain Names in General

Additional Information

2.7 Investing in ‘Brandable’ Domain Names

Additional Information