Relevant Decisions

Monkey Loft Lounge LLC v. Apostolos Dountsis, Forum FA2412002132877 <monkeyloft. com>, Denied

However, “UDRP Panels routinely determine that a domain name could not have been registered in bad faith when the registration pre-dates a trademark right” and the present Panel adopts this view.

Michelios 3 and AmeXio v. Domain Manager, eWeb Development Inc, WIPO D2024-4344 <amexio. com>, 3-Member, Denied, RDNH

In the present case, the disputed domain name was registered in July 2011, three months before the Complainant acquired its earliest trademark registration for AMEXIO. The Panel recalls that where a respondent registers a domain name before a complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent…In that regard, the Panel notes that the Complainant’s French trademark application was pending when the Respondent registered the disputed domain name. AMEXIO is not a dictionary or geographical word but rather a coined term, and the disputed domain name is identical to it. However, there is no evidence on the record of the Complainant’s foundation, operations, or reputation prior to July 2011…Based on the record, the Panel sees no exceptional circumstances indicating that the Respondent registered the disputed domain name in anticipation of the Complainant’s nascent trademark rights.

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

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Digest Vol.5.10 <gramlindisposable.com>, Denied

Digest Vol.5.2 <amexio.com>, Denied, RDNH

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Digest Vol. 3.29 <south32 .com>