Three-Letter .Com Domains Are Valuable Because They’re Easy to Remember and Scarce
An exceptionally well-reasoned decision by the Panel. I particularly appreciate how the Panel observed that “there are some three letter trademarks where the evidence of fame and reputation is well established on a world-wide basis and it is generally straightforward to at least draw an inference that registration of a corresponding domain name will have been targeting that trademark holder”…for example BMW AG v. Loophole, WIPO Case No. D2000-1156, concerning the domain name <bmw .org>… continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 5.34) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Three-Letter .Com Domains Are Valuable Because They’re Easy to Remember and Scarce (sro .com *with commentary)
‣ Panel: Domain Investors Can Have Legitimate Interests in Brandable Domains Purchased for Future Sale (movi .com *with commentary)
‣ Respondent Attempts to Impersonate the Complainant (tempscover .com)
‣ Complainant Tries to Recast Commercial Dispute as Cybersquatting (sladeglobal .com *with commentary)
‣ Panel: Registrant Put on Notice of Potential Third-Party Rights in Drop-Caught Domains (startablog123 .com *with commentary)
‣ HeyGen v Hey-Gem .com – Common or Intentional Misspellings are Also Treated as Confusingly Similar (hey-gem .com)
Three-Letter .Com Domains Are Valuable Because They’re Easy to Remember and Scarce
Sierra Remote Observatories, LLC v. Jon Berg, WIPO Case No. D2025-1957
<sro .com>
Panelist: Mr. Nick J. Gardner
Brief Facts: The Complainant claims that, since 2007, it has provided facilities for operating observatory telescopes in California, USA under the service mark SRO. There is no evidence as to the size of the Complainant’s business or as to its fame or reputation either in its specialized field of business or more generally. On October 25, 2022, the Complainant obtained service mark registration from the USPTO for the mark SRO. The Respondent purchased the disputed Domain Name from a third party on November 27, 2017, for the sum of USD $65,000, and thereafter advertised it for sale. On March 23, 2023, the Complainant offered to buy the disputed Domain Name for USD $500. On April 2, 2023, the Respondent sent an email indicating the price for the disputed Domain Name was USD $490,000. With effect from about March 14, 2024, the advertised price for the disputed Domain Name increased to USD $690,000.00.
The Complainant alleges that the Respondent purchase of the disputed Domain Name occurred over ten years after the Complainant started using the “SRO” mark and that the Respondent had no intention to actually use the domain name, but was targeting the Complainant’s mark in bad faith by purchasing the identical domain name, with the intention of selling it to the Complainant for an even higher price. The Respondent contends that SRO is a widely recognized acronym with multiple meanings across different industries, while he registered the Disputed Domain for legitimate purposes, specifically to develop a website focused on “Software Refactoring & Optimization.” The Respondent further contends that the Complainant initiated negotiations to purchase the valuable three-letter disputed Domain Name, and the standard market-based pricing reflected a normal negotiation rather than an attempt to target or exploit their trademark.
Held: The Complainant’s case is that clause 4(b)(i) of the Policy applies. It in essence says that it had common law trademark rights such that the Respondent must have had the Complainant in mind when he purchased the Domain Name in November 2017 for US$65,000. The problem with this argument is that there is absolutely no evidence to support the proposition that the Complainant had common law trademark rights, or that there was any reason to have supposed that the Respondent, based in Norway, would have any knowledge of the Complainant. Although there are some three-letter trademarks where the evidence of fame and reputation is well established on a worldwide basis, and it is generally straightforward to draw an inference that registration of a corresponding domain name would have targeted that trademark holder. See, for example, WIPO Case No. D2000-1156 <bmw .org>.
Furthermore, the fact that the Respondent subsequently asked for a very large amount for the disputed Domain Name, after he became aware that someone was interested in buying it, is not evidence of use in bad faith. If the Respondent’s interest in the disputed Domain Name is legitimate he is entitled to seek whatever price he wishes. Although in some circumstances asking a very large price may give rise to an inference of bad faith registration and use, the Panel does not consider that to be the case here, given the nature of the disputed Domain Name as a three-letter acronym. Three letter “.com” domain names are likely to be of substantial value given that they are likely to be readily memorable, there are only a limited number of them, and there will typically be many organisations who will have a name or brand name that corresponds in acronym form to the domain name.
RDNH: The Complainant should have realized that proving registration and use in bad faith for a three-letter acronym domain name was unlikely unless there was specific evidence of targeting, which did not exist. The Complainant made no attempt whatsoever to show that it had any reputation at all in the acronym. Instead, it initially relied upon a complex and unrealistic analysis of WhoIs data to reach what turned out to be an erroneous conclusion as to the date when the Respondent acquired the disputed Domain Name.
Once the Respondent produced the Purchase Invoice the Complainant’s original case became untenable. It then simply relied upon what it said were its unregistered trademark rights at the applicable date, without producing any evidence at all to substantiate such rights. Given the nature of the Policy and the multiplicity of previously decided cases dealing with similar issues in relation to short acronym type domain names, this was a case that had no reasonable prospects of success.
Complaint Denied (RDNH)
Complainant’s Counsel: Sierra IP Law, PC, United States
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: An exceptionally well-reasoned decision by the Panel. I particularly appreciate how the Panel observed that “there are some three letter trademarks where the evidence of fame and reputation is well established on a world-wide basis and it is generally straightforward to at least draw an inference that registration of a corresponding domain name will have been targeting that trademark holder”…for example BMW AG v. Loophole, WIPO Case No. D2000-1156, concerning the domain name <bmw .org>.
If the Complainant had provided evidence of such fame and reputation at the time of registration, then it could have at least been conceivable that the Domain Name was registered to target the Complainant. But in the absence of such fame and reputation, three-letter acronyms are “first come, first served” in most cases because, as the Panel put it, “three letter “.com” domain names are likely to be of substantial value given that they are likely to be readily memorable, there are only a limited number of them, and there will typically be many organisations who will have a name or brand name that corresponds in acronym form to the domain name.”
I also particularly appreciate what the Pabel had to say about the Respondent’s asking price in the circumstances: “If the Respondent’s interest in the Disputed Domain name is legitimate he is entitled to seek whatever price he wishes.” Indeed.
Lastly, I particularly appreciate that the Panel’s finding of RDNH and the Panel’s determination that “this is a Complaint which should never have been launched”. But wasn’t the Complainant perfectly entitled to bring a lousy Complaint, without awareness of the established case law and the requirements of the Policy, and lose without a finding of RDNH? No. As the Panel noted, “the Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which was a three-letter acronym, where there was no real evidence of reputation, was likely to prove impossible unless there was specific evidence of targeting, and no such evidence existed.” There is no excuse for such cases, as the Panel noted:
“Given the nature of the Policy and the multiplicity of previously decided cases dealing with similar issues in relation to short acronym type domain names (see above), this was a case that had no reasonable prospects of success. In all the circumstances the Panel agrees with the Respondent that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Well said. Notably, the same Panel reached a different conclusion on RDNH in a case that we reported last week, Norma Lebensmittelfilialbetrieb Stiftung & Co. KG v. Anastasios Anastasiadis, Principote, WIPO Case No. D2025-2486, <norma.app>. In that case, the Panel “ha[d] the impression that the Complaint’s shortcomings arise because of a failure to appreciate what needed to be shown to succeed under the Policy, rather than any deliberate attempt to proceed in bad faith”. But as we saw in the present case, RDNH can be found even in the absence of a “deliberate” attempt to abuse the Policy. Rather, and as the Panel found in the present case, a lack of appreciation for the requirements of the Policy and lack of any reasonable prospect for success, can also amount to an abuse of the administrative proceeding. Ultimately, and as I have long said, RDNH is a discretionary matter for Panelists and findings of RDNH can be appropriately made or denied on the basis of the particular and nuanced facts and impression that a case leaves with the Panel. Nevertheless, it is incumbent upon Panels to remember, as the Panel did in the present case, that no actual “malice” is required to find that a Complainant engaged in RDNH. Negligence and wilful blindness will do fine as well.
Panel: Domain Investors Can Have Legitimate Interests in Brandable Domains Purchased for Future Sale
MOVI, LLC v. Domain Administrator, NAF Claim Number: FA2507002164205
<movi .com>
Panelist: Mr. Steven M. Levy, Ms. Sandra J. Franklin and Mr. Alan L. Limbury (Chair)
Brief Facts: The Complainant owns two USPTO registered trademarks consisting of the characters “MOVI” in relation to clothing. The Complainant alleges that the Respondent should have no rights to the Domain Name considering that it has been parked and idle for as long as the Complainant has been monitoring it. The Complainant further argues that the Complainant has attempted multiple times to acquire the domain name but was only offered a non-negotiable price of at least USD $350,000. As nothing other than a parked page letting you know that this domain name is for sale has been displayed at <movi .com>, it is abundantly clear that the Respondent had no other purpose in acquiring the domain name than to try and sell it for top dollar to those who have claim to it.
The Respondent contends that around July 3, 2003, its predecessor acquired the Domain Name in an acquisition for the Respondent’s investment portfolio as part of its occasional strategy of buying generic domains at auction deemed good investments. The Respondent further contends that it decided to purchase <movi .com> because of its obvious connotation as a creative spelling for the English word “movie,” which has obvious broad value and public appeal. Additionally, the four-letter short consonant, vowel, consonant, vowel (“CVCV”) construct for a domain name is also broadly popular and may be used for any number of potential uses or businesses. The Respondent was not aware of the Complainant or its newly acquired trademark at the time of registration nor any time since 2003.
Held: The disputed Domain Name was initially registered in 1995 and acquired by Respondent’s predecessor on July 3, 2003. Thus, the Respondent owned the domain name for many years prior to the claimed 2019 first use in commerce of Complainant’s MOVI marks, registered in 2025. The Panel notes that there are many decisions and commentary upholding the principle that domain investors do have legitimate interests in brandable domain names that they purchase for future sale so long as they are not targeting a particular trademark owner. See, e.g., UDRP Perspectives on Recent Jurisprudence, § 2.6 and The Clash Of Trademarks And Domain Names On The Internet, (Gerald M. Levine).
The disputed Domain Name resolves to a parked webpage displaying the PPC links “Free Full Movie”, “Full Movie” and “Watch Movies Free”. Given the timing of the Respondent’s acquisition of the domain name and its use in relation to its generic meaning, the Panel is satisfied that, before any notice to the Respondent of this dispute, the Respondent has used the domain name in connection with a bona fide offering of services, namely investing in potentially valuable, non-infringing domain names and PPC advertising related to movies and films, and has not targeted the Complainant or its MOVI marks. The Panel finds that the Respondent has shown that it has rights or legitimate interests in respect of the domain name.
RDNH: As noted, the disputed Domain Name was initially registered in 1995 and acquired by Respondent’s predecessor on July 3, 2003 and then by the Respondent itself through its acquisition of its predecessor in 2018, and thus prior to the claimed 2019 first use in commerce of Complainant’s MOVI marks, registered in 2025. These circumstances persuade the Panel that the Respondent could not have had the Complainant and its then non-existent trademark in mind when registering the domain name, a fact easily discoverable by the Complainant, and thus the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Lyndon Cook, JR, USA
Respondent’s Counsel: Jason Schaffer of ESQwire .com, P.C., USA
Case Comment by ICA General Counsel, Zak Muscovitch: Congratulations to the Panel on this clear and unequivocal decision upholding the Respondent’s legitimate interest in the Domain Name. It was clear that the Domain Name could not have been registered in bad faith considering that the Respondent’s rights as registrant of the Domain Name preceded the Complainant’s trademark rights. But the Panel did not stop there and “skip over” Legitimate Interest. Some Panels will deprive a Respondent of its right under the Policy to obtain an affirmative determination of its rights and legitimate interest, as explained in UDRP Perspectives at 2.1:
“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 4(c).
Paragraph 4(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.”
Notably the Panel in this case referenced UDRP Perspectives on the issue of the legitimacy of speculating and trading in domain names when done without intent to profit from others’ trademarks:
UDRP Perspectives is a publication co-authored by me and by Panelist and Counsel, Igor Motsnyi. We appreciate the citation as it recognizes the value of the perspectives and precedents that UDRP Perspectives makes available to parties and to Panelists.
Respondent Attempts to Impersonate the Complainant
Tempcover Ltd v. Kaswara Shabuo, WIPO Case No. D2025-2549
<tempscover .com>
Panelist: Mr. George R. F. Souter
Brief Facts: The Complainant, since 2010, under its trademark TEMPCOVER, has been offering flexible short term motoring insurance services, and had already reached the total of 2 million policies issued by 2016. The Complainant’s trademarks are protected, inter alia, by UK registration for TEMPCOVER, registered on August 16, 2019, and UK registration for TEMPCOVER .COM, registered on December 4, 2009. The disputed Domain Name was registered on May 26, 2025, and resolves to a website which displays the words “Temp Cover” in a large font in the middle of the screen, with the phrase “Quick, simple cover, View your policy instantly” in smaller letters underneath. Beneath this phrase is a green button which the user can click to “View Policy”. When clicked, this button takes the user to a login page asking for an email address and password to be entered.
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed Domain Name. The Respondent replied to the notification of the Complaint, writing: “Dear WIPO Case Manager, Thank you for notifying me regarding the administrative proceeding concerning the domain tempscover .com. I am an up-and-coming software developer and created this domain purely as a practice project for learning purposes. I had no intention of infringing on any trademark or causing confusion. I am more than happy to change or release the domain, as I want to remain fully compliant and respectful of all trademark rules. Please advise on the next steps I should take to resolve this matter; Best regards.”
Held: Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed Domain Name such as those enumerated in the Policy or otherwise.
In spite of the Respondent’s comments quoted above, the Panel considers it implausible that the disputed Domain Name was created without the Complainant’s mark in mind. The use of the disputed Domain Name as mentioned above seems to confirm this. The Panel finds that the disputed Domain Name was registered in bad faith. It is well-established in prior decisions under the Policy that the use of a disputed Domain Name found to be confusingly similar to a complainant’s trademark in connection with the complainant’s field of commerce constitutes use of the domain name in bad faith. The Respondent’s use of the disputed Domain Name as described above, which in the Panel’s opinion, automatically suggests unjustified affiliation with the Complainant, is a clear example of use of the disputed Domain Name in bad faith.
Transfer
Complainant’s Counsel: Venner Shipley LLP, United Kingdom
Respondent’s Counsel: Self-represented
Complainant Tries to Recast Commercial Dispute as Cybersquatting
Slade Shipping, Inc. DBA Slade Global v. Johnny Loh / Nex Venture, NAF Claim Number: FA2507002164174
<sladeglobal .com>
Panelist: Ms. Nathalie Dreyfus
Brief Facts: The Complainant asserts rights in the SLADE mark based on its registrations with multiple trademark offices, including the EUIPO (registered on April 18, 2025), as well as its long-standing use in international freight forwarding and related services. The Complainant further claims rights through longstanding use of “Slade Global” as a trade name since the early 2010s, in addition to its registered trademarks. The Complainant alleges that following the dissolution of the international collaboration, the Respondent took over the domain name without authorization, while maintaining the misleading appearance of continuity with the Complainant’s brand. It further alleges that the domain name has been used in email-based impersonation, including by issuing instructions to business partners under the address [redacted](@)sladeglobal .com, giving the false impression of the Complainant’s involvement in unauthorized transactions.
The Respondent disputes Complainant’s contentions. The Respondent contends that Nex Venture, an IT consultancy, registered the domain name in 2014 on behalf of Slade Shipping Far East Pte. Ltd., a client, and that the beneficial ownership has always rested with members of the Slade Alliance. The Respondent further contends that the SLADE mark was filed and registered by its parent company in March 2022, prior to Complainant’s filings, and that both SLADE and SLADE GLOBAL have been used collectively by independent logistics companies under the Alliance name. The Respondent further contends that the registration was undertaken with the consent of all alliance members, including the Complainant, and that the domain name was used in connection with their joint commercial activities. According to the Respondent, the <sladeglobal .com> domain appeared in the email signatures of all alliance members, and the Complainant itself requested an @sladeglobal .com email address.
Held: The Respondent has demonstrated that the disputed Domain Name was registered and used within the framework of an international alliance of which the Complainant was a member. Evidence shows that all alliance members, including the Complainant, used the <sladeglobal .com> domain in their email communications and that the Complainant itself requested use of an @sladeglobal .com email address. This evidence indicates that the domain name was not appropriated by the Respondent in a vacuum, but rather formed part of a cooperative and bona fide enterprise in which the Complainant knowingly participated. Panels have consistently found that the use of a disputed Domain Name in connection with a bona fide business relationship or cooperative venture may confer rights or legitimate interests under Policy ¶ 4(a)(ii).
Given the facts and circumstances of this case, UDRP panels have consistently held that when a domain name is used within the framework of a prior business relationship or partnership, a finding of bad faith cannot stand absent clear evidence of intentional abuse. See General Machine Products Company, Inc. v. Prime Domains, FA 92531 (Forum Mar. 16, 2000). In the present case, there is no indication that the Respondent sought to exploit the Complainant’s mark for illegitimate gain, nor that the Respondent engaged in conduct designed to intentionally confuse or mislead consumers. To the contrary, the evidence demonstrates collective, transparent, and consistent use of the domain name in furtherance of the alliance’s operations, serving as a legitimate communication tool rather than an instrument of deception or misappropriation.
RDNH: The Panel notes that the disputed Domain Name was registered in 2014, a decade before the Complainant acquired any trademark rights in SLADE or adopted SLADE GLOBAL as a trade name. The Complainant was well aware of the collective use of the disputed Domain Name within the context of the Slade Alliance, and indeed itself used the domain name in email signatures and correspondence. Despite this knowledge, the Complainant brought this proceeding seeking to recast a breakdown of a commercial alliance as cybersquatting, while knowing that it could not meet the conjunctive requirement of bad faith registration and use. On this record, the Panel concludes that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Accordingly, the Panel finds Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: Jacob Guidry, USA
Respondent’s Counsel: David Llewelyn and Co LLC, Advocates & Solicitors, Singapore
Case Comment by ICA General Counsel, Zak Muscovitch: Bravo to the Panelist for the Panel’s excellent handing of this case. Well done!
Panel: Registrant Put on Notice of Potential Third-Party Rights in Drop-Caught Domains
GW50, LLC d/b/a Trendline SEO v. Dmytro Sokhach, Shared Domains OU, WIPO Case No. D2025-2612
<startablog123 .com>
Panelist: Mr. John Swinson
Brief Facts: The US-based Complainant provides search engine optimization (SEO) services. The Complainant purchased the disputed Domain Name on March 13, 2018, for USD$ 25,000 and operated a website between 2018 and 2023 and claims to have invested “about USD $55,000 redesigning, expanding, and renewing the site.” The Complainant discovered that the disputed Domain Name had lapsed on April 2, 2025, while the Respondent registered the disputed Domain Name on April 3, 2025. At the date of this Decision, the website at the disputed Domain Name provides information about starting a blog. The website is titled “StarB123 Your stellar start in blogging”. The website also includes blog posts which are dated prior to April 3, 2025. In April and May 2025, the Complainant sent emails intended for the Respondent to try to re-acquire the disputed Domain Name but did not receive any response from the Respondent.
On June 2, 2025, the Complainant applied for a United States trademark registration for STARTABLOG123 for services in class 41, claiming a date of first use of at least as early as March 13, 2018. The Complainant alleges that the website at the disputed Domain Name offers no genuine content; the site displays only thin AI-generated material that has no legitimate value. The Respondent’s use of fabricated contact data on its website at the disputed Domain Name, a nonfunctional email address, and a template privacy statement is evidence of deceptive intent and bad faith under the Policy. The Respondent contends that the disputed Domain Name consists of generic and descriptive terms. Usage of domain names containing dictionary words consistent with their common meaning may support a finding of legitimate interest. The Respondent further contends that at the time the Respondent acquired it, the Complainant had no registered trademark rights and has not demonstrated common law rights.
Held: The Respondent promotes a strategy of acquiring expired domain names to boost website traffic from backlinks. Where registration occurs through recently expired domains or drop-catching, this, in effect, puts the registrant on notice that another person may have rights in a trademark to which the domain name is identical or confusingly similar. See Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket .com, WIPO Case No. D2018-0540. Thus, panels in previous UDRP cases have often ruled against the respondents who used drop-catching services, since doing so shows they knew the domain was previously owned and possibly valuable as a trademark. However, not all drop-catching cases lead to a ruling against the respondent.
The Respondent claims no prior knowledge of the Complainant or its rights and says the domain was acquired for its descriptive value, not to exploit the Complainant’s mark. This is believable. The Complainant had no pending or registered trademark rights at the time the Respondent registered the disputed Domain Name, and the Complainant’s evidence of its reputation in the STARTABLOG123 trademark is not strong to say the least. The Respondent appears to own a portfolio of domain names, and there is no evidence that the Respondent has a practice of registering domain names because of third party trademark value. Unlike Supermac, there is no evidence that the Respondent offered the disputed Domain Name for sale to the Complainant or any other person.
The Complainant argues that the website at the disputed Domain Name is not bona fide and that a “deliberate back-dating of every post” means that the website at the disputed Domain Name is not a genuine publication “but a façade designed to feign long-standing use”. This is both true, and it moreover does speak to a level of sophistication that may imply that the Respondent was aware of the traffic generated by the Complainant using the disputed Domain Name and sought to profit from that (as the Complainant puts it “to retain link equity”), but of itself, does not demonstrate that the Respondent registered or used the disputed Domain Name in bad faith under the Policy.
Complaint Denied
Complainant’s Counsel: Represented Internally.
Respondent’s Counsel: Self-represented.
Case Comment by ICA General Counsel, Zak Muscovitch: Notably, the Panel stated that; “Where registration occurs through registering recently expired domain names or drop-catching, the registrant is objectively aware that another person held the registration immediately prior…This, in effect, puts the registrant on notice that another person (at least the immediately prior registrant) may have rights in a trademark to which the domain name is identical or confusingly similar”. The Panel relied on a Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket .com, WIPO Case No. D2018-0540.
There is a very different view that can and which has also been taken about registering expired domain names. As noted in UDRP Perspectives at 2.8, 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. See for example, Corbis Corporation v. Zest, NAF Case No. 98441I, where the three-member unanimous Panel stated:
“The Panel holds that a domain registrant who knows a domain name has been abandoned should be more confident, not less so, that there is no competing trademark claim relating to the domain name; a person in the position of Respondent should be more confident than a registrant who selects a previously unregistered name.
There is an element of “finders keepers, losers weepers” in this decision. We believe that is as it should be.
In sum, where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, we believe that ordinarily the trademark holder should be denied relief, whether the mark is a common law or registered mark, whether the mark is “strong” or “weak.”
We certainly recognize that domain name pirates may be lurking like buzzards to pick off “good” names which lapse. But that is true in any area of intellectual property. Failure to renew or extend those property rights, failure to protect marks and copyrights, and the like allow third parties to take advantage of the owner’s lack of diligence.”
HeyGen v Hey-Gem .com – Common or Intentional Misspellings are Also Treated as Confusingly Similar
HeyGen Technology Inc. v. Fly Pepe, WIPO Case No. D2025-2454
<hey-gem .com>
Panelist: Mr. Douglas M. Isenberg
Brief Facts: The Complainant, founded in 2020, claims to be “a pioneer in video and image generation in artificial intelligence”; that, in June 2024, it was valued at USD 500 million, had 40,000 customers and generated annual revenue of USD 35 million. The Complainant provides documentation in support thereof, that it is the owner of two trademark applications for HEYGEN in the United States, as well as several additional trademark registrations in other jurisdictions. The disputed Domain Name was created on June 2, 2025, and is being used in connection with a website that says it offers “an open-source tool that lets you generate realistic AI avatars from your appearance and voice.” The Respondent did not file a Response.
The Complainant alleges that the “Respondent has no rights in Complainant’s trademark, prior or subsequent, and does not have a license to offer products or services under the Complainant’s HEYGEN Mark”; “[t]he disputed Domain Name resolves to a site that solely offers competing digital image and avatar products and services under the HEYGEN Mark”; “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith”; and “Respondent’s Whois contact information is false” given that “[t]he address and street do not exist in New Jersey.”
Held: The Complainant has rights in the HEYGEN trademark. In terms of WIPO Overview 3.0, a domain name is normally confusingly similar if it contains a trademark in full or a recognizable dominant feature. Common or intentional misspellings are also treated as confusingly similar for the first element. Here, as the Complainant notes, the letters “m” and “n” are similar in appearance. Further, the website at the disputed Domain Name clearly targets the HEYGEN mark by offering the same services associated with HEYGEN, namely, generating realistic avatars. The Panel finds the first element of the Policy has been established.
The Panel finds that the Complainant has established its prima facie case and without any evidence from the Respondent to the contrary, the Panel is satisfied that the Complainant has satisfied the second element of the Policy. Furthermore, by using the disputed Domain Name in connection with a website that allows users to “generate realistic AI avatars from your appearance and voice” – the same type of service offered by the Complainant in connection with the HEYGEN Trademark – Respondent is clearly and intentionally “creating a likelihood of confusion” with the HEYGEN Trademark, constituting bad faith pursuant to paragraph 4(b)(iv) of the Policy.
See, e.g., Arla Foods amba v. Jucco Holdings, WIPO Case No. D2006-0409 (“the practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith”); F. Hoffmann-La Roche AG v. Clear Foto, WIPO Case No. D2009-0501 (finding bad faith where respondent’s website “offers some competing services”); and Beachbody, LLC v. Liu Wan, WIPO Case No. D2012-1407 (finding bad faith where complainant alleged that disputed Domain Name “resolved to a website with similar content”).
Transfer
Complainant’s Counsel: Coates IP LLP, United States
Respondent’s Counsel: No Response
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings. He is the founder of Cylaw Solutions.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.