A Default Is Not a Verdict: Panel Research Done Right
Default cases are where the Policy’s discipline is particularly important, because there is no respondent to point out what a complaint fails to prove. This decision shows a Panel proceeding with conspicuous care in exactly that situation, and the result is a model of how an undefended complaint against a descriptive-phrase domain name can be handled. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 6.35) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ A Default Is Not a Verdict: Panel Research Done Right (ittybittybeanies.com *with commentary)
‣ Shared Generic “TOON” Insufficient for Confusing Similarity (toonia.net *with commentary)
‣ Phishing Scheme Establishes Bad Faith in Default Proceeding (bitpay.exchange *with commentary)
‣ An Asking Price Is Not a Substitute for Rights Analysis (theswamp.com *with commentary)
‣ Geography and Chronology Defeat Targeting Theory (techex.com *with commentary)
A Default Is Not a Verdict: Panel Research Done Right
Ty, Inc. v. Dynadot Privacy Service, Forum Claim Number: FA2606002229983
<ittybittybeanies.com>
Panelist: Mr. Nick J. Gardner
Brief Facts: The Complainant has been engaged in the business of manufacturing and selling plush toys and related retail services since at least 1986, and further claims to have continuously used its BEANIES, BEANIE BABY, and BEANIE BABIES trademarks since at least 1993-1998. The Complainant owns multiple USPTO registrations for the BEANIES Marks, including registration for BEANIES (June 24, 2008), BEANIE BABY (April 8, 2003), BEANIE BABIES (April 1, 1997), BASKET BEANIES (March 28, 2006), and SQUISHY BEANIES (June 13, 2023). The Complainant also asserts common law rights in the BEANIES Marks arising from its long-standing and continuous use.
The Complainant alleges, and the record does not contradict, that the Domain Name is passively held and that the Respondent made a general offer to sell the Domain Name for USD $1,999.00. The record does not include evidence of the content of that sale listing, evidence that the offer referenced Complainant or the BEANIES Marks, evidence of any content historically resolved from the domain name, or evidence of any communication between the Respondent and the Complainant. Neither party responded to the Panel’s Procedural Order inviting submissions on this matter. The Respondent, using a privacy service, otherwise also did not file a Response and was in default.
Held: The Domain Name is composed of a phrase “itty bitty beanie”, that the Panel’s own research, communicated to the parties and left unanswered, shows to carry an established generic and descriptive meaning independent of Complainant’s mark, namely a small beanie-style hat. The record contains no evidence of what the Domain Name has actually been used for that would affirmatively negate a legitimate descriptive use, for example, no evidence that the Domain Name resolved to content targeting the Complainant, offering competing goods, or otherwise trading on the BEANIES Marks specifically, as opposed to using the descriptive phrase in its ordinary sense. On this record, the Panel is not persuaded that the Complainant has carried its burden of showing that the Respondent lacks rights or legitimate interests in the Domain Name.
The Complainant’s bad-faith case relies mainly on Telstra (WIPO Case No. D2000-0003) and Respondent’s USD $1,999 offer to sell the Domain Name. However, Telstra does not apply here because “itty bitty beanie” has a generic meaning and is used descriptively by unrelated third parties, supporting plausible good-faith uses. The passive-holding doctrine therefore does not, without more, support a finding of bad faith here. Further, concerning the offer to sell, the Complainant has not placed before the Panel the substance of the sale listing, and has not shown any content historically hosted at the domain name or any communication by the Respondent directed at the Complainant. Where a domain name corresponds to a common descriptive phrase, an offer to sell it at an ordinary secondary-market price does not, by itself, show that the Respondent registered or uses it because of its resemblance to Complainant’s mark rather than its descriptive value.
Complaint Denied
Complainant’s Counsel: Jocelyn C. Smith of UB Greensfelder, LLP, United States
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
Default cases are where the Policy’s discipline is particularly important, because there is no respondent to point out what a complaint fails to prove. This decision shows a Panel proceeding with conspicuous care in exactly that situation, and the result is a model of how an undefended complaint against a descriptive-phrase domain name can be handled.
The pivotal step was the Panel’s limited independent research, properly deployed. The Panel ascertained that “itty bitty beanie” has an established generic and descriptive meaning independent of the Complainant’s marks, namely a very small beanie-style hat, and that unrelated third parties use the phrase online in exactly that sense. Critically, the Panel did not simply decide the case on the basis of its research. It appeared to have put the Panelist’s findings to both parties however neither party responded, including the Complainant.
As UDRPPerspectives.org explains at section 0.3, independent 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”, and where such 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”. Both halves of that guidance were followed here, and the decision deserves to be cited whenever the propriety of limited Panel research in a default case is questioned.
The second-element analysis is equally important. The Complainant had established the usual prima facie facts: no authorization and no evidence that the Respondent was commonly known by the Domain Name. Ordinarily that would shift the burden of production to the Respondent. But a default does not relieve a complainant of its ultimate burden of proof.
Once the Panel’s unanswered research showed that “itty bitty beanie” had a genuine descriptive meaning unrelated to the Complainant, and the record contained no evidence of use targeting the Complainant, the Panel was not prepared to infer the absence of a legitimate interest merely from the Respondent’s silence. That is an important application of the principle that a descriptive domain name may carry a legitimate interest of its own, particularly where there is no evidence that it was selected because of the complainant rather than for its ordinary meaning.
The Telstra analysis is similarly valuable for its fidelity to the doctrine’s actual limits. The Panel returned to what Telstra turned on: the impossibility of conceiving any plausible good-faith use of the domain name. Given the ordinary descriptive meaning of “itty bitty beanie” and the evidence of unrelated third-party descriptive uses, the Panel could readily conceive of plausible good-faith uses here. The passive-holding doctrine therefore could not, without more, support bad faith. This is Telstra applied according to its limiting condition: passive holding is not an independent shortcut to bad faith where the domain name is readily capable of plausible legitimate use.
The treatment of the sale listing warrants equal attention. The USD $1,999 asking price was evidenced only as a general offer to sell, such as a listing on a website. A general offer to sell for more than documented out-of-pocket costs may support bad faith under paragraph 4(b)(i), as the Panel held, but only where the evidence shows that the respondent targeted the complainant’s mark when registering the domain name. Where the domain name also corresponds to an ordinary descriptive phrase, its availability for purchase on the secondary market does not itself establish why it was registered. A price is evidence of an intention to sell; it is not, without more, evidence of whom the registrant was targeting.
Finally, the decision cleanly separates awareness from targeting. Even assuming the Respondent was actually aware that BEANIES was also used as a trademark, that would not establish that the Respondent registered the Domain Name because of that mark rather than because of the phrase’s ordinary descriptive meaning. As UDRPPerspectives.org observes at section 3.10, mere awareness of a complainant’s trademark is not necessarily determinative, and something more is generally required to show that the mark and its goodwill “were the primary reasons for the Respondent’s registration as opposed to, for example, merely benefitting from the bona fide attractiveness of the term for a variety of possible non-conflicting uses”. Awareness that a common term is also someone’s trademark can comfortably coexist with registering it for what else it means, and BEANIES, whatever its renown in plush toys, remains the plural of a common word for a type of hat.
Shared Generic “TOON” Insufficient for Confusing Similarity
HONEYTECH LTD v. James Webb, CAC Case No. CAC-UDRP-108799
<toonia.net>
Panelists: Mr. Stefan Bojovic, Mr. Mike Rodenbaugh and Ms. Stefanie Efstathiou LL.M. mult.
Brief Facts: The Complainant owns and operates the Honeytoon digital comics and webtoon platform at the domain name <honeytoon.com>. The Complainant is the owner of several registered trademarks for the “HONEYTOON” that includes the EU registration (March 18, 2026) and Hong Kong registration (March 18, 2026). The disputed Domain Name was registered on February 3, 2026 and initially resolved to a website providing serialized digital comics and webtoons. At the time of this Decision, the disputed Domain Name resolves to the page with the message “Toonia is becoming Yumeku. Same stories. Same account. More of everything – we just grew up.” and provides a link to the domain name <yumeku.com>, to which the Respondent has moved its website.
The Complainant alleges that the Respondent did not use the disputed Domain Name for an unrelated or independent project. Instead, the Respondent used it for a website operating in the same online comics/webtoon niche that substantially imitated the interface, navigation, layout, and user journey of the Complainant’s “Honeytoon” platform. By operating a “copycat” website under a confusingly similar domain name in the same niche, the Respondent attracts Internet users by creating a likelihood of confusion with the Complainant’s trademark, platform, and services. Users may therefore believe that the Respondent’s website is an official, affiliated, licensed, mirrored, localized, or otherwise authorized version of the Complainant’s “Honeytoon” platform.
The Respondent contends that the Complainant improperly seeks to extend its asserted rights in the composite HONEYTOON trademark to the common and descriptive term “toon” standing alone. The Complainant does not own the word “toon” but nevertheless wrongfully attempts to exert control over this common, generic, and descriptive term. The Complainant’s HONEYTOON trademark is not recognizable within the term “toonia.” The Respondent further contends that it has not displayed the Complainant’s name, logo, trade dress, copyrighted content, or other source-identifying material and that it does not represent that the disputed Domain Name is affiliated with, sponsored by, endorsed by, or otherwise connected with the Complainant or the “Honeytoon” platform.
Held: The Complainant has established registered trademark rights in HONEYTOON, while the disputed Domain Name consists of “toonia”. Even though both words contain the term “toon”, the “HONEYTOON” trademark has been registered only as such, i.e. “HONEYTOON”, and not as two different words or as only the word “toon”. The Panel finds that the distinctiveness of the trademark comes from the combination of the words “honey” and “toon” and therefore cannot be assessed separately. Furthermore, there is no overall phonetic similarity and the Trademark is not recognizable within the disputed Domain Name. In addition, the Panel holds that the word “toon” is a common, descriptive, and generic term and is the common shortened version of the (also) common, descriptive, and generic term “cartoon”.
Even though the Complainant tries to argue that the broader factual context and associated website content should lead, in an appropriate case, to a finding of confusing similarity, where it appears prima facie that the respondent sought to target the complainant’s mark (WIPO Overview, sections 1.7 and 1.15), the Panel disagrees with the assessment that this is an appropriate case for that and holds that there is no such circumstance in the present case in order to make such finding. As explained above, there is no basis on which the Panel finds that the words “HONEYTOON” and “TOONIA” are confusingly similar, and the overall circumstances of the case do not trigger an assessment of the broader case context.
In light of the above, it cannot be inferred that the Trademark is confusingly similar to the word “toonia” and accordingly to the disputed Domain Name. Thus, the Complainant has failed to satisfy the first element of the Policy under paragraph 4(a)(i). Further, the Complainant has also brought forward copyright-related arguments and/or evidence to support its case, the Panel notes that such claims and arguments fall outside the intended scope of the UDRP. The Policy was established specifically to address cases of cybersquatting, as outlined in paragraph 170 of WIPO’s Final Report (April 30, 1999), which limits its application to instances of “deliberate, bad faith, abusive registration of a domain name in violation of trademark and service mark rights.”
RDNH: The Panel notes that the Respondent, in its Response, has explicitly requested a finding of Reverse Domain Name Hijacking. The Panel considers that the Complainant has genuine, albeit ultimately misplaced, concerns in respect of the Respondent’s use of the disputed Domain Name and has provided certain evidence in support of those concerns. The Panel finds no evidence that the Complainant brought the present proceeding in an abusive manner.
Under these particular circumstances, the fact that the Complaint ultimately fails under the Policy is not, in itself, sufficient to establish bad faith on the part of the Complainant. Accordingly, based on the record before it, the Panel does not find that the Complaint constitutes an abuse of the administrative proceeding. The Respondent’s request for a finding of Reverse Domain Name Hijacking is therefore denied.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Boston Law Group, PC
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The first element is often treated as a formality. This decision is a valuable reminder that it remains a genuine and integral test that must be met and the three-member Panel’s treatment of it deserves close attention.
The comparison was HONEYTOON against “toonia”. The trademark was registered as a unitary composite, not as two separate words and not as “toon” alone. The Panel found that its distinctiveness arises from the combination of “honey” and “toon”, which could not be dissected and assessed separately. There was no overall phonetic similarity and, critically, the trademark was not recognizable within the disputed Domain Name. What the two shared was only “toon”, which the Panel held to be a common, descriptive and generic shorthand for “cartoon”, and which the Respondent noted appears in more than 44,000 domain names.
As UDRPPerspectives.org explains at section 1.8, “Mere ‘similarity’ is insufficient under the Policy, it must be ‘confusing similarity'”, and where the resulting term is sufficiently different from the trademark, the threshold may not be met. The point here is not that a common component of a composite trademark can never contribute to confusing similarity. Rather, the Complainant could not establish confusing similarity by extracting the generic “toon” component from HONEYTOON when HONEYTOON itself was not recognizable in TOONIA.
Equally deft was the Panel’s treatment of the Complainant’s fallback argument that the broader factual context, operation in the same webtoon niche and the allegedly imitative website, should supply the ‘confusing similarity’ that the side-by-side comparison did not. Panels may in limited circumstances consider website content or other surrounding facts when assessing the first element, but as Section 1.8 of UDRPPerspetives.org, supra, cautions, broader circumstances should serve as an additional factor rather than a substitute for the confusing similarity test itself. The Panel applied exactly that distinction. Having found no basis upon which HONEYTOON was recognizable in TOONIA, it declined to use the surrounding allegations to create confusing similarity where the comparison of the names themselves did not establish it.
The distinction is particularly instructive when this decision is set beside the Complainant’s own successful proceeding a month earlier in HONEYTECH LTD v. Hoan Nguyen, CAC Case No. CAC-UDRP-108226, concerning <heytoon.net> (where the Panelist also served as Presiding Panelist in the present case). There, the panel found a sufficient degree of primarily aural similarity between HONEYTOON and “heytoon”, which share the first letter and the six-letter string “eytoon”, and held that to the extent the side-by-side comparison left room for debate, the respondent’s use of the domain name to display unauthorized copies of the Complainant’s comics confirmed confusing similarity
The Panel was right to place the Complainant’s copyright arguments outside the Policy’s scope in the present case. A substantial portion of the dispute concerned allegations that the Respondent’s website imitated the Honeytoon platform’s interface, navigation and layout, supplemented by evidence of alleged copying of comics. Whatever remedies such conduct might attract elsewhere, the UDRP is not a general copyright or unfair competition procedure. Citing paragraph 170 of the WIPO Final Report (as noted at Paragraph 0.1 of UDRPPerspectives.org), the Panel properly returned to the Policy’s intended subject matter: deliberate, bad-faith, abusive domain name registrations made in violation of trademark or service mark rights.
The theme echoes the recent dismissal in Alma Technologies, LLC v. Mustafa Vardali / Teknasyon, Forum Claim No. FA2606002225200 (<esimo.com>), where competing claims to the same mark, already contested in other fora, took the dispute outside the Policy: the nature of the underlying grievance matters, and the involvement of a domain name in a broader commercial or intellectual-property dispute does not necessarily make that dispute one for the UDRP.
Phishing Scheme Establishes Bad Faith in Default Proceeding
BitPay, Inc. v. max gorski, Forum Claim Number: FA2608002236792
<bitpay.exchange>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant describes itself as the world’s largest Bitcoin payment processor. It has provided cryptocurrency merchant services since 2011 and has held a U.S. trademark registration for BITPAY since 2015. The Complainant has processed more than $5 billion in payments and partnered with Apple Wallet, Google Pay, and Samsung Pay. The disputed Domain Name was registered in 2024, and the associated website prompted users to set up accounts. The Complainant alleges that the funds deposited through the website subsequently became inaccessible, suggesting that the Respondent used the disputed Domain Name to operate a phishing scheme impersonating the Complainant and harvest customers’ financial information. The Complainant further alleges that the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. The Respondent did not file a response in this proceeding.
Held: The resolving website purports to offer services that compete with those of the Complainant. Previous Panels have found that use of a disputed Domain Name to offer goods or services in competition with those of a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed Domain Name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed Domain Name to offer for sale competing services.”). Thus, the Panel finds that the Respondent fails to use the disputed Domain Name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that the Respondent does not have rights or legitimate interests in the disputed Domain Name.
Panels have held that registration and use of a disputed Domain Name to divert Internet traffic to a competing website offering the same or similar goods or services demonstrates bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See ZIH Corp. v. ou yang lin q, FA 1761403 (Forum Dec. 29, 2017) (finding bad faith where the Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as the Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with the Complainant.”). Thus the Panel finds that the Respondent registered and uses the disputed Domain Name in bad faith under Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Transfer
Complainant’s Counsel: Ashley N. Klein of Bradley Arant Boult Cummings LLP, USA
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This is the Policy doing the work it was built for. A domain name wholly incorporating a distinctive, long-registered mark in the very field that the TLD announces, used for a website that invited deposits which then became inaccessible, is about as clear a case of abusive registration as there is.
Notably, the decision resolves both the second and third elements on the basis of competing-services’ and reaches the right destination on this record. However, the unrebutted allegations would also have supported a finding on phishing itself. That said, the outcome is unassailable either way, and cryptocurrency users are better protected with this domain name in the Complainant’s hands.
An Asking Price Is Not a Substitute for Rights Analysis
The University Athletic Association, Inc. v. Michael LeValley, Forum Case No. FA2607002230489
<theswamp.com>
Panelist: Ms. Lynda M. Braun
Brief Facts: The Complainant, a Florida non-profit corporation, acts on behalf of the University of Florida, whose athletic program is one of the best-known in the nation. In 1992, football coach Steve Spurrier nicknamed Ben Hill Griffin Stadium “The Swamp.” As a result of the University’s athletic successes, its teams and facilities, including Ben Hill Griffin Stadium, or “The Swamp”, have been extensively featured nationwide on television, in print, and in online media for decades. The Complainant claims common-law rights in the THE SWAMP mark in connection with entertainment services, namely, football games and the provision of social entertainment events at sports stadiums. The Complainant also owns a trademark registration for THE SWAMP issued by the USPTO on May 15, 2007, with a first use in commerce date of January 1, 1991.
The Complainant alleges that the disputed Domain Name was registered on April 19, 1997 and while the webpage to which the disputed Domain Name redirected is no longer active, the disputed Domain Name has been for sale for a number of years with a current listing price of USD $150,000. The Complainant continues to explain that the original website to which the disputed Domain Name redirected described the University’s athletics program and Florida Gators teams – primarily, the football team, stating “This is… TheSwamp.com, Your Online Source for Florida Gator Athletics.” The website included sales of merchandise bearing Complainant’s trademarks from which the Respondent profited and the Respondent also profited from third-party sponsorships of its website.
The Respondent contends that it acquired the disputed Domain Name for USD $3,500 on December 5, 2016 and its acquisition postdates the 1999-2002 website on which the Complaint is based and Complainant’s own evidence that the disputed Domain Name was already inactive and offered for sale as of July 2008. The Respondent further contends that it has held the disputed Domain Name as one of several other domain names owned in the ordinary course of his various business activities, including the ownership and use of the SWAMP YANKEE family of marks. Moreover, the Respondent concedes that it offered the disputed Domain Name for sale at a listed price of USD $150,000, although the price was not calculated to extract payment from the Complainant, but rather such sale was an offer to any interested purchaser.
Held: The Complainant owns rights in THE SWAMP Mark and claims that the Respondent appropriated Complainant’s longstanding goodwill and consumer recognition as Respondent’s own for commercial gain. The Respondent counters and argues that the Respondent has carried its burden to demonstrate that it has rights or legitimate interests in the disputed Domain Name. The Panel concurs. The Panel finds Respondent’s Response to be comprehensive and credible. It presented convincing documentary evidence to demonstrate that the disputed Domain Name was purchased from a prior owner on December 5, 2016 for USD $3,500. The disputed Domain Name was one of several generic domain names Respondent acquired around that time. The purchase was part of an established conventional business operated by the Respondent of acquiring and marketing generic word domain names. From 2016 forward, the Respondent did not use the disputed Domain Name and eventually put it up for sale.
The Respondent submitted evidence that the registrant of the disputed Domain Name when it acquired it was an individual named Sean Fletcher. In addition, the Respondent demonstrated that Complainant’s own Annex E-2 displayed the original website to which the disputed Domain Name redirected, but omitted critical information crediting the website design to Sean Fletcher. Moreover, Complainant’s Annex E-3 clearly identifies Sean Fletcher as the website’s creator. Further, the Panel disagrees that the sale of the disputed Domain Name for USD $150,000 demonstrates that the Respondent did not have rights or legitimate interests in respect of the disputed Domain Name. The business of investing in and selling a domain name at a higher price based on a generic term can constitute a legitimate interest when it is done, as here, not to trade off the trademark rights associated with the trademark of another.
RDNH: The Panel concludes that the Complaint was brought in bad faith, although it does not find that it was necessarily brought to harass the Respondent. However, because Complainant’s own cited evidence identifies a party, namely, Sean Fletcher, other than the Respondent as responsible for the creation of the website content, and because the Complainant omitted from its own Annex E-2 the explicit language crediting Sean Fletcher with the website’s design, the Panel finds that the Complaint was filed without a good-faith basis either intentionally or merely carelessly.
Complaint Denied (RDNH)
Complainant’s Counsel: Meredith Frank Mendez of Malloy & Malloy, P.L., United States
Respondent’s Counsel: Alexander P. Montgomery of Hinckley Allen & Snyder LLP, United States
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Complaint rested on a website that someone else made, a quarter century ago, and attributed that site’s merchandise sales and sponsorships to a Respondent who did not acquire the disputed Domain Name until many years after the site had gone dark. The conduct of a prior registrant cannot simply be attributed to a subsequent purchaser, and a complainant proceeding against the current registrant of a long-traded domain name must investigate who did what, and when, before filing.
The Panel found the Response comprehensive and credible and made an affirmative finding of rights and legitimate interests, which is exactly what is called for when a respondent proves its bona fides. The Panel also deserves particular credit for its direct rejection of the Complainant’s argument that the USD $150,000 asking price itself demonstrated a lack of rights or legitimate interests. As the Panel put it, the business of investing in and selling a domain name at a higher price based on a generic term can constitute a legitimate interest when it is done, as here, not to trade off the trademark rights associated with the trademark of another. That is exactly the correct formulation, stated without hedging, and it joins a steady line of decisions confirming that a high asking price does not negate an otherwise legitimate domain name investment.
The RDNH finding is particularly apt and the Panel deserves credit for it. Rather than denying the Complaint and stopping there, the Panel examined the Complainant’s own annexes against its allegations. As the Panel found, the Complainant’s cited evidence identified a party other than the Respondent as responsible for creating the website’s content, and the exhibit filed as Annex E-2 did not include the explicit language crediting that person with the site’s design, language which appeared in Annex E-3. On that record, the Panel concluded that the Complaint was filed without a good-faith basis, “either intentionally or merely carelessly”, without deciding which.
Geography and Chronology Defeat Targeting Theory
<techex.com>
Panelist: Mr. Sebastian M.W. Hughes (Presiding), Mr. Adam Taylor and Dr. Hong Xue (Concurring)
Brief Facts: The Complainant is a UK-based provider of live video, cloud video, and IP broadcast services that has used the TECHEX mark since at least 1986, holding two UK trademark registrations both applied for on November 6, 2023 and registered February 2, 2024. The Complainant also carries on business under the Trade Mark in the United States market, via its subsidiary incorporated in the State of Delaware. The disputed Domain Name was acquired by the Respondent, a Chinese subsidiary of the Shenzhen Stock Exchange providing IP-related services, on January 6, 2021 and it resolves to a Chinese-language website promoting the Respondent’s business.
The Complainant alleges that the Respondent had no rights or legitimate interests in the domain name and registered and used it in bad faith, citing the domain name’s identity with the mark, a history of high-priced sale offers, and periods of passive holding. The Respondent contends that its trademark rights postdated its acquisition of the domain name, that the Complainant had never done business in China, and that the domain name was independently derived from an abbreviation of its English-language corporate name, “SZSE Technology and IP Exchange Co., Ltd.” The Respondent further adds that the Chinese-language abbreviation of its name is “科交中心,” which translates into English as “technology exchange.”
Held: According to the declaration of the Complainant’s Chief Executive Officer filed together with the Complaint, the Complainant has used its Trade Mark in the United Kingdom and in the United States. Prior to May 2023, the Complainant contracted with its United States customers from the United Kingdom; and from May 2023, the Complainant has conducted business with its United States customers via its United States subsidiary. There is no clear evidence that the Complainant has ever conducted any business in China or in the Chinese language market, nor does the Complainant possess any registered trade mark rights in China.
Although the Complainant has provided evidence to demonstrate common law or unregistered trade mark rights in the United Kingdom, its registrations for the Trade Mark in the United Kingdom postdate the date the Respondent acquired the disputed Domain Name. The historical offers to sell the disputed Domain Name by prior registrants, and the historical passive holding of the disputed Domain Name by prior registrants, are not relevant to consideration of the third element. Furthermore, the Respondent has put forward a plausible reason for selection of the disputed Domain Name independently of the Complainant, namely as an abbreviation of the English version of its name.
In all the circumstances, the Panel is unable to conclude that the Respondent has targeted the Complainant and its Trade Mark in acquiring the disputed Domain Name.
Concurring Opinion by Dr. Hong Xue: The Panelist notes that the Complainant contends against not only “[T]he historical offers to sell the disputed Domain Name by prior registrants” as discovered in the Decision, but the suspect offering for sale after the Respondent had acquired the registration of the disputed Domain Name in 2021. The Panelist finds that the Complainant’s evidence is unable to conclusively prove that it was the Respondent that had negotiated with the so-called broker regarding selling the disputed Domain Name.
In addition, given that the Respondent operates exclusively in China, where the Complainant has neither registered nor established common law trademark rights in “techex”, the Respondent’s offer to sell the disputed Domain Name to the highest bidder in the open market, without more, would not support a finding that the Respondent registered the disputed Domain Name in bad faith with the primary purpose of selling it to the trademark owner, within the meaning of paragraph 4(b)(i) of the Policy. See WIPO Overview 3.1, section 3.1.1.
Complaint Denied
Complainant’s Counsel: Eric B. Alspaugh, APC, United States
Respondent’s Counsel: CCPIT Patent & Trademark Law Office
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
With no registered rights in China, no clear evidence of any business in the Chinese-language market, and United Kingdom registrations that postdated the Respondent’s acquisition, the Complainant had no foundation from which targeting could be inferred, and the three-member Panel was unable to conclude that the Respondent had the Complainant in mind when it acquired the Domain Name.
The Panel found that the Respondent had put forward a plausible reason for selecting the Domain Name independent of the Complainant, namely as an abbreviation of the English version of its corporate name. Where a respondent provides a credible, independent explanation for its choice of a domain name, a complainant’s burden of proving targeting becomes correspondingly harder to discharge, and this Complainant had little with which to discharge it.
Two holdings deserve particular note. First, the Panel held that historical offers to sell and historical passive holding by prior registrants were not relevant to the third element. That is exactly right, and it aligns with the recent <theswamp.com> decision: the conduct of prior registrants cannot simply be attributed to a subsequent purchaser, and the relevant inquiry is the current registrant’s intent when it acquired the domain name. Complainants who comb a domain name’s decades-long history for someone else’s conduct risk building a case against a party who is not before the Panel.
Second, the concurring opinion merits reading in full. Addressing sale discussions that postdated the Respondent’s acquisition, the concurring Panelist found that the evidence could not conclusively establish that it was the Respondent negotiating through the brokers at all. The concurring Panelist went further, observing that even if the Respondent had hypothetically offered the Domain Name to the highest bidder in an open market, that fact would not by itself establish that the Domain Name had been registered in bad faith with the primary purpose of selling it to a trademark owner or competitor
Where, as here, the Respondent operated only in a market in which the Complainant had neither registered nor common-law trademark rights, an offer to sell at a profit, without targeting the Complainant’s mark, would not violate paragraph 4(b)(i). This is a welcome reaffirmation of the important distinction between offering a valuable domain name for sale and acquiring it because of another party’s trademark rights. The former, without evidence of the latter, does not by itself establish bad faith.
One familiar observation: having decided the case on the third element, the Panel found it unnecessary to reach the second, despite evidence that the Domain Name represented an abbreviation of the Respondent’s English corporate name and was actually being used for the Respondent’s IP-related business. As UDRPPerspectives.org explains at section 2.1, a respondent whose bona fides have been challenged may deserve the vindication of an express finding where the facts warrant it. The practice of resting on a single element is well within a Panel’s discretion, but as this Digest has had repeated occasion to note in recent editions, it can leave a successful respondent with less than what it is entitled to.
Disclaimer: The facts are taken from the decisions themselves and have not been independently verified. The editors and publishers accept no responsibility for their accuracy.
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.