Webinar Recording
Thank you to everyone who joined Zak Muscovitch and Brian Beckham for ICA’s special webinar on the Initial Report of the WIPO–ICA UDRP Review Project Team. If you missed it, or would like to re-watch it, the recording is available here.
We hope you will enjoy this edition of the Digest (vol. 5.22) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Appeals Panel: Complainant Should Pay Innocent Respondent its Costs and Apologize (manage .co .uk *with commentary)
‣ Complainant Relied Upon Discredited Retroactive Bad Faith Theory (metacomp .com *with commentary)
‣ Panel: No Obligation on the Registrant to Make Active Use of the Domain Name (intact .com)
‣ Relevance of Telstra Case (actavis .online *with commentary)
‣ Business or Contractual Disputes Fall Outside the Scope of the Policy (revnue .com)
‣ ‘Negative” Additions to Complainant’s Trademark Do Not Avoid Confusing Similarity (apkdowner .com)
Appeals Panel: Complainant Should Pay Innocent Respondent its Costs and Apologize
iManage LLC and iManage EMEA Limited v. David Garforth-Bles, Nominet Case No. D00027310 (appeal)
<manage .co .uk>
Panelist: Mr. Nick Gardner, Mr. Ian Lowe, and Ms. Claire Milne
Appeal: This is an appeal against the summary decision of Dawn Osborne dated 2 January 2025 in favour of the Complainant. The Complaint was filed on 18 December 2024. There was no Response to the Complaint and the Expert’s summary decision directing the transfer of the Domain Name was issued on 21 January 2025. That decision noted that “the Respondent has altered its use of the Domain Name, namely registered subdomains that mimic the Complainant’s trade mark or appear to have been created for fraudulent purposes”.
The Respondent says he was very unwell at the time the Complaint was sent to him. He has provided details of his medical issues in his Appeal Notice but the Panel does not propose to repeat them here. Although he accepts he received a hard copy of the Complaint, he says it arrived when he had these medical issues and he does not remember receiving it. He did not open the letter. He says the email account as shown on the WHOIS for the Domain Name was inactive. He updated his email with his registrar but it had not been passed on to Nominet. As a result he did not receive the Complaint by email.
The Complainant sought to withdraw the Complaint during the appeal process, but the Respondent requested that the Panel render a decision. The Panel declined the withdrawal and proceeded to render its decision. The Panel accepts the Respondent’s evidence as to why he did not deal with the Complaint and considers that it is in the interests of justice that new material contained in the Appeal Notice should be admitted. This conclusion is clearly correct given the Complainant now concedes that the Domain Name is not an Abusive Registration.
Brief Facts: The first Complainant operates on a global basis providing industry-leading document management software (“DMS”) for businesses and law firms. The second Complainant is a wholly owned subsidiary of iManage LLC and is incorporated in the UK. The Complainant has a number of registered trademarks for the term IMANAGE, including EU trademark registered on 8 January 2002 and the comparable UK trademark, created following the United Kingdom’s exit from the European Union. The Respondent is a chartered surveyor with some 40 years’ experience. He registered the Domain Name in or around 1997 along with a number of other domain names corresponding to dictionary words. The Domain Name has never been substantively used by the Respondent and currently has been parked with Sedo since about 2007.
The Complainant does not allege that the Domain Name in the hands of the Respondent was abusive when it was registered. The Complainant focuses on the Domain Name’s use, stating that the Respondent set up a subdomain, <freshfields-work .manage .co .uk>, which contains the name of one of the Complainant’s major clients, Freshfields law firm. This imitates the legitimate subdomains the Complainant uses for Freshfields, such as <freshfields-europe .imanagework .co .uk>. The Respondent denies creating the subdomains involved and claims third parties can create subdomains and obtain digital certificates like those cited by the Complainant and provides an example of email issued by SEDO to the Respondent’s legal adviser. He notes the Expert’s decision faced criticism due to this possibility. The Respondent asks for a finding of Reverse Domain Name Hijacking as this is a bad-faith attempt to abuse the DRS.
In Response, the Complainant maintains that only the Respondent with DNS control of the Domain Name could have created the subdomains relied upon, that the “Respondent’s self-serving theory” that a third party might have done so “is a fantasy” and points out that the Respondent offers no plausible third-party motive for typing those subdomains into a browser. “Only the person with control of the domain name, the Respondent, benefits by mimicking Complainants, likely for phishing purposes.” However, after the Respondent’s supplemental filing with further evidence, the Complainant accepts that the additional argument and evidence provided shows that the registration is not abusive, and should remain with the Respondent. It seeks to withdraw the Complaint.
Held: No allegation was made that the registration of the Domain Name was an abusive registration. Given that the registration of the Domain Name predates the Complainant’s registered trademarks, and there is no real evidence supporting the Complainant’s claim to have used the term iManage prior to the date the Domain Name was registered, this is perhaps not surprising. Accordingly the Panel concludes that the registration of the Domain Name does not amount to an Abusive Registration. The Complainant’s entire case concerning use of the Domain Name was predicated on the allegation that the Respondent had created subdomains that were likely to be intended for fraudulent use. It is important to note that there was no allegation or evidence that these subdomains had ever been used for anything, whether fraudulent or not. It was only their existence which was said to give rise to the allegation of an Abusive Registration. There are in the Panel’s opinion a number of serious problems with the allegations and how they have been dealt with. In any event the allegations have now been withdrawn and the Complainant accepts that the creation of these subdomains was nothing to do with the Respondent.
RDNH: The Panel considers that at this point the Complainant should have conceded that its case was misconceived. At the very least it should have belatedly sought expert technical evidence as to whether its assumptions (that the Respondent must have created the subdomains) were correct. It does not appear to have done so. Instead it decided to “double down” on its allegations and filed an Appeal Response which asserted technical issues as fact without any expert evidence in support and expressly accused the Respondent of dishonesty.
The Appeal Response also introduced new technical allegations, again unsupported by expert evidence. It was only after the Respondent was put to the time and cost of rebutting all of this material that the Complainant finally conceded that the registration of the Domain Name was not abusive, and that the Respondent had not done anything wrong. Taking all of this into account the Panel concludes that the Complainant has used the DRS in bad faith in an attempt to deprive the Respondent of the Domain Name and accordingly makes a finding that Reverse Domain Name Hijacking has occurred.
The Complainant is a large and successful corporation operating on an international basis. The Respondent has incurred Nominet’s appeal fee and legal costs, understandably seeking legal help after the Expert’s decision implied dishonesty. The Panel has no power to order the Complainant to pay the Respondent’s costs. It does however have the ability to invite the Complainant voluntarily to pay those costs and considers the Complainant should do so. It would also in the Panel’s opinion be appropriate for the Complainant to issue an apology to the Respondent.
Appeal Overturned (RDNH)
Complainant’s Counsel: NA
Respondent’s Counsel: NA
Case Comment by ICA General Counsel, Zak Muscovitch:
There is a lot to unpack from this tour de force decision, much more than I can suitably canvas in this commentary. Nevertheless, I do want to take the opportunity to point out several aspects that are worthy of consideration and want to encourage you to read the entire decision.
1. For those who are considering whether an appeals layer could be useful in the UDRP and how it could be deployed, this decision is instructive. Here, the Appeals Panel is required to conduct a “full review” and “redetermination on the merits”. There was no Response filed at first instance, but the Panel permitted new material to be filed by the Respondent given that the Respondent had a satisfactory explanation for not responding at first instance. The appeal was from a “Summary Decision”, i.e. a very brief decision rather than a fuller decision that we usually receive in UDRP proceedings.
2. This decision also shows the potential problems of deciding a case without a Response. The UDRP relies upon the adversarial system to bring out facts and arguments rather than for a Panel to serve an investigatory role. Nevertheless, when faced with no Response and the general prohibition against a Panel conducting its own investigation, what obligations does a Panel have to put a Complaint to scrutiny? On one hand, a Panel can reasonably accept unrebutted factual allegations that appear to be genuine. On the other hand, without conducting any investigation and not having the benefit of a Response, a Panel can inadvertently transfer a disputed Domain Name that should not have been transferred, as was the case here. This raises the question of whether at first instance, it was possible to avoid the unfortunate outcome that resulted. The Appeals Panel noted inter alia, that “the case against the Respondent was predicated on technical evidence about the existence and operation of certain subdomains. That technical evidence was not straightforward and ought in the opinion of the Panel to have been supported by independent expert evidence.”
When confronted with allegations resting on complex technical allegations, should the Panel at first instance have required greater evidence supporting the Complainant’s allegations, or should it have relied upon the Respondent to point those out? It is difficult to say, but I think that this case is an important reminder that Panels can be at a severe disadvantage in accepting unrebutted allegations and therefore should consistently exercise caution in accepting them where supporting evidence may be wanting.
It is of course, a Respondent’s obligation to respond if it has arguments to make and the Respondent can be at fault for not doing so, bearing in mind of course, that it is for a Complainant to make its case with sufficient evidence. But in the case at hand, there was justification for not having Responded and the Appeals Panel thereby served a crucial role in rectifying an unfortunate and unjust outcome, thereby demonstrating the important role that an appeals layer could possibly play in the UDRP if the particulars of its deployment can be satisfactorily worked out.
3. Notably, in finding RDNH the Appeals Panel noted that it “has no power to order the Complainant to pay the Respondent’s costs [but] it does however have the ability to invite the Complainant voluntarily to pay those costs and considers the Complainant should do so. It would also in the Panel’s opinion be appropriate for the Complainant to issue an apology to the Respondent.” This is remarkable indeed, and is a credit to the Panel for doing its utmost to seek justice in the unfortunate circumstances of this case. Costs awards are particularly problematic in international domain name disputes such as the UDRP (as further explained in udrp.group and in the recent WIPO-ICA Initial Report) but we can see in this case the argument for their consideration.
4. When it comes to subdomains, things are not always as they seem apparently. It appears from this case, that third parties can “create” a subdomain. Anyone could type a subdomain into a browser and it will lead to the domain name, due to the host’s configuration. Try it out for yourself by adding a subdomain to manage.co.uk, as the Respondent did with his example of BatshitCrazy .manage.co.uk. This calls into question the common assumption that subdomains are always created by the registrant or that the registrant controls them.
5. Similar concerns arise when it comes to active email servers, which are often assumed to have been created by the registrant. Here, the Respondent provided evidence that traffic to non-existent email addresses could have resulted in an MX record and that the Respondent did not in fact create a mailserver. This is an important reminder that allegations regarding mailservers may require more technical expertise and evidence than usually provided. As the Panel noted, that the “technical evidence was not straightforward and ought in the opinion of the Panel to have been supported by independent expert evidence”. Panels therefore ought not to blindly accept allegations of a technical nature without satisfactory supporting evidence as they may be misled or draw false assumptions.
Complainant Relied Upon Discredited Retroactive Bad Faith Theory
Alpha Ladder Finance Pte. Ltd. v. Joanna, Metacomp, Inc., WIPO Case No. D2025-1451
<metacomp .com>
Panelist: Mr. John Swinson
Brief Facts: The Complainant (formerly known as Metaverse Green Exchange Pte. Ltd.) is a regulated financial institution in Singapore. The Complainant “offers an integrated suite of capital markets solutions spanning securities, collective investment schemes, exchange-traded and over-the-counter derivatives. The Complainant owns Singapore Trademark Registration for METACOMP that was registered on September 29, 2023. The disputed Domain Name was registered on June 12, 2001 and currently the disputed Domain Name has been inactive for a period of time. In October 2021 and thereafter, the Complainant’s broker contacted the Respondent multiple times with increasing offers to buy the disputed Domain Name. The Respondent refused to sell and stated the domain name “is not for sale.”
The Complainant points out that the Respondent used the disputed Domain Name from 2002 to 2005 for a website with PPC links advertising domain name registration services, along with the words “coming soon!”. The Complainant alleges that use of a domain name for hosting PPC links does not of itself confer rights or legitimate interests for the purposes of the second element of the Policy. The Respondent contends that it is a Colorado-based company established in 1995, compiles, stores, and deploys meta components for business applications, supporting their development and use in the Metaverse. The Respondent further contends that these components utilize technologies such as machine learning, AI, blockchain, and IoT. The disputed domain serves as the portal for their meta-component repository, called MetaComp.
Held: The Respondent was incorporated in 1995 and is currently in good standing, while it appears to the Panel that the Complainant was established only in 2008. The disputed Domain Name was registered on June 12, 2001. The name of the Respondent’s organization corresponds with the disputed Domain Name. The Complainant admits the Respondent registered the disputed Domain Name before the Complainant acquired trademark rights and makes no claims about registration or acquisition in anticipation of those rights. The Panel finds that the Respondent did not register the disputed Domain Name in bad faith targeting of the Complainant or its trademark rights because the Complainant had no trademark rights or nascent trademark rights at the time that the Respondent registered the disputed Domain Name, see WIPO Overview 3.0, sections 3.8.1 and 3.8.2.
The Complainant submits that there is a retroactive bad faith principle that does not preclude a finding of bad faith in such circumstances, and cites Ville de Paris v Jeff Walter, WIPO Case No. D2009-1278. That case relies upon Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786, which was also cited by the Complainant. The views expressed in these cases did not represent the consensus view of panelists in 2009, and do not represent the current consensus interpretation of the Policy. This state of the consensus view of panels is very clearly stated in the WIPO Overview (which the Complainant cites for various propositions several times). There is also no evidence before the Panel demonstrating bad faith use of the disputed Domain Name by the Respondent. The Panel finds the third element of the Policy has not been established.
Complaint Denied
Complainant’s Counsel: Shook Lin & Bok LLP, Singapore
Respondent’s Counsel: Kulseth Law P.L.L.C., United States
Case Comment by ICA General Counsel, Zak Muscovitch: As the Panel noted in this case, retroactive bad faith is not a principle that reflects the consensus view of panelists. Unfortunately, some Complainants continue to self-servingly seize upon this discredited view. As also noted by the Panel in this case, the “state of the consensus view of panels is very clearly stated in the WIPO Overview (which the Complainant cites for various propositions several times)”, thereby indicating that the Complainant was familiar with the Overview yet still self-servingly went against the consensus. Perhaps it needs to somehow be made clearer for prospective Complainants so that such unfortunate instances are better avoided.
I would note that the case referenced and relied upon by the Complainant, namely Ville de Paris v Jeff Walter, WIPO Case No. D2009-1278, was overturned on appeal to court as noted in WIPO’s list of “Select UDRP-related Court Cases”. The court declared that the Complainant had engaged in RDNH and awarded the Respondent $100,000.00 in damages against the City of Paris.
Panel: No Obligation on the Registrant to Make Active Use of the Domain Name
Intact Financial Corporation v. Pontus Lindwall, CIIDRC Case No. 24695-UDRP
<intact .com>
Panelist: Mr. Peter Müller
Brief Facts: The Complainant claims to be Canada’s largest home, auto and business insurance company, with a history dating back to 1809. The Complainant changed its name to “Intact Financial Corporation” on May 13, 2009 and began using domain names such as “intact .ca” and “intactinsurance .com”. The Complainant is the registered owner of trademarks for “INTACT” including Canadian registration (May 6, 2010); US registration (Nov. 22, 2011); and a pending application in the EU (applied for on Jan. 5, 2021). The disputed Domain Name was registered on December 1, 1995, by Intact Technology Stockholm AB, a company owned by Betsson AB. The Respondent, employed by Betsson AB since 1991 and CEO since 1999, took over the Domain Name in 2016 after Intact Technology Stockholm AB was dissolved. The website was taken down in 2005 and the Domain Name was unused until 2013.
The Complainant alleges that the Respondent has never used, nor proposed to use, the domain name in connection with any bona fide offering of goods or services and has therefore passively held the domain name. Furthermore, the Complainant alleges that the Respondent acquired the domain name when it knew or ought to have known about the INTACT trademarks. Finally, the Complainant argues that the Respondent has continued to renew its registration for the Domain Name despite failing to take any action to either legitimately use or lessen the misleading appearance of the inactive “intact” landing page. The Respondent contends that “INTACT” is a generic term and does not uniquely identify the Complainant. The Complainant has not shown that its trademark is well-known or that there has been any attempt to gain commercial advantage, mislead consumers, or tarnish the INTACT Marks.
Preliminary Issue: Date of Acquisition: The Panel would like to note that it is somewhat surprising that the Panel has not received any further information from the Respondent, who is of course aware of all the facts in this regard, regarding the history of the Domain Name. The Complainant states that the “previous apparent registrant, Intact Technology Stockholm AB, had been liquidated and dissolved in 2016, leaving the conclusion that registration of the intact domain must have been (actually and/or effectively) transferred to the Respondent.” The Complainant’s allegations in this regard remained uncontested, and the Respondent did not provide any further explanation in this regard. Therefore, the Panel considers that the Domain Name was transferred to the Respondent after the liquidation of Intact Technology Stockholm AB in 2016.
Held: The Panel considers that the Complainant had no or little business activity in Sweden, where the Respondent is located, in 2016 and was not “known” in Sweden at that time. Therefore, the Panel does not assume that the Respondent knew the Complainant in 2016 or that it must have known the Complainant because of its reputation in Sweden. It is well established that the concept of constructive knowledge can only be applied in very limited circumstances, in particular where the parties are both located in the United States and the complainant has obtained a federal trademark registration. This is not the case in these proceedings. The INTACT Marks correspond to a dictionary term. It is also well established that the mere renewal of a domain name registration by the same registrant is not sufficient to support a finding of registration in bad faith, notwithstanding the registrant’s representations under Paragraph 2 of the Policy.
The Domain Name was not used in connection with a commercial website but only in connection with a placeholder website. The Respondent did not passively hold the Domain Name in accordance with the recognized principles of jurisdiction first set out in Telstra’s Case (WIPO Case No. D2000- 0003). It is well established that these principles apply only if the respondent is likely using the domain name in bad faith. The Panel finds no evidence of bad faith by the Respondent, who merely took over the asset after Intact Technology Stockholm AB’s liquidation. There is nothing in the record to indicate that the Respondent deliberately targeted the Complainant or attempted to derive any financial benefit from the domain name at the expense of the Complainant. There is no obligation to use domain names and the Respondent’s mere non-use is not sufficient to establish bad faith without further evidence.
RDNH (Considered): In the present case, the Complainant has numerous trademarks for “INTACT” throughout the world, including in Sweden, and is Canada’s largest insurance company and therefore known at least in its home market. Furthermore, the Complainant correctly established that its trademarks predate the Respondent’s takeover of the Domain Name, which, according to case law, may be considered as a new registration if the domain name was not in an unbroken chain of possession. Therefore, it is not obvious that the Complainant knew that it could not succeed on any of the required three elements. Furthermore, since the Whois information was not publicly available, the Complainant could not assess the history of the domain name with absolute certainty.
Complaint Denied
Complainant’s Counsel: Catherine Phillips-Smith
Respondent’s Counsel: Carl Wendt
Relevance of Telstra Case
<actavis .online>
Panelist: Ms. Victoria McEvedy
Brief Facts: The Complainants are both subsidiaries of Teva Pharmaceutical Industries Ltd, a well-known pharmaceuticals company, established in 1901. Teva maintains a portfolio of approximately 3,600 medicines, used by some 200 million people across 58 markets and six continents every day. The Complainants each own registered trademarks for the word mark, ACTAVIS, in a variety of different jurisdictions around the world. Actavis Holdco U.S., Inc. holds trademarks registered in the United States and Actavis Group PTC ehf holds trademarks for ACTAVIS registered in other countries. Some of these trademarks include Iceland trademark, registered on 28/11/2003; International trademark, registered on 15/03/2004; EU trademark, registered on 16/01/2006 and more. The disputed Domain Name was registered on 27 January 2025 and resolves to a site which displays pay-per-click (‘PPC’) links to sites offering goods or services within the pharmaceutical industry). The Respondent is apparently the privacy service and no further details could be obtained about the identity of the registrant.
The Complainants submits that it has been successful in numerous domain name dispute proceedings involving the ACTAVIS marks and many of these recognised that it is a mark with a reputation. The well-known status and distinctiveness of the ACTAVIS mark has been the subject of comment in many WIPO UDRP decisions. See, for example, WIPO Case No. D2023-5252 (‘the Complainants’ ACTAVIS trademark is considered as being a well-known and reputable trademark’); WIPO Case No. D2023-1244 (noting the ‘well-known nature of the Complainant’s trademark’); WIPO Case No. D2021-2834 (‘The Panel accepts the Complainant’s submission that its trademark ACTAVIS constitutes an invented and distinctive term…’); WIPO Case No. D2021-1729 (noting ‘the distinctive nature of the ACTAVIS mark’); and WIPO Case No. D2021-1704 (‘In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well-known throughout the world.’).
Held: There is no legitimate or fair use of the Domain Name on the face of it. Both passive holding and the use of PPC are neutral factors that are highly fact specific. There is no evidence of any genuine resales or distribution of the genuine item that might be nominative or other fair use. Often, where there is no website, the purpose will be for emails. Here the MX records are all configured. Such purposes include sending email, phishing, identity theft, or malware distribution. WIPO Overview 3.0, section 3.4. In such a case, the Panel is entitled to draw such inferences as are appropriate and they are that registration was not for a legitimate purpose or interest. The Respondent has therefore been granted an opportunity to come forward and answer or present compelling arguments that he has rights or legitimate interests in the disputed Domain Name but has failed to do so.
As to Bad Faith, the WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows is apposite. This is sometimes known as the passive Bad Faith test. Where a famous or well-known mark is incorporated into a domain name without any legitimate reason or explanation, Bad Faith can often be inferred. The Respondent did not come forward to explain the reasons for the selection of the disputed Domain Name and why there is no Bad Faith. Here it appears that the likely purpose of the Registrant/Respondent was for email purposes as the MX records are enabled. That purpose will very likely be for phishing and illegitimate and possibly criminal. That pushes passive holding and PPC over the line and the Panel finds there is Bad Faith. The Complainants have discharged the burden of proof under the Policy and the Complaint is accepted.
Transfer
Complainant’s Counsel: SILKA AB, Sweden
Respondent’s Counsel: No Response
Case Comment by ICA Digest Editor, Ankur Raheja:
In contrast to the previous decision that involved a dictionary word that on its face is capable of good faith use, here the Domain Name was an apparently distinctive and well-known brand. The Panel in this cased noted that “Telstra doctrine[e] focus[s] on famous or well-known marks and lack of legitimate rights and/or interests by the Respondent. The key to properly applying the Telstra test is the lack of any plausible good faith use. For more on this, see UDRP Perspectives at 3.7.
Business or Contractual Disputes Fall Outside the Scope of the Policy
Revnue Corp. v. John Cortez, NAF Claim Number: FA2504002151368
<revnue .com>
Panelist: Mr. Darryl C. Wilson
Brief Facts: The Complainant is the owner of the domestic federal registration for the mark REVNUE and its associated registered logo under which it asserts to have continuously offered ongoing business services since 2020. The Complainant claims it has prominently and extensively used, promoted, and advertised the mark for many years making the mark well known. The Complainant points out that the Respondent initially registered the domain name on June 13, 2018 as part of his duties as an officer for the Complaint. The Respondent served in various positions with the Complainant, including as CIO, CISO, and CFO. The Respondent further understood that he owed a legal obligation to the Complainant to register assets such as the disputed Domain Name, in the Complainant’s name as a company, and not in the Respondent’s own name as an individual.
The Respondent contends that the domain name was registered on June 13, 2018, by the Respondent John Cortez through his personal Google Domains account. The Respondent personally paid for the registration, and no company funds were used. At the time of registration, neither Revnue Corp. nor its predecessor Revnue Inc. existed. The original entity, Revnue Inc., was incorporated on August 20, 2018, more than two months after the domain was secured. This entity was later dissolved. The Complainant, Revnue Corp., was formed on February 10, 2021, in the State of Delaware. At no time during the existence of either entity did Revnue Inc. or Revnue Corp. compensate the Respondent for the domain or execute any written agreement requiring its transfer.
The Complainant further alleges that despite repeated requests, the Respondent has in bad faith improperly retained control of the disputed Domain Name in a clear attempt to hold the Complainant hostage for compensation. The Complainant has now removed the Respondent from all roles of responsibility with the Complainant. The Respondent further contends that the Complainant’s assertion that the domain name was registered and is being used in bad faith is both factually incorrect and legally unsupportable under the UDRP. It is impossible to register a domain name in bad faith toward a Complainant that did not yet exist and had no trademark rights. The timeline here is dispositive.
Held: The Panel notes that the <revnue .com> domain name was registered on or about June 13, 2018, which preceded the Complainant’s existence. The Complaint contends, without providing any supporting evidence, that the Respondent initially registered the Domain Name as part of his duties as an officer for the Complaint. The parties were business partners in the Complainant’s current business and in prior business relationships. The Respondent asserts, without opposition, that there are ongoing legal matters related to the parties’ past and continuing business relationships. The Panel finds that this is a business and/or contractual dispute between two parties that falls outside the scope of the UDRP. See Love v. Barnett, FA 944826 (Forum May 14, 2007) (“A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed Domain Names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty.”)
Prior panels have declined to make any UDRP findings where evidence existed that both parties acted in official capacities for the company at the center of the dispute. See Bracemart, LLC v. Drew Lima, FA 1494699 (Forum Mar. 28, 2013) (…”[b]ased upon this reasoning, the Panel concludes that the instant dispute relates to contractual interpretation and/or whether the relationship between the Complainant and the Respondent was one of employer-employee or one of partnership, which determination falls outside the scope of the Policy.”). Based upon the aforementioned cases and the record, the Panel here concludes that the instant dispute falls outside the scope of the UDRP. Because the Panel finds this matter falls outside the scope of the UDRP, the Panel finds it appropriate to dismiss the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”).
Complaint Denied
Complainant’s Counsel: Michael D. Lazzara of Leech Tishman Fuscaldo & Lampl LLC, USA
Respondent’s Counsel: Eric Alspaugh, USA
‘Negative’ Additions to Complainant’s Trademark Do Not Avoid Confusing Similarity
Elecyber International Pte. Ltd. v. Wang Sanjin, ADNDRC Case No. HK-2501985
<apkdowner .com>
Panelist: Mr. David-Irving TAYER
Brief Facts: The Complainant states that APKPure, an online platform, was created in 2014, which functions as an alternative Appstore for the Android operating system, which provides users with a wide range of apps and games for mobile devices. It has become one of the most renowned platforms of its kind globally, offering over 30 categories of applications and services in 23 languages. The Complainant demonstrated that it is the owner of trademark registrations “apkpure” trademark throughout the world, that includes US registration (July 26, 2016); UK registration (November 24, 2016); and EU registration (November 24, 2016). The disputed Domain Name <apkdowner .com> was registered on February 13, 2022.
The Complaint states that while the Complainant’s trademark and the disputed Domain Name both start with “apk”, the core part of the trademark, the entire mark is not present in the Domain Name. However, the disputed Domain Name does reproduce this core element of the Complainant’s mark. The Complainant further alleges bad faith as the disputed Domain Name resolves to a website that the Complainant alleges reproduces the Complainant’s logo and graphical aspect which aggravate the risk of confusion. The Complainant also adds that the website design style and content are highly similar if not identical for some parts (e.g. the terms and conditions page). The Respondent did not file a Response.
Held: The Complainant has established standing by providing APKPURE trademark registration certificates and shown that the disputed Domain Name is identical or confusingly similar to its APKPURE trademark. Here, the disputed Domain Name consists of the striking and starting element APK of APKPURE trademark, the descriptive word “downer” (undoubtedly referring to the idea of downloading or to a state of mind depicting depreciation) and the gTLD “.com”. The Panel mentions that APK stands for Android Package. Yet, the combination of the starting and striking element APK associated with PURE opposed to DOWNER may infer the idea of a “negative (apk) pure”. Furthermore, the Complainant has demonstrated the reproduction of the stylized logo as well as the copy or almost copy of entire webpages on the disputed Domain Name. Thus, the Panel finds that the disputed Domain Name is confusingly similar to the Complainant’s trademark and the Complainant satisfied the first element of the UDRP.
The Panel further finds that the totality of circumstantial evidence in this case indicates that the Complainant’s contentions are likely true. Therefore, the Respondent’s use of the disputed Domain Name did not confer rights or legitimate interest on him. Furthermore, the Panel finds that the Respondent registered the disputed Domain Name in bad faith because at the time of the disputed Domain Name registration he/she was aware of the Complainant and its APKPURE trademark and registered the disputed Domain Name without consent from the Complainant, to confuse and mislead visitors to his/her website. The evidence shows that the Respondent used the disputed Domain Name, which includes the Complainant’s distinctive “APK” trademark element, to direct users to a website displaying the Complainant’s APKPURE design and offering identical services. The mere modification of DOWNER, a negative word and antinomic to PURE, aggravates the intent of the Respondent. Therefore, the Panel finds that the disputed Domain Name was registered and is being used in bad faith.
Transfer
Complainant’s Counsel: Zhou Liguo, Esq., of Hiways Law Firm (Shenzhen), China
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.