The Levine Lecture series honors Gerald Levine, recipient of the ICA Lifetime Achievement Award for his significant scholarly contributions to the UDRP. Gerry is the author of “Domain Name Arbitration” and the subsequent “The Clash of Trademarks and Domain Names on the Internet.”
Join us for this unique opportunity to hear from one of the most respected voices in IP and domain name law – Mr. David Bernstein. Introduction by Mr. Brian Beckham and Mr. Zak Muscovitch. Remarks by Mr. Gerald M. Levine.
David chairs the Intellectual Property Litigation Group at Debevoise & Plimpton and is widely recognized as one of the top IP litigators in the country. He’s been described as “a luminary in the field,” “the wizard of trademark law,” and “a real litigation rock star,” and is consistently ranked at the top by Chambers, The Legal 500, and World Trademark Review.
Registration is required – please register here.
We hope you will enjoy this edition of the Digest (vol. 5.27) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Classic “Plan B” Case: Policy Used After Failure to Acquire Domain Name in Marketplace (leah .ai *with commentary)
‣ Panel: Complainant’s Trademark Limited to France; No Worldwide or Online Gambling Reputation Established (pasino .com *with commentary)
‣ Complainant Establishes Substantial Fame and Reputation in his Personal Name as a Source Identifier (piersmorgan .com *with commentary)
‣ Supplemental Register Registration Alone Does Not Confer Trademark Rights without Proof of Secondary Meaning (divebuddyapp .com)
‣ Complainant Cites Alleged Legally Relevant Developments in Refiled Complaint (thermowood .com *with commentary)
‣ Did the Panel Conflate Bad Faith Registration and Bad Faith Use? (valumax .com *with commentary)
Classic “Plan B” Case: Policy Used After Failure to Acquire Domain Name in Marketplace
CONTRACTPOD TECHNOLOGIES LTD. v. Fred Ju, NAF Claim Number: FA2506002162186
<leah .ai>
Panelist: Mr. Alan L Limbury
Brief Facts: The UK-based Complainant is the owner of several registrations for the LEAH mark including UK mark registered on July 24, 2018; EU mark registered on February 20, 2024 and US mark registered on June 18, 2024. The LEAH mark was first used on January 31, 2017 in connection with a software in the medical field by Complainant’s predecessor-in-interest, Embecta Corp., from whom the Complainant purchased the rights in the LEAH mark on August 1, 2023. Since the assignment of the LEAH mark, the Complainant has used the mark in connection with an online software platform in the legal field that includes artificial intelligence (“AI”). The disputed Domain Name was purchased by the Respondent on January 31, 2019. The Complainant alleges that the Respondent clearly intended to confuse the public with the Complainant’s LEAH mark which is used in connection with an online software with AI.
The Complainant further alleges that the Respondent’s website located at the domain name has not been in use until around June 10, 2025 and only after the Complainant sought to purchase the domain name from the Respondent for a fair price. However, the negotiations failed due to Respondent’s unreasonable counteroffer asking the Complainant to pay over a million dollars. The Respondent contends that his daughter’s name is Leah Ju and that, as an Internet enthusiast, the Respondent registered the Domain Name with the intention of developing AI-related services in her field of interest as she grows older. The Respondent further contends that he did not attempt to sell the domain name, but received an unsolicited inquiry from a stranger and replied with an unrealistically high price to discourage further contact.
Held: The disputed Domain Name was registered by the Respondent, a resident of the United States, on January 31, 2019, prior to the assignment by Embecta Corp. to the Complainant of its trademark registrations. Hence there is no evidence that, at the time of the registration of the domain name, the Complainant had rights in any LEAH marks. The Respondent himself is not commonly known by the domain name. However, it is well known that LEAH is a common female given name. The Respondent has exhibited a photograph of his daughter’s passport, showing that her first name is Leah. The Respondent says he registered the disputed Domain Name with the intention of developing AI-related services in her field of interest as she grows older. Accordingly, the Panel finds that the Respondent has shown that he has a legitimate interest in the domain name because his daughter is commonly known by the domain name.
The circumstances described above satisfy the Panel that, even if the Respondent was aware of the Complainant’s predecessor’s LEAH trademark rights at the time of registering the domain name, his purpose was not to take advantage of those rights. This purpose aligns with the Complainant’s evidence that the disputed Domain Name only became active shortly before the Complaint was filed, and still resolves to an “Under construction” page. The Panel finds that the Respondent’s passive holding of a domain name comprising his daughter’s well-known given female name does not constitute evidence of registration and use in bad faith. Furthermore, the Panel finds that the recent correspondence between the parties, occurring approximately six years after the registration of the domain name, does not demonstrate that the Respondent registered the Domain Name primarily for the purpose of selling it, as described in Paragraph 4(b)(i) of the Policy.
RDNH: The disputed Domain Name was registered almost 4 years before the Complainant acquired any rights in the LEAH mark, which it did by assignment from Embecta Corp. in 2023, and prior to the registration by the Complainant of its LEAH mark in the United States and the European Union. On January 5, 2025, the Complainant anonymously offered US$2,000 to buy the domain from the Respondent, who refused; a later increased offer of US$3,500 was also declined. The Complaint was filed on June 23, 2025. In the Panel’s view, this is a classic “Plan B” case, i.e., using the Policy after failing in the marketplace to acquire a domain name. This stratagem has been described in several UDRP cases as “a highly improper purpose” and has contributed to findings of RDNH.
Complaint Denied (RDNH)
Complainant’s Counsel: Isabelle Jung Greenberg of CRGO Law, Florida, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: What is the significance of awareness of a Complainant’s trademark at the time of a Respondent’s domain name registration? Awareness of a Complainant’s trademark is a key component of bad faith but it is not necessarily in and of itself, proof of bad faith. Just because a Respondent was aware of a Complainant’s trademark does not necessarily mean that the Complainant’s trademark was the reason for the registration. Take for example, ACME. If the Respondent wasn’t even aware of the existence of an ACME brand owned by the Complainant at the time of domain name registration, generally there could be no bad faith (absent a willful blindness) because the Respondent cannot have targeted a brand that it was never aware of. On the other hand however, if a Respondent was in fact aware of a particular Complainant’s ACME brand, then it is at least conceivable that the Respondent targeted the Complainant’s brand since awareness is a precursor to targeting.
In the present case, the Panel astutely noted that “even if [emphasis added] the Respondent was aware of the Complainant’s predecessor’s LEAH trademark rights at the time of registering the domain name, his purpose was not to take advantage of those rights”. As can be seen from this case, awareness alone is not proof of bad faith and the surrounding circumstances must be taken into account. When a domain name corresponds to a common term such as LEAH, then even if the Respondent had been aware of the Complainant’s LEAH brand, the ubiquity of the word combined with the fact that it also corresponded to the Respondent’s daughter’s name, clearly rebuts the allegation that the Complainant’s trademark was the target of the registration.
I do however want to point out one other interesting aspect of the case. An issue occasionally arises as a result of an assignment of trademark rights from a previous trademark owner to the Complainant, as was the case here. Generally, my view is that upon a trademark assignment which includes all the requisite elements including goodwill, the transferee Complainant will have stepped into the shoes of the prior trademark owner, in full. In other words, whatever rights that the prior trademark owner had – even at the time of domain name registration which preceded a trademark assignment – vest in the Complainant. As such, if a Respondent targeted the previous trademark owner rather than the current trademark owner, namely the transferee Complainant, it matters not – generally speaking – since the current trademark owner has all the rights that the previous trademark owner had.
Panel: Complainant’s Trademark Limited to France; No Worldwide or Online Gambling Reputation Established
<pasino .com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant is a limited company organized under French law in 1973, headquartered in Paris, and listed on the Euronext stock exchange. The Complainant and its affiliates operate 44 casinos, 12 hotels, and 44 restaurants in France, Switzerland, Belgium, and Tunisia. The Complainant operates a website, only in French, at <partouche .com> and linked social media sites. The Complainant’s website includes some free online casino games but not gambling for real money.
The Complainant holds a number of trademark registrations, including a French registration dated February 27, 1998. The Respondents acquired the disputed Domain Name in 2019, in connection with launching an online gambling business. The Complainant alleges that the Respondent was aware of the Complainant’s mark and intended to deceive Internet users for financial gain and also with malicious intent.
The Respondent has an online gambling license from the Costa Rican authorities and holds an EU trademark, registered on August 6, 2021, for PASINO, however, the EUIPO website lists its status as cancellation pending. The Respondent observes that while the Complainant holds many trademark registrations, only one features the word PASINO, and only six of its casinos operate under the PASINO brand, all in France. The Respondent is licensed and operates solely in the online gambling market, from Costa Rica, directs its business at non-French markets, and implements geo-blocking measures to exclude French consumers. The Respondent further contends that the Complainant repeatedly tried to take down the Respondent’s websites via complaints to the DNS and content delivery provider, but the Respondent successfully rebutted them. These interactions made the Complainant aware of the Respondent’s EU trademark and efforts to block access for French consumers.
Held: The Panel finds that, before notice to the Respondent of the dispute, the Respondent used the disputed Domain Name in connection with a bona fide offering of goods or services (Policy paragraph 4(c)(i)), a licensed online gambling website operating from Costa Rica before the current dispute arose. WIPO Overview 3.0, section 2.2. The Panel also finds that the Respondent has been commonly known by a corresponding name (Policy paragraph 4(c)(ii)), as reflected in a mark displayed on the Respondent’s websites. WIPO Overview 3.0, section 2.3. The Respondent holds a European Union trademark registration for this figurative mark featuring the word “pasino” in stylized letters. The Response also attaches reviews of gambling sites referring to the Respondent’s Pasino sites.
The Panel further observes that the Respondent does not deny prior awareness of the Complainant’s mark but demonstrates that many other companies also use PASINO marks and that the Complainant’s use of that mark is limited to physical casinos in France, while the Respondent operates entirely online and takes steps to prevent access by consumers in France or other jurisdictions where online gambling is illegal or heavily restricted. The record shows that the Complainant is well established in the casino industry in France and adjacent francophone regions, not that it has a “worldwide” reputation as claimed in gaming, and certainly not in online gambling. The evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark under the terms of the Policy.
RDNH: The Respondent has requested such a finding here, for the reasons mentioned above. This is a close case for entering such a finding, as the Complainant was aware of the Respondent’s ongoing business activities using the disputed Domain Name and its European Union trademark. The Complainant at least should have addressed these issues convincingly in the Complaint, as well as mentioning the pending .IO proceeding and the Complainant’s prior ownership of the disputed Domain Name. Ultimately, however, the Panel is not inclined to find bad faith on the part of the Complainant in pursuing a Complaint against a Respondent that, on the face of it, is in a similar business and using a domain name identical to the Complainant’s well-established mark. Therefore, the Panel denies the request for a finding of RDNH.
Complaint Denied
Complainant’s Counsel: Jacob Avocats, France
Respondent’s Counsel: Dreyfus & associés, France
Case Comment by ICA General Counsel, Zak Muscovitch: Do counsel represent both Complainants and Respondents? Sometimes, yes, as we saw here. Law firm, Dreyfus & associés whose principal is Panelist Natalie Dreyfus, has filed many Complaints (see UDRP.Tools report here) but this is the first time apparently, that Dreyfus & associés has represented a Respondent in a UDRP proceeding (see here).
This is good to see, as counsel and Panelists alike can learn a lot from seeing things from the other side once in a while. Another firm that prominently represents a lot of Complainants (see here) but who has also on occasion represented Respondents, is Hogan Lovells (see here). For example, see this case from 2021 where the Respondent was successfully represented by prominent counsel and Panelists, David Taylor and Jane Seager from Hogan Lovells.
Congratulations to Dreyfus & associés on its successful Response.
Also see similar decision in <pasino .io> WIPO Case No. DIO2025-0015
Complainant Establishes Substantial Fame and Reputation in his Personal Name as a Source Identifier
Mr. Piers Morgan, Wake Up Productions Limited v. W NA, H, WIPO Case No. D2025-0882
<piersmorgan .com>
Panelist: Mr. Nick J. Gardner
Brief Facts: The First Complainant Piers Morgan is a well-known journalist, television presenter, and TV personality. The First Complainant’s full name is Piers Stefan Pughe-Morgan, but he has been known professionally and in popular culture by reference to the shortened form PIERS MORGAN since 1988. The Second Complainant Wake Up Productions Limited manages the intellectual property rights of the First Complainant, and is the registered proprietor of United Kingdom trade mark PIERS MORGAN UNCENSORED, registered on June 10, 2022. The First Complainant is a director of the Second Complainant. The disputed Domain Name was registered on November 29, 2005 and resolves to a parked page. The Respondent did not file a Response.
Held: In the present case, the evidence establishes that on any view the First Complainant has a very substantial degree of fame and reputation in relation to PIERS MORGAN which operates as a source identifier for the business he carries out as a journalist, TV presenter, and TV personality. By way of example, he has over 2.3 million followers on his “@piersmorgan” Instagram account and his TV talk show “Piers Morgan Uncensored” has been streamed on YouTube over 1 billion times. The Panel has no doubt that the First Complainant has unregistered trademark rights in PIERS MORGAN. See also WIPO Overview 3.0 at section 1.5. Moreover, the Panel notes that the Second Complainant has provided evidence of registered trademark rights in PIERS MORGAN UNCENSORED, and the disputed Domain Name is confusingly similar to that registered trademark. The Panel finds the first element of the Policy has been established.
The disputed Domain Name was registered on November 29, 2005. It is clear that at all material times since 2005 the Complainant has been a very well-known figure. His name is distinctive and unambiguously refers to him and no one else with any fame or reputation. The Panel considers that registration of a domain name because it corresponds to the name of a well-known celebrity, with a view to in some way exploiting that fact, amounts to registration in bad faith. Insofar as the disputed Domain Name has been linked to parking pages with algorithmically generated links to third party pages the Panel concludes that paragraph 4(b)(iv) of the Policy applies as the disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s trade mark. It is well established that where a domain name is used to generate revenue in respect of “click-through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith.
Transfer
Complainant’s Counsel: J A Kemp LLP, United Kingdom
Respondent’s Counsel: Tidman Legal, United Kingdom
Case Comment by Digest Editor, Ankur Raheja: Normally, in domain name proceedings involving a personal name, it can be quite challenging for the complainant to prove that their personal name functions as a source identifier and has acquired secondary meaning. As stated in section 1.9 of the udrpperspectives.org: “A personal name enjoys protection as an unregistered (common law) trademark, if it has become a trademark-like identifier and has acquired secondary meaning… The standard of establishing common law trademark rights for personal names should be the same as for other marks, namely specific and strong evidence of acquired secondary meaning rather than mere allegations.” Herein, it is undeniable that the Complainant enjoys a significant reputation, having been a journalist, TV presenter, and TV personality for over two decades, while the disputed domain name was registered in 2005.
The Panel notes: “In the present case, the evidence establishes that on any view the First Complainant has a very substantial degree of fame and reputation in relation to PIERS MORGAN which operates as a source identifier for the business he carries out as a journalist, TV presenter, and TV personality. By way of example, he has over 2.3 million followers on his “@piersmorgan” Instagram account and his TV talk show “Piers Morgan Uncensored” has been streamed on YouTube over 1 billion times.” Additionally, his X account has 8.9 million followers. Therefore, based on the evidence provided, it is clear that the complainant’s personal name meets the threshold requirement of the Policy for protection as a common law trademark.
See a recent decision in Nativ Winiarsky v. Todd Bank Case No. D2025-0047, wherein the Complainant, an attorney, was unable to prove that his personal name operates as a source identifier: “The Panel is unable however to find, on this record, that the Complainant’s surname by itself has acquired distinctiveness as an unregistered mark for the purposes of the Policy… there is no real evidence in the record or on the website of the Complainant’s firm that the Complainant’s services are advertised and sold under the Complainant’s name alone or that the Complainant’s name is recognized by a relevant market as a service mark for the Complainant law firm.”
Also see related article at DNW.com.
Supplemental Register Registration Alone Does Not Confer Trademark Rights without Proof of Secondary Meaning
Davis Companies Inc. v. Mitchell Embrey, WIPO Case No. D2025-2083
<divebuddyapp .com>
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The US-based Complainant is the owner of the United States Registered trademark for DIVE BUDDY, which has been registered in the Supplemental Register since January 20, 2009 in International Class 45. The Complainant’s application was filed on July 14, 2008 and claims a first use in commerce on March 4, 2006. The disputed Domain Name was registered on July 29, 2024 and resolves to a website promoting the “Dive Buddy App”. The screenshot of the website included in the Complaint displays a logo: 
and the text describing core offerings and user experience.
The Respondent contends that he has hired developers who are working on this yet to be released app. The website also appears to have functionality for divers and dive centres to register and is offering for sale some goods such as goggles’ straps and merchandise. On April 8, 2025, the Complainant sent a cease and desist letter to the Respondent, who did not accept the Complainant’s demands. The Respondent has applied to register its trademark in the United Kingdom, but the Complainant has opposed the registration of that application.
Held: It is well accepted that the first element functions primarily as a standing requirement. The Complainant has proven ownership of the registration in the United States of registered trademark, DIVE BUDDY. However, the trademark is registered in the Supplemental Register, not the Principal Register. Panels have consistently recognised that mere registration in the Supplemental Register in the United States does not confer trademark rights for the purposes of the Policy. It is necessary to show that such marks have acquired secondary meaning or distinctiveness in fact. WIPO Overview 3.0, section 1.2.1. The Complainant does state, as claimed in the application, that it has been using its trademark in commerce since 2006.
That claim is mere assertion, however, and unsupported by evidence, section 1.3 of WIPO Overview 3.0. The onus is on the Complainant to provide suitable evidence. As highlighted in the emphasized sentence, the evidence supporting a claim to acquired distinctiveness should be filed in the Complaint. It was not in this case. Further, the Complainant has chosen to file an unsolicited supplemental filing in reply to the Response and, notwithstanding the direct challenge in the Response in reliance on these propositions, has not provided that evidence. In these circumstances, the Panel accepts the Respondent’s submission that the Complainant has failed at the threshold to establish the required trademark rights.
RDNH: In this case, the Panel notes that the Complainant claims to have been using its trademark since 2006. It is also noteworthy that a substantial part of the Respondent’s activities directly overlap with the services for which the Complainant has obtained its registration. The Respondent has also not requested a finding of reverse domain name hijacking. In those circumstances, while the Complaint has failed, the Panel declines to find reverse domain name hijacking.
Complaint Denied
Complainant’s Counsel: Represented Internally
Respondent’s Counsel: John Berryhill, Ph.d. Esq., United States
Complainant Cites Alleged Legally Relevant Developments in Refiled Complaint
<thermowood .com>
Panelist: Mr. W. Scott Blackmer (Presiding), Ms. Alissia Shchichka and Mr. Rodrigo Azevedo
Refiled Case: This dispute is a refiled case. The previous proceeding, Lämpöpuuyhdistys Ry v. Transfer Agent, Dan .com, Global Forest Lumber Company LLC and Blue Lake Lumber LLC, WIPO Case No. D2023-4796, involved the identical disputed Domain Name and parties, wherein the Panelist denied the complaint. The Complainant cites what it claims are “legally relevant developments” since that decision warranting a refiling of the Complaint.
Brief Facts: The Complainant is a non-profit association registered in Finland that oversees the International ThermoWood Association, which operates a website at <thermowood .fi>. The Complainant is the owner of the EU trademark for THERMOWOOD, registered on September 27, 2000, in International Class 19 for building materials. The Complainant non-exclusively licenses its trademark to various wood product manufacturers who meet the association’s standards. These licensees, including the Turkish company Novawood, may also permit their distributors to use the THERMOWOOD trademark under specified requirements. Novawood entered into an “Exclusivity Agreement” with Blue Lake on June 1, 2023, designating the Respondent Blue Lake Lumber LLC (“Blue Lake”) as Novawood’s exclusive dealer in the United States of America, Canada, and the Caribbean Islands.
The Complainant asks the Panel to reach a different result from the decision in the previous proceedings between the parties because the Exclusivity Agreement between Blue Lake and Novawood, on which the Respondent relied, has since been terminated, and a less redacted version of that agreement shows that it referred to licensing Novawood marks not sub-licensing the Complainant’s THERMOWOOD mark. The Respondent contends that the disputed Domain Name was available to the Complainant for decades; it was offered for sale and only acquired by the Respondent when it became a distributor of THERMOWOOD products, not to keep it from the Complainant. The Respondent has been using it legitimately in its business to sell THERMOWOOD products in its territory, not to damage the Complainant.
Held: The Panel is not in a position in this UDRP proceeding to adjudicate the contractual dispute between Novawood and the Respondent Blue Lake. In any event, the Exclusivity Agreement does not by its terms appear to address the licensing of the Complainant’s THERMOWOOD trademark but refers explicitly to Blue Lake’s use of Novawood’s marks in marketing on websites and in other locations, which is not relevant to the current proceeding. The Respondent correctly observes that the Complainant’s Trademark Terms of Use do not expressly refer to domain names but would arguably allow the use of the Complainant’s mark in a domain name associated with a website that met the conditions of the Terms of Use, limited to approved products and identifying qualified producers such as Novawood. Consequently, the Panel finds on this record that the Respondent has neither proven licensing rights in the THERMOWOOD mark nor met the tests for legitimate fair use of the mark in the disputed Domain Name.
The Panel further notes that the Respondent was indisputably aware of the Complainant’s mark when the Respondent acquired the disputed Domain Name at the time it became a distributor of THERMOWOOD products. The Complainant makes a good argument that the Respondent never had an express license or sub-license to use the THERMOWOOD mark for a domain name but only a license from Novawood (now in doubt because of the termination letter) to use Novawood marks. But the Complainant argues only vaguely that it is unfair and unlawful for the Respondent, unquestionably an authorized THERMOWOOD distributor at least until October 2024, to use the THERMOWOOD mark in a domain name. The Complainant’s Trademark Terms of Use do not clearly prohibit this. Thus, the evidence does not point to an insidious motive by the Respondent at the time of its acquisition of the disputed Domain Name to lure Internet users for commercial gain to a website with an intentionally confusing domain name, in an effort to sell them competing products, an example of bad faith under the Policy, paragraph 4(b)(iv).
The Policy requires a showing of bad faith both at the time of registration and in subsequent use, and in this case the Respondent appears to have legitimately registered the disputed Domain Name and initially used it solely in connection with its distributorship of THERMOWOOD products in its designated territory. If the Respondent has since exceeded those bounds, the Complainant’s remedies may lie elsewhere than in the UDRP.
RDNH: As outlined above, the Panel found sufficient changed circumstances and new evidence to warrant a refiled Complaint. Given that finding, the Panel is not prepared to enter a finding that the Complaint was brought in bad faith, despite the Complainant’s ultimate lack of success.
Complaint Denied
Complainant’s Counsel: Laine IP Oy, Finland
Respondent’s Counsel: Baril Advogados Associados, Brazil
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel expertly navigated the facts and applied the correct test, namely as the Panel stated, that “the Policy requires a showing of bad faith both at the time of registration and in subsequent use” [emphasis added], with the Panel noting that “in this case the Respondent appears to have legitimately registered the disputed Domain Name and initially used it solely in connection with its distributorship of THERMOWOOD products in its designated territory”. In UDRP disputes, restraint can be the better part of Panelist valor. An astute Panel will recognize that not all disputes, or elements of a dispute, need to be ultimately decided by the UDRP, as the Panel noted it was “not in a position in this UDRP proceeding to adjudicate the contractual dispute between [the parties]”. Court always remains an option for those cases which do not fit into the scope of the UDRP, as the Panel succinctly noted: “If the Respondent has since exceeded those bounds, the Complainant’s remedies may lie elsewhere than in the UDRP”.
Did the Panel Conflate Bad Faith Registration and Bad Faith Use?
Asviro Inc. v. Katarzyna Bieniek, NAF Claim Number: FA2505002156922
<valumax .com>
Panelist: Ms. Dawn Osborne
Brief Facts: The Complainant claims common law rights in the mark VALUMAX used for medical supplies since at least 2002 in the US. The disputed Domain Name was acquired by the Respondent in 2009, which the Complainant further claims is identical to the Complainant’s mark for the purposes of the Policy. The Complainant alleges that the disputed Domain Name has been used for competing pay-per-click links, which is not a bona fide offering of goods or services or a legitimate non-commercial or fair use. The Respondent has acted in bad faith disrupting the Complainant’s business and diverting Internet users for commercial gain with actual knowledge of the Complainant’s rights. The Respondent has been the subject of four other adverse decisions under the UDRP where she has been found to be in bad faith when registering other domain names containing third party trade marks. The Respondent did not submit a Response in this proceeding.
Held: The Domain Name is being used for competing pay-per-click links. Since this is a commercial use, it does not qualify as a bona fide offering of goods or services, nor does it constitute legitimate non-commercial or fair use. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017). The Respondent did not file a response to the Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name. The aforesaid hosting of competing commercial pay-per-click links, further indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain and can also indicate actual knowledge of the Complainant and its business.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to her website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the web site or products or services offered on it likely to disrupt the business of the Complainant. Finally, the Panel also notes the four adverse decisions against the Respondent involving the marks of other third party trade mark owners indicating a pattern of bad faith activity, see Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA 1558045 (Forum July 10, 2014). As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith.
Transfer
Complainant’s Counsel: Brett Lewis of Lewis & Lin, LLC, New York USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: We saw above in the Thermowood case that the Panel correctly noted that “the Policy requires a showing of bad faith both at the time of registration and in subsequent use” [emphasis added]. The material time for determining bad faith registration is of course, at the time of registration of the Domain Name, whereas bad faith use can occur at any time subsequent to the Domain Name registration. Where a Domain Name is used in bad faith, it doesn’t necessarily mean that the Domain Name was originally registered in bad faith. A domain name can for example, has been registered in good faith and subsequently have been purposefully or inadvertently even, used for infringement or bad PPC links. As such, current bad faith use is not a stand-in for original bad faith registration and to conflate the two is an error.
In the present case, the Panel found that “the Domain Name is [emphasis added] being used for competing commercial pay-per-click links”. The use of a domain name for competing PPC links can indeed be evidence of bad faith use, as it was here.
Now let’s turn to bad faith registration. What was the evidence or basis for finding bad faith registration of the Domain Name in 2009? If the Complainant had proven that the Respondent had been using the disputed Domain Name for bad PPC since 2009 or shortly thereafter, that could be compelling evidence that the Respondent’s original intent was to target the Complainant, provided however that the Complainant had a sufficient reputation at the time of Domain Name registration in 2009 such that it was likely the target of what is clearly an amalgam of two common terms and which is nearly identical to valuemax (with an “e”) .
The decision however, is silent on these two crucial aspects of reputation and original intent. The decision does not disclose whether the Complainant had a significant reputation in 2009, whether it was the predominant or primary user of this term, why the Complainant has never obtained registered trademark rights, whether there are any other users of the VALUMAX or VALUEMAX, how many bad PPC links there were amongst neutral ones, if any, nor crucially, at what point in time the bad PPC arose.
If no such evidence was filed, the Complainant likely had not proven that the Domain Name was registered in bad faith in 2009 – only that it had recently been used in bad faith – and this would clearly be insufficient under the Policy. Conflating the two is clearly an error in the application of the Policy.
Moreover, although the existence of prior UDRP proceedings against the Respondent can of course be taken into account, each case must stand on its own merits. A Respondent cannot be found guilty of cyberquatting as a result solely of adverse decisions against it in previous cases. Here, the Panel noted “the four adverse decisions against the Respondent involving the marks of other third party trade mark owners indicating a pattern of bad faith activity”. But did the Panel note four previous decisions that went in the Respondent’s favour? (See here). No mention of these were made in the decision, leaving the impression that the Complainant only proved bad faith use without evidence of bad faith registration in 2009, aided by an incomplete picture of the Respondent’s record, which in any event is not determinative of the outcome in the present case. If this impression is incorrect because the material facts were present but just not referenced in the decision itself, that is also problematic as parties and stakeholders are entitled to a reasonably clear picture of the case from the decisions rendered by Panelists.
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.