Complaint Filed Despite “Voluntary” Rebranding
Being overly aggressive with the UDRP can sometimes backfire, as we saw here. Having already completed the rebranding prior to the Complaint being filed, the Respondent demonstrated its willingness to voluntarily resolve this matter.
Nevertheless, it was the Complainant’s allegation of bad faith registration and use combined with a lack of legitimate interest which was to be tested in this case, as the Panelist did here. The Panelist correctly concluded that the Respondent had credibly explained its selection of the Disputed Domain Name and had actually used it for a bona fide business which was different from the Complainant’s own business… continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 5.32) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Complaint Filed Despite “Voluntary” Rebranding (chai .new *with commentary)
‣ Panel “Wrong and an Abuse of Process” to Force Respondent to Respond to Complaint (sbk .com *with commentary)
‣ Another Absolutely Brutal UDRP Complaint (topaz .com *with commentary)
‣ “Hopelessly Flawed Plan B” Case Against Domain Name Trader (cloudtravel .co.uk *with commentary)
‣ Complainant Should Have Recognized the Lack of Prospects for Success, With or Without Legal Advice (redcat .com *with commentary)
Complaint Filed Despite “Voluntary” Rebranding
Chai Research Corp. v. Ahmad Awais / Langbase, NAF Claim Number: FA2507002163671
<chai .new>
Panelist: Mr. Eduardo Magalhães Machado
Brief Facts: The Complainant claims that it is a leading artificial intelligence platform, performing research in conversational generative artificial intelligence and that it invests significant amounts in developing and marketing its CHAI app and platform. It claims that it is the owner of the CHAI trademark, which would be registered or the subject of pending trademark applications in many countries around the world. It claims it also owns the domains <chai-research .com> and <chai .ai>, and has been using the CHAI mark since at least as early as March 31, 2021. The disputed Domain Name in dispute was registered on February 20th, 2025 and redirects users to <command .new>. The Respondent is a U.S. company that supplies advanced cloud infrastructure and developer tooling for artificial intelligence agents. Among its offerings is a tool formerly branded as CHAI, an acronym for Computer Human AI, which assists software developers in generating code and deploying AI agents on Langbase’s proprietary platform.
The Complainant alleges that the disputed Domain Name resolves to a site at <chai .new> that describes artificial intelligence chat products and services similar to the Complainant’s web-based offering. This shows that the Respondent registered the disputed Domain Name with knowledge of the Complainant’s rights and intended to create an association with the Complainant’s products and services. The Respondent contends that its actions following the Complainant’s initial contact disprove any bad faith, as it has immediately proposed a voluntary rebranding plan, providing regular updates on rebranding progress. In addition, the rebranding was completed as promised before the complaint was filed. The Respondent explains that it has already fully migrated from <chai .new> to <command .new>, pursuant to the pre-existing agreement with the Complainant and not in response to the Complaint, and that the domain now merely redirects to preserve existing user bookmarks and marketing materials, which would be a reasonable transition practice.
Held: In independent research conducted by this Panel, which accessed both the Complainant’s website and the Respondent’s domain through the Internet Archive, although both clearly use artificial intelligence to offer their services, which justifies the use of the acronym ‘AI’ in the “CHAI” sign in both cases, their market focus and target audience are notably different. The record further shows that the Respondent’s CHAI platform was independently covered in a third-party technology article, describing how developers could use Respondent’s tools to create custom AI agents. Independent coverage by an unaffiliated source supports that the Respondent used the Domain Name for a genuine developer-focused product, not to target the Complainant’s consumer-facing chatbot services. In light of the foregoing, the Panel finds that the Respondent has demonstrated legitimate interests in relation to the disputed Domain Name, having used it in connection with a bona fide offering of services prior to any notice of this complaint or contact made by the Complainant.
Further, the Respondent has credibly demonstrated that it adopted the term “CHAI” as an acronym for “Computer Human AI”, which aligns with the nature of its services, namely developer‑focused infrastructure for creating and deploying AI agents. The Respondent’s platform was not aimed at consumer end-users seeking AI chat experiences, but rather at software developers building their own applications. This distinction in purpose and target audience significantly reduces the likelihood of confusion and undermines an inference of bad faith intent. On the contrary, the Respondent’s behavior when first contacted by the Complainant, by a representative, weighs against a finding of bad faith. The Respondent promptly expressed willingness to adopt a new name and requested only a reasonable transition period to ensure service continuity for its existing developer community. The record also shows that, by July 5, 2025, the Complainant itself, by its representative, acknowledged in email correspondence that the Respondent had already shifted its branding to “COMMAND by Langbase”.
RDNH: On the same day that the Complaint was filed, after several email exchanges in which the Respondent showed clear signs of good faith, requesting a reasonable period to change the brand name, the Respondent emailed the Complainant updating that it had already selected a new name and was actively migrating from “CHAI” to that new branding. By July 5, 2025, the rebranding had already been implemented, as the Complainant expressly acknowledged; instead of pursuing or concluding the cooperative resolution already underway, the Complainant initiated this administrative proceeding.
In addition, the Complainant failed to provide evidence to support two of the three required elements under the Policy. This is particularly notable given that the Complainant was aware of the identity of the Respondent from the outset, yet still chose to rely primarily on conclusory allegations rather than presenting concrete documentary evidence. Finally, the filing of this Complaint despite the ongoing direct dialogue and the Respondent’s active rebranding efforts, already acknowledged by the Complainant shortly thereafter, reflects a disregard for the cooperative path that was available.
Complaint Denied (RDNH)
Complainant’s Counsel: Kim Boyle of Richard Law Group, Inc., USA
Respondent’s Counsel: Omar Imtiaz, USA
Case Comment by ICA General Counsel, Zak Muscovitch: Being overly aggressive with the UDRP can sometimes backfire, as we saw here. Having already completed the rebranding prior to the Complaint being filed, the Respondent demonstrated its willingness to voluntarily resolve this matter.
Nevertheless, it was the Complainant’s allegation of bad faith registration and use combined with a lack of legitimate interest which was to be tested in this case, as the Panelist did here. The Panelist correctly concluded that the Respondent had credibly explained its selection of the Disputed Domain Name and had actually used it for a bona fide business which was different from the Complainant’s own business.
Perhaps the Complainant has a claim to make based upon trademark infringement based upon similarity of the respective mark and services, however that is an issue that must be adjudicated in court since there is no bad faith registration and use, and there is a legitimate interest, as understood by the UDRP. In contrast to infringement actions, the UDRP generally requires intent. Moreover, the UDRP generally does not meddle in disputes which are exclusively trademark infringement matters, i.e. absent the specific criteria established by the Policy. Where however, trademark infringement exists alongside contravention of the UDRP, the Policy retains concurrent jurisdiction with courts.
I must include a word about “independent Panelist research” in this case. There is an ongoing issue with the appropriateness, degree, and procedures for undertaking such research, as I have written about previously (see my previous commentary here, for example).
In the present case, the Panel conducted independent research by accessing the Complainant’s website and its “CHAI” chat, as well as the old content of the Respondent’s domain through the Internet Archive. This independent research was in addition to evidence presented in the record itself, namely third party blog coverage of the Respondent’s CHAI platform.
I will once again repeat what UDRP Perspectives says at 0.3 about this issue:
Panelists are not charged with investigating allegations. Rather, the Panelist has a much more modest duty; to decide a case based upon the evidence presented by the parties themselves. Where that evidence is found wanting, that is not the Panelist’s problem to solve, nor should they attempt to. Nevertheless, it is sometimes a Panelist’s duty and well within a Panelist’s ambit, to verify some basic factual allegations, such as the existence and content of a relied upon trademark registration and the existence and content of a website associated with the disputed domain name. Beyond that, a Panelist should be wary of wading into an inquisitorial approach to cases rather than relying upon the adversarial process.
For example, a Panelist should verify that a trademark registration remains valid and has not been cancelled or assigned, and that the Complainant is the true owner of the trademark. A Panelist should also ensure that the trademark registration does not claim a disclaimer or that it is on the U.S. supplemental register. When verifying the existence and content of a website associated with the Domain Name that is relied upon by the Complainant, the Panelist may also wish to visit the website to verify that the Complainant’s exhibits fully and accurately show the content. This may be particularly relevant to do when PPC advertisements are alleged, as more fully discussed below at Section 2.9.
Independent Panelist 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. Where a Complainant’s trademark is highly distinctive and well-known, independent verification of the Complainant’s allegation of exclusive use will usually not be required. However, where a trademark appears to possibly lend itself to other meanings or uses or where it is not well-known, a Panel may determine that it is appropriate to check publicly available records, such as trademark databases and Google searches. However, where such independent 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 and providing them with the opportunity to address this new evidence.
A Panel should exercise great caution in both the extent and the conclusions to be drawn from any independent research. A Panel should not make a party’s case for them if the case is deficient. Nor should the evidence uncovered by the Panel itself by determinative of the outcome without first providing both parties an opportunity to review and comment on the evidence that the Panel itself uncovered and that is not otherwise in the record
It is well established there is an important role for independent Panelist research, however its proper scope and application remain to be conclusively determined.
Panel “Wrong and an Abuse of Process” to Force Respondent to Respond to Complaint
Smarkets Limited (UK) v. zp wong, WIPO Case No. D2025-1527
<sbk .com>
Panelist: Mr. John Swinson (Presiding), Mr. Aaron Newell and Ms. Jane Lambert
Brief Facts: The Complainant, registered in England and Wales, gives no details about itself or its business, except for using the domain name <smarkets .com> for emails. The site <smarkets .com> is run by Smarkets (Malta) Limited, a Maltese company not mentioned in the Complaint, and operates an online racing and sports betting platform. The Complainant owns several trademark registrations for SBK in stylized form, including in the United Kingdom trademark, registered on July 27, 2018. One of the Respondent’s investors bought the domain name on June 20, 2017 for US $199,900 on behalf of the investor group for a sports gaming platform. The Complainant alleges that the Respondent has not created any website for the disputed Domain Name, indicating no intent to use it for a bona fide offering of goods or services.
The Respondent contends that he purchased the disputed Domain Name because the 3-letter domain names are inherently more valuable than longer domain names. The letters SBK denote, in the sports betting sector, the common term “Sportsbook,” and the disputed Domain Name was acquired in good faith for the purposes of a planned business. The Respondent further contends that the Complainant offered to purchase the disputed Domain Name in May 2018 and the Respondent refused the offer and told the Complainant that the disputed Domain Name was not for sale. The Complainant has reached out to the Respondent on several other occasions since 2018, and thus over the past seven years, expressing interest in acquiring the disputed Domain Name.
Held: The evidence in the case file as presented does not indicate that the Respondent’s aim in acquiring the disputed Domain Name was to profit from or exploit the Complainant’s trademark. The disputed Domain Name was acquired by the Respondent on June 20, 2017, which is prior to the Complainant filing for trademark protection on April 27, 2018. The Complainant does not assert rights prior to June 20, 2017 through use of SBK or otherwise. In fact, the materials in the case file show that the Complainant did not launch its SBK service until 2019.
Accordingly, on the evidence before the Panel, the Respondent could not have been aware of the Complainant’s SBK trademark when the Respondent acquired the disputed Domain Name. The Panel finds that the Respondent did not register or acquire the disputed Domain Name in bad faith targeting of the Complainant or its trademark rights because, based on the materials in the case file, the Complainant had no trademark rights at the time that the Respondent acquired the disputed Domain Name.
RDNH: The Complaint provided no details of the prior and several communications between the Complainant, including its Chief Executive Officer, and the Respondent regarding the disputed Domain Name. Moreover, the evidence suggests that the Complainant was aware that the Respondent acquired and used the disputed Domain Name before the Complainant filed its trademark applications for SBK. Knowing this, the Complainant should have known that its case had zero chance of success. Finally, the Complainant filed the Complaint with no evidence of bad faith use by the Respondent. The Complaint, in respect of the third element, simply states that the Respondent obtained the Domain Name <sbk .com> solely to sell for profit and points to a GoDaddy listing with broker services, but offers no evidence that selling was the sole purpose. In fact, the evidence is to the contrary.
The Panel could list several submissions and assertions made by the Complainant which are not borne out by any reasonable interpretation of the evidence that the Complainant had to hand when the Complainant filed the Complaint. This dispute involved a Domain Name comprising only three letters. In the circumstances, one would expect that the Complainant would have provided substantial evidence of both the fame of its trademark and the bad faith conduct of the Respondent. The Complainant did not do so. It is wrong and an abuse of process that the Respondent be forced to spend time and effort preparing its Response to this Complaint. In these circumstances, the Panel considers that a finding of reverse domain name hijacking is entirely appropriate and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Trowers & Hamlins, United Kingdom
Case Comment by ICA General Counsel, Zak Muscovitch: Absolutely brutal Complaint. To borrow an apt sports betting analogy, the Complainant apparently engaged in a RDNH “trifecta” with the Panel finding numerous reasons for RDNH. As the Panel said so well, “it is wrong and an abuse of process that the Respondent be forced to spend time and effort preparing its Response to this Complaint”. Indeed.
I want to also highlight a particularly succinct but compelling statement made by the Panel in this case: “The evidence in the case file as presented does not indicate that the Respondent’s aim in acquiring the disputed domain name was to profit from or exploit the Complainant’s trademark”. This strikes me as the fundamental yard stick by which bad faith should be evaluated in a UDRP as it goes to the very heart of the question.
Another Absolutely Brutal UDRP Complaint
<topaz .com>
Panelist: Ms. Marilena Comanescu (Presiding), Mr. Martin Schwimmer, and Mr. Wilson Pinheiro Jabur
Brief Facts: The Complainant, headquartered in Brazil, is active in the field of digital financial solutions. It owns trademark rights for or including “topaz”, including the Brazilian trademarks for TOPAZ (word), registered on November 3, 2021, and TOPAZ (figurative), registered on November 3, 2021. The disputed Domain Name was registered on April 22, 1998 and is used in relation to a webpage displaying PPC links, promoting products of or containing topaz gemstone. The Respondent is a Florida-based internet publisher that is involved in the business of registering and using generic or dictionary word domain names. It has faced seven prior UDRP cases over such domain names and prevailed in all of them.
The Complainant alleges bad faith based on the Respondent’s non-use of the disputed Domain Name for 27 years and the Respondent’s refusal to sell it for USD $10300 when contacted. The Parties’ communications show that, after the Respondent stated the Domain Name was not for sale, the Complainant’s USD $10300 offer was declined, with the Respondent stating: “We have had a strong six-figure offer in the past and declined.” The Complainant argues that this demonstrates no genuine interest in transferring the Domain Name except at speculative, above-market prices, evidencing intent to secure improper profit rather than to make any bona fide use.
The Respondent contends that it has the legitimate rights or interests in the disputed Domain Name, and that such rights are not limited to trade or service mark rights, but have long been understood to include equitable rights, such as the right to use dictionary words for commercial purposes in connection with their generic meaning. The Respondent further adds that it has registered and used the disputed Domain Name in relation to the generic meaning of the term “topaz”, and is using it, since at least from 2007 when the earliest DomainTools screenshot record is available, showing monetization of the disputed Domain Name in connection with the gemstone topaz.
Held: The Panel notes that the disputed Domain Name consists of a dictionary word, a gemstone, and was used by the Respondent in relation to its generic meaning, namely to publish PPC advertising links. The Panel, as the majority of previous UDRP panels, considers that one may register and use a dictionary word or phrase domain name, to attract Internet traffic, based on the appeal of its dictionary meaning and use it, including in connection with PPC links, in connection with the relied-upon dictionary meaning, in the absence of circumstances indicating that the aim in registering the domain name was to profit from and exploit the rights of a trademark owner. WIPO Overview 3.0, sections 2.9. and 2.10.
Further, the disputed Domain Name was registered more than two decades before the Complainant’s trademark rights accrued. Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith. Here, the Complainant did not provide any evidence of its trademark registration or use at the time of registering the disputed Domain Name. As a result, the Complainant has not met its burden of demonstrating that the Respondent registered the disputed Domain Name with knowledge of the Complainant’s trademark and in order to target that trademark.
RDNH: The disputed Domain Name predates the registration of the Complainant’s trademark by about 23 years and the Complainant does not provide any evidence of use before acquiring its trademark rights. Moreover, the Complainant itself lists very similar UDRP disputes, involving the Respondent and dictionary term domain names used in relation to their dictionary meaning, decided in the favour of the Respondent, but, for reasons that this Panel does not understand, concludes that such history of the Respondent demonstrates a pattern of bad faith conduct, “suggesting a recurring behaviour of registering generic domain names in bad faith and preventing their use by trademark owners”.
The Complainant is represented by counsel, a factor that some panels have found and the Panel finds here should be held to a higher standard. The Panel agrees with the recent finding in Brian M Maouad, Advance 2000, Inc v. Reza Sanjideh, Advanced 2000, WIPO Case No. D2025-2137 stating that: “At this point, in the Panel’s view, Complainant has made a farce of this proceeding. It is granted that the UDRP is not universally known and understood in the legal and business world, but if one decides to launch a UDRP complaint, one should take a modicum of trouble to understand its basic tenets and its elements and limitations, or else hire someone familiar with the UDRP to get it done.”
Complaint Denied (RDNH)
Complainant’s Counsel: Tozzini Freire (Advogados), Brazil
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States
Case Comment by Digest Editor, Ankur Raheja:
The Panel quoted a prior UDRP matter of <advanced2000 .com> (see here), which inter alia concluded that the Complainant had “made a farce of this proceeding…”. Similarly, in this case, the disputed Domain Name predates the registration of the Complainant’s trademark by about 23 years, and the Complainant did not provide any evidence of use before acquiring its trademark rights. Additionally, the disputed Domain Name was being used to host PPC links related to its dictionary meaning. It is well established that “A Respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the Respondent’s aim in registering the disputed domain name was to profit from and exploit the Complainant’s trademark,” see UDRP perspectives, section 2.9).
The Panel also pointed out that the Complainant’s reliance on similar UDRP disputes involving the Respondent and dictionary term domain names, which were decided in favor of the Respondent, does not prove a pattern of bad faith. Instead, it indicates that the Respondent typically registers dictionary term domain names for legitimate purposes. The Panel concluded: “The Complainant is represented by counsel, a factor that some panels have found, and the Panel finds here, should be held to a higher standard. WIPO Overview 3.0, section 4.16.” The case underscores that a UDRP Complaint must provide evidence of targeting, especially where the respondent’s conduct aligns with recognized legitimate practices for dictionary-term domain names.
“Hopelessly Flawed Plan B” Case Against Domain Name Trader
Cloud Travel v. Garth Piesse, Nominet Case No. D00027838
<cloudtravel .co .uk>
Panelist: Mr. Tony Willoughby
Brief Facts: The Complainant is a travel services company incorporated in England on 8 July 2015 and operates a website at <cloudtravels .co .uk>. It trades under the name “Cloud Travel” and is the registered proprietor of United Kingdom Trade Mark Registration CLOUD TRAVEL (device) which entered the register on 23 March 2018 (application filed 29 November 2017). The disputed Domain Name was registered on 03 December, 2017 by a dealer in domain names. In April 2021, the Complainant offered $500 for the domain, the Respondent countered at $2,000, and talks ended with “Too far apart. Good luck.” In May 2021, the Complainant offered $1,000 and received the same refusal. In January 2025, the Complainant again offered $1,000 and did not increase the bid.
The Complainant alleges that the Respondent prevented the Complainant from owning it and in all likelihood selling it on at a premium with the potential to divert traffic or confuse consumers by impersonating the Complainant’s business. The Respondent contends that he acquired the Domain Name because he thought it an attractive marketable property to join the dozens of other “cloud” and “travel” domain names in his portfolio. He produces lists of those domain names – nearly 200 “cloud” names and just under 150 ‘travel’ names. The Respondent further contends that he, a New Zealand resident, was unaware of the Complainant when he registered the Domain Name and adds that when he acquired the Domain Name he was aware that it was on a drop-list and assumed that the previous owner had no further use for it.
Held: There is nothing in the Complaint to support the contention that the Domain Name is an Abusive Registration. The Expert notes the Domain Name was registered four days after the Complainant filed its trademark application and thought this might support an Abusive Registration claim, but the Complaint doesn’t mention it. The Respondent denies knowing the Complainant at the time, the evidence doesn’t contradict that, and the Complainant withdraws the bad faith registration allegation in its Reply. Thus, all that is left of the Complaint is that the Domain Name matches the textual element of the Complainant’s registered trade mark and that the Respondent in the course of his legitimate business as a trader in domain names (paragraph 8.4 of the Policy) might sell it at a profit to a purchaser, who might target the Complainant’s business. None of that is sufficient for a finding of Abusive Registration under the Policy.
The Expert finds that the Complaint was hopelessly flawed from the outset. It contained nothing to support a finding of Abusive Registration, a flaw that should have been apparent to anyone filing the Complaint who had taken the trouble to read the Policy and consult the plethora of guidance materials on the Nominet website. However, that is not all. The Complaint omitted obviously relevant material and incorporated claims that the Complainant knew to be false when it filed the Complaint. The Respondent sets them out in some detail in the Response, which no doubt led the Complainant to moderate its allegations against the Respondent by withdrawing the bad faith allegations. The Expert finds that the Domain Name, in the hands of the Respondent, is not an Abusive Registration.
RDNH: The Expert is entitled to assume that anyone filing a Complaint under the Policy has read the Policy. When the Complaint was filed the Complainant knew that the Respondent was a domain name trader and should certainly have been aware of the terms of paragraph 8.4 of the Policy to the effect that, of itself, trading in domain names is a legitimate activity under the Policy. The Complainant had been in contact with the Respondent in 2021 and again earlier this year with a view to purchasing the Domain Name. Panels may find RDNH based on the totality of the circumstances where a complainant knowingly files a hopeless case, makes false statements, and/or withholds material evidence. The Respondent complains about the disingenuous behaviour of the Complainant in the latter’s conduct of those negotiations, but while recognising that the Complainant’s behaviour was less than straightforward, the Expert sees no useful purpose in addressing the issue.
The Expert finds that this is a typical Plan B case. The Complainant adopted the Cloud Travel name in 2015. In or around October 2017, when it decided to set up a website under its name it found that the Domain Name was in the hands of a third party, so it went for a close alternative, <cloudtravels .co .uk>. In 2021 and again in early 2025 it tried to acquire the Domain Name by negotiating a purchase from the Respondent via the website connected to the Domain Name. Its offers of $500 and $1000 were rejected by the Respondent. On failing to acquire the Domain Name by negotiation, the Complainant resorted to a Complaint under the Policy, reckless as to whether the Complaint had any chance of success and compounding the fault by making knowingly false allegations and omitting highly relevant evidence.
Complaint Denied (RDNH)
Complainant’s Counsel: NA
Respondent’s Counsel: NA
Case Comment by ICA General Counsel, Zak Muscovitch: It is always a treat to read a case written by the inimitable Tony Willoughby, who delivered last year’s Levine Lecture. which I encourage you to watch on YouTube here.
One aspect that caught my attention in particular, was the Panelist’s reference to the Paragraph 8.4 of the Nominet DRS Policy to the effect that, of itself, trading in domain names is a legitimate activity under the Policy, which states; “Trading in domain names for profit, and holding a large portfolio of domain names, are of themselves lawful activities.” Although the UDRP does not specifically mention this principle, the UDRP case law has evolved to encompass it. This is exemplified in the WIPO Consensus View 3.0 at 2.1, where it is stated;
“Over the course of many UDRP cases, panels have acknowledged further grounds which, while not codified in the UDRP as such, would establish respondent rights or legitimate interests in a domain name. For example, generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP.”
This raises an interesting question as to whether it is time to codify such established principles within the UDRP itself.
Complainant Should Have Recognized the Lack of Prospects for Success, With or Without Legal Advice
Redcat Pty Ltd v. Tom Phoenix, Redcat, WIPO Case No. D2025-2249
<redcat .com>
Panelist: Mr. Nick J Gardner (Presiding), Mr. The Hon Neil Brown KC and Ms. Lynda Zandra-Symes
Brief Facts: The Complainant says it has been in business for over thirty years but provides no evidence to support this assertion, and the Complaint contains no information about what it does, the size of its business, how well known it is, or anything else beyond details of certain registered trademarks it owns. The Complainant is the owner of trademark registrations in Australia, New Zealand and the United Kingdom for the term “redcat”, all registered on November 25, 2024. The trademarks suggest that the Complainant’s business involves the supply of some form of IT services to the hospitality industry. The disputed Domain Name was registered on October 7, 1996 and does not resolve to an active website. The Complainant alleges that the absence of any active website strongly indicates that the Domain Name is being held solely to prevent legitimate use by the Complainant, rather than for any bona fide non-commercial or fair purpose.
The Complainant provides details of earlier approaches it made to try to purchase the disputed Domain Name. The Respondent contends that he was under no obligation to reply to unsolicited enquiries about purchasing the disputed Domain Name which in any case he thought were likely spam or a phishing scheme. The Respondent further contends that he registered the disputed Domain Name in 1996 for his own personal and business use, and has used it continuously since that date for email. He also adds that he also registered “Redcat” as a business name with the Oregon Secretary of State in connection with a technology and consulting venture operating under that name. Finally, the Respondent seeks a finding of Reverse Domain Name Hijacking, asserting that the Complaint was brought in bad faith because the Complainant knew of the Respondent’s 1996 registration while its trademark rights arose only in 2024.
Held: The Panel finds on the evidence that the Respondent registered the disputed Domain Name in October 1996 some 28 years before the earliest Complainant’s trademarks were registered. The Complainant says it has a reputation going back thirty years but has not provided a single piece of evidence to support that assertion. The Panel sees no reason to doubt the Respondent’s claim that he had no knowledge of the Complainant when he registered the disputed Domain Name, which he had independently chosen. In the circumstances, there is no evidence to suggest the Respondent registered the disputed Domain Name with knowledge of the Complainant’s trademark and therefore with the intention of taking unfair advantage of that trademark.
The Respondent cannot, therefore, have registered it in bad faith for the purposes of the Policy (see WIPO Overview 3.0, section 3.8). Further there is nothing to suggest the Respondent has used the disputed Domain Name in bad faith. The Complainant’s entire case in this regard is that the Respondent failed to reply to unsolicited requests sent by the Complainant enquiring as to the availability of the disputed Domain Name. In circumstances where a domain name is legitimately held there is no obligation on its owner to reply to such unsolicited enquiries. That cannot amount to bad faith use.
RDNH: In the view of the Panel this is a complaint which should never have been launched. The Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered twenty nine years ago and which was simply a conjoining of two common English three letter words was likely to involve difficult considerations. The Complainant appears to have ignored any such considerations. It initially tried to approach the Respondent to purchase the disputed Domain Name without claiming prior rights. Having failed to elicit a reply from the Respondent it subsequently launched the present proceedings. These were presented in a very limited and inadequate manner, and with no proper consideration of the issues involved, the factual background, or what the Complainant had to establish if it was to present a credible case.
The Panel also considers that the Complaint was misleading by omission in that it failed to make clear that the Complainant’s registered trademarks were only obtained very recently. It also did not make clear that the Complainant’s own Internet presence post-dated the registration of the disputed Domain Name by five years. Overall the Complaint lacked any foundation for the allegations that the Respondent must have had the Complainant in mind when he registered the disputed Domain Name. If the Complainant took competent legal advice before filing the Complaint it should have appreciated that it had no realistic prospect of success. If it did not take competent legal advice it should have carried out some basic research as to what it needed to show, and realised for itself it could not succeed. If it did not do this it has only itself to blame.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Law Works LLC, United States of America
Case Comment by ICA General Counsel, Zak Muscovitch: Yet another absolutely brutal Complaint which “should never have been brought”. As the Panel rightly pointed out inter alia, if you are not going to hire a lawyer, then at least do some basic research yourself. But as we saw with some of the above cases, having a lawyer does not necessarily prevent filing a brutal Complaint. Lawyers should be familiar with the Policy and associated case law as well.
The Domain Name in this case reminds me of a UDRP moot court that the ICA conducted with INTA in 2021. You can read the Facts of the made-up case here, and watch the actual moot UDRP hearing here. It featured as “counsel” – Georges Nahitchevansky and Karen Bernstein, and as “Panelists” – Gerald M. Levine, Francine Tan, and Steven Levy. Lori Schulman and I served as moderators. It was fantastic and worth a watch if you haven’t seen these UDRP stars perform yet!
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.