The Internet Commerce Association invites you to join us on Wednesday, April 16 at 1 PM Eastern for a free, public Zoom webinar exploring the latest developments in the Domain Name Transfer Policy.
Moderated by ICA General Counsel Zak Muscovitch, the panel will feature expert insights from Owen Smigelski (Namecheap), Roger Carney (GoDaddy), Jothan Frakes (PLISK .COM), and Theo Geurts (Realtime Register B.V.). Together, they’ll discuss recent changes, ongoing challenges, and what to expect as transfer policy continues to evolve.
Register here | Date & Time: Wednesday, April 16th at 1 PM ET
Unregistered Trademark Rights and Fraud in UDRP Cases
By Special Guest Contributor, Mihaela Maravela
Burden of Proof on the Complainant
As with all elements under the Policy, the burden of proof rests on the complainant to show it acquired common law or unregistered trademark rights. The burden is higher in case of descriptive terms. In terms of what evidence is considered by panels as evidence of common law rights, in a recent case the panel considered that the complainant has proved its sign BRUGNATO 5TERRE OUTLET VILLAGE has become a distinctive identifier “which consumers associate with the Complainant’s goods and/or services at least in the Ligurian area.. Continue reading more here
We hope you will enjoy this edition of the Digest (vol. 5.14) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Domain Purchased on Installment Plan Faces UDRP Complaint (nex .org *with commentary)
‣ 9th Circuit Upholds Reversal of TRX.com UDRP decision (trx .com *with commentary)
‣ Reputation at Time of Domain Registration is Key to Proving Bad Faith (playsports .tv *with commentary)
‣ Domain Registration Was Opportunistic, Seeking to Take Advantage of Complainant’s Goodwill (builderscapital .loan *with commentary)
‣ Respondent’s Corporate Name Corresponded to Domain Name, But Was it Legitimate? (rexelcyber .com *with commentary)
Domain Purchased on Installment Plan Faces UDRP Complaint
NEX Foundation v. Registration Private, Afternic Services, LLC, WIPO Case No. D2025-0428
<nex .org>
Panelist: Mr. Frederick M. Abbott
Brief Facts: The US-based Complainant, founded in 2018, is a non-profit providing software and online resources to support students’ career development. The Complainant owns the wordmark for NEX FOUNDATION before the USPTO, (registered: August 6, 2019; first use: October 25, 2018). The Respondent purchased the disputed Domain Name through DAN on August 10, 2022, for a purchase price of USD $6,000 payable in instalments over 36 months. The Respondent was formed under the laws of the State of New Jersey as a limited liability company on April 7, 2017. The Respondent has further submitted evidence that it is part of a group of affiliated entities under the Nex Marketing, LLC umbrella, including Nexiix Marketing LLC and Nex Chamber LLC. As of the date of this proceeding, the Respondent directed the disputed Domain Name to a website headed NEX CHAMBER, including a stylized “N” logo, and referring to “Endless Network Opportunities”.
The Complainant alleges that the Respondent registered and used the disputed Domain Name in bad faith by directing users to a website with a confusingly similar logo to mislead them into believing it is associated with the Complainant and that the Respondent rejected the Complainant’s offer of USD $1,200 for the disputed Domain Name with a reference to a potential USD $50,000 price. The Respondent contends that its use of the disputed Domain Name in connection with legitimate business activities, including networking events, marketing and software solutions, establishes rights or legitimate interests in the disputed Domain Name. The Respondent further contends that “nex” is widely used, with 2,586 trademarks in the WIPO Global Brand Database, highlighting its generic or descriptive nature and non-exclusivity, asserting that commonly used terms cannot be monopolized by a single entity.
Held: The Respondent, established as Nex Marketing, LLC in New Jersey in 2017, has used various domain names, including <nexiix .com>, to associate itself and affiliated entities with its business since its formation. The Respondent’s websites are not in any substantial manner “clones” or replicants of the Complainant’s website(s). The Complainant’s claim of confusing similarity relies mainly on logo resemblance, while the Respondent highlights distinctions between the logos. Notwithstanding the dispute about logo, the Complainant’s site is titled “NEX FOUNDATION,” whereas the Respondent’s is titled “NEX CHAMBER.” The Panel has found very little in the factual record of this case to suggest that the Respondent was somehow attempting to target or take unfair advantage of the Complainant through its development of its business model and the use of the disputed Domain Name.
When the Respondent formed its business Nex Marketing, LLC in 2017, the Complainant did not exist. When the Respondent acquired the disputed Domain Name in 2022, the Complainant did not hold a trademark registration for “nex” but for NEX FOUNDATION. It is not apparent that the Respondent should have identified that as an obstacle to the acquisition of the disputed Domain Name since the terms are different. Moreover, as the Respondent has pointed out, there are many registered trademarks that in one way or another incorporate the term “nex”, and on that basis, it would have been reasonable for the Respondent to assume that so long as it was not specifically infringing on the line of a business of an established enterprise there would not be a basis for a finding of abusive domain name registration.
Finally, bearing in mind that the Respondent paid USD $6,000 for the disputed Domain Name, it does not strike the Panel as odd that the Respondent was not impressed when the Complainant offered USD $1,200 to purchase it. The fact that the Respondent may have been willing to part with it for USD $50,000 does not tell us much other than that some domain names have substantial market value which may exceed the value of the specific use for which the current domain name owner engages it.
RDNH: The Respondent’s argument in favor of a finding of RDNH is that the Complainant, represented by experienced counsel, should have known that a registered trademark for a generic term does not entitle it to ownership of the disputed Domain Name. The Panel disagrees with the Respondent’s assertion that “nex” is generic and cannot be monopolized but acknowledges it may need secondary meaning for protection in specific contexts. Therefore, the Respondent’s RDNH argument based on genericness fails on its face. The overall context does not suggest a bad faith motive on the part of the Complainant, nor does it support a finding of RDNH.
Complaint Denied
Complainant’s Counsel: Internally represented
Respondent’s Counsel: Internally represented
Case Comment by ICA General Counsel, Zak Muscovitch: As DNW.com points out in its recent article, “Investors concerned about UDRPs filed against domains on payment plans should review this case”.
With regard to the Panel declining to find RDNH, I respect that the Panel at least considered the issue as sometimes Panels ignore the issue. Whether a Panel ultimately finds RDNH or not after considering it, is a matter of equity having regard to all the circumstances and is a discretionary matter. Here, although there appears to have been a good basis for finding RDNH even beyond the Respondent’s own assertions which may have been lacking as the Panel pointed out, the Panel’s exercised discretion when it stated that “the overall context does not…suggest a bad faith motive on the part of the Complainant”.
On an unrelated issue, it may be worth bookmarking the Panel’s consideration of the import of the .org TLD in this case. Notably, the Panel rightly held that “Complainant has suggested that Respondent could only establish rights or legitimate interests if it was operating a charitable or nonprofit organization and using the “.org” gTLD. This is not a rule embodied in the Policy, nor does it reflect a decisional perspective of UDRP panels. Neither the Policy nor registrars restrict the “.org” domain to charitable or nonprofit organizations.”
9th Circuit Upholds Reversal of TRX.com UDRP decision
As reported in DNW.COM, the 9th Circuit Court upheld the reversal of the TRX.COM UDRP decision. In a previous issue of the ICA Digest (Volume 2.46, November 22, 2022), guest columnist and well-known investor in three-letter domain names, Nat Cohen, shared his insights and commentary on the original UDRP decision. Renowned domain name attorney John Berryhill shared his thoughts about this case with the ICA Editors:
Case Comment by Domain Name Attorney, John Berryhill:
In a very short decision, the Ninth Circuit again upheld the principle that the ACPA means “registration” where it refers to the “date of registration” of a domain name. Nowhere in the domain industry does anyone refer to renewal payments as “re-registration”, which is a term entirely invented to go after domain names which are senior to the claimant’s mark.
The court also upheld the award of attorney’s fees against the trademark claimant, which now also applies to the appeal as well.
The decision caps off a litigation adventure which began in Arizona, took a detour to Virginia, and was then transferred back to Arizona. The Arizona federal court eventually issued a decision reversing the UDRP outcome in Fitness Anywhere LLC v. au tuu, Forum Claim Number: FA2210002016615 (November 11, 2022). In that proceeding, the panelist did not take note that the proffered trademark registration was not owned by the complainant which brought the UDRP proceeding in the first place.
The case will return to the Arizona US District Court for a determination of fees.
Reputation at Time of Domain Registration is Key to Proving Bad Faith
Telenet BV v. Page Howe, co Black American Media / Debbie Lane DeMoss, WIPO Case No. DTV2025-0002
<playsports .tv>
Panelist: Mr. Jeremy Speres
Brief Facts: The Belgian Complainant, a telecommunications and entertainment provider in Belgium, has used its PLAYSPORTS mark for a sports live-streaming service. The Complainant owns Benelux Trademark having a registration date of February 17, 2022. The Complainant’s primary domain name, <playsports .be> was registered in 2014, and claims to have been using the mark since at least 2015. The disputed Domain Name was registered on February 24, 2022, and has not, to date, been used for an active website. The Complainant alleges that the disputed Domain Name was registered and has been used (under the doctrine of passive holding) in bad faith in order to take advantage of the Complainant’s well-established mark.
The Complainant relies on the Respondent’s choice of top-level domain (“TLD”), which relates to the Complainant’s industry, as well as the timing of the registration of the disputed Domain Name, one week after registration of the Complainant’s Benelux trademark at a time when the Complainant’s mark was well-established in use, as pointing to bad faith targeting. The Respondent contends that she registered the disputed Domain Name in 2009 to serve as an umbrella site for a network of local U.S. youth sports media and streaming platforms, relying on advertising revenue. She claims the term “Play Sports” reflects the free-spirited nature of youth sports and denies any knowledge of the Complainant’s mark, which she states lacks reputation in the U.S.
Preliminary Issue – Respondent Identity: The Response was filed by one Debbie Lane DeMoss of the United States. Ms. DeMoss states that the named Respondent – Page Howe – manages her domain name portfolio and has done so since 2010. The Complainant presented evidence showing that Page Howe is a domain name investor and consultant, which was further confirmed by the Panel’s Internet searches. The appointed Panel retains the discretion to determine the Respondent against which the case should proceed, see WIPO Overview 3.0, section 4.4.5. Previous UDRP panels typically consider whether the beneficial holder’s identity is disclosed, whether they provide arguments to explain their position, and whether their relationship with the domain name registrant is clear. All these factors favor the Respondent’s explanation. Thus, on balance of probabilities, the Panel accepts that it is more likely than not that the underlying beneficial owner of the disputed Domain Name is Ms. DeMoss.
Held: The Complainant’s PLAYSPORTS service appears to be targeted at users from Belgium, or, at least, users within the European Union. There is no evidence in the record showing that the Complainant’s PLAYSPORTS service has ever operated in the Respondent’s jurisdiction of the United States. The Panel has conducted basic Internet searches for the Complainant’s mark, and the results show numerous other entities using “playsports” / “play sports” for digital sports offerings, in addition to the Complainant. There is thus nothing before the Panel showing that the Respondent was aware, or should have been aware, of the Complainant’s mark when she registered the disputed Domain Name. The Respondent’s explanation of her intentions for the disputed Domain Name is at least plausible and is not contradicted by any evidence in the record. Moreover, the Panel’s reverse WhoIs search found that the Respondent registered many generic domains, mainly in news and sports, aligning with their plan for a U.S.-based interconnected sports site network.
The timing of the registration of the disputed Domain Name, one week after the Complainant’s Benelux trademark registered in 2022, on the other hand, is suggestive of targeting. However, the Complainant has operated its PLAYSPORTS service since 2015, and it’s unclear why the Respondent would wait until after the trademark registration if acting in bad faith. If malicious intent existed, registering the domain before the trademark would have been more logical. The Respondent was likely more aware of the Complainant’s use since 2015 rather than monitoring the Benelux trademark register. Additionally, the .tv TLD aligns with both the Complainant’s industry and the Respondent’s claimed offering. Thus, in the circumstances of this case, without any direct evidence showing targeting and without any evidence, circumstantial or otherwise, showing that the Respondent was aware or should have been aware of the Complainant’s mark, this alone, without more, does not point to targeting.
RDNH: On the balance of probabilities, the Panel does not find that the Complaint was brought in bad faith. The disputed Domain Name is identical to the verbal elements of the mark used and registered by the Complainant. The Complainant’s mark was registered, and used for approximately seven years, prior to the registration of the disputed Domain Name, and the .tv TLD relates to the Complainant’s industry. The timing of the registration of the disputed Domain Name following the Complainant’s trademark is also suggestive of the disputed Domain Name’s registration not being a coincidence. All of this suggests that the Complainant genuinely believed this to be a case of cybersquatting, and that belief does not seem to have been unreasonably held in light of these facts.
Complaint Denied
Complainant’s Counsel: Fieldfisher Belgium, Belgium
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
The preliminary issue of the Respondent’s identity, is notable. As the Panel pointed out, “paragraph 1 of the Rules defines “Respondent” as “the holder of a domain-name registration against which a complaint is initiated” and that the appointed panel retains discretion to determine the respondent against which the case should proceed”. The Panel helpfully also referenced a test for determining how to approach this issue when a Respondent claims that the nominal registrant is not the actual beneficial owner: “In exercising their discretions in similar circumstances, previous UDRP panels generally considered, among others, (i) whether the identity of the beneficial holder is disclosed, (ii) whether the beneficial holder submits arguments explaining its position, or (iii) whether the relationship between the registrant of the domain name and the beneficial holder is clear”.
I also appreciate how the Panel recognized the importance of establishing reputation at the time of the Domain Name registration in order to prove bad faith registration. The Panel stated, that “the Respondent claims to have been unaware of the Complainant’s mark at the time of registration of the disputed domain name, and there is no evidence in the record showing or permitting an inference as to any such awareness. There is thus nothing before the Panel showing that the Respondent was aware, or should have been aware, of the Complainant’s mark when she registered the disputed domain name.” As noted in UDRPPerspectives.org at 3.10:
“The key to demonstrating bad faith registration is targeting. A Complainant however, will generally be unable to prove targeting without demonstrating its reputation, as it is a trademark’s reputation that allows it to be sufficiently known for a Respondent to have targeted it. The degree of reputation required to be demonstrated will vary from case to case but in each case it is a requirement in order to prove targeting.”
I do want to share a friendly word about Panelist research. Panelist research should be conducted very sparingly. As noted in UDRPPerspectives.org at 0.3:
“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.”
Here, the Panel “using a publicly available reverse WhoIs facility, searched for all domain names registered using the Respondent’s two email addresses revealed in the record. This search revealed that the Respondent has registered many generic domain names related to news and sports, including a number in the .tv TLD. None of these domain names appear to be targeted at well-known trademarks, and they are consistent with the Respondent’s explanation of intending – notwithstanding the passage of time – to launch a United States based city-by-city network of interconnected sports sites.”
In this instance, the Panelist research assisted the Respondent, but in other cases it can help the Complainant. In either case however, if a Panel proceeds to conduct independent research, it should consider whether the results of that research should be put to the parties for comment, prior to it being taken into account. As also noted in UDRPPerspectives.org at 0.3:
“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.”
In any event, a well-written decision that came to the correct conclusion. Well done!
Domain Registration Was Opportunistic, Seeking to Take Advantage of Complainant’s Goodwill
HAT HOLDINGS LLC v. Micah Githens / WebWit LLC, NAF Claim Number: FA2503002145207
<builderscapital .loan>
Panelist: Mr. Gerald M. Levine
Brief Facts: The Complainant has rights in the BUILDERS CAPITAL Mark in which the Complainant claims superior rights for several reasons. First, the dominant and distinctive portion of the disputed Domain Name <builderscapital .loan> is BUILDERSCAPITAL, which is identical to the BUILDERS CAPITAL Mark. Second, the TLD for <builderscapital .loan>, i.e., “.LOAN,” conveys the services that are offered under the BUILDERS CAPITAL mark. These phonetic, visual, and conceptual similarities create a strong likelihood that consumers will misperceive the disputed Domain Name as related to or derived from the BUILDERS CAPITAL Mark, especially when encountered in similar contexts.
The Respondent contends that its branding is explicitly “BuildersCapital .Loan,” which is a single word with no spaces and includes the “.Loan” TLD as part of its identity. The addition of “.Loan” creates a clear distinction. The Respondent further contends that the term “Builders Capital” is descriptive and commonly used in the construction financing industry. The Complainant does not have exclusive rights to these generic words in all contexts. The Panel notes that the Respondent has not signed the response (see Rule 5(c)(xiii)) and has taken this into account when assessing the Respondent’s credibility and the factual allegations in the Response.
Held: The Respondent is silent about the entity operating a loan business directly competitive with the Complainant. The Panel performed limited factual research by visiting Mr. Githens’ website at <webwit .pro>, wherein he describes himself as a seasoned Software Engineer but is there any mention that he has any relation to a business that in all respects is competitive with the Complainant. Further, while the disputed Domain Name appears to resolve to an authentic website the Panel finds that this appearance is deceptive. The Respondent provides no evidence of a legitimate company, other than himself, operating under the trade name “Builderscapital .Loan,” nor does he demonstrate that the Domain Name is being used in connection with a bona fide offer of services. Rather, the evidence points to an opportunistic registration that seeks to take advantage of the goodwill the Complainant’s mark has established over a lengthy period of time.
The evidence establishes that the Respondent built the <builderscapital .loan> website with prior knowledge of the Complainant and its mark, deliberately crafting the website’s different parts pretextually to argue that the two businesses are distinguishable while seeking to take advantage of the mark by registering it in the dot loan space. The Panel rejects the Respondent’s argument that the addition of “.Loan” or the TLD-specific distinction between “builderscapital .com” and “BuildersCapital .Loan” creates a clear differentiation from the Complainant’s mark in branding and online presence. The Panel finds these assertions entirely pretextual. Whether the word “loan’ appears in the first or second level it reinforces the services offered by the Complainant. The Panel finds that the Respondent’s use of the disputed Domain Name is likely to lead to confusion among internet users as to the sponsorship or affiliation of a competing business and is therefore evidence of bad faith and use.
Transfer
Complainant’s Counsel: Bradlee R. Frazer of HAWLEY TROXELL ENNIS & HAWLEY LLP, Idaho, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Solid reasoning and analysis here by the Panelist. Well done!
Respondent’s Corporate Name Corresponded to Domain Name, But Was it Legitimate?
Rexel Developpement SAS v. Akin Odedina, Afric Weddings, WIPO Case No. D2025-0596
<rexelcyber .com>
Panelist: W. Scott Blackmer
Brief Facts: The French Complainant, established in 1967, is an international electrical products and services company, with an online presence at <rexel .com>. The Complainant has been operating branches in the United Kingdom, where the Respondent is located, since 1947, and maintains a localized website at <rexel .co .uk>. The Complainant holds more than 250 registered REXEL trademarks, including the United Kingdom registration, with the earliest dated June 10, 2009. The disputed Domain Name was created on June 27, 2022, and presently resolves to a website headed “Rexel Cyber” with the tagline “A Cyber Security Firm You Can Trust”. The Complainant alleges that the Respondent uses a confusingly similar domain name and a blue website color scheme to mimic the Complainant’s website and offer similar cyber security services, thus increasing the likelihood of confusion, misleading the public, and tarnishing the Complainant’s reputation. The Complainant further alleges that the Respondent’s failure to respond to its cease and desist letters is also “clear evidence” of bad faith.
The Respondent claims legitimate interests and in support attaches the Declaration of Eniola Odedina, the Director of Rexel Cybersecurity Limited, stating that the Respondent registered the disputed Domain Name in the interests of the Rexel Cyber Consulting business and continues to use it for the benefit of Rexel Cybersecurity Limited. The Respondent denies bad faith, arguing that he operates in the cybersecurity field, which is distinct from the Complainant’s electrical equipment distribution business, and contends that while the Complainant may offer some security services, they are limited and do not overlap with the Respondent’s cybersecurity services. The Respondent finally points to examples of other companies operating in the United Kingdom with a “Rexel” name or mark for other goods or services and states that because of the difference in services offered, the Respondent did not consider itself a competitor or infringer vis-à-vis the Complainant, and therefore did not feel obliged to reply to the Complainant’s cease and desist letter.
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 services, WIPO Overview 3.0, section 2.2. The Panel notes that the disputed Domain Name resolved to a “coming soon” message in 2022 and 2023, but by May 2024 the Respondent’s “Rexel Cyber” website was published, offering a range of cybersecurity services as described above. There is some blue lettering and background on the website, but it is not visibly imitative of the Complainant’s website, and it does not bear indicia of a fraudulent website. Social media posts, events announcements, and the Declaration of company director Eniola Odedina support the statements in the Response concerning the involvement of the Respondent Mr. Odedina with the company and the website.
The Complainant suggests that the Respondent’s company name itself was illegitimately selected in an attempt to exploit the Complainant’s reputation, and thus that the website offerings under that name are not “bona fide”. In the Panel’s view the record does not support such an inference. The Complainant’s mark is well established but not in the cybersecurity consulting service market, and others in the United Kingdom also use the name “Rexel”, for a variety of products and services. Thus, there is not a compelling reason to assume that the Respondent meant to create a false association with the Complainant by registering a succession of “Rexel” companies and domain names as it did.
Complaint Denied
Complainant’s Counsel: Dennemeyer & Associates S.A., France
Respondent’s Counsel: Motsnyi Legal, Serbia
Case Comment by ICA General Counsel, Zak Muscovitch: First of all, congratulations to ICA Digest contributor, UDRPPerspectives.org Editor, panelist, and counsel, Igor Motsnyi for successfully defending this case. Secondly, it is remarkable how sometimes a company can be so big and well known in some in some parts of the world and be totally unknown in others. That was the case with me for Rexel, which from the decision appears to be a major company with 2,000 branches and 27,000 employees in 19 countries. Never heard of it here in Canada. In Canada actually, Rexall (with two “l’s”) is a well-known chain of drug stores.
Now, from reading the Complainant’s arguments first, it certainly appeared to me that it had a strong case. After all, it is a major and well-known company apparently, and someone associated with wedding planning hardly seems to be genuinely in the purported cybersecurity business. Yet, as is often the case, the true colour of a case is not entirely revealed until one reads the Respondent’s position. Here, the Respondent showed that it had a real corporation registered in the UK as Rexel Cybersecurity Limited, incorporated a few days after he registered the Domain Name. Additional corroboration for the Respondent’s bona fides was provided by way of social media and YouTube presence, and the Respondent also pointed out examples of other companies coexisting in the UK under the REXEL mark.
The Panel ultimately made short work of this case and considered the Complainant’s argument that the Respondent selected the Domain Name and incorporated his company to exploit the Complainant’s reputation. The Panel nevertheless found that on the record before it, “there is not a compelling reason to assume that the Respondent meant to create a false association with the Complainant by registering a succession of ‘Rexel’ companies and domain names as it did”, particularly given that while “the Complainant’s mark is well established [it is] not in the cybersecurity consulting service market, and others in the United Kingdom also use the name ‘Rexel’, for a variety of products and services.” Well done, Panel.
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.