The ICA will hold a special webinar for the domain name community to discuss the recently released Initial Report of the WIPO-ICA UDRP Review Project Team.
Join Brian Beckham (Head – Internet Dispute Resolution Section at WIPO) and Zak Muscovitch (General Counsel, ICA)—co-leads of the review—for a conversation on the report’s key findings, areas of agreement and divergence in the community, and what this means for the future of UDRP reform.
Whether you’re a registrant, IP professional, panelist, registrar, or simply interested in the future of domain name dispute resolution, this session is a unique opportunity to engage directly with the authors of the report, ask questions and contribute to the conversation!
Questions can also be submitted in advance of the webinar by email.
Date & Time: Wednesday, May 28th at 11:15 AM EST on Zoom.
Registration is required – register here!
Essay by Mr. Gerald M. Levine – Part 3
Help! Someone has registered a Domain Name Corresponding to my Trademark. Help! I’m being Accused of Squatting on Someone’s Trademark.
PART 3: HOW DID A UDRP JURISPRUDENCE COME TO BE BUILT?
In closing Part 2 I cited the Panel’s comment in Pick Enterprises (2012) . It said that “[t]he Policy has been in force for more than a decade and the thousands of cases decided under it now constitute a workable body of (to use a legal term) precedent.” And in determining to sanction Complainant for RDNH the Panel explained: “The fact that Complainant is represented by counsel makes the filing of this Complaint all the more inexcusable. The matters identified in the preceding paragraph are not Policy arcana; each is a precedent of long standing and derived from scores of cases, and each addresses a fundamental Policy requirement.” Continue Reading here.
We hope you will enjoy this edition of the Digest (vol. 5.20) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ ‘Outright Lies, False Identity, and False Evidence’ Employed in Reverse Hijacking Attempt (ks .com *with commentary)
‣ Passive Holding Alone is Not Bad Faith, Absent “Aggravating Factors” (zaddy .com *with commentary)
‣ Complex Matters Need to be Addressed before Alternative Forum with Broader Powers (lofficielarabia .com *with commentary)
‣ FarePortal v FarePorto(.com) – No Evidence of Targeting (fareporto .com *with commentary)
‣ Policy Does Not Apply to Parties Having Competing Interests, Acting in Good Faith (roboflowsystem .com) *with commentary)
‘Outright Lies, False Identity, and False Evidence’ Employed in Reverse Hijacking Attempt
Knowledge Systems v. Robert Akscyn, Knowledge Systems, WIPO Case No. D2025-0756
<ks .com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: This proceeding demonstrates once again that two-letter .com domain names are inherently valuable and attract fraudsters as well as domain speculators. Here, both parties claim to be the original registrant of the disputed Domain Name and the corresponding relevant trademark registration. The Complainant claims to be Knowledge Systems, Inc., incorporated in the UK in 1983, with a registered office in California. The Complaint includes a LinkedIn page showing limited info: oil and gas industry, Houston headquarters, 51-200 employees, and four associated members. No current website is mentioned. The Complainant says it registered the disputed domain on November 3, 1993, to build brand identity, but no evidence supports this. A WhoIs report shows the domain was last updated December 21, 2020, but not by whom. The Complainant claims it used the domain continuously until the Respondent “hijacked” it on February 20, 2025, harming its business, this is false. No archived screenshots prove prior use; Wayback Machine archives show the Respondent’s site or “under construction” pages. It claims ownership of US Trademark Registration No. 1485667 (registered April 19, 1988; cancelled in 2009), but this was granted to the Respondent’s Pennsylvania corporation.
The disputed Domain Name was created on November 3, 1993, registered to Robert Akscyn of “Knowledge Systems” in Pennsylvania. Robert Akscyn is a computer scientist who co-developed early hypertext and AI programs at Carnegie Mellon University and commercialized KMS software through his Pennsylvania company, Knowledge Systems Incorporated, founded in 1985, where he remains president. The Internet Archive shows the “Knowledge Systems” website from 1998-2001 promoting the business and KMS software, stating the company was spun off from Carnegie Mellon in 1981 to develop hypermedia and digital library technologies, supporting Akscyn’s claim as the original registrant. After 2001, the domain showed only “under construction” pages or pay-per-click ads. The Whois record was last updated in December 2020, but changes are unknown. The corporation remains in good standing, though the domain currently shows an “under construction” page. The Respondent contends that the Complainant is not an actual, existing company, is claiming under the Respondent’s trademark registration that it no longer exists, and never registered the disputed Domain Name or operated a corresponding website or LinkedIn page. In short, the Complaint is a fraud, and the Respondent requests a finding of Reverse Domain Name Hijacking.
Held: The Panel finds the first element of the Policy has not been established. The registered trademark on which the Complainant relies was (a) registered to the Respondent not the Complainant and (b) cancelled in 2009. The Complainant cannot rely on an unregistered, common law mark, because the Complainant never convincingly identifies itself, falsely claims use of a mark on a website and social media site where all the evidence points to those sites being owned and controlled by others, and presents no evidence to support its claim that the Complainant itself has offered goods or services associated with a mark commonly known by the abbreviation “KS”. Instead, on this record the Complainant appears to be simply an imposter and fraudster with no credible claim to a trademark or service mark providing standing under the Policy.
RDNH: This is a compelling case for a finding that the Complaint was brought in bad faith and constitutes an abuse of the UDRP. This Complaint is replete with material omissions and outright lies, such as assuming the identity of non-existent and defunct corporations, submitting a copy of the Respondent’s (cancelled) trademark certificate, and claiming continuous use of a domain name, website, and social media site without proof that the Complainant ever controlled them. Moreover, it appears that the Complainant fabricated a document to make a spurious case for bad faith against the Respondent. A valuable and apparently dormant domain name makes a tempting target, and it is lamentable that a legitimate registrant should be put to the burden of defending against such an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally-represented
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This case is a good reminder that tremendously valuable domain names can be the subject of fraudulent Complaints. There is a lot at stake with a Domain Name such as KS.com easily being valued in the seven-figures yet a UDRP filing fee is a tiny fraction of that, with no verification requirements for filing a Complaint. That makes valuable domain names a tempting target for fraudsters. Fortunately, this rarely happens, but it does occasionally apparently as we see here. For more on this case, please see “Ks.com case emphasizes value of short domains and risks of UDRP abuse” on DNW(.com).
Passive Holding Alone is Not Bad Faith, Absent “Aggravating Factors”
Zaddy, LLC v. Andrew Reberry, HugeDomains .com, WIPO Case No. D2025-0837
<zaddy .com>
Panelist: Mr. Christopher S. Gibson (Presiding), Mr. David H. Bernstein, and Mr. Matthew Kennedy
Brief Facts: The Complainant is the owner of several US trademark registrations for the ZADDY mark in connection with a range of body, apparel, lifestyle, wellness, skincare, and sex-related goods and services. The earliest registration dates back to August 13, 2019, with the claimed first use date of January 15, 2018. The Complainant filed a Declaration of Incontestability with the USPTO for one of the registrations on January 10, 2025, after continuously using that mark for over five years, and that registration is therefore incontestable. The Respondent states it is a globally recognized domain investment company specializing in the acquisition and resale of generic, brandable, and dictionary-word domain names. The Respondent registered the Domain Name on July 5, 2005 and it resolves to a ‘coming soon’ page.
The Complainant alleges that the Respondent fails to use or show demonstrable preparations to use the Domain Name. Instead, it has been “parked” over the span of 20 years. In particular, UDRP panels have found that non-use of a disputed Domain Name would not prevent a finding of bad faith under the doctrine of “passive holding.” The Respondent contends that holding a domain name for resale, when part of a legitimate business strategy, is recognized as a bona fide offering of goods and services under UDRP precedent. The Respondent further contends that the term “zaddy” is a widely used slang term with no inherent distinctiveness tied to the Complainant. The word has been publicly used in various contexts unrelated to the Complainant since at least 2008.
Held: As noted by the Respondent and undisputed by the Complainant, the Domain Name was registered by the Respondent on July 5, 2005, more than 13 years before Complainant’s first claimed use of its ZADDY mark in 2018, and approximately 14 years before the Complainant filed its first US trademark applications for the mark. Although the Complainant addresses why it believes the Respondent’s passive holding of the Domain Name constitutes bad faith use, the Complainant does not even try to argue that the Domain Name was registered in bad faith. The Policy clearly requires Complainant to prove that the “domain name has been registered and is being used in bad faith.” UDRP, paragraph 4(a)(iii) (emphasis added). The Panel finds that the Respondent did not register the Domain Name in bad faith targeting of the Complainant or its trademark rights because the Complainant had no trademark rights at the time that the Respondent registered the Domain Name. WIPO Overview 3.0, section 3.8.1.
Moreover, although the evidence indicates that the Respondent has not actively used the Domain Name since its registration, there are no aggravating factors present in this case to justify a finding of bad faith use of the Domain Name based on the passive holding doctrine. The Complainant has not submitted facts to show that its ZADDY mark has a high degree of distinctiveness or reputation (in contrast to a mark like TELSTRA, cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), has not submitted facts to show that the Respondent submitted false contact details (it being recognized that the use of a privacy service is not per se bad faith, see WIPO Overview 3.0, Section 3.0, section 3.6), and has not submitted facts showing that there is no plausible good faith use for the Domain Name, See WIPO Overview 3.0, section 3.3.
RDNH: Here, the Panel finds that the Complainant knew or should have known that its Complaint could not succeed based on the undisputed facts – in particular, that the Domain Name was registered more than 13 years before the Complainant’s ZADDY marks existed, and therefore, there is no evidence of bad faith registration. To file a complaint knowing that a fundamental element of the claim was not supported by the facts suggests that the Complaint was a bad faith attempt to retroactively acquire domain rights to which the Complainant is not entitled. See WIPO Overview 3.0, section 4.16.
Complaint Denied (RDNH)
Complainant’s Counsel: DiSchino & Schamy, PLLC, US
Respondent’s Counsel: Megan Long, US
Case Comment by ICA General Counsel, Zak Muscovitch: Kudos to the Panel for its strong decision in this case. It is always helpful to have a good reminder of the essence of bad faith under the UDRP, as succinctly quoted by this Panel from a previous case, JD Sports Fashion PLC v. Mira Holdings, Inc., WIPO Case No. D2025-0375 (Panelists; Leppink (Chair), Comanescu, and Kennedy):
“To prove bad faith registration, Complainant must prove “that the Respondent was aware of [Complainant’s] trademark when it registered the disputed domain name, and did so in order to take unfair advantage of the commercial goodwill attaching to that trademark, in other words, ‘targeting’ the Complainant’s trademark rights.” [emphasis added]
I also want to briefly look at three particular aspects of this case. The first such aspect is the Complainant’s express reference to and reliance upon a line from the WIPO Overview 3.0 which is frequently cited by both Complainants and Panelists: UDRP panels have found that non-use of a disputed domain name would not prevent a finding of bad faith under the doctrine of “passive holding” [emphasis added]. I often see this sentence misapprehended and misapplied. Just because passive holding would not prevent a finding of bad faith, passive holding does not necessarily constitute bad faith. It’s basic logic. Consideration must be had of the next portion of the Overview which the Panel in this case properly focused on, namely “the totality of the circumstances” and the following examples of factors to be considered: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
To the Panel’s credit it noted in particular that although the Respondent has not actively used the Domain Name “there are no aggravating factors present in this case to justify a finding of bad faith use of the Domain Name based on the passive holding doctrine”. The Panel noted that “the Complainant has not submitted facts to show that its ZADDY mark has a high degree of distinctiveness or reputation (in contrast to a mark like TELSTRA, cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), has not submitted facts to show that Respondent submitted false contact details (it being recognized that the use of a privacy service is not per se bad faith, see WIPO Overview 3.0, Section 3.0, section 3.6), and has not submitted facts showing that there is no plausible good faith use for the Domain Name.” In other words, “passive holding” alone is not a basis for finding bad faith and Panelists should steer clear of such a conclusion unless there are factors present beyond mere passive holding.
The second aspect I want to mention, is that the Panel failed to even consider “Rights and Legitimate Interest”, stating that “the Panel determines it is not necessary to reach the second element of the Policy because Complainant has clearly failed to satisfy the third element”. In my view, this is unfortunate. Here, the Panel found that “the Respondent registered the Domain Name 13 years before Complainant’s ZADDY marks existed” and that the ”Respondent did not register the Domain Name in bad faith targeting of Complainant or its trademark rights because Complainant had no trademark rights at the time that Respondent registered the Domain Name”. The Panel also found that there was no evidence of bad faith use. So why doesn’t the Respondent have rights in the Domain Name? The Policy tells Respondents explicitly that it allows them to “demonstrate [their] rights to and legitimate interest in the Domain Name” (Policy Paragraph 4(c)):
If the Respondent registered the Domain Name in good faith and hasn’t used the Domain Name in bad faith, then the Respondent has a right to it. It is a contractual right and a legal right. The UDRP is a tool for obtaining cybersquatted domain names, but we must not ignore its provisions which provide the Respondent with what amounts to declaratory relief. In the same way that Panels are required to consider RDNH where the facts warrant, Panels must also consider a Respondent’s rights and legitimate interest where warranted and make an affirmative finding accordingly. Now, not all cases necessarily deserve an affirmative finding of the Panel, but where an innocent Respondent clearly has rights to the Domain Name as here, a Panel should fulfill the Policy and allow the Respondent to “demonstrate its rights” and declare those rights accordingly. I fear that some Panelists only see rights where a trademark exists, but a trademark holder is not the only party to a dispute that may have rights. Rights in a domain name can exist wholly independently of a trademark and to ignore those rights by omission does not fairly and fully apply the UDRP’s express provisions.
Note: the editor of this newsletter appeared as a panelist in this dispute.
Complex Matters Need to be Addressed before Alternative Forum with Broader Powers
AMTD Group Inc. v. Sidharth Saigal and Chalk Media FZ LLC, HKIAC Case No. HK-2501966
<lofficielarabia .com>
Panelists: Mr. Wilson Pinheiro Jabur (Presiding), Mr. Douglas Clark and Mr. Ankur Raheja
Brief Facts: The Complainant is the owner of trademark registrations for “L’OFFICIEL” and a figurative mark in numerous countries, amongst which European Union trademark for the word mark L’OFFICIEL, registered on August 5, 2023; and European Union trademark for the word mark L’OFFICIEL, registered on September 24, 2024. The Complainant’s trademarks are used in connection with the fashion and lifestyle magazine L’Officiel, which was first published in Paris in 1921 and is presently distributed globally in various languages via licensed local publishers in a number of jurisdictions. LEJ, Chalk Media FZE and Sidharth Saigal are the parties to a license agreement dated June 2018 relating to the distribution of the Magazine in the states of the Gulf Cooperation Council. The disputed Domain Name was registered on April 10, 2018, and has been in use in connection with a website reproducing the Complainant’s logo and publishing content from, and expressly associated with, the Complainant’s publication L’Officiel.
The Complainant contends that, during the currency of the License Agreement, the Respondent was entitled to publish the Complainant’s magazine in the Middle East and to use its L’OFFICIEL trademarks for that purpose. The Complainant submits that a formal early termination notice was sent to the Respondent on 11 February 2021, terminating the License Agreement on or about November 23, 2022, if not earlier on February 26, 2021, and, in spite of that, given the expiry foreseen in the agreement, it expired on August 31, 2023. Upon the termination of the License Agreement, Chalk Media no longer has any rights to publish the Magazine or to use the L’Officiel mark anywhere in the world; also being under post-termination obligations to, inter alia, cease operating the website and social media page.
According to the Respondent, the term of the License Agreement was for 8 Contractual Years, i.e., until August 31, 2026, as stated in Clause 12.1 (Annexure C to the Response). The Respondent further states that past UDRP panels have established that a complainant cannot seek a second ruling on the same dispute, as this is barred by res judicata. Once a decision is made on the merits, subsequent complaints involving the same parties and core issues are impermissible unless new, material facts emerge, what is not the case and therefore the present Complaint should be summarily dismissed as an abuse of process, as it constitutes an impermissible attempt to circumvent the previous panel’s ruling. The Respondent further argues that until an arbitral tribunal rules otherwise, the License Agreement remains valid, making this UDRP proceeding improper and beyond the panel’s jurisdiction.
Preliminary Issue – Refiling of a Complaint:
The Complainant filed a complaint with the WIPO against the disputed Domain Name on April 3, 2023, (Les Editions Jalou v. Sidharth Saigal and Chalk Media FZE, WIPO Case No. D2023-1430 – “WIPO Proceeding”) that was denied by the panel on the ground that the determination of the disputed issues fell outside the scope of the UDRP.
The first issue to be addressed is whether or not the refiling of a UDRP dispute can be accepted. The Complainant, as the successor in title of LEJ, the complainant in the past WIPO Proceeding, brings this case on the basis that the License Agreement between LEJ expired on August 31, 2023, that is to say, after the rendering of the decision in that proceeding, which took place on June 29, 2023. If this is correct, there would be grounds to file a new complaint. There is no absolute bar to filing a new complaint. Where a party established that new actions have occurred since the original decision a complaint may be refiled.
Held: In order to determine in this case if the Respondent has rights or legitimate interests and if the disputed Domain Name has been registered in bad faith, the Panel must be able to determine if the License Agreement has expired. The Panel notes that the expiration date of the License Agreement does not appear to have been an issue in the previous WIPO Proceeding. Indeed, the term of the License Agreement was not properly addressed in the Complaint in these proceedings and was only directly addressed in the Complainant’s response to PO No. 1. It was only at this stage that the Complainant alleged that the copy of the License Agreement presented by the Respondent in the previous WIPO Proceeding had been altered to falsely replace the original provisions that provided for a 5-year term to read that the Agreement would be valid for 8 years.
The Panel considers that due to the limited scope of the Policy, it is not possible to thoroughly assess these allegations, which must be addressed in an alternative forum with broader powers. As rightly put by Mr. Gerald M. Levine in his book The Clash of Trademarks and Domain Names on the Internet 251 (2024): “Disputes exceeding that scope are more appropriate for courts of competent jurisdiction in which the parties have the benefit of witness testimony, procedures to disclosure of documents, and the other appropriate tools that are typically available to assist a court in resolving such disputes.” The limited scope of the Policy has already been upheld by the Panel in the previous WIPO Proceedings as well. See Les Editions Jalou v. Sidharth Saigal and Chalk Media, D2023-1430 (WIPO June 29, 2023).
The Panel, therefore, concludes that the determination of the validity of the License Agreement is beyond the scope of the Policy and needs to be addressed by a competent Court or Arbitral Tribunal with full powers to order production of evidence and analyze the contract at issue.
Complaint Denied
Complainant’s Counsel: NA
Respondent’s Counsel: NA
Case Comment by ICA General Counsel, Zak Muscovitch:
This case once again highlights the limitations of the Policy and appropriately cites “The Clash of Trademarks and Domain Names on the Internet 251 (2024)” by Mr. Gerald M. Levine. In this matter, the parties presented different versions of a license agreement, each claiming theirs to be the true copy. This can be regarded as a complex business dispute, as the 3-member Panel was not in a position to determine, in these refiled proceedings, which Agreement is legitimate.
See Para 4.14.6 of WIPO Overview 3.0 – Scope of UDRP as grounds for termination – “Depending on the facts and circumstances of a particular case, and irrespective of whether the parties may also be engaged in court litigation, in some instances (e.g., complex business or contractual disputes) panels have tended to deny the case not on the UDRP merits but on the narrow grounds that the dispute between the parties exceeds the relatively limited “cybersquatting” scope of the UDRP, and would be more appropriately addressed by a court of competent jurisdiction.”
Further, Para 0.1 of UDRP Perspectives 3.0, which is edited by me and Igor Motsnyi, inter alia, reads:
“The Policy requires Panels to discern those cases appropriate for resolution and to dismiss those that are not. Courts, which are equipped with robust discovery and cross-examination, should be deferred to where a case involves material unreconcilable facts and versions of events or where credibility is a key issue and is unable to be determined.
Complexity alone per se is not necessarily a reason to dismiss, however. Some cases may have complicated facts or complex legal arguments and still be appropriate for resolution under the UDRP. Nevertheless, where the complexity of facts or law cannot be satisfactorily resolved under the limited procedural framework of the UDRP such as where cross-examination and discovery would be appropriate, or where the legal issues at play call into question whether it is a clear case of cybersquatting, dismissal remains appropriate. Panels should not however be dissuaded from adjudicating appropriate cases just because a Respondent has attempted to obfuscate with complexity, what are otherwise appropriate facts and legal arguments to resolve in the UDRP.”
FarePortal v FarePorto(.com) – No Evidence of Targeting
Fareportal, Inc. v. Alejandro Atanes, Takeoff Flights LLC, WIPO Case No. D2025-0584
<fareporto .com>
Panelist: Mr. Lawrence K. Nodine
Brief Facts: The Complainant has used the trademark FAREPORTAL in connection with a database and software related to travel booking services offered to others, including related companies. The Complainant owns US Trademark (registered on June 25, 2013) for the mark and uses <fareportal .com>. The Respondent registered the disputed Domain Name on August 24, 2022 and filed fictitious name registrations for FARE PORTO and FARE Puerto with the Florida Secretary of State. In September 2022, the website associated with the disputed Domain Name went live, offering travel booking services that allow internet users to research and purchase travel products such as airline tickets.
The Complainant alleges that the Respondent’s services directly compete with its services; that the Respondent infringes its trademark rights; and that some of the Respondent’s customers have submitted complaints to consumer advocates such as the Better Business Bureau (BBB). The Complainant further alleges that the Respondent cannot plausibly deny that it was aware of the Complainant’s rights when it registered the disputed Domain Name; that under United States law, the Respondent had constructive knowledge of the Complainant’s rights; and that the disputed Domain Name’s Website is so similar to Complainant’s website that bad faith copying may be inferred.
The Respondent contends that he began offering bona fide travel booking services since 2022, which was before t received notice of this dispute; and that it was not aware of the Complainant’s rights when it’s registered the disputed Domain Name. The Respondent further contends that he registered the disputed Domain Name based on the descriptive meaning of “porto”; that constructive notice is insufficient to support a finding of bad faith registration; and that consumers have submitted BBB complaints about the Complainant and that the New York Attorney General as secured USD $2.3 million sanction against the Complainant for deceptive trade practices.
Held: The Panel finds that, before notice to the Respondent of the dispute, the Respondent began using the disputed Domain Name in connection with a bona fide offering of goods or services, by offering travel booking services online in September 2022 (see Policy paragraph 4(c)(i); WIPO Overview 3.0, section 2.2). There is no evidence he was notified of the dispute before proceedings began on February 24, 2025, over two years after the Disputed Website became available to Internet users in September 2022. The Complainant submitted evidence of negative BBB reviews against the Tespondent, but this does not prove the Respondent’s business is a scam. Although some complaints called it a “scam” or “fraud,” 44 of 51 were closed by the BBB, likely after the Respondent’s response. The Respondent also shows similar complaints against the Complainant. The term “bona fide” in Policy 4(c)(i) means “good faith,” mainly to distinguish real businesses from fake ones used by cybersquatters. The BBB complaints confirm that the Respondent runs a real business with some unhappy customers, not a front for cybersquatting.
The Panel is not able to find on the evidence presented that the Respondent registered the disputed Domain Name in bad faith targeting of the Complainant or its trademark rights. The Complainant did not offer any evidence in support of its contention that the Mark was well known in August 2022 when the Respondent registered the disputed Domain Name. Under these circumstances, constructive knowledge is insufficient to support a finding that the Respondent was aware of the Complainant’s rights. WIPO Overview 3.0 section 3.2.2. The Panel has compared the parties’ evidence comparing the respective websites, and notes that although there is a very small degree of passing similarity in the logos, the Complainant does not provide booking services on its site, but it rather hosts a corporate home page listing its various entities; on the other hand, the Respondent purports to offer booking services. In sum, the sites cannot be said to have anything remotely resembling the same look and feel.
Complaint Denied
Complainant’s Counsel: Mitchell, Silberberg & Knupp, LLP, United States
Respondent’s Counsel: Peretz Chesal & Herrmann, PL, United States
Case Comment by ICA General Counsel, Zak Muscovitch: This stood out to me in the decision:
“The term “bona fide” in Policy 4(c)(i) means “good faith,” mainly to distinguish real businesses from fake ones used by cybersquatters.”
Exactly.
Also this caught my attention:
“The Panel cannot say, based on the balance of probabilities, that Complainant has proved that Respondent registered the Disputed Domain Name in bad faith under the terms of the Policy.”
Well done! A Panelist need not make a determination if he or she is unable to. Moreover, Panels need not be led astray by the “balance of probabilities” test. Where the balance is unclear, Panelists should pass. The UDRP is intended only to address a discrete class of clear cases of cybersquatting. If it isn’t clear, it doesn’t qualify.
Policy Does Not Apply to Parties Having Competing Interests, Acting in Good Faith
Roboflow, Inc. v. Yash Maheshwari, NAF Claim Number: FA2504002149648
<roboflowsystem .com>
Panelist: Mr. Jeffrey M. Samuels
Brief Facts: The Complainant is a leading provider of computer vision solutions, empowering developers to build and deploy applications efficiently and has online presence at <roboflow .com>. The Complainant owns trademark registrations in the US, EU, and the UK for the mark ROBOFLOW (each issued in 2022; claimed first use: February 2020). The Complainant has pending applications to register the ROBOFLOW mark in India (filed on December 10, 2024), and also claims extensive common law rights, having invested significant resources in developing, advertising, and marketing its goods and services worldwide. The Respondent is an entrepreneur from India operating his own small IT business under the name “RoboFlow System” and registered the Domain Name on February 15, 2024. The Respondent contends that he chose the domain name “RoboFlow System” because it reflects and describes his business and his approach to business. The combination of these words, along with the term “system,” sends a message to customers that they operate smoothly and efficiently with robotic precision as a single unit or system.
The Complainant alleges that the Respondent is not engaged in a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed Domain Name, pointing to the fact that the domain name directs to a webpage that prominently displays the ROBOFLOW mark with references to “AI Innovations.” Upon information and belief, the Complainant further alleges that the “Respondent is using the disputed Domain Name to impersonate the Complainant or an authorized partner of the Complainant by hosting a fake website displaying the ROBOFLOW Marks and advertising unauthorized services related to the Complainant’s servicers.” The Respondent further contends that he has been using the disputed Domain Name in connection with a bona fide offering of services, that such use is genuine, and that the term “Roboflow” is used by a number of third parties unrelated to the Complainant and is the subject of a number of third-party trademark registrations. He also points out, though, that the Complainant’s trademark applications in India and China were filed after the date of registration of the disputed Domain Name.
Held: The Panel concludes that the case file establishes that, prior to any notice to the Respondent of this dispute, the Respondent was using the disputed Domain Name in connection with a bona fide offering of goods or services, under paragraph 4(c)(i) of the Policy. While the Respondent does not have a registered company yet, his Declaration, when viewed in connection with the <roboflowsystem .com> website, indicates he is engaged in a bona fide offering of goods or services, including development of chatbot solutions. While the Complainant alleges that the Respondent’s website prominently features the Complainant’s ROBOFLOW trademark, the Panel’s review of the website does not support such allegation. The Respondent’s website does not use the term “ROBOFLOW” alone. Instead, it is used as part of the “roboflowsystem” domain name.
The Respondent submits that he was not aware of the Complainant prior to the filing of the Complaint and there is no evidence to the contrary. To the extent, the Complainant relies on its registrations in the US, EU, and UK to advance an argument of constructive knowledge, it is well established as a general principle under the UDRP that constructive knowledge is insufficient to support a finding of the requisite knowledge to support a determination of bad faith registration and use. Thus, the Respondent’s assertion that he never intended to target any existing business, was not aware of any business using the term “RoboFlow,” and registered the disputed Domain Name because it corresponds to his business name appears credible, especially given the fact that there is evidence of some third-party use of the ROBOFLOW mark and the Respondent’s descriptive use of the “RoboFlow” term.
Further, the fact, if it is a fact, that the parties market competing products does not support a determination that the disputed Domain Name is being used in bad faith, absent a finding of awareness or targeting. The Policy is not designed to provide a venue to determine claims of trademark infringement. In sum, the record in this matter does not establish that the disputed Domain Name was chosen and used with prior knowledge of the Complainant’s mark and to target the Complainant’s business in bad faith.
Complaint Denied
Complainant’s Counsel: Casey E. Wright, of Barnes & Thornburg LLP, USA
Respondent’s Counsel: Igor Motsnyi, of Motsnyi IP (dba Motsnyi Legal), Serbia
Case Comment by ICA General Counsel, Zak Muscovitch:
The co-editor of UDRP Perspectives, Igor Motsnyi, was the Respondent’s counsel in this dispute, which he handled as a public service on a pro bono basis. Mr. Motsnyi shared his thoughts on the dispute in a LinkedIn post here.
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.