The Levine Lecture series honors Gerald Levine, recipient of the ICA Lifetime Achievement Award for his significant scholarly contributions to the UDRP. Gerry is the author of “Domain Name Arbitration” and the subsequent “The Clash of Trademarks and Domain Names on the Internet.”
Join us for this unique opportunity to hear from one of the most respected voices in IP and domain name law. Registration is required – please register here.
We hope you will enjoy this edition of the Digest (vol. 5.23) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel: Complainant ‘Conjured and Misrepresented Facts’ (nolaelectric .com *with commentary)
‣ Neologism May Have Inherent Value (finsure .com *with commentary)
‣ Inference of Bad Faith Based on Well-Known Trademark and Implausible Good Faith Use (xbryk .com)
‣ Paralegal’s Case Gets the Boot, Without Prejudice (paralegalbootcamp .us *with commentary)
‣ Dismissal Appropriate Where Not a Clear Case of Cybersquatting (stainlesssteamerca .com and more *with commentary)
Panel: Complainant ‘Conjured and Misrepresented Facts’
<NolaElectric .com>
Panelist: Mr. Gerald M. Levine
Brief Facts: The Complainant, since as early as August 2014, has provided residential and commercial electrician services under the mark NOLA ELECTRIC. It is domiciled in the New Orleans metropolitan area and owns U.S. Trademark registration for the mark NOLA ELECTRIC for “Electric contracting” services. It owns and operates a company website accessible through the domain <nolaelectricservices .com>. The Complainant alleges that the Respondent is also located in the New Orleans metropolitan area and uses the Infringing Domain Name to sell and advertise identical services to those of Nola Electric. The Complainant further alleges that it is a direct competitor of Nola Electric in the same geographic area. As a result of Respondent’s use of the Infringing Domain Name to advertise Electric contracting services, Nola Electric’s potential customers may mistakenly believe Leiter is affiliated with, sponsored by or endorsed by Nola Electric.
The Respondent contends that it registered <nolaelectric .com> on February 20, 2015; and until August 2016 the Complainant was known as NOLA Maintenance Services LLC when it changed its name to NOLA Electric and Maintenance Services, LLC. The trademark for NOLA ELECTRIC postdates his registration of the Domain Name. Moreover, “there are multiple similar business names registered in the state of Louisiana. ‘Nola Electric’ is not a uniquely held or protected phrase, but rather a common geographic-industry identifier. The Respondent also points out that the Complainant did not receive its “Commercial License Certificate” from Louisiana State Licensing Board for Contractors until August 26, 2023. It further contends that the Complainant could not have been performing electrical services legally in 2015 at the time of the registration of <nolaelectric .com>.
Held: Once the Complainant establishes a prima-facie case, the burden shifts to the Respondent to show legitimate rights or interests in <nolaelectric .com>, as held in Starwood Hotels & Resorts Worldwide, Inc. v. Sanjo CellTech. Ltd., FA-406512 (Forum Mar. 9, 2005). While this threshold is low, it is not met if the Complainant’s claims are contradicted by uncontested documentary evidence. But even assuming the bar is as low as the Complainant would have it, the Respondent has adduced credible evidence that it operated a bona fide service under the disputed Domain Name “before notice” of any claim (Para. 4(c)(i) of the Policy), It has also demonstrated that the disputed Domain Name predated the registration of the trademark by six years.
The Complainant has adduced no evidence of any kind for any of these circumstances set forth in paragraph 4(b) that would support its contention that the Respondent either registered or used <nolaelectric .com> in bad faith. It could not have done so where the disputed Domain Name predates the trademark. Neither could there have been bad faith registration and use retrospectively when the Complainant acquired its right by assignment to NOLA ELECTRIC as its corporate name was only changed in 2016 to include the word “Electric.” The Complainant has proffered no evidence to the contrary. Based on this record, the Respondent could not possibly have known of any trademark right since that right did not come into existence until six years later. Even assuming that the Respondent is a competitor, as the first to register a domain name composed of a descriptive phrase it has an unassailable right to it.
RDNH: The Panel observes that the Complainant is legally represented. Paragraph 3(b)(xiii) of the Rules provides for the closing certificate required for every complaint under the Policy. As in Voys B.V., Voys United B.V. v. Thomas Zou, WIPO Case No. D2017-2136 this Panel (as are all panelists) is “entitled to assume that a lawyer signing that certificate has undertaken the necessary research to ensure that the Complaint is properly based. Moreover, the Panel is entitled to assume that the Complaint has been seen by the Complainant and seen to be ‘complete and accurate’ and approved by the Complainant.” The complaint contains several deficiencies: the Complainant misrepresented its corporate name and rights as predating the domain name registration, despite evidence showing otherwise, and falsely implied it operated an electrical services business before obtaining the required license. It also falsely claimed use of a domain name it never owned, with none of these facts being contested.
Since the disputed Domain Name predated the accrual of trademark rights and is otherwise based on misrepresentations of facts the Complainant conjures to assert a claim, it must have been evidence to the Complainant and its professional representatives that they could not possibly succeed. This is a case that should never have been brought.It is plain that the Complainant commenced this proceeding for the sole purpose of depriving the Respondent of a valuable asset of his business, and by doing so it violated the UDRP by implying that it had a superior right to <nolaelectrical.com> when it had no right at all. Even though the Respondent has not requested a finding of reverse domain name hijacking, the Panel finds that the Complainant has attempted to wrest the disputed Domain Name from the Respondent on the false contention that the Respondent was a cybersquatter when in fact the violator of the UDRP was the Complainant.
Complaint Denied (RDNH)
Complainant’s Counsel: Jared Rovira of Intellectual Property Consulting, LLC, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This case showcases how important the exposition of facts via the UDRP’s adversarial system can be. Here, if not for the Response, a Panel may have been easily led astray by the Complainant’s representations.
As pointed out by the Panel based upon evidence filed by the Respondent, the Complainant only became known as NOLA Electric and Maintenance Services LLC a year after the registration of the disputed Domain Name. Moreover, as a result of the Response, the Panel was also able to determine that its rights postdated the registration of the disputed domain and that the Complainant didn’t obtain a Louisiana electrical contractor’s license until August 25, 2022.
Had the Respondent not filed a Response, a Panel may have taken note of the USPTO registration, believed that the Complainant’s rights predated the Domain Name registration, and thereby concluded that the Domain Name had been registered in bad faith.
I wonder if the Complainant even acknowledged in its Complaint that NOLA is very commonly known as a short form for New Orleans, throughout the United States. Had the Panelist not been American, it could have conceivably assumed that this was instead, a highly distinctive term.
In any event, as a result of having received the Response, the Panel was able to methodically and convincingly break down the Complainant’s case using the unrebutted evidence provided by the Respondent.
What can a Panel do to protect itself against misleading, inaccurate, or outright false evidence provided by a complainant? Well, a Panelist is properly confined to the depth of research that it can undertake. As noted in UDRP Perspectives 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.
Such limited independent Panelist research however, would have been unlikely to have avoided a possible miscarriage of justice in this case had there not been a Response filed. Sometimes Panelists can therefore be the unwitting tool of an unscrupulous or misguided Complainant where no Response is filed, and such events are chiefly the fault of the Respondent – who could have cleared up any misapprehensions with a Response, instead of leaving it to a innocently misinformed Panel to deal with.
Nevertheless, there is one thing that Panelists can do more of to better defend themselves and their reputations from and against Complaints which either purposefully or inadvertently disinform them, without having to only rely upon the obvious fact that Panels must decide a case on the record presented to them. Panelists can instead, sometimes insist upon sufficient evidence to support all material allegations. Where a Complainant makes a material allegation, it should always be supported by evidence. For example, if a Complainant alleges that it has been in business since 2014, attach the corporate registration. If a Complainant alleges that it first used a mark in 2014, attach evidence of such use. If a Complainant alleges that it is well known to the general public, show evidence of advertisements, affidavits, consumer surveys, marketing budgets, etc. Demanding such satisfactory evidence can sometimes avoid traps laid for the unwary Panelist.
I also want to point out several other aspects of this case which I found interesting.
First, I particularly appreciate how the Panel noted that the first to register a domain name composed of a descriptive phrase in good faith, has an unassailable right to it, referring to a case which I had not recalled, namely Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA 103058 (Forum February 15, 2002), where the Panelist (Peter L. Michaelson) stated:
“It simply makes no sense to this Panel to preclude the Respondent from registering and using a domain name that accurately describes the type of banking services it offers. To do anything else would be to deny a domain name registrant, and correlatively the Internet community, if not the public at large, of the benefit of using a term, consistent with its common ordinary meaning that accurately describes that registrant’s services; to do otherwise would unjustifiably withdraw such terms from the public lexicon. Furthermore, this view is particularly telling inasmuch as the Respondent (not the Complainant) is the party which first registered the name.”
Well said.
I also particularly appreciate the Panel’s reference to Smart Design LLC v. Hughes, WIPO Claim No. D2000-0993 (Tony Willoughby, Panelist), which included the great line in connection which the present Panel used in connection with his finding of RDNH; “Had the Complainant sat back and reflected upon what it was proposing to argue, it would have seen that its claims could not conceivably succeed.” Again, well said!
I also want to point out that to the Panel’s credit, the Panel fulfilled its duty to consider RDNH. Under the Rules, a Panel must consider RDNH where appropriate, and this is true even where a Respondent does not expressly request it, as was the case here. The Panel helpfully cited Tecme S.A. v. Stephen Bougourd, WIPO Claim No. D2020-2597 (Scott Blackmer, Panelist) in this regard (“Although the Respondent did not request a finding of Reverse Domain Name Hijacking, the Panel considers this an appropriate case to enter such a finding.”) See also, UDRP Perspectives at 4.1 which states as follows:
“A Panel will not have satisfactorily discharged its duty under the UDRP without an express consideration of RDNH where the facts and circumstances warrant. This is so, not just because of Rule 15(e) which requires a Panel to consider RDNH, but also because RDNH is essentially a kind of “counterclaim” that the Respondent is entitled to adjudication of. Indeed, it has been considered expressly “unfair” to deprive a Respondent of the adjudication of its request for a finding of RDNH – even when the Complainant purports to withdraw its Complaint, as the parties are to be treated “equally” under Paragraph 10(b) of the Rules. Even when RDNH is not expressly requested by a Respondent – indeed even in ‘no response’ cases – a Panelist must still consider RDNH where appropriate. Where an RDNH request or circumstance exists, a Complainant may not even be permitted to withdraw its Complaint and thereby avoid an RDNH finding.”
Lastly, although it did not come up expressly in the present case, a word about the Complainant’s trademark for NOLA ELECTRIC, which corresponded exactly to the Respondent’s Domain Name. Despite the Complainant not obtaining any relief under the UDRP, the fact remains that the Complainant has a valid USPTO registration for this term which was obtained on the basis of Section 2(f) (acquired distinctiveness). There are sometimes problems with how parties are able to use Section 2(f) to obtain registration at the USPTO, but that is not the point I want to really raise here. Rather, the point is that although the Respondent may have rights in the Domain Name (contractual rights rather than trademark rights – as a result of being the first to register it), the Complainant could conceivably enjoin use of the Domain Name as a result of its trademark registration through the courts. This however, is a matter for the courts and not for the UDRP and this case demonstrates how the limited scope of the UDRP may justifiably result in a potentially different outcome than a court action based upon a different legal regime.
Neologism May Have Inherent Value
Finsure v. Mira Holdings, WIPO Case No. D2025-1070
<FinSure .com>
Panelist: Ms. Kathryn Lee (Presiding) Ms. Nathalie Dreyfus and Mr. Andrew D. S. Lothian
Brief Facts: The US-based Complainant, an insurance brokerage firm, is the owner of the US trademark for FINSURE (used since July 31, 2023), which was filed on February 8, 2022, published for opposition on January 10, 2023, and registered on January 21, 2025. The disputed Domain Name was registered on January 20, 2023 by the Respondent who is a domain name investor, and resolves to a landing page advertising it for sale. The Complainant alleges that FINSURE is a distinctive mark which has no meaning other than as reference to the Complainant’s financial services, and that based upon this and the Respondent’s registration of the disputed Domain Name nearly a year after the Complainant filed its trademark application for FINSURE and mere days after the application was published for opposition, it can be inferred that the Respondent was or should have been aware of the Complainant’s trademark rights when registering the disputed Domain Name.
The Complainant also alleges that the Respondent attempted to extort the Complainant for rights to the disputed Domain Name by demanding that the Complainant pay US $60,000 for transfer of the disputed Domain Name, and that this is clear evidence of bad faith and cybersquatting. The Respondent contends that “finsure” is a term formed by blending the common terms “finance” and “insure,” and that it is a common name used by companies in the financial services, insurtech consulting, and research services sectors. The Respondent further explains that it is a professional domain name investor with more than 1,000 generic domain names offered for sale, and that it purchased the disputed Domain Name at an auction on January 20, 2023, its expiration date, which is consistent with the Respondent’s business plan.
Held: The Complainant filed the FINSURE trademark application on February 8, 2022, but it was not registered until January 21, 2025, over two years later. The Complainant began using the mark on July 31, 2023, after the Respondent had held the disputed Domain Name for more than six months. Under U.S. trademark law, rights arise only upon registration or prior use in commerce, not from the application alone. Here, the Complainant has shown no common law rights or evidence that the trademark was well-known before the Respondent registered the domain name. The Panel further notes that the term “finsure” appears to be a neologism resulting from the fusion of the common terms “finance” and “insurance.” While not a dictionary word, it is linguistically constructed in a manner that lends itself to generic or descriptive interpretations in the context of financial or insurance related services. This type of coined term, often referred to as a “portmanteau,” may possess inherent value and commercial appeal independent of any specific trademark significance.
The Complainant suggests that the Respondent registered the disputed Domain Name after learning of the Complainant’s trademark application. While possible, the Panel finds it unlikely since the Domain Name just happened to go up for auction ten days after publication. It’s more plausible that the Respondent, a domain trader, bought the domain at a public auction seeing its investment potential. Indeed, the term “finsure” has been used by a number of businesses in various sectors from well before the registration of the disputed Domain Name and even the establishment of the Complainant’s business. Based on this, it seems likely that the term itself has perceived value which was the motivation for the Respondent to obtain the disputed Domain Name. Besides, records indicate that the disputed Domain Name came up for auction at its expiration, and therefore there was no correlation between the date of publication of the Complainant’s trademark application and the date of registration of the disputed Domain Name.
RDNH: Here, records show that the Complainant reached out to the Respondent and offered up to US $50,000 for purchase of the disputed Domain Name. Such a substantial offer would be unlikely if the Complainant considered the Respondent to have targeted its mark in registering the disputed Domain Name like it claimed in the Complaint and it were confident in the chances of success in a UDRP proceeding. Based on the facts, the Panel is of the view that the Complainant attempted to purchase the disputed Domain Name from the Respondent as it was fully aware that it could not succeed as to the bad faith element required to succeed in a UDRP proceeding and only filed the Complaint when it judged the negotiations to be unsuccessful. This conduct is consistent with findings in Gold Coast Tourism Corporation Ltd. v. Digimedia .com L.P., WIPO Case No. D2013-1733.
Complaint Denied (RDNH)
Complainant’s Counsel: Venable, LLP, United States
Respondent’s Counsel: Represented Internally
Case Comment by ICA General Counsel, Zak Muscovitch: This case provides, inter alia, a helpful reminder that under U.S. trademark law, a trademark application alone does not grant enforceable rights. As the Panel noted, “Trademark protection arises only upon registration or, alternatively, through the acquisition of distinctiveness based on prior use in commerce”. That means that absent a trademark registration, a Complainant must prove common law trademark rights but as the Panel noted, “in this case, the Complainant has neither demonstrated any common law rights predating the Respondent’s registration of the domain name, nor provided evidence that its trademark was well-known at the relevant time”.
I also want to particularly credit the Panel for this excellent note about “neologisms” and the potential inherent value of them:
“The Panel further notes that the term “finsure” appears to be a neologism resulting from the fusion of the common terms “finance” and “insurance.” While not a dictionary word, it is linguistically constructed in a manner that lends itself to generic or descriptive interpretations in the context of financial or insurance related services. This type of coined term, often referred to as a “portmanteau,” may possess inherent value and commercial appeal independent of any specific trademark significance.”
For further reading on this topic please see UDRP Perspectives at 2.7.
For further reading on this case, please see “WIPO panel rules Finsure attempted reverse domain hijacking” at DNW.com, and also “Bought for ~$10k in 2023, Finsure.com Saved in UDRP” At DomainInvest.com.
Inference of Bad Faith Based on Well-Known Trademark and Implausible Good Faith Use
SAMSUNG BIOEPIS CO., LTD. v. kalo anna, WIPO Case No. D2025-1367
<xbryk .com>
Panelist: Mr. Piotr Nowaczyk
Brief Facts: The Complainant, founded in 2012, is a biopharmaceutical company. Among its products is a biosimilar of Denosumab, used in the treatment of osteoporosis and certain cancers, marketed under the trademark XBRYK. The Complainant is the owner of several XBRYK trademark registrations, including International Trademark (January 22, 2024); Korean Trademark (January 20, 2025); and US Trademark (February 25, 2025). The disputed Domain Name was registered on November 4, 2024. As of the date of this Decision, as well as at the time of submitting the Complaint, the Domain Name has not been resolved to any active website. The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.
Held: It results from the evidence on record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use of the Domain Name. On the contrary, at the time of submitting the Complaint and as of the date of this Decision, the Domain Name resolved to a website with Pay-Per-Click (“PPC”) links. Such use of the Domain Name to host a parked page comprising PPC links does not represent a bona fide offering in these circumstances. Moreover, the composition of the Domain Name, being identical to the Complainant’s distinctive mark, carries a high risk of implied affiliation. Given the above, there are no circumstances in the evidence on record which could demonstrate any rights or legitimate interests of the Respondent in respect of the Domain Name.
This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration. This finding is supported by the composition of the Domain Name consisting exclusively of the XBRYK trademark. Moreover, it has been proven to the Panel’s satisfaction that the Complainant’s XBRYK trademark is well-known and unique to the Complainant. In sum, the Respondent, more likely than not, registered the Domain Name with the expectation of taking advantage of the reputation of the Complainant’s XBRYK trademark. Moreover, the Domain Name resolves to a parked webpage. The overall circumstances of this case, including the well-known nature of the Complainant’s trademark and the implausible good faith use to which the Domain Name may be intrinsically put, support an inference of bad faith.
Transfer
Complainant’s Counsel: KAI International IP Law Firm, Republic of Korea
Respondent’s Counsel: No Response
Paralegal’s Case Gets the Boot, Without Prejudice
PRM Group, Inc. v. Raju Mahajan / Norah Talent, NAF Claim Number: FA2505002153614
<paralegalbootcamp .us>
Panelist: Mr. Steven M. Levy, Esq.
Brief Facts: The Complainant states that, since 2011, it has provided educational and training services, including live and online courses, seminars, workshops, and conferences, for paralegals and other legal professionals under the trademark PARALEGAL BOOTCAMP. It owned a US registration but this was inadvertently cancelled on March 14, 2025 due to an unintentional failure to timely file required maintenance and renewal documents. Nevertheless, the Complainant claims common law trademark rights based on its longstanding and widespread use of the mark. The Respondent failed to submit a Response in this proceeding.
The Complainant states that the “Respondent sells and provides online training programs, including live classes and homework assignments, that are designed to equip participants with the knowledge and skills necessary to work as a paralegal in the United States” through its website at the disputed Domain Name. The Complainant alleges that the disputed Domain Name is used in bad faith as Respondent’s services directly compete with the Complainant, disrupt Complainant’s business, and have continued despite Respondent’s receipt of multiple notices from the Complainant concerning its mark and a demand to transfer the disputed Domain Name to the Complainant.
Preliminary Issue: Concurrent Court Litigation: The Complainant notes that it has commenced litigation against the Respondent claiming trademark infringement and cybersquatting under U.S. trademark law, including ACPA. Rule 18 provides, in pertinent part: “…the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” Panels have often rendered a decision despite concurrent court litigation when the domain name issues are ancillary to other issues in those proceedings and the domain name issues can be resolved without reference to the remedies at issue in the court case. While Panels have proceeded to render decisions despite the concurrency of litigation between the parties, the court cases in those disputes often involve a variety of issues beyond those in the proceedings under the Policy and where the disputed Domain Name is either not contested or is at least ancillary to such issues.
After analyzing the facts as well as the evidence brought by the parties, the Panel finds that it seems more reasonable to defer to the concurrent court case. The rationale for this decision is that a panel should not enter a decision when there is a court proceeding pending because no purpose is served by the panel rendering a decision on the merits, whether to transfer the disputed Domain Names, or otherwise. In fact, in the present situation it is hard to properly adjudicate a dispute where two parties claim to be entitled to the disputed Domain Names and rights over the SUN RAY trademark and where little opportunity is given in a forum such as this to adequately test and assess the wide-ranging and conflicting assertions made by the parties. Furthermore, the Panel finds that the case seems to present a legitimate trademark dispute.
Held: The proceedings are dismissed without prejudice due to the pendency of the Complainant’s ACPA action against the Respondent which concerns issues and relief that are identical to those at issue in the present case.
Complaint Denied
Complainant’s Counsel: Lauren Caverly Pratt of Holland & Knight LLP, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case may be helpful for Panelists to tuck away in their desk drawer in case they are ever charged with adjudicating a UDRP dispute which involves contemporaneous court proceedings. If this does end up happening to you, you have my sympathies. But the Panelist in this case ably navigated the issues and considerations and provided us with a very helpful backgrounder on the subject, citing useful cases as well.
There was another interesting wrinkle in this case given the fact that the previously “incontestable” US trademark registration was inadvertently allowed to lapse. Ultimately it was unnecessary to deal with this as the case was dismissed without prejudice due to the pendency of the Complainant’s ACPA action which concerned issues and relief that were identical to those at issue in the present case.
Lastly, I want to point out that a Panel can clearly and admirably earn its fee and discharge its duty without deciding a case on the merits, as the Panel did here. Not every case requires a Panel to decide the dispute on the merits and an experienced and sufficiently adroit Panelist will be able to exercise their judgment in favor of restraint where appropriate.
Dismissal Appropriate Where Not a Clear Case of Cybersquatting
<stainlesssteamerca .com>, <stainlesssteamerlv .com>, <stainlesssteamercalifornia .com> and <stainlesssteamernv .com>
Panelist: Mr. Clive Elliott K.C.
Preliminary Issue: Multiple Respondents: A preliminary issue that needs to be determined is whether the Complainant is entitled to make a single complaint against four domain names involving multiple respondents. The Complainant contends that all four of the Domain Names are owned and controlled by a single entity or individual, and provides evidence in support. The Respondent also confirms that Mr. Asis and Mr. Talor are associated and Desert Carpet Cleaners and Precision Carpet Care offer carpet cleaning services using the name Stainless Steamer and jointly operate the websites connected to the Domain Names. Accordingly, the Respondent confirms that Mr. Asis and Mr. Talor may be treated as joint respondents for purposes of this action. Given the above, the Panel is satisfied that the Complaint in relation to the four Domain Names should be determined together. The Complainant contends that all four of the Domain Names are owned and controlled by a single entity or individual, as evidenced.
Brief Facts: Then Complainant asserts that it has, for the past half century, provided carpet and upholstery cleaning and installation services and products throughout the United States and has an online presence at <stanleysteemer .com>. It is the registered owner of the mark STANLEY STEEMER, including US trademark dated October 22, 1974 under class 7 and dated March 11, 1975 under classes 37, 42. The Respondent registered two of the Domain Names on July 24, 2017, which are set to expire on July 24, 2025, and the other two Domain Names on February 23, 2023, with expiry on February 23, 2026. The Complainant alleges that the Respondent registered and uses the Domain Names in bad faith for the purpose of diverting online traffic, premised on consumer confusion, and is not a bona fide offering of goods or services. The Respondent argues that it can demonstrate rights in the Domain Names, as it has been using the Domain Names in connection with legitimate carpet cleaning businesses for over eight years and that its web pages contain a disclaimer.
The Complainant further alleges that each of the four Domain Names consists of the phrase “Stainless Steamer” combined with a geographic indicator and that as of April 25, 2025, each of the Domain Names resolved to virtually identical websites, with each purportedly offering carpet and upholstery cleaning and related services. The Respondent points out that this is not the first dispute with the Complainant. In 2017, the Complainant sent a cease-and-desist letter to the Respondents objecting to the Respondents’ use of the domain names <stainlesssteemercarpetcleaningca .com> and <stainlesssteemercarpetcleaninglasvegas .com>. The Respondent ceased use of these domain names and registered the Domain Names <stainlesssteamerca .com> and <stainlesssteamerlv .com> at issue in this case. The Respondent further contends that the Complainant has been aware of the Respondents and their use of the two Domain Names for almost 8 years, but has delayed in bringing an action, and argues that this supports the equitable defense of laches and is evidence of a lack of confusing similarity.
Held: The use of descriptive terms that are apt to describe the respondent’s goods or services in a domain name may provide a basis to draw an inference that the respondent has some rights or interests in the domain names in issue, pursuant to Policy ¶4(a)(ii). In addition, the Respondents have been using certain of the Domain Names for almost eight years, and understandably, the Respondent argues that the Complainant has delayed unduly in bringing legal proceedings and these domain name proceedings. The Respondents in a similar situation were able to invoke the equitable defense of laches, and, at the very least, it is evidence of a lack of confusing similarity. The Panel refers to and relies upon the discussion under whether the Respondent has legitimate rights or interests under the Domain Names. Having used at least some of Domain Names for eight years, with the Complainant’s knowledge and apparent acquiescence, the Panel is not satisfied that bad faith has been established.
In its 23 May 2025 Notice of Civil Action, the Complainant informed the Forum that it had filed a civil case against the Respondent in the U.S. District Court, wherein it seeks to stop the Respondent from using the Infringing Domain Names and to order their transfer to the Complainant or its designee. That is, for all intents and purposes, the same relief sought by the Complainant in this proceeding before Forum. This Panel acknowledges that Panels often issue UDRP decisions on the merits, even in overlapping court-UDRP proceedings, where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties. However, that is not an invariable practice. Other Panels have terminated proceedings and dismissed the complaint, 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.
In the present case, while the Panel has reached a conclusion on the merits, as best it can, it is not satisfied that this is a clear case of abusive cybersquatting. The Panel has also taken into account that a form of status quo has arguably existed for eight years. It has also taken into account the fact that the parties are engaged in current court proceedings before a competent court, which is addressing the very issues, the subject of the above proceedings. The Panel certainly takes no position on the merits of any wider commercial dispute between the Parties.
Complaint Denied
Complainant’s Counsel: Sabina A. Vayner of Greenberg Traurig, LLP, USA
Respondent’s Counsel: Ryan Gile of Gile Law Group Ltd., USA
Case Comment by ICA General Counsel, Zak Muscovitch: As briefly discussed above in the <ParaLegalBootcamp .us> case, restraint can be the better part of valor for UDRP Panelists. In the present case, the Panel found that “on balance, the Domain Names should [not] be transferred to Complainant, particularly while extant District Court proceedings will determine that precise issue. Interestingly, the Panel in this case went to the trouble of examining the case on its merits but still determined that “it is not satisfied that this is a clear case of abusive cybersquatting”. This is a crucial yardstick for Panelists to consistently bear in mind. Panelists maintain the residual power and discretion to dismiss any case that is not suitable for resolution under the UDRP. As explained in UDRP Perspectives at 0.1, 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.
The UDRP is not intended to resolve all kinds of disputes. Rather, it is only designed and intended for clear cut cases of cybersquatting. Other disputes are not intended to be resolved by the expedited and administrative nature of the UDRP procedure. The limited scope of the Policy is confirmed by its legislative history, namely the “Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy” (“ICANN Second Staff Report”) 1999, par. 4.1.c. It confirms that the Policy applies to “a small, special class of disputes” and “except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties)…” The “Final Report of the WIPO Internet Domain Name Process”, April 30, 1999 (“WIPO Final Report 1999”) states that the UDRP’s scope is limited to “abusive registrations or cybersquatting” and only to “egregious examples of deliberate violation of well-established rights…” (see par. 160). The limited nature of the UDRP has been highlighted as a “feature, not a flaw” (see ICANN Second Staff Report, par. 4.1.c). The Policy should not be applied inter alia to “good faith disputes between competing right holders or other competing legitimate interests…” or to “domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial consideration” (see par. 172 of the WIPO Final Report 1999). See also 2.10 of this Document (“Free Speech”).
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.