Panel: Complainants Attempted to Pervert UDRP Process with Forged Trademark
As the saying goes, “forewarned is forearmed”. We must thank Panelist Steven Maier for warning us all that such frauds can occur in the UDRP and that Panelists must always be vigilant when reviewing a case. Often such vigilance extends to examining the trademark register itself to verify whether the relied upon trademark actually belongs to the Complainant, whether there are any disclaimers attached to the mark, and confirming the date of registration (see UDRPPerspectives.org at 0.3 for more on “Independent Panelist Research). Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 5.36) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel: Complainants Attempted to Pervert UDRP Process with Forged Trademark (chafezero .com *with commentary)
‣ Panel: Inclusion of Word “FAIL” Unlikely to Suggest Association with Complainant in Criticism Case (ausfail .com *with commentary)
‣ Panel in Surname Case: Respondent’s Business Model of Domain Investment Can Constitute Legitimate Interest. (.EU case) (hime .eu *with commentary)
‣ Panel Finds Bengali Transliteration Domain Identical to MELBET Trademark (মেলবেট (xn--z5bzfq8hc) .com)
‣ The Onus is on Complainant, No Evidence of Targeting by the Respondent (phoenixinvestmentadvisor .com)
Panel: Complainants Attempted to Pervert UDRP Process with Forged Trademark
<chafezero .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Complainant Company is a domestic limited liability company registered in the State of Georgia, United States, where Co-complainant Alina Chung is the Registered Agent. The Complainant claims that Alina Chung is the joint applicant (with another named individual) for United States trademarks, for a word mark CHAFEZERO, filed on July 28, 2025, and August 13, 2025 and that they have operated in business since February 2022, and had intended to use the trademark CHAFEZERO in respect of a commercial product. The Complaint further provides what purports to be a letter from the “Trademark Compliance Division” of the USPTO, dated July 29, 2025, and comprising an “Advisory Notice” to the Respondent and an email to the Complainants, dated August 1 [2025], from a “Primary Patent Examiner Assistant” with the USPTO, stating: “Hi Alina, This is to inform you that, as you mentioned your intent to use this trademark in Australia, you now have permission to do so.”
The disputed Domain Name was registered on April 21, 2025 and it appears at all material times to have been resolved to a Registrar’s landing page. The Complainant alleges that the disputed Domain Name has remained “undeveloped, parked and broker-listed”, which cannot give rise to any rights or legitimate interests on the Respondent’s part. The Complainants further alleges that the disputed Domain Name can only have been registered for the purpose of selling it to the Complainants for a sum in excess of the out-of-pocket costs associated with its registration. The Respondent contends that he registered the disputed Domain Name in conjunction with the development of a new product for a company named the Skin Federation Pty Ltd, which has launched nine skincare products since its inception in Australia in 2019. He further contends that the Complainants initially attempted to purchase the disputed Domain Name from him for USD $200, but pivoted to the present proceedings once that approach was unsuccessful.
Held: The Complainants claim a U.S. trademark registration for CHAFEZERO (Reg. No. 99307329, July 29, 2025), but no such registration exists. The trademark applications currently have the following status: “LIVE/APPLICATION/Awaiting Examination – The trademark application has been accepted by the Office and has not yet been assigned to an examiner”. That is, the filing under application number 99307329 is an application only, the latest information available from the USPTO confirming that it awaits examination and has not yet been assigned to an examiner. A trademark application, as opposed to registration, does not invest the applicant with trademark rights for the purpose of the first element under the Policy.
In the circumstances, the Panel finds the purported certificate of trademark registration as exhibited by the Complainants to be a forgery, as is also the case with the Complainants’ other two other exhibits, which also purport to be documents emanating from the USPTO. Nor can the Complainants establish unregistered or common law trademark rights in the mark CHAFEZERO. In this case, despite claiming to have traded since 2022, and to have acquired raw materials in connection with the relevant product since May 2024, the Complainants have failed to produce any evidence of any use by them whatsoever of the name or mark CHAFEZERO at any time.
RDNH: In this case, it appears from the evidence exhibited by the Complainants themselves, which they initially sought to purchase the disputed Domain Name from the Respondent for USD $200, only turning to the present proceedings once that commercial approach had failed. The Panel also notes in this regard that the suggestion of a higher offer was one made by the Registrar’s broker service, and not by the Respondent himself, who had merely rejected the Complainants’ offer without further comment. Of considerably greater concern, however, is that the Complainants appear to have exhibited forged documents in support of their Complaint concerning USPTO trademark registration.
The Panel can only reasonably conclude, therefore, that the Complainants have attempted to pervert the process of the UDRP by the submission of forged documents in support of their Complaint, which they know, or should have known, had no reasonable prospect of success. The Panel further notes the apparently false certification provided by the Complainants, namely, that the information contained in the Complaint was complete and accurate to the best of their knowledge, and was not being presented for any improper purpose. Accordingly, the Panel has no hesitation finding this to be a case of Reverse Domain Name Hijacking, and indeed one of the most egregious such cases that the Panel has encountered.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
Case Comments by ICA General Counsel, Zak Muscovitch:
As the saying goes, “forewarned is forearmed”. We must thank Panelist Steven Maier for warning us all that such frauds can occur in the UDRP and that Panelists must always be vigilant when reviewing a case. Often such vigilance extends to examining the trademark register itself to verify whether the relied upon trademark actually belongs to the Complainant, whether there are any disclaimers attached to the mark, and confirming the date of registration (see UDRPPerspectives.org at 0.3 for more on “Independent Panelist Research). Unfortunately, on a rare occasion, a Panelist will not verify a trademark and will end up ordering a transfer to a party that has no trademark right, as was apparently the case with TRX.COM [hat tip to DNW.com and to John Berryhill].
This case got me thinking, if a Complainant can fake a trademark certificate, what prevents a Complainant from faking being the Complainant? I mean, anyone can file a UDRP and claim to be the trademark owner. And such an imposter can even file the genuine trademark certificate even though the trademark registration does not belong to the party who commences the UDRP. Such misconduct is apparently exceedingly rare, but given the egregiousness of the ChafeZero case, we must consider whether we have been forewarned of such an event and whether we are forearmed.
Note by the Digest Editor, Ankur Raheja: This reminds me of another UDRP matter from early 2025 concerning <lemeilleur .com> (see decision here), in which the complainant also submitted a fabricated USPTO record. Another vigilant Panelist, Igor Motsyni, noted: “What is more concerning for the Panel is that the Complainant clearly provided a fabricated record from the USPTO website with false information and made false statements as to its registered trademark rights.”
Panel: Inclusion of Word “FAIL” Unlikely to Suggest Association with Complainant in Criticism Case
Universal Services of America LP v. Erik Deutsch, WIPO Case No. D2025-2493
<ausfail .com>
Panelist: Mr. Georges Nahitchevansky
Brief Facts: The Complainant is a security and facilities services company providing private security services and smart security technology and uses the domain name <aus .com>. The Complainant provides its services, inter alia, under the names and marks ALLIED UNIVERSAL, ALLIED UNIVERSAL SECURITY SERVICES, and AUS. The Complainant owns US registrations for AUS, registered on August 22, 2023, and February 2020 respectively. On June 7, 2023, the Respondent filed a civil action against the Complainant in the Superior Court of the State of California for the County of Los Angeles based on an alleged “negative experience with Complainant.” That case is currently pending. The Respondent registered the disputed Domain Name on March 16, 2025, and at some point thereafter, the Respondent used the disputed Domain Name for a website that appears to aggregate third party articles and reports critical of Complainant and its services.
The Complainant alleges that the Respondent has no rights in the AUS mark and has used the disputed Domain Name to disrupt Complainant’s business and to tarnish the reputation of Complainant and goodwill of the AUS mark. The Complainant also alleges that the Respondent has used the disputed Domain Name and associated website for leverage purposes in Respondent’s pending lawsuit against the Complainant and to presumably secure a favorable resolution. The Respondent contends that the disputed Domain Name has been used to provide Respondent’s “personal criticism of the Complainant and criticism of Complainant aggregated from various public sources,” all in an effort “to help expose failures at Complainant’s organization.” The Respondent further contends that his website is non-commercial and that the Complainant has provided no evidence that the Respondent’s use of the disputed Domain Name is pretextual.
Held: The Panel first notes that the disputed Domain Name does not solely consist of Complainant’s AUS mark and does not use the AUS mark with a term that would likely conjure up an association or affiliation with the Complainant. Rather, the inclusion of the term “fail” in the disputed domain makes it evident that the disputed Domain Name is not meant to impersonate the Complainant per se, but instead is aimed at referring to the Complainant negatively. The particular composition of the disputed Domain Name makes it unlikely that Internet users will mistakenly perceive the disputed Domain Name as being affiliated with, sponsored by or otherwise connected to the Complainant. In all, while the Panel is mindful that it is possible that the Respondent may have created his website to leverage his claims against the Complainant, it is equally possible that the Respondent did so because he finds Complainant’s services distasteful in light of what he claims in his lawsuit allegedly happened to him from security guards employed by the Complainant.
The Complainant further provides no details on or evidence establishing the claim of “alleged defamatory allegations,“ the fact that the Respondent has attempted to attract and drive traffic to his website that contains news reports and postings that are critical of the Complainant is not in and of itself proof that the Respondent lacks a legitimate interest in using the disputed Domain Name. As an aside, the Panel again notes that a UDRP is limited in its scope. If the means used by the Respondent to publicize Respondent’s website somehow violate some claimed trademark, copyright, or other right of the Complainant, then such should be adjudicated in a different forum and not in a UDRP proceeding which is focused on whether cybersquatting has occurred. In all, the Respondent has simply used the disputed Domain Name, that on its face contains the negative term “fail,“ for a website that aggregates negative postings about the Complainant by third parties and which in its totality is critical of the Complainant. This is hardly the form of “unseemly conduct” contemplated by the Policy for a claim of tarnishment.
Taking all of the above into account, the Panel concludes that the Respondent has a legitimate interest in using the disputed Domain Name, which includes a term that carries an obvious negative connotation and does not impersonate the Complainant, for a non-commercial website that aggregates reports and information by third parties that are critical of the Complainant and to express Respondent’s genuinely held views about the Complainant.
Complaint Denied
Complainant’s Counsel: Morrison & Foerster, LLP, United States
Respondent’s Counsel: MOTSNYI IP GROUP, Serbia
Case Comments by ICA General Counsel, Zak Muscovitch:
The decision is a masterclass in analyzing criticism cases under the Policy, by Panelist Georges Nahitchevansky. If you are a Panelist you should bookmark this case for future reference should you ever have to adjudicate a criticism case. I encourage you to read the case in full in order to appreciate all of its fine analysis and proper application of the Policy. Amongst the many excellent observations and points made by the Panelist in the decision are:
- The issue before the Panel is whether Respondent is making a fair use of the disputed Domain Name by using it in connection with a website that appears to be critical of Complainant and its business.
- Under Paragraph 4(c)(iii) of the Policy, the use of a domain name for a fair use such as noncommercial free speech, can in principle support a respondent’s claim to a legitimate interest under the Policy.
- In assessing cases of claimed free expression, the Panel undertakes a holistic assessment that includes the important initial question of whether a disputed Domain Name is being used to impersonate Complainant, or put another way, whether the public would perceive the disputed Domain Name as being affiliated with or authorized by a complainant.
- Building on this initial inquiry, panels often consider additional factors to assess whether a respondent is using the disputed domain for bona fide noncommercial criticism concerning a complainant or to take advantage of a complainant’s mark in a bad faith or abusive way for the benefit of a respondent.
- The inclusion of the term “fail” in the disputed domain makes it evident that the disputed Domain Name is not meant to impersonate Complainant per se, but instead is aimed at referring to Complainant negatively.
- It is not within the scope of the Policy for a panelist to assess the accuracy or truthfulness of comments that appear critical of Complainant, particularly where, as here, most of the postings come from third parties (such as legitimate news sources). To the extent Complainant believes the content of Respondent’s website is defamatory, a UDRP proceeding is not the proper forum for adjudicating such a claim.
- The fact that Respondent has attempted to attract and drive traffic to his website that contains news report and postings that are critical of Complainant is not in and of itself proof that Respondent lacks a legitimate interest in using the disputed Domain Name for a website critical of Complainant.
- The Panel again notes that a UDRP is limited in its scope. If the means used by Respondent to publicize Respondent’s website somehow violate some claimed trademark, copyright, or other right of Complainant, then such should be adjudicated in a different forum and not in a UDRP proceeding which is focused on whether cybersquatting has occurred.
- Fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy; rather, claims sounding in commercial libel must be brought in other legal venues (citing, Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647, David Bernstein, Panelist).
- Respondent has simply used the disputed Domain Name, that on its face contains the negative term “fail,“ for a website that aggregates negative postings about Complainant by third parties and which in its totality is critical of Complainant. This is hardly the form of “unseemly conduct” contemplated by the Policy for a claim of tarnishment.
- Respondent’s actions could be seen as an effort by Respondent to force a favorable resolution of Respondent’s claims against Complainant. But under that logic then many genuinely noncommercial criticism websites would arguably be seen as being attempts to gain leverage over another party. For example, a gripe site concerning a company could be seen as an attempt by a party to gain leverage in order to obtain some form of restitution from the company. Such arguments would unfairly convert many criticism sites into borderline commercial endeavors based on speculation on the benefits being sought by the operator of such sites; and in this case there is a meaningful distinction between seeking to be made whole, and seeking outright commercial gain. To be sure, such speculation is not within Panel’s purview in a UDRP proceeding, but requires more than unsubstantiated and conclusory allegations.
- Taking all of the above into account, the Panel concludes that Respondent has a legitimate interest in using the disputed Domain Name, which includes a term that carries an obvious negative connotation and does not impersonate Complainant, for a noncommercial website that aggregates reports and information by third parties that are critical of Complainant and to express Respondent’s genuinely held views about Complainant.
Also, congratulations are in order to the Respondent’s counsel, Igor Motsnyi, who I am fortunate to have co-authored UDRPPerspectives.org with. You can read Igor’s interesting post about this case on LinkedIn.
For more reading on “Free Speech and Criticism Sites”, please read Section 2.10 of UDRPPerspectives.
Panel in Surname Case: Respondent’s Business Model of Domain Investment Can Constitute Legitimate Interest. (.EU case)
Mariana Leite Baptista HIME v. Luc BIGGS, Key Domains Unipessoal Lda, WIPO Case No. DEU2025-0019
<hime .eu>
Panelist: Mr. Nick J. Gardner
Brief Facts: The Complainant is a Portuguese citizen residing in Brazil whose family name is “Hime”. The Complainant asserts rights in her family name, Hime, pursuant to Article 72, item 1 of the Portuguese Civil Code. The Respondent is a Portuguese company that focuses on the registration and resale of domain names as part of its business model. The disputed Domain Name was registered on October 30, 2021 and is currently offered for sale, with a “buy now” price of EUR 9999. The Complainant submits that the disputed Domain Name is identical to her family name and that the only use the Respondent has made of the disputed Domain Name is to advertise it for sale, which does not fulfill the requirements for legitimate interests under ADR Rules.
The Complainant further alleges that the disputed Domain Name, a personal name with no demonstrable link to the Respondent, was registered or is being used in bad faith. The Respondent contends that the disputed Domain Name was selected primarily because “hime” (姫) is the common Japanese word for “princess”, broadly used in pop-culture and in commerce. The Respondent further contends that it has been engaged since 2016 in the lawful business of acquiring, developing, and re-selling generic, descriptive, and brandable Internet domain names. Accordingly, it asserts legitimate interests in the disputed Domain Name, arguing that acquiring a descriptive domain name as part of a bona fide investment portfolio and offering it for sale on the open market constitutes a legitimate interest.
Held: The Respondent argues that it registered the disputed Domain Name as part of its business model of registering and selling domain names, and did so in light of the intrinsic value associated with the disputed Domain Name as it corresponds to the Japanese dictionary term for “princess”. The Panel considers the facts in the present case are substantially similar to those in an earlier decision under the ADR Rules – Silvan (Janis) Stein v. Premium Domain Names S.L., WIPO Case No. DEU2024-0039. The Panel considers the reasoning of the panel in that case is correct and equally applicable to the present case. Accordingly, the Panel recognizes that the registration of a domain name for the purpose of sale may, in certain circumstances, give rise to legitimate interest in that domain name on the part of the registrant, particularly when the domain name corresponds to a dictionary term with inherent commercial value.
The Complainant has not provided any evidence to demonstrate that the Respondent registered the disputed Domain Name with specific knowledge of the Complainant or with the intent to target the Complainant’s family name. The absence of any direct approach by the Respondent to sell the domain name to the Complainant supports the Respondent’s assertion that there was no intent to exploit the Complainant’s name or reputation. The Respondent has described a legitimate business model focused on registering and selling domain names, which includes the registration of domain names composed of descriptive terms with inherent value, such as the Japanese word “hime”. The Panel acknowledges that “hime” serves both as a family name and as a dictionary term with cultural significance, suggesting that the term is not exclusively associated with the Complainant, further decreasing the likelihood of bad faith registration or use.
Regarding the Complainant’s specific bad faith arguments: Intent to Sell: The disputed Domain Name’s listing for sale on standard marketplace platforms without targeting the Complainant does not constitute bad faith under this provision. Two-Year Non-Use: The Panel finds this provision inapplicable and moreover, the Respondent has consistently used the domain name by offering it for sale, which the Panel finds in the circumstances constitutes a form of use. Personal Name with No Link: Given that the disputed Domain Name corresponds to the Japanese dictionary term, even though there seems to be no link between the Respondent and the disputed Domain Name, this does not change Panel’s findings as the personal name here also has a dictionary meaning.
RDNH: While the Respondent has requested a finding of abuse of administrative proceedings, the Panel finds that although the Complaint was unsuccessful, it was not brought in bad faith nor constituted an abuse of the administrative proceeding. The Complainant had a good faith basis for asserting family name rights, even though the particular circumstances of this case, involving a term with significant dictionary meaning in another language, ultimately did not support the claim.
Complaint Denied
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Self-represented
Case Comments by ICA General Counsel, Zak Muscovitch: This third case that I am commenting upon this week, which showcase the extraordinary skill, experience, and thoughtfulness of the respective Panelists. Here, Panelist Nick Gardner presents an exquisitely clear refutation of the arguments made by the Complainant and rightly concluded that the Respondent had not targeted the Complainant and that the Respondent’s business model of domain name investing was legitimate. Well done! I do have some questions about the determination that RDNH was inappropriate, but we can leave that discussion for another day.
Panel Finds Bengali Transliteration Domain Identical to MELBET Trademark
Batnesto Ltd. v. Artem Melnichenko, CAC Case No. CAC-UDRP-107788
<মেলবেট .com> (<xn--z5bzfq8hc .com>)
Panelist: Ms. María Alejandra López García
Brief Facts: The Cyprus-based Complainant is an online gambling and casino company registered which operates through its website <melbet .com> (registered in 2012) and App by Pelican Entertainment B.V. The Complainant, under its trademark MELBET, sponsors football players, or sports teams, as Juventus, in the Middle East regions and MENA; also partners with La Liga and participates in several reputed industry congresses as AffPapa iGames, SiGMA, and SBC Awards. The disputed Domain Name <মলেবট .com> (an IDN with the Punycode translation of <xn--z5bzfq8hc .com>) was registered on May 13, 2023 and resolves to an active website for online sports gaming and gambling activities, which mimics the Complainant. The Complainant contends that the disputed Domain Name is composed of characters from the Bengali (Bangla) script, which is used for the Bengali language, primarily spoken in Bangladesh and parts of India (especially West Bengal) is confusingly similar to the MELBET trademark.
The Complainant alleges that the disputed Domain Name has been registered and is being used in bad faith, given the Respondent registered the disputed Domain Name many years after the MELBET brand was introduced in 2012 and after the MELBET trademark was officially registered in Uganda on July 22, 2020; that the Complainant´s trademarks MELBET were already widely known before the registration of the disputed Domain Name; that the domain name’s structure reflects the Respondent’s intent to target the Complainant’s brand and to cause confusion among Internet users; that the disputed Domain Name resolves to a website that prominently and repeatedly display the MELBET trademark, on an attempt to mimic the Complainant’s official website <melbet .com>, which demonstrates that the Respondent is using the disputed Domain Name with the intent to attract, for commercial gain, users by creating confusion regarding the source, sponsorship, or affiliation of the website. The Respondent has submitted no Response or any communication.
Held: The disputed Domain Name is the result of the Bengali transliteration of the Complainant’s trademark MELBET, which doesn’t have a particular meaning in English. Here, the entirety of the Complainant’s trademark MELBET is incorporated through such transliteration in the disputed Domain Name; therefore, the Panel finds that the disputed Domain Name is identical to the Complainant’s trademark. See WIPO Overview 3.0, section 1.14. Further, having reviewed the evidence submitted, to this Panel it is clear that given the Respondent’s use of the disputed Domain Name which seeks to impersonate the Complainant presumably for the Bengali market, it is not possible to relate a demonstrable preparation to use the disputed Domain Name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use as set out in paragraph 4.c.(i) and 4.c.(iii) of the Policy. See WIPO Overview 3.0, section 2.13.1.
Having reviewed the provided evidence of this case, the Panel is not ready to confirm the Complainant´s unregistered trademark rights over the term MELBET since 2012. However, considering the domain name’s composition and use, to this Panel it is very clear that the Respondent knew (very well) about the Complainant´s MELBET trademark for online gambling activity by the time of its registration. See section 3.2.2 of the WIPO Overview 3.0. Regarding the Use, the Respondent took the Complainant’s trademark, registered it using non-ASCII, non-Latin characters, as in this case the Bengali script, built a website presumably for the Bengali market which seeks to imitate and/or to impersonate the Complainant, including the reproduction of the MELBET trademark along the entire website, which sufficiently proves the Respondent’s knowledge of the Complainant’s business activity, and the value of its trademarks in the iGaming industry. See WIPO Overview 3.0, section 3.4.
Transfer
Complainant’s Counsel: Sindelka & Lachmannová advokáti s.r.o.
Respondent’s Counsel: No Response
The Onus is on Complainant, No Evidence of Targeting by the Respondent
<phoenixinvestmentadvisor .com>
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant is the United Kingdom’s largest long-term savings and retirement business “servicing” the pensions, savings and life insurance needs of 12 million customers in the United Kingdom under its brands, including PHOENIX and PHOENIX LIFE. The Complainant states it enjoys enormous goodwill and reputation in the name PHOENIX in respect of financial services as a result of the expenditure of a significant amount of time, money and effort. The Complaint includes evidence that the Complainant owns a number of registered trademarks for PHOENIX, PHOENIX & device, PHOENIX FLEX, PHOENIX INSIGHTS & device and PHOENIXRE. The earliest application for these trademarks was PHOENIX FLEX registered with effect from May 3, 2023 in both the United Kingdom and the European Union. The disputed Domain Name was registered on December 8, 2024 and it resolves to a website at which the disputed Domain Name is offered for sale. The Respondent states that he has been an insurance broker since 1982. Apparently, he acts as a telesales insurance agent for many of the largest insurance companies in the United States and claims to market to customers across the United States.
On April 2, 2025, the Complainant enquired with the Respondent about the purchase price for the disputed Domain Name. The Respondent stated “AI estimated price between USD $2810 and USD $5630”. Following that, on May 14, 2025, the Complainant’s lawyers sent a cease and desist letter to the Respondent, which was not responded to. It alleges that the disputed Domain Name is in direct contravention of its trademark rights and passing off. The Complainant further alleges that it is inevitable Internet users will be confused into believing the disputed Domain Name has some form of association with the Complainant and therefore the registration of the disputed Domain Name is in bad faith. The Respondent denies this, contending that there is no logical reason that consumers in the United Kingdom would think the disputed Domain Name was owned by the Complainant. The Panel does not accept that argument. At the very least, there is a real risk that consumers in the United Kingdom aware of the Complainant’s trademark would think the holder of the disputed Domain Name was at least associated with the Complainant.
Held: The fact that the Complainant appears to operate primarily, if not almost exclusively, in the United Kingdom and the Respondent is in the United States does not preclude a finding of bad faith under the Policy. As the Respondent is an insurance broker, the Panel cannot exclude the possibility that he was aware of the Complainant. Correspondingly, it is not necessarily implausible that a person in the position of the Respondent operating, it appears, in the domestic United States retail market for insurance and financial services would not know of the Complainant and its trademark. In that connection, the Respondent points out that “Phoenix” is a noun and a descriptive term, amongst other things, being the name of the fifth largest city in the United States. In the absence of evidence of domain names owned by the Respondent’s claimed advertising business, the Panel would not be prepared to accept that latter claim at face value.
Nonetheless, on the very limited record before the Panel, the Panel is not prepared to go behind the Respondent’s denial having regard to the descriptive nature of the term “Phoenix”. That is, the Complainant has not persuaded the Panel that the Respondent registered the disputed Domain Name with the Complainant in mind or to target the Complainant’s trademark. In the absence of evidence of domain names owned by the Respondent’s claimed advertising business, the Panel would not be prepared to accept that latter claim at face value. Nonetheless, on the very limited record before the Panel, the Panel is not prepared to go behind the Respondent’s denial having regard to the descriptive nature of the term “Phoenix”. That is, the Complainant (which has the onus under this head) has not persuaded the Panel that the Respondent registered the disputed Domain Name with the Complainant in mind or to target the Complainant’s trademark.
RDNH: According to the Respondent, the Complainant failed to disclose the attempt to buy the disputed Domain Name in April before the filing of the Complaint and this is a classic “Plan B” case. That is not accurate, however. The Complainant did disclose the prior attempt through the inclusion of the cease and desist letter included as Annex. The Respondent can hardly complain that some further steps were taken against him when he failed to respond to that letter. The explanation offered for the Respondent’s failure is quite surprising in light of his claims to be operating two businesses involving telesales or otherwise online. The Panel does not find this is a case of reverse domain name hijacking.
Complaint Denied
Complainant’s Counsel: Freeths LLP, United Kingdom
Respondent’s Counsel: Self-represented
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.