Panel Finds RDNH Despite No Response Filed
This case reminds us once again, that RDNH can and should be found in appropriate circumstances, even when not requested by a Respondent. This is particularly clear when a Respondent has not even responded – and therefore could not have requested RDNH – yet RDNH is still found by the Panel. In finding RDNH, the Panel noted that the Complainant “relies on a theory of “retroactive bad faith” that has not been followed by Policy panels in the last decade, without advancing reasoned arguments for changing let alone challenging the consensus view on this issue”. The Panel also noted that “surely if the Complainant came to know of the Octogen case, it can be said to also have knowledge of the WIPO Overview section explaining that it is not good law”. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 5.49) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel Finds RDNH Despite No Response Filed (sipmamas .com *with commentary)
‣ Dissenting Panelist Would Have Transferred Domain Away From Registered Trademark Owner (regenlabs .com *with commentary)
‣ Respondent Attempts to Impersonate the Complainant (silvercrestde .com)
‣ Panelist Finds RDNH Despite No Response (emcrit .com *with commentary)
‣ Domain Name Investor Registered “Catchy” Word But Didn’t Target Complainant (nexim .com *with commentary)
Panel Finds RDNH Despite No Response Filed
Destination Liquid LLC v. Edgar Cohen, WIPO Case No. D2025-3655
<sipmamas .com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant is a limited liability company established in Florida, USA on February 27, 2025, and it offers essentially no other information about its business and does not mention a related website or social media site. The Complainant states that it recently acquired the MAMA’S trademark registered by the Respondent’s company, Mama Munchies LLC, by assignment from one of its creditors, pursuant to a court order and now seeks to obtain the disputed Domain Name in these proceedings. The disputed Domain Name was created on October 13, 2022, and resolves to a landing page saying a Shopify store will be “opening soon.”
The Panel notes the Florida Division of Corporations lists the Respondent as an Authorized Member of Mama Munchies LLC when it was registered on October 1, 2020. USPTO records show Mama Munchies LLC applied on October 5, 2023, to register the MAMA’S figurative logo; the mark was registered on September 24, 2024. The Complainant submitted a July 16, 2025 Order transferring the MAMA’S registration from Mama Munchies to the Complainant in Eleventh Judicial Circuit of Florida, as partial satisfaction of creditors’ judgments, which is reflected in a USPTO assignment record. The Respondent did not participate in these proceedings.
The Complainant cites “some recent decisions” (from 2009), such as Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. (WIPO D2009-0786), arguing that “bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder”. The Complainant alleges that the Respondent’s conduct in maintaining the disputed Domain Name after the court-ordered assignment of the MAMA’S trademark “leaves no doubt” about the Respondent’s bad faith and “can retroactively convert the registration into one made in bad faith”.
Held: The Complainant acknowledges the Respondent’s connection with Mama Munchies at the time the Respondent registered the disputed Domain Name in October 2022. The Respondent could not have sought to exploit the Complainant’s reputation in bad faith in 2022, because the Complainant did not exist then. The record indicates instead that the Respondent registered the disputed Domain Name on behalf of his own company, which then used it for a website and obtained trademark registration for a corresponding mark.
The Complainant makes an argument for bad faith registration only by advancing a strained application of the “retroactive bad faith” theory based on Octogen and similar decisions from 2009 and 2010 that have been rejected by later panels as inconsistent with the Policy’s conjunctive requirement to demonstrate bad faith both in the initial registration and in the subsequent use of a disputed Domain Name. WIPO Overview 3.0, section 3.2.1. Surely if the Complainant came to know of the Octogen case, it can be said to also have knowledge of the WIPO Overview section explaining that it is not good law.
The Panel notes that the Complainant is free to pursue other legal remedies if it considers that the Respondent’s use of the disputed Domain Name infringes the trademark rights that the Complainant has recently acquired. But transfer is not an available remedy under the UDRP without evidence of bad faith at the time the Respondent registered the disputed Domain Name, which is not the case here.
RDNH: Despite the lack of a Response in this proceeding, the Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking. The Complainant did not exist and had no trademark rights at the time the disputed Domain Name was registered. The Complainant relies on a theory of “retroactive bad faith” that has not been followed by Policy panels in the last decade, without advancing reasoned arguments for changing let alone challenging the consensus view on this issue.
Complaint Denied (RDNH)
Complainant’s Counsel: Sanchez Fischer Levine LLP, United States
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case reminds us once again, that RDNH can and should be found in appropriate circumstances, even when not requested by a Respondent. This is particularly clear when a Respondent has not even responded – and therefore could not have requested RDNH – yet RDNH is still found by the Panel.
In finding RDNH, the Panel noted that the Complainant “relies on a theory of “retroactive bad faith” that has not been followed by Policy panels in the last decade, without advancing reasoned arguments for changing let alone challenging the consensus view on this issue”. The Panel also noted that “surely if the Complainant came to know of the Octogen case, it can be said to also have knowledge of the WIPO Overview section explaining that it is not good law”. Well said. For some historical background see, “The Rise and Fall of the UDRP Theory of ‘Retroactive Bad Faith’” (Cohen and Muscovitch, CircleID, May 8, 2017). In the next itineration of the WIPO Overview, the section that mentions the discredited Retroactive Bad Faith theory should be made even clearer perhaps.
I would also like to point out an interesting observation that the Panel made in this case. It ultimately didn’t matter for this particular case as the Panel noted, but even still it is something worth bearing in mind. The Panel noted that it “could somehow be said [that the Complainant stands] in the shoes of the Respondent given its acquisition of the trademark by assignment (in which case for arguments’ sake it may benefit from priority rights based on the date of the first use in commerce of the relevant mark” – an argument it did not make (it only asserted to have “superior and exclusive rights”). It’s an interesting legal point. Technically, the Complainant, as the new owner of the trademark by assignment, could rely upon its predecessor’s claimed date of first use, provided that it submitted evidence of common law trademark rights which preexisted the actual trademark registration date – and thereby possibly attempt to show that its trademark rights pre-dated the domain name registration, as unlikely as that possibility seems. This point was never brought up by the Complainant nor as the Panel pointed out, would it “answer the question of the need to show bad faith on the part of the Respondent at the time of the registration of the disputed Domain Name” (Excellent analysis by the Panel).
Lastly, the Panel’s firm dismissal of the Complaint despite the Complainant’s ownership of court ordered assignment of trademark rights, merits acknowledgment. In the circumstances, a Panel could be tempted to use legal gymnastics to short circuit the necessity for court proceedings and mete out justice via the UDRP despite the Policy not providing a remedy without evidence of bad faith at the time the Respondent registered the disputed Domain Name. Fortunately, and to the Panel’s credit, it did the opposite and stood firmly behind the Policy, leaving matters outside of its limited scope to the courts, where they belong. For more background on the “Scope of the Policy”, see UDRP Perspectives at 0.1.
Dissenting Panelist Would Have Transferred Domain Away From Registered Trademark Owner
Regen Lab USA, LLC, Regen Lab, SA v. Mark Ghalili, WIPO Case No. D2025-3474
<regenlabs .com>
Panelist: Mr. William F. Hamilton (Presiding), Ms. Sally M. Abel and Mr. Paul M. DeCicco
Brief Facts: The Complainants are part of an international group engaged in regenerative medicine, dermatology, and medical-device technologies. They have operated the domain <regenlab .com> since 2004. The Complainants claims to have used the REGENLAB brand since the early 2000s and own numerous REGENLAB and REGEN-formative trademark registrations in multiple jurisdictions. The Respondent acquired the disputed Domain Name on September 25, 2020, for USD 3,320 and currently resolves to a website advertising cosmetic creams, peptide-based antiaging products, wrinkle-reduction serums, regenerative skincare formulations, and other aesthetic-related products. In October 2020, the Respondent incorporated a business entity named “Regen Labs.” The Respondent holds U.S. Registration No. 6,494,979 for REGEN LABS in Class 5, registered on September 21, 2021, for dietary and nutritional supplements.
The Complainants alleges that the Respondent is not an unrelated or independent party but a physician operating in the regenerative and aesthetic medicine field and that the products and services promoted on the disputed Domain Name, including cosmetic and regenerative skincare offerings, overlap with the Complainants’ field of use and target the same or similar audiences. The Respondent contends that the terms “regen” and “labs” are descriptive in the context of regenerative health and wellness products and contends that his selection of the disputed Domain Name was based on the descriptive meaning of “regen” and “labs” rather than any reference to the Complainants. The Respondent submits that his use of the disputed Domain Name reflects a good-faith effort to brand and market his supplement products. Finally, he also points to his pending cancellation petition before the United States Trademark Trial and Appeal Board, as evidence of rights independent of the Complainants in his relevant market.
Held (Majority Opinion): The Respondent has in the view of a majority of the Panel, adequately rebutted the case made against it. The Respondent owns a United States federal trademark registration for REGEN LABS in Class 5 for dietary supplements, obtained prior to the filing of the Complaint. The Respondent uses the disputed Domain Name in connection with the sale of supplements and related goods. This trademark registration confers sufficient indicia of rights or legitimate interests for purposes of the Policy, notwithstanding that the Parties dispute the relationship between their respective marks and the scope of their trademark rights. The Complainants and Respondent are also engaged in an ongoing trademark dispute, involving issues of priority, market overlap, and likelihood of confusion, which is appropriately addressed in the TTAB proceeding or through judicial processes rather than in this UDRP administrative proceeding. Given the foregoing, a majority of the Panel finds the second element of the Policy has not been established.
Dissenting Opinion (Mr. William F. Hamilton): The Respondent produced no evidence of being commonly known as “Regen Labs” or using that name in bona fide commerce before acquiring the domain in 2020; his branding arose only after acquisition and is therefore derivative/post‑hoc and not bona fide under paragraph 4(c)(i) and WIPO Overview 3.0, section 2.2.1. TTAB/USPTO filings and the Respondent’s pending cancellation proceeding are procedurally and substantively distinct and outside the UDRP record; the Panel should decide solely on the evidence before it (WIPO Overview 3.0 sections 4.7, 4.8, 4.14), so the USPTO registration for dietary supplements does not establish rights in the regenerative‑aesthetic field under the Policy (WIPO Overview 3.0, section 2.12).
The record supports an inference that the Respondent was aware of the Complainants’ REGENLAB brand before acquiring the domain: his pre‑acquisition promotion of PRP‑adjacent regenerative aesthetics in the same geographic market where the Complainants marketed their PRP technologies, plus the close overlap of services, makes claimed lack of awareness not credible. The Respondent used the domain to market peptide creams, anti‑aging serums, PRP facials, stem‑cell facials and other services squarely within the Complainants’ field; he integrated the “RegenLabs” brand into his practice website and cross‑promoted it with aesthetic services. The domain was purchased for a premium (USD 3,320), despite cheaper descriptive alternatives, which, together with the Respondent’s industry activities and immediate deployment of the site, supports an inference of opportunistic registration and bad faith (WIPO Overview 3.0, section 3.9).
Considering the Complainants’ long‑standing rights, the Respondent’s prior involvement in regenerative aesthetics, the premium acquisition price, and the Respondent’s use of the domain to promote overlapping goods/services, the dissent concludes the Respondent failed to rebut the prima facie case, lacked rights or legitimate interests, acted in bad faith, and the domain should be transferred to the Complainants.
Complaint Denied (with dissenting opinion)
Complainant’s Counsel: Topshelf Trademarks LLC, United States
Respondent’s Counsel: Goldstein Patent Law, United States
Case Comment by ICA General Counsel, Zak Muscovitch: Kudos to the Majority of the Panel for clearly, and indeed easily, dismissing the Complaint. As the Panel noted, the Respondent had a registered U.S. trademark. That’s generally enough to end the Complaint right there on the basis of ‘Rights and Legitimate Interest’. A Panel should not look behind a Respondent’s registered trademark any more than it should with respect to a Complainant’s registered trademark. If there are trademark validity issues, those are generally to be dealt with in court.
The Dissenting Panelist, William R. Hamilton, however took a very different view and concluded that “the record also supports an inference that the Respondent was aware of the Complainants’ REGENLAB brand before acquiring the disputed Domain Name”. That may very well be the case based upon the evidence that the Respondent was in the same or related field to the Complainant before it acquired the Disputed Domain Name. As noted by the Panel; “Given the Respondent’s professional specialization in regenerative aesthetics, the close alignment between his services and those long associated with the Complainants’ products, and the documented promotion of the Complainants’ technologies in its own geographic market, the Respondent’s claimed lack of awareness is not credible. A practitioner operating in this niche field is overwhelmingly likely to have encountered the Complainants’ PRP systems and branding before adopting the nearly identical name “RegenLabs.” This substantially undermines any assertion of good-faith adoption under paragraph 4(c) of the Policy…. A practitioner working daily in this specialized field cannot plausibly disclaim awareness of a long-established international PRP device manufacturer such as the Complainants.”
Moreover, the Panel points out that the Disputed Domain Name was used to market certain specific products and services “that fall squarely within the Complainants’ field and that are directly aligned with the Complainants’ longstanding trademark rights”, thereby confirming an absence of any legitimate interest.
The Dissenting Panelist’s conclusion that the Respondent was likely aware of the Complainant’s trademarks and therefore likely purposefully adopted the corresponding Domain Name and brand to trade off of the Complainant’s well-established goodwill, is credible. But what about the Respondent’s registered trademark? The Dissenting Panelist points out that the companion TDSB proceedings are basically immaterial to the UDRP dispute, but doesn’t appear to consider any basis for ignoring the fact that the Respondent has an existing, valid U.S. registered trademark corresponding to the Domain Name. Indeed, the Panel seems to ignore the existence of the Respondent’s registered trademark – even when it comes to determining whether the Respondent has rebutted the Complainant’s “prima facie case”. Ostensibly, the Dissenting Panelist believed that even the Respondent’s registered trademark was part of a sophisticated bad faith ruse to exploit the Complainant’s rights.
Now, that may very well be the case. On the other hand, how can the UDRP purport to take away a Domain Name from an owner of the corresponding trademark? The answer is it should not, generally speaking. Where there is a dispute between two registered trademark owners, especially one where there is contemporaneous litigation between them, a UDRP Panel should step out of the way. A UDRP Panel is not equipped to decide the matter and it is beyond the scope of the UDRP. At very least, such a case is not a clearcut case of cybersquatting that the Policy is intended to address. The Dissenting Panel may very well be correct in his suspicions, but the Majority Panel was entirely correct in its disposition. As the Majority Stated:
“The Complainants and Respondent are engaged in an ongoing trademark dispute, involving issues of priority, market overlap, and likelihood of confusion, which is appropriately addressed in the TTAB proceeding or through judicial processes rather than in this UDRP administrative proceeding.”
Respondent Attempts to Impersonate the Complainant
Lidl Stiftung & Co. KG v. Tao Jiang, CAC Case No. CAC-UDRP-108139
<silvercrestde .com>
Panelist: Mr. Andrew Sykes
Brief Facts: The Complainant operates a supermarket chain. Its headquarters are in Germany and it has over 12,600 stores located primarily in Europe and the United States of America. As part of its business, the Complainant offers an in-house range of small kitchen appliances, such as kettles, air fryers and the like, in its store under its trademark “Silvercrest”. It holds trademark registrations in numerous jurisdictions for “Silvercrest” in relation to such goods, including the above-mentioned European Union registration.
The disputed Domain Name was registered on 30 July 2024. It resolves to a webpage that prominently displays the SILVERCREST trademark in the header, contains an image of a small kitchen appliance and contains text in German. The text promotes kitchen machines and refers to “SILVERCREST” having satisfied “millions of households in Germany and across Europe”. The webpage also contains pay-per-click advertisements. The Respondent provides its name as Tao Jiang and its address as a location in China.
Held: The Respondent is not identified in the Whois database as having a name related to the disputed Domain Name. Past panels have held that a Respondent was not commonly known by a disputed Domain Name if the Whois information was not similar to the disputed Domain Name. Thus, the Respondent is not known as the disputed Domain Name. There are no other facts which would indicate the Respondent has any rights or legitimate interests in the disputed Domain Name. Further, the matters stated below under the heading “BAD FAITH” indicate that the Respondent’s interests in the domain name are not ‘legitimate’ at all. In such circumstances, the Complainant has made out its prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name.
As noted above, the Respondent has directed the disputed Domain Name to a website that prominently displays the Complainant’s SILVERCREST trademark; contains German text in which the Respondent purports to be a kitchenware brand known as SILVERCREST that is well known in German and Europe; and Contains pay-per-click advertising. It is clear from these facts and the strong reputation and presence of the Complainant in Germany and Europe that the Respondent has registered the domain name to impersonate the Complainant. It is further clear that by listing pay-per-click advertisements on the said website the Respondent is fraudulently seeking to opportunistically profit from confusing similarity. Therefore, the disputed Domain Name has been registered and is being used in bad faith.
Transfer
Complainant’s Counsel: HK2 Rechtsanwälte
Respondent’s Counsel: No Response
Panelist Finds RDNH Despite No Response
Metasin LLC v. Hulmiho Ukolen, Poste restante, WIPO Case No. D2025-4147
<emcrit .com>
Panelist: Mr. Nick J. Gardner
Brief Facts: The Complainant is a Wyoming LLC, which provides information and educational services relating to emergency and critical care medicine, under the brand name EMCrit since 2009. Its principal website is linked to the domain name <emcrit .org>. The Complainant claims trademark rights in EMCRIT, based on its USPTO registration dated May 15, 2022, and in common law usage since January 1, 2005. It further claims that its brand is widely recognised by medical professionals in the United States.
The disputed Domain Name was registered on September 27, 2001 and at present, it does not resolve to an active website. The filed evidence shows it has previously been resolved to what appears to be a parking page containing PPC links which appear to relate to medical services. The Complainant alleges that “the domain directs users to deceptive resources and malicious file downloads, creating significant risk to the public and damaging the Complainant’s professional standing.” The Respondent did not reply to the Complainant’s contentions.
Held: The Complainant has to establish conjunctive requirements – the Complainant has to show that both registration and use are in bad faith. The difficulty the Complainant faces here is that the Disputed Domain Name was originally registered in 2001 – long before the Complainant’s use of the brand since 2009 and still before 2005 if that year is considered based on the Complainant’s apparent claim of common law rights. The Complainant does not address this issue properly. It asserts “The Respondent previously ignored repeated inquiries made by the Complainant beginning more than ten years ago and later transferred the domain to another entity operating under privacy protection”. If the transfer in question is simply to put in place a privacy shield then that would not normally be treated as a new registration, see WIPO Overview 3.0 at section 3.9.
The Panel does not consider that the facts of this case as alleged by the Complainant are sufficient to raise an inference that a change of registrant has occurred thus requiring the Respondent to rebut that inference. It follows that the Complainant failed to show the Respondent acquired the Disputed Domain Name later; the Panel therefore treats the registration as having occurred in 2001. That cannot amount to a registration in bad faith given the Complainant did not use the brand until eight years later and there is nothing in the record to suggest it had any nascent trademark rights prior to the registration of the Disputed Domain Name. The Panel also does not think the evidence the Complainant has produced necessarily supports the allegation that the Respondent is responsible for directing users “to deceptive resources and malicious file downloads….”.
RDNH: On balance, the Panel considers the Complainant’s conduct warrants a finding of RDNH. The Complainant contends that it made some enquiries to the Respondent ten years ago. It has not explained to the Panel what those enquiries were or what it said to the Respondent. It has also not explained why it then did nothing for ten years. In any event having allowed ten years to elapse the Panel considers it was incumbent on the Complainant to carefully consider the record and explain properly the basis for its allegations of bad faith, particularly as to the registration in bad faith noting the circumstances of this case. Instead of doing so the Complaint stated “This dispute concerns the domain name emcrit.com, created on [unknown]”. That was not an accurate statement.
The Complainant’s own evidence contained a publicly available Whois search very clearly showing the Disputed Domain Name was created on September 27, 2001. While the Complainant may have stated “unknown” to show doubts on the date of actual registration by the Respondent, the burden of proof under the Policy is on the Complainant to establish the requirements under paragraph 4(a) of the Policy. In the Panel’s opinion what derives from the reference to “[unknown]” is that the Complainant was unable to show any later date when the Respondent acquired the Disputed Domain Name. In these circumstances the Complainant should have appreciated the Complaint could not succeed. Accordingly the Panel considers a finding of RDNH is warranted.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
A clearly written decision containing particularly elegant analysis by the Panel. A few noteworthy aspects from this decision.
Panels should consider bookmarking this case as a good example of the appropriate analysis for determining whether or not “the facts of this case as alleged by the Complainant are sufficient to raise an inference that a change of registrant has occurred thus requiring the Respondent to rebut that inference”. Here, the Panel diligently went through and appropriately weighed the evidence and considerations before determining that “the Complainant has not made out any case that the Respondent obtained the Disputed Domain Name at some later date”.
The Panel’s appropriately skeptical view of the Complainant’s evidence of PPC use should also be admired. Rather than take it at face value, the Panel critically examined it and found it wanting without a further explanation from the Complainant. The Panel also referenced the WIPO Overview at Section 3.5. This section needs to be updated to take better account of more recent consensus on PPC links, which in my view no longer rigidly assumes that all PPC links are necessarily evidence of any intent by the registrant, particularly where they appear by default on a registrar’s landing page. (See: Are PPC Ads on a Registrar Supplied Default Landing Page Evidence of the Respondent’s Bad Faith?) In any event, some of the current language of this Section is often misapprehended. Just because the Overview states that “the fact that such links are generated by a third party would not necessarily >>prevent<< [emphasis added] a finding of bad faith” does not logically mean that such links >>would<< be evidence of bad faith.
Lastly, to the Panel’s credit, it found RDNH despite no Response having been filed, and accordingly no request for RDNH having been made. As noted by the Panel, “the Complainant should have appreciated the Complaint could not succeed” in the absence of any evidence of the Domain Name registration post-dating the Complainant’s trademark rights. Panels should find RDNH where warranted and need not receive a request from a Respondent to do so, as this case ably demonstrates. As stated in UDRP Perspectives at 4.1, declarations of Reverse Domain Name Hijacking play a critical role in the UDRP by deterring abusive use of the Policy and preserving the integrity of the UDRP for legitimate claims. 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 because of Rule 15(e) which requires a Panel to consider RDNH.
Domain Name Investor Registered “Catchy” Word But Didn’t Target Complainant
Nexim Italia srl v. Adam Maysonet, Insane Entertainment, LLC, WIPO Case No. D2025-3627
<nexim .com>
Panelist: Mr. Assen Alexiev (Presiding), Mr. Edoardo Fano and Mr. John Swinson
Brief Facts: The Complainant describes itself as a telecommunications and broadcast operator and CDN provider, offering connectivity and live transmission for global sports and media events. The Complainant’s official website is located at the domain name <nexim .it>, which is in the Italian language. The Complainant is the owner of the Italian trademark, registered on May 27, 2022. The Respondent acquired the disputed Domain Name at a NameJet public auction on July 31, 2025 for the price of USD $4,911 and currently resolves to a Spaceship .com “For Sale Page.”
The Complainant asserts that it has used the NEXIM trademark extensively in commerce for many years in connection with its services as described, and maintains that its NEXIM trademark has become a distinctive identifier that consumers and industry stakeholders associate with the Complainant’s goods and services on a national and international scale. The Complainant further alleges that the Respondent acquired the disputed Domain Name primarily for the purpose of selling or otherwise transferring it to the Complainant for valuable consideration in excess of its out-of-pocket costs directly related to the disputed Domain Name
The Respondent, a domain name investor, contends that this dispute concerns a widely-used pronounceable five-letter sequence, which it obtained at a substantial cost to add to its domain name portfolio of similar names, and which may be of legitimate purchase interest to a wide range of existing or future individuals or businesses who use, or may seek to use, the memorable term “nexim” for various purposes. In response to the additional submissions, the Respondent further adds that the Complainant still has not submitted any objective evidence of the scale, scope, size or reputation of its business.
Held: The Complainant states that it has used the NEXIM trademark extensively in commerce for many years, and further claims that as a result its NEXIM trademark has become a globally-recognized trademark and distinctive identifier that consumers and industry stakeholders associate with the Complainant. There is, however, not a single piece of documentary or other credible evidence in the case file supporting these claims of the Complainant. The only information provided by the Complainant is its allegations made in the course of this proceeding and the content of its official website, neither of which includes or refers to any external independent sources of information. The Respondent submits that it acquired the disputed Domain Name due to its inherent value characteristics of a widely-used short pronounceable five-letter sequence, which may be of legitimate purchase interest to a wide range of existing or future individuals or businesses.
The Respondent has submitted evidence that there are many entities around the world that use “Nexim” as their trade name and domain name or as part of them, and that there are many other third-party trademark registrations for “NEXIM” in different jurisdictions for different classes of goods or services. This supports the Respondent’s arguments that the disputed Domain Name can be regarded as a domain name that may legitimately be put to use by various entities for various purposes unrelated to the Complainant. There is also evidence that the Respondent has registered a dozen other pronounceable five-letter domain names, which supports its explanation that the acquisition of the disputed Domain Name was part of a pattern of business activities unrelated to the Complainant. At the same time, there is no evidence showing that the Respondent has somehow targeted the Complainant with its acquisition and subsequent offering for sale of the disputed Domain Name.
The fact that in a previous proceeding under the Policy the Respondent has been found to have acted in bad faith in respect of a different domain name does not change the above conclusions, as the Panel has not been made aware of any connection between the two disputes, and each case has to be decided according to its merits.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch: The apparent breadth of the pleadings, including several unsolicited supplemental filings by the Complainant, surely put the Panel to work as is evident from the apparently comprehensive decision which encompassed numerous arguments advanced by the respective parties.
This case falls into a certain category of particularly challenging cases, namely those where the trademark rights predated the Domain Name registration, but where the Domain Name is not so uniquely distinctive of the Complainant that other parties freely use it for a variety of purposes, thereby giving rise to the question of whether the Respondent genuinely targeted the Complainant or whether it registered the Domain Name because it is a catchy and commonly used brand by numerous parties thus opening up the possibility of a future party purchasing it for non-infringing use. Avid followers of the UDRP are encouraged to read this comprehensive decision in its entirety as it is an excellent example of such a case.
The Respondent’s arguments put it quite nicely: “The perception that a “catchy” name like “nexim” might have a definable market value because it has a practical range of substantial non-infringing concurrent uses is borne out by the range of trademark interests and the fact that this term is appealing to a variety of parties for a wide range of purposes”. The Respondent’s legal argument is also put rather clearly: “The Respondent maintains that, absent a reputation to the extent that there is no plausible explanation for their registration, domain names corresponding to short catchy or memorable pronounceable terms or acronyms are legitimate objects of domain name aftermarket interest, [adding that] “this does not represent a license to freely register and trade in domain names which correspond to the marks of well-known entities with prominent and substantially exclusive marks, or where there is evidence to suggest that a respondent has deliberately sought to target or take advantage of a trademark owner’s rights.”
After carefully weighing the evidence, the Panel came to the right determination, namely that “there is no evidence supporting a conclusion that the Respondent must have been aware of the Complainant at the time it acquired the disputed Domain Name, and no evidence that it is likely to have acquired the disputed Domain Name and then offered it for sale with the Complainant’s trademark in mind.” This was a particularly well-written and analyzed case and the Panel deserves our thanks for the exceptional effort which it demonstrated along with the respective counsel for making the arguments and marshalling the evidence.
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.