Panel: Privacy Services are a Standard Feature of Contemporary Domain Name Registrations
This case should finally put to rest the “Whois Privacy is evidence of bad faith” argument which continues to raised by both counsel and Panelists despite it being a relic from days gone by. As noted by the Panel, Whois privacy is a standard feature these days, either as a result of GDPR or common registrar practices. It can no longer be considered alone, as evidence that a Respondent “is trying to hide itself in bad faith”... continue reading commentary.
We hope you will enjoy this edition of the Digest (vol. 4.13), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Privacy Services are a Standard Feature of Contemporary Domain Name Registrations (transco .com *with commentary)
‣ Panelist Limited Research Reveals Evidence of Respondent’s Legitimate Interest (mediacom-pay .com *with commentary)
‣ A Suspicious Blend of Timing and Non-Use Leads to Transfer to Cannabis Company, But Does it Comply with Telstra Test? (goodblend .net *with commentary)
‣ Panel Rejects RDNH Claim and Warns The Complainant (scipio .email)
‣ Transfer of Domain Name Between Closely Related Parties Does Not Constitute Transfer Under the Policy (neuralyze .com)
Panel: Privacy Services are a Standard Feature of Contemporary Domain Name Registrations
Transco Railway Products Inc. v. Bill Patterson, Reserved Media LLC, WIPO Case No. D2024-0061
<transco .com>
Panelists: Mr. William F. Hamilton (Presiding), Ms. Sandra J. Franklin, Mr. Adam Taylor
Brief Facts: The Complainant operates a network of repair facilities that provide railcar repairs, parts, and maintenance services throughout the United States. The Complainant has used the TRANSCO mark in commerce since at least 1934 and currently holds the USPTO registration dated November 14, 2023. Previously in 1970, the Complainant had registered two other trademarks with USPTO, however, it allowed the initial two registrations to lapse. The Complainant owns the domain name <transcorailway .com>, where the Complainant provides information about the Complainant’s service offerings. The Respondent, a domain name investor, acquired the disputed Domain Name on October 12, 2020.
The Complainant alleges that the Respondent has “engaged in a classic case of opportunistic cybersquatting in violation of the Policy” principally because the disputed Domain Name resolves to a website “offering to sell the disputed domain for an exorbitant price.” The Complainant further alleges that the Respondent registered the disputed Domain Name to capitalize on its value only after a merger involving the Complainant became public. Finally, the Complainant asserts that using a privacy shield when registering the disputed Domain Name further proves the Respondent’s bad faith.
The Respondent asserts rights and legitimate interests in the disputed Domain Name and denies any intention to trade on the name or reputation of the Complainant. The Respondent contends that the disputed Domain Name was purchased on the open market by the Respondent, who specializes in purchasing potentially valuable domains. The Respondent adds that the Complainant is unknown outside the provision of its limited railroad-related services. The Respondent further contends that “Transco” is a “widely used term” utilized by innumerable businesses and is composed of the obvious combination of “trans” and “co.”
Held: The Complainant has failed to establish that the Respondent has no rights or legitimate interests in the disputed Domain Name. The Respondent’s affidavit submitted with the Response establishes that the Respondent is an experienced dealer in purchasing and selling domain names and perceives the Domain Name as valuable. The Respondent’s affidavit asserts, and the Panel accepts as plausible, that the Respondent was unaware of anyone’s potential trademark rights in the term “transco,” and the Respondent immediately recognized the potential resale value of the disputed Domain Name because of the generic and descriptive qualities of the term “trans,” which is potentially descriptive of innumerable businesses, and the generic term “co,” an abbreviation of the term “company”. The Respondent is not using the disputed Domain Name to offer for sale any products or services, much less products and services in competition with the Complainant, and there are no indications that the Respondent has plans to use the disputed Domain Name beyond selling it.
The Panel finds that merely offering the disputed domain name for sale does not establish bad faith. The operation of a business that purchases and sells domain names is a legitimate business model. The Respondent has not contacted the Complainant and offered to sell the disputed domain name. Indeed, the Respondent has placed the disputed domain name for sale on the open market and there is no indication whatever that the Respondent did so with the Complainant in mind. The Respondent’s core business activity involves acquiring and selling sought-after domain names. While the Respondent has yet to sell the disputed Domain Name at the desired price, the Respondent has entertained several lower offers, apparently including inquiries from the Complainant. It’s important to note that the Complainant still has remedies against a buyer if the disputed Domain Name is sold and then used in a manner that contravenes the Policy. Nonetheless, the Complainant cannot obtain the disputed Domain Name from the Respondent to preemptively block the sale of the disputed Domain Name to a buyer who intends to use the disputed Domain Name legitimately.
The Panel has considered and found unconvincing the Complainant’s argument that the Respondent’s use of a privacy service when registering the disputed Domain Name evidences bad faith. The utilization of a privacy service is a standard, if not default, feature of contemporary domain registrations. See UDRP Rule 4(b).
Finally, the Complainant argues that the Respondent knew or should have known of the Mark and that the Respondent could have learned of the Mark by simple trademark or Internet searches. Any such search would have revealed a plethora of “Transco” entities and trademark registrations and would not have revealed an active registration held by the Complainant at that time.
Complaint Denied
Complainants’ Counsel: Arnold & Porter Kaye Scholer LLP, United States of America
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch:
This case should finally put to rest the “Whois Privacy is evidence of bad faith” argument which continues to be raised by both counsel and Panelists despite it being a relic from days gone by. As noted by the Panel, Whois privacy is a standard feature these days, either as a result of GDPR or common registrar practices. It can no longer be considered alone, as evidence that a Respondent “is trying to hide itself in bad faith”. Any Complainant who raises this argument and any Panelist which accepts it is effectively importing fiction into the UDRP to the detriment of Respondents and the reputation of the UDRP. Stop the madness.
Beyond the Whois issue, this case is also noteworthy, inter alia, for the Panel’s clear-eyed refutation of another common but often wholly fictional refrain: that “a simple trademark search would have revealed the domain name”. As the Panel noted, in the case of TRANSCO, “any such search would have revealed a plethora of “Transco” entities and trademark registrations and would not have revealed an active registration held by the Complainant at that time”. Where trademark, Google, and other searches would have or have in fact revealed widespread third-party use of a mark, it generally cannot be reasonably said that either the failure to conduct such searches or the results of such searches if actually undertaken, are evidence of wilful blindness or of targeting. Counsel and Panelists should restrain themselves from relying upon this knee-jerk refrain and instead meaningfully examine and reflect upon the question of what such searches actually reveal about a Complainant’s claim of exclusive entitlement.
Panelist Limited Research Reveals Evidence of Respondent’s Legitimate Interest
<mediacom-pay .com>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant, a large cable television company, provides a variety of telecommunications services, including high-definition cable television services, and also advertising and business marketing consulting services. It uses the mark MEDIACOM to market its services. The Complainant’s rights in its trademark date back to 2002 and is well-known. The disputed Domain Name was registered on May 5, 2023, and is not in use. The Respondent appears to be a business duly registered in Italy since 2005.
The Complainant alleges that the Respondent does not use the disputed Domain Name for a bona fide offering of goods or services or a legitimate non-commercial or fair use. Instead, the disputed Domain Name is not being used. Further, says the Complainant, the Respondent registered the disputed Domain Name with actual knowledge of the Complainant’s rights in the MEDIACOM mark and did not reply to the Complainant’s cease-and-desist letters. The Respondent failed to submit a Response in this proceeding.
Held: The WHOIS lists the organization name as “MEDIACOM PAY S.R.L.” (“S.R.L.” stands for the Italian version of a limited liability company). In accordance with para 4.8 of the WIPO Overview 3.0, a Panel may conduct limited factual research regarding disputed Domain Names. From publicly available databases, the Panel has found that “Mediacom Pay S.R.L” is an officially registered company in Italy, whose address corresponds to the address given in the WHOIS. The address in question corresponds to a building that could house offices. The resolving website states that it is under construction, and its footer displays the company name, its address and the VAT number. This is indeed the official VAT number of the company “Mediacom Pay S.R.L.”, registered since September 26, 2005. The resolving website displays a logo that is different from that of the Complainant. An Internet search for “MEDIACOM” returned URLs containing the term “MEDIACOM” for organizations that appear to be legitimate and that are not related to the Complainant.
In its Procedural Order, the Panel stated that it had conducted an Internet search, from which it appeared that the Respondent may be operating a legitimate business. The Panel requested the Complainant to provide evidence showing that the Respondent does not operate a legitimate business; and evidence, if any, that emails associated with the disputed Domain Name may have been used for phishing. In its reply to that Procedural Order, the Complainant did not provide any additional evidence, and it referred to the evidence in the Complaint showing that it attempted to communicate with the Respondent in regard to its objection to the disputed Domain Name at least four times, but never received a response from the Respondent. However, the Panel notes that those communications from the Complainant were sent by email only, and there is no evidence that the Complainant sent a registered letter to the Respondent.
Consequently, the Panel finds that the Complainant has failed to provide sufficient evidence to rebut a finding that the Complainant is operating a legitimate business, that it is commonly known by the disputed Domain Name per Policy ¶ 4(c)(ii), and that it may be able to use the disputed Domain Name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). However, the Panel notes that it has been almost one year since the disputed Domain Name was registered, and thus there can be legitimate doubts with respect to the Respondent’s actual intentions regarding the use of the disputed Domain Name. Consequently, the Panel will dismiss the Complaint without prejudice.
Complaint Denied
Complainants’ Counsel: Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Here, the Panel exercises its discretion to conduct limited independent factual research of publicly available databases. Conducting such research can be fraught especially where the results of such research are not put to the Parties for response. Here, the Panel conscientiously put the new evidence to the Parties via a Procedural Order, which is very much the right thing to do in the circumstances.
Verifying a Complainant’s allegations of lack of legitimate interest via limited independent factual research of public databases as the Panel did here, is certainly a viable option where a Panel is unsatisfied with the evidence provided by the Complainant. Typically, a Complainant will make boilerplate allegations of a lack of rights or legitimate interest such as; “The Respondent isn’t commonly known by the Domain Name, the Respondent has never been licensed or authorized by the Complainant”, etc. That is what the Complainant appears to have done here, yet apparently provided no evidence to support these allegations. Now, the difficulty in “proving a negative” is often raised as a retort to the argument that a Complainant must provide supporting evidence of a Respondent’s lack of rights and legitimate interest. It is true that a Complainant will generally be unable to entirely prove a Respondent’s lack of interest, but it can certainly try. It can for example, conduct the very types of searches that the Panel conducted here, i.e. search corporate databases. This is not hard to do and certainly can be expected of a Complainant. A Complainant who fails to even attempt to find evidence supporting its boilerplate allegations of a lack of right or legitimate interest, will not always be able to count on a Panel to conduct this research on its behalf. Rather, Complainants are obliged to make their own case and to support it with evidence. Failure to do so can result in dismissal. Unfortunately, all too often, Panelists accept a Complainant’s failure to even try to provide some evidence, and accept a Complainant’s rote allegations. Where Complainants fail to do so, they risk dismissal or Panelists filling in the gaps via their own basic research.
A Suspicious Blend of Timing and Non-Use Leads to Transfer to Cannabis Company, But Does it Comply with Telstra Test?
Surterra Holdings, Inc. v. Alexander Sanchez, WIPO Case No. D2024-0252
<goodblend .net>
Panelist: Mr. Evan D. Brown
Brief Facts: The Complainant is a cannabis company operating in many states within the United States. It sells its goods via retail under the GOODBLEND mark, which is registered as a trademark in the United States (September 28, 2021). According to the WhoIs records, the disputed Domain Name was registered on March 23, 2022. The disputed Domain Name does not currently resolve to an active website and the Complainant asserts that to the best of the Complainant’s knowledge, the disputed Domain Name has never resolved to an active site and has only ever been passively held by the Respondent.
Held: The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed Domain Name. On this Point, the Complainant asserts, among other things, that the Respondent is not commonly known by the GOODBLEND name or any variation thereof, and further that the Respondent cannot assert that it has been using the disputed Domain Name, before any notice of the present dispute, in connection with a bona fide offering of goods or services or that it has made demonstrable preparation to do so. The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing and nothing in the record otherwise tilts the balance in the Respondent’s favor.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. The Complainant has submitted evidence that a Google search for “Goodblend” would have alerted the Respondent to the prior existence of the Complainant’s GOODBLEND as the first page of the search results page is exclusively related to the Complainant’s GOODBLEND mark. In the absence of a response from the Respondent to the Complaint, the Panel is guided solely by the information presented by the Complainant. Accordingly, the Panel finds the evidence submitted by the Complainant to support registration in bad faith. Even though the Respondent has passively held the disputed Domain Name, the Panel may still find bad faith. See WIPO Overview 3.0, section 3.3.
The Complainant submits that the term “GOODBLEND” is not a dictionary term and is therefore a distinctive, coined term. The Complainant’s GOODBLEND retail brand was one of a select few companies in Pennsylvania and Texas to receive licenses to operate. The Panel finds that the foregoing establishes the distinctiveness and reputation of the Complainant’s GOODBLEND mark. Moreover, the Respondent registered the disputed Domain Name within six months of the Complainant’s registration of the GOODBLEND mark. The Panel finds that the Respondent’s nearly two (2) years of non-use of the disputed Domain Name combined with the distinctiveness and reputation of the GOODBLEND mark, and notably the lack of any Response putting forward a legitimate non-infringing purpose, provides the Panel with sufficient grounds to find that the Respondent’s use, or lack thereof, is in bad faith.
Transfer
Complainants’ Counsel: Nelson Mullins Riley & Scarborough, LLP, United States
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: On one hand, the Respondent must have been aware of the Complainant’s business and trademark since it registered the .net version when the Complainant was already using the .com version. That, combined with the Respondent’s failure to come forward with any explanation of its registration and the timing of the Respondent’s registration, are suspicious and could form a basis for transfer of the Domain Name, assuming you don’t give the Respondent any benefit of the doubt. On the other hand however, GOODBLEND is hardly the most distinctive or unique of terms, it being a combination of two common words which naturally go together and could be used descriptively for a variety of goods from fertilizer to mixed drinks. For example, see this New Zeland company called, “The Good Blend” which offers soaps and oils via https://thegoodblend.nz/. There are many other examples of common usage of this term such as for coffee.
Here, the Domain Name was unused by the Respondent so there was no evidence of any bad faith use whatsoever. That leaves so-called “passive holding”. The concept of “passive holding” refers to the “non-use” of a disputed domain name. It originates with the Telstra case in 2000. In this early UDRP case, the Panel attempted to find a basis in the Policy for “bad faith use” when the disputed domain name remained unused and determined “in the circumstances of this particular Complaint, the passive holding by the Respondent amounts to the Respondent acting in bad faith”. The particular facts of the Telstra case have since been construed as the Telstra test and involve five criterion:
- the Complainant’s trademark has a strong reputation and is widely known, asevidenced by its substantial use in Australia and in other countries,
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
- the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
- the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
- taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Accordingly, “passive holding” is a concept and product of the Telstra case and for it to apply, the Telstra test must be met. Crucially, the Telstra test requires the impossibility of conceiving any plausible or actual good faith use of the particular domain name. Such a determination would generally arise only where the disputed domain name corresponds to a particularly distinctive and famous mark. Where a domain name is unused, it may be considered to be “passively held” but that alone does not amount to bad faith use absent meeting the narrow requirements of the Telstra test.
As noted Panel (Swinson, Blackmer, Willoughby) in the recent Sage. ai case (commented upon in ICA Digest Vol. 3.37):
“The Telstra case is long standing but relatively narrow in operation. In that case, the complainant’s trademark was unique and one of the most famous in Australia, the complainant provided substantial evidence of its reputation in Australia, the respondent had an Australian address and was likely aware of the complainant, and the respondent used a fake name (Nuclear Marshmallows) to conceal his or her identity. In the present case, the Complainant has not presented strong evidence to satisfy the test set out in Telstra. Merely asserting that the Complainant has a trademark and that the Respondent has not used the disputed domain name is typically not sufficient to satisfy the Telstra test. Unlike Telstra, the Panel here can consider uses of the disputed domain name that would be in good faith.”
Panels therefore, when considering passive holding and in order to invoke the Tesla test, must contemplate whether there is any plausible good faith use for the unused domain name. Where there is, the Telstra test will not have been met and passive holding will not amount to bad faith use. Accordingly, the Complaint in this case could have been dismissed without prejudice, so that if bad faith use eventually arose, then the Complainant could come back with actual evidence.
Panel Rejects RDNH Claim and Warns The Complainant
SCIPIO BIOSCIENCE v. Christian SCIPIO, CAC Case No. CAC-UDRP-106285
<scipio .email>
Panelist: Mr. Gustavo Moser
Brief Facts: The Complainant, Scipio Bioscience, is a French biotech startup incorporated in 2017, which develops, manufactures and commercialises laboratory kits and analysis software for single-cell RNA sequencing. ‘Scipio’ is a distinctive name concerning the Complainant’s business segment, namely medical devices and medical software. The Complainant owns trademark registrations in France, USA and an International registration, all were filed in 2022, under classes 1, 9, 10, and 42. In addition, the Complainant is the owner of domain names bearing the term ‘scipio’, including the Complainant’s official website at <scipio .bio>, which was registered in 2017. The disputed Domain Name was registered on 27 November 2023 by the Respondent, who is a German individual and works at Siemens Healthineers AG, in Germany. In response to the procedural order, the Respondent provided documentary evidence that ‘Scipio’ is his surname by virtue of marriage in 2020. The Complainant points out that the disputed Domain Name redirects to the website <christian-scipio .de>, where Mr Scipio presents himself in the form of a curriculum vitae which, inter alia, provides that he is a Senior Key Expert Business Transformation & Architect for Healthcare Digitalization at Siemens Healthcare.
The Complainant further alleges that MX servers are configured to the disputed Domain Name and that the Respondent could thus be sending fraudulent e-mails to the Complainant’s partners, clients, potential clients, providers, employees, etc. Furthermore, the Respondent will certainly – and unduly – divert Internet users looking for the Complainant to the Respondent’s website. The Respondent contends that the disputed Domain Name is used for the Respondent and his family as a personal mail server and web-forward host. The Respondent provides mail accounts to his family members and does not intend to sell any goods or services through the disputed Domain Name, nor to cause any harm to the Complainant or any other legal entity. The Respondent is merely working as an employee in the same industry sector but for another company. The Respondent has never used the disputed Domain Name for any fraudulent purposes and does not intend to do so. The mail server is used for private, family mail purposes only. The Respondent seeks a finding for reverse domain name hijacking (RDNH) against the Complainant.
Held: The Respondent has served a Response in this UDRP administrative proceeding and provided documentary evidence of his name being ‘Christian Scipio’ since 2020, by virtue of marriage. The coincidence of facts and circumstances in the present case is somewhat perplexing to the Panel: an individual who works in the biotech industry sector in the vicinities (a neighbouring country) acquires, by marriage in 2020, a (rare!) family name which is identical to the name of an unrelated enterprise (incorporated in 2017) which however operates in the same industry sector and owns trade mark rights in such name since 2022. The crux of the matter in the present case therefore revolves around whether the Respondent, by possessing a surname identical to the domain name which it holds, gives him sufficient standing in the sense of paragraph 4(c)(ii) of the UDRP Policy.
The Panel has already expressed his views in an unrelated case (see Steve Zinck v Cathy Tie, CIIDRC case no. 21993-UDRP), and in obiter, that the UDRP jurisprudence has developed a rather stringent test for individuals to rely on their names as UDRP-relevant rights. The Panel does not necessarily agree with the test and would be willing to consider a more liberal but reasoned standard for personal names under the UDRP – not least as the current test appears to benefit only a certain class of individuals. The same rationale applies to the Respondent in this UDRP administrative proceeding. Despite the present case involving a great deal of head-scratching, the Panel cannot fail to note that the Respondent effectively has a right to the name ‘Scipio’ as his surname by virtue of marriage. As unfortunately a reality to the Complainant as it may be, ‘Scipio’ is Respondent’s surname after all. This suffices for the Panel to find in favour of the Respondent under this UDRP Policy ground, namely that the Respondent has rights or legitimate interests in the disputed Domain Name. The Panel, therefore, finds that the Complainant has failed to make a prima-facie showing of the Respondent’s lack of rights or legitimate interests in the disputed Domain Name.
RDNH: In the Response, the Respondent asserts an RDNH counterclaim.
While the Complainant may have ‘sailed very close to the wind’ in this case, making use of bare evidence in an attempt to convince the Panel of its claims, and the Panel not agreeing with how the Complainant approached the Respondent in its pre-action letter (i.e. before the commencement of this UDRP administrative proceeding), the Complainant’s conduct, in this case, does not appear to fall squarely into the realm of any of the RDNH circumstances provided under para 4.16 of the WIPO Overview 3.0. Therefore, the Panel has decided not to make a finding of RDNH on this occasion.
The Panel, however, cautions the Complainant to only invoke the UDRP Policy in the future in circumstances under which the Complainant can identify the bases and adduce evidence in respect of all three UDRP Policy grounds. For the foregoing reasons, the Complaint is denied.
Complaint Denied
Complainants’ Counsel: Laurence RIVIERE (ICOSA)
Respondents’ Counsel: Self-represented
Transfer of Domain Name Between Closely Related Parties Does Not Constitute Transfer Under the Policy
senswork GmbH v. Neuralyze LLC (formerly known as AxAxA LC), WIPO Case No. D2023-5363
<neuralyze .com>
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The German Complainant owns three registered trademarks for NEURALYZE including EUTM (May 28, 2021); International Registration (July 1, 2021) including the United States; and United States Registered Trademark (November 21, 2023). The Respondent was incorporated in Texas, United States on May 23, 2018, with Mr Kris Eifler is identified as the “managing member” and it changed its name to Neuralyze LLC on September 5, 2023. The disputed Domain Name was created on June 20, 2016 by the Respondent, which provides machine learning services. When the Complaint was filed, the disputed Domain Name resolved to a website apparently promoting data processing services under “Neuralyze”. In its supplemental filing, the Respondent has submitted receipts showing that Kris Eifler of [redacted] in San Antonio, Texas, United States registered the disputed Domain Name on June 20, 2016.
A search of the Wayback Machine includes a capture on August 7, 2018, showing that the disputed Domain Name resolved to a blank page. The next capture, on July 26, 2019, showed the disputed Domain Name resolving to a webpage: “Welcome to nginx! “If you see this page, the nginx web server is successfully installed and working. Further configuration is required.” The snapshots after 2019 cannot be loaded. Annexes to the Response includes documentation including the source code for the docker installation of the Neuralyze website; a copy of the printout of the Neuralyze API and more. According to Annex 2 to the Complainant’s second supplemental filing, the Complainant (or someone acting on its behalf) initiated several attempts through a domain broker to buy the disputed Domain Name between December 10, 2020, and February 18, 2021.
Held: The Complaint provides extremely limited information about the Complainant. All that the Complaint informs the Panel is that the Complainant owns the registered trademarks identified above. The Panel does not know when the Complainant was established, when (if) the Complainant started using the trademark or how extensively. The disputed Domain Name was registered on June 20, 2016 – more than four years before the Complainant filed its application to register the EUTM and is in use in connection with its business providing machine learning services. The disputed Domain Name was registered by Mr Eifler, however, not the Respondent. The latter was not incorporated until 2018, the Respondent plainly could not itself have been using the disputed Domain Name from 2016 when the disputed Domain Name was registered. However, the Complainant points out in its second supplemental filing, the captures of the website at <neuralyze .com> do not show continuous use of “Neuralyze” and that the Respondent changed its name to Neuralyze LLC only on September 5, 2023, which is significantly after the Complainant filed its trademark applications.
In this state of the evidence, the Panel is not prepared to find that the Complainant has established the disputed Domain Name was registered in bad faith. It is well-established that, when a domain name is transferred from a third party to a respondent, the question of registration in bad faith falls to be considered at the date of the transfer. However, a transfer between closely related parties may constitute an exception to that approach. In the present case, there has been a change in the registration from an individual to a company of which he is the “managing member”. Further, Mr. Eifler first registered the disputed Domain Name and the Respondent was first incorporated (albeit under a different name to its current name) several years before the Complainant even applied to register its trademark, the Panel is not prepared to impute bad faith to the registration of the disputed Domain Name. Going behind these objective facts requires the sort of forensic investigation which the materials before the Panel do not permit and for which the Policy was not designed.
RDNH: The very limited amount of material submitted in the Complaint to support what are very serious allegations has caused the Panel to give serious consideration to a finding of reverse domain name hijacking. Of course, the failure of the Complaint is not in itself sufficient basis to make such a finding. Notwithstanding the very limited amount of material submitted in support of the Complaint, the Panel considers a finding of reverse domain name hijacking is not appropriate in this case. The Panel does not know whether the Complainant carried out any searches to ascertain the identity of the business operating the website or of the Wayback Machine about how the disputed Domain Name may have been used before filing the Complaint or only after the Response and Panel Order.
Complaint Denied
Complainants’ Counsel: Lichtnecker & Lichtnecker, Germany
Respondents’ Counsel: Kris Eifler, United States of America