The ICA will hold a special webinar for the domain name community to discuss the recently released Initial Report of the WIPO-ICA UDRP Review Project Team.
Join Brian Beckham (Head – Internet Dispute Resolution Section at WIPO) and Zak Muscovitch (General Counsel, ICA)—co-leads of the review—for a conversation on the report’s key findings, areas of agreement and divergence in the community, and what this means for the future of UDRP reform.
Whether you’re a registrant, IP professional, panelist, registrar, or simply interested in the future of domain name dispute resolution, this session is a unique opportunity to engage directly with the authors of the report, ask questions and contribute to the conversation!
Questions can also be submitted in advance of the webinar by email.
Date & Time: Wednesday, May 28th at 11:15 AM EST on Zoom.
Registration is required – register here!
Essay by Mr. Gerald M. Levine – Part 2
Help! Someone has registered a Domain Name Corresponding to my Trademark. Help! I’m being Accused of Squatting on Someone’s Trademark.
PART 2: DEMANDS AND EXPECTATIONS
In Part 1 I pointed out that there was a continuum along which, in considering the merit of claims, the claim moved from certainly clear to certainly unclear instances of cybersquatting. I said that at some point along this continuum certainty moved to a patch which I called “fuzzy” that when reached, having given thought to the totality of facts, panelists have a duty of caution on which side of the line the case stands. Here, I want to take this one step further. “Fuzzy” means a degree of uncertainty that may go either way depending on a critical factor identified by the proof. Continue Reading here.
We hope you will enjoy this edition of the Digest (vol. 5.19) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel Rejects “Debunked Theory of Retroactive Bad Faith Registration” (jslidesfootwear .com and jslides .com *with commentary)
‣ The (UK) Times Wins Cybersquatting Case and Obtains RDNH Ruling (timesnow .com *with commentary)
‣ Respondent’s Case Goes Into the Toilet (armal .com *with commentary)
‣ Panel: Good Faith Investor “Entitled to Set Whatever Price it Likes” (clio .ai *with commentary)
‣ Respondent Had Legitimate Interest Before Complainant, RDNH Found (smartrail .com *with commentary)
Panel Rejects “Debunked Theory of Retroactive Bad Faith Registration”
<jslidesfootwear .com> and <jslides .com>
Panelists: Mr. Gerald M. Levine (Chair), Mr. Nicholas Smith and The Hon. Neil Anthony Brown, KC
Preliminary Issue – Consolidation of Domain Names: The individual Respondents are husband and wife. According to Lilian Litvack duly set forth in a declaration submitted by her she registered both domain names in 2013 in connection with a business venture for women’s shoes that her husband Jay Litvack founded in 2012. From that date to today, <jslides .com> has redirected to <jslidesfootwear .com> displaying JSLIDES NYC footwear. The parties are engaged in a contentious dispute over the ownership of the domain names and their use following the dissolution of their business relationship. Given the circumstances of this dispute, the Panel finds that it is appropriate to consolidate the domain names in a single proceeding.
Brief Facts: The Complainant contends that “by and through its predecessors in interest, [it] has used the trademark J/SLIDES and similar variations thereof since at least as early as September 2012 in connection with a wide variety of footwear merchandise and online retail store services featuring footwear.” The Complainant claims that “[p]ursuant to the Intellectual Property Rights Transfer Agreement [with Respondent Jay Litvack], the Respondent or an affiliate thereof, transferred the J/SLIDES marks to Complainant on April 2, 2015. It also claims that this agreement included transfer of the two domain names. However, “[d]espite having transferred the aforementioned intellectual property rights to the Complainant, Litvack continues to wrongfully hold over the Domain Names.” In regard to the disputed Domain names, “More than seven years after granting the Complainant sole ownership of the J/SLIDES marks, the Respondent knowingly re-registered the disputed Domain name <jslidesfootwear .com> on September 14, 2022 and re-registered the disputed Domain name <jslides .com> on July 21, 2024.” In or around 2018, disputes arose between Litvack and the Complainant over issues regarding whether Litvack had acted beyond his authority and caused an affiliated company to incur unauthorized obligations. In or around November 2023, the Complainant terminated its business relationship with Litvack.
The Respondents focus their narrative on the formation of Jay Litvack’s business, J/Slides in 2012, and the registration of <jslides .com> and <jslidesfootwear .com> in 2013. They state that these registrations occurred “over a year before the Complainant (a Hong Kong company) came into existence.” They further state that since at least 2014, Jay Litvack “has used the domain names in connection with his businesses JSL Studios LLC and Styleline Studios, LLC to sell J/Slides shoes, a brand that Jay created in 2012.” The Respondents recount that in September 2014, Jay Litvack, through JSL Studios Intl. LLC, applied to the USPTO for a trademark on the name J/SLIDES. The USPTO approved this application in June 2015. In late 2014, Jay Litvack decided to go into business with Dimitri Mavridakis, a resident of Canada, and Tina Liu, a resident of Hong Kong. In December 2014, Jay, Mavridakis and Liu formed a New York company named Styleline Studios, LLC to design, promote and sell J/SLIDES shoes. On March 20, 2015, JSL Studio Intl, LLC assigned the mark to a newly formed Hong Kong corporation, the Complainant in this proceeding. On April 1, 2018, the Complainant assigned J/SLIDES to Styleline Studios LLC. and on August 12, 2022 the trademark was reassigned to the Complainant.
Majority Opinion: Here, it is undisputed that the Litvacks’ registrations of the disputed Domain names predate the Complainant’s trademark rights which as already noted, the Complainant received by assignment from JSL Studio Intl, LLC in 2015. Moreover, the Complainant did not exist as a corporate entity until late 2014 whereas the disputed Domain names were registered in 2013. Thus, even if the Panel were to accept that <jslidesfootwear .com> and <jslides .com> are being used in bad faith this would not be sufficient to satisfy Para. 4(a)(iii). In an attempt to overcome this infirmity, the Complainant advances two arguments, one based on assertion of a fact and the other based on law. It asserts that “in April 2015, Jay Litvack and his associated company transferred the intellectual property rights in and to the J/SLIDES brand to the Complainant. Such intellectual property rights include the Domain Names at issue.” The Respondents deny this allegation and the Complainant has not submitted any documentary evidence of any such assignment of the domain names. Regardless of the veracity of the Complainant’s claims, the purported assignment of rights two years after registration does not result in the original registration being made in bad faith.
This, of course, puts the Complainant in a bind which it attempts to escape by turning to the debunked theory of retroactive bad faith registration. It argues first that “the Panel should consider domain name renewal” and further that the Anticybersquatting Consumer Protection Act “provides similar relief to parties in federal court.” The ACPA has no bearing on the UDRP which operates on its own terms as a conjunctive model of liability. Accordingly, the Panel declines this invitation on both counts in favor of the sound reasoning that has developed on this issue under the UDRP. The determinative date for bad faith registration is measured from the acquisition of the disputed Domain names not from any renewal. With regard to the disputed ownership of the disputed Domain names the Panel concludes that this dispute is outside the scope of the UDRP. The Respondent in its Supplement Submission states that the 2015 agreement transferring the J/SLIDES trademark to the Complainant “in fact makes no mention of the transfer of any domain names,” nor is there “any other agreement in which Litvack agreed to transfer the Domain Names to the Complainant. Accordingly, on the record before it, the Panel concludes that <jslides .com> and <jslidesfootwear .com> were not registered in bad faith.
RDNH: Mr. Smith and Mr. Levine concur with the Hon. Neil Anthony Brown KC in finding RDNH but on narrower grounds. The Complainant launched its complaint on several misguided grounds of fact and law. As to facts, it proceeded by claiming ownership of the disputed Domain names by virtue of an Intellectual Property Rights Transfer Agreement, but failed to proffer any evidence of such a transfer and the Respondents denied the allegation as discussed above. Moreover, the Complainant failed to disclose the history between the parties such as the fact that it was incorporated 2 years after the Domain Name was registered and all rights were held by the Respondent to those disputed Domain names at the time of registration of J/SLIDES. The circumstances set forth in Para. 4(b)(i-iv) do not support bad faith registration of domain names that predate the trademark except under circumstances that are not present in this case. The Complainant also could not succeed on any of the bad faith grounds by relying on discredited law of Retroactive Bad Faith and that particular branch of the theory that would find renewal of registration a factor of bad faith. Or, that the Complainant could overcome these legal shortcomings by arguing that US federal courts would find cybersquatting under the Anticybersquatting Consumer Protection Act.
Concurring Opinion of The Hon. Neil Anthony Brown, KC: In this Panelist’s opinion, the Complainant prevails only on the first element of Identicality or Confusing Similarity. The Respondents have prevailed on the second element of Rights and Legitimate Interests and this Panelist is of the opinion that it should be said so, and why. The Respondents have also succeeded on both of the allegations of bad faith registration and bad faith use. As the Complainant has not succeeded on all three of the elements required to be proved under the UDRP, the Complaint should be dismissed and the domain names should remain with the Respondents. There should also be a finding that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Michelle Weaver of Steptoe & Johnson PLLC, USA
Respondent’s Counsel: Paul Hugel of Clayman, Rosenberg, Kirshner & Linder LLP, USA
Case Comment by ICA General Counsel, Zak Muscovitch: The Complaint failed because the disputed Domain Names were registered prior to the establishment of the Complainant and its trademark rights, with the Panel rejecting the “debunked theory of retroactive bad faith registration”. One might ask however, whether this ‘technical’ fault of the Complaint based upon the conjunctive requirements of the UDRP, somehow deprived the Complainant of the rightful transfer of the disputed Domain Names based upon a purported Intellectual Property Rights Transfer Agreement.
The Panel noted however, that the Complainant never submitted a copy of such agreement and the Respondent denied that this purported agreement encompassed the disputed Domain Names. The Panel took “no position with regard to the ownership issue of these domain names” based upon the purported IP transfer agreement, noting that “what is meant by ‘intellectual property rights’ is better left to a court of competent jurisdiction together with other claims that Complainant states that it anticipates bringing against the Respondents”, adding that this is “an issue that is beyond the scope of the UDRP”.
When faced with a “legitimate dispute”, i.e. one that involves inter alia, a good faith dispute between competing right holders or other competing legitimate interests, a Panel should see it as an important signal that the matter is outside the scope of the UDRP, as the Panel did here. As the Final Report of the WIPO Internet Domain Name Process at Paragraph 172 noted, “good faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the procedure”. As noted in UDRP Perspectives at 0.1, “the UDRP is not intended to resolve all kinds of disputes. Rather, it is only designed and intended for clear cut cases of cybersquatting. Other disputes are not intended to be resolved by the expedited and administrative nature of the UDRP procedure”. As a result, arguably this case could have been dismissed on the basis of it being outside the scope, in addition to being dismissed as it was on the basis of no registration in bad faith.
For those that are concerned that the conjunctive requirements of the Policy deprived the Complainant of recourse in this case, the Complainant is not without recourse. The Complainant can go to court to resolve whether its purported IP assignment agreement covered the disputed Domain Names, and indeed the Complainant appears to intend to. Although the UDRP has gained acclaim for being an effective expedited procedure, it should not be idealized as a panacea that can adequately address all manner of disputes that involve domain names. Courts have and continue to be the most effective and appropriate forum for all disputes other than the discrete and limited class of cases that the UDRP was intended to address.
The (UK) Times Wins Cybersquatting Case and Obtains RDNH Ruling
Bennett, Coleman & Co. Ltd. v. Domain Administrator, Times Media Limited, WIPO Case No. D2025-0145
<timesnow .com>
Panelists: Mr. Flip Jan Claude Petillion (Presiding), Mr. Matthew Kennedy, Mr. Debrett G. Lyons
Brief Facts: The Complainant is a media, entertainment, and communication company based in India. It publishes a newspaper that has been titled “The Times of India” since 1838 and its subsidiary operates a news channel named “Times Now”, launched in 2005 (online at <timesnownews .com>). The Complainant is the owner of various registered trademarks, including TIMES (in India registered on May 22, 1992); TIMES NOW (in India on September 3, 2004); NOW (in India on July 31, 2008); and TIMES NOW, (in UK on June 17, 2016). The Respondent, a UK-based media company, and its predecessors have produced a newspaper under the name “The Times” since 1788. It is the owner of various registered trademarks, including THE TIMES (in UK registered on February 23, 1972); TIMES, (in India on May 14, 1975). The Respondent registered the disputed Domain name on August 1, 2001 and it appears to be inactive.
The Complainant alleges that the Respondent has registered and maintained the disputed Domain name primarily to interfere with and disrupt the Complainant’s business, and that its continued inactiveness since inception suggests it was intended to prejudicially affect the Complainant’s business activities. The Respondent contends that the Respondent has a clear and legitimate vested interest in its TIMES brand, which has been present in the UK since at least 1788, well before the inception of the Complainant’s group. The Respondent further contends that given the Respondent’s longstanding and reputable TIMES brand and TIMES-formative sub-brands, there is a clear commercial rationale to owning the disputed Domain name that is centred on the Respondent’s own commercial activities, and not those of the Complainant.
Held: In the Panel’s view, the Complainant knew of the Respondent’s prior rights in the TIMES and THE TIMES marks. According to the Respondent’s uncontested evidence, both parties had dealings in various forms prior to the present proceedings, including the Complainant licensing content from the Respondent for publication in the Complainant’s newspapers; and an email dated May 17, 2017 suggests that the Complainant contacted the Respondent with a view to acquire the disputed Domain name. It is clear in the present case that the Respondent’s trademarks were not obtained as a pretext to prevent the Complainant’s exercise of its rights, see WIPO Overview 3.0, section 2.12. The Panel finds that the Respondent has rights and legitimate interests in the disputed Domain name, which combines its TIMES mark with the descriptive word “now”.
Moreover, the Panel observes that the Complainant does not provide any evidence of use of its TIMES NOW mark on or before the registration date of the disputed Domain name. Therefore, the Respondent could not target or suggest any affiliation with such mark when registering the disputed Domain name. The Complainant’s claim that the Respondent’s primarily aims to traffic the disputed Domain name is unsupported. On the contrary, the Respondent’s evidence indicates that more than 5 years ago, the Complainant communicated to the Respondent an interest in owning the disputed Domain name. There is no trace of any offer made by the Respondent to sell the disputed Domain name, either to the Complainant or anyone else. In the circumstances of the present case, the Panel finds that the passive holding of the disputed Domain name does not support a finding of bad faith either.
RDNH: The Complainant is professionally represented in this matter and was aware of the Respondent and its rights in the TIMES and THE TIMES marks, but omitted to mention this. The Complainant also knew (or should have easily found out) that the disputed Domain name predated its relevant TIMES NOW marks, and the impact on the Respondent’s rights or legitimate interests in respect of the disputed Domain name. Despite this, the Complainant alleged that there was a lack of any plausible interpretation for the registration of the disputed Domain name by the Respondent; the Complainant made frivolous claims about the Respondent’s alleged intention to extort money from the Complainant. In these circumstances, the Panel finds that the Complaint has been brought in bad faith. Accordingly, the Panel finds that the Complainant has abused the administrative proceeding and engaged in reverse domain name hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: Inttl Advocare, India
Respondent’s Counsel: Taylor Wessing LLP, UK
Case Comment by ICA General Counsel, Zak Muscovitch: There is a lot to appreciate in this decision, but I want to focus on one particular and overall minor aspect; The Panel’s finding that “the fact that the Disputed Domain Name is inactive does not change” the conclusion that the Respondent has rights and legitimate interests in the Disputed Domain Name. The concept of “use” while often crucial in trademark law in order to obtain or to maintain trademark rights, is not necessary in order to obtain or to maintain domain name registration and ownership rights. There is no requirement whatsoever to use a domain name in order to have rights to it and those rights are chiefly contractual rather than intellectual property-related. Trademark practitioners will naturally place great emphasis on “use” given its centrality to trademark rights but it is not something that must necessarily exist in order to find a legitimate interest in a domain name. There is in fact, no requirement that a domain name registrant use or have any use for a domain name, such as a for a website; not even for a domain name that might be similar to an existing trademark, so long as there is no intended targeting of the rights of others (Write Brothers, Inc. v. Dennis Pollack (NAF FA0210000127800)).
The interaction between the concept of “use” and domain name rights is highlighted by the general approach to domain name investing under the Policy. Domain names that are registered but not actually “used” for a website – even in connection with their descriptive meaning, for example, and which form part of the stock in trade of an investor, are still considered to be “used” under the Policy. As held in Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, where a Domain Name forms part of a Respondent’s stock-in-trade, it constitutes “use of the domain name in connection with a bona fide offering of goods or services”. Accordingly, “use” is either not required at all, provided that there is no evidence of bad faith, or the term “use” is broadly interpreted to also encompass “non-use”, provided such non-use includes “use” within an inventory of domain names for sale.
Respondent’s Case Goes Into the Toilet
Sebach – Servizio Bagni Chimici – S.p.A. v. beats, WIPO Case No. D2025-0725
<armal .com>
Panelist: Mr. Andrew J. Park
Brief Facts: The Complainant, since 1987, has specialized in renting portable toilets for construction sites, public areas, small private events, large events, and ranging from emergency situations to long-term rentals. The Complainant’s portable toilets are manufactured by its sister company Armal S.p.A., which the Complainant claims is a leader in the manufacture of portable sanitation products, which are exported to over 130 countries. The Complainant owns several figurative trademark registrations for ARMAL in the EU, Italy, and internationally, registered between 2006 and 2008, as well as a Korean registration dated September 4, 2023, which is pending registration. The Respondent registered the disputed Domain name on December 4, 2014, which leads to a PPC site with links related to the Complainant’s business and also offers the Domain Name for sale.
The Complainant alleges that the disputed Domain name was clearly intended to exploit their trademark by redirecting consumers to a parked page with competing links. The Complainant further alleges that the Respondent registered and is using the disputed Domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy paragraph 4(b)(i), (ii), and (iv) by registering the disputed Domain name with the intention of selling the disputed Domain name. The Respondent denies bad faith registration, stating the Complainant’s failed attempts to buy the domain and filing this Complaint only after price negotiations failed. The Respondent further contends that registering a domain name for the purpose of resale does not, in itself, constitute bad faith and insists that it did not have any intention to target or exploit the Complainant’s trademark rights.
Held: The Respondent registered the disputed Domain name and created a website using the disputed Domain name redirecting Internet users who visit the Respondent’s website by clicking the PPC links leading to third party websites, all in an effort to confuse Internet users or consumers about the relationship between the Respondent and the Complainant and all without the Complainant’s permission or authorization. These facts demonstrate that the Respondent never had an intention to use the disputed Domain name in connection with a bona fide offering of goods and services. Further, the Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the disputed Domain name even after duly considering the Respondent’s Response.
Further, given the Complainant’s international presence and worldwide trademark registrations for ARMAL, it is implausible that the Respondent was unaware of the Complainant’s rights in the disputed Domain name at the time of registration in 2014, although the Complainant’s Korean trademark application remains pending. The Panel considers the overall context, including the Respondent’s intent and awareness of the Complainant’s global rights. In this case, the Respondent’s passive holding of the disputed Domain name for over a decade combined with it resolving to a PPC page featuring links related to the Complainant’s industry further support a finding of the Respondent’s bad faith in the registration and use of the disputed Domain name.
The Panel further finds that the Respondent has used the disputed Domain name in a manner likely to confuse Internet users into believing that the website to which the disputed Domain name resolves is associated with the Complainant in terms of paragraph 4(b)(iv) of the Policy. Here, all such conditions are met. The ARMAL mark is distinctive and widely used in over 130 countries. The Respondent has not shown any rights or legitimate interests in the disputed Domain name, and the disputed Domain name is used only for monetized PPC links. As the conduct described above falls squarely within paragraph 4(b)(i), (ii), and (iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed Domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
Transfer
Complainant’s Counsel: Società Italiana Brevetti S.p.A., Italy
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Awareness of a Complainant’s marks alone is insufficient to find bad faith registration under the Policy. After all, one could be aware of a specific company holding a trademark for ACME and yet still legitimately register the corresponding domain name provided that the reason for registering it was not to target that specific company. But to make such an argument, one must generally demonstrate that; a) the Complainant is not the exclusive or predominant user of the mark; and b) that there were genuine reasons for registering the particular domain name apart from the Complainant, such as the term having a common meaning or that it is an apt name for a party to adopt for its own business. In the present case, the Respondent appears to have done neither and that was the crucially missing piece for the Respondent. Had the Respondent been able to demonstrate the foregoing, he may have been able to demonstrate that he registered the Domain Name in good faith.
Panel: Good Faith Investor “Entitled to Set Whatever Price it Likes”
<clio .ai>
Panelists: Mr. Steven M. Levy (Chair), Ms. Sandra J. Franklin and Mr. Nick J. Gardner
Brief Facts: The Complainant, at least since October 1, 2008, has used the trademark CLIO in connection with software for law practice management and administration. The Complainant owns rights in the CLIO mark, which is registered at the USPTO (dated April 16, 2013 and January 10, 2017) and the CIPO (dated August 2, 2016 and November 21, 2011). The disputed Domain name was registered on September 7, 2021 by the Respondent who is a domain name investor. The disputed Domain name is offered for sale at CAD $475,931.62. The Complainant alleges that the disputed Domain name was registered and is used in bad faith where it is not reasonable to believe that the Respondent had not heard of the Complainant prior to registering the Domain Name and the Respondent is opportunistically selling the disputed Domain name based on the Complainant’s use of artificial intelligence in its services and the value of the Complainant’s mark. Under additional submissions, the Complainant adds, according to the estibot .com website, a “fair market value” for the disputed Domain name is $15,000.00 USD.
The Respondent contends that it does have rights or legitimate interests in the disputed Domain name as it is an investor who is in the business of buying and selling domain names and the disputed Domain name is a dictionary word and a common name that does not target the Complainant’s mark. It further contends that it has demonstrated a pattern of registering dictionary words and first names, many from Greek mythology, as domain names in the “.ai” TLD and it submits WHOIS records showing its ownership of similar thirty names. It also notes that the term “Clio” has many other uses such as the geographic name of several cities, the name of a number of notable persons, certain technical acronyms, and even many uses as a trademark, e.g., by Renault (a popular automobile model) and the “Clio Awards” for excellence in advertising. Finally, it denies knowledge of the Complainant’s mark at the time the domain name was registered, and notes that its offer to sell is made generally and asserts that there is a “complete absence of any evidence whatsoever demonstrating targeting of the Complainant…”
Held: Upon reviewing the entirety of the parties’ submissions, the Panel finds that the Complainant’s case is circumstantial, speculative, and can be distilled down to two key elements. It argues that the Respondent’s use is not bona fide and it must have targeted the Complainant because 1) the sale price of the disputed Domain name was set at a level that only a small number of companies could afford; and 2) Respondent must have been aware of the Complainant’s planned entrance into the AI space. However, the Panel finds neither ground convincing. The purchasing and sale of generic or descriptive domain names is a bona fide offering under the Policy so long as infringing or cybersquatting intent is not evident, See The Clash Of Trademarks And Domain Names On The Internet, at 496 (Gerald M. Levine, Legal Corner Press, 2024). Under such circumstances, an investor is entitled to set whatever price it likes for its offerings. Here, there is significant evidence that the word “Clio” has numerous meanings and uses beyond the Complainant’s mark and there is nothing on the auction website that refers or relates to the Complainant.
The Panel finds that the Complainant has not made a prima facie case, based on a preponderance of the evidence, that the Respondent lacks rights or legitimate interests in the disputed Domain name under Policy 4(c)(i). Further, bad faith under the Policy, is predicated on a respondent specifically targeting the asserted mark of the complainant and this “can be established by either direct evidence (e.g. content of the website) or circumstantial evidence such as strength of the mark and nature of a disputed Domain name (e.g. mark plus a term describing the Complainant’s business), timing of registration of a domain name and timing of trademark registration, geographic proximity of the parties.” UDRP Perspectives on Recent Jurisprudence, § 3.3 (updated Jan. 15, 2025). As noted in the previous section, the Panel cannot conclude that the Respondent knew of or targeted the Complainant’s CLIO mark at the time that it registered the disputed Domain name. Thus, there is insufficient evidence to support the claim that the Respondent registered the disputed Domain name in bad faith under Policy ¶ 4(a)(iii).
Complaint Denied
Complainant’s Counsel: Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., USA
Respondent’s Counsel: John Berryhill, USA
Case Comment by ICA General Counsel, Zak Muscovitch: First of all, kudos to the Panel for referencing both “The Clash Of Trademarks And Domain Names On The Internet” (Gerald M. Levine, Legal Corner Press, 2024) as well as UDRPPerspectives.org (an online publication edited by Igor Motsnyi and myself). Both publications serve an important purpose in providing context and perspectives that can assist UDRP Panels in navigating complex issues, of course along with WIPO’s Overview which has played a central role in stabilizing UDRP outcomes.
This case demonstrates what it takes to win a UDRP, in contrast to the Armal case, referenced above. First of all, good counsel. Second, a credible explanation of why the Domain Name was registered for reasons that have nothing to do with the Complainant. Here, the Respondent demonstrated that; a) the term is concurrently used by many persons as a personal name and by many other companies as a trademark for various goods and services; and b) that the Domain Name had value apart from the Complainant because “common, non-exclusive personal names have independent commercial value, apart from their incidental use as trademarks” and also demonstrated that the “disputed domain name here is a four-letter personal name, being one of the nine Greek muses.
I also want to note the Panel’s clear and unequivocal statement of the law, which is that “it is well established that the listing of generic or descriptive domain names for general sale can be a bona fide offering under Policy ¶ 4(c)(i) where the domain name is not improperly targeted at a complainant” and that “the purchasing and sale of generic or descriptive domain names is a bona fide offering under the Policy so long as infringing or cybersquatting intent is not evident”, and that “under such circumstances, an investor is entitled to set whatever price it likes for its offerings”.
Some excerpts from the Response shared by counsel for the Respondent, John Berryhill, provides crucial context to the often-made but often ill-founded claim that a disputed domain name is “exorbitantly priced”:
“[T]he Complainant’s counsel appears in this Proceeding as a self-qualified expert witness in domain pricing, does not explain how its methodology distinguishes between prices premised on trademarks or not, and expects this Panel to determine what offering price is “too much” for a four-letter personal name domain name, such that it must be cybersquatting against this particular trademark claimant.
The Complainant simply asserts out of thin air that the Respondent’s list price or asking price for a four-letter personal name domain name, in a ccTLD of burgeoning popularity, is premised on the value of the Complainant’s trademark. The Complainant leaves unsaid what listing price would be appropriate for the domain name if the price were not driven by the Complainant’s mark. This should be a simple calculation for the Complainant’s expert witness here. If the Complainant can divine the Respondent’s “bad faith” intent by the list price of the domain, then what would be the non-cybersquatting “good faith” price for a domain name which has objective value as a four-letter personal name, mythological allusion or acronym – all of which this domain name embodies. Would it be “good faith” to list it at $100? $10,000? At what level is the price no longer based on the Complainant’s secret appraisal formula for non-distinctive domain names of this type, and we cross into the “it’s based on my trademark” zone?”
As noted in UDRP Perspectives at 3.5, Panels should exercise considerable caution when attempting to draw an inference from an asking price alone. Panels are typically not experts in valuations in the domain name aftermarket nor do they typically have a clear grasp of the pricing required to support a domain investor business model. An inference drawn from an asking pricing is best treated as confirming or undercutting a finding drawn from other evidence, rather than as the primary basis for a finding. For example, if other evidence indicates that the Respondent registered a domain name primarily for the purpose of targeting the Complainant, an exceptionally high asking price that could reasonably be justified only due to the value of the Complainant’s goodwill could assist in supporting such an inference. On the other hand, if other evidence suggests that a domain name investor registered the Disputed Domain Name based on a business strategy of registering domain names that fit a similar pattern, if the Respondent can demonstrate that it consistently listed and/or sold such domain names at prices that were similar to that set for the Disputed Domain, then the asking price could support an inference of good faith registration and use.
Even where a Respondent is aware of a Complainant and its marks and solicits them for the purchase of the domain name, bad faith may not necessarily be established if the Respondent can demonstrate, for example, that the primary purpose of the registration was not the Complainant specifically, but rather the universe of numerous parties who all share what is a common term and therefore may all share an interest in the domain name.
Where the sole value of the domain name appears to be due to the use by an existing trademark owner rather than due to its possible appeal to potential new entrants to the marketplace, unless it can be satisfactorily demonstrated that the term is of sufficiently common usage or appeal such that no single trader could reasonably claim exclusive rights to it, then the explanation from the Respondent will likely be unsatisfactory and insufficient to rebut the Complainant’s allegations of bad faith.
Outreach to the Complainant with an offer to sell a domain name is not necessarily evidence of bad faith intent (See also Perspectives 3.3, Targeting). If the Respondent can demonstrate that the registration did not target a particular trademark owner but rather was registered due to its broad appeal and therefore the Respondent reached out to several companies that were identified because the disputed domain name might appeal to them, then the outreach may not support an inference of bad faith targeting.
Respondent Had Legitimate Interest Before Complainant, RDNH Found
<smartrail .com>
Panelist: Mr. Fernando Triana, Esq.
Brief Facts: The Complainant owns rights in the trademark SMARTRAIL based on registration of the mark with the USPTO, registered on August 24, 2004. The Complainant alleges that the Respondent fails to use the disputed Domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the disputed Domain name is not being used. The disputed Domain name is redirected to a web page with no relationship to the domain name or the SMARTRAIL mark. The disputed Domain name was originally registered on October 29, 1998.
The Respondent contends that its rights in SMART RAIL were established through use in commerce as early as 1997, and through a filing with the USPTO as of its filing date, August 22, 1995 (registered on August 25, 1998). The Respondent established its rights in the SMART RAIL mark and used the SMART RAIL mark on the website prior to knowing of the Complainant’s concerns and UDRP filing. The Complainant has provided no evidence that the Respondent was ever aware of the Complainant’s business or targeted it in any way.
Held: The Respondent has established that it has rights or legitimate interests in the disputed Domain name, by means of the trademark registration SMART RAIL with the USPTO, registered on August 25, 1998. Furthermore, the Respondent owns the disputed Domain name since 1998, which is 3 years before the Complainant’s trademark application. The Panel finds that the Respondent’s evidence is persuasive on the issue of rights and legitimate interests. Furthermore, since the disputed Domain name was owned by the Respondent since at least 1998, and the Complainant’s trademark registration did not come into existence until 2004, it is impossible to conclude that the registration was done in bad faith, as that could not have been the intention of the Respondent at the time of acquisition of the disputed Domain name.
RDNH: The Panel observes that such a finding is justified where a complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy. See Karma International, LLC v. David Malaxos, FA 1822198 (Forum Feb. 15, 2019) (finding RDNH where the complainant lacked trademark rights, came into being long after domain name was registered, and had made a prior unsolicited offer to purchase domain name). It also notes that even if a panel would find that the Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that the Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that the Complainant acted in bad faith.”)
The Panel notes that the Respondent does have rights and legitimate interests in the disputed Domain name for purposes of paragraph 4(a)(ii) of the Policy. It also notes that the disputed Domain name registration predates the Complainant’s first claimed rights in the trademark SMARTRAIL by almost 7 years. Nevertheless, the Complainant asserts that the disputed Domain name was registered and is being used in violation of its trademark rights. The Complainant’s trademark came into registration long after the disputed Domain name was registered, and the Complainant did not substantiate its vague claims of lack of rights or legitimate interest or bad faith registration and use. On balance, the Panel finds that the Complaint was brought in bad faith, in an instance of reverse domain name hijacking, and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Steven M. Wical, USA
Respondent’s Counsel: Renee Reuter of Armstrong Teasdale LLP, USA
Case Comment by ICA General Counsel, Zak Muscovitch: Congratulations to the Panelist for his clear and unambiguous decision, finding inter alia, that the Respondent had rights and legitimate interest, and that the Complaint was brought in bad faith. As the Panel noted, “Complainant’s trademark came into registration long after the disputed domain name was registered, and Complainant did not substantiate its vague claims of lack of rights or legitimate interest or bad faith registration and use. On balance, the Panel finds that the Complaint was brought in bad faith, in an instance of reverse domain name hijacking, and constitutes an abuse of the administrative proceeding.”
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.