RDNH Rulings on Pace to Set Record
– Nat Cohen
The first six months of the year saw 36 RDNH findings. If that pace continues there will be over 70 RDNH findings by year end.
There are many different reasons why a panel may determine that a finding of RDNH is justified. Ignoring precedent was cited in twelve of those 36 decisions from the first half of the year.
Misrepresentation was mentioned in nine. The Complaint appeared to be a Plan “B” after commercial negotiations failed was cited in 13 of the decisions.
That the Complainant was represented by counsel was cited as a contributing reason for finding RDNH in 13 of the decisions.
That the allegations were not supported by evidence is provided as a contributing reason for finding RDNH in twelve of the decisions.
Not surprisingly, the most frequently cited reason for making a finding of RDNH was that the Complaint did not include evidence of bad faith targeting of the complainant, which was cited in 17 of the decisions.
Most of the decisions cite more than one of the above reasons, with some decisions providing up to six separate contributing factors justifying a finding of RDNH… continue reading here.
Following last week’s summary of the LostMaryDirect case and Zak Muscovitch’s commentary on it, Panelist Willem Leppink has also offered his thoughts in an interesting commentary that you can read here.
This case and Willem Leppink’s thoughtful commentary raise interesting issues. Can UDRP jurisprudence evolve while staying consistent? Where there are differences of opinion, which views are adopted and how are they promulgated? How can schisms between panelists and providers be avoided?
We hope you will enjoy this edition of the Digest (vol. 5.31) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Respondent Had Security Interest in Domain, Granted Ownership by Court Order (ola .com *with commentary)
‣ Panel Dismisses Complaint Due to Ongoing Litigation in US Courts (dryerventsuperheroes .com *with commentary)
‣ “Implausible” that Respondent Didn’t Select Domain Name Without Knowledge and Intent (rayacircle .com *with commentary)
‣ Pending Application Alone is Insufficient to Establish Enforceable Rights Under the UDRP (teraflux .com *with commentary)
‣ Complainant Failed to Prove that Former Employee’s Failure to Transfer Domain Name Constitutes Bad Faith (lennar .tech *with commentary)
Respondent Had Security Interest in Domain, Granted Ownership by Court Order
ANI Technologies Pvt. Ltd. v. Jeffrey Knepper, WIPO Case No. D2025-1989
<ola .com>
Panelist: Ms. Marilena Comanescu (Presiding), Ms. Sally M. Abel and Ms. Shwetasree Majumder
Brief Facts: The Indian Complainant is a ride-hailing company, offering services via the Ola app on Google PlayStore and Apple App Store, and has a significant social media following. The Complainant holds trademark registrations for OLA, that includes the Indian trademark (July 20, 2015); and International trademark (January 30, 2023). The Respondent, who was granted ownership interest in the disputed Domain Name by the Circuit Court of Oregon’s decision dated March 3, 2025, had their details listed for the Domain Name on March 21, 2025. The disputed Domain Name redirects to an eBay page, hosted by Knepper Time LLC and selling watches. The Respondent contends that it is well established that short acronymic domain names have value precisely because they can represent many different things (for example, “OLA” can stand for “online auctions”), unless there is a truly famous mark involved.
The Complaint points out that it had negotiated with “Mr. Bron C.F.” (previous owner) and after several months of negotiations, he had agreed to transfer the disputed Domain Name to the Complainant in 2024. After the Respondent took possession of the disputed Domain Name pursuant to the Oregon Court Decision, the Respondent contends that he received communications from the Complainant and from a third party-domain broker, seeking to advance an offer higher than the Complainant’s offer. Faced with competing multi-million dollar offers from two bidders, the Respondent is perfectly entitled to quote any price, or no price at all, to determine which bidder might go higher. Having legitimately acquired the disputed Domain Name, and being engaged in legitimate use of the disputed Domain Name, the Respondent can sell it on whatever terms he sees fit. The Respondent’s representative requests the redaction of the Respondent’s name.
Preliminary Issue: – Redaction of the Respondent’s name: Panels have redacted the respondent’s name from the UDRP decisions, for example when there was clear evidence of identity theft. The Panel notes that the Respondent’s family name appears in his business name (Knepper Time LLC) shown on the eBay page linked to the disputed Domain Name. Additionally, at the time of this decision, the Respondent’s full name and contact details are publicly available in the WhoIs for the disputed Domain Name. The Panel does not see any exceptional circumstances in this case that necessitate redaction of the name of the Respondent. Therefore, the redaction of the Respondent’s name request is not admitted.
Held: The Complainant avers that the Respondent does not hold any trademark registration for OLA, does not conduct any business under “Ola” name, and uses the disputed Domain Name to redirect to another webpage, which does not amount to a bona fide use. The Respondent argues it is the successor of the priority right inherited in Mr. C. F.’s 2006 purchase of the disputed Domain Name, obtaining a security interest in its use in 2017, and that the disputed Domain Name stands from the common acronym for “On-Line Auctions”. The use of the disputed Domain Name, consisting of a three-character term which refers to the former registrant’s business activity “On-Line Auctions”, prior to any notice of objection from the Complainant, to promote the Respondent’s online business, without any reference to the Complainant, can be considered a bona fide offering of goods and services. WIPO Overview 3.0, section 2.2.
Further, the disputed Domain Name was selected for its value as a three-letter acronym, the Respondent obtained a security interest in the disputed Domain Name in January 2017 through a contract with the previous registrant, and formally registered it in March 2025 after a court order. The Complainant has not provided evidence of the notoriety, registration, or use of its OLA mark in the United States, where the Respondent is based. Even if one would believe that the Respondent would have heard about the Complainant or its trademark, the above facts are more than conclusory that the Respondent was not targeting the Complainant when obtaining interest in or the formal transfer of the disputed Domain Name in his name. As a result, the Complainant has not met its burden of demonstrating that the Respondent registered the disputed Domain Name with knowledge of the Complainant’s trademark and in order to target that trademark.
Furthermore, both Parties accuse each other of collusion and misconduct. A panel may decide that the administrative proceeding is not an appropriate forum to evaluate certain contentions of the parties, while it has not been provided the full set of facts (or authority) necessary to make that determination. Past UDRP panels are all clear that the Policy was designed to prevent extortionate or abusive behavior also known as “cybersquatting” and cannot be used to litigate all aspects of the disputes involving domain names.
RDNH: The Panel finds that, although the Complaint was not successful, there was a reasonable basis for filing the Complaint, also the Complainant was not aware of the full history of the disputed Domain Name and the private legal documents related thereto. The Complaint was, therefore, not brought in bad faith and thus not as an abuse of the administrative proceeding.
Complaint Denied
Complainant’s Counsel: Lakshmikumaran & Sridharan, Attorneys, India
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch: As Respondent’s counsel, John Berryhill noted to me, all-female three-person UDRP Panels are rare and this was one such rare instance. As noted by Claire Kowarsky and her team in a presentation to the CIIDRC, “Exploring Domain Name Dispute Evolution: Spotlighting Women’s Contributions” (available on YouTube and which also featured Natalie Dreyfus, Ivett Paulovics, Maria Alejandra Lopez Garcia, and Stefanie Efstathiou, moderated by Ina Ergasheva, Director of Operations for CIIDRC), the very first all-female 3-member Panel was D2000-1687 at WIPO, which included Dana Haviland, Carol Anne Been, and Sally Abel, who happened to also be in the three-person Panel in the present case.
Panel Dismisses Complaint Due to Ongoing Litigation in US Courts
Home Run Franchising, LLC v. Leiby Goldberger, WIPO Case No. D2025-1832
<dryerventsuperheroes .com>
Panelist: Mr. Frederick M. Abbott (Presiding), Mr. Gerald M. Levine and Mr. Steven Levy
Brief Facts: The Complainant sells franchises for dryer vent cleaning services, among other service-related franchises. The Complainant is the listed owner of registration for the word service mark DRYER VENT SUPERHEROES, registered with USPTO on April 2, 2024 (application date: November 11, 2022) and DRYER VENT SUPERHEROES CLEAN DRYERS PREVENT FIRES, registered with USPTO on April 2, 2024, (application date: December 27, 2022). The disputed Domain Name was registered on November 15, 2022. The facts and circumstances regarding Complainant’s business relationship with the Respondent, and the related timing of Complainant’s decision to register the DRYER VENT SUPERHEROES service marks at the USPTO, are the subject of dispute between the parties. Likewise, the facts and circumstances regarding Respondent’s registration and use of the disputed Domain Name, including the timing of the registration and the intent of its registration and use, are the subject of dispute between the parties.
Preliminary Matter – Pending Litigation: The Panel has decided to dismiss the Complaint and to terminate this proceeding because the Complainant and the Respondent are currently involved in related contentious litigation in the courts of the State of Tennessee, United States. Notably, however, the parties to this dispute have been involved in several business ventures relating to franchising in various fields. The opinion of the Tennessee Court of Appeals (dated July 9, 2024) addresses what appears to be the single remaining active litigation among the parties to this dispute, although the parties have not clarified the extent to which additional related litigation may be ongoing in other fora. Each party has referred to settlement negotiations regarding the ongoing Tennessee litigation, each providing the texts of the same email correspondence among counsel (dated April 25 and 26, 2023).
Per that email correspondence, a final settlement offer from the Respondent (in this proceeding) included its transfer of the disputed Domain Name to the Complainant (in addition to providing a cash payment). These aspects appeared to be mutually acceptable to the parties, but a settlement agreement was not reached because the Complainant indicated that it was unable to make a commitment on behalf of a third party that had initiated litigation against the Respondent in a separate proceeding (and in a different state jurisdiction). The Panel references this correspondence regarding settlement to illustrate that the ultimate disposition of the disputed Domain Name appears most likely to be encompassed in a resolution of the larger complex business dispute among the Complainant and the Respondent.
Held: It is the view of the Panel that the facts and circumstances regarding both sets of issues, that is (a) those surrounding the legitimacy of Complainant’s claim to ownership of the DRYER VENT SUPERHEROES service marks, and (b) Respondent’s denial of abusive registration and use of the disputed Domain Name, including its potential rights or legitimate interests and absence of bad faith, are better addressed by the courts of the State of Tennessee where the parties are currently in litigation rather than before this UDRP Panel. The UDRP was designed as a mechanism for resolving disputes in an expeditious manner based on the written pleadings of the parties, without provision for examination of witnesses, without authority to compel the production of evidence, and without authority to sanction parties or their counsel. The courts of the State of Tennessee have such capacities and authorities. They are better placed than this Panel to make an assessment and judgment regarding the disputed factual assertions of the parties and their legal consequences.
Moreover, the subject litigation in the State of Tennessee commenced nearly 3 years ago. A decision by this Panel might appear as an effort to preempt the authority of the courts of the State of Tennessee to adjudicate the relationship between the parties, including ownership of trademark rights and the disputed Domain Name, even though that would not be the Panel’s intent. In any case, a decision by this Panel would not bind those courts. This Panel could reach a decision on the law and facts in this proceeding if it was necessary to do so. This Panel, however, has concluded that it is not the appropriate forum under the circumstances. It defers to the courts of Tennessee. For these reasons, the Panel hereby dismisses the Complaint and terminates this proceeding without judgment regarding the underlying factual or legal issues.
Complaint Denied
Complainant’s Counsel: Lawyers People Love, United States
Respondent’s Counsel: Cylaw Solutions, India
Case Comment by ICA General Counsel, Zak Muscovitch: Congratulations to the Respondent’s counsel, Ankur Raheja from Cylaw Solutions, for his successful representation of the Respondent in this matter. The Panel did well here, dismissing the case due to the ongoing Tennessee litigation. As the Panel well noted:
“The UDRP was designed as a mechanism for resolving disputes in an expeditious manner based on the written pleadings of the parties, without provision for examination of witnesses, without authority to compel the production of evidence, and without authority to sanction parties or their counsel. The courts of the State of Tennessee have such capacities and authorities. They are better placed than this Panel to make an assessment and judgment regarding the disputed factual assertions of the parties and their legal consequences.”
Panels do well when they acknowledge the limitations of their mandate and that of the UDRP. Courts are sometimes better positioned to decide disputes given the intentional limitations of the scope and procedures entailed by the UDRP.
“Implausible” that Respondent Didn’t Select Domain Name Without Knowledge and Intent
Raya App, LLC v. Sebastiano Rindi, WIPO Case No. D2025-2384
<rayacircle .com>
Panelist: Mr. John Swinson
Brief Facts: The Complainant is a US-based business that operates a membership-based, social network/dating application that was launched in 2015. The Complainant dating app is branded as “Raya”. The Complainant operates a website for its app at <rayatheapp .com>, which features the word “Raya” above two interlocking circles resembling a Venn diagram. The Complainant owns a portfolio of trademarks for RAYA in various jurisdictions, including a US trademark, registered on January 19, 2016 (first use: February 25, 2015). The disputed Domain Name was registered on March 4, 2024 by an individual who has an address in Italy. The Respondent is the founder and CEO of Offjoin SRL, that builds curated social and cultural experiences through a proprietary platform that invites members to participate in real-world, inviteonly community gatherings that do not encompass any form of online dating or matchmaking activity.
The Complaint contends that originally conceived as an exclusive dating platform for people in creative industries, the Complainant’s app has since evolved to include features for professional networking and social discovery. As a result of over ten years of continuous and extensive use, the RAYA trademark has amassed a significant amount and substantial amount of goodwill and fame. The Complainant alleges that the use of a domain name for illegal activity such as impersonation/passing off, phishing scams, or other types of fraud can never confer rights or legitimate interests on a respondent. The Respondent contends that “Raya” is a widely used dictionary and geographical word meaning, inter alia, “friend” in Hebrew and that from the outset the disputed Domain Name has resolved solely to password-protected content within the Offjoin application, used to host event information and RSVP links for invited guests only.
Held: The Respondent provided scant evidence to show use of the disputed Domain Name in respect of services prior to the filing of the Complainant. Rather, the materials in the case file suggest to the Panel that the Respondent used the disputed Domain Name to direct consumers to the Respondent’s Offjoin app, which is used by the Respondent to manage the exclusive events that he promotes. Use of a domain name to intentionally trade on the fame of another does not demonstrate his rights or legitimate interests in the domain name, and in particular cannot be considered a bona fide offering of goods or services. In respect of the third element of the Policy, the Panel finds below that the Respondent registered the disputed Domain Names to take advantage of the Complainant’s reputation. Accordingly, the Respondent cannot be regarded as using the disputed Domain Names in connection with a bona fide offering of goods or services.
The Panel searched “raya events” on Google; the first two results related to the Complainant, with no Respondent-related results on the first page. The Respondent did not assert that he was unaware of the Complainant at the time he registered the disputed Domain Name. The Respondent operates in the same general field as the Complainant, being exclusive, invitation only services for friendship. The Respondent stated that the disputed Domain Name was selected because “raya” is Hebrew for “friend”. This may be the case, but “raya” is also the Complainant’s trademark. The Panel considers that the Respondent selected “raya” and “circle” because “raya” is the trademark of the Complainant and two circles comprise the Complainant’s logo. It is also relevant that the Respondent’s logo and the Complainant’s logo were very similar, and that the Respondent changed logos once the Complainant was filed.
In short, the Panel considers it implausible that the Respondent would not have been aware that he selected the disputed Domain Name and his initial logo (that closely resembles the Complainant’s logo) without knowledge of the Complainant. The Panel infers that the Respondent registered the disputed Domain Name because the Respondent was aware of the Complainant and wished to take advantage of the Complainant’s reputation. Moreover, the evidence presented by the Respondent shows that there has been consumer confusion, and that the Respondent used the disputed Domain Name to refer consumers to his Offjoin social media app. The Panel finds that the Respondent has attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion as to the source, affiliation or endorsement of the website. This amounts to evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Transfer
Complainant’s Counsel: Nelson Mullins Riley & Scarborough, L.L.P., United States
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Sometimes, even where the respective parties present divergent narratives and facts, the degree of believability can be a deciding factor that enables a Panel to render a decision rather than punting to the courts. Here for example, it appears that the Panel just didn’t buy the Respondent’s narrative that he happened to select the Domain Name for his “exclusive private community” when that appears to be related to the Complainant’s own services of exclusive networking. Nevertheless, the Respondent provided some reasons for possibly believing him, such as he selected Raya because it corresponds to “the most exclusive venue on the island of Panarea [in Italy where Respondent is from] where the Respondent’s circle has convened annually since 2014”. The Respondent’s claim of use for services that can be differentiated from the Complainant’s could also have held some sway, but it may have appeared unbelievable to the Panel that the Respondent just happened to select a RAYA-formative Domain Name considering the renown of the Complainant’s brand, which the Respondent did not deny being aware of.
Had the Respondent provided more than the “scant” evidence which the Panel noted, to support his allegations, perhaps he may have convinced the Panel that it was not in a position to decide the dispute given the competing narratives. But where one narrative appears unsubstantiated and even lacking in believability, a Panel is able to hold on to the case and rule on its merits, as the Panel did here – provided however, that the Panel believes that he or she is on firm footing in doing so. There should be more than a “gut feeling” and rather, a clearly articulable basis for disbelieving one version of the facts, as was the case here.
I note that “the Panel searched for “raya events” on the Google search engine, the first two results returned related to the Complainant; no results relating to the Respondent were returned on the first page of the search results”. What role does Panelist uncovered evidence have in a case? As I have written previously, it is my view that Panelists should generally stick to the evidence presented by the parties especially when they both respond, with few exceptions such as verifying trademark registrations. But as I also noted last week in my commentary on the Rachbot case, a Panel’s own research assisted in avoiding a miscarriage of justice. Here, it appears that the evidence uncovered by the Panel was not determinative of the case but rather served to confirm the evidence presented by the parties. But had it played a more determinative role, it would have had to been presented to the parties for comment by way of a Procedural Order in order to ensure fairness as noted in UDRP Perspectives at 0.3:
“A Panel should exercise great caution in both the extent and the conclusions to be drawn from any independent research. A Panel should not make a party’s case for them if the case is deficient. Nor should the evidence uncovered by the Panel itself by determinative of the outcome without first providing both parties an opportunity to review and comment on the evidence that the Panel itself uncovered and that is not otherwise in the record.”
Pending Application Alone is Insufficient to Establish Enforceable Rights Under the UDRP
Auradine, Inc. v. SpeedHost247 / SpeedHost247 Web Hosting, NAF Claim Number: FA2506002163519
<teraflux .com>
Panelist: Mr. Charles A. Kuechenmeister
Brief Facts: The Complainant provides web infrastructure solutions for blockchain, security, and privacy. It claims rights in the TERAFLUX mark based upon its application for registration of that mark with the USPTO, and by common law based upon its use of that mark in commerce since May 2023. The Complainant alleges that the Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using it to impersonate the Complainant and advertise Complainant’s products and services for sale.
The Complainant further alleges that the Respondent registered and is using the domain name while itself having no connection with the Complainant, it is using the domain name to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, it impersonates the Complainant and purports to offer Complaint’s products and services for sale, and it registered the domain name primarily to disrupt Complainant’s business. The Respondent did not submit a Response.
Held: The Complainant has applied for the registration of its TERAFLUX mark with the USPTO and the application was allowed on July 30, 2024. The USPTO has not registered the mark. The Complainant alleges that its allowed application is sufficient to establish its rights in the mark and cites two prior UDRP decisions in support – Royal Caribbean Cruise, Ltd. v. Gold Anchor Serv., D2003-0443 (WIPO July 17, 2003) and Love City Brewing Company v. Anker Fog/Love City Brewing Company, FA 1710001753144 (Forum November 17, 2017). This case is distinguished from Love City Brewing by the fact that there is no evidence here of an Approval, as was present in Love City. Moreover, the great weight of UDRP jurisprudence developed over the years is very clear that a pending application for registration of a trademark with the USPTO is not sufficient, in and of itself, to establish rights in a mark for the purposes of Policy ¶4(a)(i). WIPO 3.O at ¶1.1.4 (“A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i).”)
Nevertheless, it is well-settled that a complainant need not show registration of its mark to establish rights sufficient to meet the requirements of Policy ¶4(a)(i). If proven, common law rights are sufficient to establish rights for the purposes of Policy ¶4(a)(i). The Complainant states that it has actively promoted its services by using the TERAFLUX mark since at least May 2023. The Complaint exhibits a screenshot of Complainant’s website located at <auradine .com> on some unspecified date, but the mark TERAFLUX appears nowhere on this site, and there is no evidence of Complainant’s use of the TERAFLUX mark for any purpose, nor of the nature and duration of use, the amount of sales under the mark, the extent of advertising, actual public recognition, or consumer surveys. In short, there is no evidence of common law rights in the mark. As the Complainant has failed to satisfy Policy 4(a)(i), the Panel may decline to analyze the other elements of the Policy. The Panel does note, however, that the evidence submitted in support of the Policy ¶¶ 4(a)(ii) and 4(a)(iii) elements appears to support Complainant’s allegations with respect to those two elements.
Complaint Denied
Complainant’s Counsel: Farah P. Bhatti of Buchalter Nemer, USA
Respondent’s Counsel: No Response
Case Comment by Digest Editor, Ankur Raheja: The Complainant needs to demonstrate registered trademarks rights or common law rights in order to proceed with a UDRP matter. Although the Complainant’s USPTO application for the TERAFLUX mark was approved, it remains pending for final registration. In accordance with well-established precedents, a pending or approved application alone isn’t enough to prove enforceable rights under the UDRP. While unregistered (common law) rights can also satisfy Policy ¶4(a)(i), the Complainant did not provide sufficient evidence to support this claim either. See: UDRP Perspectives, Section 1.1 – Demonstrating Common Law Trademark Rights.
Also, consider a very similar case involving <thenorthdna.com> that was decided last week as well – 15HG v. Domain sales- (expired domain by auction winner), CAC Case No. CAC-UDRP-107662. In this case, the Panel, Mr. Tobias Malte Müller, held: “The Complaint is based exclusively on pending EUTMA no. 019202431, published on 18 June 2025 and the opposition period is scheduled to expire on 18 September 2025. It is well established in UDRP precedent that a pending trademark application does not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i), (see section 1.4.1. of WIPO Overview 3.0). Moreover, the case file contains no evidence to support a finding that the Complainant holds unregistered or common law trademark rights in the sign “The North DNA” (see section 1.3 of WIPO Overview 3.0).”
Complainant Failed to Prove that Former Employee’s Failure to Transfer Domain Name Constitutes Bad Faith
<lennar .tech>
Panelist: Mr. Joseph Simone
Brief Facts: The Complainants, since 1954, have provided real estate management, brokerage, development, construction, mortgage, and financial services under the LENNAR trademarks for many years. The First Complainant has an extensive portfolio of trade mark registrations incorporating the LENNAR mark, including the US trademark, registered on June 27, 2006 and July 29, 2008. The Second Complainant is an authorized licensee of the First Complainant for the LENNAR marks and also owns the domain name <lennar .com> and operates the associated website. The disputed Domain Name was registered on March 11, 2025, and initially resolved to a parking page before later displaying an error page. The WHOIS disclosed by the Registrar, the Respondent’s email address is […]@lennar.com, which appears to be a corporate email address of the Complainants.
The Complainants alleges that there is no evidence to suggest that the Respondent has used, or has undertaken any demonstrable preparations to use, the disputed Domain Name in connection with a bona fide offering of goods or services. The Panel issued a Procedural Orders requiring the Complainants to clarify whether they have any relationship with the Respondent and if the Respondent registered the disputed Domain Name on the Complainants’ behalf. In response to the Procedural Orders, the Complainants have confirmed that the Respondent was an employee of the Complainants, but is no longer with the Complainants. The Complainants have attempted to ask the Respondent to transfer the disputed Domain Name to the Complainants without success. The Complainants believe that the registration was in bad faith due to the Respondent’s refusal to transfer the disputed Domain Name. The Respondent did not reply to the Complainants’ contentions.
Held: While the Respondent has not appeared in this matter, the Panel has reservations about whether the Complainants have proven bad faith registration and use of the disputed Domain Name. Notably, the Complainants were provided with the Registrar’s verification and given the opportunity to comment on the issue, and could have explained and provided evidence as to whether the Respondent used an email address, prima facie belonging to the Complainants, to register and use the disputed Domain Name in bad faith.
However, the Complainants did not substantively address this issue and simply responded as follows: “[…] registrant is a former Lennar employee. However, attempts to get the prior employee to transfer the domain to Lennar have gone unanswered and the registrant is no longer employed by Lennar. As such, Lennar has no way to force transfer of the domain via internal channels and believes the registration was in bad faith due to the registrant’s refusal to transfer.”
The Complainants’ claim that “the registration was in bad faith due to registrant’s refusal to transfer” is insufficient to prove that the disputed Domain Name was originally registered in bad faith. WIPO Overview 3.0, section 3.2.1. As such, and in the absence of further evidence, the Panel is not able to conclude that the Respondent registered the disputed Domain Name in bad faith. And as the burden of proving bad faith is on the Complainants, the Panel finds the third element of the Policy has not been established.
Complaint Denied
Complainant’s Counsel: Harwell Campbell, LLP, United States
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: It is interesting to note that the Panel took into consideration, as it should, the evidence contained in the Registrar Verification, which in this case showed that the registrant of the Domain Name used an email address associated with the Complainant – thereby suggesting that the Respondent was or had been associated with the Complainant. The Panel therefore issued two Procedural Orders “to clarify if the Complainants have any relationship with the Respondent and also inviting the Respondent to comment on the Complainants’ submission”, and subsequently, “requiring the Complainants to clarify if the Respondent registered the disputed domain name on the Complainants’ behalf, together with supporting documents and also inviting the Respondent to comment on the Complainants’ submission”.
First, it is important to note that both the Panel’s Procedural Orders followed the best practice, indeed general requirement, that the Respondent be given an opportunity to respond to the Complainant’s answer to the Procedural Order, even where a Respondent has not filed a Response. This is crucial to maintain procedural fairness.
But I find it most interesting that the Panel specifically noted that “the Registrar’s verification shows that the contact email for the disputed domain name is “[…]@lennar.com”, an email address that is clearly associated with the Complainants’ own <lennar.com> domain name”. The Panel further observed that “the Complainants were provided with the Registrar’s verification and given the opportunity to comment on said issues, and could have explained and provided evidence as to whether the Respondent used an email address, prima facie belonging to the Complainants, to register and use the disputed domain name in bad faith”. The Complainant did not address this issue in what could have been an amended Complaint prior to commencement of the proceeding, so the Panelist issued the Procedural Orders as aforesaid. Those Procedural Orders ultimately clarified that the registrant was a former employee who subsequently refused to transfer the Domain Name to the Complainant. Given the foregoing, the Panel correctly concluded that the Complainant had not proven that the registration was done in bad faith considering that the Respondent registered the Domain Name while an employee of the Complainant – ostensibly with the Complainant’s instructions and blessing.
One wonders however why the Complainant stated it “has no way to force transfer of the domain via internal channels” when the Complainant ostensibly has access to all @Lennar.com email addresses and the Disputed Domain Name is registered to that email address meaning that a transfer request would go to an email address that they have control of. Perhaps the Complainant did not want to take such a measure since the Domain Name was registered in the name of their former employee rather than the Complainant itself, notwithstanding the email address.
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.