Respondent Cannot Rely Upon Previous Registrant’s Rights
Sometimes a Respondent will make an argument that is meritless but nevertheless requires attention by the Panelist. Such was the case here, where the Respondent alleged that the Complaint was a “refiled case” despite the fact that the prior case was brought against the previous registrant. As the Panel noted however, “although the disputed domain name might be identical to that which was the subject of the said previous case, and some of the factual background is inevitably inherited therefrom, there is no basis for the Respondent’s argument that the Complaint gives rise to a refiled case as described in Policy jurisprudence” since the prior Complaint was brought against a different party altogether, namely the prior registrant. This is a good reminder to Respondents that purchasing a domain name from the prior registrant starts the clock again, meaning that the new registrant cannot rely on the good faith of the previous registrant. Continue reading commentary here.
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We hope you will enjoy this edition of the Digest (vol. 5.44) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Respondent Cannot Rely Upon Previous Registrant’s Rights (coinflex .com *with commentary)
‣ Telstra Test Requires a Strong Reputation and Impossibility of Conceiving Any Plausible or Actual Good Faith Use (fidelisinsurancecompany .com *with commentary)
‣ Google Fails to Show Rights in ‘NANO BANANA’ Mark (nanobananai .com *with commentary)
‣ Respondent Changed Site to “Create Appearance” of Legitimate Non-commercial Use (beggars .ai *with commentary)
‣ “Impossible to Conclude that Respondent Targeted Complainant’s Trademark” (funnelhacker .com *with commentary)
‣ Domain Registered in 2017, Six Years Before Complainant’s 2023 Trademark Registration (rockrobotics .com *with commentary)
Respondent Cannot Rely Upon Previous Registrant’s Rights
<coinflex .com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The first Complainant, incorporated in Seychelles on December 6, 2018, runs a cryptocurrency derivatives exchange platform under the trade name and mark COINFLEX. The second Complainant is a company incorporated in Hong Kong, China and is a wholly owned subsidiary of the first Complainant. The Complainant’s screenshots show that the said mark was also used on the website for the said platform from at least June 11, 2019, and in the associated domain name, which was the disputed Domain Name. The disputed domain was registered on November 22, 2018, transferred to the Respondent before June 2, 2025, remained inactive after acquisition, and as of Sep 18, 2025, a website was published there per the Complainant’s supplemental filing. The said site is entitled “CoinFLEX Creditors United” and solicits creditors of the Complainant to join a potential lawsuit.
The Complainant asserts unregistered trademark rights in the mark COINFLEX as demonstrated by the use of said mark on the website associated with the disputed Domain Name between June 2019 and March 2023. The Complainant alleges that the Respondent is highly likely to have had knowledge at the time of transfer of the disputed Domain Name, and that there is a risk of use of the disputed Domain Name for phishing or other illegal activities. The Respondent contends that buying the disputed domain from Mark Lamb under a lawful purchase agreement establishes a legitimate interest and a legitimate chain of title, not a trademark-abusive purpose, noting that acquiring domains with common terms or legitimate business names can be bona fide, if there is no intent to exploit the Complainant’s trademark.
The Respondent further contends that its passive ownership and non-misleading use of the disputed Domain Name is indicative of a legitimate interest or rebuts any prima facie case to the contrary, adding that panels under the Policy have recognized that domain investors or buyers holding domain names passively have a legitimate interest. The Respondent adds that even if it was aware of the Complainant’s trademark, this would not be proof of bad faith absent any intent to target the trademark owner, adding that being aware of the history of the mark does not equate to malicious intent. The Respondent concludes that it knew of “CoinFLEX” as a business (not solely as the Complainant’s mark) and purchased the disputed Domain Name as part of that business’s assets or legacy rather than to exploit the Complainant’s rights.
The Panel issued Procedural Order No. 1 to the Parties. This noted that the Panel had decided to accept the Complainant’s supplemental filing dated September 26, 2025, and invited the Respondent to comment thereon, in particular and without limitation: (1) the Complainant’s assertion that the Respondent is not a known creditor of the Complainant. The Respondent should be invited to provide evidence of a demonstrable connection which it has to the Complainant, if any, whether as a creditor or otherwise; and (2) the Complainant’s allegation that the Respondent is engaging in phishing by requesting (on the website associated with the disputed domain name): the full name of certain allegedly interested parties, their CoinFLEX Account ID or one of their deposit addresses. The Respondent did not submit any comments to Procedural Order No. 1 before the deadline of October 16, 2025.
Preliminary Issue – Refiled Complaint: The WIPO Overview 3.0, section 4.18, deals with the circumstances in which a refiled case be accepted. The present case does not concern identical parties to the previously decided UDRP case to which both of the Parties have referred, see: Liquidity Technologies Ltd, and Liquidity Technologies Software Ltd v. Mark Lamb, WIPO Case No. D2024-0456. On the contrary, the Respondent is clear that it is a different person from Mark Lamb, the respondent in the said previous case, and that the Respondent here has acquired the disputed Domain Name by transfer from Mark Lamb in a “legitimate, arms-length transaction.” Although the disputed Domain Name might be identical to that which was the subject of the said previous case, and some of the factual background is inevitably inherited therefrom, there is no basis for the Respondent’s argument that the Complaint gives rise to a refiled case as described in Policy jurisprudence. The Panel will therefore proceed to a Decision on the merits.
Held: The Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name. The Respondent claims it acquired the domain through a legitimate chain of title and can rely on the previous registrant’s rights under Liquidity Technologies Ltd v. Mark Lamb. However, the Respondent’s case on this topic proceeds upon a misunderstanding of the Policy, and of the said decision. Even if the prior registrant had rights, transferring the domain to a third party constitutes a new registration. Thus, the Respondent’s reference to being able to establish rights and legitimate interests via a legitimate chain of title is misconceived. The Respondent’s failure to address the phishing allegation, especially the issues in Procedural Order No. 1, speaks volumes to the Panel.
Further, in the Panel’s opinion, the Respondent’s silence on these matters is sufficient for the Panel to infer that the apparent criticism on the website associated with the disputed Domain Name is more probably than not pretextual, whereby the Respondent cannot avail itself of paragraph 4(c)(iii) of the Policy. The Panel having found that the Respondent has not inherited rights and legitimate interests from the previous registrant, that the criticism on the website associated with the disputed Domain Name is more probably than not pretextual, and that, in any event, the exact match between the disputed Domain Name and the Complainant’s unregistered trademark carries a high degree of affiliation creating an impermissible risk of user confusion through impersonation, the Panel concludes that the Respondent has not rebutted the Complainant’s prima facie case on this topic.
The date on which the Respondent acquired the disputed Domain Name is the date for assessment of the question of registration in bad faith, that is, the “last updated” date in the RDAP data of February 18, 2025. By that date, the Complainant’s rights in its unregistered trademark COINFLEX were well-established, and that the Respondent knew this. The evidence shows that the Respondent was intent on targeting such mark unfairly, either for phishing purposes under the guise of providing noncommercial criticism, or by impersonating the Complainant through use of an exact match of such mark to provide noncommercial criticism and publicity for a forthcoming lawsuit. The Panel is satisfied that this cannot constitute registration and use of the disputed Domain Name in good faith in all of the circumstances of this case.
Transfer
Complainant’s Counsel: Tanner De Witt, Hong Kong, China
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Sometimes a Respondent will make an argument that is meritless but nevertheless requires attention by the Panelist. Such was the case here, where the Respondent alleged that the Complaint was a “refiled case” despite the fact that the prior case was brought against the previous registrant. As the Panel noted however, “although the disputed domain name might be identical to that which was the subject of the said previous case, and some of the factual background is inevitably inherited therefrom, there is no basis for the Respondent’s argument that the Complaint gives rise to a refiled case as described in Policy jurisprudence” since the prior Complaint was brought against a different party altogether, namely the prior registrant. This is a good reminder to Respondents that purchasing a domain name from the prior registrant starts the clock again, meaning that the new registrant cannot rely on the good faith of the previous registrant.
It appears that the Respondent’s failure to respond to the Procedural Order was a big reason why the Panel was able to find for the Complainant on the balance of probabilities. As the Panel noted, “the disputed domain name claims to be soliciting litigants for an action, apparently to be brought against the Complainant or a related party [and] it also makes certain allegations relating to a particular person which it appears to indicate is or was a board member of the Complainant”.
The Panel therefore noted that “this opens the question of whether the Respondent may be making a legitimate non-commercial or fair use of the disputed domain name”, and invited the Respondent to make submissions in Response to the Procedural Order: “The Panel made two specific requests to the Respondent in Procedural Order No. 1… namely, that the Respondent should provide evidence of a demonstrable connection to the Complainant, whether as creditor or otherwise, and should address the Complainant’s allegation that the Respondent is engaging in phishing.
The intent behind these requests was to ascertain the genuineness of the criticism on the said website.” The Panel took care to explain that “in this context, ‘genuine’ does not mean that the Panel must assess whether the criticism is true, reasonable or justified, but rather whether the site is or is not ‘pretextual’, meaning whether the views are genuinely held or a pretext for abusive cybersquatting”. Precisely. Nevertheless, the Respondent’s failure to address these matters, enabled the Panel, if not compelled the Panel, to discount and ultimately dismiss the Respondent’s claim of legitimate interest based upon non-commercial use, since without some explanation from the Respondent, its use appeared likely to be pretextual. Without the Respondent’s failure to respond to the Procedural Order, however, it would have been very difficult for the Panel to allow the Complaint since the Respondent had at least superficially made out a case for legitimate interest.
Telstra Test Requires a Strong Reputation and Impossibility of Conceiving Any Plausible or Actual Good Faith Use
<fidelisinsurancecompany .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant claims to have spent thousands of dollars in the United States promoting FIDELIS branded services and has taken significant steps to register and maintain a family of trademark registrations to protect the FIDELIS marks. The trademark registrations includes FIDELIS (registered on April 13, 2010, with first claimed use: 2000) and FIDELIS CARE word marks, (both registered in 2009, with first claimed use in commerce: 1993 and 1994 respectively). Passively holding a confusingly similar domain name can be evidence of bad faith registration for the purposes of Policy ¶4(a)(iii).
The Complainant further alleges that the added descriptive and generic terms “insurance company” limits the probable uses of the domain name to services ancillary to the services associated with the Complainant’s FIDELIS marks, namely, “Administration of health care plans”.
The Complainant alleges that its use and trademark registrations predate Registrant’s ownership of the domain name. Two of Complainant’s trademarks existed over twenty years before the domain name was registered and that the Respondent had constructive notice and is likely to have actual knowledge of the Complainant’s long-time use of the FIDELIS marks before the Respondent registered the Domain Name. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant contends that the Respondent’s passive holding of the confusingly similar Domain Name, registered many years after the registration and first use of the Complainant’s FIDELIS and FIDELIS CARE marks, demonstrates registration and use in bad faith, citing Caravan Club v. Mrgsale, FA 95314 and Sonic Automotive, Inc. v. Thomas Young, FA 2159452. As noted in Section 3.7, UDRP Perspectives, Motsnyi and Muscovitch (July 17, 2024): “passive holding” as a concept is a product of the Telstra case and for it to apply, the Telstra test must be met. Crucially, the Telstra test requires a strong reputation of the mark and the impossibility of conceiving any plausible or actual good faith use of the particular domain name.
The Panel further conducted a search of the USPTO database, which shows many live registrations by third parties for the mark FIDELIS. Accordingly, the Panel finds that the mark FIDELIS, comprising the Latin word for “faithful”, is not alone distinctive of Complainant’s services. The Complainant has provided no evidence of any reputation of its marks and, contrary to the requirements of the Telstra test, it is possible to conceive of many plausible and actual good faith uses of the Domain Name that would not infringe the Complainant’s rights.
Further, the Complainant has provided no evidence in support of its claim that its marks have been used in countries other than the United States. The Panel is not persuaded that the Respondent, located in Italy, was aware of Complainant’s FIDELIS and/or FIDELIS CARE marks when the Respondent registered the disputed Domain Name and finds that, taking all the circumstances of this case into account, the Complainant has failed to show that the Respondent registered the domain name in bad faith. Under these circumstances, the Panel finds that the Respondent’s hitherto passive use of the domain name does not demonstrate registration and use in bad faith.
RDNH: The Panel finds that, through its Counsel, the Complainant must have been aware of the Latin dictionary word “fidelis”, meaning “faithful”, and its use by others in many United States trademarks. The Complainant cited passive holding cases which noted the importance of showing that the mark in question is famous or well-known yet provided no such evidence in relation to any of its marks. Further, the Complainant failed to provide any evidence of its claimed use of its trademarks outside the United States, such as to show a likelihood that the Respondent, in Italy, was likely aware of Complainant’s marks when registering the Domain Name and did so with intent to trade off the reputation of the Complainant’s marks. Under these circumstances, the Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Renee Reuter at Armstrong Teasdale LLP, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: RDNH findings against a Complainant where the Respondent didn’t respond are rare but they do happen on occasion and this is one of them. Here, the Complainant appears to have possibly been able to avoid such a finding, and even possibly to have succeeded in the Complaint, if it had properly marshalled its evidence and arguments. Nevertheless, as the Panel pointed out, the Complainant failed to provide evidence that its mark is famous or well-known despite relying on passive holding, that it had any reputation outside of the United States where the Respondent resides, and failed to address the fact that FIDELIS has a common Latin meaning and is used by many other companies. This is a good reminder for Complainants that even when confronted with apparent non-use of a Domain Name and the likelihood of no response, a Complainant must make out its case, must have a good understanding of the Policy and associated case law, and must anticipatorily address apparent weaknesses in its argument. Had the Complainant done so, it may very well have been able to prove that it was the likely target of the registration since its services are in the insurance field and the Domain Name specifically referenced insurance.
This decision is also notable for its examination of the concept of Passive Holding. The Panel cited UDRP Perspectives at 3.7, to explain the concept of Passive Holding within the context of the Telstra test:
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 criteria:
(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) 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” as a concept is a product of the Telstra case and for it to apply, the Telstra test must be met. Crucially, the Telstra test requires a strong reputation of the mark and 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.
Panels when considering passive holding, must contemplate whether there is any plausible good faith use for the disputed domain name. Where there is, the Telstra test will not have been met and passive holding will not amount to bad faith use.
It is gratifying to see good use made of UDRP Perspectives, which fellow counsel and Panelist Igor Motsnyi and I work on. Passive Holding and Telstra are among the most misunderstood and misapplied concepts amongst UDRP Panelists, however recently we have seen a greater understanding of their requirements and nuances.
Google Fails to Show Rights in ‘NANO BANANA’ Mark
Google LLC v. Ping Lin, NAF Claim Number: FA2509002179459
<nanobananai .com>
Panelist: Mr. David E. Sorkin
Brief Facts: The Complainant uses NANO BANANA in connection with artificial intelligence image editing and generation software, publicly made available on August 12, 2025. The Complainant asserts common law trademark rights in NANO BANANA arising from use and public recognition, including attention received prior to launch. The disputed Domain Name was registered on August 14, 2025 and does not currently resolve to a website. The disputed Domain Name was used to redirect to the website at <nanobanana .ai>, which promoted a competing commercial AI-powered image generation offering under the identical name, “Nano Banana.” A small disclaimer was added to the website shortly after the Complainant sent a demand letter to the Respondent. The Respondent then replied to the demand letter, asserting a right to use the “Nano Banana” because the Complainant did not own a corresponding trademark registration.
The Complainant alleges that the Respondent has also promoted the disputed Domain Name on the X platform, where it has reposted genuine posts from the Complainant and its employees in a manner that falsely suggests an affiliation with the Complainant. The Complainant further alleges that the Respondent has engaged in similar conduct targeting a different trademark owned by the Complainant. The Complainant released Veo 3, the third iteration of this software, in May 2025, for which it owns several trademark registrations. The Complainant also alleges that the Respondent registered the domain name <veom .ai> two weeks after the Complainant’s launch of Veo 3, and alleges that the Respondent has used that domain name to promote competing AI-powered software in a manner falsely suggesting a connection with the Complainant. The Respondent failed to submit a Response in this proceeding.
Held: To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. The fact that a respondent has targeted the putative mark is relevant but not sufficient to demonstrate acquired distinctiveness. See, e.g., Altera Digital Health Inc. v. felton lewis / FEBLABREC, FA 2111681 (Forum Sept. 12, 2024) and Alliant Energy Corp. v. Billy Wood, FA 1959495 (Forum Sept. 13, 2021).
The Panel notes that the Complainant does not appear to have made any public assertion of trademark rights in NANO BANANA. The evidence offered by the Complainant of potential relevance to its rights in NANO BANANA includes few printouts, and a recent article. The printout of its Nano Banana web page does not include any such assertion of rights, and NANO BANANA does not appear on the lengthy “[i]llustrative, non-exhaustive list of trademarks owned by Google LLC”. Considering the limited evidence offered by the Complainant regarding sales or advertising under the putative NANO BANANA mark and public recognition thereof, together with the Complainant’s own public use of the term unaccompanied by any claim of trademark rights, the Panel is inclined to find that the Complainant has failed to meet its burden of demonstrating rights in a relevant mark.
Complaint Denied
Complainant’s Counsel: James R. Davis of Morgan, Lewis & Bockius LLP, United States
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Proving common law trademark rights does require strong and serious evidence of use and recognition of the trademark by customers. Nevertheless, as noted in UDRP Perspectives at 1.4, the evidence required is directly proportional to the degree of non-distinctiveness of the mark at issue. So, Panels should be wary of easily conferring common law rights where the claimed trademark comprises what appears to be a mere common descriptive term and in such circumstances should require evidence at the very highest end of the spectrum. However, where a domain name corresponds to a particularly distinctive term, the evidentiary burden can be substantially lower. One must bear in mind that the primary purpose of the UDRP is not to determine who has trademark rights; that is merely a part of the process in reaching the ultimate goal which is to root out cybersquatting. So where a Complainant is able to demonstrate that its claimed common law trademark is a very distinctive term, like “NANOBANANA” for example, has some reputation even if short lived, a Complainant may nonetheless meet the threshold for proving common law trademark rights for the purpose of the UDRP. Recall that “announcement” cases with “nascent trademark rights” have historically qualified under the UDRP despite perhaps not strictly meeting the otherwise substantial threshold of common law rights in a trademark law context.
Nevertheless, Complainants must take their obligations to prove common law rights, even under a possibly lower UDRP-focused threshold, seriously. Here, the Panel noted that certain apparent failures in the Complainant’s presentation of evidence, including “limited evidence offered by Complainant regarding sales or advertising” and “Complainant’s own public use of the term unaccompanied by any claim of trademark rights”. Had the Complainant anticipatorily or better addressed these issues, perhaps it may have prevailed in the Complaint. After all, it is easy to appreciate that the Respondent’s registration of the Domain Name was very unlikely to have been a mere coincidence
Respondent Changed Site to “Create Appearance” of Legitimate Non-commercial Use
Beggars Group Limited v. Lo Fang (Matthew Jordan Hemerlein), WIPO Case No. DAI2025-0046
<beggars .ai>
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainant is in the music publishing business, and operates the independent music labels 4AD, Matador, Tough Trade Records, XL Recordings and Young. Its formation began in 1973 as a record shop called “Beggars Banquet” in London, the United Kingdom, and the business was transformed into a record label in 1977. The Complainant is the owner of the registrations for BEGGARS, that includes Chinese trademark (February 13, 2014 and August 7, 2014); International and EU trademarks for BEGGARS GROUP (January 20, 2005, and January 18, 2006). The Complainant operates its official websites at the domain names <beggars .com> and <beggarsmusic .com>. The disputed Domain Name was registered on April 9, 2025 and resolves to a website that contains critical commentary of the Complainant and a disclaimer that it is not affiliated with the Complainant or any of its labels.
The Complainant alleges that the disputed Domain Name is being used to publish unsubstantiated and unclear allegations against the Complainant with the purpose to disrupt its business. The Complainant also notes that the Respondent has recently launched new content called “Blue Film”, and this content is featured on the Respondent’s website with the notice “Blue Film Returns First single #88 drops 08/08/25”. According to the Complainant, there is no logic in this content being on the homepage of the Respondent’s website, as it has nothing to do with the Complainant and has no place on a Beggarsbranded website. The Complainant maintains that the creation of the Respondent’s website is part of a marketing campaign to promote his “Blue Film Returns” title and attract the interest of Internet users to this new content.
The Respondent contends that the disputed Domain Name was lawfully registered and is used as part of a non-commercial artistic and documentary project exploring the Respondent’s own documented negative experiences with the Complainant, and that the content on his website is noncommercial, clearly disclaimed, and expressly critical, functioning as a work of public commentary and artistic expression. The Respondent further contends that panels acting under the Policy have emphasized that the impersonation test requires a holistic assessment of both domain name composition and actual website content, which includes prominent disclaimers, noncommercial nature, and the expressive context of the website, and not just the domain string itself.
Held: Here, the disputed Domain Name incorporates the word element of the Complainant’s combined trademark BEGGARS and the dominating element of its BEGGARS GROUP trademark and of its trade name, without including any other elements that may suggest that it is related to a criticism website. Its composition thus impersonates the Complainant or suggests sponsorship or endorsement by it. The Respondent does not explain why it chose a domain name that includes only the distinctive and dominating element of the Complainant’s name, trademark and domain name, without including any elements suggesting free speech or criticism of the Complainant. The Respondent maintains that the disputed Domain Name is being used as part of a non-commercial artistic and documentary project exploring the Respondent’s own negative experiences with the Complainant, and that the content on his website is non-commercial, clearly disclaimed, and expressly critical, functioning as a work of public commentary and artistic expression. The evidence in the case does not support the Respondent’s contentions.
At the time of filing of the Complaint, the website at the disputed Domain Name advertised on its homepage the AI-powered detection and intelligence artist rights services provided by an agency related to the Respondent. The homepage of the website also featured the new title “Blue Film Returns”, which was recently released by the Respondent independently of the Complainant. The Respondent states that this was a previous version of the website at the disputed Domain Name. After receiving notice of the dispute, he removed these promotions and added a disclaimer. It appears more likely than not that these changes were intended to make the site appear non-commercial and critical, to serve as a defence under paragraph 4(c)(iii) of the Policy. Further, there is no dispute between the Parties that they had a contractual relationship in the past, and that the Respondent was aware of the Complainant and its BEGGARS trademark when registering the disputed Domain Name. The Respondent’s overall conduct supports a finding of bad faith registration and use of the disputed Domain Name under paragraph 4(b)(iv) of the Policy.
Transfer
Complainant’s Counsel: Sipara, United Kingdom
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel did a good job here in dismantling what appeared to be a contradictory and pretextual effort to target the Complainant. As noted by the Panel, “The Respondent maintains that the website at the disputed domain name sells nothing, carries no advertisements, and does not promote or link to monetized platforms” however as also noted by the Panel, “The evidence in the case does not support the Respondent’s allegations….At the time of filing of the Complaint, the website at the disputed domain name advertised on its homepage the AI-powered detection and intelligence artist rights services provided by an agency related to the Respondent (evident from the email address used by him in this proceeding).”
The Panel noted that the Respondent’s allegation that he registered and is using the disputed domain name for legitimate non-commercial free speech and criticism is contradicted by the evidence and by the Respondent’s own conduct prior to and following the receipt of a notice of the present dispute, which support a very different conclusion – that the Respondent has targeted the Complainant and its BEGGARS trademark with the registration and use of the disputed domain name in an attempt to attract traffic and advertise his own products and services for commercial gain, using the secondary-placed criticising content only as a pretext. Well said. The UDRP’s protection of non-commercial or fair use of a Domain Name is crucial, but it is also subject to misuse and Panelists must take great care to separate those genuine cases from those pretextual cases, as the Panelist did here.
“Impossible to Conclude that Respondent Targeted Complainant’s Trademark”
Etison LLC dba ClickFunnels v. Michael J Connolly, Power Curve Media, WIPO Case No. D2025-2514
<funnelhacker .com>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant claims that its mark ‘FUNNEL HACKER’ has been widely and consistently used in commerce since 2014, establishing common law trademark rights prior to the Respondent’s registration of the disputed domain. The Complainant owns the rights to the trademark FUNNEL HACKER registered with USPTO on Mar. 26, 2024, claiming first use since Feb. 03, 2015. The disputed Domain Name was registered on March 10, 2014. The Complainant alleges that it is clear from the Respondent’s website to which the disputed Domain Name resolves that the Respondent was not only familiar with the FUNNEL HACKER mark, but intentionally adopted a domain name incorporating the FUNNEL HACKER mark in order to create an association with the Complainant and its established brand identity.
The Respondent contends that he registered the domain prior to any knowledge of the Complainant’s use of the term, and nearly nine years before any federal trademark registration was issued and that the Complainant’s claim that the Respondent ‘clearly attempts to impersonate through the use of the disputed domain’ is blatantly false. The Respondent further contends that “the term ‘funnel hacker’ is descriptive and was independently coined by the Respondent prior to the Complainant’s widespread use in commerce. The Respondent’s inspiration for the domain came from the contemporaneous rise of the term ‘growth hacking’ and the Respondent’s own role building custom sales funnels and copy for small businesses using Infusionsoft.”
Held: In this proceeding, the Complainant has provided no evidence of use of the FUNNEL HACKER mark prior to the February 3, 2015 first-use date stated in its USPTO application. Nor is there evidence that the Complainant used the mark at the time the Domain Name was registered or that the mark was well-known then or thereafter. On this record, the Panel concludes that the Complainant has not met its burden to show bad-faith registration by the Respondent. Further, the sparse record in this case shows that the Domain Name was registered on March 10, 2014, and that the Complainant’s claimed first use of the FUNNEL HACKER mark (according to the USPTO registration) was nearly a year later, on February 3, 2015.
The Complainant alleges that its FUNNEL HACKER mark has been “widely and consistently used in commerce since 2014”, but the Complainant provides no evidence of widespread use and no evidence of any use in 2014. Without further information, it is impossible to conclude that the Respondent targeted the Complainant’s trademark when he registered the Domain Name. As such, the Complaint must fail.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: A clear and unequivocal decision by the Panelist. Well done.
Domain Registered in 2017, Six Years Before Complainant’s 2023 Trademark Registration
Rock Robotic Inc v. G O, Phoenix LiDAR Systems, WIPO Case No. D2025-3629
<rockrobotics .com>
Panelist: Mr. Evan D. Brown
Brief Facts: The Complainant is in the business of providing Lidar apparatus. It owns the trademark ROCK ROBOTIC, for which it enjoys the benefits of registration (United States Reg. No. 7059676, registered on May 23, 2023; first use: August 1, 2020). The disputed Domain Name was registered on July 27, 2017. The Complainant alleges that the Respondent has set the disputed Domain Name to redirect to the Respondent’s website, who is also in the business of providing Lidar apparatus. The Respondent has asserted, amid various communications with the Center from both parties, that it is not the proper Respondent to these proceedings because it transferred the disputed Domain Name prior to the initiation of these proceedings. Though this appears to be a matter of controversy between the Parties, the Panel notes that the Registrar has confirmed the Respondent is the current registrant of the disputed Domain Name.
Held: The Complainant seems to anticipate the problem posed by the fact that the disputed Domain Name was registered in 2017, while the Complainant’s trademark rights in the ROCK ROBOTIC mark did not accrue until at least 2020. The Complainant states that “[t]o the extent that the domain name was initially registered or subsequently transferred after [the] Complainant’s trademark rights accrued through use beginning in 2020, such timing further evidences bad-faith registration.” The Complainant also suggested it would amend the Complaint, if necessary, to confirm the chronology. However, the record does not indicate that any such amendment was filed.
The disputed Domain Name was registered on July 27, 2017. This registration predates the issuance of the Complainant’s trademark registration (issued on May 23, 2023) by almost six years. Nor does the record contain any evidence that the Complainant acquired any common law rights in the mark prior to the alleged date of first use of August 1, 2020. Accordingly, the Panel finds that the Complainant has not demonstrated that it had trademark rights in the ROCK ROBOTIC mark at the time the disputed Domain Name was registered. For these reasons, the Panel cannot find that the Respondent registered the disputed Domain Name in bad faith.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Well done. The Panel reached the only conclusion that it reasonably could, given the absence of any evidence of trademark rights pre-existing the apparent trademark registration date. These kind of situations – where a more recent transfer is suspected – can be difficult for Complainants. Complainants would be well advised to use every available tool to build a circumstantial, if not actual case, for a recent transfer, given that remarkably – and unlike in real estate – there is no authoritative title registry for domain names.
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.