What are we even talking about anyway?
by Mr. Sten Lillieström (LinkedIn)
When UDRP panels decide whether a domain name registration is likely to be an effect of cybersquatting, they rely on legacy trademark law terminology. At the same time, they do not have access to the full array of resources at the disposal of a court of law, should square terminology alone leave something to be desired… Continue reading the article here.
We hope you will enjoy this edition of the Digest (vol. 5.17) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Respondent Provided No Credible Explanation (libbs .com *with commentary)
‣ Law Firm Brings Fifth RDNH Case (soskin .com *with commentary)
‣ Complainant Must Fulfil the Standing Requirement of the Policy (genomedx .com *with commentary)
‣ Close Call: JD Sports v. JDSport .com (jdsport .com *with commentary)
‣ Complainant Fails to Demonstrate Common Law Rights Prior to Domain Name Registration (fashiongogo .com
Respondent Provided No Credible Explanation
Libbs Farmaceutica Ltda v. 李林阳 (Li Lin Yang) Case No. D2025-0633
<libbs .com>
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is a Brazilian pharmaceutical company and holds several Brazilian trademark registrations for LIBBS, the earliest of which was registered on May 3, 1961. The Complainant uses the Domain Name <libbs.com.br> (January 30, 1998) as its official website. The disputed Domain Name, registered on September 16, 2022, resolved to a website offering web application development and design services as of March 29, 2024, and received a cease-and-desist letter from the Complainant on December 5, 2024. The Complainant filed an earlier complaint with WIPO (Case No. D2025-0143), but after the filing fee was not received, the Center issued a notice of deemed withdrawal on February 13, 2025. The original registrant had responded through a legal representative before the withdrawal.
The Respondent claims to have bought the disputed Domain Name from a US-based broker on February 14, 2025, for US$1000, after an initial inquiry a month earlier. The Complainant alleges that after the original registrant learned of the Complainant’s arguments, all the disputed Domain Name information except the phone number was changed to conceal the registrant’s identity as well as content, suggesting the Respondent is practising passive holding, which prevents the Complainant from fully enjoying its trademark and related rights. The Complainant also points out that the blog posts on the current website seem to be a copy from Wikipedia. The former website was not functional, and the disputed Domain Name was advertised by the prior registrar for almost US$ 400,000.
The Respondent contends that the disputed Domain Name was acquired through a regular domain name broker. When the Respondent purchased it, he was attracted to the meaning of “Li+BBS”. Given that his family name is “李” (pronounced “Li”), and he belongs to a certain branch of the Li family, he had the idea of creating a Li family forum. The Respondent further contends that the Complainant does not even operate a business in China. Enquiries in DeepSeek Chat seeking clarification of “LIBBS” or “libbs” do not reveal any content related to the Complainant’s trademark or business. The Respondent’s original intended use and his actual use of the disputed Domain Name are both reasonable, and he has no intention to seek the Complainant’s commercial interests or damage the reputation of its trademark.
Held: Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name. Turning to the Respondent, he alleges that he conceived of the disputed Domain Name as a combination of his family name “Li” and the letters “BBS” that would correspond to his eventual blog title, meaning “Li Family Forum”. In support, he provides a link to a Chinese Wikipedia entry showing that “BBS” is an acronym for a “Bulletin Board System,” popular for early online communication, but the term fell out of use in China by 2012. The Respondent does not explain why he uses it for a 2025 blog that makes no reference to a BBS. In view of these circumstances, it appears more likely that the blog title and content were chosen to match the disputed Domain Name rather than the other way around. Accordingly, the Panel does not consider that the Respondent has succeeded in rebutting the Complainant’s prima facie showing under this element of the Policy.
Further, the disputed Domain Name was acquired by the Respondent in 2025, years after the registration of the Complainant’s LIBBS trademarks. The disputed Domain Name is identical to the LIBBS trademark, yet it appears that LIBBS has no meaning besides as a reference to the Complainant and its products. Even though the Complainant is based in Brazil, whereas the Respondent is based in China, the Complainant has used its trademark online in its domain name and website for a long time before the registration of the disputed Domain Name. The evidence of online trademark searches in China, the United States, and the European Union reveals no other LIBBS trademarks. The Respondent provides no credible explanation for his choice of the disputed Domain Name. The Panel finds that the most likely explanation of these circumstances is that the Respondent knew of the Complainant or its mark, or both, at the time when he registered the disputed Domain Name.
The Respondent presents evidence that he acquired the disputed Domain Name via a domain name broker for US$ 1,000. However, the Response does not acknowledge or explain why the Respondent shares a contact telephone number with the original registrant if the transfer was at arm’s length, despite the Panel issuing an Order allowing further submissions on this point. Accordingly, the Panel finds the most likely explanation for their telephone numbers to be that the Respondent and the original registrant are related in some way, if not under common control. Given the speed with which the registration and use of the disputed Domain Name changed after the original complaint was withdrawn, and the likely connection between the original registrant and Respondent, it is reasonable to infer that the transfer and new website aimed to avoid the Policy’s application. This is a further indication of bad faith.
Transfer
Complainant’s Counsel: Gusmão & Labrunie Advogados, Brazil
Respondent’s Counsel: Self-represented
Comment by ICA Director, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
The Libbs.com UDRP decision presents a nuanced situation where the historical ownership and recent transfer of the domain name played a crucial role in the panel’s findings. The domain, originally registered in 2000 by a German registrant for legitimate purposes, was acquired in 2025 by a Chinese registrant, who claimed a non-commercial use related to his family name “Li” combined with “BBS” as a forum. Despite this explanation, the panel found that the use of the domain as a Li Family Forum was likely a pretext, given the timing of the transfer immediately after the original complaint was withdrawn due to non-payment of fees, and the shared contact telephone number between the original and current registrant. This pattern suggested an attempt to shield the domain from the UDRP process, thus constituting bad faith under Policy paragraph 4(a)(iii).
The Complainant, Libbs Farmaceutica Ltda, a well-established Brazilian pharmaceutical company with trademark rights in multiple jurisdictions, demonstrated that “LIBBS” is a distinctive mark associated with their business and that the disputed domain name is identical to their trademark. Although the Respondent argued legitimate interest based on his family name and intended use, the panel noted the lack of credible evidence supporting this claim. The blog content was minimal, copied partly from Wikipedia, and bore no genuine connection to the domain name as a whole or to any commercial activity by the Respondent. Moreover, the Respondent’s failure to clarify critical points, especially regarding the shared telephone number and the suspicious timing of events, weakened his position further.
Importantly, this case illustrates how panels view last-minute efforts by respondents to justify domain registration as legitimate interest when such actions coincide with domain disputes. Here the Complainant filed an earlier complaint in January but then failed to pay the filing fees such that WIPO deemed the complaint to be withdrawn. Yet the domain registrant was now on notice of the Complainant’s allegations that the disputed domain name violated its rights.
Even if the domain registrant’s interest in Libbs .com was entirely innocent, now that it recognized that its rights to the domain name were in jeopardy due to a UDRP proceeding, it may have felt an urgency to better establish an argument for its legitimate interest in Libbs .com by commencing a use that was connected to the term “LIBBS”. Yet what unsophisticated respondents unfortunately fail to realize is that such efforts will usually backfire against them. Attempts to establish a post hoc legitimate use are often seen as pretexts rather than genuine interests, particularly if the Panel has other reasons to be suspicious of the Respondent’s motives.
I find this to be a particularly interesting case because the evidence was not definitive. A Panel could have weighed the evidence and found adequate support for denying the complaint rather than for ordering a transfer. The Libbs .com domain name was approximately 25 years old. The Complainant had coexisted with a third-party owning the domain name for a quarter of a century and apparently raised no objection. The Respondent acquired the domain name on the open market when it became available again. There was no use of the domain name that clearly targeted the Complainant. Merely offering an aged domain name for sale when there was demonstrated third-party legitimate uses for the domain name, not least as evidenced by the prior German registrant, is not strong evidence of bad faith targeting the Complainant. The Complainant has a commercial interest in owning the dot-com domain name matching its mark which might have motivated the filing of the complaint rather than any harm caused by or bad faith actions on the part of the Respondent.
Yet, evidence can be weighed variously. Given the wide discretion afforded to Panelists and the lack of clear guidelines within the Policy itself, the UDRP often functions as a “smell test”. Panels will sniff the evidence for the odor of bad faith and will decide accordingly. Here, the decision reflects that even if there is no direct use targeting the Complainant’s market or brand, offering a domain identical to a well-known mark for sale at a substantial markup can be inferred as bad faith, especially when coupled with suspicious circumstances around registration and transfer.
Ironically, the Respondent’s actions, despite being deemed to have been in bad faith with respect to the Complainant, may have been helpful to the Complainant. The Complainant presumably long-coveted the LIBBS .com domain name, yet for 25-years had not itself succeeded in registering it. The Respondent succeeded where the Complainant had failed and expended its funds to acquire the domain name. Yet by offering it for sale, the Respondent enabled the Complainant to seize through a UDRP action this domain name that will deliver tremendous value to the Complainant.
Law Firm Brings Fifth RDNH Case
Cosmetic Research Group v. Robert Soskin, WIPO Case No. D2025-0784
<soskin .com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant is a French simplified joint stock company engaged in manufacturing, purchasing, selling, importing, and exporting cosmetic products, as well as providing training, professional studies, and advice. The Complainant owns a range of trademarks for the mark SOSKIN. Several of these predate the Respondent’s registration of the disputed Domain Name, including a French Trademark (1992) and an International Trademark (1994 – covering some 29 territories, but excluding the United States). The Complainant is also the owner of a US Trademark for the word mark SOSKIN (registered on January 23, 2007; claimed first use dated April 2003). The disputed Domain Name, registered on January 30, 1998, appears to have been originally registered by the Respondent, who, as the Panel has no reason to doubt, has borne the surname “Soskin” since birth.
According to the Complainant’s screenshot dated February 3, 2025, the website associated with the disputed Domain Name consists of sponsored advertising links in French, which appear to relate to the Complainant’s line of business. On April 6, 2025, the Panel visited the disputed domain’s website from the UK and saw different sponsored ADs than the Complainant, but still related to the Complainant’s business. The Respondent produces a screenshot of the website associated with the disputed Domain Name taken by the “Wayback Machine” dated December 24, 2023, which features a similar page provided by the Registrar, although the advertising links do not appear to be directly related to the Complainant’s line of business, and, given the location of the “Wayback Machine”, may have been geo targeted to the United States.
The Complainant alleges that the disputed Domain Name reproduces its trademark identically, and that the disputed Domain Name is being used for commercial gain to target such trademark by way of advertising links. The Domain Name is also set up for email, which may suggest bad faith as it could enable fraudulent emails. The Respondent contends that it registered the disputed Domain Name on its original registration date for personal and family email purposes, with various members of its family using a corresponding email address across some 27 years, all of whom share the “Soskin” last name. The Respondent further contends that it has been and is commonly known thereby, adding that it makes a legitimate noncommercial use of the disputed Domain Name without any intent for commercial gain or misleadingly to divert consumers.
Held: The Complainant misreads the cases it cites – WIPO Case No. D2001-0602 and D2012-1685, wherein the alleged surname use suggested commercial activity that the respondents could not prove was genuine or unrelated to the complainant’s mark. Here, the Respondent has used the disputed Domain Name for email purposes since 1998, and, at least in 2011, for a family information website, all in association with its surname. There is clearly an issue with the paid advertising links but this cannot override the Respondent’s extremely long standing legitimate interest in the disputed Domain Name arising from its registration and use in connection with the surname connotation. Further, the Panel finds that the Respondent registered the disputed Domain Name in 1998 before being aware of the Complainant or its trademark. For the above reasons, the Panel also finds that the disputed Domain Name was not registered in bad faith.
The present use of the disputed Domain Name does, however, give cause for concern. The Respondent is at pains to state that it has in no way directly selected or caused the paid advertising which targets the Complainant’s mark to appear on the website associated with the disputed Domain Name. The Panel has no reason to disbelieve this assertion. The problem for the Respondent is that these advertisements are still being displayed on its website, whether the Respondent has had any direct input on or control of this or not. However, the Panel notes that the general tenor of the Respondent’s evidence and submissions suggests that it was most probably unaware of the issue until the Complaint was filed. Overall, the evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark.
RDNH: All of the surrounding evidence, which was available to the Complainant after the Registrar verification, should have painted a picture indicating that the disputed Domain Name was registered and had been held by a person bearing a matching surname for some 27 years, and had been used for private family purposes including an email configuration, and (occasionally) a family website. Consequently, the likely explanation of why the website associated with the disputed Domain Name appeared to be targeting the Complainant by way of sponsored links should have been straightforward for the Complainant to identify when placed in the overall context.
Even if the Complainant was in any doubt as to the Respondent’s likely bona fides, it would have been a simple matter for the Complainant to have reached out to the Respondent in the first instance rather than proceeding with the Amended Complaint. A civilized discussion between the Parties, which the tenor of the Response suggests would have ensued, might well have given rise to the Respondent’s present offer to remove the “under construction” page at a much earlier stage. This would also have avoided the need for the Respondent to have to engage in the present administrative proceeding, with consequent legal expenses, time and inconvenience.
Complaint Denied (RDNH)
Complainant’s Counsel: Novagraaf France, France
Respondent’s Counsel: Westman, Champlin & Koehler, P.A., United States
Comment by ICA General Counsel, Zak Muscovitch: First, I want to commend the Panel on an exceptionally well-reasoned and well-written decision. I do not want to take the focus away from that, but I do have to point out that the Complainant’s representative has won the unfortunate distinction of possibly setting the world record for bringing abusive Complaints, at five (see; https://udrp.tools/?s=4aed66e9). And came very close to a sixth if the dissenting Panelist’s view had prevailed in a sixth case.
Complainant Must Fulfil the Standing Requirement of the Policy
Veracyte, Inc. v. Alex Kolomeets, NAF Claim Number: FA2503002147139
<genomedx .com>
Panelist: Mr. David E. Sorkin
Brief Facts: The Complainant claims to be a global diagnostics company that provides genomic testing products. The Complainant asserts common law trademark rights in GENOMEDX arising from the use of that term by a predecessor in interest, GenomeDx Biosciences Inc. GenomeDx Biosciences Inc. changed its name to GenomeDx Inc. in July 2018 and then to Decipher Biosciences, Inc. in January 2019. It was acquired by the Complainant in March 2021, at which time its name was changed yet again, to Veracyte SD, Inc., and its trademark rights and domain names were assigned to the Complainant. The Complainant states that GenomeDx Biosciences Inc. used GENOMEDX as a brand name and mark for proprietary tests for cancer diagnostic and prediction beginning at least as early as 2006.
The Complainant points out that the disputed Domain Name <genomedx .com> was registered by an employee of GenomeDx Biosciences on November 7, 2006, and was used by the company for a website promoting its GENOMEDX testing products. The Complainant alleges that this employee subsequently transferred the account associated with the domain name to another employee (apparently Respondent), who later left the company without transferring the account or providing the Complainant with access to the domain name. The Complainant further alleges that the Respondent is using the Domain Name to maintain a website that displays the GENOMEDX mark and purports to be the website of GenomeDx Biosciences Inc. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant asserts that it has common law trademark rights in GENOMEDX based upon its claim that the term was used by a predecessor in interest beginning in 2006. However, the Complainant offers no evidence that GENOMEDX was used as a source identifier rather than merely a trade name, nor of any use whatsoever since early 2019. The Complainant’s own press release announcing its acquisition of Decipher Biosciences, Inc., in March 2021, makes no mention of GENOMEDX, although it does include an extensive list of other registered and common law marks owned or claimed by both the Complainant and its new subsidiary.
Nor does the Complainant offer any evidence of the acquired distinctiveness that is required to establish common law rights. See WIPO Overview of WIPO Overview 3.0, para 1.3 and UDRP Perspectives on Recent Jurisprudence, Para 1.1. Accordingly, the Panel finds that Complainant has not demonstrated the requisite rights in a relevant trademark. As this conclusion is dispositive of the present dispute, the Panel need not address the other elements set forth in paragraph 4(a) of the Policy.
RDNH: 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, a finding of RDNH may be appropriate. The Complainant submitted no evidence of the acquired distinctiveness required to support a claim of common law trademark rights, and the predecessor in interest through which the Complainant claims to have acquired such rights appears to have abandoned the putative mark several years ago, prior to its acquisition by the Complainant. See WIPO Overview 3.0, para 4.16 and UDRP Perspectives on Recent Jurisprudence, Para 4.2.
Under the circumstances, and noting that the Complainant is represented by professional trademark counsel, the Panel concludes that the Complainant or its counsel must have known that it did not have a colorable claim under the Policy. See Zelig AI, LLC v. dong xuyan, supra; Hallmark Licensing, LLC & Hallmark Cards, Inc. v. Privacy Administrator / Anonymize, Inc., FA 1941032 (Forum June 1, 2021) (Levine, dissenting in part) (noting consensus view that legal counsel are expected to have working knowledge of UDRP jurisprudence). The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Rosaleen Chou of Knobbe, Martens, Olson & Bear, LLP, United States
Respondent’s Counsel: No Response
Comment by ICA Digest Editor, Ankur Raheja:
This interesting decision reiterates a well-established principle under the Policy concerning the Complainant’s duty to prove rights in a mark, either through a registered trademark or by demonstrating unregistered (common law) rights. The first clause of the Policy acts as a standing requirement of the Policy, see WIPO Overview, Para 1.7. Herein, the Complainant claims “common law trademark rights in GENOMEDX based upon its claim that the term was used by a predecessor in interest beginning in 2006”. However, the Complainant provides no evidence to support its common law rights arguments other than the fact that it was used as a trade name by its predecessor. The facts show that although the Complainant claims use by its predecessor since 2006, the predecessor had already changed its name to Decipher Biosciences, Inc. in January 2019, and the Complainant acquired the business in March 2021. The Panel states:
“The Complainant offers no evidence that GENOMEDX was used as a source identifier rather than merely a trade name, nor of any use whatsoever since early 2019. Nor does the Complainant offer any evidence of the acquired distinctiveness that is required to establish common law rights. See WIPO Overview of WIPO Overview 3.0, para 1.3 and UDRP Perspectives on Recent Jurisprudence, Para 1.1. Accordingly, the Panel finds that Complainant has not demonstrated the requisite rights in a relevant trademark.”
Accordingly, the Panel dismissed the Complaint under the first clause itself due to the Complainant’s failure to meet the standing requirement of the Policy. Further, the Panel puts reliance on UDRP Perspectives on Recent Jurisprudence, Para 1.1, in addition to WIPO Overview 3.0. In particular, the UDRP Perspectives, Para 1.1 states:
“For a Panel to award common law rights to any expression, thereby granting it the same status as a registered trademark, without proper evidence would be improper and unjust. To support a claim of common law trademark rights, the Complainant should present strong and serious evidence of constant use by the Complainant and recognition of the trademark from the customers of the associated goods or services. Proof of common law trademark rights cannot be based on conclusory allegations. A Complainant will have failed to establish common law rights in its mark where it makes mere assertions of such rights, which are insufficient without accompanying evidence to demonstrate that the public identifies a Complainant’s mark exclusively or primarily with a Complainant’s products.”
Visit here for the UDRP Perspectives, by Zak Muscovitch and Igor Motsnyi.
Close Call: JD Sports v. JDSport .com
JD Sports Fashion PLC v. Mira Holdings, Inc., WIPO Case No. D2025-0375
<jdsport .com>
Panelists: Mr. Willem J.H. Leppink (Presiding), Ms. Marilena Comanescu and Mr. Matthew Kennedy
Brief Facts: The Complainant, founded in North West England in 1981, is a global omnichannel retailer of sports fashion wear and outdoor brands. Today, the Complainant operates over 4,500 stores across 36 countries with a strong presence in the United Kingdom, Europe, North America, and Asia Pacific. The Complainant has several trademark registrations for the word mark JD SPORTS, including but not limited to EU trademark registration date of December 13, 2011, and US trademark registration date of July 24, 2018. The disputed Domain Name was registered on August 16, 2024. The disputed Domain Name earlier resolved to a parked page showing PPC advertising unrelated to the Complainant’s activities, and currently resolves to a parked page on which it is shown that the disputed Domain Name is possibly for sale with a link allowing Internet users to inquire about the disputed Domain Name.
The Complainant alleges that the use of the disputed Domain Name for a PPC parking page does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the trademark of the Complainant. It can be inferred that the Respondent registered the disputed Domain Name with full knowledge, or it should have known, that the disputed Domain Name was nearly identical to the JD SPORTS trademark. The Respondent claims the disputed domain is a valuable “2-letter abbreviation plus generic keyword” with an estimated value of over US$ 6,100 per GoDaddy’s appraisal. This evidence shows similar domain names, including the Complainant Domain Name <jdsports .com> sold for between US$ 5,000 and US$ 10,000. Based on these values, the Respondent decided to purchase the disputed Domain Name at a public auction in August 2024.
Held: The Complainant has provided some evidence of the notoriety of its mark, but not specifically to various parts of the world. It has, in particular, not provided evidence of the notoriety of its mark JD SPORTS in the United States, where the Respondent is based. However, it does show that it uses its mark online, including at its websites and social media accounts, and that its Facebook account has 3.9 million followers while its TikTok account has 3 million followers. Based on the evidence before it, the Panel is willing to accept that this mark enjoys notoriety also in the United States. As such, it is beyond doubt for the Panel that the Respondent could have been aware of this mark when registering the disputed Domain Name. Nonetheless, the central question is whether the Respondent targeted the Complainant and its mark JD SPORTS.
The disputed Domain Name is not identical to the Complainant’s trademark. Although it differs from the mark only in the omission of the plural “s”, the disputed Domain Name can also be read as two initials followed by the dictionary word “sport”, correctly spelt. The Complainant shows that the Respondent has used the disputed Domain Name with a PPC link landing page, but none of the links are related to the Complainant, its competitors, or the types of goods and services that it offers. The Complainant does not allege that the disputed Domain Name was registered for the purpose of resale at a profit to itself (or its competitor) based on its value as a misspelling of its mark. The Respondent has in detail explained and substantiated its modus operandi, in general and in relation to the disputed Domain 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. While it is strictly unnecessary in view of the conjunctive requirement to consider the Respondent’s use (as opposed to registration) of the disputed Domain Name, the Panel observes that, for similar reasons as set out above, it finds no evidence or circumstances upon which to infer that the Respondent has used the disputed Domain Name in bad faith.
Complaint Denied
Complainant’s Counsel: Represented Internally
Respondent’s Counsel: Self-represented
Comment by ICA Director, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
It may be instructive to contrast this decision with that of Libbs .com, above. Here too the complainant is the dominant user of a mark that is similar to a domain name that the respondent is offering for sale. Here too the Complainant did not own its matching dot-com domain name for most of its history. (The decision suggests that the Complainant purchased jdsports .com nearly 30 years after it was founded). Here too the evidence was ambiguous and could have been assessed to either support a decision to transfer the domain name or to deny the complaint. There are important differences in the evidence, as the Respondent in JDSport .com was able to demonstrate a pattern of registering similar formative domain names which suggested its registration may not have been targeting the Complainant and the Respondent was able to provide evidence of numerous third-party users of “JD Sport”.
If the Complainant chooses not to acquire jdsport .com itself, time may tell which arguments had more merit, those of the Complainant or those of the Respondent. If a third-party purchases jdsport .com for a legitimate use that does not infringe on the Complainant’s rights, that would validate the Respondent’s arguments. Yet if jdsport .com sits for many years without being acquired that would suggest that the Complainant is correct that the domain name only has commercial value in association with the Complainant. In either instance, the existence of jdsport .com as a for sale page likely causes little if any harm to the Complainant, such that it may not matter much whether the Complainant or the Respondent is ultimately validated.
Complainant Fails to Demonstrate Common Law Rights Prior to Domain Name Registration
NHN Global, Inc. v. MingShen Tu, NAF Claim Number: FA2503002144471
<fashiongogo .com>
Panelist: Mr. Flip Petillion
Brief Facts: The Complainant is an e-commerce platform development company that operates a one-stop online clothing, shoe, fashion accessory, and home decor wholesale marketplace under the mark FASHIONGO at the domain names <fashiongo .com> and <fashiongo .net>. The Complainant is the owner of two trademarks, namely, FASHIONGO, USA word mark, registered on February 12, 2013, and FASHIONGO .NET, USA word mark, registered on February 12, 2013. The disputed Domain Name was registered on July 29, 2004, and appears to resolve to a website selling wedding dresses and related accessories. The Complainant alleges that the disputed Domain Name misrepresents an association between the Respondent and the Complainant, a competitor, and infringes the Complainant’s FASHIONGO marks. In January 2025, the Complainant sent a cease-and-desist letter through the contact form on the website linked to the disputed Domain Name but received no response.
The Complainant further alleges that the Respondent’s knowledge of the Complainant’s rights in the FASHIONGO trademarks may be presumed from the virtual identity between the disputed Domain Name and the Complainant’s FASHIONGO marks. The Complainant’s FASHIONGO marks have been registered at the USPTO since 2013 and in use since 2002, well before the Respondent registered the disputed Domain Name in 2004. The Respondent contends that the disputed Domain Name predates the Complainant’s trademark by 9 years and has been used for more than 20 years for retail. The logos used by the respective parties are different. In particular, the Complainant’s trademark covers wholesale services (Class 35), while the Respondent operates a retail store. The Respondent further contends that the Respondent did not target the Complainant, while the Complainant initiated contact, and there is no evidence of diversion.
Held: The Panel observes that the disputed Domain Name was registered in 2004, while the Complainant’s trademarks have been registered more than eight years later, in 2013. Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. See WIPO Overview 3.0, para 3.8.1. In these circumstances, the Panel would expect the Complainant to come forward with specific evidence showing unregistered or common law trademark rights. Conclusory allegations of unregistered or common law rights, even if undisputed in a particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on a complainant to present evidence of acquired distinctiveness/secondary meaning. See WIPO Overview 3.0, para 1.3.
Although the Complainant relies on a claimed first use in commerce of its FASHIONGO trademark on February 7, 2002, the Panel finds that the Complainant does not provide sufficient evidence of this use apart from the mention of the ‘February 7, 2002’ date in the trademark certificate. Since the Complainant’s trademark is composed of two dictionary words, namely “fashion” and “go”, and given the absence of any evidence of acquired distinctiveness or secondary meaning of the Complainant’s marks between the claimed first use in commerce in 2002 and the registration of the disputed Domain Name in 2004, the Panel finds insufficient indications that the Respondent targeted the Complainant’s mark when registering the disputed Domain Name. Therefore, the Panel finds that the Complainant failed to prove that the Respondent registered the disputed Domain Name in bad faith.
RDNH: Even though the Panel found that the Complainant failed to provide sufficient evidence supporting the Respondent’s bad faith registration of the disputed Domain Name, the Panel is unable to conclude that the Complaint was brought primarily to harass the Respondent, nor that the proceeding was commenced in bad faith. The Panel also notes that the Respondent misrepresented some facts in its Response, notably regarding the “Continuous Retail Use” of the disputed Domain Name since 2004. The Panel, therefore, declines to declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied
Complainant’s Counsel: Christine Chung of NHN Global, Inc., USA
Respondent’s Counsel: Charleen Hsieh, USA
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.