The Levine Lecture series honors Gerald Levine, recipient of the ICA Lifetime Achievement Award for his significant scholarly contributions to the UDRP. Gerry is the author of “Domain Name Arbitration” and the subsequent “The Clash of Trademarks and Domain Names on the Internet.”
Join us for this unique opportunity to hear from one of the most respected voices in IP and domain name law – Mr. David Bernstein. Introduction by Mr. Brian Beckham, and remarks from Mr. Zak Muscovitch and Mr. Gerald M. Levine.
David chairs the Intellectual Property Litigation Group at Debevoise & Plimpton and is widely recognized as one of the top IP litigators in the country. He’s been described as “a luminary in the field,” “the wizard of trademark law,” and “a real litigation rock star,” and is consistently ranked at the top by Chambers, The Legal 500, and World Trademark Review.
Registration is required – please register here.
We hope you will enjoy this edition of the Digest (vol. 5.26) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Selling Price Does Not Reflect Targeting of the Complainant’s Trademark (icoy .com *with commentary)
‣ Panel Expected Stronger Evidence of Complainant’s Mark Renown (irispond .com *with commentary)
‣ Redaction Requests Require Evidence of Concrete Threat to Respondent (myhikes .com *with commentary)
‣ Addition of a Geographical Term Does Not Avoid a Finding of Confusing Similarity (electrolux-chile .com *with commentary)
‣ Panel Conducts Independent Research to Verify Complainant’s Claims (leotech .com *with commentary)
‣ Respondent Owns Extensive Portfolio of Similar Personal Name Domains (finlay .com)
Selling Price Does Not Reflect Targeting of the Complainant’s Trademark
ITWAY S.P.A. v. Sydney Wang, Arch Holdings, Inc., WIPO Case No. D2025-1294
<icoy .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Italian Complainant is a provider of information technology solutions and its products include a system branded ICOY, which is a health and safety solution. The Complainant registered the domain names <icoy .it> and <icoy .eu> on June 20, 2019. The Complainant is the owner of trademark registrations for the mark ICOY, the earliest of which includes the Italian trademark registered on September 3, 2020. The Complainant applied for an Italy patent in respect of its ICOY product and announced its ICOY product by way of a press release on its website at <itway .com> in July 2020. The Respondent, a domainer, registered the disputed Domain Name on March 28, 2000, which resolves to a webpage at <namekeen .com>, offering to lease and further inviting enquiries as to purchase. The Complainant enquired about the disputed Domain Name in around August 2023 and was quoted a price of USD $22,500.
The Complainant alleges that the Respondent’s passive holding of the disputed Domain Name constitutes use in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Complainant further alleges that the Respondent provided false contact details and has sought to sell it to the Complainant for an excessive price of USD $22,500. The Respondent contends that the disputed Domain Name comprises a non-exclusive, acronymic, four letter domain name, which it registered some 19 years prior to the Complainant’s first use of any “ICOY” trademark. It adds that its website at <namekeen .com> includes numerous other similarly constituted domain names. The Respondent further contends that the Complainant’s trademark is not famous or well known and asserts that it was completely unaware of the Complainant prior to the present proceeding.
Held: Dealing in domain names is not illegitimate per se, and a domainer may also be to establish rights or legitimate interests in the sale of a domain name comprising a dictionary term or acronym. The Respondent registered the disputed Domain Name in August 2000 and has offered it for sale alongside other similarly constituted domain names. The Complainant’s ICOY trademark did not exist in 2000, and there is no evidence of any use by the Complainant of that term prior to June 2019 at the earliest. In the circumstances, the Panel finds both that the Respondent’s explanation for its Domain Name registration is credible, and that he could not have targeted the Complainant’s trademark at the date it registered the disputed Domain Name.
For the above reasons, the Complainant is unable to establish bad faith registration of the disputed Domain Name. The Respondent cannot have had the Complainant’s trademark in mind, or have targeted that trademark, at the time the disputed Domain Name was registered in 2000. Nor, for the record, does the Panel consider the Complainant to have shown that the Respondent has used the disputed Domain Name in bad faith. The Panel finds the Respondent’s explanation for its registration and offer to sell the disputed Domain Name to be credible and finds no evidence that it has at any time conducted itself with the intention of taking unfair advantage of the Complainant’s trademark rights.
Further, the price at which the Respondent may have offered to sell or to lease the disputed Domain Name does not, in the view of the Panel, support a finding that the Respondent has sought to target the Complainant. Furthermore, passive holding is not by itself an indication of bad faith but may not preclude a finding of bad faith where all the circumstances of the case point to that conclusion. Among the criteria to be considered in such cases (see e.g., the Telstra case, supra) is the question of whether there is any legitimate use that the Respondent could conceivably make of the disputed Domain Name, which the Panel finds to be in the affirmative in the present case.
RDNH: The Complainant is legally represented and should have been well aware that it could not establish registration of the disputed Domain Name in bad faith where such registration took place some 19 years before the Complainant’s first use of the ICOY mark. It should similarly have been aware of the strict application of the conjunctive requirement for both registration and use in bad faith under the third element of the Policy.
In the view of the Panel, it is reasonable to infer that the Complainant discovered the disputed Domain Name to be unavailable at the time it registered the domain names <icoy .it> and <icoy .eu> in June 2019. It also appears to the Panel that the Complainant has sought to acquire the disputed Domain Name on a commercial basis since that date, as evidenced for example by its correspondence with SEDO in August 2023.
The Panel concludes, therefore, that the Complainant issued the present proceeding in the hope of obtaining a transfer of the disputed Domain Name in circumstances where it did not wish to pay the price demanded by the Respondent for the sale or lease of the disputed Domain Name. The Panel, therefore, finds this case to be a clear instance of Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: Studio Legale Tributario EY, Italy
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
What significance does a Complainant’s own domain names have, in the context of a .com UDRP dispute? Where a Complainant registers a non .com gTLD at the outset of their business, it can sometimes mean that they adopted their brand and registered their corresponding domain name while well-aware that the .com was already taken by a senior registrant or user. Notably in the present case, the Panel concluded that “it is reasonable to infer that the Complainant discovered the disputed domain name to be unavailable at the time it registered the <icoy .it> and <icoy.eu> domain names in June 2019”.
What is the test for RDNH? RDNH can take many forms depending on the circumstances, and in this present case several factors were found to be present by the Panelist, including a “Plan B” RDNH attempt and the disqualifying chronology of the Domain Name registration predating the Complainant’s trademark rights. Making allegations that lack credibility is also grounds for determining that a Complaint is abusive. Here, the Panel found “there to have been no reasonable grounds to assert that the Respondent has used the disputed domain name in bad faith” as one of the factors contributing to RDNH. Allegations of cybersquatting are serious and they can result in the transfer of a registrant’s domain name. They must not be taken lightly by Complainants nor Panelists and where a Complainant makes such allegations without reasonable bases, it risks a finding of RDNH.
The Panelist in this case used the term, “domainer”, which I want to respectfully caution against. It is a valid term in the sense that it conveys a particular meaning, as noted by the Panel, namely “a trader in domain names”. Being a “domainer” can also sometimes be inadvertently conflated with cybersquatting since the term is imprecise by possibly including unprofessional domain name registrants who register any kind of domain name, potentially in bad faith, rather than legitimate investment grade domain names. It’s also a colloquial term which can inadvertently convey a lack of seriousness in, or belittlement of the work of domain name investing. I have seen a gradual move away from the usage of this term and this is a good thing. I see no utility in continuing to use this colloquial term and encourage parties and counsel to describe the business of professionally trading in domain names as “domain name investment”, which it is.
In any event, this was an excellent disposition by the Panel and a clearly analyzed and written decision. Well done.
Panel Expected Stronger Evidence of Complainant’s Mark Renown
Kemco Scientific, Inc. v. Colin OverviewChalmers, WIPO Case No. D2025-1980
<irispond .com>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant registered the word mark IRISPOND with USPTO, on October 13, 2015, in connection with, among other things, “chemicals for use in the purification of water”, with a February 3, 2015 date of first use in commerce. Apart from the information reflected in the foregoing trademark registration, the Complaint yields no information about the Complainant or its business. The disputed Domain Name was registered on October 23, 2020 and currently redirects to a website at the domain name <colinchalmers .com>, a site operated by the Respondent and corresponding to the Respondent’s name. According to the Respondent, he had first registered the Domain Name nearly 20 years earlier but let it lapse and then re-registered it on October 23, 2020.
The Respondent contends that he has used the name Iris Pond since 1997 with a band, documented on the 2000 album Heaven’s Eyes by Colin Chalmers. In 2000, Colin Chalmers registered Iris Pond Productions as a DBA for publishing music and books. A 2001 Wayback Machine screenshot shows the domain was used for Iris Pond Productions with “Contact” and “Bookings” links. The domain’s ongoing use for related products supports fair use. According to the Complainant, it offered USD $400 to the Respondent via a domain broker on May 13, 2025, to buy the Domain Name. The Respondent replied that they planned to use it but it might be available. On May 15, 2025, the Respondent offered to sell the Domain Name for USD $30,000. The Complaint was filed on May 16, 2025.
Held: There is little or no basis for the Panel to find it more likely than not that the Respondent was aware of the Complainant’s IRISPOND mark when registering the Domain Name on October 23, 2020, even if the Respondent had owned it earlier and let it lapse. In any event, there is some evidence in the record that the Respondent owned the Domain Name years before Complainant’s first use of its mark on February 3, 2015, and had adopted “Iris Pond” for music and publishing activities. As such, it would appear that the Respondent’s self-association with “Iris Pond” (or “Iris Pond Productions”) goes back well before the Complainant used and registered its trademark, even if the record evidence of the Respondent’s use of that term is fairly thin and appears to betray lengthy periods of non-use of the term. Even if the Panel were to totally disregard Respondent’s annexes, the Complaint would fail on the record presented.
As noted above, the Complainant provided no evidence about the extent to which its registered trademark is known by consumers. The Complainant’s apparent field of industry, which is reflected in the trademark registration itself, is fairly arcane and does not appear to be decidedly consumer-facing. As such, the Panel would have expected a more robust presentation of the renown of the Complainant’s mark, such that the Panel could find it more likely than not that the Respondent was aware of the mark in October 2020 when he registered (or re-registered after a period of lapse) the Domain Name. But no such showing was attempted. Because the Panel cannot make a finding of bad faith registration here, the Complaint must fail, and the Panel need not address the USD $30,000 sale offer made by the Respondent one day before the Complaint in this case was filed.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: I find this decision particularly interesting.
First of all, in the world of domain name disputes, one can always be surprised. Who would have thought at first blush, that “IrisPond .com” was registered by anyone but a cybersquatter, when the Complainant chemical manufacturer’s trademark is IRISPOND? Surely this wouldn’t appear to be a coincidence upon review of the Complaint. And yet it was. Indeed, despite the recent registration date, the Respondent apparently “had first registered the Domain Name nearly 20 years earlier but let it lapse and then re-registered it on October 23, 2020”, and had “adopted “Iris Pond” in connection with his business or hobbyist activities in the areas of music and publishing”, many years prior to the Complainant’s first use of its mark.
What are we to take from this? Not everything may be as it initially seems from a Complaint. Where a Response is filed, misapprehensions and misrepresentation can sometimes be cleared up. But what about when no Response is filed? Well, a Respondent should of course file a Response in order to clear up any misapprehensions and misrepresentation or risk a bad outcome. Nevertheless, Panelists must be aware of the limitations of their decision making ability in the absence of a Response and therefore must take a critical view of Complaints even in no-response cases.
This becomes superbly apparent in the present case. Here, the Panel noted that “even if the Panel were to totally disregard Respondent’s annexes apparently corroborating Respondent’s pre-2015 association with the term “Iris Pond”, the Complaint would fail on the record presented”. The Panel went on to state:
There is little or no basis for the Panel to find it more likely than not that Respondent was aware of Complainant’s IRISPOND mark when he registered the Domain Name. …
Complainant provided no evidence about the extent to which its registered trademark is known by consumers. Complainant’s apparent field of industry – which is reflected in the trademark registration itself – is fairly arcane and does not appear to be decidedly consumer-facing. As such, the Panel would have expected a more robust presentation of the renown of Complainant’s mark, such that the Panel could find it more likely than not that Respondent was aware of the mark in October 2020 when he registered (or reregistered after a period of lapse) the Domain Name. But no such showing was attempted.
The Panel is entirely correct in its approach to the Complaint. Even regardless of a Response, it is up to a Complainant to provide sufficient evidence to show that the Respondent was likely aware of and likely targeted the Complainant. Evidence of reputation is crucial in this regard, especially where a brand is not “consumer-facing” like in the present case. A Panel cannot just assume that a term, even one as apparently distinctive as “IRISPOND” was the target of the registration. This must be proven as more likely than not, by evidence. Where a Complainant fails to do so, a Panelist must generally dismiss the Complaint for want of evidence, like the Panel did here – and likely would have done here even if the Respondent had failed to Respond.
Redaction Requests Require Evidence of Concrete Threat to Respondent
MyHikes, LLC v. Michael Jones, NAF Claim Number: FA2505002156965
<myhikes .com>
Panelist: Ms. Luz Helena Villamil-Jiménez
Preliminary Issue – Request for redaction by the Respondent: It is imperative to take into consideration that according to Policy clause 4(j), all UDRP decisions “will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision”. A request for redaction must be fully justified and supported by evidence of the necessity to omit the Respondent’s personal information from the decision in order to protect a respondent who has suffered a concrete threat, such as an identity theft, from being associated with acts that actual registrants appeared to have sought to impute to the Respondent.
In the present case, although the Respondent contends that the Complainant made false claims in the Complaint as well as several incorrect assumptions, ignored WHOIS data, and misrepresented the situation to try to seize the domain in as much as the Complainant contacted the Respondent multiple times attempting to buy the domain, these activities do not suggest a need to protect Respondent’s identity. Furthermore, the Complainant is already aware of Respondent’s identity, as it is a requirement to properly identify the Respondent and its contact information in the Complaint. In light of the above, the Panel refuses to redact listed respondent’s name from the decision.
Brief Facts: The Complainant states that it is the holder of Registrations for the trademark MYHIKES and claims to have used the mark since January 13, 2015. The Complainant adds that what started out as a site built for friends to journal and save basic information regarding local trails in Pennsylvania, has now expanded to GPS tracking devices, and online mapping tools, and the website <myhikes .org> and application (MyHikes) now incorporates trails from various states within the US partnering with various organizations. The case also contains copies of the messages sent to the Respondent by David Miller, Founder/owner of MyHikes, LLC., in which the Complainant offered to purchase the disputed Domain Name. The disputed Domain Name was registered on August 8, 2005.
The Complainant alleges that <myhikes .com> as a registered domain name is currently used in bad faith as it has been “parking” or an error 404 page since 2017, two years after the Petitioner began using the MYHIKES trademark. Thus, the only conclusion is that the Respondent is clearly hoping to sell the Domain Name to the Petitioner for an inflated price. The Respondent contends that the phrase “my hikes” is descriptive, and that he acquired the domain <myhikes .com> on August 8, 2005, while the Complainant’s claimed trademark rights began in 2015, a full decade later. The Respondent further contends that he used the domain from 2005–2021 for personal, non-commercial purposes, including a hiking blog and photos, reflecting Respondent’s personal interest in hiking and that the domain was never monetized or offered for sale.
Held: In the present case, the documentation provided by the Respondent demonstrates that the domain name <myhikes .com> was registered on August 8, 2005, i.e., more than ten years prior to Complainant’s first use of the trademark MYHIKES. The Respondent also demonstrated with documents that he used the domain from 2005–2021 for personal, non-commercial purposes, including a hiking blog and photos. It, therefore, is clear to the Panel that the Respondent does have rights and legitimate interests in the Domain Name.
Further, the Respondent registered the domain name <myhikes.com> more than ten years before the Complainant first used the MYHIKES trademark, and almost 20 years before the trademark was registered. In light of this, while it is true that the Complainant has rights over a trademark that is totally contained in the domain name under dispute, the Panel determines that trademark rights are not enforceable against the Respondent in this particular case, as it is demonstrated that the trademark was first used many years after the domain under dispute was registered.
RDNH: The Panel finds that the Complaint was filed in bad faith after Complainant’s failure to obtain the domain name in negotiations with the Respondent. This is a classic “Plan B” case. The Panel therefore finds that the Complainant has engaged in reverse domain name hijacking. Moreover, the Panel finds that the Complainant should have known that it could not establish any or all of the elements of Policy clause 4(a). Therefore, the Panel confirms and determines that the Complainant has engaged in reverse domain name hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: Kathleen Kuznicki of The Lynch Law Group, LLC, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel correctly dismissed the case due to the impossibility of bad faith registration due to the chronology of the Domain Name being registered prior to the Complainant’s first use of its trademark. Notably, and to the Panel’s credit, the Panel also appropriately made an affirmative finding of rights and legitimate interest of the Respondent, on the basis of the Respondent having used the Domain Name for personal non-commercial use. It is important for Panelists to make such affirmative findings where warranted, rather than take the easy way out and just say that ‘the Complainant didn’t prove that the Respondent doesn’t have rights and legitimate interests’ in the Domain Name. The Panel also deserves credit for appropriately finding RDNH on the basis of this being a “Plan B” and because the “Complainant should have known that it could not establish any or all of the elements of Policy”.
One other aspect of this decision caught my attention. Apparently the Respondent requested redaction of his personal name from the published decision “in order to prevent unwarranted exposure and potential abuse”. The Panel considered the issue and noted that “a request for redaction must be fully justified and supported by evidence of the necessity to omit the Respondent’s personal information from the decision in order to protect a respondent who has suffered a concrete threat, such as an identity theft, from being associated with acts that actual registrants appeared to have sought to impute to the Respondent”. The Panel nevertheless ruled against the Respondent’s request for redaction, noting that “although the Respondent contends that the Complainant made false claims in the Complaint as well as several incorrect assumptions, ignored WHOIS data, and misrepresented the situation to try to seize the domain in as much as Complainant contacted Respondent multiple times attempting to buy the domain, these activities do not suggest a need to protect Respondent’s identity.”
Could there by another and better reason for redacting the Respondent’s name from the published decision? Here, a completely innocent Respondent was the victim of an attempted Domain Name Hijacking. In other words, but for the Complainant’s abuse of the UDRP and bringing a meritless Complaint, the Respondent’s name and ownership of the Domain Name would never have been made public for all to see on the Internet forever. There is clearly an important reason for names to be published in UDRP decisions since the identity of a registrant in particularly can assist future parties in establishing a pattern of bad faith.
But where a Respondent is entirely innocent and should never have been subjected to the UDRP in the first place, where is the utility in publishing his or her name on the Internet forever? The answer to this is often, ‘well, where is the harm?’ After all, the Respondent is vindicated so the published decision disclosing his or her name is beneficial to the Respondent, or at least neutral. This view however, does not take into account the practical reality of the Internet. Imagine performing an Internet search on your name – or better yet, imagine a prospective employer searching your name – only to see it associated with a tribunal hearing about some kind of serious malfeasance. One would hope that the decision is read to the end so that your reputation is cleared, but that doesn’t always happen and sometimes the innocent victim will needlessly and unfairly be associated with some kind of aspersion or allegation. Why does it have to be so? Why shouldn’t an innocent respondent have the absolute right to have their name redacted in such circumstances, especially in a case of RDNH?
After all, a registrant’s privacy which was lawfully protected can be revealed as a result of a UDRP that should never have been brought and which was merely an abusive and bad faith proceeding. In such circumstances this misconduct should not be to the detriment of a registrant’s privacy.
Addition of a Geographical Term Does Not Avoid a Finding of Confusing Similarity
AB Electrolux v. victoria lagos CAC Case No. CAC-UDRP-107591
<electrolux-chile .com>
Panelist: Ms. Victoria McEvedy
Brief Facts: The Complainant is a Swedish joint stock company founded in 1901 and one of the world’s leading producers of appliances and equipment for kitchen, cleaning products and floor care products. The Complainant’s well-known ELECTROLUX trademark is used today in connection with kitchen and cleaning appliances for both consumers and professional users. The Complainant owns numerous trademark registrations in more than 150 countries including Chile, and also has international trademark registrations. The Complainant’s official website is at the domain name <electrolux .com> (created on 30 April 1996) and for Chile at <electrolux .cl> (created on 8 April 1997).
The disputed Domain Name <electrolux-chile .com> was registered on 24 April 2025, and currently does not resolve, as its status in WHOIS is listed as “ServerHold”. However, apparently the disputed Domain Name previously had an active website, which, although not archived or saved, is evidenced by recent Google searches for the website <electrolux-chile .com>. Apparently until recently, it resolved to a website appearing to offer the Complainant’s products and with an active shopping cart. The Complainant contends that the requirements of the Policy have been met and that the disputed Domain Name should be transferred to it. No administratively compliant Response has been filed.
Held: The Complainant’s registered trademark is reproduced in full in the disputed Domain Name <electrolux-chile.com>, and the mere addition of a geographical term such as “Chile” does not avoid a finding of confusing similarity. As to the second clause, the disputed Domain Name does not currently resolve to an active website. However, upon its registration on 24 April 2025, it seems that it resolved to a website impersonating the Complainant’s official website. There is no evidence that the site was used for legitimate resales or distribution. Or that genuine products of the Complainant were legitimately sold. The Respondent has not come forward to explain or provide evidence of legitimate use and/or resales. Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.
As to the final Policy limb, Bad Faith, the finding as to Bad Faith often follows from the second limb. If there is unfair and illegitimate use, there will often be bad faith. The Panel finds the Respondent could not have been unaware of the Complainant’s world-famous trademark in light of the Complainant’s reputation. The disputed Domain Name, on its registration in April 2025, resolved to a website, and it appears the Respondent was well aware of the mark and registered the disputed Domain Name with the intention of leveraging that reputation and goodwill and free-riding on it. The Respondent has failed to come forward and explain its selection of the name, and no current legitimate or fair use is evident on the face of the case. In the circumstances of the case, this matter satisfies the test in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Transfer
Complainant’s Counsel: Silka AB, Sweden
Respondent’s Counsel: No Response
Case Comment by Digest Editor, Ankur Raheja:
This is a clear cybersquatting matter, where the Respondent’s actual knowledge of the Complainant’s trademark can reasonably be inferred. As the Panel noted, due to the distinctiveness and global recognition of the trademark: “The Panel finds the Respondent could not have been unaware of the Complainant’s world-famous trademark in light of the Complainant’s reputation.”
It remains a significant challenge for well-known brand owners to deal with the large volume of domain name cybersquatting. According to udrp.tools, this Complainant has been involved in over 400 UDRP proceedings, which shows the ongoing scale of the problem. See details here.
Panel Conducts Independent Research to Verify Complainant’s Claims
Leo Technologies, LLC v. JUNGYUHKOOK, WIPO Case No. D2025-1447
<leotech .com>
Panelist: Ms. Kathryn Lee
Brief Facts: The Complainant, founded in 2018, offers a search and analytics platform for authorized correctional facilities in the United States. The Complainant is the owner of two trademarks for LEOTECH, registered in the United States on May 13, 2025. The Complainant commenced use of the LEOTECH mark on February 28, 2023. The disputed Domain Name was registered on July 19, 2023 by a Korean registrant and resolves to a website displaying PPC links to terms “Digital Twin Artificial Intelligence”, “Gps Tracking for Equipment” and “Data Center Digital Twin.”
The Complainant alleges that the Respondent had actual notice of the Complainant’s use of the LEOTECH mark by virtue of the letter that the Complainant sent to the Respondent on October 23, 2024, informing the Respondent of the two pending trademark applications for the LEOTECH mark. The Complainant further argues that the only logical conclusion is that the Respondent registered the disputed Domain Name for financial gain, by cybersquatting and attempting to extort USD $180,000 from the Complainant for its transfer. The Respondent owns over 28,000 domain names and did not respond to the Complaint.
Preliminary Issue: The Complainant requested that the language of the proceeding be English for several reasons, while the Respondent did not make any submissions. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview, section 4.5.1). Here, both Parties were given the opportunity to submit arguments in the language of their preference, and the Respondent neither raised an objection as to the language of the proceeding nor submitted any arguments whatsoever in these proceedings. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
Held: The Complainant contends that the Respondent had constructive notice of the Complainant’s use of the LEOTECH mark starting on February 28, 2023, the date when it first commenced use of the LEOTECH mark, and submits a printout of a Google search result page for LEOTECH, but as the search is dated April 3, 2025, it is quite unconvincing to show that the mark was known to the Respondent at the time of registration. Rather, the Panel’s own search for “leotech” with the search perimeters limited to the one month period preceding the date of registration of the disputed Domain Name gives results for third parties. Based on this, the Panel is of the opinion that there is insufficient evidence that the Complainant’s mark was known by the Respondent at the time of the registration of the disputed Domain Name.
Rather, based on the fact that “leotech” is composed of two short terms, the Respondent could have registered the disputed Domain Name without reference to the Complainant. The Complainant also contends that the Respondent’s demand for USD $180,000 in exchange for the disputed Domain Name is further evidence of bad faith. However, based on the evidence submitted, the communications were made via Sedo.com and the Respondent may not have been aware that the Complainant was the prospective buyer. As for the PPC links appearing at the website associated with the disputed Domain Name, it is unclear if they are related to the Complainant’s services or its competitors, or to the term “tech” in the disputed Domain Name. Accordingly, the Panel finds the third element of the Policy has not been established.
Complaint Denied
Complainant’s Counsel: Glaser Weil Fink Jacobs Howard Jordan & Shapiro LLP, United States
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case raises the interesting question of ‘when and to what extent Panelist research is appropriate?’. Here, the Panelist found that the Complainant’s evidence of the Respondent’s awareness of the Complainant was “quite unconvincing to show that the mark was known to the Respondent at the time of registration”. The Panel then conducted its “own Google search for “leotech” with the search perimeters limited to the one month period preceding the date of registration of the disputed domain name gives results for – in order – a United Kingdom IT consulting services company by the name of “Leo Tech Consulting”, a Sierra Leone youth organization by the name of “Leotech Sierra Leone”, an Indian tools company by the name of “Leotech”, and a Kenyan computer business by the name of “LeoTech Solutions””. This enabled the Panel to conclude that there was “insufficient evidence that the Complainant’s mark was known by the Respondent at the time of the registration of the disputed domain name” and that rather, “based on the fact that “leotech” is composed of two short terms, the Respondent could have registered the disputed domain name without reference to the Complainant”.
As noted in UDRP Perspectives at 0.3, Panelists are not charged with investigating allegations. Rather, the Panelist has a much more modest duty; to decide a case based upon the evidence presented by the parties themselves. Where that evidence is found wanting, that is not the Panelist’s problem to solve, nor should they attempt to. Nevertheless, it is sometimes a Panelist’s duty and well within a Panelist’s ambit, to verify some basic factual allegations, such as the existence and content of a relied upon trademark registration and the existence and content of a website associated with the disputed domain name. Beyond that, a Panelist should be wary of wading into an inquisitorial approach to cases rather than relying upon the adversarial process.
For example, a Panelist should verify that a trademark registration remains valid and has not been cancelled or assigned, and that the Complainant is the true owner of the trademark. A Panelist should also ensure that the trademark registration does not claim a disclaimer or that it is on the U.S. supplemental register. When verifying the existence and content of a website associated with the Domain Name that is relied upon by the Complainant, the Panelist may also wish to visit the website to verify that the Complainant’s exhibits fully and accurately show the content.
Independent Panelist Research may be particularly appropriate in some cases where no response is filed, for example in order for the Panelist to satisfy itself of a Complainant’s allegation that it is the sole user of a particular trademark or that it has no other meanings or uses. Where a Complainant’s trademark is highly distinctive and well-known, independent verification of the Complainant’s allegation of exclusive use will usually not be required. However, where a trademark appears to possibly lend itself to other meanings or uses or where it is not well-known, a Panel may determine that it is appropriate to check publicly available records, such as trademark databases and Google searches. However, where such independent research results in information that sways the outcome of the decision, it is appropriate for the Panel to issue a Procedural Order presenting the results of the Panel’s research to the Parties and providing them with the opportunity to address this new evidence.
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.
Respondent Owns Extensive Portfolio of Similar Personal Name Domains
Terex GB Limited v. Stanley Pace, WIPO Case No. D2025-1762
<finlay .com>
Panelist: Mr. Wilson Pinheiro Jabur
Brief Facts: The Complainant is a manufacturer of lifting and material processing equipment for industries such as mining, quarrying, and construction, located in the U.S. The Complainant owns the FINLAY trademark, originally adopted in 1958 by Finlay Hydrascreens in Northern Ireland. Finlay Hydrascreens became part of the Complainant’s group in 1999 following the acquisition of Powerscreen International plc. The Complainant is the owner of trademarks including U.K. trademark (registered on July 4, 2008); U.S. trademark (registered on April 7, 2009, claiming first use in commerce in the U.S. in August 1977). The disputed Domain Name was acquired on June 5, 2013, for USD $2,599.00 by the Respondent, who is a domain investor.
The Complainant alleges that the website available at the disputed Domain Name consists of a parked webpage displaying PPC links, including links that reference the Complainant’s industry and products. The Complainant adds that given the Respondent’s sophistication and extensive portfolio of surname-based domains acquired for resale or PPC monetization, it is reasonable to infer he knew or should have known of the Complainant’s mark at the time of acquisition. The Respondent contends that the Respondent argues that “Finlay” is a relatively common surname and that nothing would indicate that he would have been aware of the Complainant’s trademark upon registering the disputed Domain Name in 2013, there being hundreds of companies named “Finlay” from every field of human endeavour.
Held: In this case, the disputed Domain Name consists of a common surname “Finlay”, and for most of the 12 years since its acquisition/registration by the Respondent, the PPC links have not referred to the Complainant’s trademark or business, with only one recent link relating to the Complainant’ business. Taking this into account, along with the Respondent’s apparent history of acquiring and using domain names for business purposes, and the absence of evidence that the Respondent intentionally targeted the Complainant and/or its business when registering the disputed Domain Name, the Panel considers that the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the disputed Domain Name.
The Respondent has demonstrated that there are numerous potential legitimate users of the “Finlay” name and mark. Although the Respondent does not claim “Finlay” as his own name or trademark, he has submitted evidence of owning a significant portfolio of domain names consisting of common personal names and surnames. While the Complainant correctly indicates that domainers or domain name investors are generally held to a higher standard of due diligence when acquiring domain names, the Respondent has shown that the Complainant’s trademark relates to very specific equipment that is not widely known to the general public. Accordingly, the Panel finds that the disputed Domain Name was not registered in bad faith.
RDNH: On balance, the Panel declines to make a finding of RDNH in this case. At the time of filing the Complaint, the Complainant had a good faith basis to be concerned upon observing its trademark being used in connection with a domain name serving PPC advertising operated by a Respondent who had previously been found to have acted in bad faith in other UDRP proceedings. The clarification provided by the Respondent during this proceeding – namely, that the display of a single link relating to the Complainant’s business was recent and automated, and his domain name portfolio practices – does not negate the bona fides of the Complainant’s initial concerns.
Complaint Denied
Complainant’s Counsel: Brooks Kushman, P.C., U.S.
Respondent’s Counsel: John Berryhill, Ph.d., Esq., U.S.
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.