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We hope you will enjoy this edition of the Digest (vol. 5.12) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Complainant Uses “Strip Curtains” Descriptively (plasticstripcurtain .com and industrialstripcurtain .com *with commentary)
‣ Applicability of the Doctrine of Passive Holding (sodexolies .info *with commentary)
‣ Panel: Complainant Makes Baseless Arguments and Ignores Well-Established Principles (nutriforce .com *with commentary)
‣ Is Constructive Knowledge Sufficient under the Policy? (prizepicked .com *with commentary)
‣ Party Submitting Unsolicited Filing Should Show Relevance and Exceptional Circumstances (skytree .com)
Complainant Uses “Strip Curtains” Descriptively
<plasticstripcurtain .com>, <industrialstripcurtain .com>
Panelist: Mr. Gerald Levine (Chair), Ms. Claire Kowarsky, Mr. Rodolfo Rivas
Brief Facts: The Complainant, doing business as Strip-Curtains .com, also known as StripCurtains .com is an online brand. According to the Complainant, it was one of the first online distributors of strip-curtains online. It registered STRIP-CURTAINS .COM with the USPTO on July 2, 2024, claiming use since 2001 selling products Across North America. The Complainant recounts the history of a certain Christopher Boys, a serial trademark infringer, who appears to have been the initial registrant of the disputed Domain Names. Mr. Boys created the infringing websites to compete with the Complainant in the niche field of strip curtains, allegedly began selling counterfeit products, and acting with “willful intent, deception and false designation of origin, Cybersquatting etc.” The Complainant repeats its contentions that Respondents have continued with the infringements following their purchase of the disputed Domain Names and business from Mr Boys. It alleges that Respondents are equally culpable with Mr. Boys.
The Complainant also annexes a copy of a US federal court action that found Mr. Boys liable for trademark infringement and he is the central figure to the allegations of bad faith registration and use in this proceeding. The Respondents are not parties to that federal action. The Respondents deny that they have established a competing business in the same niche product line and that their registration and use of the disputed Domain Names are unlawful. They contend that the trademark STRIPCURTAIN .COM is a weak mark as it is descriptive of the products that other producers such as Respondents offer to consumers. The Respondents support their right to compete with the Complainant by referring to the US Supreme Court’s decision in <booking .com>, which cautioned that “[w]hen a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner.”
Held: The Complainant asserts claims against Respondents principally on the evidence of Mr. Boys’ conduct, his emails and proof of his serial trademark infringements. While the Panel accepts that Mr Boys made an overture to sell in a 2022 email, which could potentially constitute a violation of subparagraph 4(b)(i), Boys is not a Respondent in this proceeding and there is no evidence that the offer was made on behalf of the Respondent registrant of <industrialstripcurtain .com>. Nor is there any evidence concerning an improper acquisition to sell as regards <plasticstripcurtain .com>. Taking each of the other circumstances in turn, the evidence is insufficient as it concerns the Respondents. The Complainant provided evidence suggesting bad faith use by Respondents, including selling the Complainant’s products as their own in December 2024. However, the evidence does not prove that the domains were registered in bad faith, as required under UDRP. Actions attributed to Mr. Boys are not linked directly to Respondents.
It is a well-understood concept that “even where some consumer confusion exists, the doctrine known as classic fair use [. . .] protects from liability anyone who uses a descriptive term, ‘fairly and in good faith’ and ‘otherwise than as a mark, merely to describe her own goods,” quoting from the US Supreme Court decision in which both parties in this proceeding cite for their own purposes. The Panel notes that the Complainant’s trademark incorporates the term “strip curtains”. While the Complainant has obtained trademark rights in its full mark STRIP-CURTAINS.COM, incorporating a hyphen and “.com”, the inclusion of a descriptive term therein reduces the scope of exclusivity. The Complainant’s own materials, including the Complaint, demonstrate that the Complainant frequently uses “strip curtains” in reference to the nature of its products rather than as a distinctive source identifier. The legal issues presented in this care are more appropriate to be litigated in a court of competent jurisdiction as they stretch beyond the limits of the UDRP.
Complaint Denied
Complainant’s Counsel: NA
Respondent’s Counsel: NA
Case Comment by ICA General Counsel, Zak Muscovitch: An elegantly written decision which addresses descriptiveness (one of my favorite issues) as well as the Booking.com case. Well worth a read!
Applicability of the Doctrine of Passive Holding
Sodexo v. JON SPAUGY, WIPO Case No. D2024-5307
<sodexolies .info>
Panelist: Mr. Stefan Bojovic
Brief Facts: The Complainant, founded in 1966, is one of the largest companies in the world specialising in food services and facilities management, with 423,000 employees serving 80 million consumers in 45 countries. The Complainant owns a number of trademark registrations in various jurisdictions for its SODEXO trademark, including the International trademark registration (October 23, 2014) and European Union (February 1, 2010). The Complainant also holds many domain names that reflect its SODEXO trademark, including <sodexo .com>, registered on October 9, 1998, and which is used for the official website of the Complainant. The disputed Domain Name was registered on December 11, 2024, and it resolves to an inactive page.
The Complainant alleges that its SODEXO trademark is well-known and that the word “sodexo” is purely fanciful and nobody could legitimately choose this word or any variation thereof unless seeking to create an association with the Complainant. The Complainant further alleges that the Respondent registered the disputed Domain Name with actual knowledge of the Complainant’s rights in the SODEXO mark, very likely for the purpose of disrupting the Complainant’s business and maybe for diverting third parties for the Respondent’s illegitimate profit. Although the disputed Domain Name is not actively used, the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding.
Held: The Panel underlines that the structure of the disputed Domain Name, which contains the Complainant’s SODEXO trademark along with the negative word “lies”, may indicate the legitimate use of the disputed Domain Name for criticism of the Complainant and its activities. However, the Panel holds that the mere structure of a domain name is insufficient to find legitimate interest if there is no genuine criticism website attached to a domain name. In view of the above, the Panel sees no justification to accept that the Respondent has intended to use the disputed Domain Name for the exercise of free speech and therefore has a legitimate interest in it under the Policy.
Further, it should be also borne in mind that the registration and use of SODEXO trademark predates the registration of the disputed Domain Name by decades, making it unlikely that the Respondent was not aware of the Complainant’s trademark at the time of registration of the disputed Domain Name. Due to the above, the Panel finds that the disputed Domain Name has been registered in bad faith. Further, the disputed Domain Name is inactive, yet the Panel finds bad faith by the Respondent due to passive holding, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and section 3.3 of WIPO Overview 3.0.
The Complainant’s SODEXO trademark is highly distinctive as it represents an invented word used exclusively by the Complainant. There is nothing in the record that could indicate the Respondent’s use or demonstrable preparations to use the disputed Domain Name for criticism of the Complainant. In the absence of any evidence to the contrary, the Panel accepts as more likely that the intention of the Respondent in registering the disputed Domain Name was to take advantage of the Complainant’s trademark rights. Therefore, the Panel finds that the disputed Domain Name has been both registered and is being used in bad faith.
Transfer
Complainant’s Counsel: Areopage, France
Respondent’s Counsel: No Response
Case 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 Panel in <sodexolies .info> quotes and relies on the seminal Telstra decision regarding the assessment of passively held domain names. The Panel cites the key criterion set forth in Telstra:
(iv) the implausibility of any good faith use to which the domain name may be put.
In its analysis of the facts of the dispute, the Panel acknowledges that it is plausible that SodexoLies .info could be used for a legitimate criticism site (in bold below):
The Complainant’s SODEXO trademark is highly distinctive as it represents an invented word used exclusively by the Complainant. On the other side, the structure of the disputed domain name may indicate the potential use of the disputed domain name for legitimate criticism of the Complainant. However, the Respondent has failed to provide a response and thereby to submit evidence of any actual or contemplated good faith use of the disputed domain name. In particular, there is nothing in the record that could indicate the Respondent’s use or demonstrable preparations to use the disputed domain name for criticism of the Complainant. In the absence of any evidence to the contrary, the Panel accepts as more likely that the intention of the Respondent in registering the disputed domain name was to take advantage of the Complainant’s trademark rights
As noted above, the Telstra doctrine holds that a transfer is justified only when there is no plausible good faith use for the disputed domain name. Yet the Panel correctly identifies a plausible good faith use for the SodexoLies .info domain name for legitimate criticism of the Complainant. According to the Telstra doctrine, therefore, the SodexoLies .info domain name does not meet the criteria that would justify the transfer of a passively held domain name.
It appears that the Panel has misapprehended the Telstra doctrine. Evidence of legitimate use for a passively held domain name, as the Panel requires, is not required under Telstra. The Panel’s requirement of evidence of a legitimate use for an unused domain name sets a standard that a non-responding Respondent will always fail.
The consequence of adopting such a standard would enable Complainants to seize domain names that are on their face intended for legitimate criticism of the Complainant but have not yet been developed.
Here it appears that the Panel cited Telstra to support a holding that conflicts with the Telstra doctrine. The Telstra doctrine stretched the UDRP’s requirement that a Complainant must demonstrate evidence of bad faith use to include certain instances of non-use. In this decision, the Panel proposed to eviscerate the critical “implausibility” criterion which the Telstra doctrine relies upon to justify its interpretation of the UDRP. In its stead, the Panel proposes that, in the absence of a response, Complainants are empowered under the UDRP to seize any domain name that is suitable for a criticism site but has not yet been developed. That there was no evidence of any actual bad faith use and that there was a plausible legitimate use for the disputed domain name did not deter the Panel from ordering the transfer of <SodexoLies .info>.
Panel: Complainant Makes Baseless Arguments and Ignores Well-Established Principles
Nutriforce France SAS v. Tech Ops, SyncPoint, Inc., WIPO Case No. D2025-0367
<nutriforce .com>
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant sells food supplements under the mark NUTRIFORCE via a website at <nutriforce .fr> (registered on March 17, 2023). The Complainant owns a number of registered trademarks for NUTRIFORCE including the French trade mark, registered on July 21, 2023, in class 5. The Respondent acquired the Domain Name in an expired domain name auction in September 2020. In December 2024, the Complainant offered USD 80 for the disputed Domain Name. Despite increasing the offer to USD 1,000 and sending multiple follow-ups, the Respondent ceased responding. By February 2025, the Domain Name was redirected to a webpage accusing the Complainant of Reverse Domain Name Hijacking. The Complainant alleges that the Respondent has passively held the disputed Domain Name in bad faith and that the Respondent has previously been found guilty of abusive domain name registration in WIPO Case No. D2003-0797.
The Complainant further alleges that the Complainant attempted to contact the Respondent multiple times to enquire about the disputed Domain Name but the Respondent engaged in deceptive conversations and refused to sell the disputed Domain Name without justification, suggesting an intent to inflate its value or hinder the Complainant’s business. Additionally, the Respondent allegedly holds multiple premium domains at excessive prices, indicating a pattern of bad faith registration for speculative gains. The Respondent contends that the Complainant’s .fr domain name, and French trade mark, postdate the disputed Domain Name by some three years and that the Respondent never engaged in bad faith efforts to sell the disputed Domain Name. The Respondent further contends that the Complainant initiated negotiations with the Respondent to purchase the domain but exhibited aggressive and unreasonable behavior.
Held: The Complainant’s earliest registered trade mark was filed on April 3, 2023. The Complainant gives little detail about its business, including the start date, but it does not contest the Respondent’s evidence that it registered <nutriforce .fr>, the domain name used for its main website, on March 17, 2023. In response to the Respondent’s contention, the Complainant states in its supplemental filing that “‘Nutriforce’ […] was already distinctive when acquired.” Insofar as the Complainant is claiming that it possessed trade mark rights by the time that the Respondent acquired the disputed Domain Name in September 2020, this statement carries no weight because it is entirely unsupported by dated evidence.
Accordingly, and in the absence of any evidence from the Complainant to the contrary, the Panel proceeds on the basis that the Complainant’s trade mark rights arose in 2023 at the earliest, as per the evidence provided in the Complaint, thereby post-dating the disputed Domain Name by some three years. In those circumstances, the disputed Domain Name could not have been registered in bad faith. This is fatal to the Complainant’s case – irrespective of the nature of any later use of the disputed Domain Name and of any other adverse UDRP decisions against the Respondent – because the Complainant is required to prove both registration and use in bad faith.
RDNH: The Complaint included no details or evidence regarding the date of commencement of the Complainant’s trading activity, which the Complainant should have known was an important point. After the Respondent highlighted this, the Complainant provided a vague, unsupported statement seemingly meant to imply prior rights. Moreover, the Complaint referred to previous UDRP decisions, indicating that the Complainant was likely familiar with established Policy precedent including the need to demonstrate the existence of trade mark rights as of the date of the registration of the disputed Domain Name.
In what is known as “Plan B”, the Complainant made an unsuccessful attempt to acquire the disputed Domain Name without giving any hint that the Complainant possessed a legal claim to the disputed Domain Name and, when that approach failed, the Complainant filed the Complaint without any plausible legal basis. The Complainant has raised baseless arguments that unreasonably ignore established Policy precedent, e.g., attacking the right of the Respondent to deal in domain names for profit whereas it is well established that this practice of itself is entirely legitimate in the absence of any intent to target a complainant’s trade mark.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Internally Represented
Case Comment by ICA General Counsel, Zak Muscovitch: An interesting story is told via this well-reasoned case. Here, an overly aggressive Complainant, who was apparently somewhat familiar with the UDRP, was left with nothing after presenting a faulty case. It just goes to show you how the case does not end after reading the Complainant’s facts. Indeed, after reading the Complainant’s facts alone, it seemed like it had a pretty good case! But after reading the Respondent’s facts and applying the law, the Respondent deservedly prevailed.
Is Constructive Knowledge Sufficient under the Policy?
<prizepicked .com>
Panelist: Mr. David E. Sorkin
Brief Facts: The Complainant, the largest daily fantasy sports operator in North America, has used the PRIZEPICKS mark in connection with its services since at least as early as 2018. The Complainant owns various trademark registrations for PRIZEPICKS and related marks, including a US trademark registration for PRIZEPICKS issued in 2020. The disputed Domain Name <prizepicked .com> was registered in January 2025 and resolves to a placeholder landing page.
The Complainant alleges, “upon information and belief,” that the Respondent registered the Domain Name to infringe on the Complainant’s rights, tarnish its reputation, impersonate the Respondent in email messages, and is neither making active use of the Domain Name nor preparing for such use. The Complainant further alleges that the Respondent had constructive knowledge of the Complainant’s PRIZEPICKS marks when it registered the disputed Domain Name, based upon the Complainant’s trademark registrations, and that the Respondent’s use of a privacy registration service to conceal its identity is evidence of bad faith. The Respondent failed to submit a Response in this proceeding.
Held: Initially, the Panel considers it important to express its frustration with the Complainant’s inclusion in the Complaint of allegations that appear to be unsupported by any discernible evidence or factual basis, prefaced by the phrase “upon information and belief.” Paragraph 3(b)(xv) of the Rules requires that the Complaint include “any documentary or other evidence… upon which the complaint relies.” Unlike the complaint that initiates legal action in many jurisdictions, a complaint in a UDRP proceeding is expected to do much more than merely give the respondent notice of the Complainant’s allegations. The complaint represents the only assured opportunity for the Complainant to establish the three elements of its claim and meet its burden of persuasion on each. Thus, it is generally insufficient to make assertions “on information and belief” in a UDRP complaint.
The Panel is also troubled by the Complainant’s reliance upon constructive knowledge as a basis for bad faith. Under the Policy, constructive notice is insufficient; bad faith requires at least an inference that the Respondent had actual knowledge of the Complainant or its mark when registering the domain name, see UDRP Perspectives on Recent Jurisprudence, supra, § 3.4. In this case, the Panel finds no basis in the record for such an inference. The Respondent is located in Spain, while the Complainant has offered evidence of trademark registrations and applications only in the United States and has not suggested that its activities or reputation have an international reach. The Complainant’s mark and the disputed Domain Name are both composed of two relatively common dictionary words, making it plausible that the Respondent selected the domain name for reasons unrelated to the Complainant.
Complaint Denied
Complainant’s Counsel: Ashley N. Klein of Morris, Manning & Martin, LLP, United States
Respondent’s Counsel: No Response
Case Comment by Digest Editor, Ankur Raheja: This is certainly a thoughtful decision made by the Panelist in a no-response matter, highlighting two key issues:
- The Complainant’s inclusion in the Complaint of allegations, prefaced by the phrase – “upon information and belief” – unsupported by any discernible evidence or factual basis.
- Complainant’s reliance upon Constructive Knowledge as a basis for bad faith.
It is well-established that the Panel may deny relief where a complaint contains mere conclusory assertions, unsupported by evidence. The Panel is entitled to accept reasonable allegations set forth in a complaint; however, the Panel should deny relief where a complaint contains mere conclusory or unsubstantiated arguments (WIPO Jurisprudential Overview 3.0 at 4.3), see A Hackensack Meridian Health, Inc. v. Palisades Medical Center, Inc., NAF Claim Number: FA2312002075424. Also see: TRANS SESÉ, S.L. v. 陈财贵 (Chen Cai Gui), WIPO Case No. D2023-4283:
All said, the Complaint contains a series of conclusory statements which are not supported by evidence and which do not even add up to allowing the Panel to draw an inference of bad faith on the part of the Respondent. In the absence of clear convincing evidence, the preference would be to preserve the status quo taking into account the relative prejudice to the parties.
Furthermore, it is also well-established that there is no place for constructive knowledge under the Policy. Bad faith requires at least an inference that the Respondent had actual knowledge of the Complainant or its mark when registering the domain name. For this purpose, the Panel relies upon section 3.4 of the UDRP Perspectives on Recent Jurisprudence, which reads:
There is no place for the concept of “constructive notice” of trademarks under the Policy. The essence of a Complaint is an allegation of bad faith targeting of the Complainant. For that bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant, the trademark owner. If the registrant is unaware of the existence of the trademark owner, it cannot sensibly be regarded as having any bad faith intentions directed at the Complainant. If the existence of a trademark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would be unjustifiably subject to UDRP proceedings.
Also see: Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex), [NAF Claim Number: FA0509000567039]:
“Complainant argues, by registering the TEEN SMART mark, it placed Respondent on constructive notice of the existence of the mark, and therefore Respondent’s registration of the Domain Name containing Complainant’s mark is necessarily evidence of bad faith. The Policy makes no mention of constructive notice being enough to satisfy this requirement. Moreover, if the Complainant’s position were adopted, it would essentially establish a per se rule of bad faith any time a domain name is identical or similar to a previously registered trademark since constructive notice could be found in every such case. Such a result would be inconsistent with both the letter and the spirit of the policy, which requires actual bad faith.”
Party Submitting Unsolicited Filing Should Show Relevance and Exceptional Circumstances
Skytree B.V. v. c/o skytree .com, WIPO Case No. D2025-0128
<skytree .com>
Panelist: Mr. Adam Taylor
Brief Facts: Since 2014, the Complainant has provided direct air capture technology for carbon removal and utilisation under the mark SKYTREE. The Complainant owns a number of registered trademarks for SKYTREE including Benelux trademark (July 20, 2015), and the International trademark (October 29, 2015). The Complainant operates a website at <skytree .eu>. The Respondent, a visual effects and content creation company, registered the disputed Domain Name on December 31, 1998. Over the years, the disputed Domain Name has shown the parking pages and error notices. On September 20, 2024, the Complainant used GoDaddy’s brokerage service and emailed the broker to explore purchasing <skytree .ca> and the disputed Domain Name as well.
The Complainant alleges that the disputed Domain Name has “degenerated” into being registered and used in bad faith in that the Respondent is blocking others, including the Complainant, from using it for legitimate purposes. The Respondent’s refusal to respond to purchase offers, despite listing the domain for sale for years and not using it, further supports this claim. The Respondent contends that the Complainant has been harassing the Respondent to seek more information about the Respondent’s intended use of the disputed Domain Name. The Respondent further contends that it registered the disputed Domain Name well before the Complainant existed and is entitled to use the disputed Domain Name for any legitimate purpose, including parking it.
Preliminary Issue – Supplemental Filings: Each party has made an unsolicited supplemental filing. UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g., owing to some “exceptional” circumstance, see WIPO Overview 3.0”, section 4.6. The Panel has decided to admit the Complainant’s filing because it responds to the Respondent’s assertions of RDNH that were first made after the Complaint was filed. The Panel declines to admit the Respondent’s filing as it simply contains a standard rebuttal of the Complainant’s filing and, in any case, it is not material to the Panel’s decision.
Held: Except for limited circumstances involving registration of a domain name to capitalise on nascent trade mark rights, panels will not normally find bad faith on the part of the respondent where a respondent registers a domain name before the complainant’s trade mark rights accrue, see WIPO Overview 3.0, section 3.8.1. It is not in dispute that the Respondent acquired the disputed Domain Name in 1998, whereas the Complainant’s trade mark rights only arose in 2014 at the earliest. As the Complainant and its rights did not exist in 1998, the disputed Domain Name could not have been registered in bad faith. This is fatal to the Complainant’s case – irrespective of the nature of any later use of the disputed Domain Name – because the Complainant is required to prove both registration and use in bad faith.
RDNH: The Panel has little difficulty in concluding that the reasons articulated by panels for finding RDNH, as set out in section 4.16 of WIPO Overview 3.0, apply in this case. First, the Complainant made an unsuccessful pre-filing attempt to buy the disputed Domain Name from the Respondent via the GoDaddy brokerage service. Further, the Complaint itself acknowledged that the Respondent registered the disputed Domain Name in 1998 whereas the Complainant asserted trade mark rights that commenced only in 2014, thereby ignoring established Policy precedent that registration in bad faith could not arise in those circumstances. Moreover, the Complaint raised implausible legal arguments focused more on the Complainant’s desire/alleged entitlement to obtain the disputed Domain Name than any bad faith on the part of the Respondent.
In its Supplemental Filing, the Complainant acknowledged that it filed the Complaint because it saw no other way of engaging in the potential purchase of the disputed Domain Name from its unknown owner. It was entirely improper for the Complainant to use the UDRP to uncover the Respondent’s identity or aid purchase negotiations, imposing unnecessary costs and inconvenience on the domain name registrant. Finally, the Complainant objects to the Respondent’s hostility to the Complainant’s settlement communications. However, the Respondent was in no way obliged to discuss the sale of the disputed Domain Name to the Complainant following the filing of the Complaint (or otherwise), and the Respondent’s tone is perhaps understandable in light of the Complainant’s misuse of the UDRP to further the Complainant’s attempted purchase of the disputed Domain Name.
Complaint Denied (RDNH)
Complainant’s Counsel: Matchmark B.V., Netherlands (Kingdom of the)
Respondent’s Counsel: Chestek Legal
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.