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UDRP Perspectives has been updated with new perspectives on the topics of Trademark Infringement and Reputation, written by Igor Motsnyi and Zak Muscovitch. UDRP Perspectives welcomes you to review current jurisprudence as it relates to these two important topics or on any of the 50 topics that it covers. The goal of UDRP Perspectives is to provide guidance in the application of the UDRP through up-to-date case law and commentaries. Whether you are a UDRP Panelist looking for inspiration and guidance, counsel looking for helpful case citations and insight, or a party looking to better understand the nature and scope of UDRP, UDRP Perspectives can be a useful resource. If you are a Panelist and you share a perspective with the authors, you are welcome to join the growing ranks of Panelists who cite UDRP Perspectives in their decisions.
We hope you will enjoy this edition of the Digest (vol. 5.5) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Dealing With One Dispute and Two Respondents (lemeilleur .com, le-meilleur .com *with commentary)
‣ DomainTools Undoes Complaint (monkeyloft .com *with commentary)
‣ Knowledge of Complainant’s Trademark is Not Enough (noon .ae *with commentary)
‣ Registrant Used the Domain Name to Offer Competing Services (epicgamesjs .com)
‣ Panel: This is a Contested Trademark Infringement Case, Not a Cybersquatting Case (bodycotemts .com *with commentary)
Dealing With One Dispute and Two Respondents
<lemeilleur .com>, <le-meilleur .com>
Panelist: Mr. Igor Motsnyi
Preliminary Matter(s): The Complainant filed this complaint in respect of the two disputed Domain Names owned by two different registrants. Both registrants submitted their responses and they are represented by different counsel. There is no evidence of common control and the fact that both disputed Domain Names were registered within a short time frame or on the same date, is insufficient, in particular taking into account that the disputed Domain Names represent a common phrase in French that may be attractive to different individuals and companies. Therefore, the Complainant’s request for consolidation is denied and the complaint will be considered only in respect of the disputed Domain Name <lemeilleur .com>.
Further, both Parties filed supplemental submissions. The UDRP is a simplified procedure that consists of a complaint and a response. The Panel, at its sole discretion, may request further statements or documents from either of the Parties under Rule 12. In particular, it notes the Complainant attempted to submit a new claim in respect of its alleged trademark rights based on alleged long-term use of the terms “Le Meilleur”, provided essentially a new complaint and also took this opportunity to provide a rebuttal of the Respondent’s response. “The Panel finds no exceptional circumstances to accept supplemental submissions but notes some are relevant for its RDNH analysis and considers them under Rule 10(d).”
Brief Facts: The Complainant claims that it is the owner of a US trademark registration “Le Meilleur” registered on August 31, 2024, covering “bed sheets, pillowcases and bed linen”. The Complainant additionally submitted a document containing a USPTO record for the mark “LE MEILLEUR” bearing serial number 98864499; application date – November 20, 2020; and registration date – November 22, 2024. However, in its supplemental submissions, the Complainant admitted that the mark above was an application rather than registration and instead claimed common law trademark rights in the terms “LE MEILLEUR”. The disputed Domain Name was registered on November 20, 2001, and was previously offered for sale to the general public.
The Complainant alleges that it previously submitted successfully take down notices to social media platforms – “Instagram” and “Facebook” and to “SEDO” based on its trademark rights and that the Respondent’s actions “indicate an intent to profit from or disrupt” the brand’s legitimate operations and that the Respondent registered the disputed Domain Name “solely to capitalize on the trademark’s reputation, prevent the Complainant from using it, or sell it at an inflated price”. The Respondent contends that he is a domain name investor and the disputed Domain Name represented an investment for him as a valuable domain name corresponding to a common/popular phrase in French (to mean ‘The Best’) that could be attractive to numerous potential buyers.
The Complainant further alleges that the Respondent disregarded the Complainant’s attempts to communicate and the Complainant’s offers to sell the disputed Domain Name and that the Respondent “re-registered and transferred the domain to Gabia, Inc.” (registrar) after the Complainant’s communication in October 2024, “to evade legal communication and prosecution”. The Respondent contends that he did not solicit any offers from the Complainant, it was the Complainant that contacted the Respondent, made offers and claimed to have trademark rights in various jurisdictions, including South Korea. The Respondent submits that this UDRP action is a result of the Complainant’s dissatisfaction with the Respondent’s lack of response to its offers.
Held: The Respondent brought to the Panel’s attention and the Panel verified under its own independent research of the USPTO website that the Complainant actually has a pending US trademark application filed on November 20, 2024. Therefore, the Complainant does not have trademark rights for the purpose of the Policy as it is well established that pending applications do not create trademark rights, see sec. 1.1.4 of WIPO Overview 3.0. In the additional submissions, the Complainant tried to address this issue and claimed common law trademark rights admitting that it only has a pending US application on the date of filing of the complaint. What is more concerning for the Panel is that the Complainant clearly provided a fabricated record from the USPTO website with false information and made false statements as to its registered trademark rights.
It is well-established that domain investors have legitimate interest and trading in domain names when done without intent to profit from other’s trademarks can in and of itself, constitute a “legitimate interest” under the Policy, see WIPO Overview 3.0, sec. 2.1 and previous UDRP decisions supporting this view, e.g. CAC-UDRP-106685, CAC-UDRP-106334. It is also well-accepted that 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 (WIPO Overview 3.0, sec. 3.8). The disputed Domain Name was registered back in 2001 and the Complainant’s company was incorporated only in 2023. There is no evidence of targeting and the Respondent could not have had the Complainant in mind in 2001.
RDNH: Here the Complainant does not have a representative and it appears that the complaint is filed pro se and it is signed by the Complainant’s CEO. However, this is not an excuse in the circumstances of this dispute. RDNH can take many forms, including “Plan B” (after failing to buy a domain name), fatally weak cases and cases where a complainant brought a complaint despite the fact that it knew or ought to have known that it could not succeed (see sec. 4.2 of “UDRP Perspectives”, updated on January 15, 2025).
The present complaint “ticks” many RDNH boxes, for example: the Complainant was aware of its lack of trademark rights; the Complainant provided false evidence and attempted to mislead the Panel; the complaint was filed after an unsuccessful attempt to acquire the disputed Domain Name from the Respondent; the complaint ignores UDRP case law and WIPO Overview 3.0. Further, in its supplemental submissions, the Complainant tried to re-argue its case, allege common law trademark rights and provide other additional arguments including seemingly AI-generated citations.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Ankur Raheja of Cylaw Solutions, India
Case Comment by ICA General Counsel, Zak Muscovitch: In an exceptionally well-reasoned decision, the Panel reached the appropriate resolution. The Panelist really had two options; a) Dismiss both Complaints; or b) Dismiss one of the Complaints and allow the other to proceed if refiled. As the Panel noted, pursuant to Rule 3(c) of the UDRP Rules, “a Complaint may relate to more than one domain name, provided that the domains are registered to the same domain-name holder”. Here, the Complainant made enough of an argument for consolidation based upon common ownership considering their identical registration date, thereby forcing the matter onwards beyond the Provider and onto the Parties to argue and the Panel to rule on the matter.
Once before the Panel, the Panel, having found no common ownership, made the best decision in the circumstances. The Panel dismissed the first Complaint on the merits and found RDNH, and dismissed the second complaint on a without prejudice basis as more than one Complaint could not be properly before the Panel absent common control of the two respective disputed Domain Names. The Panel could have dismissed both of the cases because the Complaint related to two Domain Names without common ownership, but that would have resulted in unnecessary hardship for both Respondents as well as the Complainant, since the dispute would have been treated essentially as a nullity with no progress having been made whatsoever on the merits. Instead, the Panel did the right thing here by at least determining the first Domain Name dispute on the merits and leaving the second one to be refiled it the Complainant so desired. It would have been entirely improper to dismiss both disputes even though they both warranted it, as it would have exceeded the Panel’s jurisdiction.
We must have some sympathy for the second Respondent who was forced along the entire procedure only to face the prospect of having the Complainant refile, but hopefully the Complainant will have learned its lesson from this case and will not refile, as it would be foolhardy to do so in the circumstances.
Regarding the RDNH, this was one of the most egregious cases in recent memory. The Panel’s decision includes a litany of abusive conduct by the Complainant. Some may reasonably argue that such conduct effectively goes without meaningful censure since there are no consequences beyond the ‘slap on the wrist’ of an RDNH finding. Some may also reasonably argue that such conduct is more adequately deterred in the court system where courts have the power to levy costs and fines against parties and counsel who abuse the system. Those are all good points, and indeed our current UDRP system inadequately deters and fails to meaningfully penalize RDNH. That being said, fortunately such cases are relatively rare and although solutions are possible (cost consequences, etc.), such solutions involve complex considerations that on the whole, tend to make improvements to the RDNH regime undesirable despite good justification for them. For more reading on this topic, please visit UDRP.group and in particular see the “Recommendation Against Adopting Penalties for Complainants or Respondents” . This series of proposals was developed by Steve Levy, Georges Nahitchevansky, Nat Cohen and myself, after well over a year of examination, debate, and consideration.
Lastly, congratulations to the counsel on this matter, Ankur Raheja (Editor-in-Chief of this Digest), and Jason Schaeffer, respectively, on this well defended case.
DomainTools Undoes Complaint
Monkey Loft Lounge LLC v. Apostolos Dountsis, NAF Claim Number: FA2412002132877
<monkeyloft .com>
Panelist: Mr. Steven M. Levy, Esq.
Brief Facts: The US-based Complainant, incorporated in 2013, operates a nightclub and music venue in the city of Seattle. The Complainant claims using the common law trademark MONKEY LOFT, has marketed itself exclusively as a nightclub and music venue and, since 2013, has become renowned in the Seattle area. The disputed Domain Name was registered around 2013 and resolves to a generic landing page that displays the MONKEY LOFT mark. The Complainant submits the DomainTools Report, which includes archived WHOIS records showing various changes in Registrar and privacy guards, and it “asserts [that] the effective registration date of the Disputed Domain is December 29, 2021.”
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed Domain Name and that the disputed Domain Name was registered and is used in bad faith based on the Respondent’s passively holding it and resolving it to the generic landing page. The Complainant further alleges that the “Respondent registered the Disputed Domain with knowledge of the Complainant’s notoriety and trademark rights. The Respondent’s actions manifest a recognition of value and repute of the Complainant’s Mark.” The Respondent failed to submit a Response in this proceeding.
Held: The Complainant submits a screenshot showing that the disputed Domain Name currently resolves to a website displaying the phrase “Monkey LOFT” superimposed over an elongated green bar and a cartoon image of a smiling monkey. However, archived images from DomainTools suggest that the Respondent may, at some point in the past, have had an intention to use the disputed Domain Name in connection with some form of finance-related service. The above notwithstanding, the Panel notes that the Respondent registered or acquired the disputed Domain Name at a time prior to the coming into existence of the Complainant’s trademark rights. Domain names are sold on a first-come-first-served basis and, in the absence of cybersquatting, registrants have at least some basic ownership rights or legitimate interests at the time of purchase.
Moreover, “UDRP Panels routinely determine that a domain name could not have been registered in bad faith when the registration predates a trademark right” and the present Panel adopts this view, see UDRP Perspectives on Recent Jurisprudence, § 3.2 (updated Jan. 15, 2025). The only exception to the above line of reasoning is where a respondent had prior knowledge of, or anticipated the imminent coming into existence of, a complainant’s trademark. However, there is no evidence that the Respondent here had such advanced knowledge of the Complainant’s nightclub or mark. The Panel has carefully reviewed the Domaintools Report and concludes that the Report makes it clear that the Respondent was the Registrant thereof at least as of January 13, 2013, while the Complainant was incorporated on March 5, 2013.
Though less germane to the Panel’s finding, it is also noted that the Complaint and its Annexes, while asserting that its “night club and music venue [had] become renowned in the Seattle area”, do not explain how a Respondent who is based in Athens, Greece, would have knowledge of Complainant’s nightclub in U.S. Further, while making only generic assertions that the disputed Domain Name redirects web traffic away from the Complainant or that Respondent is seeking to “force [complainant] into transfer-for-price negotiations”, it provides no specific argument or evidence to show that the Respondent’s use of the disputed Domain Name or its resulting website specifically targeted the Complainant’s mark in bad faith.
RDNH: The Complainant, who is represented by professional counsel, “asserts the effective registration date of the disputed Domain Name is December 29, 2021” despite its own evidence, the DomainTools Report, reflecting Respondent as the Registrant of the disputed Domain Name on January 13, 2013, which is before the Complainant’s earliest claim of trademark rights on March 5, 2013. This is, at best, an inattentive review of the evidence or, at worst, a misrepresentation by the Complainant.
Regardless, as Policy ¶4(a)(iii) requires a showing that the disputed Domain Name was registered in bad faith, the Complainant or its counsel either knew or should have known that it would be impossible, under any argument around the present facts, to satisfy the plain language of this sub-paragraph and, thus, that it had no possibility of success against the <monkeyloft .com> domain name notwithstanding the fact that it was registered or otherwise acquired by the Respondent prior to the existence of its rights in the MONKEY LOFT mark.
Complaint Denied (RDNH)
Complainant’s Counsel: Steven L. Rinehart, Utah, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Well done, Panel. Even when faced with a ‘No-Response’ case, a good Panel will carefully examine the evidence. After all, it is the Complainant’s case to make, not the Respondent’s. As note in UDRP Perspectives at 0.2, “Complainants must demonstrate that they are entitled to relief under the Policy”.
Here, it was the Complainant’s own evidence that showed the Complaint to be without merit. DomainTools can be a powerful tool for complainants and respondents to employ when it comes to historical Whois records, as is Archive.org when it comes to historical use. Of course, the usefulness of DomainTools’ historical Whois reports has deteriorated since 2018 due largely to the dramatic increase in privacy protected domain names as a result of GDPR and also as a result of registrar practices.
Nevertheless, here the Complainant submitted a DomainTools report in the hopes that it would help establish its case, but it did the opposite. As the Panel discovered upon its careful examination of the report, the very same Respondent (located in Greece, which is of course, far away from the Seattle nightclub) was recorded as the registrant as early as January 13, 2013. Notably, the Complainant’s incorporation date was three weeks later, on March 5, 2013, making bad faith registration impossible absent some transferred trademark rights which pre-existed the Domain Name registration, and in this case there was none.
I also want to draw attention to an important conclusion that the Panel reached on the issue of Rights/Legitimate Interest. The Panel stated that “Respondent registered or acquired the disputed domain name at a time prior to the coming into existence of Complainant’s trademark rights” and that “domain names are sold on a first-come-first-served basis and, in the absence of cybersquatting, registrants have at least some basic ownership rights or legitimate interests at the time of purchase”. This is an important concept, as I have written about previously. Ask yourself, if there were no Complainant trademark rights in existence at the time that the Domain Name was registered, how could the Respondent have anything but rights and legitimate interest in the Domain Name? As the Panel noted here, the fact that the Respondent registered the Domain Name prior to the Complainant’s trademark rights affords ownership rights in the Domain Name to the Respondent.
Lastly, let’s briefly discuss the RDNH finding. As was its duty under Rule 15(e) the Panel fulfilled its express obligation to make a finding of RDNH where warranted, even in a No-Response case. As noted in UDRP Perspectives at 4.1:
“Declarations of Reverse Domain Name Hijacking play a critical role in the UDRP by deterring abusive use of the Policy and preserving the integrity of the UDRP for legitimate claims.
A Panel will not have satisfactorily discharged its duty under the UDRP without an express consideration of RDNH where the facts and circumstances warrant. This is so, not just because of Rule 15(e) which requires a Panel to consider RDNH, but also because RDNH is essentially a kind of “counterclaim” that the Respondent is entitled to adjudication of.
Even when RDNH is not expressly requested by a Respondent – indeed even in ‘no response’ cases – a Panelist must still consider RDNH where appropriate. Where an RDNH request or circumstance exists, a Complainant may not even be permitted to withdraw its Complaint and thereby avoid an RDNH finding.”
As the Panel properly noted, given the chronology and indeed given the Complainant’s “at best, inattentive review of the evidence, or at worst, a misrepresentation in the Complaint”, RDNH we well warranted here. Notably, the Panel in its findings stated that “Complainant, or its Representative” has engaged in reverse domain name hijacking by pursuing the present Complaint against the disputed domain name”. Indeed, in reality, it is almost invariably Complainant counsel, rather than a represented Complainant, who is fundamentally responsible for making an abusive Complaint, since a client relies nearly entirely on its legal advisor when determining how to proceed and what evidence is available to support its case.
According to UDRP.tools, this is the fourth time that Complainant’s counsel has filed an abusive complaint where a finding of RDNH was made, (see. https://udrp.tools/?s=ce3d9e3b), with the others being scheduleflow .com, maximize. com, and executiveresumepro .com.
Knowledge of Complainant’s Trademark is Not Enough
<noon .ae>
Panelist: Mr. Matthew Kennedy (Presiding), Mr. Andrew D. S. Lothian and Mr. Debrett G. Lyons
Brief Facts: The Complainant is an e-commerce company launched in the UAE in September 2017, in the Kingdom of Saudi Arabia (“KSA”) in December 2017, and Egypt in 2019. A UAE company named Noon AD Holdings Ltd holds various UAE trademark registrations for NOON, all registered on January 22, 2017. The Complainant registered the disputed domain from 2017 to 2023, using it to redirect to <noon .com>. The registration expired around December 2023 due to non-renewal. The disputed Domain Name, created on January 10, 2024, was registered by a US-based Respondent who already had prior registrations of domain names composed of descriptive terms. In January 2024, Domain Name was announced as dropped by a UAE broker, related to the Respondent. The Respondent won the auction for US $710, and by April 19, 2024, the domain hosted a site promoting online education courses with reviews and links. The Complainant contacted the Respondent twice, alleging that the disputed Domain Name infringed its rights. The Respondent replied, questioning the infringement claim, and concluded by saying “We are not impressed with your answer or your offer”.
The Complainant alleges that the decision of the Respondent to use the disputed Domain Name with an affiliate online streaming learning platform has nothing to do with that platform, a term of learning, or a brand of that platform. The Complainant also points out that the final two words of the Respondent’s reply to the Complainant’s offer of AED 5,000 were: “We are not impressed with […] your offer”. There can be no clearer statement, short of naming a specific monetary amount, that the Respondent wants more money from the Complainant. The Respondent contends that he develops web projects of his own and frequently registers descriptive or generic domain names which become available for such projects. The Respondent’s interest in developing an education-related site predates the Complainant’s abandonment of the disputed Domain Name, as evidenced by his registration of <bestcourses .ai> in June 2023, which also forwards to the site that the Respondent has developed.
Held: The disputed Domain Name was registered by the Respondent after an auction held in January 2024, years after the registration of the NOON trademark in which the Complainant has rights. The Complainant has made extensive use of that trademark for six years in connection with the supply of services on its e-commerce platform to millions of users. Even though the Complainant does not operate in the United States, where the Respondent is located, the broker who sold the disputed Domain Name is based in the UAE and he acknowledged the identity of the Complainant on his social media account during the 24-hour auction of the disputed Domain Name, which the Respondent won. The Respondent does not deny that he was aware of the Complainant’s e-commerce platform when he bid for the disputed Domain Name. In view of these circumstances, the Panel is satisfied that the Respondent knew of the Complainant and its NOON trademark at the time when he registered the disputed Domain Name. However, that in itself does not answer the question of whether the Respondent has acted in bad faith.
The Complainant also argues that the Respondent acquired the disputed Domain Name primarily to sell the registration to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket expenses. The Respondent denies that its statement indicates an intent to sell. The Respondent provides an alternative explanation for his choice to register “noon” in the disputed Domain Name. He submits that the Arabic letter “noon” is frequently associated with education, writing or literacy. It is unnecessary for the Panel to opine on the origin of this association as it suffices to note evidence on the record showing that multiple businesses have in fact registered domain names containing “noon” for use in connection with Arabic education resources. While these domain names include additional descriptive words, they bear out this association of the letter “noon”. However, having reviewed the evidence showing the content of the Respondent’s website, and based on the limited evidence presented in the proceedings, the Panel finds the Respondent’s explanation for his choice of the disputed Domain Name to be plausible.
Accordingly, the evidence in the case file as presented does not indicate that the Respondent’s aim in registering or using the disputed Domain Name was or is to profit from or exploit the Complainant’s trademark.
Complaint Denied
Complainant’s Counsel: Hadef & Partners, UAE
Respondent’s Counsel: John Berryhill, United States
Case Comment by ICA General Counsel, Zak Muscovitch: We often see Respondents deny any awareness of a Complainant’s trademark as an effective means of defeating a Complaint. After all, if one is not aware of a Complainant’s trademark, then how could one have targeted it? But what about when a Respondent is aware of a Complainant and its trademark? Such awareness does not necessarily result in bad faith targeting, as we saw in this case.
Here the Panel took great care to consider the facts and arguments raised by the parties and notably concluded that because “noon” in Arabic did not only refer to the Complainant’s business but was also a commonly used letter of the Arabic alphabet. As such, and based upon the Respondent’s use of the Domain Name as well as the Respondent’s other descriptive domain names, the Panel found the Respondent’s explanation for its registration, “plausible” and dismissed the Complaint, finding that “the evidence in the case file as presented does not indicate that the Respondent’s aim in registering or using the disputed domain name was or is to profit from or exploit the Complainant’s trademark”. Where a Respondent raises a plausible explanation for its good faith registration of a domain name which is uncontradicted by anything else in the record, a Panel will often find in favour of the Respondent since “the burden of proof rests with the Complainant” (See for example, MARLINK SA v. ahmed mahmoud fakhr eldin, webeasystep, WIPO D2024-1591, <msarlink.com>, Denied).
Registrant Used the Domain Name to Offer Competing Services
Epic Games, Inc. v. Edward Jones / webis, NAF Claim Number: FA2412002132954
<epicgamesjs .com>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant, founded in 1991, is a creator, developer, and publisher of video games, a game engine, and content-creation software. The Complainant has had numerous successful games over the years, including the Unreal, Gears of War, Infinity Blade series of games, and Fortnite (over 804 million registered accounts). The Complainant also acts as a game publisher under the mark EPIC GAMES PUBLISHING and hosts the EPIC GAMES STORE, a curated distribution platform of video and computer games with over 270 million users. In conjunction with the promotion and rendering of its goods and services, the Complainant has owned and used the domain <epicgames .com> since at least as early as January 5, 1995. The Complainant has rights in the EPIC and EPIC GAMES marks through their registration in the United States in, respectively, 1998 and 2002.
The disputed Domain Name was registered in 2023 and resolves to a website that purports to offer products that compete with those of the Complainant. The Complainant alleges that the Respondent fails to use the disputed Domain Name to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the resolving website displays the Complainant’s EPIC mark and purports to offer a “gaming booster” for the Complainant’s games. The Complainant further alleges that the Respondent registered and uses the disputed Domain Name in bad faith as the resolving website purports to offer a product that competes with the Complainant’s products. The Complainant cites UDRP precedents to support its position under different clauses. The Respondent failed to file a Response.
Held: The resolving website purports to offer products that compete with those of the Complainant. Previous Panels have found that the use of a disputed Domain Name to offer goods or services in competition with those of a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed Domain Name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed Domain Name to offer for sale competing services.”). Thus the Panel finds that the Respondent fails to use the disputed Domain Name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
As already noted, the resolving website purports to offer products that compete with those of the Complainant. Panels have held that registration and use of a disputed Domain Name to divert Internet traffic to a competing website offering the same or similar goods or services demonstrates bad faith registration and use under Policy. See ZIH Corp. v. ou yang lin q, FA 1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). Thus the Panel finds that the Respondent registered and uses the disputed Domain Name in bad faith under Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Transfer
Complainant’s Counsel: Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, USA
Respondent’s Counsel: No Response
Panel: This is a Contested Trademark Infringement Case, Not a Cybersquatting Case
Bodycote Plc v. Abhilash VJ, Company, WIPO Case No. D2024-4619
<bodycotemts .com>
Panelist: Mr. Lawrence K. Nodine
Brief Facts: The Complainant provides heat treatment and specialist thermal processing services using the trademark BODYCOTE. The Complainant owns trademark registrations for the trademark in several jurisdictions, including Oman. The Complainant owns the domain <bodycote .com>, which resolves to a website where the Complainant publishes information about its services. The Respondent registered the disputed Domain Name on June 7, 2023. The “mts” component of the disputed Domain Name refers to “materials testing service,” which services Respondent offers out of its facilities in Oman using the trademark BODYCOTEMTS in a stylized format. The Respondent applied for this registration on April 1, 2023, but the Complainant filed an Opposition proceeding on July 17, 2024. In a decision dated November 13, 2024, the Oman Trademark Office rejected the Opposition as untimely filed. On November 9, 2024, the Respondent received four ISO Certificates relating to materials testing services.
The Complainant alleges that the Respondent’s use infringes the Complainant’s trademark rights, in particular its trademark which is registered in Oman and that the disputed Domain Name “is presently being used on the website at the Domain in relation to the supply/offer to supply by the Respondent of material testing services in the construction sector in Oman, which are identical to those provided by the Complainant and protected by the Registrations, in particular in class 40, “treatment of materials” and “advice and information” in connection with the same in class 40 and “industrial analysis and research services” in class 42.” The Respondent denies trademark infringement, arguing that “the complainant and the respondent are operating in entirely different business activity and there is no scope for any confusion as alleged. The Respondent is operating in Material testing and complainant is operating in heat treatment and specialist Thermal process.”
Held: This is not a cybersquatting case. It is a contested trademark infringement case. The Panel acknowledges that the Respondent appears to mimic the design elements of the stylized version of the Complainant’s trademark. On the other hand, it is not clear that the Complainant offers services in the materials testing space. Moreover, the Respondent owns an Oman trademark registration that includes the design format that the Complainant accuses the Respondent of infringement. This case is better left to the courts (whether in Oman or otherwise). Panelists frequently observe that the UDRP is meant to address intentional bad-faith conduct and not ‘ordinary’ trademark infringement. “The Policy is only designed to deal with clear cases of cybersquatting. This procedure is not a convenient forum for resolving borderline disputes and/or cases involving material conflicts of fact,” see: Centennial Communications Corporation and Centennial de Puerto Rico v. Centennial, WIPO Case No. D2000-1385.
Also see: Thor Tech Inc. v. Eric Kline, WIPO Case No. D2023-4275: “The opinion observes that the “Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy” notes three “fundamental observations” in connection with the approval of the UDRP implementation documents. One such observation relates to the “minimalist” nature of proceedings under the Policy, and notes that the UDRP “calls for administrative resolution for only a small, special class of disputes. Except in cases involving ‘abusive registrations’ made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the Policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The Policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of ‘abusive registrations.’
Complaint Denied
Complainant’s Counsel: Appleyard Lees IP LLP, United Kingdom
Respondent’s Counsel: Kadavans Legal offices, India
Case Comment by ICA General Counsel, Zak Muscovitch: It is crucial that Panelists differentiate between certain trademark infringement disputes that are outside of the scope of the Policy, and cybersquatting disputes which are within the Policy, as the Panel to its credit, did here. For more on this subject, please see UDRP Perspectives at 0.19 (Trademark Infringement) where Igor and I write about the differences between the two concepts of trademark infringement and cybersquatting. Some cases such as those involving unintentional trademark infringement, are clearly outside of the scope of the Policy, since the UDRP requires intentional targeting. Other cases involve both trademark infringement and cybersquatting, and those can be well within the Policy.
And yet others are just not suitable for adjudication under the UDRP as they involve competing claims of trademark or other rights, as was the case here. As the Panel did in this case to its credit, Panels should exercise caution in ensuring that a case is appropriate for resolution under the UDRP, since the UDRP is not intended to provide a route around trademark infringement court actions. Such disputes may raise a genuine issue of whether the Respondent can lawfully use the Domain Name due to defenses available in court that are generally not available in the UDRP. Here for example, the Respondent had a trademark registration, had an apparently going concern business in a different field, and an Omani court had already rejected the Complainant’s trademark opposition. This was not a clearcut case of cybersquatting. It involved complex and nuanced factual and legal determinations that are unsuitable for resolution under the UDRP and was best left to the courts, as the Panel found.
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.