Recording Now Available from the Inaugural Levine Lecture by Tony Willoughby: 
We were honored to have Tony Willoughby deliver the inaugural Levine Lecture. His insights and unique perspectives on the UDRP made for a compelling talk. We are pleased to announce that the lecture is now available online for you to watch at your convenience. Here is the link to the recording: https://youtu.be/dPleS9kdViQ.
The lecture was a great success, with nearly 80 attendees reflecting the high interest in the topic. We extend our heartfelt thanks to Tony Willoughby, Brian Beckham of WIPO who provided the introduction, and honoree Gerald Levine who offered closing remarks for making the event truly special. Thanks to all who attended. Your support and participation are greatly appreciated.
In this week’s digest we use A.I. to summarize decisions! Plus, in the Young .com case, we have from John Berryhill, the decision that A.I. Claude would have made if it were the Panelist. John fed the Complaint and the Response into Claude, and Claude provided its decision. You can compare it to the real McCoy from the Three-Person Panel.
We hope you will enjoy this edition of the Digest (vol. 4.29), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Panel: Complainant’s Allegation of Intent to Disrupt is “Simply Nonsense” (young .com *with commentary)
‣ The Burden the Passive Holding Doctrine Puts on Panels (wegocoveram .com *with commentary)
‣ Respondentista Shows Portfolio’s “-ista” “Naming Pattern” in Brandable Domain Name Case (babista .com *with commentary)
‣ Respondent’s Services Cannot be Described without Nominative Fair Use of the Trademark (cessnaferrypilot .com *with commentary)
‣ WhoHurtYou v. WhoHurtYu – The Case for Cybersquatting (whohurtyu .com *with commentary)
‣ Complainant Mixes Up State of Georgia with Country of Georgia? (almirall .org *with commentary)
Panel: Complainant’s Allegation of Intent to Disrupt is “Simply Nonsense”
Young Pharmaceuticals, Inc. v. Xiaopeng Zhou, WIPO Case No. D2024-1699
<young .com>
Panelist: Mr. John Swinson (Presiding), Mr. Phillip V. Marano and Mr. Andrew D. S. Lothian
Key Points by Claude.ai:
- The domain was first registered in 1994 by a person named Young from Colorado.
- The Respondent purchased the domain for $220,000 in September 2023.
- The Complainant owns trademark registrations for “YOUNG” dating back to 2008, with claimed first use in 1982.
- The Respondent is a domain investor who focuses on high-value, generic word domains.
Reasoning:
a) The panel found the domain identical to the Complainant’s trademark, satisfying the first element.
b) The panel did not rule on the second element (rights or legitimate interests).
c) The panel found no evidence of bad faith registration and use:
- The Complainant failed to prove its trademark was well-known.
- There was no evidence the Respondent knew of the Complainant when acquiring the domain.
- The Respondent provided a credible explanation for purchasing the domain as a generic word.
- Owning a large domain portfolio and intending to resell domains at a profit is not inherently bad faith.
RDNH:
- The panel found the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
- The Complainant made exaggerated claims without evidence and withheld relevant information.
- The Complainant should have known the Complaint had no reasonable prospect of success.
In conclusion, the panel denied the Complaint and ruled that it constituted Reverse Domain Name Hijacking.
Decision: Complaint Denied
Complainants’ Counsel: Cantor Colburn LLP, United States.
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States
The Real Decision: https://www.wipo.int/amc/en/domains/decisions/pdf/2024/d2024-1699.pdf
Claude’s AI Decision:
Based on the information provided in the Complaint and Response, I believe it is more likely that the Complainant, Young Pharmaceuticals Inc., will lose this UDRP case against the Respondent, Xiaopeng Zhou, for the domain name young .com. Here are the key reasons:
-
- The Respondent has demonstrated that “young” is a common dictionary word and popular surname with a wide range of potential legitimate uses unrelated to the Complainant’s trademark. This weakens the Complainant’s claim that the Respondent targeted its mark.
- The Respondent provided evidence that he acquired the domain name for its inherent value as a short, common word, not primarily to sell it to the Complainant or its competitors. The domain was owned by an unrelated third party for nearly 30 years prior.
- The Respondent is in the business of investing in valuable generic domain names, which is not in itself illegitimate. The Complainant did not show a pattern of the Respondent abusively registering trademarked domains.
- The broker’s outreach to the Complainant occurred months after the Respondent acquired the domain and was part of a mass solicitation to many potential buyers, not just the Complainant. This undercuts the claim of “targeting.”
- The Complainant is one of many trademark owners using the common word “young” and has not shown the Respondent’s aim was to profit off the Complainant’s mark specifically, as opposed to the word’s inherent value.
- The domain has not been used to target the Complainant’s business and the Respondent was unaware of the Complainant when acquiring the domain.
While each case is unique, based on prior UDRP precedents involving common word domains, the strengths of the Response, and certain shortcomings in the Complaint, I believe the Complainant has not met its burden to prove the Respondent registered and used the domain in bad faith to target the Complainant’s rights. The Panel will likely find the Respondent has a legitimate interest in this inherently valuable name and deny the Complaint. However, the Panel’s ultimate decision could depend on how it weighs all the facts and arguments presented.
Comment by ICA General Counsel, Zak Muscovitch: Well Claude, although you got the outcome right and identified the main facts, you still have a ways to go before you can draft a decision of the calibre of the Panel in this case. Nevertheless, it is an interesting exercise to see what today’s artificial intelligence engines are capable of.
I will point out a handful of gems from the actual Panel decision in this case:
1. We often see Complainant’s claim that their trademarks are very well-known as the Complainant did in this case (“The Complainant enjoys wide consumer recognition of the YOUNG mark, and respectively submits that the YOUNG trademark is “well-known” and recognized by the relevant consumers in the cosmetics and skincare industry”). When one lives and breathes a particular brand – as for example, the owner of a particular company or its marketing executive – one can perhaps be forgiven for exaggerating the reputation of one’s brand. Nevertheless, as the Panel noted, such claims often deserve scrutiny based upon the particular market that the Complainant is in, the geographic location of the parties, and the volume and nature of evidence of reputation that is provided by the Complainant: “The Complainant’s YOUNG trademark is not well-known to the public at large. It may be well-known to the Complainant’s target customer base (dermatologists and plastic surgeons), but the Respondent is not a dermatologist or plastic surgeon. The Complainant provided no evidence to support its assertions that the Complainant’s YOUNG trademark is well-known. The Complainant provided no evidence that would suggest that a person in China (where the Respondent is located) should have been aware of the Complainant or its YOUNG trademark.
2. Although a more informal procedure than a court proceeding, the UDRP nevertheless has some important and strict requirements when it comes to evidence. As the Panel noted:
“An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants and respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence.”
Panels therefore, like in this case, must guard against the evisceration of the Policy by permitting factual claims without supporting evidence, particularly about material matters. A Good pleading will take advantage of the unlimited right to include attached exhibits and support all material factual contentions with a supporting exhibit, much in the same way that one would generally do so when filing a motion for summary judgment.
3. Outbound domain name solicitations are not necessarily evidence of bad faith targeting of trademark owner. First, as was the case here, the broker independently identified parties who could be interested in the Young domain name, on behalf of the Respondent registrant who had never heard of the Complainant. But in any event, when it comes to a common term domain name, and absent some overriding fame of the Complainant’s mark or other evidence that would permit the inference that the Complainant was the target of the registration to begin with, it is difficult for a Complainant to make its case – even if it is solicited. The reason is that a common word like “Young” has so many purposes and uses that it would be next to impossible for the Complainant to prove (even on a balance of probabilities) that as the Panel said, the Respondent “had the Complainant in mind” at the time of registration.
4. After 25 years of the UDRP, many Panelists’ patience has worn thin when it comes to exaggerated and unsupported allegations of bad faith. Here, the Panel noted in its RDNH finding, that;
“the Complainant relies upon older outdated cases, and those in which the fame of the trademark concerned was established and makes exaggerated arguments. For example, to say that the Respondent selected the disputed domain name “at least to disrupt the business of Complainant” is a statement not supported by any evidence, and to assert that it is not possible to conceive any legitimate use of the disputed domain name is simply nonsense.”
The Burden the Passive Holding Doctrine Puts on Panels
BIOFARMA v. Taiwo Oni, CAC Case No. CAC-UDRP-106585
<wegocoveram .com>
Panelist: Mr. Igor Motsnyi
Key Points:
- Complainant owns trademark rights to “COVERAM” for pharmaceutical products.
- Panel found the domain confusingly similar to Complainant’s mark.
- Panel did not make a finding on Respondent’s rights or legitimate interests.
- Panel found Complainant failed to prove bad faith registration and use.
Reasoning:
a) “wegocoveram” appears to be related to phrase “we go cover am” used in Nigerian Pidgin English.
b) Google searches for “wegocoveram” showed no relation to Complainant’s trademark.
c) Evidence suggested Respondent may operate a business called “WGCA” or “We Go Cover Am”.
d) Panel found plausible good faith use of domain name possible.
e) Passive holding doctrine not applicable due to lack of evidence of targeting Complainant’s mark.
In conclusion, the Panel denied the complaint without prejudice, allowing Complainant to refile if future evidence of bad faith emerges.
Decision: Complaint Rejected
Complainants’ Counsel: IP Twins
Respondents’ Counsel: Self-represented
Comment by ICA Director, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
In the <wegocoveram .com> dispute, the Complainant argued that the passive holding doctrine as set forth originally in the Telstra decision applied, as there was no conceivable good faith use for <wegocoveram .com> given the fame and distinctiveness of its <COVERAM> mark.
The Respondent submitted a short informal response by email that providing little information and ended with “I hope this is not a scam.”
The passive holding doctrine is a panelist created expansion of the Policy. The UDRP as written requires a Complainant to demonstrate that the Respondent has put the domain name to a bad faith use. If ICANN had wanted to the Policy to apply to “non-use”, that option was available to it, but ICANN chose not to write the Policy that way. Yet in one of the first decisions issued by WIPO, known as the Telstra decision, a panelist, employing the almost unlimited discretion with which panelists are empowered, unilaterally expanded the policy to apply to non-use, noting five particular circumstances that were present in the dispute. The most notable of these circumstances is:
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
The “not possible to conceive” formulation is problematic. It does not provide an objective test, but a subjective test. The test is the Panel’s ability to conceive of a good faith use of the Disputed Domain Name.
The burden of proof under the UDRP is always on the Complainant. Yet the “not possible to conceive” formulation is a solipsistic standard, for it need not be based on any outside evidence. Telstra does not say that the Complainant must provide evidence that demonstrates that it is not possible to conceive of a good faith use. Moreover, such a test would require proving a negative.
If the UDRP were to include a passive holding doctrine, such a provision would have benefited from a thorough policy development process with input from various affected parties rather than being the product of a single panelist in a dispute in which the Respondent did not appear. As it is formulated in Telstra, it is a difficult test for a Panel to apply. As I discussed in a UDRP Digest comment on <fbsolution .info>, attempting to apply the passive holding doctrine while failing to do outside research and relying only on the Panel’s own limited base of prior knowledge and the Complainant’s self-serving submissions can produce a decision that is likely incorrect.
In the <wegocoveram .com> dispute, there was nothing in the evidence provided by the Complainant to suggest that there could be a good faith use for the disputed domain name that did not maliciously target its COVERAM mark. The Panelist could have stopped there and ordered a transfer on the basis that it was unable to conceive of a good faith use of the disputed domain name.
But the Panelist did not do that. The Panelist apparently recognized that he did not know what he did not know. He chose to make an informed decision. He therefore performed a Google search on “wegocoveram”. None of the results related to the Complainant (except one result that resolved to the Provider’s website and was related to this dispute). One of the search results for “wegocoveram” linked to Respondent’s profile with some info about his alleged business under the name WGCA or “We Go Cover Am”. Further research revealed that this phrase is Nigerian slang that has no relation to the Complainant. Further, the Respondent apparently is of African/Nigerian origin. The research suggested that there was indeed a conceivable good faith use for the Disputed Domain Name and that its registration and use could be entirely unconnected to the Complainant.
As the Panelist’s independent research was likely to affect the outcome of the dispute, the Panelist took the appropriate step of issuing a Procedural Order sharing his findings and inviting the Complainant to comment, which it did. The Complainant’s reply to the Procedural Order did not change the Panelist’s view that the Telstra standard was not met. The Panelist therefore denied the Complaint, but without prejudice. This would make it easier for the Complainant to refile the Complaint if new evidence arose that the Disputed Domain Name was being put to a use that targeted its mark.
This is a dispute that looked straightforward at first. If the Panelist had limited himself to the information contained in the Complaint, and not being himself conversant in Nigerian slang, he likely would not have been able to conceive of a good faith use for <wegocoveram .com> and would have ordered it transferred by applying the passive holding approach.
Yet the Panelist had the humility and good sense to choose to make an informed decision and conducted independent research to that end. The independent research was decisive in the outcome of the dispute. It likely avoided the Panelist issuing an unjust transfer decision. The Panelist issued a thorough, clearly reasoned decision explaining his approach and his thinking that is a model for how a UDRP decision should be written.
The formulation of the passive holding doctrine is highly problematic. It places a burden on a Panel to make a finding that often cannot be reliably made based on the evidence presented in the Complaint alone. The circumstances of <wegocoveram .com> strongly suggest that the proper application of the passive holding doctrine may require a Panel to conduct independent research.
Such were also the circumstances in the terravita .shop dispute, as discussed in this UDRP Digest comment here. There too the Panelist conducted independent research demonstrating that there was a good faith use for the Disputed Domain Name and thus avoided what would have been an unjust transfer.
It is the Complainant’s burden to make out all its allegations with adequate evidence, yet the passive holding doctrine often cannot be accurately applied relying only on evidence presented by the Complainant. A conscientious Panel therefore is left with three choices-
- If the mark is distinctive, famous, the disputed domain name is an exact match, and it truly is impossible to conceive of a good faith use, as perhaps was the case with <telstra.org>, then the Panel can rely on its own knowledge and the evidence of the fame of the mark presented in the complaint and order a transfer.
- If the mark is not so famous or the domain name is not an exact match, as in the <wegocoveram .com> dispute, then the Panel can deny the Complaint due to lack of sufficient evidence to make an informed finding as to whether the “not possible to conceive” standard has been met.
- Or the Panel can conduct independent research so as to inform itself as to the possibility of a good faith use for the Disputed Domain Name and decide the dispute accordingly.
A less-than-conscientious approach would be to order a transfer of a passively held domain name that is not the exact match of a globally famous, distinctive, mark, without first conducting independent research as to possible good faith uses for such a domain name.
The passive holding doctrine is flawed, but a Panel can largely remedy those flaws by conducting independent research.
Respondentista Shows Portfolio’s “-ista” “Naming Pattern” in Brandable Domain Name Case
Venderstorm Ventures GmbH & Co. KG v. Domain Administrator, PTB Media Ltd, WIPO Case No. D2024-1287
<babista .com>
Panelist: Mr. Matthew Kennedy (Presiding), Ms. Anne-Virginie La Spada and Mr. Gerald M. Levine
Key Points by Claude.Ai:
- The complainant, Venderstorm Ventures, acquired trademarks and domain names associated with the BABISTA brand in 2023.
- The disputed domain name was registered by the respondent, PTB Media Ltd, on October 17, 2005.
Reasoning:
a) The panel found that the domain name is identical to the complainant’s BABISTA trademark.
b) However, the panel ruled that the complainant failed to prove bad faith registration and use:
- There was no evidence of the complainant’s online presence before the domain registration in 2005.
- The respondent, based in Hong Kong, was unlikely to be aware of the BABISTA brand used mainly in Germany and Switzerland at that time.
- The domain appears to be part of the respondent’s pattern of registering short, brandable domain names ending in “-ista”.
- The panel rejected the complainant’s arguments about the respondent’s current use of the domain (PPC links, offering for sale) as not relevant to the registration intent in 2005.
- The panel also dismissed the complainant’s references to a previous UDRP case involving the respondent as not applicable to this situation.
RDNH: The panel did not find reverse domain name hijacking, as the complaint was not clearly brought in bad faith.
In conclusion, while the domain name is identical to the complainant’s trademark, the complainant failed to prove bad faith registration, leading to the denial of the complaint.
Decision: Complaint Denied
Complainants’ Counsel: y Ladenburger Partnerschaft von Rechtsanwälten mbB, Germany
Respondents’ Counsel: ESQwire .com PC, United States of America
Comment by ICA General Counsel, Zak Muscovitch: Having a trademark that precedes the disputed domain name is one thing, but demonstrating that the Complainant’s brand had such a reputation that it was surely the target of the registration a world away, is quite another, as the Panel found in this case. As the Panel noted:
“Although the Complainant’s predecessor-in-interest registered “babista” in domain names from 2004 onwards, there is no evidence that it established any associated website until 2006, nor that it ever used the BABISTA mark on another website. While the Complainant asserts that men’s fashion has been sold under the BABISTA brand since the early 1990s, the sole piece of supporting evidence is an online advertisement marking the 15th anniversary of BABISTA in 2006-07.”
It is also noteworthy that the Panel quite correctly, did not “impute Respondent with constructive notice of the contents of the German and International trademark registers”. That is the well established approach. For example, in The Way International Inc. v. Diamond Peters, WIPO D2003-0264, the Panel stated:
As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at Complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of Complainant, the trademark owner. If the registrant is unaware of the existence of the trademark owner, how can he sensibly be regarded as having any bad faith intentions directed at Complainant?
If the existence of a trademark registration was sufficient to give Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly. [emphasis added]
Lastly, it is noteworthy that in this case involved a “brandable” domain name – i.e. selected by the Respondent because “babista had valuable qualities, i.e. it is short in length, pronounceable in English and other languages, easy to spell, and brandable for any number of potential uses”. In addition to demonstrating that the suffix “-ista” is a common suffix in Spanish and Portuguese and evocative of the word, “barista”, the Respondent crucially provided evidence that its portfolio included numerous other -ista domain names and the Panel therefore found that, “in the circumstances of this case, the more plausible available explanation for the registration of the domain name is that it was part of a naming pattern within the Respondent’s portfolio” [emphasis added].
Respondent’s Services Cannot be Described without Nominative Fair Use of the Trademark
Textron Innovations Inc. v. Jay Brunn / Brunn Enterprises, LLC, NAF Claim Number: FA2406002102475
<cessnaferrypilot .com>
Panelist: Mr. Alan L. Limbury
Key Points by Claude.ai:
- Complainant owns CESSNA trademarks and claims the domain is confusingly similar.
- Respondent is a retired pilot offering ferry services for Cessna aircraft.
Reasoning:
a) Panel found the domain confusingly similar to Complainant’s marks.
b) However, Panel ruled Respondent has legitimate interests and did not register/use in bad faith:
- Domain describes Respondent’s bona fide services (ferrying Cessna planes).
- Website doesn’t imply Complainant’s sponsorship or affiliation.
- Nominative fair use of CESSNA mark to describe services.
- No evidence of intent to capitalize on consumer confusion.
In conclusion, while the domain is similar to Complainant’s mark, Respondent demonstrated rights/legitimate interests and good faith use, so Complainant failed to prove all required elements under the UDRP policy.
Decision: Complaint Denied
Complainants’ Counsel: Jeremiah A. Pastrick, Indiana, USA
Respondents’ Counsel: Self-represented
Comment by ICA General Counsel, Zak Muscovitch: This is the latest in a series of cases involving CESSNA (See https://udrp.tools/?s=ebbc088f). We previously commented in Digest Vol. 4.25 about the iCessna case and noted in particular the misapplication of the “passive holding” concept. In the present case however, a different Panelist got it right; finding in particular that “the Respondent registered the <cessnaferrypilot .com> domain name in order to communicate that he is a pilot whose services are the ferrying of Cessna aircraft, a bona fide offering of services which cannot be described without nominative fair use of the CESSNA word mark” and that “Respondent has used the domain name in connection with a bona fide offering of services pursuant to paragraph 4(c)(i) of the Policy”. Well done.
WhoHurtYou v. WhoHurtYu – The Case for Cybersquatting
Razavi Law Group, APC v. Robert M, NAF Claim Number: FA2406002102764
<whohurtyu .com>
Panelist: Mr. Nicholas J.T. Smith
Key Points by Claude.ai:
- Complainant owns trademark rights to “WHO HURT YOU?”
- Domain name found confusingly similar to Complainant’s mark.
- Respondent lacks rights or legitimate interests in the domain name.
- Domain registered and used in bad faith.
Reasoning:
a) Domain is a minor misspelling of Complainant’s mark (“you” replaced with “yu”).
b) Respondent not commonly known by domain name or authorized to use mark.
c) Domain redirects to website offering competing legal services.
d) Respondent likely had knowledge of Complainant’s mark when registering domain name.
e) Use of domain to divert users to competing website demonstrates bad faith.
In conclusion, the Panel found the Complainant satisfied all three elements required under the ICANN Policy, and ordered the domain name be transferred from Respondent to Complainant.
Decision: Complaint granted, domain name to be transferred to Complainant
Complainants’ Counsel: Meredith Williams of Rutan & Tucker LLP, California, USA
Respondents’ Counsel: No Response
Case Comment by Newsletter Editor, Ankur Raheja:
The Complainant’s registered trademark includes a common phrase “Who Hurt You”, used since 2022. However, the Respondent’s attempt to use the cybersquatting form of the Domain Name <whohurtyu .com> to offer competing services did not go well with the Panelist. The Complainant has presence in the state of California and it’s Domain Name <whohurtyou .com> redirects to its official website here offering Personal Injury legal services. The disputed Domain Name <whohurtyu .com> was registered by another law firm ‘Moet Law’ in May 2024.
Within a week of registration, it was redirected to the contact page on Moet Law’s official website here, indicating that they also provide personal injury attorney services in California. Accordingly, in the absence of a Response, it was held that the Respondent’s use of the domain to offer competing personal injury law services undermines any claim to a bona fide offering of goods or services. Further, the timing of the registration and its use to divert traffic to a competing site indicate an intentional disruption of the Complainant’s business.
Complainant Mixes Up State of Georgia with Country of Georgia?
Almirall, S.A. v. Jorge Almirall, Design Help, Inc., WIPO Case No. D2024-2209
<almirall .org>
Panelist: Mr. Andrew F. Christie
Key Points by Claude.ai:
- The domain was registered by the Respondent on February 25, 2002.
- The Complainant owns trademark registrations for “ALMIRALL” dating back to 1947.
- The Respondent’s last name is Almirall and he uses the domain for email addresses.
Reasoning:
a) The panel found the domain identical to the Complainant’s trademark, satisfying the first element.
b) The panel found the Respondent has rights and legitimate interests in the domain:
- The Respondent’s last name is Almirall.
- He uses the domain for personal email addresses.
- This constitutes legitimate noncommercial use without intent to mislead or tarnish the trademark.
c) The panel found no evidence of bad faith registration and use:
- None of the circumstances indicating bad faith were present.
- The Respondent’s motivation for registering the domain appears to be for personal use.
RDNH: The panel considered but did not find reverse domain name hijacking, attributing the Complainant’s questionable statements to carelessness rather than bad faith.
In conclusion, while the domain is identical to the Complainant’s trademark, the Respondent’s legitimate interests and lack of bad faith led to the denial of the Complaint.
Decision: Complaint Denied
Complainants’ Counsel: Ubilibet, Spain
Respondents’ Counsel: Self-represented
Related Article at DNW .com:
Please read Domain Name Wire’s article on this case: “UDRP confusion: Georgia the state, not the country” (Andrew Allemann, July 18, 2024) featuring the below image:
