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.
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We hope you will enjoy this edition of the Digest (vol. 5.7) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel: Complainant Misconstrues the Passive Holding Doctrine (1xperience .com)
‣ Complainant does not have Exclusive Rights to his Family Name (stein .eu)
‣ Respondent Targeted Complainant’s Customers through a Phishing Scam (traffixgrp .com)
‣ Eversafe Moving v Eversafe Storage (eversafestorage .com)
‣ Complainant Unable to Demonstrate Bad Faith against a Prior Registered Domain Name (yper .com)
Panel: Complainant Misconstrues the Passive Holding Doctrine
Navasard Limited v. Alveni, WIPO Case No. D2024-5250
<1xperience .com>
Panelist: Mr. Ian Lowe
Brief Facts: The Complainant is a company registered in Cyprus providing online betting services, licensed in Curaçao, Netherlands (Kingdom of the). It operates on a number of websites including <1xbet .com>, but these are not accessible from the United States, the United Kingdom, or some other jurisdictions. The Complainant states that it began offering its services online in September 2006, but was incorporated in 2015. The Complainant is the registered proprietor of the following European Union trademarks: 1XBET logo registered on July 27, 2015; 1XBET wordmark registered on September 21, 2015; and 1X logo registered on June 22, 2022. The Domain Name was registered on July 23, 2018 and resolves to a website. However, according to the Complainant, the Respondent is not making any noncommercial or fair use of the Domain Name.
The Complainant alleges that “the Respondent is potentially illegally using the disputed Domain for purposes of potentially re-selling the disputed Domain Name at a profit by taking advantage of the confusing similarity of the disputed Domain Name with the popular sports betting trademark held by the Complainant”. The Respondent contends that the Domain Name was established in 2018 and that it specializes in tailor-made VIP experiences for small groups of people who value luxury, top quality, personalized service. It has no association with online casinos, gambling or betting. The Respondent further denies that it had any knowledge of the online gambling business operated by the Complainant from Cyprus at the time of registration of the Domain Name, and points out that attempting to access <1xbet .com> from the United States is blocked.
Held: The Complainant surprisingly omits mention of the <1xperience .com> website linked to the
Domain Name, with the Wayback Machine showing a similar website has been online since at least August 2018. Then, as now, the website features the following logo in the banner of the web pages:
The Panel notes that the About Us page lacks information about the website operator, only describing the experiences offered. The Contact Us page has just a contact form, and no other section, including the Privacy Policy, provides operator details. As a result, although the Panel has some doubts as to how active is the 1XPERIENCE business of the Respondent, the Complainant has failed to establish even a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name.
Further, the Complainant has failed to establish that the Respondent must have had the Complainant and its rights in the 1XBET and 1X marks in mind when it registered the Domain Name. There has been no evidence that its business would have been well-known in the United States in 2018 and, in any event, because of regulatory restrictions, access to the Complainant’s websites from the United States is blocked. It has not therefore been established that the Respondent registered the Domain Name in bad faith. Turning to bad faith use, although the website at the Domain Name does not indicate bustling activity of a genuine business, there is no evidence of the Respondent in any way taking unfair advantage of the Complainant’s rights in its trademarks or confusing Internet users into believing that the Domain Name is operated by or authorised by the Complainant.
Finally, the Complainant cannot simply rely on passive use since there has been active use. Not only that, but the Complainant misconstrues the nature of the passive holding doctrine far too broadly – mere non-use is not enough; there must be some notion of an evocation of the complainant’s mark which is not the case here given the pronunciation and use of the “one experience” moniker.
RDNH: The Panel recognizes that the Complainant is unrepresented, but it is an online gambling business that is bound to have careful regard to Internet related procedural and regulatory issues. The Panel also notes that it has been filing a substantial number of UDRP complaints and is therefore familiar with the procedure. The Complaint is sparse and inexplicably does not refer to the website that has been operated by the Respondent for at least six years, on the face of it at least offering bona fide services.
Furthermore, when notified of the identity of the Respondent in the United States it did not attempt substantively to amend the Complaint or to address issues around the non-availability of the Complainant’s online betting services in the United States. Accordingly, the Panel finds that the Complaint had no real prospects of success, that the Complaint was brought in bad faith, and that it constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Pavlo Korchemliuk, Cyprus
Respondent’s Counsel: Self-represented
Related Articles:
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- Check out previous articles on Doctrine of Passive Holding by ICA Director, Nat Cohen, here and here.
- Check out related article at DNW.com: Online gambling company tries reverse domain name hijacking
Complainant does not have Exclusive Rights to his Family Name
Silvan (Janis) Stein v. Premium Domain Names S.L., WIPO Case No. DEU2024-0039
<stein .eu>
Panelist: Ms. Jane Seager
Brief Facts: The Complainant is a German individual named “Silvan Stein,” who asserts rights in his family name, Stein, pursuant to Section 12 of the German Civil Code. The Respondent is a Spanish company that focuses on the registration and resale of domain names. The disputed Domain Name was registered on June 7, 2022, and at the time of submission of the Complaint, it was offered for sale via the website “dropcatch.ai” with a “Buy it Now” price of EUR 200; however, at the time of this decision, it does not resolve to an active web page. The Complainant alleges that the Respondent’s attempt to sell the domain for EUR 200 indicates that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, but rather that the Respondent registered the disputed Domain Name for resale.
The Complainant further alleges that the Respondent’s pattern of registering domain names corresponding to personal names, without apparent legitimate interest, further demonstrates bad faith. The Respondent contends that the choice was purely based on the intrinsic value of the word in the German language and its potential relevance to a project focused on geological topics, construction, or educational content concerning natural materials. The Respondent further contends that the Complainant is not a public figure, nor is there any evidence suggesting that the surname “Stein” is uniquely associated with the Complainant in the public domain. As such, the registration of the disputed Domain Name does not infringe upon the personal rights of the Complainant any more than it would any other individual with the same surname.
Held: The Panel acknowledges that “Stein” serves both as a family name and as a dictionary term, suggesting that the term is not exclusively associated with the Complainant. The Complainant has not come forward with any evidence to support a finding that the Respondent registered the disputed Domain Name with knowledge of the Complainant or his family name. Notably, there is no evidence that the Respondent has ever approached the Complainant directly attempting to sell the disputed Domain Name. Rather, the Panel accepts the Respondent’s assertion that it registered the disputed Domain Name in light of its inherent value as a dictionary term meaning “stone” in German, and did so without knowledge of the Complainant and therefore without intent to target the Complainant in any way. In light of the above, the Panel finds that the Complainant has failed to establish that the Respondent registered the disputed Domain Name without rights or legitimate interests.
The Panel further finds that the Complainant has not established that the disputed Domain Name was registered or acquired primarily to sell, rent, or otherwise transfer the domain name to the Complainant, as outlined in paragraph B11(f)(1) of the ADR Rules. For completeness, the Panel has considered whether the disputed Domain Name is a “personal name for which no demonstrable link exists between the Respondent and the domain name registered”, as contemplated by paragraph B11(f)(5) of the ADR Rules. Given that the disputed Domain Name corresponds to the German dictionary term for “stone” and is also a common surname, as set out above, the Panel is not of the view that the disputed Domain Name is of a nature to warrant being subject to this provision of the ADR Rules. For reasons set out above, the Panel finds that the Complainant has failed to establish that the disputed Domain Name was registered or is being used in bad faith.
Complaint Denied
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Internally-represented
Respondent Targeted Complainant’s Customers through a Phishing Scam
Traffix Group Inc. v. Rob James, CIIDRC Case No. 24333-UDRP
<traffixgrp .com>
Panelist: Mr. Gerald M. Levine, Esq.
Brief Facts: The Complainant states that it is a leading third-party logistics provider serving the North American transportation industry since 1979, Headquartered in Milton, ON, Canada, with a US head office in Chicago. It is found on the Internet at <traffix .com>. The Complainant further states that it has consistently used its trademark “TRAFFIX” since September 1, 1979, to conduct its business and offer its goods and services to various customers. The Complainant’s trademark TRAFFIX, which has been registered in multiple jurisdictions, is well-known in the transportation logistics industry and enjoys wide customer recognition.
The Complainant alleges that the Respondent has been used in an ongoing fraud attempt from January 19, 2024, until it was suspended indefinitely on January 31, 2024. The disputed Domain Name was used to conduct an email phishing campaign, impersonating the Complainant, and urging the Complainant’s customers to send funds, properly owed to the Complainant, to the Respondent. The scam involved direct communication with the Complainant’s customers, during which the Respondent impersonated the Complainant and deceitfully claimed there were problems with the Complainant’s payment system.
In response to the phishing campaign and fraud attempts, the Complainant took proactive measures by reaching out to customers, banking institutions, its legal counsel, and the applicable domain name registrars to have the fraudulent domain name suspended. Nonetheless, the Respondent actively changed the domain registrar three times in response to any domain name suspensions in an attempt to persist with its phishing campaign and fraud. The Respondent did not file a Response in these proceedings.
Held: It is unnecessary to consider at any length whether the Respondent has any rights or legitimate interests since the evidence establishes that it has neither for the reasons outlined in more detail in the next section analyzing the issues of bad faith registration and bad faith use. WIPO Overview, Sec. 2.5.1 states “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” As this is a case of impersonation and the registration to scam Complainant’s customers alleged and demonstrated, there can be no fair use of the disputed Domain Name sufficient to rebut Complainant’s contentions and proof.
Further, the Respondent conducted an email phishing scheme for commercial gain by attempting to impersonate the Complainant and confuse the Complainant’s clients regarding the domain name’s source and potential affiliation with the Complainant. The disputed Domain Name no longer resolves to an active website as it was suspended. Moreover, after being suspended numerous times by various platforms, the Respondent continued to register the disputed Domain Name on new platforms and contact the Complainant’s clients. Therefore, the Respondent was aware that the domain name was being suspended and continued their efforts regardless. The undisputed evidence could not tell a simpler story. The Respondent registered and used the disputed Domain Name to carry a fraudulent scheme to target the Complainant and its customers by syphoning off payments due for services performed.
Transfer
Complainant’s Counsel: Self-represented
Respondent’s Counsel: No Response
Eversafe Moving v Eversafe Storage
<eversafestorage .com>
Panelist: The Honorable Neil Anthony Brown KC
Brief Facts: The Complainant is the registered owner of the EVERSAFE MOVING trademark, which was registered with the USPTO on July 23, 2013. The Respondent registered the disputed Domain Name on January 1, 2025. The Complainant alleges that the Respondent is operating a domain name in trademark class 39 and using the EVERSAFE MOVING trademark for the same purposes for which the Complainant uses it. The Respondent failed to submit a Response in this proceeding. However, later the Forum received the following email from the Complainant, stating “Hey just wanted to let you know we officially changed names and have moved away from EverSafe Storage. The domain has been deactivated as well. Is there anything else we need to do? Jeff.”
Held: The only trademark in evidence is the EVERSAFE MOVING service mark which has been proved. The domain name is <eversafestorage .com>. Therefore, the Complainant must prove that <eversafestorage .com> is either identical to EVERSAFE MOVING or confusingly similar to it. It is not identical to that trademark because the two consist of different words. Nor is it confusingly similar to it. It is not similar because it deals with “eversafe storage” whereas the trademark deals with “eversafe moving”, which is not similar but the opposite of it. As the domain name is not similar to the trademark, it cannot be confusingly similar.
In saying that, the Panel is conscious of the point made by the Complainant that the trademark is registered in Class 39 which covers both moving and storage. However, that is not the same, as the domain name must be identical or confusingly similar to a trademark and the trademark itself is EVERSAFE MOVING, not EVERSAFE STORAGE. As the Panel has only a limited jurisdiction, it can only apply the clear terms of the Policy and the Complainant has not brought itself within those terms. The Complainant has thus not established the first of the three elements it must prove and the Panel is therefore obliged to deny the Complaint.
As the Complaint cannot succeed, it is not strictly necessary to deal with the other two elements. However, it is clear that the Complainant would not succeed on either of these two remaining elements as it has not addressed any submissions or evidence on either issue. The Complaint is noticeably silent on these issues, other than to say that it owns a trademark to which the domain name is not identical or confusingly similar, that it has not given permission to use the EVERSAFE MOVING trademark and that the Respondent is using the domain name and the EVERSAFE MOVING trademark for the same purposes as the Complainant uses them. None of that would have enabled the Complainant to succeed on either of these second or third elements.
Complaint Denied
Complainant’s Counsel: Rob Rimeris of J Rimeris LLC, Pennsylvania, USA
Respondent’s Counsel: No Response
Complainant Unable to Demonstrate Bad Faith against a Prior Registered Domain Name
Yper, SAS v. 이재완 (jaewan Lee), WIPO Case No. D2024-4802
<yper .com>
Panelist: Ms. Kathryn Lee
Brief Facts: The Complainant, founded in 2016, is a French logistics and transportation company, that provides solutions for local retailers and mass distribution. The Complainant owns the French trademark for YPER, registered on October 23, 2015, and an International trademark, registered on December 17, 2021. The disputed Domain Name was registered on August 13, 2010, by a Korean Respondent and resolves to a page advertising the disputed Domain Name for sale. The Complainant alleges that the disputed Domain Name has never been used by the Respondent but only advertised for sale and that the Complainant negotiated with the registrant for the purchase of the disputed Domain Name in 2020 and 2024, but the negotiations failed each time because the registrant asked for an unreasonable price for the disputed domain name reaching US $120,000. The Complainant also noted several prior UDRP decisions which found that the Respondent had bad faith, and also, that the Respondent holds over 8,250 domain names, and that this suggests recurrent cybersquatting behavior.
The Respondent contends that the disputed Domain Name was registered on August 13, 2010, while the Complainant was established in 2015, and therefore, the Complainant should be viewed as lacking grounds to file the Complaint. The Respondent also contends that the disputed Domain Name is not a dictionary term but that it can be understood as “wiper” due to the similar pronunciation in Korea and abroad. The Complainant further alleges that the disputed Domain Name was transferred to Cypack.com on September 16, 2024, two days before the deadline that the Complainant gave to the Respondent for initiating a UDRP proceeding which is further evidence of bad faith. The Respondent responds that the change of the registrant’s name to Cypack.com cannot be evidence of bad faith because it is a result of the Respondent simply hiding the registrant’s details due to the Complainant’s continuous contacts and threats of legal action.
Held: The Panel finds that the Respondent did not register the disputed Domain Name in bad faith targeting the Complainant or its trademark rights because the Complainant had no trademark rights at the time that the Respondent registered the disputed Domain Name. The Complainant was only established a couple of years after the Respondent registered the disputed Domain Name. Therefore, the Respondent could not have targeted the Complainant or its trademark rights at the time of the registration of the disputed Domain Name. It appears that the Respondent is the owner of a significant number of domain names and appears to have had a number of UDRP decisions rendered against him, but they do not affect the determination in the subject case. And while the Panel does not fully accept the Respondent’s purported explanation, the change in the name of the registrant does not indicate a change in ownership such that the date becomes a new material acquisition for purposes of assessing bad faith.
RDNH: The disputed Domain Name was registered in 2010 while the Complainant was established and began using the YPER trademark in 2016, and the Complainant also acknowledges these facts in the Complaint. Therefore, without any arguments or evidence of a later acquisition, the Complainant should have known that it could not succeed as to the bad faith element. For this reason, the Panel finds that this Complainant was brought in bad faith and constitutes Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: Quantic Avocats AARPI, France
Respondent’s Counsel: DongsuhYangjae Law Offices, Republic of Korea
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.