Registrant May Retain Legitimate Interest Despite Trademark Abandonment
A tour de force decision in all respects, which is made even more interesting considering who the Respondent is. On Identical/Confusing Similarity, the Panel noted in particular, that the mere incorporation of a company and a printout of a homepage are insufficient to establish common law rights (See also, UDRPPerspectives.org at 1.3). Read commentary here.
We hope you will enjoy this edition of the Digest (vol. 5.11) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Registrant May Retain Legitimate Interest Despite Trademark Abandonment (resourceinteractive .com and resource .com *with commentary)
‣ Complainant Failed to Withdraw Complaint When Presented Evidence Showing Respondent’s Registered Domain Prior to Complainant’s Founding (cassy .com *with commentary)
‣ UDRP Operates Independently of National Courts of Law (kalyanjewellers .com *with commentary)
‣ Complainant Seeks Recovery of Personal Domain Name that Lapsed in 2012 (valloni .com *with commentary)
‣ Panel: UDRP Requires Targeting, Trademark Infringement Does Not (dreamwisebook .com *with commentary)
Registrant May Retain Legitimate Interest Despite Trademark Abandonment
<resourceinteractive .com> and <resource .com>
Panelist: Ms. Ivett Paulovics
Brief Facts: The Complainant, incorporated on June 30, 2021, in the US, operates in business consulting, IT consulting and marketing services and is online at <resourceinteractive .net> (2021). The Complainant claims common law rights in the marks “Resource Interactive” and “Resource”, arguing that these have acquired secondary meaning through use. Established in 1911, the Respondent is a globally recognized multinational technology and consulting company. In 2016, the Respondent acquired Resource/Ammirati, a US-based digital marketing agency, integrating it into IBM iX, with the Complainant acknowledging that the acquisition included the disputed Domain Names. The Respondent also holds several registered trademarks incorporating the term “resource.” The disputed Domain names <resource .com> and <resourceinteractive .com> were registered in 1995 and 2003, respectively. Domain Name <resourceinteractive .com> redirects to the Respondent’s website, while <resource .com> remains inactive.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed Domain Names because it abandoned the U.S. Trademark for “Resource Interactive” in 2017. Additionally, the Complainant alleges that the Respondent no longer uses the disputed Domain Names in connection with the original business and that their continued use, specifically redirection to a competing service, evidences bad faith and a lack of legitimate interest. The Respondent contends that the Complainant has not established rights in the marks “Resource Interactive” or “Resource”, as it has provided insufficient evidence of secondary meaning or distinctiveness. The Respondent further contends that it has legitimate rights and interests in the disputed Domain Names because it acquired them in good faith long before the Complainant was founded, and it operates a well-known global business and legitimately uses <resourceinteractive .com> for redirection to its website.
Held: The Complainant asserts common law trademark rights in the terms “Resource Interactive” and its variations, including “Resource”. However, the Complainant has not submitted sufficient evidence demonstrating that such use has resulted in the marks “Resource Interactive” and “Resource”, which are inherently descriptive, acquiring distinctiveness or secondary meaning. No evidence has been provided to show that consumers widely recognize these marks as being associated primarily with the Complainant. The mere incorporation of the company and a printout of the homepage associated with <resourceinteractive .net> are insufficient to establish common law rights in the marks.
The Complainant’s arguments under the second clause are factually and legally flawed, given that the Respondent’s acquisition of the disputed Domain Names in 2016 was undoubtedly in good faith. Moreover, trademark abandonment under national law does not automatically equate to a loss of rights or legitimate interests under the UDRP. A registrant may retain legitimate interests in a domain name even in the absence of an active trademark registration, particularly where the domain name was previously used in a lawful commercial manner or consists of descriptive terms. Furthermore, since the Respondent had prior rights to use the disputed Domain Names in connection with its business, it remains entitled to continue doing so, even if that business has evolved.
Furthermore, the Respondent’s prior and good faith acquisition is acknowledged by the Complainant itself. However, the Complainant argues that “[t]he fact that the domains were once legitimately held does not excuse their current bad faith use,” arguing that the Respondent’s trademark abandonment and redirection of the disputed domains to a competing service aim to disrupt its business and confuse consumers; however, these claims lack factual support and contradict UDRP precedent. Finally, there is no evidence that the Respondent was ever aware of the Complainant’s business or targeted it in any way. Given that the Complainant was only established in 2021, it is inconceivable that the Respondent could have intended to disrupt Complainant’s business or create confusion among consumers.
RDNH: The Complainant clearly ought to have known that it could not succeed on any of the three required elements. Despite bearing the burden of proof, the Complainant has failed to present any substantive evidence to establish standing in this proceeding or to demonstrate that the Respondent acted with bad-faith intent to target the Complainant or disrupt its business. The Complaint was filed without a plausible legal basis. The Complainant cannot justify its actions by claiming ignorance of the Policy or well-established UDRP case law.
While parties are free to represent themselves in UDRP proceedings, they must also accept the consequences of failing to seek appropriate legal counsel. This is particularly relevant given that the Policy has been in place for 25 years and UDRP panel decisions are publicly available. Finally, the Panel notes that WHOIS records indicate that the Complainant’s own domain name is listed for sale, raising further questions about its motivations in bringing this Complaint.
Complaint Denied (RDNH)
Complainant’s Counsel: Paul Proffitt, Ohio, USA
Respondent’s Counsel: Internally Represented
Case Comment by ICA General Counsel, Zak Muscovitch: A tour de force decision in all respects, which is made even more interesting considering who the Respondent is.
On Identical/Confusing Similarity, the Panel noted in particular, that the mere incorporation of a company and a printout of a homepage are insufficient to establish common law rights (See also, UDRPPerspectives.org at 1.3: “That a Complainant corporation’s corporate name corresponds to a disputed name is insufficient alone to demonstrate common law trademark rights. As with any claimed common law mark, common law rights require proof of secondary meaning. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder”).
On Rights/Legitimate Interest, the Panel stated that “Complainant’s arguments are factually and legally flawed for several reasons”. Indeed. The Panel noted firstly, that at the time of the Respondent’s Domain Name registration, the Complainant did not even exist, and the Disputed Domain Names were legitimately associated with the acquired company and its business”. Not only did the Complainant have a legitimate interest as a result of its acquisition, but there is simply no foundation to conclude that the respondent has no rights in the Domain Name if the Complainant itself – which did not even exist at that time – had no demonstrable rights at the time of registration. Indeed, upon registration of the Domain Name, the only person who has any rights or legitimate interest in the Domain Name, is the Respondent since the Complainant had no trademark rights at that time (As held in Riveron Consulting, L.P. v. Stanley Pace, NAF Claim No: FA1002001309793).
The Panelist secondly stated that “a registrant may retain legitimate interests in a domain name even in the absence of an active trademark registration, particularly where the domain name was previously used in a lawful commercial manner or consists of descriptive terms”. In other words, once a Respondent establishes rights or a legitimate interest at the time of registration, the Respondent will continue to have those rights or a legitimate interest in the Domain Name absent some intervening event that extinguishes those rights and the mere abandonment of a trademark is not such an intervening event. The primary reason for this is that the Respondent’s rights and legitimate interest in the Domain Name do not rely upon a trademark registration, nor do they rely upon continued use of the corresponding Domain Name. Rather, the rights and legitimate interest arise from the initial registration and continue, unlike with trademarks where there is an obligation of continued usage to maintain trademark rights. In this sense, a Domain Name is more like a property right rather than a trademark right and the Panel rightly noted that “since Respondent had prior rights to use the Disputed Domain Names in connection with its business, it remains entitled to continue doing so, even if that business has evolved”.
What would be an intervening event that could extinguish a Respondent’s rights or legitimate interest? The Panel pointed to an example, noting that “mere redirection of a domain name to a competing service does not automatically negate legitimate interest, unless such redirection is misleading or creates confusion that unfairly exploits Complainant’s mark”. For a Respondent to have its rights or legitimate interest extinguished, the intervening event must be of such a nature that the Respondent is actively attempting to purposefully mislead or create confusion. As the Panelist noted, the “Respondent’s use and retention of the Disputed Domain Names is in good faith and fair” and as such did not extinguish its rights and legitimate interest.
On Bad Faith Registration and Use, the Panelist rejected the Complainant’s arguments which were akin to retroactive bad faith, a concept which has been discredited and rejected by UDRP precedent (see for example, see; The Rise and Fall of the Theory of Retroactive Bad Faith, CircleID, 2017, Cohen and Muscovitch, and also see WIPO Overview 3.0 at Section 3.8.1: “Where a respondent registers a domain name before Complainant’s trademark rights accrue, panels will not normally find bad faith on the part of Respondent”). Accordingly, the Panel properly rejected the Complainant’s attempt to claim that an initial good faith registration can be converted into a bad faith one, retroactively.
On RDNH, the Panel correctly considered RDNH despite the Respondent not specifically requesting it, noting that “Paragraph 15(e) of the Rules grants the Panel the authority to make such a determination on its own initiative”. Furthermore, the Panel provided a particularly succinct statement of the considerations when a Complainant is unrepresented by legal counsel: “While parties are free to represent themselves in UDRP proceedings, they must also accept the consequences of failing to seek appropriate legal counsel. This is particularly relevant given that the Policy has been in place for 25 years and UDRP panel decisions are publicly available.” Well said.
Complainant Failed to Withdraw Complaint When Presented Evidence Showing Respondent’s Registered Domain Prior to Complainant’s Founding
CASSY SAS v. Domain Administrator, DVLPMNT MARKETING, INC., WIPO Case No. D2025-0430
<cassy .com>
Panelist: Mr. Jeremy Speres
Brief Facts: The Complainant, under its CASSY mark, has been operating an e-commerce website from cassyshoes .com since 2019, offering shoes, boots, handbags, clothing, socks, and tote bags for sale. The Complainant owns trademark registrations for the Complainant’s CASSY mark in a number of jurisdictions, the earliest of which is French Trademark dated July 12, 2019. The Respondent, a domain investor, has been the respondent in at least 46 cases under the Policy, the majority of which have been decided against it, although, as the Respondent points out in its Response, it did not file a response in most of these cases. The disputed Domain Name was registered on April 30, 1998. It presently resolves to a blog and also indicates that the disputed Domain Name is for sale.
The Complainant alleges that the domain name was renewed in 2024, precisely when company CASSY was beginning to grow and establish its reputation in France and abroad. The Complainant further alleges that the disputed Domain Name was registered and has been used in bad faith in order to take advantage of the Complainant’s reputation in its CASSY mark for the purposes of selling the disputed Domain Name to the Complainant for an exorbitant price. The Respondent contends that the Complainant was only founded, and only acquired trademark rights, long after the Respondent registered the disputed Domain Name in 1998. The Respondent further contends that it registered the disputed Domain Name for its semantic value as a common first name, with the intention of on-selling it as a valuable generic domain name, without any intention of targeting the Complainant.
Held: In its Supplemental Filing, the Complainant admits that the evidence presented with the Response proves that the Respondent has held the disputed Domain Name since 2014. As the Complainant was only founded in 2019 and had not acquired any trademark rights in the CASSY mark prior to its founding, the Respondent could not possibly have targeted it at the time of registration or acquisition of the disputed Domain Name, regardless of whether the disputed Domain Name was registered or acquired by the Respondent in 1998, 2013 or 2014. The Complaint must therefore fail, bearing in mind the conjunctive nature of the bad faith element, requiring both bad faith registration and bad faith use. Additionally, the mere renewal of a domain name is not considered a transfer, see WIPO Overview 3.0, section 3.9.
Further, there is no evidence to suggest that the Respondent has used the disputed Domain Name to target the Complainant. The Respondent’s offers to sell the disputed Domain Name to the Complainant were in response to the Complainant’s enquiries – the discussions were initiated by the Complainant, which points away from targeting, see Mark Overbye v. Maurice Blank, Gekko .com B.V., WIPO Case No. D2016-0362. Furthermore, the disputed Domain Name corresponds to a common personal name. Internet and trademark searches for “cassy” return results relating to many other offerings besides the Complainant. The Complaint does not prove any reputation in the hands of the Complainant in its CASSY mark. It is trite that trading in domain names for their generic value, without targeting any trademark, is a legitimate enterprise.
The Respondent’s history of adverse decisions under the Policy, although relevant to credibility and weight amongst other things, does not change this; each case should be decided on its own merits, and the merits in this case do not point to cybersquatting.
RDNH: In pre-Complaint correspondence, the Complainant was informed by the Respondent’s attorney that the Respondent had owned the disputed Domain Name since 1998 and that the domain was registered over a decade prior to the Complainant’s founding. Despite being informed accordingly, and despite there being nothing in the record, or in the public domain for that matter, that points to a transfer of the disputed Domain Name to the Respondent after the Complainant’s founding in 2019, the Complainant proceeded with its Complaint regardless. The Complainant also did not withdraw its Complaint when it was presented with credible evidence showing ownership of the disputed Domain Name in the hands of the Respondent since at least 2013.
The Complainant’s persistence with its Complaint whilst simultaneously admitting (Respondent’s ownership since 2014), that is at best reckless, at worst male fide. It is accepted that complainants represented by counsel should be held to a higher standard, see WIPO Overview 3.0, section 4.16. The Complainant also refers to its 2024 approaches to the Respondent, via the Respondent’s brokers, but the Complainant neglected to reveal its earlier, similar approaches made in August 2020, which the Respondent pointed to in its Response. These are all recognized factors pointing to RDNH. In the circumstances, at best for the Complainant the filing of the Complaint was reckless, at worst it was intended as an alternative means of acquiring the disputed Domain Name after commercial negotiations had failed.
Complaint Denied (RDNH)
Complainant’s Counsel: Shannon Avocats, France
Respondent’s Counsel: Glenn Gallagher, Esq., United States of America
Case Comment by ICA General Counsel, Zak Muscovitch: Another excellent decision in every respect, which leaves me with not much to comment upon as the Panel handled each issue with precision and aplomb. I will therefore only point out a few of the noteworthy aspects of this decision; 1. The Panel correctly found that “the mere renewal of a domain name is not considered a transfer”; 2) The Panel correctly determined that “offers to sell the disputed Domain Name to the Complainant were in response to the Complainant’s enquiries – the discussions were initiated by the Complainant, which points away from targeting”; 3) The Panel succinctly and correctly found that “it is trite that trading in domain names for their generic value, without targeting any trademark, is a legitimate enterprise”; 4) The Panel correctly determined that the Complainant’s failure to withdraw the Complaint when it was presented with credible evidence showing ownership of the disputed domain name in the hands of the Respondent since before the Complainant was even founded was “at best reckless, at worst male fide”. Well done!
UDRP Operates Independently of National Courts of Law
Kalyan Jewellers India Limited v. Subha Bharat, WIPO Case No. D2024-5279
<kalyanjewellers .com>
Panelist: Mr. Steven A. Maier
Preliminary Matter: On August 27, 2020, a prior panel under the UDRP rendered a decision concerning the disputed Domain Name in WIPO Case No. D2020-1615. The panel in the above-referenced case found that the Complainant had failed to establish, for the purposes of the third element of the Policy, that the respondent had registered the disputed Domain Name in bad faith. The Complainant subsequently issued proceedings concerning the disputed Domain Name in the High Court of Judicature at Madras, India, against parties including both Antony Adam and Subha Bharat. By way of a judgment dated February 19, 2024, that court ordered (among other matters) that the defendants transfer the disputed Domain Name to the plaintiff, i.e., the Complainant.
While there appear to have been changes in the registrar of the disputed Domain Name between 2020 and 2024, it is not apparent to the Panel when the registrant of the disputed Domain Name was changed from Antony Adam to Subha Bharat. However, there is no evidence before the Panel that there was any change in the beneficial ownership of the disputed Domain Name between the date of the decision in the previous proceeding and the date of the present Complaint. In these circumstances, the Panel finds the present proceeding to constitute an effective refiling of the previous complaint, i.e., proceedings between the same parties concerning the same disputed Domain Name, see WIPO Overview 3.0, section 4.18.
Brief Facts: The Complainant operates a jewelry business under the trademark KALYAN JEWELLERS, registered in numerous jurisdictions, since December 8, 2003. The disputed Domain Name was registered on October 15, 2004, and resolves to a website with the heading “KALYANJEWLLERS .COM DIY JEWELLERY SUPPLIES AUSTRALIA”. The Complainant submits that the refiling of the complaint is “necessary” due to the Respondent’s disregard of an Indian court order and obstruction of the domain transfer by changing its registrar. The Respondent refers to the decision in the 2020 proceeding, and in particular to the findings of the panel in that proceeding that, in the light of matters including other uses of the term “kalyan”, the Complainant could not establish that the disputed Domain Name had been registered in bad faith.
The Respondent contends that the subsequent proceedings in the Indian High Court were “without any jurisdiction”, that the registrar of the disputed Domain Name had been changed prior to the issue of those proceedings, and that the Complainant has misleadingly stated it was unaware of the change of registrar. The Respondent objects to the refiling of the complaint and contends that none of the circumstances mentioned in section 4.18 of WIPO Overview 3.0 is of application in this case. The Respondent submits that the Complainant has taken no action in respect of numerous other third-party domain names that include the term “kalyanjewellery” or similar terms and is interested only in obtaining the disputed Domain Name, i.e. the “.com” version of the name.
Held: The UDRP is a domain name dispute resolution policy which operates independently of national courts of law. Panel decisions made under the UDRP are not binding on national courts, and decisions of national courts are, equally, not determinative of proceedings brought under the Policy, although it remains within the panel’s discretion to determine the relevance to ascribe to such proceeding in the UDRP context (see section 4.14 of WIPO Overview 3.0). In this case, the Complainant bases its refiling of the Complaint on the order of the Indian High Court, while the Respondent challenges the jurisdiction of the Indian High Court. The Panel would not be persuaded in any event to admit the Complainant’s refiled complaint and to order the transfer of the disputed Domain Name to the Complainant.
The panel in the 2020 proceeding determined, under the terms of the Policy, that the Complainant had failed to establish that the disputed Domain Name had been originally registered in bad faith, and that the complaint must therefore fail. The Panel finds there to be nothing in the Complainant’s current submissions that requires the original panel’s findings in that regard to be reevaluated, or which otherwise meets any of the criteria mentioned in section 4.18 of WIPO Overview 3.0 for a refiled claim to be accepted. Moreover, the Panel notes that a court has already opined upon the matter and the UDRP does not provide a mechanism for the enforcement of the orders of national courts, which is a matter for the Complainant more properly to pursue through the court system.
For the avoidance of doubt, the Panel does not regard the observations of the panelist in the 2020 case as an invitation to refile the complaint following any court proceedings. The Panel, therefore, declines to admit the refiled complaint.
Complaint Denied
Complainant’s Counsel: Altacit Global, India
Respondent’s Counsel: Archer Softech, India
Case Comment by ICA General Counsel, Zak Muscovitch: In another excellent and strongly written decision, the Panel correctly determined inter alia, that “the UDRP does not provide a mechanism for the enforcement of the orders of national courts, which is a matter for the Complainant more properly to pursue through the court system”. The Panel convincingly determined that the refiled Complaint contained nothing that requires the original panel’s findings in that regard to be reevaluated. This is an important decision in that it properly applies the well-established criterion for denying refiled Complainants and rejected the Complainant’s ill founded attempt to use the UDRP as a court enforcement mechanism. Well done!
Complainant Seeks Recovery of Personal Domain Name that Lapsed in 2012
<valloni .com>
Panelists: Mr. Assen Alexiev (Presiding), Mr. Richard Hill, and Mr. Tobias Zuberbühler
Brief Facts: The Swiss complainant, with the surname Valloni, obtained an attorney patent in 1993 and began practicing as an attorney-at-law in 1997. The Complainant is an expert in the fields of sports law and dispute resolution and has held leadership roles in a few international organizations. The Complainant is the owner of the European Union trademark VALLONI (registered on August 23, 2024), and also has a pending Swiss trademark application for VALLONI. The Complainant maintains that he has acquired unregistered trademark rights in his surname Valloni through its continuous and substantial use in connection with his professional activities.
The disputed Domain Name was initially registered by the Complainant, and its registration lapsed in 2012. The Respondent, a domain name investor, acquired the disputed Domain Name on March 18, 2021 and it currently resolves to a parking webpage of the Registrar and is being offered for sale for CHF 13,415.38. The Complainant alleges that the Respondent has not used the disputed Domain Name for any bona fide purpose and submits that its sole intention appears to be speculative resale, since the disputed Domain Name is currently listed for sale.
The Respondent contends that the Complainant has failed to show having unregistered trademark rights in his surname, and that it acquired the disputed Domain Name in 2021 in the normal course of its business and maintains that it is not unlawful to register and use a dictionary word or a common surname for resale. The Respondent also points out that its acquisition of the disputed Domain Name predates the Complainant’s registration of the VALLONI trademark and denies that it has registered or used the disputed Domain Name to target the Complainant.
Held: The Complainant has shown rights in respect of the registered European Union trademark VALLONI for the purposes of the Policy. The Panel, therefore, finds the first element of the Policy has been established. The Complainant additionally claims having unregistered trademark rights in his surname, Valloni. However, a name or surname generally cannot distinguish goods or services without demonstrating secondary meaning. The evidence provided fails to show that the surname has acquired such meaning for consumers.
Further “Valloni” is not only a surname but the Italian name of the Belgian Walloons and also means “large valleys” in Italian. The Respondent, a domain name investor, has shown that it acquired the disputed Domain Name in 2021 from a third party, with no evidence indicating that the Respondent was aware of the Complainant at the time of acquisition, while the Complainant did not apply for its trademark in Switzerland until 2023 and obtained its registration in the European Union only in 2024. The disputed Domain Name is currently offered for sale to the general public and the Respondent has never contacted or targeted the Complainant. While the Respondent may have discovered the Complainant’s prior registration during due diligence, the domain’s multiple ownership changes likely led the Respondent to believe its registration was permissible, as no corresponding trademark existed at the time.
RDNH: The disputed Domain Name had been registered and used by the Complainant for several years and was lost in 2012 through no fault of the Complainant. There is no evidence that the Complainant knew at the time of filing the Complaint that the disputed Domain Name had been registered in 2012 by a third party and not by the Respondent, and that the Respondent did not acquire it until 2021. In these circumstances, it does not appear to the Panelists Alexiev and Zuberbühler that it was obvious to the Complainant that the Complaint could not succeed, and therefore these two Panelists consider that a finding of RDNH is not warranted.
Complaint Denied
Complainant’s Counsel: Staedeli Legal Partners GmbH, Switzerland
Respondent’s Counsel: Levine Samuel, LLP, United States of America
Case Comment by ICA General Counsel, Zak Muscovitch: I particularly appreciate the Panel’s approach to common law trademark rights where the term as here, is descriptive of “large valleys” in Italian and is a common surname and business name. The Panel correctly determined that where a term is not inherently distinctive (as here), “there is a greater onus on the Complainant to present evidence that it has acquired a secondary meaning”. As noted in UDRP Perspectives at 1.4, “descriptive terms are capable of acquiring distinctiveness but the more descriptive the term, the more evidence will be required to establish a secondary meaning. When it comes to descriptive terms, evidence required to show acquired distinctiveness or “secondary meaning” is directly proportional to the degree of non-distinctiveness of the mark at issue”.
I also appreciate how the Panel held the Complainant to the appropriately high threshold for proving common law trademarks. The Panel noted that “the Complainant has not provided any evidence as to the amount of sales under the claimed mark and the nature and extent of advertising using it; there is no evidence as to the degree of actual recognition of the trademark by the public and no consumer surveys”. As noted in UDRP Perspectives at 1.1, “for a Panel to award common law rights to any expression, thereby granting it the same status as a registered trademark, without proper evidence would be improper and unjust. To support a claim of common law trademark rights, the Complainant should present strong and serious evidence of constant use by the Complainant and recognition of the trademark from the customers of the associated goods or services.”
I also appreciate the Panel’s treatment of offers to sell a Domain Name. The Panel noted in particular that the “Domain Name is currently offered for sale to the general public and the Respondent has never contacted the Complainant or placed any content relating to the Complainant or legal services on the disputed domain name”, thereby in combination with the descriptive nature of the Domain Name, led to the Panel’s correct conclusion that “the Respondent registered the disputed domain name and advertised it without targeting the Complainant”.
I also appreciate the Panel’s correct observation that even if the Respondent had somehow been aware of the Complainant and its prior registration before the Respondent registering the Domain Name, “the fact that the disputed domain name had changed hands several times would equally allow the Respondent to infer that it would be on safe ground to register the same given that the prior registrant did not then have a corresponding trademark registration”.
The only questionable part of the decision perhaps, is the majority of the Panel’s treatment of RDNH (Panelists Alexiev and Zuberbühler, with Richard Hill not subscribing to the majority’s view). Here, the majority of the Panel found that:
“There is no evidence that the Complainant knew at the time of filing the Complaint that the disputed domain name had been registered in 2012 by a third party and not by the Respondent, and that the Respondent did not acquire it until 2021. In these circumstances, it does not appear to the Panelists Alexiev and Zuberbühler that it was obvious to the Complainant that the Complaint could not succeed, and therefore these two Panelists consider that a finding of RDNH is not warranted.”
I don’t think that that the timing of the Respondent’s registration is particularly material when evaluating RDNH in this case – aside from an apparently unexplained 13-year delay in bringing the Complaint by the Complainant. Even if it is the case that the Complainant was not aware of the intervening Domain Name registrants, what credible facts did the Complainant have to allege that from all the Vellonis in the world, that he was targeted? It seems eminently unreasonable to allege that Arizona-based NameFind, a division of GoDaddy, targeted a Swiss-Italian lawyer specializing in sports law. It does not appear that the Complainant had any evidence at all of awareness of the Complainant let alone targeting an unregistered trademark. As the Respondent contended, the Complainant “could not possibly state a colorable claim of cybersquatting”, and it is precisely this which likely ought to have been the basis for consideration of RDNH, rather than the intervening registrants.
Panel: UDRP Requires Targeting, Trademark Infringement Does Not
Cynthia Falchet Couto aka Colette Falchet v. Lisa Marchiano, WIPO Case No. D2025-0101
<dreamwisebook .com>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant claims itself to be an industry leader since 2017, that provides education services, namely, providing training, coaching, and consulting in the field of meditation, mindfulness and dreams in connection with its DREAMWISE trademarks. The Complainant’s US registrations include the word mark for DREAMWISE, registered on August 21, 2018 and December 15, 2020 and a design mark DREAMWISE, registered on July 31, 2018. The record lacks evidence regarding the extent to which the Complainant’s DREAMWISE trademarks enjoy renown. The disputed Domain Name was registered on April 2, 2024 and resolves to a website promoting a forthcoming book entitled Dream Wise – Unlocking the Meaning of Your Dreams, authored by the Respondent and two other writers with whom the Respondent is affiliated.
The Parties exchanged letters through counsel, starting with the Complainant’s cease-and-desist letter dated October 29, 2024 asserting trademark rights and demanding the Respondent stop using DREAM WISE in book titles, on websites, or otherwise. The Respondent’s counsel replied on November 11, 2024, and on January 21, 2025. The Respondent claims a legitimate interest in the Domain Name, as it reflects the name of the forthcoming book she co-authored with two colleagues. The Respondent also contends that services related to dreams are different from services related to meditation, chiefly because meditation involves a voluntary mental experience whereas a dream involves an involuntary mental experience.
Held: The Panel concludes, on the record provided here, that the Complainant has failed to prove bad faith registration and use, under the Policy. Simply put, this is not a clear case of cybersquatting. It is, instead, a dispute over trademark rights best resolved by a court of law. The UDRP is concerned with bad faith registration and use of a domain name, which standard requires a finding that the respondent was targeting the complainant’s trademark. That is not the same thing as a claim for trademark infringement, which claim can be established even in the absence of any evidence that the defendant was targeting the plaintiff’s trademark.
Here, the Respondent registered the Domain Name because it contained the title of the book she co-wrote, plus the descriptive word “book.” It does not appear from this record that the Respondent selected Dream Wise as the book title in order to free-ride on the fame of the Complainant’s trademark. (Again, the record does not reveal the extent to which the Complainant’s mark may be well known.) Rather, from the record presented, it appears to the Panel that the Respondent (and her co-authors) chose this title (and this Domain Name) because the book purports to help the reader to understand one’s dreams.
The Panel offers no comment – because it is beyond the purview of the UDRP – on whether the Complainant may have a viable cause of action under the United States Lanham Act. In any event, such a claim belongs in a court of law, and not in a UDRP proceeding.
Complaint Denied
Complainant’s Counsel: Cozen O’Connor, United States
Respondent’s Counsel: Sounds True Inc., United States
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel provided a terrifically precise statement which is worth reproducing below, and is worth bookmarking for future reference:
“Simply put, this is not a clear case of cybersquatting. It is, instead, a dispute over trademark rights best resolved by a court of law. The UDRP is concerned with bad faith registration and use of a domain name, which standard requires a finding that the respondent was targeting the complainant’s trademark. That is not the same thing as a claim for trademark infringement, which claim can be established even in the absence of any evidence that the defendant was targeting the plaintiff’s trademark.”
Exactly. Note in particular, the requirement for targeting, above, and also below where the Panel laid out the fundamental consideration for finding cybersquatting, namely, targeting;
“Here, Respondent registered the Domain Name because it contained the title of the book she co-wrote, plus the descriptive word “book.” It does not appear from this record that Respondent selected Dream Wise as the book title in order to free-ride on the fame of Complainant’s trademark.”
Again, exactly. For there to have been cybersquatting for which the UDRP has jurisdiction, the Complainant would have had to have proven that the Domain Name was selected specifically because of an awareness of the Complainant’s trademark and that it was selected to take advantage of the Complainant’s goodwill. Instead, the Complainant made out a mere trademark infringement case, something which is beyond the scope of the UDRP, as the Panel correctly found:
The Complainant alleged: “Respondent’s domain name are likely to be confused as to the source, sponsorship, affiliation or endorsement of the domain name due to the use of the DREAMWISE® Mark. Respondent’s services include education services in the field of dream interpretation. Providers of such dream education services also commonly provide other education services, such as meditation services like those provided by Complainant. Further, Complainant’s website’s landing page clearly states that Complainant has worked with dreams. Thus, Respondent’s educational dream services are related to Complainant’s educational meditation services.”
The only thing that I wish had additionally been considered by the Panelist in this case, is RDNH. Without judging whether or not a finding of RDNH was warranted here, I think that the facts and arguments as presented by the Complainant, at least rose (or descended) to the level that calls for a consideration of RDNH. Here, the Complainant appears not to have even presented a case for cybersquatting and as such arguably abused the UDRP as a misplaced and unfair method for addressing a claim of trademark infringement. There may have been mitigating factors which would lead a Panelist to ultimately rule against RDNH, but nevertheless, arguably it should have at least been considered under Rule 15(e).
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.