The Importance of Including Material Facts in a Decision
The challenge for the reader of the LSAC .com decision is that not enough information is provided for the reader to understand why the Panel accepted the Complainant’s allegations and ordered the transfer of the disputed Domain Name from the Respondent. Perhaps the Panel had the benefit of compelling evidence and was able to draw well-supported inferences from this evidence, but if so, the Panel did not include this evidence and the reasoning in the decision. This is unfortunate, for based on the limited evidence and reasoning presented in the decision, the transfer outcome appears to be poorly supported and unjustified. Read commentary here.
We hope you will enjoy this edition of the Digest (vol. 5.10) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ The Importance of Including Material Facts in a Decision (lsac .com *with commentary)
‣ Despite Unconvincing Response, it was Complainant’s Burden to Bear (fleetedge .ai *with commentary)
‣ The Material Time for Proving Common Law Trademark Rights (gramlindisposable .com *with commentary)
‣ rsingh .net and espub .net Not Identical or Confusingly “Denys Scharnweber” (rsingh .net and espub .net *with commentary)
‣ Is EFLOORS Confusingly Similar to eFlooringDeals .com? (eflooringdeals .com *with commentary)
The Importance of Including Material Facts in a Decision
Law School Admission Council, Inc. v. True Magic LLC, NAF Claim Number: FA2501002137886
<lsac .com>
Panelist: Ms. Dawn Osborne
Brief Facts: The Complainant is the owner of a number of registered marks containing LSAC in the USA for examination services, including LSAC (device mark) with first use recorded as 1972. The Complainant also claims to own common law rights in the LSAC mark for its services from that date. The disputed Domain Name was registered in 1996, and the Complainant alleges that it has been used to offer malware. The Respondent failed to submit a Response in this proceeding.
Held: The use of the Domain Name to offer malware is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Snap Inc. v. Domain Admin/ Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed Domain Name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy 4(c)(i) & (iii).”). The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein. As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Further, the Complainant’s prior mark has a reputation for examination services and is distinctive, and the Panelist is entitled to draw adverse inferences from the Respondent’s failure to respond to the Complainant’s allegations. Offering malware via a domain name containing a complainant’s mark is bad faith under the Policy. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA 1617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads… illustrates its bad faith in the registration and use of those domain names.”). As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith.
Transfer
Complainant’s Counsel: Wendy K. Marsh of Nyemaster Goode, P.C., USA
Respondent’s Counsel: No Response
Case Comment by ICA Director, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
The challenge for the reader of the LSAC .com decision is that not enough information is provided for the reader to understand why the Panel accepted the Complainant’s allegations and ordered the transfer of the disputed Domain Name from the Respondent. Perhaps the Panel had the benefit of compelling evidence and was able to draw well-supported inferences from this evidence, but if so, the Panel did not include this evidence and the reasoning in the decision. This is unfortunate, for based on the limited evidence and reasoning presented in the decision, the transfer outcome appears to be poorly supported and unjustified.
In particular, the finding that LSAC .com was registered in bad faith in 1996 to target the Complainant is not well explained.
Here is the entirety of the section of the decision covering Registration and Use in Bad Faith:
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name consisting of the Complainant’s mark and a gTLD. The Complainant’s prior mark has a reputation for examination services and is distinctive and the Panelist is entitled to draw adverse inferences from the Respondent’s failure to respond to the Complainant’s allegations.
Offering malware via a domain name containing a complainant’s mark is bad faith under the Policy. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA 1617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads .. illustrates its bad faith in the registration and use of those domain names.”).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Para 4(b)(iii) and (iv).
The mere registration of a domain name that matches the Complainant’s mark and the failure of the Respondent to appear with an explanation appear to be taken as sufficient evidence to make a finding of registration in bad faith on a balance of probabilities.
The decision does not acknowledge that the disputed Domain Name is based on a four-letter acronym that has been adopted by various organizations for a variety of non-infringing good faith uses. No evidence is included as to the fame or consumer awareness of the mark in 1996. The nearly 30-year delay from the alleged date of registration in bringing the Complaint appears to be treated as an irrelevancy and is not mentioned.
The finding of bad faith use is more understandable as the disputed Domain Name is allegedly being used for malware. But here too, more information would have been helpful for the reader to understand the finding. Malware is a very broad term that is often misapplied. No description is provided of the nature of the malware. Was there any evidence to support the allegation that the LSAC .com was being used for malware? If so, the decision is silent. Was the alleged malware targeting the Complainant? Again, the decision says nothing.
The lack of relevant information provided in the decision prompted me to conduct some independent research.
The decision notes that the domain name was registered in 1996, yet it was not registered by the Respondent in 1996. According to a Whois record from 2009, the original registrant was the Lakeshore Athletic Club:
Domain Name: LSAC .COM
Administrative Contact:
Long, Janet g47r64nc954@networksolutionsprivateregistration.com
Lakeshore Athletic Club
Whois history records indicate that the original registration expired in 2012 and that LSAC .com was then registered by the Respondent. The question then becomes was the registration by the Respondent in 2012 in bad faith. This might be an easier case to make as it represents only a 12-year delay in bringing the Complaint rather than a 29-year delay.
Yet the original registration in 1996 to the Lakeshore Athletic Club also demonstrates that, as with any four-letter acronym, there are numerous legitimate uses to which the LSAC .com domain name could be put. The Complainant’s LSAC mark is not so distinctive that there is no conceivable good faith use for the LSAC .com domain name. A LinkedIn search for “LSAC” (see here) reveals several entities making use of the acronym LSAC that are unrelated to the Complainant. The finding that, in the absence of a response from the Respondent, a registration in 1996, or in 2012, would likely have been targeted at the Complainant in bad faith appears to be poorly supported based on the evidence presented in the decision.
The lack of any specificity regarding the allegation that LSAC .com was used for malware also raises doubts about the finding that LSAC .com was put to a bad faith use. At times Complainants have incorrectly attributed malware to the Respondent when the source of the malware was unrelated to the Respondent. Examples of Complainants incorrectly attributing malware to a Respondent include the disputes over MarkelGroup .com and IBMS .com.
In the markelgroup.com dispute, according to Andrew Allemann, “Markel’s big mistake was to run a malware report on the domain’s privacy service and then claim that the domain owner itself was associated with malware. The company noted that two domains using the privacy service had been tied to malware.” The Panel found that the Complainant’s inaccurate allegations that the Respondent was responsible for the malware were deserving of a finding of RDNH. (See here).
Even IBM made inaccurate claims of abuse in its “ill-conceived and poorly executed” complaint in the ibms.com dispute:
The Complaint did not refer to the more than 250 archived screenshots of the disputed Domain Name, merely asserting (erroneously) that the disputed Domain Name had only been used for a redirect to <greenfence.io> and for phishing emails. The Complainant also did not mention (until its supplemental filing) the fuller report from the Complainant’s own security team indicating that the March 2023 phishing emails came from an IP address associated with a botnet on spam lists, thus casting doubt on the Complainant’s theory that the Respondent sent the phishing emails. (See here).
The Panel makes the finding that “Offering malware via a domain name containing a complainant’s mark is bad faith under the Policy”. Yet the decision cited as precedence, Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA 1617061, Forum June 9, 2015, unlike the LSAC .com decision, explicitly makes the finding that the Complainant was the target of the malware:
The <amazondevice.org> domain name resolves to a website that displays a fake <Amazon.com> home page that is connected to malware schemes and other malicious downloads.
A mere allegation of malware is insufficient and requires evidence substantiating that the malware originated with the Respondent. Yet the decision does not state that the alleged malware was targeting the Complainant, nor does it provide sufficient detail for a reader to attribute the source of any alleged malware to the Respondent.
As readers, we have not been provided enough evidence or analysis to reach the same conclusion as the Panel that a transfer outcome is justified.
Despite Unconvincing Response, it was Complainant’s Burden to Bear
Tata Motors Limited v. Aaron Thomas, WIPO Case No. DAI2025-0002
<fleetedge .ai>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Indian Complainant, part of the TATA Group, has been manufacturing commercial vehicles since 1954. On July 13, 2020, it launched a digital platform called FLEETEDGE to enhance the management of vehicle fleets. The Complainant claims that the FLEETEDGE software has acquired a “huge customer base.” The record, however, contains no evidence of sales or the number of customers, either before the Domain Name was registered or since.
The Complainant holds various registrations for the word mark FLEETEDGE, including Uganda registration (registered on August 3, 2023, effective July 26, 2022); South Africa registration (registered on June 10, 2022); and India registration (registered on May 20, 2022, effective July 16, 2020). The Domain Name was registered on December 12, 2020, along with the domain names <fleetedge .ca> and <fleetedge .io> and resolves to a parking page set up by the Registrar.
The Respondent contends that these Domain Names were registered “as part of a cohesive branding strategy for fleet management and IIOT [Industrial Internet of Things]-related services.” The Respondent further contends: “The Respondent’s professional activities have centered on developing and delivering automation and IIOT solutions. The term ‘Fleetedge’ reflects the Respondent’s legitimate plans to innovate in this area and provide technology solutions for fleet optimization.” There is no evidence in the record to corroborate the Respondent’s alleged “professional activities” or plans.
Held: At the time the Domain Name was registered, the Complainant had been using its FLEETEDGE mark in commerce for five months. It is not apparent from the record provided here how much renown that mark had acquired by December 2020, when the Domain Name was registered. The Complainant annexed three July 2020 articles from rather specialized trade publications that referred to the Complainant’s “Fleet Edge” platform. In the Panel’s experience, bad-faith domain registrations follow soon after media announcements, but here, the Domain Name was registered five months later, in December 2020.
The Panel notes further that all trademark registrations mentioned by the Complainant occurred well after the Domain Name was registered, even though the priority date for the India trademark registration predates the Domain Name registration. The record is also devoid of any evidence of how well known the FLEETEDGE mark is in Canada, the Respondent’s country. In addition, while the mark FLEETEDGE is a coined term, it is a combination of two ordinary dictionary terms. Unlike in the case of an entirely fanciful mark, it is not inconceivable that someone could decide to combine “fleet” and “edge” for some legitimate business or other purpose.
In sum, the key question here is whether the Complainant has carried its burden of proving that Respondent more likely than not had the Complainant’s FLEETEDGE mark in mind when registering the Domain Name. On this fairly sparse record, the Panel cannot conclude that the Complainant has carried its burden.
RDNH: The Respondent has asked the Panel to find RDHN against the Complainant. In this case, the Complainant had been using a trademark for several months before the Respondent registered the Domain Name. The Complainant’s trademark is a coined word (even if it is comprised of two ordinary words). At the time the Complaint in this proceeding was filed, there was no evidence that the Respondent had put the Domain Name to any legitimate use. This Complaint was dismissed simply because the Complainant failed to carry its burden of proof and not because of any improper conduct.
Complaint Denied
Complainant’s Counsel: DePenning & DePenning, India
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: For the purposes of the first prong of the UDRP, it does not matter when a Complainant acquired trademark rights, but this should not be conflated with the timing of a Complainant’s reputation when it comes to bad faith registration. I have often said in these pages that ‘reputation is everything’ when it comes to proving bad faith. I now want to add to that and say, ‘timing of reputation is everything’ when it comes to proving bad faith registration, and no case illustrates this better than the present one.
The Panelist zeroed-in on the material time period for determining whether the Complainant: “At the time the Domain Name was registered, Complainant had been using its FLEETEDGE mark in commerce for five months. As noted above, it is not apparent from the record provided here how much renown that mark had acquired by December 2020, when the Domain Name was registered.” This five-month time period was absolutely crucial for the Complainant since it was the only time period wherein the Complainant could have established its reputation in its new brand prior to the Domain Name registration.
The Complainant, however, failed to carry its burden, as the Panel pointed out. Instead of focusing nearly entirely on this crucial five-month period and providing the Panel with sufficient evidence of the breadth and depth of its reputation at this material time, such that it was likely that the Respondent had targeted the Complainant’s goodwill as a result, the Complainant included unhelpful evidence, limited to three articles in “rather arcane trade periodicals”. Compounding the lack of evidence to support a claim of targeting was the Complainant’s failure to tailor the evidence based upon the physical location of the Respondent. As the Panel noted, “the record is also devoid of any evidence of how well known the FLEETEDGE mark is in Canada, Respondent’s country”. Although location is not always important in the Internet age where information flows across the globe, a Complainant would be well advised where possible, to provide geographically targeted evidence of reputation. Moreover, even when registration data is revealed, Complainants sometimes fail to satisfactorily update their Complaints to reflect the new facts, such as a Respondent’s location.
Notably, the Panelist was not all that impressed with the Respondent’s case either. The Panelist said inter alia “to be sure, the Panel is not convinced that Respondent has provided sufficient evidence of a legitimate interest vis-à-vis the Domain Name, as Respondent submitted no evidence to corroborate his alleged business plan”. Nevertheless, it is the Complainant who carries the burden. As the Panelist observed, “the key question here is whether Complainant has carried its burden of proving that Respondent more likely than not had Complainant’s FLEETEDGE mark in mind when registering the Domain Name. On this fairly sparse record, the Panel cannot conclude that Complainant has carried its burden.”
The Material Time for Proving Common Law Trademark Rights
Gold Flora Corporation v. Ashley olsen, NAF Claim Number: FA2502002139080
<gramlindisposable .com>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant, founded in 2017, claims to be one of the few vertically integrated, woman-owned, and woman-operated cannabis brands. It operates online at <gramlinmode .com> (January 10, 2024) and offers a variety of products including clothing, hats, lighters, tobacco grinders, and online articles. The Complainant asserts that it has built substantial common law rights in the GRAMLIN mark through continuous and extensive use in the marketplace since March 2024. Additionally, the Complainant filed a trademark application for GRAMLIN on January 5, 2024, which is currently pending.
The disputed Domain Name was registered on October 28, 2024. The Complainant alleges that the disputed domain resolves to a website fraudulently selling its products by utilizing identical copyrighted photographs. Furthermore, the Complainant claims that the Respondent registered and used the disputed domain in bad faith, with constructive and/or actual knowledge of the Complainant’s mark, and employs a privacy service. The Respondent did not file a response.
Held: The Complainant asserts common law rights in its GRAMLIN mark, which are sufficient to establish rights in a mark under Policy 4(a)(i). Here, the Complainant registered the domain name <gramlinmode .com> on January 10, 2024 and provides evidence of use of its mark as of December 27, 2024. However, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview 3.0, para 4.3. The Panel finds that the Complainant has not met its burden of providing sufficient evidence to establish common law rights in the GRAMLIN mark preceding the registration of the disputed Domain Name. The Complainant only provides evidence of use of the mark as of December 2024, whereas the disputed Domain Name was registered in October 2024.
According to WIPO Overview 3.0, para 3.8, in general, 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. Thus, the Panel finds that the Complainant has failed to satisfy its burden of proving bad faith registration of the disputed Domain Name, and it will dismiss the Complaint without prejudice. This dismissal is, of course also without prejudice to any national court proceedings that the parties may wish to envisage. The Complaint is dismissed without prejudice because if the Complainant does obtain registered trademark rights in the mark GRAMLIN, the date relevant for a UDRP proceeding would be the application date, namely January 5, 2024, which precedes the date of registration of the disputed Domain Name. See WIPO Overview 3.0, section 4.18.
Complaint Denied
Complainant’s Counsel: David M. Perry of Blank Rome LLP, Pennsylvania, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Once again, we see the centrality of timing to the issue of bad faith registration. Here, the Panel noted that the “Complainant only provided evidence of use of the mark as of December 2024, whereas the disputed Domain Name was registered in October 2024”. Although the Complainant “assert[ed] that it has developed widespread public recognition and appeal in its distinctive and reputational GRAMLIN brand through use dating back to March 2024, [it] seems unlikely that the mark could be considered to have longstanding use in October 2024”.
The Complainant appears to have not adequately focused on the material and crucial time period for proving common law trademark rights – which is before the Domain Name was registered – and which must be considerable in order to rise to the standard necessary for proving common law trademark rights.
Fortunately for the Complainant, however, the Complaint was dismissed “without prejudice” so that the Complainant can easily refile. I agree with the Panelist’s inclination to do so in the circumstances of this case. I do not think, however, that the Complainant necessarily need wait until it has registered trademark rights to refile. First, it seems rather likely that the Complainant can marshal the right kind of evidence to prove common law trademark rights under the Policy, given that the selection of the Domain Name cannot plausibly be coincidence (given that “disposable” appears to relate to a disposable cannabis device sold under the GRAMLIN brand).
Secondly, I am uncertain whether the Complainant’s trademark application would have any greater effect upon registration. The Panelist appears to be of the view that the Complainant will have trademark rights that go back to the application date upon trademark registration, and this indeed raises an interesting question. Certainly, once registered, the Complainant will have trademark rights for the purpose of the first prong, as under the first prong, the only thing that matters is having a trademark – not when it first had a trademark, as long as it predates the Complaint itself. But for the purposes of proving bad faith registration, I don’t see how a retroactive treatment of the Complainant’s application date provides any meaningful assistance under the Policy. The key question here is whether the Complaint had trademark rights (registered or unregistered) at the time that the Domain Name was registered. In this case, even if the Complainant’s application was subsequently registered, the fact remains that at the material time – namely at the time of Domain Name registration – the Complainant, according to the Panel, had no proven trademark rights. That does not change retroactively as a result of the Complainant subsequently obtaining a trademark registration. The reason is simple. The inquiry here is to determine whether the Respondent targeted the Complainant’s trademark rights at the time of Domain Name registration. If the Complainant had no trademark rights at the time of registration, then there was nothing for the Respondent to be targeting, making bad faith registration impossible.
By treating an application date as the retroactive point in time that trademark rights accrued, it is in effect espousing a supercharged kind of “constructive notice” – a principle which is not accepted in the UDRP (see for example, Digest Vol. 5.1, “No Place for Constructive Notice in UDRP”; see also Wasteland Inc. v. Monica Dimperio / The MidWasteland, NAF Claim Number: FA2501002134687 featured in Digest Vol. 5.8: “Even though a registered trademark constitutes constructive notice under U.S. trademark law, that concept has generally not been incorporated into the UDRP as a basis to find bad faith registration…because a finding of bad faith under the Policy requires some element of knowledge, even if knowledge is inferred by the facts or established through willful blindness.”). I say “supercharged” because it is more than even “usual” constructive notice – it is treating someone as aware of something that doesn’t even exist – something that is not apart of the UDRP, and for good reason.
In any event, as I said above, I agree with the Panel’s inclination to dismiss without prejudice in the circumstances of this case. The Panel likely recognized that the Complainant had a meritorious Complaint but that it had inadvertently failed to appreciate the evidentiary requirements to support its allegations. As the Complainant had failed to provide the necessary evidence the Panel had to deny the Complaint, yet in the interest of justice, the Panel thought it advisable to deny the Complaint without prejudice so that the Complainant could refile. But as discussed above, this would not change the evidentiary requirement for the Complainant to demonstrate bad faith at the time of the Respondent’s registration of the domain name.
<rsingh .net> and <espub .net> Not Identical or Confusingly “Denys Scharnweber”
<rsingh .net> and <espub .net>
Panelist: Mr. Alan Limbury
Brief Facts: The Complaint specified as one of three domain names the subject of this proceeding <denysscharnweber .rsingh .net>, and stated, inter alia: “My client is the rightful owner of the name ‘Denys Scharnweber’, which is recognized as a trademark or protected name. “The subdomain <denysscharnweber .rsingh .net> is identical or confusingly similar to my client’s name, leading to a likelihood of confusion to his website <denysscharnweber .com>.” The case administrator notified the Complainant’s representative of deficiencies in the Complaint, including: “UDRP cases cannot be conducted against the third level domain names, you must conduct it against the base domain <rsingh .net>. The Amended Complaint specified the two domain names <rsingh .net> and <espub .net> as the subject of this proceeding.
The Response contends: “I would like to inform you that I have taken the necessary corrective actions as soon as I became aware of the dispute and the potential unauthorized use of the name. I would like to clarify that, at the time of creating the subdomain, I was not aware that the name Denys Scharnweber was protected by trademark rights. Upon receiving notification of the dispute, I immediately removed the subdomain in question, along with the related content, and took steps to ensure that the name is no longer used in any context on my domain. Additionally, I have removed the Google Ads campaign that was running and that might have potentially associated the Complainant’s name with my domain. I would like to highlight that my actions were motivated by good faith and a commitment to resolving the situation amicably and in compliance with the established rules…”
Held: It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed Domain Name, see WIPO Overview 3.0, section 1.7. The Panel finds that neither of the <rsingh .net> and <espub .net> domain names is identical or confusingly similar to the Complainant’s claimed name and trademark “Denys Scharnweber”. No such allegation is made by the Complainant. The Complainant has failed to establish the first element of the Policy.
Complaint Denied
Complainant’s Counsel: Johannes Rauchfuss (HDMW Rechtsanwälte und Fachanwälte PartG mbB)
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Crikey. What a misguided Complaint. My respect goes to the Panelist for his restraint in writing the decision.
Additional Comment by Digest Editor, Ankur Raheja: It is also well-established that a domain name dispute cannot be filed against a sub-domain unless they are registered with a Domain Registrar; for example, see: Comfort Window Co., Inc. v. AL-SADEQOUN LIL-TASWEEQ LLC, NAF Claim Number: FA1206001447758:
The “domain names” <comfort .windoows .net> and <comfort .windooows .com> are not domain names, but subdomain names. A subdomain is a domain that is part of a larger domain. For example, <johndoe.example.com> and <janedoe.example.com> are subdomains of the <example.com> domain. The UDRP rules do not apply to subdomain names. In order for the UDRP Policy to apply, there must be evidence that these subdomains are registered with a registrar. See EFG Bank European Financial Group SA v. Domain Consults, 2011 UDRP LEXIS 2911, *7, D2011-1907 (WIPO Dec. 23, 2011). Because the Complainant has not presented any evidence (or even alleged) that the <comfort .windoows .net> and <comfort .windooows .com> subdomains are registered, the Panel is unable to order transfer of these two subdomain names. Id.
Ironically, an INDRP (.IN Domain Dispute Resolution Policy) Arbitrator/Panel once ordered the transfer of a subdomain in November 2020, specifically justkhadi.zepo.in. However, through an addendum to the decision, the award was later amended to cancel the subdomain. Refer to the last page of the linked PDF for details.
Is EFLOORS Confusingly Similar to eFlooringDeals .com?
<eflooringdeals .com>
Panelist: Mr. Debrett G. Lyons
Brief Facts: The Complainant asserts trademark rights in EFLOORS .COM. The Complainant owns a US trademark for EFLOORS .COM registered on December 17, 2013, in connection with the sale and repair of flooring and floor coverings. The Complainant submits that the disputed Domain Name is nearly identical and confusingly similar to its trademark. The Complainant further adds that the dominant portion of the Domain Name is EFLOOR; as the first part of the domain name, it is the part of the domain name that consumers will remember. The domain name merely adds the generic suffix “ING” and the descriptive word DEALS. The disputed Domain Name was registered on October 12, 2024, and has not been used. The Complainant alleges that the Respondent registered and passively held the disputed Domain Name in bad faith. The Respondent failed to file a Response.
Held: The Complainant has rights in the trademark EFLOORS .COM since it provides proof of its registration with the USPTO including wordmark, EFLOORS .COM. The domain name is not identical to the trademark, and the only question is whether the domain name is confusingly similar to the trademark, see WIPO Overview 3.0, Para 1.7. Further, the gTLD, “.com”, is part of the registered trademark, but even if a more “holistic comparison” is taken, that part of the trademark must be given very low weight for the same reason. If the Panel then applies a “side-by-side comparison” of the domain name and the trademark, it is not moved by the Complainant’s submission that the dominant and memorable portion of the domain name is EFLOOR.
The prefix “E” (or more frequently, “e”) is arguably even less inherently distinctive than “.com”. Moreover, EFLOOR is not the trademark, even when “.COM” is disregarded or heavily discounted and, in context, EFLOOR makes less syntactical/grammatical sense than either the trademark – EFLOORS – or the domain name, EFLOORING. Furthermore, that differentiation is underscored by the addition of the word DEALS, which, albeit descriptive, nevertheless completes an intelligible, nominative message – e flooring deals – not carried by the trademark. The Panel finds that the disputed Domain Name is neither identical nor confusingly similar to the trademark and therefore finds that the Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
Complaint Denied
Complainant’s Counsel: Jennifer M. Mikulina of McDermott Will & Emery LLP, Illinois, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Somewhat similar is not “confusingly similar” under the UDRP. Here, the Panel provided a compelling reason why, in this case, the Complainant couldn’t pass the first prong of the test.
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.