When Responding Matters
Why is it important to file a response in a UDRP dispute?
Sometimes the respondent’s rights / legitimate interest may be evident even in default cases, for instance based on the disputed domain name (e.g. a dictionary term), manner of use of the domain name, the website’s content, and/or respondent’s personal information (e.g. a surname corresponding to the disputed domain name). Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 5.13) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ When Responding Matters (wilkiee .com *with commentary)
‣ Gong Show for Complainant Results in RDNH (gong .com *with commentary)
‣ Was Davidson College in Davidson, North Carolina, the Target of the Registration? (davidson .email *with commentary)
‣ Panel: Respondent Likely Selected the Domain Name for Descriptive Value (highervisibilityllc .com *with commentary)
‣ Respondent Has Its Own Trademark in China (bionike .com)
When Responding Matters
Willkie Farr & Gallagher LLP v. Bogic Popovic, NAF Claim Number: FA2502002140300
<wilkiee .com>
Panelist: Mr. Kendall C. Reed
Brief Facts: The Complainant is an international law firm with its headquarters in New York, U.S. and is online at <willkie .com>, (July 30, 1995). It has offices in six countries and its annual revenue exceeds US $1.5 billion. The Complainant claims substantial advertising and promotion of the Complainant’s trademark and the Complainant’s Domain Name have created significant goodwill and consumer recognition in the United States and around the world. The Complainant is the owner of a US trademark registration for the trademark WILLKIE, issued on August 20, 2002, among others. The Respondent registered the domain name <wilkiee .com> on December 18, 2024, and resolved to a parking page. The Complainant alleges that its customers could believe that something has gone wrong with the Complainant’s website.
The Complainant further alleges that its customers might mistakenly believe emails from the Respondent originated from them, but the Respondent denies using <wilkiee .com> for such communications. The Respondent contends that he did not target the Complainant’s trademark, but rather he developed the expression “wilkiee” on his own and without either knowledge of or reference to the Complainant’s trademark. The Respondent further contends that his purpose for developing the expression “wilkiee” was for a domain name to be used in connection with a fantasy video game currently under development by him. His creation and selection of this expression, as well as his development efforts for his video game, predated notice to him of the present dispute. In support of these assertions, the Respondent provides a number of exhibits.
Held: The Respondent presents various exhibits including a photograph of a pinup board dated December 19, 2024, showing 50 elements, including a project titled “Wilkiee.com”; a screenshot of a OneNote file with sub-pages like “Monsters” (time-stamped January 8, 2025) and “Domain” (time-stamped December 8, 2024) referencing “wilkiee.com”; a mockup of a website landing page featuring “Wilkiee” and a pirate-themed adventure scene. In further support of his allegation that the Respondent intends to use the disputed Domain Name in connection with a video game, he provides an additional exhibit which suggests that prior to this current effort concerning his video game, he created many cyber objects, including such items as tools and weapons. These cyber objects are intended for use in the context of other third-party video games.
In the present matter, the Respondent does not say when his efforts to create his video game began, but one of the above-noted exhibits shows a time stamp of December 8, 2024, so his efforts would have begun at least as early as that. The Complainant also does not address this issue, so the Panel must assume that the Respondent became aware of the dispute when he was served with the complaint herein, which as is noted above in the Procedural History section was on February 20, 2025. As such and based on the record, the Respondent shows demonstrable preparations for the use of the disputed Domain Name before he received notice of the present dispute. This is not to say that the Complainant is necessarily without a remedy. If the Respondent eventually uses the disputed Domain Name in a way that the Complainant believes constitutes trademark infringement, the Complainant may pursue the matter in the appropriate court.
RDNH: Bad faith has been found in situations in which a complainant knew or should have known at the time it filed its complaint that it could not prevail. However, a declaration of reverse domain name hijacking is to be approached cautiously and reserved for more extreme situations. Additionally, there is little basis for finding fault if the complainant did not know the facts and could not have learned them through reasonable investigation. See Fisby S.A> v. Registration Private, Domains by Poxy LLC/ Michael Appolionia, D2020-0706 (WIPO May 12, 2020) (“RDNH is concerned with the bringing of a Complaint in bad faith and the Respondent has not suggested that the Complainant had any reason to be fully aware of the Respondent’s potential legitimate interest in the disputed Domain Name, which was held through a privacy service, before seeing the Respondent’s position as set out in a formal Response…”).
In the present case, there is no evidence presented that would suggest the Complainant knew the facts about the Respondent’s legitimate interests. It appears that the Respondent was working by himself without any sort of public disclosure, which is not to suggest that he should have been more public about his efforts; such would be an anathema in the context of most development projects. The parties did not communicate before the complaint was filed, which is not to suggest that such was required. The Complainant did know that the Complaint’s trademark is strong for purposes of the Policy (as opposed to it being generic) and that the degree of similarity between the disputed Domain Name and the Complainant’s trademark is very high, which together are strongly suggestive of targeting, and as such the Panel cannot say that a negative outcome was a fore drawn conclusion. Given this record, the Panel is not able to find that the Complainant acted in bad faith.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
Case Comment by Panelist, Igor Motsyni:
Igor is an IP consultant and partner at Motsnyi IP (dba “Motsnyi Legal”), “Linkedin”. His practice is focused on international trademark matters and domain names, including ccTLDs disputes and the UDRP. Igor has over 23 years of experience in international TM and IP matters. Igor is a UDRP panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy.
The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.
Why is it important to file a response in a UDRP dispute?
Sometimes the respondent’s rights / legitimate interest may be evident even in default cases, for instance based on the disputed domain name (e.g. a dictionary term), manner of use of the domain name, the website’s content, and/or respondent’s personal information (e.g. a surname corresponding to the disputed domain name).
However, what should a panelist do when:
i) the Complainant has operated for more than 130 years and is “an international law firm with offices in six countries around the world with more than 1,200 attorneys, and an annual revenue exceeding US $1.5 billion”,
ii) the Complainant’s trademark can be considered distinctive and well-known and registered decades before the registration date of the disputed domain name,
iii) the disputed domain name appears to be a typosquatted version of the Complainant’s mark,
iv) the disputed domain name resolves to a web page with PPC links,
v) the Respondent is an individual with no apparent connection to the disputed domain name or any other similar term and
vi) there is no response?
Most likely outcome is transfer.
But this was not the case in the <wilkiee.com> dispute.
Not only the Respondent (on the record, self-represented) submitted a response, apparently his response was well-argued, and he provided sufficient evidence and information to establish “demonstrable preparations to use” the disputed domain name, including the following:
- He is a game developer from Serbia;
- His registration of the disputed domain name was neither motivated by, nor connected to, Complainant or Complainant’s mark. The domain name was chosen as an invented name to reflect Respondent’s own creative activities;
- While it displayed a default “parking page” provided by the registrar, Respondent derived no commercial revenue from this parked page;
- He plans to launch a website dedicated to his game and already completed a website design;
- He provided evidence of his future game and his activity in game development, including “a pinup board showing approximately 50 elements” of the game, “sub-pages with titles such as “Frozen Tundra,” “Coral Reef,” “Cursed Island,” and “Domain”, “mockup of a website landing page”, “additional exhibit with a number of cyber objects, including such items as tools and weapons”.
Respondent’s submissions seem to be a textbook response to bona fide respondents that wish to prove “demonstrable preparation to use”.
The Panel deserves credit for providing a nice analysis of the second element, summarizing Respondent’s submissions and his rights in the disputed domain name.
However, all this could not have been possible had the Respondent not filed a response.
In some cases, even the best panelist can hardly make the right decision if there is no response.
Another interesting aspect of this well-written decision is Panelist’s approach to potential “denial without prejudice”. The Panelist did not issue a denial without prejudice but rather made the following remark: “If Respondent eventually uses the Disputed Domain Name in a way that Complainant believes constitutes trademark infringement, Complainant may pursue the matter in the appropriate court”.
Denial without prejudice is issued by panels when there is insufficient evidence of bad faith at the time the complaint is filed, yet given the case circumstances, there is a likelihood that such evidence may be available in future. Here, the Panel, in my opinion, was right in not issuing a denial without prejudice given the response and evidence provided by the Respondent. As noted in “UDRP Perspectives”, updated January 15, 2025, sec. 0.10: “Where the Respondent has filed a formal response, a dismissal without prejudice can be unfair to the Respondent. The Respondent has likely expended considerable time and expense in preparing a Response”.
On the date of writing this comment the disputed domain name resolved to the following webpage:
That seems to confirm the Respondent’s submissions in this dispute.
In conclusion, I can only repeat what I already wrote in another case comment on the <Altron.ltd> decision: “if you are not a cybersquatter and you receive a UDRP Complainant, you should respond and try to defend your rights”.
Gong Show for Complainant Results in RDNH
Gong Galaxy v. Jeffrey Gong, Gong Inc, WIPO Case No. D2025-0500
<gong .com>
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is a French private company that provides energy drinks and water sports accessories and has an online presence at <gong-galaxy .com>. It holds trademark registrations in multiple jurisdictions, including the French trademark registration (October 18, 1995) and the International trademark (January 10, 2024) indicating multiple jurisdictions, including the United States, where it is currently pending. The Respondent is an individual born in 1965 and the company Gong Inc. that he incorporated with the Arizona Corporation Commission in 2015 to provide consulting/software development services. The disputed Domain Name, created on March 3, 1997, has been used by the Respondent for email since at least April 2019 and, from May 2020, was connected to a website promoting an encrypted key storage solution. On February 16, 2023, the Complainant emailed the Respondent to discuss purchasing the disputed Domain Name but received no reply. Since December 2023, the domain name has resolved to a “coming soon” page.
The Complainant alleges that given the significant reputation of the Complainant worldwide and its prior right in the GONG trademark, the Respondent should have reasonably known of the Complainant’s existence when he registered the disputed Domain Name. The Complainant also questions the accuracy of the Respondent’s contact details, alleging the possible use of fake emails to scam consumers or associates, as the Respondent fails to respond to communications. The Respondent contends that the Complainant is aware that (i) the Respondent has rights and legitimate interests in the disputed Domain Name, and (ii) the Respondent did not register or use the disputed Domain Name in bad faith. The Respondent further contends that when the Complainant’s efforts to purchase the disputed Domain Name failed, the Complainant filed this proceeding in bad faith.
Held: The Respondent claims to be commonly known by the surname “Gong,” which the Registrar confirmed via the WHOIS database. He provided evidence, including official IDs, diplomas, corporate records, and emails, to support this claim. There is no evidence on the record indicating that the Respondent has been known by any other name. Based on this evidence, the Panel finds that the Respondent has been commonly known by the disputed Domain Name within the terms of paragraph 4(c)(ii) of the Policy. Given the above finding, the Panel doesn’t have to consider the Respondent’s other claimed legitimate interest arising from the use of, or demonstrable preparations to use, the disputed Domain Name in connection with a bona fide offering of services within the terms of paragraph 4(c)(i) of the Policy.
The Complainant claims a prior trademark and significant global reputation, asserting the Respondent should have been aware of it in 1997, but provides no evidence to substantiate the allegation. The Respondent is based in the U.S., where the Complainant had no activities, trademark claims, or registered domain until over 20 years after the Respondent secured the disputed domain. The Parties operate in unrelated sectors, and no evidence suggests a prior Internet search for “gong” in the U.S. would have revealed the Complainant or its GONG mark. The Complainant’s mark was registered in France in 1995 but the Panel does not deem the Respondent to have constructive notice of the contents of the French trademark register.
Accordingly, the evidence as presented does not indicate that the Respondent knew, or should have known, of the Complainant and/or its trademark at the time when he registered the disputed Domain Name.
RDNH: Concerning Respondent’s first contention, it can be deduced that the Complainant could not have known the Respondent had rights or legitimate interests in the disputed Domain Name, as the Respondent’s former website did not clearly indicate Gong as their surname, is now inactive, and uses a privacy service. However, with respect to the second contention, the disputed Domain Name was registered 28 years ago. The Complainant made no effort to substantiate its allegation that it had a significant reputation at that time. The Complainant’s mark is a short dictionary word and not highly distinctive. Although the Complainant alleged that the Respondent’s registration and use of the disputed Domain Name disrupted its business, it lacked any evidence that this was the Respondent’s aim.
Instead, the Complainant engaged in speculation regarding the “coming soon” page, potential email scams, and the Respondent’s existence, identity, and contact details. The Complainant has legal representation in this proceeding. In these circumstances, the Complainant clearly ought to have known it could not succeed under any fair interpretation of the facts and arguments that it presented. Even though the Complainant received no reply to its offer to discuss an eventual transfer/purchase, filing a Complaint under the UDRP alleging bad faith registration and use was not an appropriate course of action. Therefore, the Panel finds that the Complaint was brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: AtlantIP, France
Respondent’s Counsel: Jaburg & Wilk, P.C., United States
Case Comment by ICA General Counsel, Zak Muscovitch: Good for the Panelist for finding RDNH in the circumstances. It is disheartening to see that even once the Registrant’s Whois details were revealed to the Complainant, that the Complainant pressed along rather than withdrawing its Complaint. The reason for this misadventure may be rather simple. When a party is covetous of a valuable descriptive-word/surname domain name that corresponds to the party’s trademark, the first effort is often to try to purchase it. Which is exactly what the Complainant apparently did. But faced with no response, the Complainant’s apparent next step was to try the UDRP, despite having no credible factual basis for its allegations of bad faith.
As the Panel noted, “Even though the Complainant received no reply to its offer to discuss an eventual transfer/purchase, filing a Complaint under the UDRP alleging bad faith registration and use was not an appropriate course of action”. Indeed. But since the UDRP is susceptible to such abuse with little consequence other than censure by the Panel, it was “worth a shot” for the Complainant apparently. Counsel must avoid such misadventures and exert more effort at contacting registrants and attempting to purchase a desired domain name, rather than resort to meritless and abusive UDRP Complaints. There are many qualified domain name brokers out there, who are adept at identifying owners and making deals on behalf of buyers. Most of them are ICA Members and the ICA also provides a “Best Practices” for Domain Name Brokers”. In cases like this one, call a Broker instead of calling a lawyer.
Was Davidson College in Davidson, North Carolina, the Target of the Registration?
<davidson .email>
Panelist: Mr. Ho-Hyun Nahm, Esq.
Brief Facts: The Complainant, The Trustees of Davidson College is responsible for the oversight, management, and operation of Davidson College (established in 1837). The Complainant, acting through and in conjunction with Davidson College, has owned, used, and continues to use a family of DAVIDSON-formative marks in connection with the College’s academic and athletic programs since the institution’s founding 188 years ago. The Complainant holds rights, inter alia, in the DAVIDSON mark through its registration with the USPTO (registered November 18, 2003; first used December 31, 1837). The disputed Domain Name was registered on February 9, 2025, and resolves to a webpage displaying various third-party links—such as “Harley Davidson Motorcycle Parts,” “Harley Davidson Road Glide,” and “Harley Bike Parts”.
The Complainant alleges that the Respondent registered the disputed Domain Name with full awareness of the Complainant and its marks and employed the disputed Domain Name in connection with a pay-per-click website, seeking to derive profit from the confusion caused by the disputed Domain Name. The Complainant further alleges that the Respondent’s use of the domain to host parked pages evidences that the Respondent lacks any legitimate commercial interest in the domain name and is instead engaged in cybersquatting by registering a domain that is confusingly similar to the DAVIDSON family of marks. The Respondent did not submit a Response in these proceedings.
Held: The Complainant has submitted evidence demonstrating that the disputed Domain Name resolves to a webpage displaying third-party links not affiliated with the Complainant. The Panel further observes that the webpage displays various third-party links—such as “Harley Davidson Motorcycle Parts,” “Harley Davidson Road Glide,” and “Harley Bike Parts”—none of which are affiliated with the Complainant. The Panel finds that the Respondent presumably derives profit by misleading Internet users and diverting them to its website by exploiting confusion with the Complainant’s well-known mark, see See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016). Accordingly, the Panel finds that the Respondent is not using the disputed Domain Name for a bona fide offering of goods or services or legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(i) or (iii).
The Complainant has provided evidence that the disputed Domain Name resolves to a webpage displaying third-party links not affiliated with the Complainant. The Panel concludes that the Respondent presumably derives commercial gain by diverting Internet users seeking the Complainant and its well-known marks. Such conduct disrupts the Complainant’s business. Therefore, the Panel finds that the Respondent registered and is using the disputed Domain Name in bad faith per Policy 4(b)(iii) or (iv). Given the notoriety of the Complainant’s DAVIDSON mark and the manner in which the disputed Domain Name is used, the Panel infers that the Respondent was aware of the Complainant’s rights in the mark at the time of registration. Accordingly, the Panel finds that the Respondent registered the disputed Domain Name in bad faith under Policy ¶ 4(a)(iii).
Transfer
Complainant’s Counsel: Amanda L. DeFord of McGuireWoods LLP, Virginia, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: When you think of “Davidson”, do you think of Davidson College, located in Davidson, North Carolina, with an enrollment of under 2,000 students? Or do you think of the surname, Davidson, which is a very common surname in the English speaking world? Or do you think of Harley Davidson, the motorcycle company? Or maybe you think of one of thousands of companies that all use the name, Davidson, in their corporate or business name? Or one of the hundreds of trademarks all over the world that include the word, “Davidson”?
Here, the Respondent did not respond, and of course it ought to have (as explained by Igor Motsnyi in his case comment in the <wilkiee .com> case above). Nevertheless, the onus is on the Complainant to prove bad faith registration and use. In the present case, as the Panel noted, “the Complainant has provided evidence that the disputed domain name resolves to a webpage displaying third-party links not affiliated with Complainant. The Panel further observes that the domain resolves to a webpage displaying various links—such as ‘Harley Davidson Motorcycle Parts,’ ‘Harley Davidson Road Glide,’ and ‘Harley Bike Parts’ – none of which are affiliated with Complainant.” Clearly, the links didn’t target the Complainant, but rather targeted another company altogether. The Panel nevertheless concluded that this constituted bad faith use, since “the Respondent presumably derives commercial gain by diverting Internet users seeking Complainant and its well-known marks”.
In other words, if the PPC links target the Complainant, it is bad faith use. If they don’t target the Complainant, it is also bad faith use. So either way, it is bad faith use according to the Panel. Suppose however, that Davidson College wasn’t even the target of the registration? What proof was there that it was, especially given that the links didn’t event target it? The Panel concluded that the “notoriety of Complainant’s Davidson mark and the manner in which the Domain Name is used [infers] that Respondent was aware of Complainant’s rights in the mark at the time of registration.” I find it difficult to appreciate that this Davidson College is well known. I have never heard of it. And given that the Domain Name wasn’t even targeting the College and corresponds to a very common surname in the English speaking world, I find it difficult to conclude that the College was the target of the registration.
Panel: Respondent Likely Selected the Domain Name for Descriptive Value
Highervisibility, LLC v. Dino Andrade, WIPO Case No. D2025-0203
<highervisibilityllc .com>
Panelist: Mr. Lawrence K. Nodine
Brief Facts: The Complainant registered the disputed Domain Name <highervisibility .com> on March 20, 2002, and owns two United States trademark registrations for HIGHERVISIBILITY, registered on November 21, 2023, in Class 35, and on June 27, 2023, in Class 42. These registrations both state that the trademark was first used in commence on February 28, 2009, although the Complainant also offers a screenshot of a webpage associated with its website dated 2004. The disputed Domain Name, registered on March 15, 2023, resolves to a website titled “Highervisibility Solution Exploring AI Technology A Complete Digital Marketing Agency” with a logo: 
. The Respondent also uses <hvllc. online>. The website at the disputed Domain Name offers a variety of services, some of which, such as search engine optimisation, and website design, overlap with the services described in the Complainant’s trademark registrations.
The Complainant alleges that “Complainant’s federal trademark rights to HIGHERVISIBILITY within the United States begin in March of 2021, well before the Respondent registered the domains in March of 2023. The Respondent had actual or constructive notice of Complainant and Complainant’s trademark rights.” On September 13, 2023, the Complainant notified the Respondent via email of trademark infringement claims, demanded the disputed Domain Name be transferred, and accused the Respondent of impersonation. A cease-and-desist letter followed on September 14, 2024, asserting infringement and threatening litigation. The Respondent’s replies were evasive, requesting an offer to settle. In February 2025, after being notified of default, the Respondent reiterated ownership of the domain and proposed selling it for US $10,000. The Complainant did not respond to negotiation offers.
Held: The Complainant does not offer any evidence to describe or quantify the Complainant’s use of the trademark or otherwise support an inference that the Respondent probably knew of the Complainant when he registered the disputed Domain Name, as the only evidence provided is an obsolete 2004 Internet Archive screenshot of the Complainant’s website. Instead, the Complainant relies entirely on the contention that the Respondent had constructive knowledge of the Complainant’s rights. Reliance on constructive knowledge “is a concept that now rarely finds favour in decisions under the Policy,” see Latham & Watkins LLP v. ren yu, WIPO Case No. D2023-3880. Furthermore, the Complainant offered no evidence about its own commercial activity so constructive notice is not enough to satisfy its burden under the Policy. The consequence in any given case of assuming constructive notice “may depend in part on the complainant’s reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant’s mark,” see WIPO Overview 3.0, section 3.2.2.
The Complainant has not proved, based on the balance of probabilities, that the Respondent targeted the Complainant when he registered the disputed Domain Name. There is no evidence that the Disputed Webpages impersonate the Complainant’s website. Although some of the services offered by the Respondent overlap those described in the Complainant’s trademark registrations, the Respondent also offers services that are different from those offered by the Complainant. These differences may not avoid a finding of infringement under the Lanham Act in a United States court, but they are sufficient to raise doubts about whether the Respondent was engaged in cybersquatting and intentionally targeting the Complainant. It is at least as likely that the Respondent adopted the disputed Domain Name without the knowledge of the Complainant. Finally, the Complainant’s trademark may be suggestive but has clear descriptive connotations, as both parties offer services to enhance website visibility. The Respondent likely chose the disputed Domain Name for its descriptive meaning.
Complaint Denied
Complainant’s Counsel: Evans Petree PC, United States
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: I particularly appreciate the Panel’s nuanced understanding of the difference between a case for infringement and a case for bad faith registration under the Policy. The Panel noted that the “Complainant failed here because it did not offer sufficient allegations and evidence to prove bad faith registration… Complainant appears to have assumed that it was sufficient to allege the bare bones of a trademark infringement action without attention to the need to prove bad faith registration of the Disputed Domain Name.”
Respondent Has Its Own Trademark in China
ICIM International S.r.l. v. Agrinoon (Hong Kong) Limited, WIPO Case No. D2025-0251
<bionike .com>
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant, founded in the 1930s, owns an Italian cosmetic brand called “BioNike” and uses Domain Name <bionike .it>, registered on October 17, 2000. The Complainant holds several trademarks, including the Italian trademarks for BIONIKE (November 8, 1966), and also for BIONIKE SALUTE E BELLESSERE (July 6, 2017). The Complainant appointed a Hong Kong, China Company as its online distributor in China on April 28, 2020. The Respondent is a Hong Kong, China agricultural company formed in 1996 that specializes in the manufacture of agrochemicals and fertilizers. It holds several trademarks, including Chinese trademark registration for BIONIKE, registered on May 28, 2022, specifying goods in class 1, such as agricultural chemicals other than fungicides, herbicides, insecticides, and parasiticides. The disputed Domain Name was transferred to BODIS nameservers on August 21, 2023. Soon thereafter, the Complainant issued a takedown notice, leading the hosting provider to disable parking services after confirming infringement of the Complainant’s intellectual property rights. The Complainant did not take any screenshots before starting the takedown procedure, as it relied in good faith on the sufficiency of the positive response from the hosting provider.
The Complainant alleges that the disputed Domain Name was registered long after its first BIONIKE trademark and that the Respondent likely knew of the Complainant’s trademarks and that the Respondent has engaged in a practice of registering Chinese trademarks corresponding to domain names with parking pages. The Complainant further alleges that the disputed Domain Name resolved to a landing page displaying PPC links related to cosmetics and dietary supplements and redirecting to several links of pharmacies and manufacturers and/or distributors of such products, including seven competitors of the Complainant. The Respondent contends that the Complainant owns rights to stylized marks, not a word mark, and overall the Complainant argues that it is known and has registered trademark rights in the region of Italy only. There is no place to find that the Respondent had constructive knowledge of the Complainant’s Italian trademark registrations. The Respondent further contends that the disputed Domain Name reflects the Respondent’s corporate objectives related to bio-based agrochemicals and it has used the trademark to export a chemical to an African company. This all goes to show demonstrable preparations to use the disputed Domain Name before notice of the dispute.
Held: The disputed Domain Name was evidently used in connection with a PPC links landing page until the Complainant initiated a takedown procedure with the hosting provider. As the registrant, the Respondent was responsible for the use made of the disputed Domain Name. However, while the Complainant alleges that the PPC links related to certain types of products and linked to the websites of its competitors, this allegation is not substantiated. The disputed Domain Name is now passively held. The Respondent’s trademark registration for BIONIKE in China, covering agricultural chemicals (class 1), was obtained two years after registering the disputed Domain Name. The provided evidence—a photo of a bottle label and a June 4, 2024, bill of lading—relates to a fungicide excluded from the trademark registration. There is no online or other evidence on the record of the existence of this BIONIKE fungicide. It is difficult for the Panel to verify this limited evidence.
The disputed Domain Name was registered in 2019, years after the Complainant’s earliest BIONIKE trademark registration. The Complainant used its mark online in its domain name for many years before the registration of the disputed Domain Name, although it did not appoint a distributor in China until 2020. The disputed Domain Name is identical to the textual elements of the Complainant’s BIONIKE mark while the Respondent’s BIONIKE product (a fungicide) is in one of the same classes of goods as the Complainant’s trademark registration (class 5). In the Panel’s view, the Respondent’s explanation that he devised the BIONIKE mark from the characters “拜你克” to refer to pest control is implausible. The Panel recalls that it is not a general domain name court and that the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy establishes a streamlined, inexpensive administrative dispute resolution procedure intended only for the relatively narrow class of cases of “abusive cybersquatting”.
RDNH: In the Panel’s view, the Complainant had a good faith belief that it could succeed. Although the Complainant was on notice of the Respondent’s trademark rights when it filed the Complaint, it explained why it did not believe that this undermined its claim regarding the second element of the Policy. As for the Complainant’s failure to take action against identical domain names in other TLDs, this is irrelevant and, in any event, the other domain names in question are not yet registered. The Complainant provided a link to its RedNote account which was not misleading as it clearly showed the very small number of followers. Accordingly, the Panel declines to find that the Complainant was brought in an attempt at Reverse Domain Name Hijacking.
Complaint Denied
Complainant’s Counsel: Orsingher Ortu, Italy
Respondent’s Counsel: Archer Softech, India
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.