Decision

ARBITRATION AND MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION

ICIM International S.r.l. v. Agrinoon (Hong Kong) Limited
Case No. D2025-0251

1. The Parties
The Complainant is ICIM International S.r.l., Italy, represented by Orsingher Ortu, Italy.
The Respondent is Agrinoon (Hong Kong) Limited, Hong Kong, China, represented by Archer Softech, India.

2. The Domain Name and Registrar
The disputed domain name <bionike.com> is registered with Paimi Inc. (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2025. On January 23, 2025, the Center transmitted by email to the Registrar requests for registrar verification in connection with the disputed domain name. On February 6, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent (REDACTED FOR PRIVACY, Privacy service provided by Paimi Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 7, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 14, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 17, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2025. The Response was filed with the Center on March 7, 2025.

The Center appointed Matthew Kennedy as the sole panelist in this matter on March 17, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On March 17, 2025, the Complainant made an unsolicited supplemental filing with the Center. On March 24, 2025, the Respondent made an unsolicited supplemental filing with the Center.

4. Factual Background
The Complainant is an Italian pharmaceutical company founded in the 1930s that became part of the Sodalis Group in 2019. The Complainant owns an Italian cosmetic brand called “BioNike” (formed from the Greek “Bio” meaning “life” and “Nike” meaning “victory”). The Complainant holds several trademarks, including the following:

– Italian trademark registration number 186089 for BIONIKE in a fancy script, registered on November 8, 1966, specifying goods in classes 3 and 5, most recently renewed under number 362022000155409 from March 10, 2023; and
– Italian trademark registration number 302016000046939 for BIONIKE SALUTE E BELLESSERE and device, registered on July 6, 2017, specifying goods in classes 3 and 5.

The Complainant also uses the domain name <bionike.it>, registered on October 17, 2000, in connection with a website that prominently displays the BIONIKE SALUTE E BELLESSERE and device mark and provides information about the Complainant and its products. 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 number 59740499 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 registered on January 31, 2019. It formerly resolved to a “coming soon” webpage but was transferred to the nameservers of a hosting provider on August 21, 2023. On September 30, 2024, the Complainant sent a takedown notice to the hosting provider, who determined that the disputed domain name was infringing the intellectual property rights of the Complainant and proceeded to disable parking-related services for it. The hosting provider later confirmed that it parked domain names with basic Pay-Per-Click (“PPC”) style advertisements to monetize unused or undeveloped domain names, such as the disputed domain name. Subsequently, the disputed domain name has been passively held.

5. Parties’ Contentions

A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is identical to its BIONIKE mark and confusingly similar to other marks that it holds containing the term “BioNike”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not use the disputed domain name in connection with an offering of goods or services.

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. A legitimate interest cannot reasonably be based on the Respondent’s Chinese trademark registration for BIONIKE, which was only registered in 2022 in respect of goods in class 1, not cosmetics in classes 3 and 5 that were the subject of the PPC links. The hosting provider confirmed that the Respondent infringed the Complainant’s rights. The Respondent has not been commonly known by the disputed domain name.

There is no evidence that the Respondent is currently making a legitimate non-commercial or fair use of the disputed domain name. The Complainant submits that the evidence in the Response is in no way sufficient to show preparations to use the disputed domain name. There is no trace anywhere online of the Respondent’s BIONIKE chemical. The only proof consists of a single, non-publicly available photograph and an invoice dated June 4, 2024. The disputed domain name has resolved to an “under construction” page for 5 years. Further, the Complainant’s brand is also known in Africa, where a client of the Respondent is located. According to evidence presented by the Complainant, during the period 2019 to 2024 the Respondent registered eight different trademarks in China, four of which correspond to third-party brands, i.e., BIONIKE, FLY TOP, TOP CHEF, and UBALL. There is no evidence on the Internet that the Respondent has ever used these marks. Meanwhile, the corresponding domain names <flytop.com> and <uball.com> are used in the same way as the disputed domain name to resolve to PPC links landing pages hosted by the same provider and formatted in the same way. The registrant information is privacy-protected.

The disputed domain name has been registered and is being used in bad faith. It was registered long after the Complainant obtained its first BIONIKE trademark registration. Given that the BIONIKE trademarks and domain name were widely used in connection with the Complainant’s business long before 2019, it is very likely that the Respondent was aware of both distinctive signs at the time of registration of the disputed domain name. The Complainant holds a well-established and recognized position internationally, as it distributes its products in 46 foreign countries also through e-commerce platforms. It issued two invoices for product to a client in Hong Kong, China in 2012. The Complainant is active in Asia by promoting and selling BIONIKE-branded products by means of various local social media channels and e-commerce platforms as managed by local distributors, including the RedNote social media platform in China. The disputed domain name resolved to a landing page displaying PPC links to sites for products in competition with those of the Complainant, diverting traffic from the Complainant’s website and unlawfully exploiting the Complainant’s reputation and goodwill in its BIONIKE trademarks. 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.

There is no evidence that the change of nameservers was accidental. All responsibility for the content hosted on the webpage lies with the user. Further, the Respondent has tried to mask its identity during the registration procedure. The Respondent has engaged in a practice of registering Chinese trademarks corresponding to domain names with parking pages. The Complainant’s BIONIKE products were offered for sale in China via e-commerce platforms long before 2019 and entered the Chinese market through a local distribution network before the Respondent registered its Chinese trademark for BIONIKE.
The request for a finding of Reverse Domain Name Hijacking is unfounded. The Complainant believes it can succeed and has always given a clear and fair interpretation of all facts available. The Complainant’s good intentions were also shown by its attempt to contact the Respondent in order to avoid unnecessary costs.

B. Respondent

The Respondent contends that the Complainant has not satisfied the elements required under the Policy for a transfer of the disputed domain name and that this dispute falls outside the scope of the Policy.
The Respondent replies to the Complainant’s allegations as follows: 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. If the Complainant started operating in China in 2020, the supporting evidence only shows that it has used the BIONIKE SALUTE E BELLESSERE and device mark that that it appointed its Chinese distributor after the registration of the disputed domain name, which was in any case an internal matter not within the knowledge of the Respondent. The Complainant did not make its first post on RedNote until 2024. The Respondent denies ownership of any domain names corresponding to the trademarks FLYTOP, TOP CHEF, or UBALL. The domain name <topchef.com> did not resolve to PPC links in 2024 but to an Indian restaurant. Even if the other two domain names used the same hosting provider, that does not confirm ownership by the same registrant. The Chinese registered trademarks are combinations of common English words with numerous trademark owners, any of whom could own the corresponding domain names. The Respondent is an investment company with multiple subsidiaries and investments across various industries, so it is unsurprising that the Respondent owns several trademarks. The Respondent does not admit ownership of the domain names corresponding to these trademarks. The disputed domain name has never been put on sale but pointed to a “coming soon” page until August 2023. The nameservers were changed by the hosting company in August 2023 by accident without the knowledge of the Respondent, who does not know exactly what appeared on the landing page from that point, as there is no evidence on record of infringing links.
The Respondent acknowledges that the Complainant holds registered trademark rights in Italy only, which afford standing, but submits that the Complaint fails on the other elements of the Policy.

The Respondent does have rights and a legitimate interest in the disputed domain name. The Respondent was first in time to register the disputed domain name, as it is comprised of common words. The Respondent owns a matching trademark in China. The disputed domain name reflects the Respondent’s corporate objectives related to bio-based agrochemicals. The Respondent 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. The Respondent was subject to a three-year COVID lockdown that significantly affected its business plans. The Respondent’s BIONIKE chemical product is typically supplied to specialized agrochemical companies rather than directly to end consumers. Therefore, the Respondent does not rely on social media or Internet promotions for this product. The UDRP process is not a court or forum to decide civil disputes or any kind of trademark rights between the Parties. The UDRP is designed to deal with cases of pure cybersquatting, not disputes between parties with competing rights acting in good faith. The Complainant did not place in evidence any screenshot of a PPC parking page associated with the disputed domain name. There is no such page in the Internet archive. The Respondent did not infringe the Complainant’s rights. In any case, PPC links are dynamic and reflect an Internet user’s previous searches results.

The disputed domain name was neither registered nor used in bad faith. There is simply no evidence whatsoever to support the Complainant’s limited contention that the disputed domain name was registered in 2019 because of the Complainant. The evidence convincingly demonstrates that BIONIKE is being used in the Respondent’s business of biochemicals. There is no evidence that the Respondent was aware or ought to have been aware of the Complainant’s mark at the time of registration of the disputed domain name. The Respondent registered the disputed domain name as a combination of widely-used terms: “bio” is about biochemistry and sounds like “拜” while “nike” is a transliteration of “你克”. The combination means “I entrust you to control pests” (拜你克). Similar terms are used in the chemical industry. The same domain name is available in different country code Top-Level Domains (“ccTLDs”). The United States military has used “NIKE M Magnesium Chloride” where “NIKE” refers to missile systems. There is no place to find that the Respondent had constructive knowledge of the Complainant’s Italian trademark registrations. The Respondent declares that it did not know of the Complainant or its brand when it registered the disputed domain name in 2019. There is no evidence of any infringing PPC links or bad faith use. Use of a privacy service is not ipso facto evidence of bad faith.
The Respondent asks the Panel to declare that the Complaint constitutes an attempt at Reverse Domain Name Hijacking. Initiation of the proceeding has put the Parties to considerable time and cost. The claim is baseless. The Complainant has taken no action against “bionike” domain names in other TLDs but is attempting to upgrade to the “.com” TLD via a UDRP proceeding. The Complainant concealed the date of its first post on the RedNote social media platform.

6. Discussion and Findings

6.1. Unsolicited Supplemental Filings

The Complainant made an unsolicited supplemental filing on the day on which the Panel was appointed, March 17, 2025. The Respondent made an unsolicited supplemental filing a week later, on March 24, 2025.

Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” while paragraph 10(d) provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.

In the present case, the Complainant seeks to justify admission of its supplemental filing on the basis of (i) exceptional circumstances regarding certain evidence in the Response; (ii) the alleged unfoundedness of certain allegations in the Response; and (iii) the request for a finding of Reverse Domain Name Hijacking. The Respondent objects to admission of the Complainant’s supplemental filing on the grounds that there are no exceptional circumstances that would warrant its acceptance.
The Panel observes that parts of the Complainant’s supplemental filing do merely reiterate arguments or seek to provide further evidence that could have been filed earlier. However, the Panel also notes that it provides comments on evidence in the Response regarding use of the Respondent’s BIONIKE mark, that could not have been anticipated at the time when the Complaint was filed. In these exceptional circumstances, the Panel will accept the supplemental filing so that the Complainant has a fair opportunity to present its case. Given that the Respondent has taken the opportunity to reply to the supplemental filing, this will not cause unfairness to either Party.
Therefore, the Panel exercises its discretion to admit both Parties’ supplemental filings and will take them into account according to their relevance, materiality, and weight.

6.2. Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must demonstrate each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proof of each element is borne by the Complainant. Failure to prove any one element will result in denial of the Complaint.

A. Identical or Confusingly Similar

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a BIONIKE trademark for the purposes of the Policy. As the figurative elements of the mark cannot be reflected in a domain name for technical reasons, the Panel will not take them into account in the comparison with the disputed domain name. See WIPO Overview 3.0, sections 1.2.1 and 1.10.

The mark is reproduced within the disputed domain name. The only additional element is a generic TLD extension (“.com”) which, as a standard requirement of domain name registration, may be disregarded in the assessment of confusing similarity for the purposes of the Policy. See WIPO Overview 3.0, sections 1.7 and 1.11.1.

Therefore, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests, Bad Faith, and the Scope of the Policy

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 holds a trademark registration for BIONIKE, which is identical to the disputed domain name. The Panel considers that a respondent’s trademark rights would ordinarily support a finding that it has rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.12.1. At the same time, trademark rights do not automatically confer rights or legitimate interests on a respondent for the purposes of the Policy where, for example, the overall circumstances demonstrate that the trademark was obtained primarily to circumvent the application of the Policy or otherwise to prevent the Complainant’s exercise of its rights, even if only in China. See WIPO Overview 3.0, section 2.12.2.

In the present case, the Respondent’s trademark registration is valid in the jurisdiction where the Respondent is based (i.e., China) and the registration specifies products related to the Respondent’s business in general (i.e., agricultural chemicals in class 1). The Respondent did not apply for the trademark until two years after it registered the disputed domain name and it provides no evidence that it has used the BIONIKE mark with respect to the goods specified in the registration even now, three years after it obtained the trademark registration. The evidence of use of the mark refers to a fungicide, which is excluded from the goods specification in the Respondent’s trademark registration. That evidence consists of a photograph and a computer printout of a bill of lading. The photograph shows part of a bottle label marked with a generic chemical description in large font and, on the side, a small BIONIKE logo above the mark of an Egyptian chemical company. The bill of lading is dated June 4, 2024, and refers to BIONIKE Difen-Azoxy, which may correspond to the chemical description on the label. The shipment of 900 cartons was sent by the Respondent to a logistics company in Djibouti. 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 Complainant presents evidence intended to show that the Respondent’s BIONIKE trademark forms part of a pattern of trademark registrations to circumvent the application of the Policy. It found three others identical to third party trademarks and no evidence of their use by the Respondent. Two of them correspond to domain names (<flytop.com> and <uball.com>) that resolve to PPC links landing pages hosted by the same provider as was the disputed domain name in 2023-24. However, there is no evidence that these other domain names are registered by the Respondent nor that the PPC links capitalize on the third-party trademarks.

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”. The UDRP is not an appropriate procedure to adjudicate a trademark dispute such as this one with complex evidentiary issues, where the Panel does not have the benefit of witness testimony, disclosure of documents, or the other appropriate instruments that are typically available to assist a court to resolve a dispute between the Parties.

Therefore, the Panel has decided to deny the Complaint, not on the merits, but on the broader ground that the case regarding the disputed domain name is part of a wider, more complex trademark dispute between the Parties that exceeds the scope of the UDRP. The wider dispute can be addressed by a court of competent jurisdiction. See WIPO Overview 3.0, section 4.14.6.

C. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16.

The Respondent requests that the Panel declare that the Complaint was brought in an attempt at Reverse Domain Name Hijacking. The Complainant submits that the request is unfounded.
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 provided an explanation as to 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.

7. Decision

For the foregoing reasons, the Complaint is denied.

(Matthew Kennedy)

Sole Panelist
Date: March 27, 2025

PANELLISTS

A few questions answered everything about this case… 

Is the Domain Name <OneTab.com> composed of descriptive terms? 

YES 

Is ‘OneTab’ phrase in the Domain Name in common/descriptive use by numerous third parties? 

YES 

Can ‘OneTab’ be safely used outside the Complainant’s Industry of Browser Extension?

YES

Does the Domain Name have a prior registration date than the Complainant’s Trademark?

YES 

Did the Respondent ever approach the Complainant for the sale of the Domain Name? 

NO 

Did the Respondent make any use of the Domain Name that may infringe the Complainant’s rights?

NO 

Was the Complainant interested in purchasing the disputed Domain Name before initiating these proceedings? 

YES 

Did the Complainant approach anonymously through a broker? 

YES 

The Buy It Now (BIN) price was revised to $50k on April 30, 2024 itself, is this evident?

YES 

Did the Complainant produce communication that it had with the broker between April 30, 2024, and May 7, 2024? 

NO

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OneTab Ltd v. Ankit Oberoi, WIPO Case No. D2024-2412

1. The Parties

The Complainant is OneTab Ltd, United Kingdom, represented by Adam Taylor of Adlex Solicitors, United Kingdom.

The Respondent is Ankit Oberoi, United States of America (“United States”), represented by Ankur Raheja of Cylaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <onetab.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2024.

On June 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 18, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the complaint and the proceedings commenced on June 19, 2024. In accordance with the Rules, paragraph 5, the initial due date for Response was July 9, 2024. Upon the Respondent’s request, the Response due date was extended to July 13, 2024, as per paragraph 5(b) of the Rules. The Response was filed with the Center on July 13, 2024. On August 2, 2024, the Complainant filed a Supplemental Filing. The Respondent filed a Supplemental Filing on August 9, 2024.

The Center appointed Jeremy Speres, Reyes Campello Estebaranz, and Gerald M. Levine as panelists in this matter on August 1, 2024. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant has, since approximately 2013, offered a web browser extension under the mark ONETAB that functions as a productivity tool designed to reduce web browser tab clutter by allowing the user to store and organize their browser tabs as lists. The Complainant’s extension is available in the web stores of all major web browsers. As of May 13, 2024, the extension had nearly 3.5 million active weekly users.

The Complainant has operated its main website at “www.one-tab.com” since approximately 2013. The Complainant owns United Kingdom Trademark Registration No. 4014513 ONETAB (word) in classes 9 and 42, with a registration date of May 10, 2024; and European Union Trademark Registration No. 018986553 ONETAB (word) in classes 9 and 42, with a registration date of June 20, 2024.

The Respondent is a technology investor and entrepreneur, having co-founded a digital advertising business,  Zelto/AdPushup, in 2013, which was acquired by Japanese marketing technology firm Geniee for USD 70 million in 2023. Part of the Respondent’s trade has involved buying and selling domain names consisting of common or descriptive words, a number of which he has listed for sale.

The Respondent acquired the disputed domain name on March 4, 2023, for USD 4,300 through an auction run by the Registrar. After acquiring the disputed domain name, the Respondent offered it for sale via a Registrar parking page to which the disputed domain name resolved. The Respondent initially listed the disputed domain name for sale at a “buy now” price of USD 25,000, which he increased to USD 50,000 once the Complainant expressed an interest in acquiring the disputed domain name via a broker.

The disputed domain name presently resolves to a Registrar parking page indicating that the disputed domain name is already registered but may still be available.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name was registered and used in bad faith for the purpose of selling it to the Complainant or its competitor. The Respondent must have been aware of the Complainant when he acquired the disputed domain name, so the Complainant contends, considering the immense repute of the Complainant’s mark, the Respondent’s involvement in the online technology sector, the fact that the Respondent’s co-founder used the Complainant’s app in 2014, and the fact that the Complainant’s extension is predominantly showed in any search conducted over the Internet for the terms “onetab” or “one tab”.

B. Respondent 

The Respondent contends that the Complainant has not satisfied the second and third elements required under the Policy for a transfer of the disputed domain name. Notably, the Respondent contends that he registered the disputed domain name in good faith, without knowledge or targeting of the Complainant, with its meaning in the pharmaceutical industry as a contraction of “one tablet” in mind, either for development of a pharmaceutical business or for resale. The Respondent further contends that the term “onetab” comprises two commonplace words and is not exclusively used by the Complainant, pointing to competing browser extensions using the term, its use in the medical industry as a contraction of “one tablet”, its use by guitar tablature websites, and various third-party trademark registrations consisting of “onetab” in the United States and the United Kingdom.

The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) as it claims that the Complaint was brought in bad faith as an alternative strategy to acquire the disputed domain name after a failed attempt at negotiating its sale with the Respondent.

6. Discussion and Findings

A. Preliminary Issue – Supplemental Filings

The Complainant and the Respondent each filed unsolicited supplemental filings.

Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of unsolicited supplemental filings. Admissibility of supplemental filings is to be assessed based on relevance, foreseeability, the need to conduct the proceedings with due expedition, and the equal treatment of the parties so that each has a fair opportunity to present its case. Paragraph 10(b) of the Rules; Societé aux Loteries en Europe, SLE v. Take That Ltd., WIPO Case No. D2007-0214; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.6.

The Response included evidence that was peculiarly within the knowledge of the Respondent that could not reasonably have been anticipated by the Complainant, e.g., the Respondent’s counteroffer of USD 20,000 for the disputed domain name which does not appear to have been communicated to the Complainant by the broker. The Response also contained an allegation of RDNH, and the Panel agrees with the statement made by the Panel in Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd., WIPO Case No. D2001-0941 to the effect that a complainant facing an allegation of RDNH is “entitled to defend itself”. To that extent, the Panel admits the Complainant’s Supplemental Filing.

The Complainant’s Supplemental Filing included evidence not included in the Complaint that the Respondent should be given an opportunity to respond to, e.g., the five new annexures introduced in the Complainant’s Supplemental Filing. To that extent, the Panel admits the Respondent’s Supplemental Filing.

B. Identical or Confusingly Similar

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. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel also finds that the Complainant has established unregistered trademark rights for the purposes of the Policy. WIPO Overview 3.0, section 1.3.

The Complainant’s ONETAB mark is plainly identical to the disputed domain name for the purposes of the  Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

C. Rights or Legitimate Interests

Given the Panel’s findings in relation to bad faith, it is not necessary to consider the second element of the Policy.

D. Registered and Used in Bad Faith

The evidence in this case is exceptionally finely balanced.

The primary evidence in favor of the Complainant indicating targeting is as follows:

– The Complainant began trading under its ONETAB mark roughly ten years prior to the Respondent’s acquisition of the identical disputed domain name, and the Complainant clearly enjoys unregistered rights in its mark that long predate the Respondent’s acquisition. The Complainant’s mark would appear to be well known, at least within its niche of browser extensions, and probably more broadly within the web software industry. For example, the majority of Internet search results for “onetab” and “one tab”, at least across the first three pages of results, relate to the Complainant.

– The Respondent is a technology investor and entrepreneur. In particular, the Respondent founded a successful digital advertising firm. Digital advertising is delivered through browsers and the Respondent would thus have had much exposure to the browser ecosystem. It is therefore quite conceivable that the Respondent encountered the Complainant’s extension prior to acquisition of the disputed domain name.

– The Complainant’s evidence establishes that the Respondent’s co-founder used the Complainant’s extension in 2014. Although this isn’t direct evidence of the Respondent’s knowledge of the Complainant’s extension, it does at the very least show that those working within the Respondent’s industry and his home country of India (the Respondent describes himself as “an Indian citizen who has primarily been operating from India” despite his address contained within the WhoIs record) have used it, and it is quite plausible that co-founders could have shared the extension with one another.

– The Respondent registered <cleargum.com> and offered it for sale. The mark CLEARGUM seems to be well known and exclusively associated with a single medicinal chemical producer, at least insofar as Internet search results for the mark are concerned. A search of the WIPO Global Brand Database for “cleargum” indicates that all CLEARGUM trademarks are owned by the same entity. There is thus a real possibility that the Respondent at least knew of that trademark before registering that domain name, and it is quite conceivable that the Respondent may have targeted the trademark owner in that instance.

Given the apparent repute of the CLEARGUM mark and the fact that it is apparently exclusively associated with one party, this would, prima facie, seem to be an instance where it would not be unreasonable to conclude that the Respondent at least should have known of the trademark. WIPO Overview 3.0, section 3.2.2.

– The Respondent doubled his listed asking price for the disputed domain name when he was informed by the broker about an enquiry from a potential buyer. Although the Respondent was not informed of the identity of the interested party by the broker, a simple Internet search would have given the Respondent a good idea of who the interested party was, given that the Complainant is the most prominent user of the term “onetab” at least insofar as Internet search results are concerned. It seems quite conceivable that this is what caused the Respondent to double his asking price. In any event, regardless of whether the Respondent had established the potential buyer’s identity before doubling his asking price or not, the Respondent’s actions in this regard seem somewhat unprincipled. Listing a domain name for sale for one price, and then drastically increasing that price as soon as there is an enquiry about it seems like a questionable practice, albeit not an illegal one. This is evidenced in the broker’s surprise once he learned of the price increase, and his subsequent asking of the Respondent how he could explain this to the potential buyer.

The primary evidence in favor of the Respondent indicating good faith is as follows:

– There is no direct evidence of targeting. The Respondent has not done anything overtly targeting the Complainant, and all the evidence indicating targeting is circumstantial.

– The term “onetab” (or “one tab”) is potentially descriptive of a variety of things, and this is borne out by the fact that it is not exclusively associated with the Complainant in use. There is another browser extension using the term as a “brand” name and two others which use it as part of their name. It is used in the medical industry descriptively as a contraction of “one tablet” and as the brand name of a cold and influenza medication. The similar domain name <1tab.com> was previously used by an online pharmacy in the Respondent’s home country of India. A children’s literacy charity uses it as the brand name of its educational tablet computers. Other domain names consisting of “onetab” have been used for music tablature. The Panel’s independent search of the website archive Wayback Machine revealed the disputed  domain name itself previously resolved to a music download website in 2003, per the following link: “web.archive.org/web/20030602170715/onetab.com”.

– The Panel’s independent search of the TMview database for “onetab” revealed eight different
registered trademarks consisting of ONETAB (some with stylization and/or a device) owned by seven different owners in various classes and jurisdictions.

– Apart from <cleargum.com>, the acquisition of the disputed domain name seems consistent with the Respondent’s apparent practice of registering descriptive domain names for resale, not for their trademark value but rather their semantic value.

– The Respondent has a certain history of registering inherently descriptive medical domain names. He owns <hindustanhealth.com>, <neuralcare.com>, and <medagent.com>. The latter was acquired by the Respondent three days before he acquired the disputed domain name, and is similarly composed to the disputed domain name, consisting of a contraction of a medical term plus the uncontracted form of another descriptive word. However, the evidence does not permit the Panel to reach any conclusion about the Respondent’s purpose for acquiring <onetab.com>.

– Paradoxically, the fact that the Respondent doubled his asking price for the disputed domain name upon learning of an enquiry from an interested buyer, unprincipled as it may have been, may point away from the Respondent having targeted the Complainant at the time of initial acquisition of the disputed domain name. As discussed above, it is quite conceivable if not likely that the Respondent doubled his asking price after conducting research into the identity of the potential buyer. After he had established that the potential buyer could well be the Complainant (given that it is the most prominent user of the mark) it is very plausible that he doubled his asking price upon learning that the Complainant was successful and of means. If that is the case, it points away from him having targeted the Complainant earlier, at the time of acquisition of the disputed domain name, bearing in mind the conjunctive nature of the bad faith element. If he had targeted the Complainant from that early point, his asking price would probably have been the higher one to begin with and there would not have been any need to increase it later.

On the record before it, the cumulative weightings of the factors for either Party are so close that the Panel cannot say with confidence that either outweighs the other. The Panel’s view is that it would require the evidentiary tools available to a court having greater probative capacity such as discovery, cross-examination, subpoenas, criminal sanctions for perjury etc., to decide which of the Parties’ positions is the more likely.

Given that the burden of proof is on the Complainant, the Panel finds the third element of the Policy has not been sufficiently established. However, this should not be understood as an approval of the Respondent’s actions, but rather a consequence of the Panel’s view, on the record before it, that this case is better suited to court adjudication.

The Panel further considers that should new material evidence come to light in future that is reasonably unavailable to the Complainant at the time of the present proceeding clearly demonstrating that the disputed domain name is targeting or has targeted the Complainant, it may be possible for the Complainant to refile the Complaint, subject to the usual considerations on refiling. WIPO Overview 3.0, section 4.18.

E. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at RDNH or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16.

The Panel declines to find RDNH for the following reasons: The merits are extremely close, and the Complainant’s case was an arguable one about which reasonable minds could differ. The Complainant’s first usage of and unregistered rights in its mark long predate the Respondent’s acquisition of the disputed domain name, which is identical to the Complainant’s mark. The Respondent’s co-founder used the Complainant’s extension in the past and the Respondent may well have had prior knowledge of the extension. The Respondent’s registration of <cleargum.com> is questionable, as discussed above.

All of this suggests that the Complainant genuinely believed this to be a case of cybersquatting, and that belief does not seem to have been unreasonably held in light of these facts.

7. Decision
For the foregoing reasons, the Complaint is denied.

Jeremy Speres
Presiding Panelist

Reyes Campello Estebaranz
Panelist

Gerald M. Levine
Panelist

Date: August 14, 2024

ADMINISTRATIVE PANEL DECISION
Katepal Oy v. taeho kim, Dzone Inc
Case No. D2023-5188

1. The Parties
The Complainant is Katepal Oy, Finland, internally represented.
The Respondent is taeho kim, Dzone Inc, Republic of Korea, represented by Archer Softech, India.

2. The Domain Name and Registrar
The disputed domain name <katepal.com> is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2023. On December 13, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On December 13, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Sav.com, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 13, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 14, 2023.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on December 14, 2023. In accordance with the Rules,
paragraph 5, the due date for Response was January 7, 2024.

The Respondent and its representative both sent email communications to the Center on December 26,
2023. On January 4, 2024, the Respondent’s representative filed a response.

The Center appointed Steven A. Maier as the sole panelist in this matter on January 17, 2024. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rules, paragraph 7.

4. Further Procedural Steps
As observed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”):

“Paragraph 10 of the UDRP Rules vests the panel with the authority to determine the admissibility,
relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition.

Paragraph 12 of the UDRP Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case.”

Based on its preliminary review of the Parties submissions and with the above criteria in mind, on
January 29, 2024, the Panel issued Procedural Order No. 1, requesting the Complainant to provide further submissions and evidence relating to the reputation of its trademark at the relevant time, and affording the Respondent an opportunity to reply. The Complainant filed its submission accordingly on February 2, 2024, and the Respondent on February 8, 2024.

5. Factual Background
The Complainant is a company registered in Finland. It is a provider of roofing and other building materials.

The Complainant is or has been the owner of trademark registrations including the following:

– Finland trademark registration number 39508 for a combined mark comprising the text KATEPAL and a device, registered on November 14, 1962, in International Classes 17 and 19. The trademark expired on
November 14, 2002;

– International trademark registration number 788849 for the word mark KATEPAL, registered on
September 4, 2002 in International Classes 17 and 19. The trademark designates a total of 25 countries,
including the Democratic People’s Republic of Korea; and

– Finland trademark registration number 226792 for the word mark KATEPAL, registered on March 31, 2003 with an application date of May 22, 2002, in International Classes 17 and 19.

The Complainant also refers to Republic of Korea trademark registration number 4003840000000 for the mark KATEPAL, including a device, registered on November 27, 1997, in international Class 33. The
trademark was registered by Young Lee Co. Ltd, which the Complainant identifies as its importer in that
country. The trademark expired on November 27, 2017.

The disputed domain name was created on December 14, 2000.

The Complainant submits evidence obtained from “www.archive.org” that, as of November 23, 2002, the
disputed domain name resolved to a website at “www.000sex.com”. Based on the Panel’s independent
review of “www.archive.org”, the disputed domain name appears to have resolved to web pages including
sponsored links, or to have been inactive, at various times between 2006 and 2012, and from November 3, 2012 onwards to have resolved to web pages indicating that the disputed domain name is for sale.

6. Parties’ Contentions

A. The Complaint
The Complainant submits that the disputed domain name is confusingly similar to its KATEPAL trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that the Respondent has never been known by the disputed domain name, and that the disputed domain name has never hosted any “decent” content. The Complainant refers to the website at “www.000sex.com” and to the advertising links to which the disputed domain name has redirected.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith.

The Complainant repeats that there has never been any “decent” content on the disputed domain name, and contends that the Respondent registered the disputed domain name only for the purpose of selling it to the relevant trademark owner. The Complainant asserts that the Respondent has demanded USD 29,000 for the disputed domain name, and states that the Complainant wishes to use the disputed domain name to publish its global websites.

The Complainant requests the transfer of the disputed domain name.

B. The Response

The Respondent acknowledges that the Complaint satisfies the technical requirement under the first element of the Policy, based on the Complainant’s registered trademarks dated 2002 and 2003. The Respondent notes, however, that the first element is only a “standing” requirement, and submits that the Complainant has demonstrated no pre-existing trademark rights as at the date of registration of the disputed domain name, namely in 2000.

The Respondent submits that it has rights or legitimate interests in respect of the disputed domain name. Its case is as follows:

(1) That in 2000, it operated a domain registration and website development company in the Republic of
Korea.
(2) That it registered the disputed domain name on behalf of “an English Teacher cum a friend” who was
associated with the Korea Association of Teachers of English (“KATE”). The disputed domain name
was intended for the purpose of a networking site for members of that association, hence the addition
of the term “pal”, meaning “friend”.
(3) That the Respondent arranged for a prototype of the proposed website to be developed offline.
(4) That the Respondent’s friend was ultimately unable to obtain the expected cooperation of the KATE
association with the venture in question, and did not therefore proceed with the proposed website. In
these circumstances, the disputed domain name was left with the Respondent to enable it to recover
its costs incurred.

The Panel notes at this point that the Respondent neither identifies the “friend” to which it refers, nor exhibits any evidence in connection with the stated purpose for which the disputed domain name was registered, or the offline prototype website referred to. The Respondent states that evidence of this nature is “kind of impossible to retrieve” after a period of 23 years.

The Respondent states that it did not know that the disputed domain name redirected to “www.000sex.com” and does not recall whether or how any affiliate links were subsequently provided. It states that no affiliate content was provided after 2005 in any event.

The Respondent accepts that it invited enquiries for the sale of the disputed domain name from 2004
onwards, and that the disputed domain name was offered for sale on Afternic from 2021 for a “buy now”
price of USD 29,000. However, the Respondent submits that it never heard from the Complainant in this regard. It provides evidence of an anonymous offer received in January 2023, and refers to “many [of] such offers”, which it believes were made by people having the name “Kate Pal” or similar names. It exhibits a Facebook page which appears to show numerous individuals with that name.
The Respondent submits that speculation in the disputed domain name is lawful in circumstances where the disputed domain name was not registered in bad faith. It contends that the sale of the disputed domain name gives rise of itself to rights or legitimate interests, since it forms part of the Respondent’s stock-in-trade.

The Respondent provides evidence of other domain names which it has registered and claims to be similar in nature to the disputed domain name. These include, for example, <teacher4you.com> registered in 2003, <kimsenglish.com> registered in 2006 and <homes4teachers.com> registered in 2020.

The Respondent submits that the disputed domain name was registered in good faith without any knowledge of the Complainant. It states that it has never solicited a sale to the Complainant and there is no evidence that the primary purpose of its registration of the disputed domain name in 2000 was to sell it to the Complainant in 2023. It submits that there was nothing wrong in it responding to an anonymous enquiry for the disputed domain name and that there are numerous individuals who could make legitimate use of the disputed domain name without infringing any rights of the Complainant. The Respondent cites examples of individuals named “Kate Pal”, “Kate Palmer” or “Kate Paley” who might want to use the disputed domain name for the purpose of a personal website.

The Respondent submits that the Complainant should be barred from succeeding in the proceeding by the doctrine of laches. It contends that a period of 23 years before bringing any Complaint is a substantial and unreasonable delay, and that the Respondent is not now able to locate every item of evidence in support of its case.

The Respondent further submits that this case relates to competing rights in the disputed domain name, and is not a case of “cybersquatting” which is suitable for determination under the UDRP.

C. The Complainant’s Reply to the Procedural Order
The Complainant submits that it began operations in Finland in 1949 and has exported products since the 1960s. It states that it exported roofing shingles to “Korea”, reaching approximately 900 shipping containers per annum between 1998 and 2004.

The Complainant refers to its Finland figurative trademark dated 1962, and the Republic of Korea trademark registered by its Republic of Korea importer in 1997. It points out that both these trademarks were in  existence on the date the Respondent registered the disputed domain name, and submits that the  Complainant therefore had valid trademarks, both in its own and in the Respondent’s location countries, on that date.

D. The Respondent’s Reply to the Procedural Order
The Respondent takes issue with Procedural Order No. 1, and objects in particular to the Complainant being given a second opportunity to state its case. It points out that the disputed domain name was registered in 2000 and submits that the Complainant should have pursued any case more promptly. The Respondent submits that the UDRP is a summary procedure and that the Complainant should not be given the opportunity of adding a further layer to the proceedings at this stage.

The Respondent also disputes the content of the Complainant’s further submissions, stating that they are
unsubstantiated and conclusory. It cites numerous previous decisions under the UDRP in which panels
have denied complaints which were based on conclusory submissions unsupported by evidence. The
Respondent contends, in particular, that the Complainant has produced no evidence to establish that the
Republic of Korea trademark registrant, Young Lee Co. Ltd., was in any way connected with the
Complainant. The Respondent denies that this was the case, and avers that the Complainant was not itself the owner of this trademark.

The Respondent further contends that the Complainant has sought to mislead the Panel by failing to make a distinction between the Democratic People’s Republic of Korea and the Republic of Korea. It points out that the Complainant’s International trademark registration dated 2002 relates to the Democratic People’s Republic of Korea and not the Republic of Korea, and speculates that the Complainant’s container deliveries in that period were in fact to the Democratic People’s Republic of Korea.

The Respondent submits that the Complainant has provided no evidence to establish that the Respondent could have known of the Complainant or its trademark rights. It contends that, were the Panel to find in the Complainant’s favour in these circumstances, this would effectively establish a per se rule of bad faith, where a domain name similar to any registered trademark would be found to have been registered in bad faith on the basis of “constructive notice”.

The Respondent contends that the Complainant in this case constitutes a “Plan B” attempt to acquire the
disputed domain name, the Complainant having remained silent for 23 years and then having attempted
unsuccessfully to purchase the disputed domain name. The Respondent submits that the Complainant is
therefore guilty of attempted “reverse domain name hijacking.”

7. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of current trademark registrations for the word mark KATEPAL. The disputed domain name is identical to that trademark, and the Panel therefore finds that the disputed domain name is identical to a trademark in which the Complainant has rights. While the Complainant’s current trademarks were registered after the date of disputed domain name, that is immaterial to the analysis under the first element of the Policy, which (as the Respondent correctly observes) is understood as a “standing” requirement.

B. Rights or Legitimate Interests, and C. Registered and Used in Bad Faith

In this case, the Panel considers it appropriate to discuss the second and third elements under the Policy
together, since similar factors inform the Panel’s conclusions under each such element.
Having considered the parties’ respective submissions, it appears to the Panel that broadly two possible
scenarios exist.

Under the first such scenario, the Respondent registered the disputed domain name, as it claims, without knowledge of the Complainant, and for the purpose of an intended networking site related to the Korean Association of Teachers of English. When that project did not proceed, the Respondent continued to hold the disputed domain name in its capacity as a “domainer”, offering affiliate links for a period of time and subsequently offering the disputed domain name for sale. When it received an anonymous enquiry for the disputed domain name in 2023 (which it did not know to be from the Complainant) it quoted a price of USD 29,000, believing that the applicant was likely to be an individual with the name “Kate Pal” or a similar name who might wish to use the disputed domain name for the purpose of a personal website.

Under the second scenario, the Respondent registered the disputed domain name having become aware of the name of the Complainant’s business name and/or trademark, and hoping that the Complainant would seek to purchase the disputed domain name from it at some time in the future.
While the Respondent does not produce evidence in support of its version of events, the Panel accepts that it may be difficult for it now to do so, given the period of 23 years that has passed between its registration of the disputed domain name and the filing of the Complainant. While Panels under the UDRP do not generally recognize a doctrine of laches or acquiescence as such, it is generally accepted that where a complainant delays significantly in bringing a complaint, then it may be more difficult for that complainant to establish the second and third elements under the policy (see e.g., section 4.17 of WIPO Overview 3.0”).

The Panel also has regard to the paucity of the Complainant’s evidence (despite the opportunity presented by Procedural Order No. 1) of its commercial activities in the Republic of Korea prior to the date of registration of the disputed domain name. The Panel agrees that the Complainant’s reference to 900 container deliveries to “Korea” is ambiguous, in view particularly of the fact that the Complainant had an International trademark registration covering the Democratic People’s Republic of Korea, but no registration of its own for the Republic of Korea, at the material time. Nor has the Complainant produced evidence to support its statement that the Republic of Korea trademark registrant was its affiliated party.

The Respondent is correct in any event to observe that the mere existence of a trademark in a particular
region is generally insufficient to establish bad faith on the part of a corresponding domain name registrant per se. In particular, the concept of “constructive notice” of trademark is not generally applied by panels under the UDRP. However, since panels are required to determine the respondent’s state of mind upon the registration of a disputed domain name, this commonly requires the application of inference based on the information available to the panel.

The disputed domain name is identical to the Complainant’s trademark, and there are circumstances in this case which raise serious concerns with the Panel as to the veracity of the Respondent’s version of events.

In particular, while the Respondent has provided an explanation for its registration of the disputed domain name, and the Panel has established (by way of limited private research) that the Korean Association of Teachers of English did exist at the material time, the Panel nevertheless finds the Respondent’s explanation to be somewhat improbable.

The Panel also finds the initial use of the disputed domain name, to resolve to what appears on its face to be an adult entertainment website, to raise suspicions. The Respondent does not appear to be in the adult entertainment business, and it would be reasonable to infer in the circumstances that the use of the website for this purpose was intended to cause embarrassment to the Complainant and to increase the likelihood of it seeking to purchase the disputed domain name.

The Panel also notes that the Respondent Taeho Kim appears to have been the respondent in at least
seven previous proceedings under the UDRP, in six of which the relevant registration was found to have
been made in bad faith. The Panel finds the most significant of these case to be The Commissioners for HM Revenue and Customs v. Privacy Protection / taeho kim, Dzone Inc, WIPO Case No. D2022-1662, which involved the domain name <govhmrc.com>. The Panel is unable to conceive of any use that could be made of that domain name other than to impersonate the official UK tax authority. The Respondent Dzone Inc. (excluding the name Taeho Kim) has also been the respondent in a significant number of other proceedings in which bad faith has been found. The Panel does note, however, that the Respondent is the owner of  other seemingly legitimate domain names, including those relating to education, albeit registered after the date of the disputed domain name.

While every case under the UDRP must turn on its own individual merits, the fact that a respondent has
engaged in a pattern of registering domain names corresponding to marks held by third parties may be a
relevant factor in the Panel’s overall assessment.

All of these observations having been made, the Complainant nevertheless faces an uphill task in
establishing the second and third elements under the Policy after a period of over 20 years since the
registration of the disputed domain name. In this regard, the Complainant has done itself no favours by
failing, despite two opportunities, to exhibit evidence of its business in the Republic of Korea at the material time, or otherwise to demonstrate why the Respondent was more likely than not to have been aware of its trademark at the time it registered the disputed domain name.

Furthermore, while the Panel finds the Respondent’s explanation for its registration of the disputed domain name to be somewhat improbable, it cannot be definitively excluded. While the Respondent, too, has failed to exhibit relevant evidence in this regard, it is the Respondent who must receive the benefit of the doubt in circumstances where the Complainant has not been able to produce requisite historical evidence (in part no doubt due to the lapse of time).

In the circumstances, the Panel finds that the Complainant has failed to establish that the Respondent knew or ought to have known of its trademark at the time it registered the disputed domain name, or that it did so with a view to targeting the Complainant’s trademark. Bearing the Respondent’s explanation in mind, the Complainant is therefore unable to establish, at this distance in time, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel also notes that, if the Respondent had rights or legitimate interests in respect of the disputed domain name at the date of its registration, then the subsequent use of the disputed domain name by the same registrant is immaterial under the UDRP.

The Respondent’s asking price of USD 29,000 could not therefore be a determinative factor, whether or not the Respondent knew or suspected that the Complainant was the applicant.

C. Reverse Domain name Hijacking
Under paragraph 15(e) of the Rules: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The Panel makes no finding of Reverse Domain Name Hijacking (“RDNH”) in this case. The Complainant has been unsuccessful in the proceeding primarily because of its failure to produce evidence relevant to the reputation of its trademark. The Panel does not find the circumstances to indicate bad faith on the part of the Complainant in this case.

8. Decision
For the foregoing reasons, the Complaint is denied.

/Steven A. Maier/
Steven A. Maier
Sole Panelist
Date: February 26, 2024

Amit Kolambikar (Space Falcon LLC) v. John ladrok
Complainant representative: A Raheja (UDRPKing.com)
Respondent: No Response
Domain Name: SpaceFalcon.com

OTHER LEGAL PROCEEDINGS
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

IDENTIFICATION OF RIGHTS
The Complainant is the owner of:

Indian trademark SPACE FALCON (word) application no 5957459, filed on May 29, 2023;
This application is pending.
The Complainant relies on common law/unregistered trademark rights.

FACTUAL BACKGROUND
The Complainant is Space Falcon LLC. Space Falcon is an online game in the “Intergalactic Metaverse” that allows players to explore space while battling enemies with premium Sci-Fi NFTs from Cosmos and more. NFTs for in-game items mean players literally own and control what they buy, earn, or craft. Additionally, the Space Falcon game has a cryptocurrency token ($FCON) for buying in-game items. The Complainant’s mission is to create an ecosystem that transforms the gaming industry by leveraging the power of blockchain technology.

The Complainant has an active online presence, including owning the domain name spacefalcon.io which has been used and registered since October 14, 2021.

The Complainant is also active on social media and has generated a significant level of endorsement.

The disputed domain name was initially registered on August 21, 2011. The Respondent acquired it on January 23, 2022.

PARTIES’ CONTENTIONS:

COMPLAINANT:
The Complainant contends that the disputed domain name is identical to its SPACE FALCON unregistered trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith, including by impersonating the Complainant’s previous COO (Chief Operations Officer).

In particular, the Complainant submits and documents that although the disputed domain name was initially registered on August 21, 2011, the Respondent acquired the same from HugeDomains.com only on January 23, 2022, and therefore this should be the date to be considered for the purposes of this proceeding, relying on WIPO Overview 3.0, section 3.9 which states that: “…the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith. This holds true for single domain name acquisitions as well as for portfolio acquisitions”.

In support of its argument, the Complainant relies inter alia on an email from HugeDomains confirming the sale from HugeDomains.com to the Respondent and indicating that the “Last Updated date” (i.e. January 23, 2022) in the Public WHOIS is the date on which the new registrant acquired the disputed domain name.

The Complainant further submits that the Respondent, after purchasing the disputed domain name from HugeDomains.com, embarked on a social engineering scam. The Complainant brought the matter to the attention of the Domain Registrar NameCheap.com, and this led to the suspension of the disputed domain name.

Lastly, the Complainant submits that, before said date, it had already acquired common law rights in the distinctive SPACE FALCON trademark through open, continuous and extensive use thereof since its launch on October 14, 2021.

In support of the above, the Complainant submits that:

1) The Complainant has acquired common law rights/secondary meaning in the distinctive SPACE FALCON trademark through open, continuous and extensive use thereof since its launch on October 14, 2021.

2) The use of the SPACE FALCON trademark is evident from the many tweets it has published starting October 14, 2021 and up until November 2021, in which the Complainant announced partnerships with AVStarCapital (November 18, 2021), PandaCapital (November 16, 2021) and FishDAO (November 13, 2021). The Complainant also tweeted upon gaining its first 10k followers on November 09, 2021.

In the Complaint, the Complainant also attached specific tweets for January 2022 and more tweets to the present day. This includes partnerships with Okex Ventures (January 13, 2022), Solace (January 20, 2022) and Neon Labs (November 24, 2022). More particularly, announcements in the third week of January 2022 included the listing of the $FCOIN cryptocurrency/token; the announcement that $4 million of investment had been raised; the welcoming of new advisors, new partnerships, and so on. A further annex to the Complaint contains the trading volume of the Space Falcon $FCON cryptocurrency.

The Complainant also claims that the common law rights it had acquired before January 23, 2022 are shown by the popularity achieved, as evidenced by the number of users (3,600), minutes played (40,391), followers of its Twitter handle (167k followers), and followers on other social networks and media (e.g. Telegram, Instagram, Discord, YouTube, LinkedIn etc.) as of January 21, 2022.

3) The Complainant raised $4 million of investment on January 18, 2022. This was announced on the Complainant’s blog at spacefalcon.io, on medium.com, and was published online on various news portals.

4) The Complainant announced the launch of the $FCON cryptocurrency in January 22, 2022.

5) The Complainant submits that the investment raised in itself shows the success of the Complainant’s Metaverse SPACE FALCON game and the huge popularity it gained in such a short span of time. The project is backed by numerous partnerships (12) and many more investments (14) as indicated on the homepage of the official website <spacefalcon.io>.

6) The Complainant registered the domain name spacefalcon.io on October 14, 2021 and has used it since then.

7) Targeting of the Trademark

The registrant acquired the disputed domain name on January 23, 2022, with the specific purpose of targeting the Complainant and its trademark, as evidenced by the attempted scam detailed in the documents attached to the complaint.

8) The Complainant asserts and documents the Respondent’s attempt to impersonate the COO (at the time of the scam) of the Complainant for the purposes of fraud.

Hence the Complainant, quoting WIPO Overview, Section 1.3, which states that “the fact that a respondent is shown to have been targeting the complainant’s mark may support the complainant’s assertion that its mark has achieved significance as a source identifier”, and several UDRP decisions, affirms that its SPACE FALCON unregistered trademark has achieved significance as a source identifier, and thus has acquired common law rights.

RESPONDENT:
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

RIGHTS
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

NO RIGHTS OR LEGITIMATE INTERESTS
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

BAD FAITH
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

PROCEDURAL FACTORS
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

PRINCIPAL REASONS FOR THE DECISION
Substantive Issues

In order for the Complainant to obtain a transfer of the disputed domain names, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

The first element inquiry under the Policy proceeds in two parts. First, the Complainant must demonstrate UDRP-relevant rights in a trademark, whether registered or unregistered. Secondly, any such trademark is compared with the disputed domain name to assess identity or confusing similarity.

In such comparison, the generic Top-Level Domain (“gTLD”), in this case, “.com”, is disregarded on the basis that this is a technical element.

The disputed domain name was initially registered on August 21, 2011. The Complainant has however submitted and sufficiently documented that the Respondent acquired the disputed domain name on January 23, 2022.

Hence, for the purpose of this UDRP, the registration date is January 23, 2022. See WIPO Overview 3.0, section 3.9: “… the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith.”

The Complainant here claims rights in the unregistered SPACE FALCON trademark through its open, continuous and extensive use since its launch on October 14, 2021.

In order for such a claim to be made out, the evidence before the Panel must show that this term has become a distinctive identifier associated with the Complainant’s goods and services.

As is noted in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), relevant evidence of such may include a range of factors, such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

Although the evidence of the use and extent of the Complainant’s trademark covers little more than a year, considering factors such as the type and scope of market activities and the nature of the Complainant’s goods and services, namely “online gaming, blockchain and NFTs”, and the fast growth shown in terms of users and followers, this Panel considers that there is nevertheless sufficient material in the present record to find that the SPACE FALCON trademark has acquired a secondary meaning and therefore that the Complainant has unregistered trademark rights therein for the purposes of the Policy.

In particular, the Complainant is able to show that before the registration of the disputed domain name its SPACE FALCON online game had already reached over 160 thousand followers, had raised several million US dollars from investors, and all this was announced with several articles on internet blogs.

Finally, the Respondent’s use of the SPACE FALCON trademark in its email address to impersonate the COO (at the time of the scam) of the Complainant for fraudulent purposes further affirms the Complainant’s position regarding its claim to unregistered trademark rights in this term, as it indicates that the Respondent is targeting the trademark, by making deliberate reference to the Complainant’s business. As noted in section 1.3 of the WIPO Overview 3.0, “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier”.

In all of the above circumstances, the Panel finds that the Complainant has UDRP-relevant rights in the unregistered SPACE FALCON trademark.

On comparing said trademark to the disputed domain name it is immediately clear that the Complainant’s trademark is identical to the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “SPACE FALCON” or by any similar name. The Respondent has no connection or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In fact, it appears that the Respondent has used the disputed domain name to send emails to third parties purporting to be from the former COO of the Complainant (i.e. the Head of Operations/Chief Operating Officer (COO) of the Complainant company in 2021-22). This is neither a bona fide offering nor a legitimate noncommercial or fair use within the meaning of the Policy. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. The Respondent has not formally replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name

The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.

The Complainant has documented that the Respondent has purposely registered and used the disputed domain name to attempt to defraud others by impersonating the former COO of the Complainant by fraudulently communicating via email using an email address that includes the Complainant’s “SPACE FALCON” trademark. The Respondent has thus misrepresented to others that it was a senior manager at Space Falcon LLC.

This conduct is, in the Panel’s view, sufficient to show that the Respondent knew of the Complainant and its trademark and intentionally intended to create an association with the Complainant and its business at the time of the registration of the disputed domain name.

The Panel finds that the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

FOR ALL THE REASONS STATED ABOVE, THE COMPLAINT IS
Accepted

AND THE DISPUTED DOMAIN NAME(S) IS (ARE) TO BE
spacefalcon.com: Transferred

PANELLIST: Mr. Fabrizio Bedarida
DATE OF PANEL DECISION: 2023-07-12