Decision

UK’s OneTab Ltd. loses UDRP matter of OneTab.com against AdPushup Founder

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?

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

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?

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

UDRP: Finland Company Katepal Oy fails to grab KatePal(.com)

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

SpaceFalcon.io upgrades to SpaceFalcon.com through UDRP

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

Roesch Inc. recovers lapsed Domain Name through UDRP (IceMadeEasy.com)

Roesch Inc. v. DJA DANNER, CAC-UDRP-105419
Complainant: Represented by: Mr. A Raheja (UDRPKing.com)
Respondent: No Response
Domain Name: IceMadeEasy.com

IDENTIFICATION OF RIGHTS
The Complainant, is an US company founded in 1916, which provides consistent expertise in porcelain enamel, stainless steel, other metals fabrication; food equipment manufacturing; home appliance manufacturing; Heating Ventilation Air Conditioning (HVAC); hearth, patio and BBQ manufacturing; construction and ICE Products, including its own line of Ice Merchandisers (Ice Maid Merchandisers) and related products.

The Complainant, among others, owns the following Trademarks:

-US Trademark ICE MAID, Reg. No. 1485183, IC 11, filed on January 6, 1986, registered on April 19, 1988 and in force until April 19, 2028.

-US Trademark ICE MAID, Reg. No. 4108191, IC 16, filed on June 23, 2011, registered on March 6, 2012, and in force until March 8, 2032.

-US Trademark ICE MADE EASY, Reg. No. 5223627, IC 16, filed on March 11, 2015, with a first use in commerce of August 31, 2016; registered on June 13, 2017; maintenance filed on March 10, 2023, most probably in force until June 14, 2027.

-US Trademark DEVICE Penguin Snowflakes Ice Cubes, IC 16, Reg. No. 5210953, filed on July 28, 2016, registered on May 23, 2017, and in force until May 24, 2027.

-US Trademark YOUR ONE-STOP SHOP FOR ALL THINGS ICE, IC 16, Reg. No. 5210954, filed on July 28, 2016, registered on May 23, 2017, and in force until May 24, 2027.

The disputed domain name <icemadeeasy.com> was created on January 7, 2014, and resolves to an active website with ‘Ice Vending Business’ references, listing Complainant’s competitors and potential malicious links.

FACTUAL BACKGROUND
The Complainant, was founded in 1916 as a porcelain enamel contract manufacturer. During the 1920s, the Complainant manufactured coal and gas residential cooking ranges. In the 1940’s the Complainant added metal fabrication capabilities, expanding its business activities as a custom job shop to the Heating Ventilation Air Conditioning (HVAC) and major cooking appliance manufacturers. In the 1970s, in order to offset cyclical sales of its products and services, the Complainant developed its line of Ice Merchandisers (Ice Maid Merchandisers) and related products. Today, the Complainant has developed expertise in food equipment manufacturing; home appliance manufacturing; HVAC; hearth, patio and BBQ manufacturing; construction and ICE Products.

Apart from its Trademarks, the Complainant owns the following domain names: <roeschinc.com>, created on July 16, 1996, and active since 1999; <icemaid.com>, <icemadeasy.com> (activated after the lapse of the disputed domain name <icemadeeasy.com>); <icedmaideasy.com>, <icedmadeeasy.com>, and <icedmadeasy.com> redirected to <icemadeasy.com>.

The disputed domain name <icemadeeasy.com> was created and registered by the Complainant on January 7, 2014; and renewed on December 2021 until its expiration date, being January 7, 2023. The Complainant inadvertently missed out the disputed domain name’s renewal. By February 14, 2023, the disputed domain name appeared registered by the Registrant with a different Registrar. By the time of this Decision, the disputed domain name, resolves to an active website with ‘Ice Vending Business’ references, listing Complainant’s competitors and potential malicious links.

PARTIES CONTENTIONS
Response

The Respondent did not submit any communication during the entire proceeding, nor has submit its Response replying to Complainant’s contentions.

Complainant Contentions:

The Complainant contends that it has been in existence since 1916 and that is the only one in the world to have conceived and adopted the trademark ICE MADE EASY in 2015-16, duly registered before USPTO; that the disputed domain name <.com> is confusingly similar to its trademark ICE MADE EASY (based on Section 1.7 of the WIPO Overview 3.0).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, due to the Respondent is not affiliated with the Complainant in any way to make use of the ICE MADE EASY trademark; that the disputed domain name is the result of a recent acquisition date of mid-February, 2023, while the Complainant has painstakingly built up a global reputation and has invested a substantial amount of resources in promoting its product under the trademarks ICE MADE EASY, ICE MAID EASY, ICE MAID.

The Respondent had no rights to incorporate the trademark ICE MADE EASY in the disputed domain name or otherwise to render any services, in relation to Ice Merchandisers or Ice Bags or Ice Vending Machines; that the misleading webpage at the disputed domain name along with active MX records only reinforces the (false) association between the Complainant and the disputed domain name and leads to confusion and deception.

The Complainant contends that has not authorized the Respondent either as a licensee, vendor, supplier, distributor, or customer relations agent for Complainant’s products or related services; that any person or entity using the mark/name ICE MADE EASY in any manner is bound to lead customers and users to infer that its product or service has an association or nexus with the Complainant and lead to confusion and deception.

That due to Complainant’s prior rights in the trademark ICE MADE EASY and the goodwill and reputation vested in the Trademark in terms of the prior use, it is evident from the current website that the sole purpose behind the Respondent in registering the disputed domain name was to take undue advantage of the Complainant’s trademark ICE MADE EASY; that the current web pages use referral links (to earn commission) to Amazon.com/.in and specifically provide for the competing websites that sell ICE Merchandisers; that the Respondent’s registration and use of the disputed domain name is a clear case for cyber-squatting, that its intention was to take advantage of the Complainant’s substantial reputation and goodwill in order to confuse the public and the viewer by offering similar products/services, divert business, tarnish the reputation and goodwill of the Complainant; that the said usage is certainly not in terms of paragraphs 4(c)(i) or 4(c)(iii) of the Policy, as neither the demonstrable preparation to use is a bonafide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain name; that instead, the Respondent is deliberately trying to portray a connection between the disputed domain name and the Complainant.
The Complainant also contends, that the disputed domain name incorporates a trademark neither owned by Respondent nor is the Respondent commonly known by the disputed domain name <icemadeeasy.com> either as an individual, business or any other organization.

The Complainant asserts that it is inconceivable that the disputed domain name was registered without full knowledge of the existence of the Complainant and its trademark; that the present webpage displaying information about products, previously featured on the Complainant’s official website, clearly indicates the Respondent’s actual knowledge; that the initial parking page at the disputed domain name, made reference to Ice Bags, covered explicitly by the Complainant’s trademark registration. Moreover, the current webpage includes references to products offered by the Complainant through the disputed domain name till January 2023 – Ties, Koolaire Ice Machine, Leer Ice Merchandiser and also lists competitor ‘Sites that Sell Ice Merchandisers’, showing the actual knowledge of the Respondent as to the Complainant and the website previously at the disputed domain name <icemadeeasy.com>; that the Respondent/Registrant must have obtained such knowledge at the time of acquisition/registration of the disputed domain name from the search at WIPO Trademark database or Web archives at <archive.org> or otherwise even a simple Google search for “ICE MADE EASY” which evidences the popularity of the Complainant’s trademark and its previous use.

That the Respondent cannot be said to have legitimately chosen to use the disputed domain name unless it sought to create an impression of an association with the Complainant. Since there is no such authorized association, the Respondent’s use of the disputed domain name cannot be said to be legitimate; that rather, there is prima facie proof of the Respondent’s intent to usurp the reputation of the Complainant and make illegal gains off its worldwide reputation and goodwill. Suffice it to state that the said usage of the disputed domain name by the Respondent has the propensity to cause irreparable loss to the goodwill and reputation of the Complainant.

The Complainant contends that the disputed domain name resolves to a website displaying products that were previously being sold through the disputed domain name. The Complainant submits that the Respondent is not authorized by the Complainant to make use of the disputed domain name in any form, instead, it has been registered to impersonate in order to create consumer confusion and lure prospective customers seeking the Complainant’s products, in accordance to paragraph 4(b)(iv) of the Policy: “By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant asserts that on March 23, 2023, attempted to serve a Cease & Desist notice to the Respondent, through the Domain Registrar, but that the Domain Registrar did not cooperate and alternatively, the Complainant’s officer had filled up the contact form on GoDaddy WhoIs page. Later, a misleading website came up at the disputed domain name, offering products previously offered by the Complainant.

The Complainant asserts that there are active MX Records, indicating that the disputed domain name is in use for phishing or other illegal activities; that the Complainant used the disputed domain name <icemadeeasy.com> for more than seven (7) years and uses more similar domain names like <icemaid.com> and <icemadesay.com>. Hence, any individual coming across the disputed domain name or an associated email ID ending with “@icemadeeasy.com” may assume it to be the Complainant’s website/email and instantly associate the same with the Complainant; that the same is very much evident from the active MX records for the disputed domain name.
That the Respondent made use of a Domain Proxy service by the Domain Registrar to shield its identity. Although the use of a privacy or proxy registration service does not indicate bad faith as such, however the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith; that the use and registration of the disputed domain name are clearly intended to capitalize on consumer confusion for Respondent’s profit, a bad faith use under the Policy’s 4(a)(iii).

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
The Complainant has sufficiently proved before the Panel, that owns Trademark Rights over the following terms, valid for the purposes of the Policy and of this case:

-US Trademark ICE MAID, Reg. No. 1485183, IC 11, filed on January 6, 1986, registered on April 19, 1988 and in force until April 19, 2028.

-US Trademark ICE MAID, Reg. No. 4108191, IC 16, filed on June 23, 2011, registered on March 6, 2012, and in force until March 8, 2032.

The Panel notes that the relevant Trademarks submitted by the Complainant being Roesch Inc. has been assigned to Roesch Acquisitions, LLC. Despite that the Complainant has not provided the required authorization from the current Trademark Owner, the Panel based on Paragraph 10 of the Rules, exceptionally, considering the nature of this case, and the extensive evidence submitted for this case, is ready to infer the affiliation between the two entities and the issuance of such authorization without interferences.

The disputed domain name <icemadeeasy.com> reproduced in its entirety the Complainant’s Trademark ICE MADE EASY, being identical; or confusingly similar in respect of Complainant’s Trademarks ICE MAID.

“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.

This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.

While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” (see Section 1.7 of the WIPO Overview 3.0).

Regarding the gTLD, it is well established by the Domain Name Jurisprudence that for the purposes of the analysis of the First UDRP Element, in this case, the gTLD “.com”, “is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test” (see Section 1.11.1 of the WIPO Jurisprudential Overview 3.0).

Therefore, the disputed domain name <icemadeeasy.com> is identical or confusingly similar to Complainant’s Trademarks.

According to the evidence submitted before this Panel, in relation to the Second UDRP Element, to this Panel it is clear that:

the Respondent registered the disputed domain name on February 14, 2023, previously owned by the Complainant since its creation/registration on January 7, 2014, and built a website who looks for revenues, based on Complainant’s original website, Complainant’s Ice line of business and its Trademark Rights owned at least since 2016 (Reg. No. 5223627).

the Complainant has never granted the Respondent any authorization, license or right to make any use of the Complainant’s trademark ICE MADE EASY, or apply for registration of the disputed domain name by the Complainant; that nor is the Respondent affiliated to the Complainant in any form nor a vendor, supplier, distributor, or customer relations agent for Complainant’s products or related services.

the Respondent´s use of the disputed domain name is far from being a legitimate noncommercial or fair use of the domain name, or even less, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, in accordance to paragraph 4(c)(iii) of the Policy, since not only leads customers into a false association and confusion, which could it be the “best-worst” scenario, but certainly the potential risks for customers’ data, and complex fraud’s online scenarios, where any Internet user can be involved.

the Respondent has been identified as “DJA DANNER”, and no evidence suggests that it corresponds or has become commonly known by the disputed domain name or owns any corresponding registered trademark including the terms “icemadeeasy.com”.

Therefore, this Panel finds that Complainant has successfully made a prima facie case, which was not rebutted in any manner by the Respondent, and concludes that the Respondent have no rights or legitimate interests in respect of the disputed domain name.

In relation to the Third Element of the UDRP, this Panel finds the following:

Registration in Bad Faith:

It is a fact that the change of Registrant in the disputed domain name, it is the result of a [significant] Complainant’s omission. Fact that, solely, does not necessarily constitute evidence of a respondent´s bad faith registration.

In the present case, according to the Registrar Verification, the Respondent acquired the disputed domain name on April 27, 2023. However, according to the Complainant’s submitted [substantive] evidence, the Complainant lost control over the disputed domain name by February 14, 2023. Despite such differences in the timeline, this Panel, considering the Complainant’s prior Trademark Rights existence (since 2016), consistent presence and relevance of its business (since 1916), the nature of the disputed domain name’s website content which is based in the Complainant, and the total absence of Response, concludes that the Respondent at the time of the registration/acquisition of the disputed domain name did it with Complainant’s on mind.

The Complainant owned the disputed domain name for 9 consecutive years, and performed a substantive investment of time and resources on its Intangible Assets, in particular over its Trademarks, to develop, maintain, and provide its products and services for its customers in the market, including in the online one. Therefore, this Panel is convinced, that the acquisition of the disputed domain name by the Respondent was not coincidental (see IDR Solutions Ltd. v. Whois Privacy Corp, WIPO Case No. D2016-2156 and Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540).

Section 3.2.1 of the WIPO Overview 3.0, provides the following consensus view in terms of additional bad faith consideration factors:

“Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: […] (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iv) the timing and circumstances of the registration (particularly following a product launch, or the complainant’s failure to renew its domain name registration), […] (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant.” (emphasis added).

Therefore, this Panel concludes that the disputed domain name has been registered in bad faith.

Bad Faith Use

According with the records, and as stated by the Complainant, this Panel notes, that on its registration, on February 2023, the webpage at the disputed domain name hosted PPC links for the initial period that included reference to the ICE BAGS, and related products, linking to Complainant’s competing sites. Later, after the Complainant’s Cease and Desist Notice of March 23, 2023, the website’s content changed, offering products previously offered by the Complainant through the [older] disputed domain name’s website.

By the time of this Decision, the [main] text’s content of the disputed domain name’s website is as follows:

“How To Start An Ice Vending Business

Download Our Ice Vending Business

Start Up Guide

Starting a Successful Ice Vending Business

Free Ice Vending

Business Start Up Guide

How To Buy An Ice Vending Machine

Sample Ice Vending Machine Business Plans

How To Pick A Location For Your Ice Vending Machine

Enter your Name and Email Below For Instant Access

Free Reports:

Bread Ties For Sale on Amazon

Koolaire Ice Machine Reviews

Leer Ice Merchandiser Reviews

Sites That Sell Ice Merchandisers

Ice Made Easy”.

To this Panel, it is evident that the Respondent not only has full knowledge about the Complainant, but understands its business and the value of the Trademark ICE MADE EASY. Such use, mislead and generates confusion among the Complainant’s customers, which are not only from the US market, but the existence of the disputed domain name with active MX records, which enables the use for emails, in the wrong hands, in this case, has the potential, as addressed before by this Panel, not only to tarnish the Complainant’s Trademark efforts, goodwill, and prestige, but to put on risk the data, including the financial one, of any Internet User (see Telefonaktiebolaget LM Ericsson v. Registration Private, Domains By Proxy, LLC / Aha Tek, WIPO Case No. D2021-2813; BOLLORE SE. v. amadi bon, CAC-UDRP-105470; Novartis AG v. Kim Feltham, CAC-UDRP-105438) Hence, to this Panel, the disputed domain name’s use, unequivocally falls into paragraph 4(b)(iv) of the Policy.

Therefore, this Panel concludes that, the disputed domain name is being used in faith.

FOR ALL THE REASONS STATED ABOVE, THE COMPLAINT IS
Accepted

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

PANELIST: Ms. María Alejandra López García
DATE OF PANEL DECISION: 2023-06-23

Hungarian Company Presonate fails to hijack .com domain name (RDNH)

Presonate Zrt. v. Abhijit Mhetre
WIPO Case No. D2023-1106

1. The Parties

The Complainant is Presonate Zrt., Hungary, represented by Széles Law Office, Hungary.

The Respondent is Abhijit Mhetre, India, represented by Cylaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <presonate.com> (the “Domain Name”) is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2023. On March 13, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 14, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 March 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2023. On April 4, 2023, the Respondent requested four days extension to file its Response. On the same day, the Center granted the four calendar day extension for filing of the Response under paragraph 5(b) of the Rules. The due date for Response was extended to April 15, 2023. The Response was filed with the Center on April 14, 2023.

The Center appointed Jeremy Speres as the sole panelist in this matter on April 27, 2023. 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 May 3, 2023, the Complainant submitted an unsolicited supplemental filing to the Center, which the Respondent objected to in an email reply on May 4, 2023.

4. Factual Background

The Complainant is a Hungarian company based in Budapest. No further information concerning the Complainant’s business is provided in the Complaint, however, based on the Complainant’s website, the Complainant offers presentation development and consulting services. The Complainant owns trade mark registrations for the mark PRESONATE in numerous jurisdictions, the earliest of which is Hungarian Trade Mark Registration No. 231437 for PRESONATE, in class 42, with registration date May 28, 2020.

The Respondent is an Indian individual who conducts business as a speaker and presenter on entrepreneurship, business modelling, marketing, and product positioning, having a passion for presentation.

The Domain Name was registered on February 20, 2011, and currently resolves to a parked page featuring pay-per-click advertisements unrelated to the Complainant’s business.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to its registered PRESONATE mark, that the Respondent has no rights or legitimate interests in the Domain Name, and the Domain Name was registered or used primarily for the purpose of disrupting the Complainant’s business given that the Respondent allegedly expressed an intention to trade in the same industry, and the Domain Name has resolved to pornographic content in the past.

The Complainant contends in its supplemental filing that although the Domain Name was registered on February 20, 2011, the Domain Name was up for renewal every year since 2011. The Complainant is convinced that the Respondent’s continuous renewal of the Domain Name, not taking into consideration that the Complainant has the cited trade marks, evidences a bad faith registration, even if the original registration may not have been in bad faith.

B. Respondent

The Respondent contends as follows. The Complaint is fatally flawed given that the Complainant does not allege conjunctive bad faith use and registration of the Domain Name. The Complainant’s trade mark applications were all filed, and the Complainant’s company was only incorporated, years after the Respondent registered the Domain Name in 2011. Thus, the Respondent could not have targeted the non-existent Complainant when it registered the Domain Name.

The Respondent filed an affidavit, signed before a notary, in which he explains that he conceived of the Domain Name for use in relation to resonating presentations, with the Domain Name consisting of a portmanteau of “presentation” and “resonate”. The Respondent claims to have used the Domain Name for his personal blog relating to communication, presentation, entrepreneurship, and presentation skills, and therefore he enjoys rights and legitimate interests in the Domain Name. As regards the Complainant’s allegation on the prior use of the Domain Name for pornography, the Respondent states that the Domain Name did resolve to pornographic content for a period of four days in 2021 due to a technical glitch that has since been resolved following the Respondent’s abuse report to the concerned Registrar.

The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) because the Complainant lodged the Complaint after having failed to convince the Respondent to sell the Domain Name to it, with the Complainant being represented by legal counsel who should have known that the Complaint could not succeed.

6. Discussion and Findings

6.1 Preliminary Issues
A. Parties’ Supplemental Filings

On May 3, 2023, after the panel appointment, the Complainant made an unsolicited supplemental filing. This filing contains contentions regarding the registration and use of the Domain Name in bad faith. Paragraph 10 of the Rules provides panels with the authority to determine the admissibility, relevance, materiality, and weight of the evidence, and also to conduct the proceedings with due expedition. Accordingly, unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel, pursuant to its general powers under paragraph 12 of the Rules. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.

However, in view of the fact that the Response contained allegations of RDNH against the Complainant, and in the circumstances of this case, the Panel finds that it is in the interests of justice for the Complainant to be given an opportunity to respond to the Respondent’s allegations, which the Complainant does in its supplemental filing.

In accordance with paragraph 10(d) of the Rules and in the interests of ruling on the basis of the fullest record possible, the Panel will admit the Complainant’s supplemental filing of May 3, 2023, and take it into consideration according to its relevance, materiality, and weight.

On May 4, 2023, the Respondent replied to the Complainant’s unsolicited supplemental filing, objecting to its consideration by the Panel, and requesting additional time within which to provide a reply.

Since the Panel finds that it can proceed to a Decision on the available case file, and in view of the Decision outcome, the Panel need not consider the Respondent’s supplemental filing or the request for additional time in which to file one.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Domain Name is plainly identical to the Complainant’s registered PRESONATE mark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In light of the Panel’s findings below in relation to bad faith, it is not necessary to consider the issue of rights or legitimate interests.

C. Registered and Used in Bad Faith

The Respondent’s evidence conclusively establishes that the Respondent registered the Domain Name in 2011, and that the Complainant was only formed as a business in 2019 (a fact which the Complainant neglected to include in the Complaint). Given that the registration of the Domain Name predates the formation of the Complainant’s business and all of the Complainant’s trade mark registrations, and in the absence of any other evidence suggesting any targeting of the Complainant, there is no basis for claiming that the Respondent registered the Domain Name in 2011 with the Complainant in mind (who did not exist at the time).

The Complaint must therefore fail given the conjunctive nature of the bad faith element, requiring bad faith registration and bad faith use. The Complainant’s contentions in its supplemental filing that bad faith registration can be determined at the time of renewals of the Domain Name do not advance the Complainant’s case. Firstly, the consensus view amongst panellists is that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith (WIPO Overview 3.0 at section 3.9). Secondly, even if bad faith registration could be determined at the time of renewal, there is nothing in the Complaint to support the Complainant’s contention that the Respondent acted in bad faith at any stage. The only claim that the Complainant seems to provide to support that the Domain Name might have been used in bad faith is its proven use for pornographic content. However, the Respondent’s evidence, on affidavit, convincingly indicates that the redirection to pornographic content was not intentional, with the Respondent immediately taking steps to have the redirect removed upon being informed of it by the Complainant.

D. Reverse Domain Name Hijacking

The Panel finds that the Complaint was brought in bad faith, and a finding of RDNH is warranted, for the following reasons, all of which have previously been recognised by UDRP panels as grounds for finding RDNH (WIPO Overview 3.0 at section 4.16). The Complainant is represented, it being accepted that represented complainants are held to a higher standard than unrepresented ones (see Sixsigma Networks Mexico, S.A. DE C.V. v. DYNAMO.COM AUTORENEWAL AND DNS, WIPO Case No. D2022-4534). The Complainant clearly ought to have known it could not succeed under any fair interpretation of the facts which were available to the Complainant prior to filing the Complaint; the conjunctive requirement is well-established, the Domain Name was registered long before the Complainant adopted the mark and acquired any trade mark rights in it, and it was accordingly impossible for the Respondent to have registered the Domain Name with the Complainant’s mark in mind.

The Respondent’s evidence shows that, prior to filing the Complaint, the Complainant had made unsolicited attempts to purchase the Domain Name from the Respondent, and proceeded to file the Complaint after the Respondent declined them. The Complainant also failed to mention, in the Complaint, that it had approached the Respondent in this regard at all. It is clear that this is an improper purpose (see e.g., BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No.
D2016-1811).

7. Decision

For the foregoing reasons, the Complaint is denied, and the Panel finds the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Jeremy Speres
Sole Panelist
Date: May 5, 2023