BuiltByValenti.com UDRP: “By Valenti” cosmetics versus Valenti construction

This case pitched Manuela Valenti LLC d/b/a By Valenti Organics, owner of BY VALENTI / BY VALENTI ORGANICS cosmetics trademarks and the domain byvalenti.com, against Florida builder Troy Valenti, who uses Valenti Development Group / Valenti Construction and registered the domain BuiltByValenti.com in 2023 for his construction business.

Complainant argued that the domain fully embeds the BY VALENTI mark, that Respondent’s website and social media use “By Valenti / byvalenti” as branding, and that an email referencing a search for “By Valenti” showed prior knowledge and intentional targeting to divert traffic and ride on Complainant’s reputation in soaps and skincare.

Respondent answered that “Valenti” is his longstanding family business name in construction and development dating back to the late 1990s, and that builtbyvalenti.com is a natural tagline-style domain for buildings literally “built by Valenti,” chosen with agency input and without any awareness of Complainant or her cosmetics.

The Panel found the first element met because BY VALENTI is recognizable in the domain, but accepted Respondent’s explanation and evidence: his established surname-based construction business, the unrelated nature of cosmetics versus building services, lack of proof that Complainant’s mark was famous, search logs showing he first looked up “By Valenti” only after receiving a demand letter, and site usage where “by Valenti” reads as ordinary grammar rather than an attempt to mimic the cosmetics brand. Without proof that Respondent knew of and targeted Complainant’s mark when registering the domain, the Panel held there was no bad-faith registration and that Respondent’s use was a bona fide offering giving him rights and legitimate interests.

Final decision: Complaint denied; the domain name builtbyvalenti.com remains with Respondent.

ARBITRATION AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Manuela Valenti LLC d/b/a By Valenti Organics v. Troy Valenti, Valenti Florida Realty
Case No. D2025-3674

1. The Parties

Complainant is Manuela Valenti LLC d/b/a By Valenti Organics, United States (U.S. or United States), internally represented.

Respondent is Troy Valenti, Valenti Florida Realty, U.S., represented by Meyer Capel, U.S.

2. The Domain Name and Registrar

The disputed domain name builtbyvalenti.com (the “Domain Name”) 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 September 10, 2025. On September 11, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 12, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent (Troy Valenti, Darrell Valenti; Valenti Development Group LLC d/b/a Valenti Construction and/or Valenti Florida Realty, Inc.) and contact information in the Complaint. The Center sent an email communication to Complainant on September 17, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 18, 2025.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on September 24, 2025. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2025. The Response was filed with the Center on October 14, 2025. Complainant sent an informal email communication to the Center on October 15, 2025, requesting for filing a supplemental filing. On November 17, 2025, the Panel issued Procedural Order No. 1 granting

Complainant the opportunity to submit a supplemental filing by November 24, 2025, limited to responding only to new factual allegations (and exhibits) raised by Respondent that could not have been anticipated in the original Complaint; and that Respondent can submit comments (if any) by November 28, 2025, with Respondent’s further submissions limited to matters raised in Complainant’s supplemental filing. In view of the Thanksgiving holiday in the U.S., the Panel in Procedural Order No. 2 extended the deadline for Respondent’s submission to December 2, 2025. The Center received Complainant’s supplemental filing on November 21, 2025, and Respondent’s supplemental filing on December 2, 2025.

The Panel has carefully reviewed the parties’ supplemental submissions and found much of the content to be either duplicative of the parties’ arguments in their main submissions or not adding much of any new relevance to the key issues that must be decided in this case. While the Panel has not included a detailed recitation of the parties’ supplemental submissions in this decision, nonetheless, the Panel has taken the supplemental submissions fully into account in its analysis and findings made below.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 30, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant has continuously used the BY VALENTI trademark in commerce since 2007, referenced in various stylizations, including “BY VALENTI”,” “BYVALENTI,” “By Valenti,” “by Valenti,” “by valenti,” “byvalenti,” and “ByValenti,” beginning with the sale of soap and related cosmetic products through the website at “www.manuelavalenti.com”, an online art gallery owned by Complainant. An archived capture from December 2008 displays the “by Valenti” name in some product links, evidencing early online commercial use. Although the earliest available archive is from 2008, Complainant’s first sales under the BY VALENTI mark occurred in 2007.

Complainant owns the trademarks BY VALENTI and BY VALENTI ORGANICS, registered in a number of countries:

– BY VALENTI, U.S. Reg. No. 7293293, filed October 17, 2022, and registered January 30, 2024, a standard character word mark with no claim to font, style, or color, and covering classes 3 (cosmetics) and 35 (online retail store services featuring cosmetics and beauty products);

– BY VALENTI ORGANICS with logo, U.S. Reg. No. 6966305, filed August 20, 2020, and registered January 31, 2023, covering class 3;

– BY VALENTI, International Reg. No. 1721054, filed and registered February 28, 2023, designating the European Union, Mexico, and Canada, covering classes 3 and 35;

– BY VALENTI, Mexico Reg. Nos. 2666949 and 2666950, registered June 14, 2024;

– BY VALENTI, Canada Reg. No. 1340151, filed February 28, 2023, and registered August 15, 2025,
covering classes 3 and 35.

Complainant registered the domain names byvalenti.com and byvalenti.net in 2009 and has used
byvalenti.com continuously to promote and sell its BY VALENTI branded products. Complainant has provided evidence of use of the BY VALENTI name at its domain name byvalenti.com dating back to 2009.

Complainant’s states its BY VALENTI brand recognition is evidenced by independent third-party and government records predating Respondent’s registration of the Domain Name in 2023, including: (i) Complainant’s confirmed listing in the Compact for Safe Cosmetics in 2010; (ii) Designation as a

“Champion” by the Campaign for Safe Cosmetics and the Environmental Working Group in 2011; and (iii) Certification under the USDA National Organic Program by Global Organic Alliance, Inc., Certificate No. 10180, issued March 4, 2014. Complainant states these milestones demonstrate long-standing and widely recognized use of the BY VALENTI mark prior to Respondent’s 2023 registration of the Domain Name.

The Domain Name was registered by Respondent on March 17, 2023. The Panel observes that Respondent identifies itself as Valenti Development Group LLC d/b/a Valenti Construction and/or Valenti Florida Realty, with Troy Valenti and Darrell Valenti identified as principals of Respondent.

Respondent uses the Domain Name to host a website for its business providing commercial and residential renovation, construction, and development services. Respondent’s principals bear the surname “Valenti” and have operated various companies using that name focusing primarily on the operation and development of franchised businesses and the structures they occupy, while in recent years the businesses have come to feature construction services. Starting no later than the late-1990s, Respondent’s principals established a business called Valenti Florida Realty, Inc. Over years, different iterations of the Valenti Development Group have been active in the businesses of operating franchise restaurants and the construction and maintenance of the buildings that house those operations. With the sell-off of large parts of its franchise operations in the mid-2010s, Troy Valenti refocused the family business on construction of residential and commercial buildings, especially buildings housing franchise operations. Around 2019, Valenti Development Group added the d/b/a of Valenti Construction.

During its operations of different franchises and construction and management of related buildings, Valenti Development Group has registered and used a number of different Valenti-based domain names, dating back as far as 1997, including valentifm.com; valentims.com; valentirestaurants.com;
valenti-restaurants.com; valentidevelopmentgroup.com; and the Domain Name.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.

(i) Identical or confusingly similar

Complainant states the Domain Name was registered on March 17, 2023, after Complainant’s trademark rights and common law use of its BY VALENTI trademark had been established. Complainant contends the Domain Name incorporates Complainant’s BY VALENTI mark, making it confusingly similar. The string “byvalenti” in the Domain Name reproduces Complainant’s mark in its entirety (the omission of the space being immaterial), satisfying the recognizability test. Complainant asserts the addition of the descriptive, dictionary term “built” as a prefix does not prevent a finding of confusing similarity. Complainant submits that UDRP panels consistently find that where a domain name incorporates a mark in full with such descriptive terms appended, the mark remains recognizable. Further, the “.com” generic Top-Level Domain (gTLD) is disregarded for the purpose of the first-element comparison. Complainant submits that in practical effect, Respondent’s Domain Name closely resembles Complainant’s official domain name, byvalenti.com, increasing the likelihood of user confusion.

(ii) Rights or legitimate interests

Complainant states it has not licensed, permitted, or otherwise authorized Respondent to use its BY VALENTI mark, or to register any domain name incorporating it. Complainant contends this establishes a prima facie case, with the burden shifting to Respondent.

Complainant further states the Domain Name is used to promote Respondent’s commercial construction services, which is not a bona fide use of a name corresponding to the Domain Name. Complainant contends

the Domain Name was deliberately chosen to reproduce Complainant’s mark in the exact string “byvalenti,” with only the descriptive prefix “built” added. Complainant claims Respondent is targeting Complainant’s mark in Respondent’s web content and metadata, with archived versions of Respondent’s pages (as found on Wayback Machine) showing Complainant’s mark in headings, anchor text, and page source, including the exact forms “By Valenti,” “by Valenti,” and “ByValenti,” and “byvalenti” embedded in URLs and metadata.
Complainant contends this is not nominative or descriptive use; rather, it is commercial branding and search indexing around Complainant’s mark, which defeats any claim to Respondent’s rights or legitimate interests.

Complainant states Respondent owns and uses the domain name valentidevelopmentgroup.com, a domain name matching its company name and registered in August 2022, while intentionally redirecting that domain name to a website linked to the Domain Name, thereby confirming that the decision to use the “byvalenti” string was a marketing selection rather than necessity, corroborated by the visible redirect because entering valentidevelopmentgroup.com resolves at the Domain Name.

Complainant maintains Respondent is not commonly known by the Domain Name. Florida state corporate records show Respondent operates as Valenti Development Group LLC (and brands itself online as “Valenti Construction”), and as Valenti Florida Realty, Inc., not as “By Valenti,” “by Valenti,” “byvalenti,” or “ByValenti.” There is no evidence that Respondent, its businesses, or principals have ever been commonly known by those names prior to registering the Domain Name. Complainant submits Respondent’s counsel identified Valenti Florida Realty, Inc. as the client rather than Valenti Development Group LLC d/b/a Valenti Construction, further underscoring that Respondent is not commonly known through the “by Valenti” name.

Moreover, the Domain Name resolves to a commercial contracting site rather than indicating any fair or noncommercial use. The site claims operations “since 1996,” yet Complainant asserts Florida records show Valenti Development Group LLC d/b/a Valenti Construction was first formed on May 3, 2017, and Valenti Florida Realty, Inc. on April 16, 1997, undermining any claim of bona fide use of the Domain Name before notice. Respondent’s earlier corporate website as of 2022 shows no “By Valenti,” “by Valenti,” “byvalenti” or “ByValenti” reference. Archived versions of Respondent’s prior site at valentidevelopmentgroup.com, now redirected to the Domain Name, promote construction services without any “by Valenti” wording. By contrast, Complainant states the Domain Name’s webpages from 2023 to 2025 embed “By Valenti,” “by Valenti,” “byvalenti,” and “ByValenti” in the webpage text and/or metadata. Complainant contends this contrast reinforces that Respondent’s later adoption of the “byvalenti” string in the Domain Name was a marketing choice rather than a pre-existing name and does not establish rights or legitimate interests under Policy.

Complainant states that Respondent used Facebook and Instagram accounts under the handle “@builtbyvalenti” to promote Respondent’s commercial construction services and linked to the Domain Name. Complainant argues that social media handles mirroring the Domain Name do not confer any rights – the creation and use of social media handles derived from the Domain Name is circular and does not show Respondent is commonly known by the “byvalenti” or “builtbyvalenti” strings, independent of the Domain Name. Complainant asserts that UDRP panels look for independent evidence (e.g., legal name, long-standing trade name), and not self-selected handles that simply replicate a domain name. Complainant states that as of September 3, 2025, the Instagram and Facebook accounts @builtbyvalenti were removed by Meta following Complainant’s trademark complaint.

Complainant claims the wording “By Valenti,” “by Valenti,” “byvalenti,” and “ByValenti” is not used to describe Complainant or to make nominative fair use; rather, it functions as branding within Respondent’s webpages, creating an implied association with Complainant’s BY VALENTI mark. On these facts, Complainant submits Respondent’s use is not without intent for commercial gain and misleadingly diverts consumers.
Complainant urges that even if “Valenti” is a surname, the Domain Name incorporates Complainant’s BY VALENTI mark in variant forms. Where a respondent selects a domain name that targets a third-party mark to attract users, panels do not find rights or legitimate interests merely because a component can be a name or dictionary term.

(iii) Registered and used in bad faith

Complainant claims Respondent registered and uses the Domain Name to promote its construction services, while improperly reproducing Complainant’s BY VALENTI mark through various forms, including the “by valenti” or “byvalenti” strings in the Domain Name and across webpage and source elements, thereby creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement for commercial gain.

On July 1, 2025, Complainant accessed Respondent’s website at the Domain Name and submitted a cease-and-desist notice through the online contact form. At that time, Respondent’s system issued an automated confirmation email. Then on July 2, 2025, Complainant received Respondent’s email stating: “When we did a search for ‘By Valenti’ the results I viewed were your company and corresponding social media pages.” Complainant contends this wording, in the past tense, indicates that Respondent had already looked up Complainant prior to receiving the cease-and-desist notice, thereby admitting knowledge of Complainant’s company and its social media presence. Despite this awareness, Respondent nevertheless refused to remove or change the Domain Name. Complainant argues this admission shows actual knowledge of Complainant and its trademark or website and supports an inference of targeting under the Policy.

On August 6, 2025, Respondent’s counsel asserted “neither VFRI [Valenti Florida Realty, Inc.] nor I had ever encountered your products prior to your demand.” Yet in the same letter, counsel admits “VFRI did the same type of internet search for your BY VALENTI mark that I did.” On August 27, 2025, counsel again claimed “[i]n point of fact, VFRI had absolutely never heard of your company or your product at the time they registered their URL.” Complainant claims these assertions conflict with Respondent’s earlier admission: “When we did a search for ‘By Valenti’ the results I viewed were your company and corresponding social media pages.” Respondent argues this inconsistency and continued use after notice reinforces bad faith.

Complainant also notes that Respondent’s counsel stated: “This firm represents Valenti Florida Realty, Inc. (‘VFRI’), which operates in part as Valenti Construction.” Complainant claims this creates inconsistent party identification, as Respondent’s website identifies Valenti Development Group LLC d/b/a Valenti Construction. Complainant claims Respondent’s counsel concedes that he and his client ran searches for “BY VALENTI,” admitting awareness post-notice, which directly contradicts his client’s July 2, 2025, email. Complainant asserts Respondent’s continued use after notice demonstrates bad faith. Further, Complainant contends that Respondent counsel’s assertion that the Domain Name is “not a trademark use” is contrary to UDRP consensus where domain names incorporating a trademark are regularly found to create confusion.

Complainant emphasizes that as of August 2022 Respondent owned the domain name
valentidevelopmentgroup.com, matching Respondent’s company name, and deliberately chose to redirect that domain name to the Domain Name. Complainant contends this confirms that Respondent deliberately selected a mark-plus-term domain name containing Complainant’s mark BY VALENTI as a marketing choice rather than a necessity, consistent with bad-faith targeting.

Complainant states archived captures of Respondent’s webpages show the exact tokens “By Valenti,” “by Valenti,” “byvalenti,” and “ByValenti” embedded in webpage text, headings, anchors, bylines, and metadata across Respondent’s pages. Independent searches confirm these elements were indexed by Google. On September 4, 2025, Complainant performed a search for the phrase “by Valenti” directed at Respondent’s site, which returned multiple results with snippets such as “ByValenti Construction,” “Have It Built By Valenti,” “by Valenti Construction,” “by Valenti,” and “Built By Valenti.” Complainant claims this confirms that Respondent’s on-page and source-code use of these variants was captured by third-party search engines, supporting initial-interest confusion and bad faith under the Policy. Complainant states live and archived captures of Respondent’s article webpage display different bylines. The July 15, 2025, archived version shows “ByValenti Construction,” while the live September 4, 2025, version displays “By Valenti Construction.” Complainant claims this inconsistency underscores Respondent’s shifting use of Complainant’s mark variants, further evidencing a pattern of bad-faith branding.

Complainant states Respondent’s social media accounts “@builtbyvalenti” on Facebook and Instagram were removed following Complainant’s trademark complaint, allegedly confirming that Respondent’s adoption of Complainant’s mark-string for commercial purposes without authorization was improper.

Complainant states Respondent’s website indicates Respondent was “founded in 1996” / “providing … since 1996,” yet Florida corporate records show Valenti Development Group LLC d/b/a Valenti Construction was formed on May 3, 2017, and Valenti Florida Realty, Inc. was formed April 16, 1997, obtaining construction licensing August 10, 2021. Complainant argues these inconsistencies support an overall pattern of misleading behavior relevant to the bad faith totality analysis. Respondent attempts to support its “since 1996” claim by pointing to Valenti Florida Realty, Inc., incorporated in 1997. However, this entity was originally a real estate company, not a construction contractor.

Complainant states the Domain Name is shielded by Domains By Proxy. While privacy alone is not bad faith, UDRP panels may consider proxy use together with other factors as supporting inference of bad-faith registration/use.

Complainant claims its trademark rights predate Respondent’s March 17, 2023, registration of the Domain Name, including longstanding common-law rights since 2007; accordingly, the bad-faith registration requirement is satisfied. Before Respondent registered the Domain Name in March 2023, Complainant’s marks and branding were readily discoverable: the BY VALENTI figurative (logo) mark was registered January 31, 2023; Complainant’s has used the phrases “By Valenti,“ “by Valenti,“ “byvalenti,“ and “ByValenti” as early as 2007 giving rise to common law rights; and Complainant’s domain name,
byvalenti.com, was registered in 2009 and used for ongoing BY VALENTI branding and sales. Together with Complainant’s international trademark registration dated February 28, 2023, these facts show Respondent more likely than not knew of and targeted Complainant’s mark at registration.

Complainant claims that Respondent’s knowledge of Complainant can be inferred from the circumstances, with a later admission corroborating this knowledge. While the earliest documentary admission of awareness is in July 2025, Respondent’s March 2023 selection of the Domain Name that reproduces Complainant’s mark in full, coupled with its simultaneous possession of a suitable alternative company-name domain name and its systematic on-site/source deployment of “By Valenti,“ “by Valenti,“ “byvalenti” and “ByValenti” makes it more likely than not that Respondent knew of and targeted the BY VALENTI mark at registration. While not determinative alone, these facts corroborate that Respondent was leveraging Complainant’s mark and then attempted to minimize visible signals once challenged.

B. Respondent

Respondent does not contest Complainant’s representations of common law use of the BY VALENTI mark or that Complainant has a U.S. federally registered standard character trademark for BY VALENTI limited to International Classes 3 and 35 for the sale of various types of cosmetics and skin care products.
Respondent observes, however, that Complainant’s BY VALENTI trademark, U.S. Reg. No. 7293293, was issued on January 30, 2024, almost one year after Respondent registered the Domain Name. Respondent notes that a search of the U.S. Patent and Trademark Office (“USPTO”) trademark database reflects over 50 registrations or applications for which the common surname “Valenti” is a core element. Respondent further observes that Complainant’s figurative logo mark, U.S. Reg. No. 6966305, which Complainant cites several times without actually providing the full text of the mark, is actually for the words BY VALENTI ORGANICS, making it a materially different trademark than BY VALENTI.

Respondent states its principals bear the surname Valenti and have operated various companies for decades using that name while focusing primarily on the operation and development of franchised businesses and the structures they occupy. Over the last eight or more years, the Valenti businesses have featured their construction services. On March 17, 2023, Respondent registered the Domain Name, which calls up webpages that feature its construction services.

While indicating its Domain Name registration predates Complainant’s U.S. federal trademark registration for BY VALENTI, Respondent states it was unaware of Complainant’s existence prior to Complainant’s initial demand notice on July 1, 2025. As corroborated by the declaration of Respondent’s office manager, which also reflects Respondent’s Google search on July 1, 2025, in response to Complainant’s July 1 demand notice, Respondent states it had never heard of Complainant’s business before receiving that notice. Further, as a building construction enterprise, Respondent asserts it would have no motivation to draw potential

customers from Complainant’s cosmetic and skin care business. Moreover, given the common occurrence of the name Valenti in the general population and as trademark or service mark, Respondent contends customer confusion between Complainant’s domain name byvalenti.com and the Domain Name is highly unlikely. Therefore, Complainant’s assertion that the Domain Name was deliberately chosen to reproduce Complainant’s mark in the exact string ‘byvalenti’” makes no sense.

(i) Identical or confusingly similar

Respondent contends that given Valenti is a surname that commonly occurs in the United States, Complainant’s trademark rights must be viewed as narrow and weak. In essence, Complainant is asserting an expansive right to the preposition “by” and thus any attribution of any good or service to anyone named Valenti. In this sense, Respondent asserts the preposition “by” is a nominative connector of a product to a source named Valenti. Whatever protection it may be entitled to must be weak.

Respondent submits that viewed solely as a letter string, Complainant’s claim to “byvalenti” would exclude uses as varied as a person operating businesses under their given name such as Abby or Gabby using “abbyvalenti” or “gabbyvalenti” or a person named Valenti selling baby clothes through a website for “babyvalenti.” Alternately, viewed as a trademark or slogan, the dominant element of BUILT BY VALENTI has to be the word “built” as the verb driving the slogan rather than “by” as a mere preposition or “Valenti” as a common surname. Respondent argues the weakness of Complainant’s attempt to characterize Respondent’s use as confusingly similar is emphasized by Complainant’s attempt to multiply Respondent’s use of the mark by pointing to the headers on Respondent’s webpages, which in each instance use the full slogan “built by Valenti” on pages advertising building construction services. Each one of those instances clearly emphasizes the words “built” and “Valenti” over the mere conjoining preposition, “by.”

As noted above, the USPTO reflects over 50 applications centering on the surname Valenti, almost 20 of which are currently registered or pending. In fact, the U.S. Trademark Examiner raised this surname when Complainant filed its trademark application. Respondent states that when Complainant attempted to defend its trademark application by arguing Valenti is not a common surname because it “is only found in 12,084 people in the US,“ the Examiner responded that, “[r]ather than show that VALENTI is not common, applicant’s evidence confirms the examining attorney’s finding that VALENTI is in a fact a common surname in the United States.” Eventually, Complainant was required to submit a statement of continuous use for over five years.

Respondent contends the Domain Name is also not confusingly similar to the BY VALENTI trademark because the BY VALENTI mark is associated only with cosmetics and skin care products. No reasonable consumer would associate the verb “built” with cosmetics or skin care.

(ii) Rights or legitimate interests

The principals of Valenti Development Group are father (Darrell) and son (Troy), both surnamed Valenti. Each has been a Valenti his entire life. Starting no later than the late-1990s, they established a business called Valenti Florida Realty, Inc. The senior Valenti has been using his name in business for far longer.

Over many years, different iterations of the Valenti Development Group have been active in the businesses of operating franchise restaurants and the construction and maintenance of the buildings that house those franchise operations. Respondent has submitted evidence that the Valentis have been well known in development circles and recognized as the 76th largest franchise operator in America in 2017. With the sell-off of large parts of its franchise operations a number of years ago, Troy Valenti refocused the family business on construction of residential and commercial buildings, concentrating on buildings housing franchise operations.

During its operations of different franchises and construction and management of related buildings, Valenti Development registered and used a number of different Valenti-based domain names, dating back at least as far as 1997, as noted above.

Respondent indicates that by 2022, Valenti Development Group sought assistance in branding its Valenti Construction pages from an outside marketing firm and assistance in developing a new webpage resulting in an undertaking in early 2023. Respondent states that not only did that advice and ultimate registration of the Domain Name predate Complaint’s U.S. trademark registration, but there was also little reason for a company named Valenti for over two decades to conduct a trademark search for other businesses that included Valenti in their names. Neither Respondent nor its marketing firm had ever heard of Complainant.

Respondent states that taking a step beyond the simple letter string of the Domain Name, the website behind Respondent’s Domain Name clearly offers an entirely different product and provider than Complainant. This can be seen by comparing Respondent’s webpages to Complainant’s webpages. Any claim that Respondent is attempting to benefit from Complainant’s goodwill denies logic as does any suggestion that there would be any consumer confusion.

(iii) Registered and used in bad faith

Respondent contends that Complainant’s assertions of bad faith are contrary to common sense. Whatever market presence Complainant and its byvalenti.com domain name have, the market would not involve customers for construction services, and it would serve no purpose for Respondent to make any attempt to redirect those customers. Moreover, Respondent emphasizes Complainant makes no allegation (and submits no evidence) that Respondent’s use of the Domain Name has negatively impacted traffic at Complainant’s website.

Respondent asserts Complainant is making an incorrect and outrageous stretch through its repeated attempts to construe the past tense used in a July 2, 2025, message from Respondent as evidence of Respondent’s knowledge of Complainant and its trademark and that that knowledge necessarily predated not only Complainant’s July 1, 2025, cease-and-desist notice but also Respondent’s registration of the Domain Name. By contrast, Respondent’s search history, submitted in evidence, reflects that the search at issue was conducted on July 1, 2025, when Respondent received Complainant’s notice. Respondent’s search was a natural reaction to Complainant’s demand notice, nothing more. Respondent conducted the referenced search in response to Complainant’s demand.

Respondent further provides two Google searches that Respondent’s counsel conducted on October 14, 2025, for the words “by valenti” with and without quotes. The search with quotes returns four dozen links that precede Respondent’s website. While a majority of those early links relate to Complainant’s products, others are random informational websites. The search without quotes does not return Respondent’s website at all. These searches refute entirely Complainant’s claim that Respondent is somehow siphoning off searches for Complainant’s products.

Respondent contends that Complainant’s arguments about Respondent’s inconsistent trademark use and different unrelated entities are all over the map. Simply put, Respondent’s principals have engaged in a series of businesses over time under their surname, Valenti. The fact that they waited until spring 1997 to incorporate their real estate business or until 2017 to incorporate their development company is secondary to the operation of those businesses. Respondent and its principals have decades of history operating under their Valenti surname and there is nothing misleading, confusing or in bad faith about describing their construction operations as “built by Valenti.” It stands as a simple statement of fact.

Separately, Respondent asserts Complainant is misleading in its claim that Respondent is using the ‘by valenti” mark-string in webpage content and metadata, allegedly confirmed by Google indexing and evidence of inconsistent branding (i.e., by Respondent using various versions of Complainant’s mark, such as “By Valenti, “by Valenti,” “byvalenti” or “ByValenti”). While Complainant submitted evidence of the home webpage for Respondent’s Valenti Construction, the only “by valenti” string of words on that page is the URL printed at the top, “https://builtbyvalenti.com.” Further, the “Articles & News” page of the site put into evidence contains an article, “How Health Is Impacted by Workplace Design,” with the sentence: “Recent studies have shown that well-designed workplaces, such as those created by Valenti Construction… .” Respondent contends that Complainant improperly attempts to stretch the clearly nominative use of the preposition “by” in this sentence describing what Respondent does into mark-targeting and search-indexing.

Similarly, the “Commercial Owner Representation” section of Respondent’s site includes the phrase “Have it Built By Valenti.” Again, this shows the user that Respondent’s intent is to focus on the building and construction portion of its business. There is no context in which confusion with Complainant’s mark is conceivable.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element of the Policy functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

Here, Complainant has shown it has trademark rights in respect of its BY VALENTI mark for the purposes of the Policy, a point that Respondent does not contest. WIPO Overview 3.0, section 1.2.1. At the same time, it should be noted that “the goods and/or services for which the mark is registered or used in commerce, the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test,” but “may however bear on a panel’s further substantive determination under the second and third elements.” Id., section 1.1.2. As to Respondent’s assertion that Complainant’s U.S. registered BY VALENTI trademark was registered on January 30, 2024, well after Respondent had registered the Domain Name, the Panel follows the guidance of WIPO Overview 3.0, section 1.1.3: “[t]he fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.”

The Panel observes that the entirety of Complainant’s mark is reproduced in the Domain Name. WIPO Overview 3.0, section 1.7, provides in this regard that “[w]hile 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.” At the same time, with respect to Respondent’s contention that Complainant’s trademark rights must be viewed as narrow and weak, section 1.7 provides that “[i]ssues such as the strength of the complainant’s mark or the respondent’s intent to provide its own legitimate offering of goods or services without trading off the complainant’s reputation, are decided under the second and third elements.” Id.

Here, the Panel finds that Complainant’s BY VALENTI mark is recognizable within the Domain Name, and the addition of the word “built,” although placed in the dominant first position before the words “by Valenti,” does not avoid confusing similarity for purposes of the Policy. As stated in WIPO Overview 3.0,, section 1.8, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

Accordingly, the Domain Name is confusingly similar to Complainant’s mark for the purposes of the Policy and the first element has been established.

B. Rights or Legitimate Interests / registered and used in bad faith

In this case the Panel considers it appropriate to address the second and third elements of the Policy together. Although these elements are distinct – requiring Complainant establish first that Respondent lacks rights or legitimate interests in the Domain Name, and second that the Domain Name was registered and is being used in bad faith – in this case the analyses are inextricably intertwined.

In particular, as discussed below, the Panel notes that use of a domain name for a commercial business can qualify as a bona fide offering of goods or services under the Policy, paragraph 4(c)(i), thereby giving rise to rights or legitimate interests, only where the respondent did not register (and use) the domain name in bad faith, with intent to target or exploit a complainant’s trademark. As reflected in consensus UDRP precedent, a respondent cannot establish rights or legitimate interests when the domain name was chosen to capitalize on, trade on, or otherwise exploit the complainant’s trademark. Conversely, where the evidence does not show bad faith targeting and/or exploitation, and the respondent’s commercial use is consistent with an independent, non-bad faith purpose, such use may constitute bona fide use under the Policy.

In this case, the same factual questions relating to Respondent’s motivation and knowledge at the time of registration, as well as subsequent use of the Domain Name, bear directly on both the second and third elements of the Policy – they pivot on the issue of whether Respondent, before notice of this dispute, was using the Domain Name in connection with a bona fide offering of goods or services, or whether that use was not bona fide because Respondent’s registration and use of the Domain Name was intended to target, capitalize on, or otherwise exploit Complainant’s BY VALENTI trademark.

Regarding rights and legitimate interests, what is clear and undisputed is as follows:

(i) Respondent did not seek authorization (and does not believe it needed authorization) from Complainant when it registered the Domain Name in March 2023;

(ii) Respondent has a long history of operating legitimate franchise and construction businesses with various names, with those relevant to this dispute incorporating the name Valenti, which is the family surname of two of Respondent’s principals;

(iii) the Domain Name does not match the names of any of Respondent’s businesses and therefore Respondent is not commonly known by the Domain Name, independent of the Domain Name itself; and

(iv) Respondent has used the Domain Name to host a commercial website for its Valenti Construction business, part of the Valenti Development Group, since 2023. As a result, the Domain Name has not been used for a noncommercial of fair use purpose.

Complainant has argued, among other things, that Respondent’s use of the Domain Name is not bona fide and must be in bad faith due to Respondent allegedly targeting Complainant and its BY VALENTI trademark, as well as the implied association created by the Domain Name and the systematic use of the “by valenti” or “byvalenti” strings in the content, headers and source code of Respondent’s webpages. Complainant claims the Domain Name was deliberately chosen as a marketing choice (rather than necessity) to reproduce Complainant’s BY VALENTI mark with the exact string “byvalenti” as part of the Domain Name. Further, Complainant asserts it more likely than not that Respondent knew of and targeted Complainant’s mark in bad faith at the time of registration, that Respondent’s knowledge of Complainant and its mark can be inferred from the circumstances, including:

(i) Complainant trademark rights and branding predate Respondent’s March 17, 2023, registration of the Domain Name and were readily discoverable, with longstanding common law rights since 2007 and registered rights dating from at least January 31, 2023; and Complainant’s domain name, byvalenti.com, was registered in 2009 and used continuously by Complainant for BY VALENTI branding and sales;

(ii) Respondent’s possession of a suitable alternative company-name domain name, i.e.,
valentidevelopmentgroup.com;

(iii) Respondent’s knowledge is corroborated by Respondent’s later admission, as allegedly shown in the July 2, 2025, correspondence from Respondent; and

(iv) continued use of the Domain Name after receiving Complainant’s cease-and-desist demand notice.

Respondent, on the other hand, has denied targeting Complainant when registering the Domain Name and developing its website content and code; has repeatedly stated Respondent was unaware of Complainant and its business prior to receiving Complainant’s initial demand notice on July 1, 2025; emphasized that it and its principals have decades of history operating under their Valenti surname; hired an outside marketing firm in February 2023 and registered the Domain Name prior to Complainant’s U.S. trademark registration on January 30, 2024 for BY VALENTI; and contending there is nothing misleading, confusing or in bad faith about describing Respondent’s construction operations as “built by Valenti.”

Regarding the third element of the Policy, paragraph 4(a)(iii) of the Policy is stated in the conjunctive and requires that Complainant establish both that “[the disputed] domain name has been registered and is being used in bad faith”. Further, WIPO Overview 3.0, section 3.1, states “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark.” If a respondent takes unfair advantage or otherwise abuses a complainant’s mark, then as noted above, the use of the domain name for a commercial business cannot qualify as a bona fide offering of goods or services under the Policy and give rise to rights or legitimate interests with respect to that domain name. Here, Complainant alleges that Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website or other online location by creating a likelihood of confusion with Complainant’s BY VALENTI mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s site or of products or services offered on it. Policy, paragraph 4(b)(iv).

The crux of this case thus involves whether the evidence demonstrates that Respondent was aware of Complainant and its BY VALENTI mark and targeted that mark when registering the Domain Name, with Respondent’s subsequent use of the Domain Name supporting that finding. The Panel determines, based on review of the entire record, that Complainant has failed to demonstrate bad faith registration and use of the Domain Name. It follows from this conclusion that Respondent’s use of the Domain Name for its commercial construction business reflects using it for a bona fide offering of goods or services under the Policy, giving rise to rights or legitimate interests in the Domain Name.

Regarding the Domain Name’s registration, the evidence is clear that Respondent has unequivocally and repeatedly denied it was aware of Complainant and its BY VALENTI mark when registering the Domain Name. The Panel finds no sufficient evidence in the record adequate to call into question this denial.
Respondent’s office manager has put in a declaration (supported by contemporaneous evidence) to state and show that she conducted searches of Complainant’s BY VALENTI mark on July 1, 2025, only after receiving Complainant’s cease and desist demand notice of that same date. The Panel disagrees with Complainant’s assertion that use of the past tense in Respondent’s July 2, 2025, responsive communication – “When we did a search for ‘By Valenti’ the results I viewed were your company and corresponding social media pages” – refers to a period of time prior to registration of the Domain Name in March 2023. And even if it did, the fact that the Parties share a surname is impossible to escape.

In the Panel’s view, Respondent’s denial is also supported by three important factors: first, Respondent has a valid and plausible rationale for why Respondent chose the Domain Name, as it provides a short and useful descriptive tagline reflecting the focus of Respondent’s commercial and residential building operations with reference to Respondent’s longstanding family name, Valenti, a name that Respondent has used in a variety of its businesses. This case can be distinguished from many other UDRP cases where the respondent’s choice of domain name has no plausible basis, apart from targeting the complainant’s trademark. Further, the possibility (as Complainant has alleged) that Respondent’s choice was motivated by a marketing decision rather than necessity (i.e., given Respondent already had another domain name,
valentidevelopmentgroup.com), does not in itself support bad faith registration.

Second, the only registered U.S. trademark that predates Respondent’s registration of the Domain Name is for the logo mark, BY VALENTI ORGANICS (with logo), registered on January 31, 2023, approximately one-and-a-half months before Respondent registered the Domain Name on March 17, 2023. This mark protects a designation that adds both the word “organics” and a logo to the phrase “by Valenti.” By comparison, Complainant’s U.S. BY VALENTI trademark was registered in January 2024, after the Domain Name was registered in March 2023. Further, Complainant’s international registration for BY VALENTI, dating from February 28, 2023, is designated for Canada, the European Union and Mexico and was filed for and registered just 17 days before Respondent registered the Domain Name. The Panel also observes that the filing date for Complainant’s BY VALENTI ORGANICS logo mark was August 20, 2020, and the filing date for its BY VALENTI word mark was October 17, 2022, were both before the registration of the Domain Name.
However, given the vastly different markets in which Complainant and Respondent operate (as discussed
below), the lack of demonstrated strength of Complainant’s mark beyond the cosmetics and beauty market, and Respondent valid and plausible rationale for it chose the descriptive Domain Name, these earlier filing dates for Complainant’s marks , while creating priority dates for the marks themselves, are not sufficient to suggest bad faith on the part of Respondent. In conclusion, the Panel finds that any pre-existing trademark rights held by Complainant are not adequate to support an inference that Respondent knew of Complainant and its marks (or should have known of Complainant and its marks), and targeted them, at the time the Domain Name was registered. This is particularly the case, as described in the next point, given the different lines of business engaged in by Complainant and Respondent.

Third, Complainant’s marks are registered for international classes 3 (cosmetics) and 35 (online retail store services featuring cosmetics and beauty products), reflecting a line of business quite different from Respondent’s commercial and residential construction business. The parties operate in entirely distinct commercial spheres and fundamentally different markets, with no logical overlap between their respective lines of business. This suggests not only a limit to the scope of Complainant’s trademark rights, but also undercuts the contention that Respondent knew (or should have known) of Complainant and its marks and targeted them at the time the Domain Name was registered. The same can be said with respect to Complainant’s common law rights in the BY VALENTI mark (which Respondent has not contested), with Complainant having indicated use of the mark in the cosmetics and beauty products markets, not the building, construction, or real estate industries. As noted above under the analysis of the first element of the Policy, when it comes to the second and third elements of the Policy, the Panel can consider the goods and/or services for which the mark is registered or used in commerce, as well as the strength of Complainant’s mark.

Finally, regarding Respondent’s use of the Domain Name, the Panel determines that there has been no bad faith use. Respondent has used the Domain Name for approximately 2 years and 3 months f to host its website, which is clearly titled “Valenti Construction,” and used to offer Respondent’s services as a full-service general contractor specializing in restaurant and retail development and custom residential building. The Panel finds there is no attempt through Respondent’s website to create confusion or otherwise improperly exploit Complainant and its BY VALENTI trademark. Instead, Respondent’s use of the Domain Name is consistent with an independent, non-bad faith purpose to provide its own legitimate offering of goods or services without trading off on Complainant’s reputation.

Further, the panel observes that the word “by” appearing in Complainant’s mark (and in the Domain Name) is a common preposition, used ubiquitously in the English language. Because “by” functions as a routine marker of who performs an action or supplies a service or product, its appearance alongside a business name – such as “by Valenti Construction” – in the text of Respondent’s website reflects standard grammatical usage rather than any distinctive or source-identifying element. That is the case, for example, in the following sentence which was referenced by Complainant in its Complaint:

“Recent studies have shown that well-designed workplaces, such as those created by Valenti Construction, can boost employees’ mood, improve concentration, and reduce stress” (italics added).

In addition, to the extent that this text with the words “by Valenti” is reflected in the underlying source code on Respondent’s the webpage, this is a normal function – text that appears on a webpage is also present in the webpage’s underlying source code, because the browser renders the visible text from the HTML that makes

up that source code. In other words, any text a user sees on the webpage (headings, paragraphs, labels, navigation items, etc.) must exist somewhere in the HTML source, unless it is being dynamically inserted e.g., by JavaScript.

Moreover, under the circumstances of this case, where Respondent in good faith has challenged Complainant’s contentions of bad faith and trademark infringement, Respondent’s continued use of the Domain Name after receiving Complainant’s demand notice is not to be considered evidence of bad faith, nor does Respondent’s use of a privacy service for registration of the Domain Name change the Panel’s view.

Finally, the Panel emphasizes that its determination is limited to the requirements of the Policy and makes no finding as to whether any use of the Domain Name would (or would not) constitute trademark infringement or otherwise violate applicable U.S. law.

For all of the above reasons, the Panel finds on the balance of the probabilities that before notice of this dispute, Respondent was using the Domain Name in connection with a bona fide offering of goods and services, thereby giving rise to rights and legitimate interests in the Domain Name, and correspondingly, Complainant has failed to demonstrate Respondent registered and is using the Domain Name in bad faith.

Accordingly, the Panel concludes that Complainant has not established the third element of the Complaint.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Christopher S. Gibson/ Christopher S. Gibson Sole Panelist
Date: December 13, 2025

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