Themis Solutions Inc. filed a UDRP to get the domain Clio.ai from its registrant, a domain investor.
The 3 member Forum panel found that while the domain name was confusingly similar to the Complainant’s CLIO trademark, the Respondent, a domain investor, demonstrated legitimate interests in the name and no evidence showed it was registered or used in bad faith.
The panel noted that “Clio” has multiple common and historical meanings (Greek mythology, geographic names) and found Respondent’s pattern of registering such names credible and non-targeting.
In fact, the Respondent owns domains matching other Greek mythology figures, such as Athena.ai, Aphrodite.ai, Hera.ai, and Demeter.ai.
Final decision: Deny the transfer of the domain Clio.ai to the Complainant. The gods of Olympus were on the Respondent’s side.
Copyright © 2025 DomainGang.com · All Rights Reserved.Themis Solutions Inc. v. Narendra Ghimire / Deep Vision Architects
Claim Number: FA2502002139218
PARTIES
Complainant is Themis Solutions Inc. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Narendra Ghimire / Deep Vision Architects (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is clio.ai, registered with Dynadot Inc.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Sandra J. Franklin and Nick J. Gardner as Panelists and Steven M. Levy as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 7, 2025; Forum received payment on March 17, 2025.
On March 18, 2025, Dynadot Inc confirmed by e-mail to Forum that the clio.ai domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 18, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@clio.ai. Also on March 18, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 11, 2025.
On April 23, 2025, Complainant’s Addition Submission was received by Forum and, on the same date, Respondent submitted an email communication to Forum.
On April 23, 2025, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, Forum appointed Sandra J. Franklin and Nick J. Gardner as Panelists and Steven M. Levy as Chair.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since at least as early as October 1, 2008, Complainant has used the trademark CLIO in connection with software for law practice management and administration, provided via download and service (SAAS), and related goods and services including a suite of cloud-based solutions such as legal CRM software. Complainant also provides, under the CLIO mark, information regarding technology products and services to state bar associations, law firms and other legal associations, and a website featuring information in the legal field and educational services. The CLIO mark has been registered in various forms in Classes 9 and 42 for computer software for law firm practice management and administration at the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4319280 dated April 16, 2013 and Reg. No. 5117198 dated January 10, 2017) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA944845 dated August 2, 2016 and Reg. No. TMA812223 dated November 21, 2011).
The clio.ai domain name, registered on September 7, 2021, is identical or confusingly similar to the CLIO mark as it consists entirely of the mark, adding only the “.ai” TLD.
Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known thereby and it has offered the domain name for sale at the very high price of CAD $475,931.62 (approximately USD $336,105.15) that is set based on Complainant’s use of artificial intelligence in its services and the value of Complainant’s mark. Complainant refers to a number of previous UDRP decisions in support of its case including in particular All Star C.V., Converse, Inc. v. Narendra Ghimire, Case No. DCO2024-0014 (WIPO June 3, 2024). This was another case concerning the Respondent and related to the domain name converse.co. The Panel in that case concluded that the price which the Respondent was asking (approximately US$ 300,000) for the domain name supported an inference that it was targeting the complainant in that case, as it appeared it was the only user of the trademark “converse” that would have the means to afford the price demanded.
The disputed domain name was registered and is used in bad faith where it is not reasonable to believe that Respondent had not heard of Complainant prior to registering the domain name and Respondent is opportunistically selling the domain name based on Complainant’s use of artificial intelligence in its services and the value of Complainant’s mark.
B. Respondent
Respondent is a domain name investor who purchases and sells generic and descriptive domain names as part of its business. The disputed domain name consists of a four-letter name of a Greek goddess which is non-distinctively and concurrently used by many persons as a personal name and by many other companies as a trademark for various goods and services. As such, the domain name is consistent with a pattern of registrations undertaken by the Respondent involving short domain names, personal names, and the names of mythological figures. Further, the domain name was registered by the Respondent years before the Complainant’s claimed 2023 launch of an artificial intelligence product, and nowhere does the Complainant show that the Respondent has used the domain name in any manner suggesting an association with or targeting of the Complainant’s goods or services associated with the asserted mark.
C. Complainant’s Additional Submission
Although there are other companies using the term CLIO for various goods and services, Complainant is the only one that published blogs and offered webinars regarding the use of artificial intelligence in legal practices in the months leading up to the domain registration date. Further, Respondent, does not deny, “on penalty of perjury,” that he had no knowledge of the Complainant’s rights before he registered the disputed domain name. Finally, according to the estibot.com website, a “fair market value” for the disputed domain name is $15,000.00.
FINDINGS
– Complainant has rights in the CLIO trademark and the clio.ai domain name is identical or confusingly similar to the mark;
– Complainant has not made a prima facie case that the general offer of the disputed domain name for sale by Respondent, a domain name investor, is not a bona fide offering of goods or services; and
– There is insufficient evidence upon which to conclude that Respondent registered the disputed domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant asserts rights in the CLIO trademark through its registration with the national trademark offices of the United States of America and of Canada. Registration of a mark in this manner is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”) Here, Complainant provides screenshots from the USPTO and CIPO websites showing the particulars of its registrations. Based on this information, the Panel finds that Complainant has rights in the CLIO trademark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s clio.ai domain name is identical or confusingly similar to its mark because the disputed domain name incorporates the CLIO mark in its entirety and only adds the “.ai” TLD. The use of an entire trademark and the addition only of a TLD is not sufficient to distinguish a disputed domain name from an asserted mark. See Rollerblade, Inc. v. Chris McCrady, D2000-0429 (WIPO June 25, 2000) (“There can be no question that Respondent’s domain name ROLLERBLADE.NET is identical to Complainant’s trademark ‘Rollerblade’, and this Panel so finds. It is already well established that the specific top level of the domain name such as ‘net’ or ‘com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”) The Panel further notes that although the “.ai” top-level domain can be a reference to “artificial intelligence”, it is also the country code top-level domain (“ccTLD”) for Anguilla and finds that the “.ai” TLD is not relevant to the ¶ 4(a)(i) confusing similarity analysis. The Panel thus finds that the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant first argues that Respondent lacks rights or legitimate interest in the clio.ai domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the CLIO mark or register domain names using the mark. In considering this issue, WHOIS information may be reviewed to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information bore no resemblance to the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS record for the clio.ai domain name, as revealed by the concerned Registrar after the Complaint was filed, identifies Respondent as “Narendra Ghimire / Deep Vision Architects”. There is no evidence that Respondent is known by the term “Clio”. Furthermore, Complainant specifically notes that “Respondent is not an agent or licensee of any of the Complainant” and Respondent does not contest this. Therefore, the Panel finds no evidence that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
However, Respondent asserts that it does have rights or legitimate interests in the disputed domain name as it is an investor who is in the business of buying and selling domain names and the disputed domain name is a dictionary word and a common name that does not target Complainant’s mark. It is well established that the listing of generic or descriptive domain names for general sale can be a bona fide offering under Policy ¶ 4(c)(i) where the domain name is not improperly targeted at a complainant. See The Clash Of Trademarks And Domain Names On The Internet, at 496 (Gerald M. Levine, Legal Corner Press, 2024) (“An offer to sell a disputed domain name to anyone is not a violation, except it is when the value the domain name claims to have is derivative of the mark.”) Also Young Pharmaceuticals, Inc. v. Xiaopeng Zhou, D2024-1699 (WIPO July 11, 2014), (“Dealing in domain names in the secondary market is a legitimate trading activity.”) Respondent has listed the disputed domain name in a GoDaddy auction page at a price of CAD $475,931.62 (approximately USD $336,105.15) and Complainant asserts that this price “is only because the Domain Name is a reproduction of the Complainant’s trademark…” Respondent replies that “common, non-exclusive personal names have independent commercial value, apart from their incidental use as trademarks” and claims that the “disputed domain name here is a four-letter personal name, being one of the nine Greek muses.” It further notes that it has demonstrated a pattern of registering dictionary words and first names, many from Greek mythology, as domain names in the “.ai” TLD and it submits WHOIS records showing its ownership of such names as athena.ai, aphrodite.ai, hera.ai, demeter.ai, theta.ai, and clavis.ai, amongst a list of approximately thirty domains. It also notes that the term “Clio” has many other uses such as the geographic name of several cities, the name of a number of notable persons, certain technical acronyms, and even many uses as a trademark, e.g., by Renault (a popular automobile model) and the “Clio Awards” for excellence in advertising. Finally, it denies knowledge of Complainant’s mark at the time the domain name was registered, and notes that its offer to sell is made generally and asserts that there is a “complete absence of any evidence whatsoever demonstrating targeting of the Complainant…” Complainant asserts that “it is not reasonable to believe that Respondent had not heard of Complainant prior to the Domain Registration Date” as its move into the AI space could have easily been found through an online search and that Respondent must have been following the development of Complainant’s business as the disputed domain name was registered just one day prior to that on which “Complainant acquired legal document automation company Lawyaw—document automation being a benefit commonly associated with artificial intelligence.” In any case, as mentioned above, while the “.ai” TLD may refer to artificial intelligence, it is also the ccTLD for Anguilla.
Upon reviewing the entirety of the parties’ submissions, the Panel finds that Complainant’s case is circumstantial, speculative, and can be distilled down to two key elements. It argues that Respondent’s use is not bona fide and it must have targeted Complainant because 1) the sale price of the disputed domain name was set at a level that only a small number of companies could afford; and 2) Respondent must have been aware of Complainant’s planned entrance into the AI space. However, the Panel finds neither ground convincing. The purchasing and sale of generic or descriptive domain names is a bona fide offering under the Policy so long as infringing or cybersquatting intent is not evident. Under such circumstances, an investor is entitled to set whatever price it likes for its offerings. Here, there is significant evidence that the word “Clio” has numerous meanings and uses beyond Complainant’s mark and there is nothing on the auction website that refers or relates to Complainant. Respondent’s pattern of owning other descriptive marks is also a mitigating factor as is its success in defeating a number of past UDRP claims against it. See, e.g., Abnormal Security Corporation v. Narendra Ghimire, FA 2099733 (Forum July 26, 2024) (claim denied against abnormal.ai where “[t]he word ‘abnormal’ is an ordinary dictionary word in the English language and therefore, in the absence of compelling evidence of bad intention or other reason to doubt the propriety of the Respondent’s conduct, it has the right to use it and hence a legitimate interest in it.”) The Panel is not persuaded that the decision in All Star C.V., Converse, Inc. v. Narendra Ghimire, Case No. DCO2024-0014 supports an inference that the Respondent must have had the Complainant in mind when it registered the disputed domain name. In that case the Respondent had conceded awareness of the complainant and its rights at the time it registered the domain name at issue. The Panel also found that the complainant’s “Converse” trademark was famous globally. The facts in the present case are materially different in this regard. Further the Respondent has demonstrated in the present case that his registration of the disputed domain name was part of a pattern of registering domain names corresponding to names with a Greek mythological meaning, which seems to the Panel to be a credible strategy for selecting domain names and which has nothing to do with the Complainant. Finally, as Complainant is in a rather niche field of business (i.e., law firm management and administration) and the Panel is not prepared to make the leap, based on the very speculative assertions and limited evidence presented, that Respondent knew or should have known of Complainant or its plans to associate the name “Clio” with AI services.
For the reasons stated above, the Panel finds that Complainant has not made a prima facie case, based on a preponderance of the evidence, that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i).
Registration and Use in Bad Faith
Bad faith, under the Policy, is predicated on a respondent specifically targeting the asserted mark of the complainant and this “can be established by either direct evidence (e.g. content of the website) or circumstantial evidence such as strength of the mark and nature of a disputed domain name (e.g. mark plus a term describing Complainant’s business), timing of registration of a domain name and timing of trademark registration, geographic proximity of the parties.” UDRP Perspectives on Recent Jurisprudence, § 3.3 (updated Jan. 15, 2025), available at https://udrpperspectives.org). As noted in the previous section, the Panel cannot conclude that Respondent knew of or targeted Complainant’s CLIO mark at the time that it registered the disputed domain name. Thus, there is insufficient evidence to support the claim that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the clio.ai domain name REMAIN WITH Respondent.
Sandra J. Franklin, Panelist
Nick J. Gardner, Panelist
Steven M. Levy, Chair
Dated: May 8, 2025
