ContractPod.AI UDRP: Trademark holder shouldn’t have to register the .AI variant

ContractPodAI is a legal technology company that provides an AI-powered contract lifecycle management (CLM) platform. It helps businesses streamline contract creation, negotiation, execution, and compliance using automation, AI, and analytics. The platform integrates with various enterprise tools and is designed to improve efficiency in legal and contract management processes.

The company operates from the domain ContractPod.com that forwards to their own ContractPodAI.com. The company filed a UDRP against the registrant of the domain ContractPod.ai.

It was a clear cut case of cybersquatting, as the Complainant has been operating since 2018 using the CONTRACTPOD mark in the UK. The Respondent did not respond. Said the Forum panelist:

“Complainant demonstrates that Respondent does not make an active use of the contractpod.ai domain name, as it resolves to the message “This site can’t be reached”. Therefore, Respondent cannot establish a bona fide offering of goods or services or a legitimate noncommercial or fair use.”

Final decision: Grant the transfer of the domain ContractPod.ai to the Complainant.

ContractPod Technologies Limited v. Registration Private / Domains By Proxy, LLC

Claim Number: FA2502002139748

PARTIES

Complainant is ContractPod Technologies Limited (“Complainant”), represented by Isabelle Jung Greenberg of CRGO LAW, Florida, USA. Respondent is Registration Private / Domains By Proxy, LLC (“Respondent”), Arizona, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is contractpod.ai, registered with 1API GmbH.

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 Panelist in this proceeding.

Sandra J. Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 11, 2025; Forum received payment on February 11, 2025.

On February 13, 2025, 1API GmbH confirmed by e-mail to Forum that the contractpod.ai domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 February 14, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@contractpod.ai. Also on February 14, 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.

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

On March 7, 2025, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin as Panelist.

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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s contractpod.ai domain name is confusingly similar to Complainant’s CONTRACTPODAI mark.

2. Respondent does not have any rights or legitimate interests in the contractpod.ai domain name.

3. Respondent registered and uses the contractpod.ai domain name in bad faith.

B. Respondent did not file a Response.

FINDINGS

Complainant provides software and related products and services and holds a registration for the CONTRACTPOD mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00003376697, registered May 10, 2019). Complainant began advertising its goods and services in June 2018. Complainant conducts business at contractpodai.com.

Respondent registered the contractpod.ai domain name on September 20, 2019, and it resolves to an inactive page.

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.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

The Panel finds that Complainant has rights in the CONTRACTPODAI mark based on registration with the UKIPO and continuous use since 2018. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”)

Respondent’s contractpod.ai domain name uses the CONTRACTPODAI mark, with the “ai” appearing as a top-level domain. This change does not distinguish a disputed domain name from a mark for the purposes of Policy ¶ 4(a)(i). See e.g. Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition or subtraction of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.) The Panel therefore finds that Respondent’s contractpod.ai domain name confusingly similar to Complainant’s CONTRACTPODAI mark.

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show 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 asserts that Respondent has no rights or legitimate interests in the contractpod.ai domain name, as Respondent is not commonly known by the domain name, and Complainant has not authorized or licensed Respondent to use its CONTRACTPODAI mark. The WHOIS information identifies Respondent as “Registration Private / Domains By Proxy, LLC”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”)

Complainant demonstrates that Respondent does not make an active use of the contractpod.ai domain name, as it resolves to the message “This site can’t be reached”. Therefore, Respondent cannot establish a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel therefore finds that Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”)

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and uses the contractpod.ai domain name in bad faith as Respondent fails to make an active use of the domain name. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”)

The Panel also finds that Respondent registered the contractpod.ai domain name with actual knowledge of Complainant’s rights in the CONTRACTPODAI mark, as the domain name exactly copies Complainant’s mark, and finds further bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the contractpod.ai domain name be TRANSFERRED from Respondent to Complainant.

Sandra J. Franklin, Panelist

Dated: March 8, 2025

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