DecodeAge.com registrant won UDRP with Reverse Domain Name Hijacking finding

The WIPO Panel denied Spartacus Brands LLC’s complaint over the domain DecodeAge.com, finding that although the domain was confusingly similar to the Complainant’s CODEAGE trademark, the Respondent had legitimate rights due to its prior trademark registrations and use of “DECODE AGE” in India.

The Panel also found the Complaint was brought in bad faith, noting that the Complainant failed to disclose key facts, including the Respondent’s trademark rights and responses to cease and desist efforts, concluding that this was a case of Reverse Domain Name Hijacking.

ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Spartacus Brands LLC v. Parth Amin, CEO, Centenarians Life Sciences Pvt Ltd
Case No. D2025-1023

1. The Parties

The Complainant is Spartacus Brands LLC, United States of America (“United States”), represented by OMNI Legal Group, PLC, United States.

The Respondent is Parth Amin, CEO, Centenarians Life Sciences Pvt Ltd, India, represented by Fidus Law Chambers, India.

2. The Domain Name and Registrar

The disputed domain name decodeage.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 March 12, 2025. On March 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2025, 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 (Domains by Proxy, LLC / Parth Amin, CEO, Centenarians Life Sciences PVT LTD) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 17, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not file an amendment to the Complaint.

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 19, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2025. The Respondent requested the automatic four calendar day extension for Response under paragraph 5(b) of the Rules. The Center granted the extension, and the due date for Response was set for April 12, 2025. The Response was filed with the Center on April 8, 2025.
On April 17, 2025, the Complainant submitted an unsolicited supplemental filing.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 23, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On April 24, 2025, the Respondent submitted a supplemental filing to the Center in response to the unsolicited supplemental filing by the Complainant.

4. Factual Background

The Complainant is a company headquartered in the United States which offers for sale a broad range of “high-quality nutritional supplements configured to support healthy aging, weight management, sport and fitness conditioning, and beauty, among other concerns”.

The Respondent is based in India where, according to the Response, it provides high-quality nutraceuticals, diagnostic tests, educational resource and other things related to extending human health and lifespan.

According to the Complaint, the Complainant registered the domain name codeage.com in 2012. Also according to the Complaint, the Complainant began using the trademark CODEAGE or CODE AGE in or about 2016 or 2017. The Complainant says its products are now distributed under this trademark throughout the United States and around the world.

According to “SimilarWeb”, the Complainant’s website at “www.codeage.com” received almost 209,000 visits in January 2025, making it the 653rd most popular website in the field of nutrition, diets and fitness in the United States. When the Complaint was filed, the Complainant’s Instagram account (“instragram.com/thecodeage”) had 58,000 followers, and its Facebook page (“facebook.com/codeage”) had 43,000 followers.

The Complaint includes evidence that the Complainant has registered numerous trademarks in the United States and other countries for CODEAGE or CODE AGE. These include:

(1) United States Registered Trademarks for CODE AGE:

a. No. 5,339,634, which was registered on November 21, 2017 in the Principal Register in respect of dietary supplements, nutritional supplements and vitamins in International Class 5 and claiming a first use in commerce on March 31, 2017; and

b. No. 6,957,518, CODE AGE, which was registered on January 17, 2023 in the Principal Register in respect of online wholesale and retail store services featuring general consumer merchandise in International Class 35 and claiming a first use in commerce on March 31, 2017 also;

(2) United States Registered Trademarks for CODEAGE:

a. No. 5,685,538 which was registered on February 26, 2019 in respect of dietary supplements, food supplements, nutritional supplements and vitamins in International Class 5 and claiming a first use in commerce on June 1, 2018; and

b. No. 7,350,817 which was registered on April 9, 2024 in the Principal Register in respect of online wholesale and retail store services featuring general consumer merchandise in International Class 35 and claiming a first use in commerce on April 1, 2017;

(3) International Registration No. 1541779, CODEAGE, which was registered on June 17, 2020 in respect of dietary supplements, food supplements, nutritional supplements and vitamins in International Class 5 and designating Australia;

(4) Indian Registered Trademark No. 6190525, CODEAGE, in respect of dietary supplements, food supplements, nutritional supplements and vitamins in International Class 5, the application for which was filed on November 20, 2023 and registration effected on or about December 18, 2023.

The Complaint also includes evidence of a number of other registered trademarks extending coverage to Canada, Colombia, Indonesia, Japan, Mexico, the United Kingdom, and Viet Nam.

The disputed domain name was registered on April 29, 2022.

It resolves to a website promoting the Respondent’s services and products relating to combatting ageing. The product offerings include science-based supplements, a Biome Test, a Blood Age Test and a quiz relating to boosting longevity. The website is branded DECODE AGE.

The Respondent was incorporated in 2021 and, according to the Response, has been using the trademark DECODE AGE since August 2021.

The Respondent’s LinkedIn account has 14,000 followers; for its YouTube channel, 1,430 subscribers; for its Instagram page, 17,500 followers; and its Facebook page has 12,000 followers.

On June 27, 2022, the Respondent applied to register three trademarks in India, Nos 550595, 550596 and 550597, DECODE AGE (fancy), for goods and services in, respectively, International Classes 1 (for a range of goods including chemical products used in food supplements and dietary supplements), 5 (for goods including food supplements and dietic supplements) and 42. All three had been registered before the Complaint was filed.

On May 29, 2024, the Complainant commenced proceedings against the Respondent in the United States for, amongst other things, trademark infringement. The Respondent states (and the Complainant has not disputed) that it ceased marketing its products in the United States under the trademark DECODE AGE in June 2024. The Complainant, however, demanded that the Respondent cease using the trademark worldwide and transfer the disputed domain name to it. The Respondent has not complied with these demands.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(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.

Paragraph 15(a) of the Rules directs the Panel to decide the 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.

A. Supplemental Filings

As noted above, the Complainant has submitted an unsolicited supplemental filing seeking to establish its use of its trademark in India.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.

In the present case, the Respondent makes a compelling case that acceptance of the supplemental filing should be refused. While the formal name of the registrant recorded in the WhoIs report did not disclose the Respondent’s identity, the Complainant was put clearly on notice that the Respondent was the registrant by the Registrar’s Verification Response. Even though the Complainant was already engaged in litigation against the Respondent, it did not seek to amend the Complaint in response to the Center’s invitation. The materials which the Complainant wishes to submit could have, and should have, been submitted through an Amended Complaint on receipt of the Registrar’s Verification Response.

Notwithstanding, the Panel has decided in the exercise of its discretion to admit the Complainant’s supplemental filing and the Respondent’s answering supplemental filing.

B. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

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

The Complainant has proven ownership of numerous registered trademarks for CODEAGE / CODE AGE.

In comparing the disputed domain name to the Complainant’s trademark it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.

Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark and the prefix “de”. As this requirement under the Policy is essentially a standing requirement, the addition of this term does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name.

The Respondent disputes this conclusion arguing that the Complainant has no use or reputation in India and its trademark rights in India are later in time to the Respondent’s own rights. The Respondent also contends it is appropriate to reject the Complainant’s claims at this stage as (according to the Respondent) it is obvious that the Respondent’s website does not trade off the Complainant’s trademark or reputation.

These arguments proceed from a misconception of the nature of the inquiry at this stage under the Policy. The comparison of the disputed domain name to the Complainant’s trademark simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties, the date they were acquired and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy and are better addressed in those contexts. See e.g., WIPO Overview 3.0, section 1.7.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.

C. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

There is no dispute between the Parties that:

(1) The Respondent registered the disputed domain name after the Complainant began using the trademark in 2017 and also after the Complainant had registered its trademark (outside India);

(2) The Respondent is not affiliated with the Complainant;

(3) The Complainant has not otherwise authorised the Respondent to use the disputed domain name;

(4) The disputed domain name is not derived from the Respondent’s corporate name.

While the Respondent adopted its trademark, DECODE AGE, after the Complainant began using CODE AGE / CODEAGE, the Respondent contends that it has priority in India from both use and registration before the Complainant began using or registered its trademark in India.

In its supplemental filing, the Complainant seeks to establish that its products have been offered for sale and sold in India since at least 2019. The Respondent advances powerful criticisms to the cogency of that evidence.

Even accepting the Complainant’s claims at face value, the Complainant is confronted by the fact that the Respondent has successfully registered its trademark in India for the goods and services it is offering.

In addition to giving the owner rights against third parties, registration of a trademark in India also gives its owner protections against other trademarks. In particular, the Trade Marks Act 1999 in India provides in section 30:

“30. Limits on effect of registered trade mark.

“(2) A registered trademark is not infringed where –

“(e) the use of a registered trade mark, being one of two or more trade marks registered under this
Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade
mark given by registration under this Act.”

While final determinations of trademark infringement and validity lie within the purview of the relevant courts having jurisdiction, the effect of s 30(2)(e) in the circumstances of this case appears to be that the Respondent’s use of its registered trademarks in India in respect of the goods and services covered by the Respondent’s own registered trademarks would give rise to rights or legitimate interests in the disputed domain name under the Policy.

First, as described above, the goods and services being offered through the Respondent’s business under the name DECODE AGE appear to fall well within the specifications of goods and services of the Respondent’s trademarks.

Further, the semantic meaning conveyed by the Respondent’s trademark (as opposed to the alphanumeric string comprised in its domain name) is or appears to be different to the meaning (if any) conveyed by the Complainant’s trademark.

In addition, while the Complainant’s supplemental filing provides some evidence supporting its claim to have started selling its products in 2019, the evidence does not allow the Panel to draw conclusions about how extensive any sales were or whether a significant reputation had developed in India.

Further still, at least following the commencement of the proceedings in the United States, the Respondent has stated (and the Complainant has not disputed) that the Respondent withdrew its products from the United States market and is now confined just to servicing the Indian market.

In these circumstances, therefore, the Respondent appears to have rights or a legitimate interest in using the disputed domain name (which essentially corresponds to the disputed domain name) in India in connection with its business.

On the facts outlined in the Complainant’s supplemental filing, it may be possible for the Complainant to challenge the validity of the Respondent’s registered trademarks. Those facts, however, are contested by the Respondent. Furthermore, the circumstances of this case fall well short of those which typically permit the Panel to decline to find rights or legitimate interests where a respondent relies on its own registered trademarks. WIPO Overview 3.0, section 2.12.

Accordingly, the Panel finds the Complainant has not established the second requirement under the Policy.

D. Registered and Used in Bad Faith

As the Complaint must fail, no good purpose would be served by addressing this requirement.

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 Reverse Domain Name Hijacking or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16.

In the present case, however, the Panel considers a finding of reverse domain name hijacking is appropriate.

First, the Complainant was already engaged in litigation with the Respondent before filing the Complaint. That factor is not necessarily decisive in and of itself.

Secondly, the Complainant was fully aware of the identity of the Respondent and its activities. However, it made no attempt to address that (including the Respondent’s activities being located in India) even after the Registrar Verification Response was received and the Center invited the Complainant to submit an amended Complaint.

Thirdly, in particular, it seems highly likely that the Complainant was aware that the Respondent already had registered trademarks in India corresponding to the disputed domain name as its own application was filed after the Respondent’s application and, if the Indian authorities considered the two marks confusingly similar in the trademark law sense, the Respondent’s trademark would have been raised against it. However, the Complainant did not disclose those facts.

Fourthly, the Complainant alleged that it had sent “several cease and desist letters” to the Respondent but the “Respondent has failed to meaningfully respond to Complainant’s attempts to reach them or to accept service of process.” On a superficial view those allegations conveyed an impression that the Respondent had ignored the Complainant’s demands. In fact, however, the Respondent’s Indian attorney responded shortly after the proceedings were initiated to inform the Complainant that the Respondent had ceased offering its products in the United States. The Complainant’s allegations also suggest that the Respondent has been evading service. However, it appears to have a registered office and a substantial Internet and social media presence.

6. Decision

For the foregoing reasons, the Complaint is denied. Moreover, the Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking.

/Warwick A. Rothnie/
Warwick A. Rothnie
Sole Panelist
Date: May 16, 2025

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