A crucial aspect of the UDRP process is the Complainant’s responsibility to demonstrate that the Respondent registered and used the domain in bad faith.
The domain’s registration date plays a key role here: if the domain was registered before the referenced brand became well-known or secured a trademark, this UDRP element is likely to fail.
In the case of Grand Complications N.V. vs. a Respondent located in Afghanistan, the domains involved were gembetsg.com and gembet.asia.
The GEMBET mark is distinctive and as such the first element of the Complaint was established. Despite the Respondent’s lack of a response, the Forum panelist noted that both domains were registered several months before the Complainant’s mark was registered. Despite the Respondent’s obvious attempt to pass off as the Complainant, the brand’s registration post-dates the date of the domains’ registration:
“Even assuming, as alleged by Complainant, that Respondent has used the domain names in bad faith to mimic the appearance and content style of Complainant’s legitimate website, such bad faith use cannot turn good faith use into bad.”
Final decision: Deny the transfer of the domain names gembetsg.com and gembet.asia.
Copyright © 2025 DomainGang.com · All Rights Reserved.Grand Complications N.V. v. bas
Claim Number: FA2412002129594
PARTIES
Complainant is Grand Complications N.V. (“Complainant”), represented by Christiana Georgiou of Grand Complications N.V., Cyprus. Respondent is bas (“Respondent”), Afghanistan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are gembetsg.com and gembet.asia, registered with Namesilo, Llc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on December 16, 2024. Forum received payment on December 16, 2024.
On December 16, 2024 and December 19, 2024, Namesilo, Llc confirmed by e-mail to Forum that the gembetsg.com and gembet.asia domain names are registered with Namesilo, Llc and that Respondent is the current registrant of the names. Namesilo, Llc has verified that Respondent is bound by the Namesilo, Llc 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 December 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 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@gembetsg.com, postmaster@gembet.asia. Also on December 20, 2024, 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 January 13, 2025, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Grand Complications N.V., holds valid trademark rights in the mark GEMBET. The Complainant’s mark is registered with the Bureau of Intellectual Property of Curaçao and the UK Intellectual Property Office.
The gembetsg.com and gembet.asia domain names are confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the domain names. Complainant has not authorized or licensed Respondent to use its mark. Upon information and belief, Respondent is not commonly known by the domain names and is using them solely for the purpose of diverting traffic and trading on the goodwill associated with Complainant’s mark.
Respondent’s registration and use of the domain names constitute bad faith under the UDRP. The domain names are being used to create a likelihood of confusion with Complainant’s mark, suggesting a non-existent association with or endorsement by Complainant.
The domain names redirect to a website that mimics the appearance and content style of Complainant’s legitimate site, misleading users into believing that the infringing sites are affiliated with or endorsed by Complainant. Evidence of this bad faith use is attached as Exhibit A, which includes screenshots of some of the pages of the infringing site, demonstrating their similarity to Complainant’s own website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has failed to establish all the elements entitling it to relief.
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
Complainant has shown that it has rights in the word mark GEMBET, through registrations with the Bureau for Intellectual Property Curaçao (Reg. No. 21020, registered on April 18, 2024, with effect from the date of filing, April 8, 2024) and the UK Intellectual Property Office (Reg. No. UK00004045458, registered on July 19, 2024, effective as of April 29, 2024).
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 Panel finds Respondent’s gembet.asia domain name to be identical to Complainant’s GEMBET mark and the gembetsg.com domain name to be confusingly similar to Complainant’s mark, only differing by the addition of the geographic abbreviation for Singapore, “sg” which is insufficient to distinguish the domain name from the mark. The inconsequential “.asia” and “.com” generic top-level domains (“gTLDs”) may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
In light of the Panel’s findings below it is unnecessary to consider this element.
Registration and Use in Bad Faith
Policy ¶ 4(a)(iii) is expressed in the conjunctive: “the domain name has been registered and is being used in bad faith”.
The gembet.asia domain name was registered on May 31, 2023 and the gembetsg.com domain name was registered on November 13, 2023, in each case several months before the effective dates of Complainant’s registered marks.
As stated in “UDRP Perspectives on recent jurisprudence, vol.4.30” at paragraph 3.2:
“UDRP Panels routinely determine that a domain name could not have been registered in bad faith when the registration pre-dates a trademark right. It is axiomatic that a Respondent could not have registered a domain name in bad faith before a Complainant acquired rights in the corresponding trademark.
For bad faith registration to have occurred, the trademark must predate the Respondent’s domain name registration. There is one limited exception to the general rule, namely where the domain name was registered because of “nascent” trademark rights, such as where the Respondent registered the domain name as a result of the Complainant’s announcement of a new corporate name or where the Respondent registered the domain name because of the Complainant’s trademark application.”
There is no evidence before the Panel that Respondent could have known of any nascent rights in Complainant’s GEMBET mark when Respondent registered the gembetsg.com and gembet.asia domain names. Complainant makes no claim to common law trademark rights and there is no evidence of any announcement of Complainant’s GEMBET name prior to the registration of the domain names.
Even assuming, as alleged by Complainant, that Respondent has used the domain names in bad faith to mimic the appearance and content style of Complainant’s legitimate website, such bad faith use cannot turn good faith use into bad. See Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005.
Accordingly, the Panel finds that the gembetsg.com and gembet.asia domain names were not registered in bad faith.
Complainant has failed to establish this element.
DECISION
Complainant 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 gembetsg.com and gembet.asia domain names REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: January 14, 2025