Gutex.com UDRP: WIPO decision a triumph for domain investor!

Domain investor David Lahoti has scored a double UDRP victory, first with the favorable decision on SSTowing.com (RDNH) and now with Gutex.com.

Both domains were sent to arbitration and in both cases SyncPoint, Inc.—David Lahoti’s domain holding company—emerged victorious.

The WIPO panelist aligned with the Respondent’s claims:

“In the Panel’s view, the Complainant’s GUTEX trademark is not well-known to the public at large in the United States. The Complainant provided no evidence that would suggest that a person in California (where the Respondent is located) should have been aware of the Complainant or its GUTEX trademark. In short, there is no evidence presented by the Complainant that the Respondent had the Complainant in mind when he acquired the disputed domain name from the previous registrant. Accordingly, considering the materials in the case file, the Panel finds the Respondent’s assertion believable, namely that the Respondent was not aware of the Complainant or its GUTEX mark when it acquired the disputed domain name in 2021.”

Final decision: Deny the transfer of the domain Gutex.com to the Complainant. The Respondent’s request for a finding of Reverse Domain Name Hijacking was denied, based on the Complainant’s registration of the GUTEX mark prior to the acquisition of the domain by the Respondent.

ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
GUTEX Holzfaserplattenwerk H. Henselmann GmbH + Co. KG v. Super Privacy Service LTD c/o Dynadot, Tech Ops SyncPoint, Inc./ Mr. David Lahoti
Case No. D2025-1056

1. The Parties

The Complainant is GUTEX Holzfaserplattenwerk H. Henselmann GmbH + Co. KG, Germany, represented by Maucher Jenkins, Germany.

The Respondent is Super Privacy Service LTD c/o Dynadot, Tech Ops SyncPoint, Inc./ Mr. David Lahoti, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name gutex.com is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2025. On March 14, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 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 (Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 21, 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 the Respondent of the Complaint, and the proceedings commenced on March 28, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2025. The Response was filed with the Center on April 16, 2025.
The Center appointed John Swinson as the sole panelist in this matter on April 28, 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

The Complainant is a Germany company that is a manufacturer of wood fibre insulation, operating as a family-owned business in the southern Black Forest of Germany since 1932. The Complainant has more than 300 employees and annual revenue of EUR116 million (2023). The Complainant primarily distributes its products through professional building material and wood trade channels to craftsmen and builders, with a strong presence in Germany, Austria, Switzerland, France, and the Benelux countries, among others. The Complainant also distributes its wood fibre insulation materials in the United States and Canada.

The Complainant owns a portfolio of trademark registrations for GUTEX, including European Union Trade Mark Registration No. 004928362 for GUTEX in classes 17 and 19, filed on February 28, 2006 and registered on March 15, 2007.

The Complainant also owns U.S. Trademark Registration No. 79263225 for GUTEX in classes 6, 17, and 19, filed on March 11, 2019 and registered on January 5, 2021.

The Complainant owns and uses domain names such as gutex.de and gutex.co.uk.

The disputed domain name was registered on July 13, 2014.

The First Respondent SyncPoint, Inc. is a domain name investor from California, United States. The First Respondent acquired the disputed domain name from its prior owner on August 16, 2021, via GoDaddy Auctions. Apparently, the previous owner was also a domain name investor.

At one time, the disputed domain name resolved to a webpage with the title “GUTEX.com – Site Name Reserved”. This webpage included about 10 boxes, each with a domain name listed along with a dollar figure. The disputed domain name is listed in the first box without a dollar amount and a “Contact via WhatsApp” button. (When clicking on a listed domain name, the user is redirected to almost identically designed webpage listing various domain names for sale.)

Currently, the disputed domain name resolves to a webpage the discusses the present dispute and that sets out a summary of the Respondent’s submissions as to why the Complainant should fail in its Complaint.

According to the Complaint, the Second Respondent, David Lahoti, is a well-known domain investor and entrepreneur, recognized for acquiring and registering generic and brandable domain names. David Lahoti is President and CEO of the First Respondent SyncPoint, Inc. For further background regarding David Lahoti, see So Bold Limited v. TechOps, VirtualPoint Inc., WIPO Case No. D2022-1100.

For the purposes of this decision, the Panel will refer to both of the Respondents as “the Respondent”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

In summary, the Complainant makes the following submissions:

The Complainant contends that the disputed domain name is identical to a registered trademark in which the Complainant has rights.

GUTEX is a distinctive invented word which is well-known internationally in connection with the Complainant. This is illustrated by the screenshots provided by the Complainant, which include two U.S. online articles, a Wikipedia entry, and Google search results. As far as the Complainant is aware, it was the very first company in the world to create and use the name GUTEX. The very first GUTEX trademark of the Complainant was filed with the German Patent and Trademark Office in 1938.

The average consumer encountering the disputed domain name is likely to assume that it links to a website that is that of, or is in some way connected to, the Complainant. Taking the reputation of the GUTEX mark into account, the disputed domain name is likely to be understood as denoting a website of the Complainant or of a business that is in some way affiliated with the Complainant or with its subsidiaries or related
companies.

The disputed domain name thus serves as the start site of a link tree. The Respondent uses it as a forwarding domain to various featured internet domains, which are for sale and to his own TikTok channel. There is no other content on this site. Following a press article published on January 16, 2024 concerning the Respondent, the Respondent aims at diverting domain traffic to his TikTok channel.

The domain names listed for sale on the website at the disputed domain name are top-tier names, all of which are globally protected by trademark rights for third parties.

In the past, David Lahoti has been involved in several legal disputes, including cases of alleged cybersquatting. David Lahoti is a well-known domain investor and entrepreneur, recognized for acquiring and registering generic and brandable domain names. David Lahoti has gained attention for redirecting his high-traffic, brandable domain names to his TikTok channel. This strategy has attracted users, many of whom express surprise and amusement at his use of domain names to promote playful and trolling content.

The fact that the disputed domain name re-directs to similar websites shows that the Respondent is in the business of selling domain name portfolios and that the Respondent is attempting to profit from either the sale of the domain names, constituting “cyber-squatting” or from generating massive traffic towards social media accounts owned by the Respondent.

The Respondent uses the Complainant’s trademark as a domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the GUTEX mark and registered the disputed domain name from the very beginning for purposes of subsequent resale including for a profit.

As evidenced above, the Complainant and its GUTEX mark are widely known internationally, and the Complainant’s services provided under the GUTEX Mark are widely publicised.

Registration of domain names in view of selling them afterwards does not constitute a bad faith activity per se. However, it does become an activity of bad faith when the domain name owner knows or should have known that he is registering a trademark of a third party. This is clearly the case here.

The Respondent has engaged in a pattern of activity of registering third parties’ trademarks as domain names.

The Respondent registered/renewed the disputed domain name from the very beginning for purposes of subsequent resale including for a profit. The Complainant was also involved in negotiations with the Respondent on a potential acquisition of the disputed domain name, whereby the Respondent asked for a minimal sales price of USD 100,000.

The disputed domain name is now being used to re-direct users to static websites and to the Respondent’s social media account on TikTok. Given that the Respondent’s business under the Respondent’s website relates to the sale of domain names, it is hard to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name in this context.

Furthermore, the use of the disputed domain name tarnishes the Complainant’s mark and may damage the good reputation of the Complainant, as Google displays a security warning when accessing the site.

B. Respondent

The Response was filed on behalf of SyncPoint, Inc.

The Respondent contends that the Complainant has not satisfied two of the elements required under the Policy for a transfer of the disputed domain name. The Respondent concedes the first element of the Policy.

In summary, the Respondent makes the following arguments:

The Respondent acquired the domain name via public auction in good faith and without any knowledge of the Complainant, its trademarks, or its business. The Complainant provided no proof that the Respondent had actual knowledge of the Complainant’s mark or business.

The Respondent has legitimate rights and interests based on the generic nature and inherent value of the disputed domain name, which is a 5-letter, brandable “.com” domain with no inherent association with wood fiber or insulation.

Numerous unrelated third-party businesses worldwide operate under the “GUTEX” name or mark, across industries and continents — including in Poland, Germany, India, Argentina, China, and Nigeria. These clearly demonstrate the mark is not exclusive to the Complainant.

The Respondent never contacted the Complainant. During negotiations initiated by the Complainant, the Complainant’s representative described himself in WhatsApp as a “startup founder and freelance consultant” with no website, never disclosing his ties to the Complainant. This was deceptive, and undermines any suggestion that the Respondent registered the domain with the Complainant in mind.

The disputed domain name has never resolved to a site targeting the Complainant or selling competing goods.

The domain was registered in 2014 and owned by a Korean domain investor from 2017–2021. The Complainant waited over 7 years to act, despite this public availability at a GoDaddy auction. This inaction undermines claims of harm or urgency.

Nearly every pronounceable five-letter domain in the “_utex.com” format (e.g., autex.com, butex.com, cutex.com) is already registered and in use or parked. This illustrates that the disputed domain name is inherently valuable in the domain name system, based on format alone — not trademark targeting.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(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.
The onus of proving these elements is on the Complainant.

An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants and respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence.

A. Identical or Confusingly Similar

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 shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

The Respondent has used the website at the disputed domain name to advertise for sale the disputed domain name and other domain names owned by the Respondent.

Prior decisions under the policy have found that offering a domain name for sale – while certainly not prohibited – does not, of itself, constitute a legitimate interest under the second element of the Policy. Khadi & Village Industries Commission v. Michael F Mann, Domain Asset Holdings, LLC, WIPO Case No. D2021-3242. Absent some genuine use, or intended use, of a domain name, merely offering a domain name for sale does not by itself give rise to rights or legitimate interests in it. Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540. But compare SoletLuna Holdings, Inc., Lifewave, Inc. v. Bahl Co, WIPO Case No. D2024-5115.

It may be that using a domain name to advertise the domain name and other domain names for sale is use in connection with a bona fide offering of goods or services, being offering domain names for sale. However, it is unnecessary to consider this issue further in view of the Panel’s findings under the third element below.

C. Registered and Used in Bad Faith

In order to establish registration of the disputed domain name in bad faith, it is incumbent on the Complainant to demonstrate that the Respondent registered or acquired the disputed domain name with knowledge of the Complainant’s trademark rights, and to take unfair advantage of those rights. While the disputed domain name is identical to the Complainant’s GUTEX trademark, it does not automatically follow that the Respondent must have been aware of that trademark, and the Complainant must show that there is evidence, or at least circumstances upon which to infer, that the Respondent is likely to have registered or acquired the disputed domain name with the Complainant’s trademark in mind.

For the reasons set out below, the Panel does not find the Complainant to have met the relevant burden in this case. The evidence in the Complaint as presented does not indicate that the Respondent’s aim in registering the disputed domain name was to profit from or exploit the Complainant’s trademark.

The Respondent states that the Respondent “acquired the [disputed] domain name via public auction in good faith and without any knowledge of the Complainant, its trademarks, or its business”. The Respondent also states that the Respondent “had no prior knowledge of the Complainant at the time of acquisition. The [disputed domain name] was acquired due to its inherent phonetic and visual appeal as a five-letter, pronounceable .com name ending in ‘x,’ which is especially desirable in the branding and domain investor community”.

The Complainant is located in Germany and has provided evidence of its operations in Europe. The Complainant’s website has a drop-down box of territories, which includes Germany, France, Italy, Spain, and UK/Ireland. There are no countries listed outside of the European region in this drop-down box. There is a general category of “GUTEX International” which leads to an online contact form.

The Complainant provided evidence to demonstrate reputation in the United States, namely an article from Green Building News of April 23, 2019 that refers to a building supply business in New York “which sells German-made Gutex”. The Complainant also provided a screenshot (dated 2025) from the website of this New York building supply business that had information about the Complainant and its products. As will be appreciated, evidence from 2025 does not show reputation at the time the disputed domain name was acquired by the Respondent (in 2021).

The Complainant asserts that the Complainant and its GUTEX mark are widely known internationally. However, the Complainant provided little evidence to support this. Apart from the two items discussed in the paragraph immediately above, the Complainant provided no evidence of use, advertising, reputation, or sales in the United States. There is no evidence of the number of customers in the United States. There is no evidence of advertising directed at the United States. The Complainant states that its website at gutex.de was accessible from the United States from 2012. However, there is no evidence before the Panel as to the number of visitors to this website in total or from the United States. This website also appears to be in the German language and has telephone contact numbers for Germany.

The Complainant asserts that the Respondent acquired the disputed domain name after the Complainant filed its United States trademark application, and states that this is proof that the Respondent was aware of and targeted the Complainant. The Panel does not consider this sufficient proof of knowledge or motive of the Respondent.

In the Panel’s view, the Complainant’s GUTEX trademark is not well-known to the public at large in the United States. The Complainant provided no evidence that would suggest that a person in California (where the Respondent is located) should have been aware of the Complainant or its GUTEX trademark. In short, there is no evidence presented by the Complainant that the Respondent had the Complainant in mind when he acquired the disputed domain name from the previous registrant.

Accordingly, considering the materials in the case file, the Panel finds the Respondent’s assertion believable, namely that the Respondent was not aware of the Complainant or its GUTEX mark when it acquired the disputed domain name in 2021.

The Complainant states that GUTEX is a coined unusual word with no generic or descriptive meaning, suggesting that the Respondent would only have registered with the disputed domain name with knowledge of this unusual term. The Respondent states that the disputed domain name “is a 5-letter, brandable .com domain with no inherent association with wood fiber or insulation. The value stems from its brevity, pronounceability, and strong visual ending in x”.

The Complainant alleges that the Respondent is engaged in a pattern of cybersquatting. The evidence provided for this allegation is the assertion that the other domain names listed for sale on the website at the disputed domain name are third party trademark terms. These domain names include, for example, index.org, accountability.com, 360degrees.com, roadhouse.com and jerk.com. The Complainant provided evidence that these are trademarked terms. Without further evidence, the Panel does not consider that registration and offering for sale such domain names, which also comprise dictionary terms or common phrases, is evidence of a pattern of cybersquatting, even if these terms are registered trademarks. There is no evidence that the Respondent registered these domain names for their trademark value.

The Panel considers that there is nothing in the evidence showing any kind of pattern of cybersquatting relevant to the present administrative proceeding. On the contrary, without evidence to support the contention that the domain names targeted trademark owners (rather than matching trademarks) the fact that the Respondent may have registered dictionary terms as domain names might be seen as a pattern of good faith registrations that is supportive of its case.

The Panel is aware that the Respondent has been successful in several disputes brought against it under the Policy (none of which were referenced by the parties). Of course, prevailing in prior UDRP or court cases does not immunize a respondent from a bad faith finding in a later case, nor would losing in a prior UDRP or court case mean one is always in bad faith, as the facts of each case must be considered on their own. TranScrip Partners LLP, TranScrip Limited v. Abstract Holdings International Ltd, Domain Admin, WIPO Case No. D2021-2220; Calmino group AB v. Domain Administrator, DomainMarket.com, WIPO Case No. D2024-1579.

Accordingly, the Panel finds that there is insufficient evidence to show that the Respondent purchased the disputed domain name with knowledge of the Complainant or the Complainant’s trademark rights or to target the Complainant.

The Respondent did not approach the Complainant in respect of the disputed domain name to offer the disputed domain name to the Complainant. The Complainant approached the Respondent to inquire about buying the disputed domain name (and when doing so never informed the Respondent of its trademark rights.)

The Respondent provided draft contracts to the Complainant that included unusual terms. The Complainant states that this is evidence of “a fraud activity” by the Respondent. The Panel disagrees that the draft contracts and the terms therein are evidence of fraud or intended fraud by the Respondent.

Without further evidence, creating a website at the disputed domain name to advertise the disputed domain name for sale is not, of itself, bad faith use of the disputed domain name.

There is no evidence that the Respondent has targeted the Complainant regarding its use of the disputed domain name.

The Panel finds the third element of the Policy has not been established.

The Panel wishes to clarify that this finding is not intended to suggest that speculation in domain names is always legitimate and in good faith (nor is it always in bad faith); where the case circumstances point to a speculative registration for the specific purpose of targeting existing brand owners, this runs afoul of good faith. The evidence presented does not, however, support that conclusion here.

D. 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.

The Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this
Case.

The Panel does not find that the Complaint was brought in bad faith. In the present case, because the disputed domain name is identical to the Complainant’s trademark, the Complainant could reasonably have believed that the Respondent registered the disputed domain name in bad faith. The Complainant also provided evidence that other domain names offered for sale by the Respondent matched third-party trademarks.

Although the Complainant failed to prove that its mark was likely to be known where the Respondent is located or famous internationally, such a failure is not uncommon in UDRP proceedings and does not necessarily evidence bad faith.

There are two matters that the Panel has considered that suggest that the Complainant has acted in bad faith in bringing the Complainant.

First, a recent case involving the same Respondent was decided not long before the Complainant filed its Complaint. The complainant in the prior case was unsuccessful. The Panel in that case stated:

“It is well-established in prior proceedings under the UDRP that (save in limited circumstances which are not of application to this case) the concept of ‘constructive notice’ of a trademark is generally insufficient for the purposes of the Policy. Complainants are therefore typically expected to provide information concerning their commercial activities (e.g., sales revenue, geographical scope, numbers of employees, locations and customers, media and industry recognition and awards, social media profile, etc.) in order to demonstrate that the Respondent was more likely to than not to have been aware of (and targeted) their trademark. No such information is available to the Panel in this case.” ISI GmbH v. Tech Ops, SyncPoint, Inc., WIPO Case No. D2024-4055.

The Panel is somewhat puzzled as to why the Complainant did not take notice of this important prior case, which had similar facts and the same Respondent, and which correctly set out what type of evidence that a complainant should present when filing its Complaint.

Second, before filing the Complaint, the Complainant approached the Respondent to acquire the disputed domain name. The Complainant’s representative misrepresented its position to the Respondent in such communications. Whether this was known by the Complainant is not clear.

However, considering all the circumstances of the case, the Panel declines to make a finding of Reverse Domain Name Hijacking. In particular, in view of the fact that the disputed domain name is identical to the Complainant’s GUTEX trademark, which had been registered for many years prior to the disputed domain name, and the fact that the Complainant identified that the Respondent registered and offered for sale other domain names matching third-party trademarks, the Panel does not consider this to be a case in which the Complainant knew or ought to have known that its Complaint could not succeed, or had a clear knowledge of an unequivocal lack of bad faith on the part of the Respondent (see e.g., section 4.16 of WIPO Overview 3.0). ISI GmbH v. Tech Ops, SyncPoint, Inc., WIPO Case No. D2024-4055.

7. Decision

For the foregoing reasons, the Complaint is denied.

/John Swinson/
John Swinson
Sole Panelist
Date: May 11, 2025

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