Argentinian artist Judi Werthein filed a UDRP to regain control of JudiWerthein.com after her domain—originally registered and used by her from 2006 to 2019—expired and was later acquired by Miciko Saputra of Indonesia.
Following the lapse, the Respondent redirected the domain to a gambling website unrelated to Werthein or her artistic work. The Panel recognized the artist’s long-standing common law rights in the JUDI WERTHEIN mark, supported by her international exhibitions and recognition at major institutions such as Tate Modern and the Museum of Contemporary Art Tokyo. It found the Respondent had no legitimate interest in the domain and registered it in bad faith to capitalize on Werthein’s name.
Despite the time gap since the expiration, the Panel held that the Respondent’s deliberate use of the domain for gambling content demonstrated awareness of the artist’s reputation.
Final decision: transfer of judiwerthein.com to the Complainant.
Copyright © 2025 DomainGang.com · All Rights Reserved.Judi Werthein v. Miciko Saputra
Claim Number: FA2510002181386
PARTIES
Complainant is Judi Werthein (“Complainant”), represented by Roberto Ledesma of Lewis & Lin, LLC, New York, USA. Respondent is Miciko Saputra (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is judiwerthein.com (“Domain Name”), registered with NameCheap, 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 Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on October 7, 2025; Forum received payment on October 7, 2025.
On October 7, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the judiwerthein.com domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 October 10, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@judiwerthein.com. Also on October 10, 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 October 31, 2025, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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
Complainant, Judi Werthein, is a well-known Argentinian artist and writer. Complainant asserts common law rights in the JUDI WERTHEIN mark. Respondent’s judiwerthein.com domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the JUDI WERTHEIN mark in its entirety and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the judiwerthein.com domain name. Respondent is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent any rights in the JUDI WERTHEIN mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. From 2006 to 2019 Complainant owned the Domain Name and used it for a website to promote the Complainant. Following the failure to renew the registration of the Domain Name, Respondent registered the Domain Name and has used it to resolve to a website (“Respondent’s Website”) that is used to promote gambling services unrelated to any ordinary meaning of the Domain Name.
Respondent registered and uses the judiwerthein.com domain name in bad faith. Respondent registered the Domain Name in order to take advantage of a likelihood of confusion with Complainant’s mark and uses the Domain Name to divert users to a gaming website for commercial gain. Finally, Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the JUDI WERTHEIN mark given the reputation of the Complainant and the past use of the Domain Name for a website promoting the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant holds trademark rights for the JUDI WERTHEIN mark. The Domain Name is identical to Complainant’s JUDI WERTHEIN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the 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.
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
As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the JUDI WERTHEIN mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. The Panel notes that common law rights are not generally afforded to a mark that is a personal name for this reason alone. See Newman and Denney P.C. v David Schorr, FA 1631045 (Forum Dec. 28, 2015) (finding that “[t]he mere use of personal names by parties to reference themselves or their business is not proof of secondary meaning,” and therefore is not dispositive evidence of a complainant’s rights in a mark). However, common law rights may be found where a complainant has provided sufficient evidence to support that the mark has acquired secondary meaning. See John G. Balestriere v. Simon Mills / Emancipation Media, FA 1618353 (Forum June 11, 2015) (finding Complainant’s JOHN G. BALESTRIERE mark is Complainant’s personal name, and Complainant showed secondary meaning by demonstrating that the mark has been used as a marketable commodity, or for direct commercial purposes in marketing goods and services by providing evidence of use in the legal services business and attorney advertising dating back to Jan. 1, 2005).
Complainant is an Argentinian artist who has offered their services (including services as an artist, filmmaker, author, speaker and educator) under the JUDI WERTHEIN mark since 1991. Complainant’s work, using the JUDI WERTHEIN mark, has gained significant recognition and accolades and her work has been shown in both solo and group exhibitions and has been displayed in institutions such as the Tate Modern, Museum of Contemporary Art Tokyo, and the Moderna Museet, Stockholm. The Panel is satisfied from Complainant’s evidence (including evidence of the length of use, reputation and third party recognition) that Complainant’s use of the JUDI WERTHEIN mark for her services as an artist is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the JUDI WERTHEIN mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the judiwerthein.com Domain Name is identical to the JUDI WERTHEIN mark as it incorporates the JUDI WERTHEIN mark and adds the “.com” gTLD. The addition of a gTLD is not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the JUDI WERTHEIN mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the statefarmforum.com domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Miciko Saputra” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to the Respondent’s Website which offers commercial content unrelated to the Complainant (gambling content) or any descriptive meaning of the Domain Name. In these circumstances, use of a domain name to divert users, for commercial gain, to a website containing unrelated content (being content unrelated to any obvious descriptive meaning of the domain name) such as gambling content is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Spike’s Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the finishnline.com domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Domain Name was registered by the Complainant in 2006 and its registration lapsed in 2019. While the Domain Name was acquired by a third party upon its lapsing, the evidence before the Panel is that the present Respondent acquired the Domain Name on May 4, 2025. Notwithstanding that there was a significant gap between the lapsing of the Complainant’s registration and the registration of the Domain Name by the Respondent, the Panel finds on the balance of probabilities that, at the time the Respondent registered the Domain Name, May 4, 2025, Respondent had actual knowledge of Complainant’s JUDI WERTHEIN mark. There is no obvious explanation, and none has been provided by Respondent, for a party to register a domain name identical to the JUDI WERTHEIN mark (the name of a well-known Argentina artist) and redirect it to a website offering gambling content unrelated to any descriptive meaning of the Domain Name absent any awareness of Complainant and its JUDI WERTHEIN mark (and intention to capitalize on Complainant’s reputation in its JUDI WERTHEIN mark). In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith in order to resolve to a website that offers gambling content for which Respondent would be expected to receive revenue. Use of a confusingly similar domain name to attract users to a website hosting commercial content such as gambling may be evidence of bad faith per Policy ¶ 4(a)(iv). G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds 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 judiwerthein.com domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: October 31, 2025
