LeonardoAI.com: UDRP loss despite Complainant’s junior trademark—Here’s why

The domain LeonardoAI.com was the subject of a UDRP filed by Australian company Leonardo Interactive Pty Ltd.

Registered in 2017, the disputed domain predates the Complainant’s corporate founding by 5 whole years. The Complainant’s LEONARDO.AI  mark was registered in 2023 in various locales.

Despite the domain’s seniority to both the Complainant’s corporate formation and mark, the WIPO panelist ordered the domain to be transferred to the Complainant.

Why’s that?

According to the UDRP, the Respondent used the domain to “pass off” as the Complainant, displaying their brand and linking to the Complainant’s web site at Leonardo.ai. The sole panelist noted:

Panels have held that the use of a domain name for illegitimate activity, here, claimed impersonation/passing off, constitutes bad faith. [..] The clear misspelling in the disputed domain name, underpins the impersonation nature of the disputed domain name. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Respondent stated that the domain’s use wasn’t meant to pass off but to provide a link as part of a directory about companies related to artificial intelligence; the Respondent is a blogger.

The WIPO panelist was not convinced. Final decision: Transfer the domain LeonardoAI.com to the Complainant.

ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Leonardo Interactive Pty Ltd. v. Nilmini Rathnayaka
Case No. D2025-0324

1. The Parties

The Complainant is Leonardo Interactive Pty Ltd., Australia, represented by SafeNames Ltd., United Kingdom.

The Respondent is Nilmini Rathnayaka, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name leonadoai.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 January 28, 2025. On January 28, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 29, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 30, 2025, the Respondent replied to the Center asking how the Respondent could address the issue caused. On January 30, 2025, the Center replied that the proceeding may be suspended to implement a settlement agreement between the Parties and that if the Parties would wish to explore settlement options, the Complainant should submit a request for suspension by February 6,
2025. As the Respondent had not returned the standard Settlement Form as requested by the Complainant, the Complainant filed an amended Complaint on February 3, 2025.

The Center verified that the Complaint together with the amended 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 February 7, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2025. The Respondent did not submit any formal response. The Respondent sent an email communication to the Center on January 30, 2025.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on March 4, 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 following facts are undisputed.

The Complainant is a Generative AI (“GenAI”) content production platform that uses advanced machine learning algorithms to create realistic and high-quality images based on text prompts. The Complainant is based in Sydney, Australia. Since its founding in 2022, the Complainant has amassed over 29 million global registered users who have utilized the platform to create over a billion artworks. In 2023, the Complainant raised a USD 31 million round from investors in advance of developing and launching Australia’s first GenAI foundational model, Phoenix. The Complainant was acquired by Canva Pty Ltd, a well-known online graphic design platform.

The Complainant exclusively operates online and from a website to which its domain name leonardo.ai resolves. The Complainant’s main website attracted more than 14 million visits in December 2024.

The Complainant is the owner of various trademark registrations including the word element LEONARDO.AI, including the Australian registration LEONARDO.AI (word mark), with registration number 2376413, applied for on August 3, 2023 and registered on April 30, 2024 for goods and services in classes 9 and 42 and an international registration based on this Australian trademark registration, with number 1801879, designating Brazil, Canada, India, Japan, and Mexico.

The Complainant uses the word mark LEONARDO.AI also as a logo which uses a particular purple color for the element “AI”, which is written as “Ai”.

The disputed domain name was registered on August 16, 2023 and resolved in December 2023 to a web page “Unleash your Creativity with power of Leonardo Ai. At the time of the Center handling the Complaint, the disputed domain name resolved to a Registrar-parked page with pay-per-click (“PPC”) links.

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.

Notably, the Complainant contends the following.

The disputed domain name is composed of the Complainant’s mark, absent the letter “r” and the “dot” (“.”).

The Respondent does not have any trademark rights to the term “leonardo.ai”, “leonadoai”, nor any similar term. There is also no evidence that the Respondent retains unregistered trademark rights to the aforementioned terms. Neither has the Respondent received any license from the Complainant to use a domain name featuring the LEONARDO.AI.

The Respondent has not used, nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to an impersonation site and features links that, when clicked, will redirect Internet users to the Complainant’s website: “https://app.leonardo.ai/”. Such use shows the targeting of the Complainant and the Respondent’s intention to create confusion regarding the Complainant’s affiliation with the disputed domain name among Internet users seeking the Complainant’s offerings.

Additionally, the Respondent has elected to ignore the cease-and-desist notice sent by the Complainant’s Representative on November 28, 2024.

B. Respondent

The Respondent replied to the Center by email of January 29, 2025, in which the Respondent sincerely apologized for any inconvenience caused on the Respondent’s side. The Respondent said that the Respondent is a blogger who creates content about AI tools. The Respondent developed the website to which the disputed domain name resolved with the sole intention of sharing information about AI-related topics. The Respondent stated that the Respondent had no intention of damaging any original site or product, and the Respondent was not aware of any fault or violation. The Respondent asked to resolve the matter.

6. Discussion and Findings

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 Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel considers the disputed domain name to clearly contain a misspelling. WIPO Overview 3.0, section 1.9.

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

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegitimate activity, here, claimed impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds that although the Respondent stated that it did not have any bad intentions, that the Respondent did not clearly rebut he Complainant’s contention that the Respondent was impersonating the Complainant on the website to which the disputed domain name resolved.

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

C. Registered and Used in Bad Faith

The Panel refers to its considerations under 6.B.

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent clearly targeted the Complainant and its activities. The Respondent has also not rebutted the substantiated contentions made by the Complainant. The targeting is also illustrated by the get-up of the website to which the disputed domain name in the past resolved.

Panels have held that the use of a domain name for illegitimate activity, here, claimed impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. The clear misspelling in the disputed domain name, underpins the impersonation nature of the disputed domain name.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name leonadoai.com be transferred to the Complainant.

/Willem J. H. Leppink/
Willem J. H. Leppink
Sole Panelist
Date: March 13, 2025

Copyright © 2025 DomainGang.com · All Rights Reserved.