Tommie Copper IP, Inc., owner of the PROFOOT brand of insoles and foot care products, filed a UDRP against Profoot.com, arguing the domain was identical to its marks and was being used in bad faith through a parked page with links to competitors.
The Complainant claimed its predecessor had used the PROFOOT brand since the mid-1980s and that Respondent acquired the domain after its registrations.
The Panel found the domain, created in 1998, predated Complainant’s earliest registered marks from 2007 and 2013. Complainant failed to provide evidence of common law rights prior to the domain’s registration, or evidence that Respondent acquired the domain after its rights were established. Even though the site later displayed PPC links, bad faith use in 2023 did not prove bad faith registration in 1998.
Funny how the IP law works! 🙂
Despite the Respondent’s lack of a response, they won the UDRP: Without proof that Respondent targeted Complainant when the domain was first registered, the Panel denied the Complaint, leaving Profoot.com with the Respondent.
Copyright © 2025 DomainGang.com · All Rights Reserved.Tommie Copper IP, Inc. v. [Registrant]
Claim Number: FA2507002168246
PARTIES
Complainant is Tommie Copper IP, Inc. (“Complainant”), represented by Theodore R. Remaklus of Thompson Hine LLP, Ohio, USA. Respondent is [Registrant] (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is profoot.com, registered with GoDaddy.com, 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 July 29, 2025. Forum received payment on July 29, 2025.
On July 29, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the profoot.com domain name is registered with GoDaddy.com, LLC and that Respondent (unnamed) is the current registrant of the name. GoDaddy.com, LLC has verified that the unnamed Respondent is bound by the GoDaddy.com, 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 July 30, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@profoot.com. Also on July 30, 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 August 20, 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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Tommie Copper IP, Inc., and its predecessor-in-interest, has sold high quality insole and foot care products since 1986 under the PROFOOT trademark. Started in Brooklyn, New York, by a chiropractor, the PROFOOT brand is now sold throughout the world. Complainant is the owner by assignment of numerous U.S. and international trademark registrations for a family of PROFOOT trademarks.
As shown by the Whois page for the profoot.com domain name attached as Exhibit A, that domain was created/registered July 2, 1998, more than 10 years after Complainant’s predecessor first used the mark. While the domain was created before Complainant’s first registration, the profoot.com domain name has been assigned several times after Complainant’s numerous registrations were filed and registered. Thus, the current owner of the domain acquired it long after Complainant and its predecessor established rights in the PROFOOT mark.
The domain name profoot.com is identical and confusingly similar to Complainant’s registered PROFOOT marks.
Complainant does not know of any trademark or other intellectual property rights or any other legitimate interest held by Respondent in the domain name profoot.com or in the “PROFOOT” name alone. Respondent has not sought nor been granted permission to use Complainant’s PROFOOT marks in any way. There is also no evidence that Respondent is commonly known by the domain name and the WHOIS registration information also fails to imply that Respondent is commonly known by the name “PROFOOT”.
Moreover, Respondent did not obtain ownership of the domain name until well after Complainant’s first registration of the PROFOOT mark in 2007. These facts weigh strongly against any conclusion that Respondent obtained the profoot.com domain name in good faith. The domain name currently resolves to a parked page which provides the consumer options for “related searches” to competitors of Complainant. Thus, a consumer looking for Complainant would be led to believe that Complainant has gone out of business and such a consumer may follow the links to products of Complainant’s competitors. Thus, the domain name is not being used for any bona fide offering of products and is instead passing itself off as Complainant. Respondent is not affiliated with, licensed by or in privity with Complainant; has not been given permission to use any of the PROFOOT marks by Complainant; is not otherwise in any way connected with Complainant; and has no legitimate interest in the domain name.
The profoot.com domain name was registered and is being used by Respondent in bad faith. Respondent appears to have obtained the domain name with the intent, or at least the result, of diverting business away from Complainant and in seeking to deceive consumers into thinking that Respondent is Complainant or at least that Respondent is related to or authorized by Complainant when it is not.
Because Respondent is not affiliated with or connected in any way with Complainant, it is further submitted that Respondent registered the domain name in bad faith. Complainant submits that Respondent obtained the domain name for the purpose of exploiting the rights of Complainant through the diversion of consumers seeking Complainant’s PROFOOT branded goods.
Respondent knew of the PROFOOT marks and brand at the time it obtained the profoot.com domain name. Therefore, Respondent’s continued registration and use of this domain name without the consent or permission of Complainant infringes Complainant’s rights under the United States Federal Trademark Act, namely, 15 U.S.C. Section 1114, and 15 U.S.C. Section 1125(a)(1)(A) of the Lanham Act, constitutes false advertising under 15 U.S.C. Section 1125(a)(1)(B) of the Lanham Act, constitutes unfair competition in violation of 15 U.S.C. 1125(a), and constitutes violation of non-US trademark laws.
Prior UDRP panels have found bad faith from the circumstance of a registrant obtaining a domain name which is confusingly similar to a complainant’s mark and that would likely be associated with complainant’s well-known products or services. See, e.g. Oly Holigan, L.P. v. Private, FA 95940 (Forum Dec. 4, 2000) (finding bad faith where respondent used the disputed domain name to “redirect the Complainant’s consumers and potential consumers to commercial web sites which are not affiliated with Complainant”).
Whatever Respondent’s intent in registering the domain name, Respondent’s actions have disrupted Complainant’s business.
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 many countries in numerous PROFOOT and PROFOOT-formative marks, the earliest of which appears to be United States registered mark PROFOOT & Design, Reg. No. 3,337,766, assigned to Complainant on March 1, 2024 and registered by Complainant’s predecessor on November 20, 2007 upon application filed on December 8, 2006, with a claimed first use on 12-0-2005 and first use in commerce on 1-0-2006.
Complainant has also shown that it has rights in United States registered mark PROFOOT, Reg No. 4,294,441, registered on February 26, 2013, for inter alia “House mark for a full line of foot orthotics”, in International Class 10, with a claimed first use and first use in commerce on 6-0-1995.
The Panel finds Respondent’s profoot.com domain name to be identical to Complainant’s PROFOOT mark, since the inconsequential “.com” generic top-level domain (“gTLD”) may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, D2000-0429 (WIPO June 25, 2000).
Complainant has established this element.
Rights or Legitimate Interests
In light of the Panel’s determination of the third element below, it is unnecessary to consider this element.
Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy is expressed in the conjunctive: “the domain name has been registered and is being used in bad faith” and Paragraph 4(b) sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii), namely:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
As to registration, the profoot.com domain name was registered on July 2, 1998, several years prior to the claimed first use and the filing of the earliest application to register Complainant’s PROFOOT & Design mark and some three years after the 1995 claimed first use of Complainant’s PROFOOT mark.
Complainant has provided no evidence that Complainant and its predecessor-in-interest sold insole and foot care products since 1986 under the PROFOOT trademark; nor that, through use between its first claimed use in 1995 and the registration of the domain name in 1998, Complainant’s predecessor had acquired common law trademark rights in the PROFOOT mark; nor that it had acquired common law rights in any of its other marks prior to the registration of Respondent’s profoot.com domain name. Further, there is no evidence that the domain name has been assigned several times after Complainant’s numerous registrations were filed and registered. Thus, the Panel is not persuaded that the current owner of the domain name acquired it long after Complainant and its predecessor established rights in the PROFOOT mark.
Under these circumstances the Panel is unable to accept Complainant’s conclusory and unsubstantiated arguments that Respondent knew of the PROFOOT marks and brand at the time it obtained the profoot.com domain name; that Respondent obtained the domain name for the purpose of exploiting the rights of Complainant through the diversion of consumers seeking Complainant’s PROFOOT branded goods; and that Respondent appears to have obtained the domain name with the intent … of diverting business away from Complainant. Accordingly, the Panel finds that Complainant has failed to show that Respondent registered the domain name in bad faith.
As to use, a screenshot taken on July 29, 2023 shows the website to which the domain name then resolved was a GoDaddy.com, LLC parked webpage displaying the pay-per-click links “Plantar Fasciitis Arch Support”, “Plantar Fasciitis Insoles” and “Shoe inserts”. Assuming for present purposes that Respondent is responsible for such use and that such use falls within the circumstances set out in Paragraph 4(b)(iv) of the Policy, evidence of bad faith use in 2023 does not establish that Respondent registered the domain name in bad faith in 1998, when Respondent has not been shown to have been aware of any of Complainant’s yet to be registered marks.
Complainant has failed to establish this element.
DECISION
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 profoot.com domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: August 21, 2025
