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Recent Case Notes & Commentary

Totality of Evidence Required

Kathy Miller-Kramer v Dave Warren

NAF Case;  October 3, 2015

Claim Number: FA 1501001602672

Here at the Domain Time we often talk of how important it is for a Complainant to bring evidence so as its claim can be substantiated. It is essential that parties come prepared because Panels will have regard to the totality of evidence and decide the case on that basis. Fall short on proving one element of the UDRP policy and your whole case falls over. This case provides a good example of a well-prepared Complaint that resulted in success for the Complainant.

Disputed Domain Name <>

Decision Complainant prevailed – domain name transferred

The Parties

The Complainant registered the trademark, INVISABELT, with the United States Patent and Trademark Office (“USPTO”) in 2007.  The Complainant uses the mark in connection the sale of clothing, specifically, waist belts made of plastics.

The Respondent is isABelt, who registered the disputed domain name in 2006 as a means to market a newly created product.

Identical and/or Confusingly Similar 

The Complainant’s mark, INVISIBELT, was registered with the USPTO in 2007. The trademark application was filed with the USPTO in December 2003.  Additionally, the Complainant also provided evidence it used the <> domain name way back in 2003. The Panel found that rights in the trademark were established on the initial filing date of the USPTO registration in 2003.

Once a trademark is established, the disputed domain registered by the Respondent must be identical or confusingly similar to the Complainant’s mark. In this case, the disputed domain name simply substituted the “a” for the letter “i” in the Complainant’s mark. It is well established that simply replacing one letter is insufficient to distinguish a domain name from being identical or confusingly similar to the mark relied on by the Complainant. Therefore, the Complainant in this case was successful under the first element.

Rights or Legitimate Interests

In agreeing with the Complainant that the Respondent prima facie lacked any rights or in the <invisabelt> domain name, the Panel took into account a number of factors;

The Respondent simply altered the spelling of the Complainant’s mark by one letter.

The <> domain name was not active, with users instead being re-directed to a website promoting the Respondent’s “iaABelt” products.

Respondent could not have rights or legitimate interests as the Panel accepted that the Respondent was not known by the <> domain name, nor to the have permission to use the disputed domain name.

The Respondent nevertheless contended it did have a right or legitimate interest in the < > domain name because it reflected its company name of isaBelt. In dismissing this argument, the Panel noted that the < > website was not the Respondent’s company name, nor an altered internet version of Isabelt Ltd.

The Panel also refused to accept that a Respondent could hold a right or legitimate interest by deliberately choosing a domain name that was confusingly similar to a competitor’s mark, rather than its own company name. The absence of any conceivable reason as to why the Respondent chose the < > name led the Panel to find the Respondent chose it due to the similarity with the Complainant’s mark.

Combined with strong circumstantial evidence suggesting the Respondent registered the domain name with actual knowledge of the Complainant’s mark, the Panel held the Respondent had failed to rebut the presumption against it.

Registration and Use in Bad Faith

The Panel found that the Respondent had engaged in bad faith both during registration, as well the subsequent use of the website.

Simply changing one letter of the Complainant’s trademark to form the < > site and using it as a platform to sell the competing ‘isabelt’ products was deemed to be commercial disruption by the Respondent. Accordingly, the use of a confusingly similar domain name to re-direct users to Respondent’s own site was held to be evidence of bad faith pursuant 4(b)(iv) of the Policy.

After further circumstantial evidence was submitted, the Panel inferred the Complainant had actual knowledge of the Complainant’s INVISIBELT mark when it registered the domain name. For instance, the competing companies were both in the same niche field and the Respondent referred to itself as the original “invisible” belt, indicating it created the website with the Complainant in mind at the time the domain name was registered.

Because the Respondent had only changed one letter in the disputed website it was also found it had engaged in typosquatting, or the acquisition of deliberately misspelt domain name, to deceive users into purchasing its products. Pursuant to 4(a)(iii) of the Policy and consistent with previous decisions this was further evidence of bad faith on behalf of the Respondent.

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