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Recent Case Notes & Commentary

UDRP CASES: No Response filed, but Complainant Must Still Satisfy All Elements of Paragraph 4(a)

Snore Fix Inc. v. Domain Administrator, Top Business Names

WIPO Case No. D2016-0314

Disputed Domain Name: <>

Complainant denied – failure to prove domain name was registered in bad faith.

In the event a Respondent fails to defend an action brought under the Uniform Domain Name Dispute Resolution Policy, some Complainants may see the case as a ‘slam-dunk’. Lodge the papers, boil the kettle, wait a few weeks, and the website will be transferred into your ownership shortly. Easy as that. However, in practice this is far from the truth.

The perils of failing to prove all three elements of paragraph 4(a), even when a Respondent does not defend or reply to your claim, can be seen in this case.  Ultimately, as the Complainant’s sword was not sufficiently sharp, the failure by the Respondent to bring a shield to the showdown was irrelevant, as we have noted sometimes in Game of Thrones.


The Complainant, a vendor of medicated throat sprays, registered the trademark, SNORE FIX, with the USPTO in 2014. According to the trademark registration certificate, the Complainant claimed a first use of the mark to November 2012.

The Respondent registered the disputed domain name, <> in January 2006. In addition to informing users how to stop snoring, various sponsored advertisements could also be found on the website.

Paragraph 4(a)(i): Identical or Confusingly Similar

Paragraph 4(a)(ii): Rights or Legitimate Interests

By providing evidence of registration of SNORE FIX with the USPTO and that the <> domain name took users to the websites of competitors of the Complainant, the Panel found for the Complainant on the first two elements.

But the Complainant stumbled on proving bad faith.

Paragraph 4(a)(iii): Registered and Used in Bad Faith

Paragraph 4(a)(iii) requires the Complainant to prove the Respondent both registered and used the disputed domain name in bad faith. As a general rule, bad faith registration cannot arise in circumstances where the registration predates any applicable trademark rights the Complainant asserts.

The Respondent had registered the <> domain name in January 2006, over 6 years before the Complainant claimed it had made its first use of the SNORE FIX trademark. Although not bound by WIPO Overview 2.0, the Panel agreed with the reasoning that a domain name cannot be registered in bad faith because it would have been impossible for a registrant to be aware of the Complainant’s non-existent rights.

The failure to prove the presence of bad faith at the time of registration was fatal to the Complainant’s case. The Complainant provided no evidence demonstrating the Respondent was, or could have been aware, of the SNORE FIX trademark when it registered the domain name in 2006. In fact, the Complainant appeared to avoid the bad faith registration issue by simply not addressing it all.

A Complainant Must satisfy all the Required Elements

Although a complete failure to defend an action may mean a Complainant will encounter less resistance, believing a Panel will automatically transfer a disputed domain name is misguided. For a complainant to be successful, it is still required to prove all three elements under paragraph 4(a). 

This case emphasises how vital it is that Complainants submit the strongest evidence possible to prove all three elements of the Policy, thereby persuading the Panel to transfer a disputed domain name. This

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