Financial company guilty of reverse domain name hijacking

Panelist found RDNH even though domain registrant didn’t respond.

A UDRP panelist has found Zelig AI, LLC, which offers a financial education service at ValuSyncIt .com, guilty of reverse domain name hijacking.

Zelig filed a cybersquatting dispute against the domain ValueSync .com.

The company has a pending trademark application with the U.S. Patent and Trademark Office for ValueSync. Pending applications aren’t trademarks, and the company didn’t provide evidence of common law rights in the name.

Adding to the deficiencies, it claimed in the UDRP that it started using the name in May 2023, but its April 2024 trademark application was filed on an intent-to-use basis.

Panelist David E. Sorkin said the Complainant should have known better:

Complainant submitted no evidence of the acquired distinctiveness required to support a claim of common law trademark rights. The only evidence relevant to Complainant’s use of the putative mark is a screenshot of Complainant’s website, and a USPTO trademark status page indicating that Complainant has not yet commenced use of its mark in commerce. Under the circumstances, and noting that Complainant is represented by professional trademark counsel, the Panel concludes that Complainant or its counsel must have known that it did not have a colorable claim under the Policy.

Sorkin denied the claim and entered a finding of reverse domain name hijacking.

Foley & Lardner LLP represented the Complainant. The domain owner didn’t respond to the dispute.