elasticsearch B.V. v Alicia Cozine

WIPO Case No. DCO2025-0003

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

elasticsearch B.V. v. Alicia Cozine

Case No. DCO2025-0003

1. The Parties

The Complainant is elasticsearch B.V., Netherlands (Kingdom of the), represented by Quinn IP Law, United

States of America (“U.S.”).

The Respondent is Alicia Cozine, U.S.

2. The Domain Name and Registrar

The disputed domain name <elasticnv.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2025. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on January 17, 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 (private registration) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 20, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 24, 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 January 30, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 19, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 21, 2025.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on February 26, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant, elasticsearch B.V., is in the software business for creating search-powered solutions in relation to enterprise search, observability and security for the purpose of helping enhance customer and employee search experiences and to keep mission-critical applications running smoothly and protect against

cyber threats.

The Complainant’ s products and services are utilized and integrated in the data infrastructures of some of the world’s most recognizable and technically advanced businesses and solutions providers in addition to many governments. Software branded “Elastic” is widely distributed and accessed worldwide through major

platform Cloud partnerships with Microsoft, Amazon Web Services (AWS), Google, IBM and many others.

The Complainant has an active Elastic Meetup community of over 101,000 members across 55 countries with the first meetup event held in September 2012. It also creates user event experiences and connections, including the Elastic Community, where the Complainant hosts meetups, conferences, in-person, and virtual events and has 140 groups around the world.

Evidence of the above and the Complainant’s trading activities is set out in Annex IV to the Complaint.

The Complainant has registered the trademarks ELASTICSEARCH and ELASTIC in numerous jurisdictions worldwide. It currently owns over 155 applications and registrations worldwide for ELASTICSEARCH and ELASTIC. It exhibits at Annex V to the Complaint a schedule of trademark applications and registrations worldwide including for ELASTICSEARCH in Australia, Brazil, Canada, the European Union, the United Kingdom, Hong Kong, China, Israel, Japan, the Russian Federation, Taiwan Province of China, and the U.S., as well as for ELASTIC in the U.S. and for ELASTIC plus design logo in the above jurisdictions.

Annex V to the Complaint contains copies of search results from the United States Patent and Trademark

Office (“USPTO”) for U.S. registered trademarks including:

- ELASTICSEARCH, Registration No. 4212205, in Classes 9 and 42, registered on September 25, 2012;

- ELASTIC, Registration No. 6263801, in Classes 9 and 42, registered on February 9, 2021.

Many UDRP panelists have held that the ELASTIC and ELASTICSEARCH marks are famous, well known, and distinctive. (See Annex XI to the Complaint, includes elasticsearch B.V. v. Michael Nava, WIPO Case No. D2024-4001, elasticsearch B.V. v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2023-2937,

elasticsearch B.V. v. Nanci Nette, WIPO Case No. D2023-2938 and elasticsearch B.V. v. Jason Harrington,

WIPO Case No. D2023-4038).

The Complainant owns over 110 domain names that begin with or contain the trademarks ELASTICSEARCH
or ELASTIC. A list of the Complainant’s selected domain names is exhibited at Annex VI to the Complaint.
The Complainant’s main website is operated at the domain name <elastic.co>.

The disputed domain name was registered on January 9, 2025, years after the registration and use of the above trademarks by the Complainant. The record shows that the disputed domain name resolves to a site displaying pay-per-click links. The Complainant has submitted evidence showing that the disputed domain name has been used for sending fraudulent emails.

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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.

elasticsearch B.V. v. Alicia Cozine, WIPO Case No. DCO2024-0089, for the disputed domain name <elasitic.co>).

Notably, the Complainant contends that the Respondent deliberately and systematically targets the instance where the Respondent has registered a domain name incorporating the Complainant’s famous, well-known, and distinctive ELASTIC trademark (see

As in the prior proceeding, the Respondent registered the disputed domain name in this proceeding to carry out a fraudulent phishing scheme, misleading the public into believing that the Respondent is affiliated with or acting as the Complainant. The Respondent’s intentional misuse of the Complainant’s intellectual

property with multiple domain names to deceive and exploit the general public establishes the Respondent’s
conduct as a serial cybersquatter.

The disputed domain name incorporates the Complainant’s “Elastic NV” corporate name in its entirety and misappropriates the Complainant’s famous, well-known, and distinctive ELASTIC trademark.

The Complainant requests the Panel to issue a decision ordering the transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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 entirety of the mark is reproduced 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.

Although the addition of other terms here, “nv”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The “.co” country code Top-Level Domain (“ccTLD”) is viewed as a standard registration requirement and is
generally disregarded under the first element confusing similarity test, as set forth in section 1.11.1 of the

WIPO Overview 3.0.

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

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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 illegal activity here, claimed as applicable to this case:
phishing, impersonation/passing off, can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

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

C. Registered and Used in Bad Faith

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.

The Panel is satisfied that the Respondent must have been aware of the Complainant and its trademark
ELASTIC mentioned in section 4 above (Factual Background) when the Respondent registered the disputed
domain name on January 9, 2025. By that time the Complainant had registered and used the trademarks
ELASTIC for some years. In addition, the Respondent registered an earlier domain name incorporating the
Complainant’s ELASTIC trademark, see elasticsearch B.V. v. Alicia Cozine, WIPO Case No.
DCO2024-0089, for the disputed domain name <elasitic.co> (the decision ordering the transfer of the
disputed doman name <elasitic.co> to the Complainant was issued on January 7, 2025, two days prior to the
Respondent’s registration of the disputed domain name in this case).

By registering the disputed domain name, the Respondent was targeting the Complainant and its business by incorporating the Complainant’s trademark ELASTIC in the disputed domain name in its entirety.

The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the indicative of bad faith (as stated in section 3.2.1 of the WIPO Overview 3.0).

The evidence provided by the Complainant (Annex XII to the Complaint) shows that the disputed domain name has been used in sending fraudulent emails offering fake job opportunities at the Complainant’s company. Panels have held that the use of a domain name for illegal activity, here, claimed phishing, impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4.

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The fact that the Respondent did not respond to the demand letter which the Complainant sent prior to the commencement of this administrative proceeding via the Registrar, and also the lack of response from the Respondent to the Complaint contribute to support a finding of the Respondent’s bad faith.

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 the third element of the Policy has been established.

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 <elasticnv.co> be transferred to the Complainant.

/Miguel B. O'Farrell/
Miguel B. O'Farrell
Sole Panelist
Date: March 12, 2025