Kingspan Holdings (Irl) Limited v Catchdaddy LLC

WIPO Case No. D2024-0189

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Kingspan Holdings (IRL) Limited v. CATCHDADDY LLC

Case No. D2024-0189

1. The Parties

The Complainant is Kingspan Holdings (IRL) Limited, Ireland, represented by Tomkins & Co., Ireland.

The Respondent is CATCHDADDY LLC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <pertflextra.com> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2024. On January 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2024, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 22, 2024, 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 23, 2024.

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, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2024.

The Center appointed Steven A. Maier as the sole panelist in this matter on February 29, 2024. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rules, paragraph 7.

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4. Factual Background

The Complainant is a supplier of building materials, based in Ireland. Its products include a flexible piping system named PERTFLEXTRA.

The Complainant is the proprietor of European Union trademark registration number 018898149 for the word mark PERTFLEXTRA, registered on February 2, 2024, in International Classes 6, 11, 17, and 19. The application date for the trademark is recorded as July 6, 2023.

The disputed domain name was registered on July 6, 2023.

The Complainant provides evidence that the disputed domain name has resolved to a webpage at

“ which offers the disputed domain name for sale at an estimated price of USD 4,995.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to its PERTFLEXTRA trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has no relationship with the Respondent and has never authorized it to use its PERTFLEXTRA trademark, that the Respondent has not commonly been known by the disputed domain

name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or
fair use of the disputed domain name.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith. application and registered the disputed domain name in order unfairly to profit from that application, by e.g., selling the disputed domain name to the Complainant for a sum in excess of its out-of-pocket costs related to the registration.

The Complainant contends that its trademark PERTFLEXTRA is an invented term which has no ordinary meaning in any language, and that there is no legitimate use that the Complainant could make of the disputed domain name.

The Complainant further alleges that the Respondent has engaged in a pattern of similar registrations, based on registering domain names corresponding to European Union or other trademark applications. It cites in particular Hacona KFT v. Registration Private, CATCHDADDY LLC, WIPO Case No. D2023-4506.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;

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(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds the disputed domain name to be identical to the Complainant’s registered trademark

PERTFLEXTRA. The first element under the Policy is therefore satisfied.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has failed to file a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. Instead, as further discussed below, the Panel finds that the Respondent registered the disputed domain name in order to profit unfairly from the Complainant’s then nascent trademark rights. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name is identical to the Complainant’s PERTFLEXTRA trademark, which the Panel finds to be an invented term which is solely referable in commerce to the Complainant’s relevant product. The disputed domain name was registered on the same day as the Complainant’s European Union

trademark application and, in the absence of any explanation from the Respondent, the Panel has no serious
doubt that the registration was made in order to take advantage of the Complainant’s nascent trademark
rights. While no trademark registration had been granted at the date the disputed domain name was
registered, it is clearly recognized in jurisprudence under the UDRP that a registrant may be found to have
acted in bad faith when taking unfair advantage of nascent trademark rights in this way: see e.g., section
3.8.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”).

The Panel accepts the Complainant’s evidence of the Respondent’s offer to sell the disputed domain name with an estimated price of USD 4,995 and finds that the Complainant could be the only viable purchaser of the disputed domain name. The Panel therefore concludes that the Respondent acquired the disputed

domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain
name to the Complainant, for valuable consideration in likely excess of its documented out-of-pocket costs
directly related to the domain name (paragraph 4(b)(i) of the Policy).

Further, as cited above, the Respondent appears to have engaged in a pattern of bad faith registrations, seeing as the Respondent similarly targeted a complainant’s pending trademark application in Hacona KFT v. Registration Private, CATCHDADDY LLC, supra., and parked the domain name at issue there for sale for the same price as here. The Respondent was also found to have bad faith in another two proceedings, both of which involved domain names offered for sale at USD 4,995 and targeting third-party trademarks (e.g., ZipRecruiter Inc. v. Registration Private, CATCHDADDY LLC, WIPO Case No. D2023-4827, and Belmond Management Limited v. Registration Private, CATCHDADDY LLC, WIPO Case No. D2023-5064).

The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.

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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, <pertflextra.com>, be transferred to the Complainant.

/Steven A. Maier/
Steven A. Maier
Sole Panelist
Date: March 11, 2024