Signal Technology Foundation, Signal Messenger, LLC v Guillermo Sebastia

WIPO Case No. D2025-1365

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Signal Technology Foundation, Signal Messenger, LLC v. Guillermo Sebastia
Tena, Soluciones Online a Medida S.L.

Case No. D2025-1365

1. The Parties

The Complainants are Signal Technology Foundation (“First Complainant”) and Signal Messenger, LLC
(“Second Complainant”), both of the United States of America (“United States”), represented by IPLA, LLP,

United States.

The Respondent is Guillermo Sebastia Tena, Soluciones Online a Medida S.L., Spain.

2. The Domain Name and Registrar

The disputed domain name <signaldownload.org> is registered with Dinahosting s.l. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 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. On April 7, 2025, the Registrar transmitted by email to the

Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent (Dinahosting S.L. (Registrar), and Soluciones Online a Medida S.L.) and contact information in the Complaint. The Center sent an email communication to the Complainants on April 9, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on April 11, 2025.

On April 9, 2025, the Center informed the Parties in English and Spanish, that the language of the Registration Agreement for the disputed domain name is Spanish. On April 11, 2025, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not submit any comment on the language of the proceeding.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 14, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2025.

The Center appointed Matthew Kennedy as the sole panelist in this matter on May 13, 2025. 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.

4. Factual Background

The First Complainant is a United States non-profit organization and the Second Complainant is its received over 3 million reviews in the Apple App Store. The Complainant uses the domain name <signal.org> in connection with a website where it provides information about itself and the SIGNAL private messenger app and offers downloads of the app for different operating systems.
subsidiary (both referred to below jointly as “the Complainant” except as otherwise indicated). They provide
software encryption goods and services. The First Complainant owns multiple trademark registrations, the
earliest of which is United States trademark registration number 5230850 for SIGNAL, registered on June 27,
2017 (application filed May 16, 2016, with a claim of first use in commerce on July 29, 2014), specifying

certain software in class 9. That trademark registration is current. The Second Complainant operates the

The Respondent is a natural person and a company based in Spain. The Respondent’s company name
means “Customized Online Solutions”. According to evidence presented by the Complainant, the
Respondent’s personal name, company name, and contact email address, are associated with 261, 189, and
239 other domain name registrations, respectively. Several of these domain names combine a third-party
software trademark with the word “download” (and, in some cases, another word), including
<downloadandroidfree.com>, <download-angrybirds.com>, <downloadbattlefield.com>,
<download-callofduty.com>, <downloaddestiny.com>, <downloaddiablo.com>, <downloaddroid.com>,
<downloadiphone.org>, <downloadkakaotalk.org>, <downloadmessengerfree.com>,
<download-minecraft-free.com>, <download-minecraft.org>, <downloadnokia.org>,
<downloadpandorafree.com>, <downloadpandora.org>, <downloadsamsung.com>,
<downloadshazam.com>, <downloadtinder.org>, <downloadzip.org>, <candycrushdownload.net>,
<nokiadownload.com>, and <pandoradownload.org>.

The disputed domain name was registered on March 25, 2016. It resolves to a website in English that presents the Signal private messenger app, provides news about the app, and purports to offer free downloads of it for different mobile operating systems. The website also displays the logo of a third-party software product (i.e., Kajabi) with a button to “Start Free Trial”.

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 to the First Complainant.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its SIGNAL mark. connection with its software encryption goods and services since at least as early as July 29, 2014.

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The Respondent has no rights or legitimate interests in respect of the disputed domain name. The associated website is misleading as to source or sponsorship. It duplicates the Complainant’s official website and links to pages on that website and downloadable apps.

The disputed domain name has been registered and is being used in bad faith. The disputed domain name was registered subsequently to the Complainant’s registration and common law use rights in the SIGNAL marks. The Respondent uses the disputed domain name for the purpose of misleading and diverting Internet traffic. The Respondent’s pattern of registrations strongly evidences bad faith and intent to confuse consumers.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Spanish. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint and amended Complaint were filed in English. The Complainant requested that the language of the proceeding be English, based on the facts that the disputed domain name is in English and the associated website is in English, from which it can be inferred that the Respondent understands that language.

Despite the Center sending email communications in English and Spanish regarding the language of the Registration Agreement and the notification of the Complaint, the Respondent did not make any submission with respect to the language of the proceeding or express any interest in otherwise participating in this proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time, and costs. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. The Panel would have accepted a Response in Spanish but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must demonstrate each of the following elements:

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

complainant has rights; and

(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.

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The burden of proof of each element is borne by the Complainant.

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. See WIPO Overview 3.0, section 1.7.

The Complainant has shown registered rights in respect of the SIGNAL trademark for the purposes of the Policy. See WIPO Overview 3.0, section 1.2.1. It is unnecessary to consider the Complainant’s claim to hold common law rights in that mark for the purposes of the first element of the Policy.

The entirety of the SIGNAL mark is reproduced within the disputed domain name. Despite the addition of the
word “download”, the mark is recognizable within the disputed domain name. The generic Top-Level
Domain (“gTLD”) extension (“.org”), as a standard requirement of domain name registration, may be
disregarded in the assessment of confusing similarity for the purposes of the Policy. Accordingly, the
disputed domain name is confusingly similar to the mark for the purposes of the Policy. See

WIPO Overview 3.0, sections 1.7, 1.8, and 1.11.1.

Therefore, the Panel finds the first element of the Policy has been established.

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. See WIPO Overview 3.0, section 2.1.

In the present case, the disputed domain name reproduces the entirety of the SIGNAL mark, adding only the word “download” and a gTLD extension. The associated website purports to offer free downloads of the Signal private messenger app and provides news about the app. Even though the website does not display the Complainant’s Signal logo, this all gives the impression that the website and the software offered on it are affiliated with, or endorsed by, the Complainant. However, it is clear from the Complaint that there is no relationship between the Parties, and the website displays no disclaimer of any such relationship. These circumstances indicate that the disputed domain name is not being used in connection with a bona fide offering of goods or services. The website also displays advertising, which indicates that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Registrar has verified that the Respondent’s personal name is “Guillermo Sebastia Tena” and its company name is “Soluciones Online a Medida S.L.”, neither of which resembles the disputed domain name. Nothing on the record indicates that the Respondent has been commonly known by the disputed domain name.

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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.

Based on the record, 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 fourth of these circumstances is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for
commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood
of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the
respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”

The disputed domain name was registered in 2016, before the earliest registration of the Complainant’s SIGNAL mark. The Panel recalls that, where a registrant registers a domain name before a complainant’s trademark rights accrue, panels will not normally find bad faith. See WIPO Overview 3.0, section 3.8.1. However, there are exceptional circumstances in the present case. The disputed domain name was registered after the Complainant’s claimed date of first use of its mark in commerce in 2014. Although the mark consists of a common dictionary word, the disputed domain name combines it with the word “download”, indicating an awareness at the time of registration that SIGNAL was a digital product. The disputed domain name forms part of a pattern of registrations by the Respondent that combine various software trademarks with the word “download”. Further, an Internet search for “signal”, with results restricted to those pre-dating the registration of the disputed domain name, shows that the top results at that time related to the Complainant’s SIGNAL private messenger app.1 In view of these circumstances, the Panel finds that the Respondent registered the disputed domain name in anticipation of the Complainant’s nascent rights in the SIGNAL mark. See WIPO Overview 3.0, section 3.8.2.

As regards use, the disputed domain name resolves to a website that purports to offer free downloads of the Signal private messenger app and provides news about the app. The composition of the disputed domain name and the content of the associated website give the false impression that the website and the software offered on it are affiliated with, or endorsed by, the Complainant. The disputed domain name operates by attracting Internet users searching for the Complainant’s SIGNAL private messenger app and diverting them to the Respondent’s website. This use is intentional and for commercial gain, as the website displays advertising. Having reviewed the record, the Panel finds that the circumstances fall within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the Complainant has established the third element of the Policy.

1The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has conducted an Internet search

WIPO Overview 3.0, section 4.8.

for “signal” in the publicly-available Google search engine, with results restricted to those prior to March 25, 2016, to verify the merits and reaching a decision. See

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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 <signaldownload.org> be transferred to the First Complainant, Signal

Technology Foundation.

/Matthew Kennedy/
Matthew Kennedy
Sole Panelist
Date: May 22, 2025