Uber Technologies, Inc. v Schneider Stacken
WIPO Case No. D2025-0957
•14-05-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Uber Technologies, Inc. v. Schneider Stacken
Case No. D2025-0957
1. The Parties
Complainant is Uber Technologies, Inc., United States of America (“United States”), represented by The
GigaLaw Firm, LLC, United States.
Respondent is Schneider Stacken, United States.
2. The Domain Name and Registrar
The disputed domain name <uberteen.com> is registered with Gname.com Pte. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2025.
On March 10, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 11, 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 (Redacted for Privacy) and contact information in the Complaint.
The Center sent an email communication to Complainant on March 11, 2025, providing the registrant and
contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the
Complaint. Complainant filed an amended Complaint on March 11, 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 Respondent of the Complaint, and the proceedings commenced on March 12, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 2, 2025.
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The Center appointed Scott R. Austin as the sole panelist in this matter on April 7, 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
Without contest by Respondent, Complainant asserts in its Complaint as amended, and its Annexes attached provide evidence sufficient to support that:
Founded in 2009, Complainant is a globally recognized technology platform company that operates a massive network to power movement from point A to point B through its proprietary technology applications connecting consumers with independent drivers for ridesharing services, as well as connecting restaurants, grocers and other stores with service providers for meal preparation, grocery and other delivery services, all using trademarks incorporating the term “uber” (collectively, the “UBER Mark”). Complainant’s technology services are available in approximately 70 countries around the world, principally in the United States and Canada, Latin America, Europe, the Middle East, Africa, and Asia. Complainant’s shares began trading publicly on the New York Stock Exchange on May 10, 2019 (symbol: UBER) and it joined the S&P 500 in December 2023.
Pursuant to provisions in Complainant’s most recent Annual Report, submitted as evidence in the Annexes to the Complaint, as of the year ending December 31, 2024, Complainant and its subsidiaries had approximately 31,000 employees globally, operations in more than 15,000 cities around the world, 171 million monthly active platform consumers and revenue of USD 43.978 billion.
Complainant is the registrant of numerous domain names consisting of or including the UBER Mark, including <uber.com>, which Complainant acquired no later than January 4, 2011, and which it uses in connection with its primary website, as well as <ubereats.com>, <uberhealth.com> and <uberfreight.com>.
Complainant’s primary website shows that Complainant’s ridesharing services include “Teen accounts on Uber,” which Complainant describes as “Teen accounts give your teenager the freedom to request their own rides and order their own meals, all under your supervision” and provides additional details about this service on its web page titled, “Uber for teens”. The record shows Complainant’s teen account ridesharing services received widespread media attention in the United States beginning on or about May 17, 2023, and articles and news reports featuring Complainant’s teen accounts for ridesharing services continued through March 2, 2024.
Complainant owns more than 1,700 trademark registrations that consist of or include the UBER Mark in at least 91 jurisdictions around the world, including:
| - | United States Trademark Reg. No. 3,977,893, UBER, registered with the United States Patent and Trademark Office on June 14, 2011, for use in connection with, inter alia, “computer software for coordinating transportation services”; |
| - | International Reg. No 1,111,203, UBER, registered December 13, 2011, for use in connection with, inter alia, “computer software for coordinating transportation services”; |
| - | European Union Reg. No. 1,0460,442, UBER, registered April 24, 2012, for use in connection with, inter alia, “computer software for coordinating transportation services”; |
| - | China Reg. No. 1173898A, UBER, registered April 18, 2013, for use in connection with, inter alia, “telecommunications services” and “providing a website featuring information regarding transportation services and bookings for transportation services”; |
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| - | Hong Kong, China, Reg. No. 302508507, UBER, registered May 3, 2013, for use in connection with, inter alia, “telecommunications” and “providing a website featuring information regarding transportation services and bookings for transportation services”; and |
| United States Trademark Reg. No. 5,042,023, UBER EATS, registered September 13, 2016, for use in connection with, inter alia, “providing a website featuring information regarding delivery services and bookings for delivery services”. |
The disputed domain name was registered on April 7, 2024, a little over a month after the latest in a series of articles was published providing widespread recognition of Complainant’s teen account rideshare services. The disputed domain name resolved to a pornographic website that includes graphic images of people engaged in sexual activities, along with links to other pornographic websites and accompanying text transliterated from Chinese to English which reads “Watch adult videos for free” and similar solicitations. Complainant’s amendment to its Complaint provides evidence that Respondent is also a serial cybersquatter who has registered numerous domain names confusingly similar to well-known trademarks.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name: that the disputed domain name is confusingly similar to Complainant’s UBER Mark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the
disputed domain name was registered and is being used in bad faith.
Notably, Complainant contends that the disputed domain name was registered on April 7, 2024, a little over a month after the latest article in widespread media recognition of Complainant’s teen account rideshare services was published, and also that Respondent is a serial cybersquatter who registered numerous domain names confusingly similar to other well-known trademarks.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent from the terms of the Policy that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of the probabilities that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
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(ii) 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.
The Panel finds that Complainant has met its burden in all three elements of the Policy and will deal with each of these elements in more detail below.
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant claims trademark rights in the UBER Mark for its ridesharing and delivery services. Sufficient evidence has been submitted in the form of electronic copies of active United States and international trademark registration certificates, showing the above-referenced trademark registrations for the UBER Mark in the name of Complainant. Complainant has through such valid and subsisting trademark registrations demonstrated its rights in the UBER Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657; see also Uber Technologies, Inc. v. Marc Sellouk, Flewber Inc and Marc Sellouk, Flewber Inc., WIPO Case No. D2024-4009.
With Complainant’s rights in the UBER Mark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s UBER Mark. It is well accepted that the first element functions primarily as a standing requirement and that the
threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between
the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.
A side-by-side comparison between the disputed domain name and the Mark shows that the disputed domain name consists of the term “uber”, identical to the UBER Mark, incorporated in its entirety into the disputed domain name, appended by the descriptive term “teen” following the UBER Mark.
Previous UDRP panels have held the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms [whether descriptive, geographical, pejorative, meaningless, or otherwise] would not prevent a finding of confusing similarity under the first element”); see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Complainant contends that because the word “teen” is associated with Complainant’s ridesharing services
for teens described above, it may increase confusing similarity between the trademark and the
disputed domain name. While such assessment of the overall commercial impact created through
combination of the additional term with Complainant’s mark may be more appropriate under the second and
third elements of the Policy, the Panel finds the addition of such term within the disputed domain name does
not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark for
the purposes of the Policy. WIPO Overview 3.0, section 1.8. See also Avon Products, Inc v. Jerrold Burden,
WIPO Case No. D2014-2166.
Finally, the Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.co”) typically adds no meaning or distinctiveness to a disputed domain name and is viewed as a standard registration requirement; as such it is disregarded under the paragraph 4(a)(i) analysis. Accordingly, the TLD of the disputed domain name here, “.com”, does not avoid a finding of confusing similarity. See, WIPO Overview 3.0, section 1.11.1; see also Research In Motion Limited v. Thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146.
In light of the above, the Panel finds the disputed domain name confusingly similar to the UBER Mark which remains clearly recognizable within the disputed domain name. Complainant has thus satisfied its burden under paragraph 4(a)(i) of the Policy.
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B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which 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 perplexing 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. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent here has failed to present any evidence of its rights or legitimate interests in the disputed domain name.
The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
First, Complainant contends that “has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the UBER Trademark in any manner, and Respondent has no relationship whatsoever with Complainant”.
Prior UDRP panels under the Policy have found that “[i]n the absence of any license or permission from Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed”. See Sportswear Company S.P.A. v. Tang Hong, WIPO Case
No. D2014-1875; see also Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098. The Panel finds that Respondent has neither any connection with Complainant, nor has Respondent been authorized or licensed by Complainant to use and register the UBER Mark or to register any domain name incorporating Complainant’s UBER Mark.
Paragraph 4(a)(ii) of the Policy also directs an examination of the facts to determine whether a respondent has rights or legitimate interests in a domain name. Paragraph 4(c) lists a number of ways in which a respondent may demonstrate that it does have such rights or legitimate interests.
Complainant contends that by using the disputed domain name that resolves to a website containing pornographic content, Respondent has failed to create a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
Prior UDRP panels have found that “use… solely to direct Internet users to pornographic websites… cannot
be considered a bona fide offering of goods or services”, Six Continents Hotels, Inc. v. credoNIC.com /
DOMAIN FOR SALE, WIPO Case No. D2004-0987; see also Six Continents Hotels, Inc. v. null
JohnZuccarini d/b/a Country Walk, WIPO Case No. D2003-0161.
The second example, under paragraph 4(c)(ii), is a scenario in which a respondent is commonly known by the domain name. Complainant contends Respondent is not commonly known by the disputed domain name or the UBER Mark, and therefore cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy. Complainant states that it has not given permission to Respondent to use the UBER Mark. Respondent is not a licensee of Complainant. Respondent is not affiliated with Complainant in any way. Complainant has not granted any authorization for Respondent to make use of its UBER Mark, in a domain name or otherwise. Complainant also shows that Respondent is not commonly known by the disputed domain name because the original Respondent listed in the WhoIs record submitted with the initial Complaint displayed “Redacted for Privacy” of the United States. The Registrar identified the underlying registrant in its verification process, “Schneider Stacken”, replaced as Respondent pursuant to the
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amendment to the Complaint also of the United States. Neither the initial nor substituted Respondent bears domain name and Complainant’s more than 1,700 trademark registrations in at least 91 jurisdictions worldwide for the UBER Marks, it appears practically impossible that Respondent is commonly known by this the UBER Mark or the disputed domain name incorporating it. Thus, there is no evidence in this case to suggest that Respondent is commonly known by the disputed domain name, that it is licensed or otherwise authorized to use Complainant’s trademark, or that it has acquired any trademark rights relevant thereto. As such, the Panel finds this sub-section of the Policy is of no help to Respondent, and the facts presented here support a lack of rights or legitimate interests in the disputed domain name. See Expedia, Inc. v. Dot Liban, Hanna El Hinn, WIPO Case No. D2002-0433.
any resemblance to the disputed domain name whatsoever. In addition, as Complainant contends, given
Complainant has met its initial burden as it is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to Complainant’s trademark, that Respondent is not commonly known by the disputed domain name, and that Complainant has not authorized Respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857; see also Abbott Laboratories v. Li Jian Fu, Li Jian Fu, WIPO Case No. D2016-0501.
Complainant next contends that Respondent is not using the disputed domain name in connection with a “legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” anticipated under
paragraph 4(c)(iii) of the Policy, but has intentionally chosen a domain name based on a well-known technology, transportation, delivery, and logistics services to resolve to Respondent’s website featuring adult content by which Respondent likely earns revenue and clearly tarnishes Complainant’s UBER Mark.
registered trademark in order to generate traffic and income through a website featuring adult content with
links to other websites featuring adult content, not related to Complainant in any way. The Panel notes that
the record of evidence submitted in the Annex to the Complaint supports Complainant’s argument that
Previous UDRP panels have held that “a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry”. Here, the disputed domain name combines the famous UBER Mark with terms descriptive of Complainant’s teen ridesharing accounts, namely, “teen”, and uses such risk of implied affiliation to mislead Internet users expecting to find Complainant and instead are directed to a website featuring pornographic content and links which is clearly commercial benefit to Respondent and also tarnishes Complainant’s UBER Mark and reputation. WIPO Overview 3.0, sections 2.5.1 and 2.5.3; see also Wal-Mart Stores, Inc. v. Urfin Juice, WIPO Case No. D2004-0028.
Additionally, in the amendment to its Complaint, Complainant provides competent WhoIs evidence showing
that Respondent has registered numerous domain names that are confusingly similar to other well-known
trademarks, and has therefore engaged in a pattern of trademark-abusive domain name registrations,
commercial activity which would not support a claim to rights or legitimate interests under the Policy.
WIPO Overview 3.0, section 2.5.3
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
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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.
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
In the present case, given the circumstances described in the Complaint and the documentary evidence submitted by Complainant, the Panel finds that the disputed domain name was registered in bad faith.
First, given that the UBER Mark is globally protected by more than 1,700 trademark registrations in at least 91 jurisdictions worldwide, the oldest of which was registered almost 14 years ago and it is used by a public company with approximately 31,100 employees globally, operating in approximately 70 countries and more than 15,000 cities around the world, with 171 million monthly active platform consumers and annual revenue
of USD 43.978 billion Complainant’s UBER Mark is internationally well known amongst the relevant public
such that it is inconceivable that Respondent chose the disputed domain name without knowledge of
Complainant’s activities and the name and trademark under which Complainant is doing business. See
Pancil LLC v. Domain Deluxe, WIPO Case No. D2003-1035.
The Panel also finds additional bad faith factors to consider here. Respondent combined Complainant’s UBER Mark with the term “teen” to configure the disputed domain name, which combination triggers an inference of affiliation by suggesting that the disputed domain name relates to Complainant’s teen accounts
for its ridesharing services. The Panel finds further that Respondent registered this combination following recognition. It is reasonable for the Panel to infer, therefore, that Respondent’s registration timing is additional evidence of bad faith to capitalize upon the widespread media attention and recognition following the “product launch” of Complainant’s teen account ridesharing services over the year leading up to Respondent’s registration of the disputed domain name. See WIPO Overview 3.0, section 3.2.1.
As prior UDRP panels have noted, “[t]he overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”. See Rockstar Games v. Texas International Property Associates, WIPO Case No. D2007-0501.
Complainant’s evidence shows that Respondent clearly registered the disputed domain name to target
Complainant’s internationally famous UBER Mark in order to divert Internet traffic from Complainant’s site to
websites offering services for adult entertainment content for Respondent’s commercial benefit in bad faith.
See Bakeca S.P.A., Time for Now Limited v.Constantina-Geanina Panainte, Cristian-Anton Vasile, WIPO
Case No. D2015-1053.
Respondent’s conduct, therefore, clearly falls within the example of bad faith registration and use under Policy, paragraph 4(b)(iv) because Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s UBER Mark. Indeed, considering the conduct of Respondent described above, the Panel finds that Respondent registered the disputed domain name in a deliberate effort to target Complainant and its UBER Mark and redirect traffic to Respondent’s adult content website in bad faith. Given the circumstances described in the Complaint and the documentary evidence provided by Complainant, the Panel finds that the disputed domain name was registered and is being used in bad faith. See WIPO Overview 3.0, section 3.1.4. See Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755.
Finally, Complainant argues in the amendment to its Complaint as additional evidence of Respondent’s bad faith, that Respondent is a serial cybersquatter who has registered numerous domain names that are confusingly similar to other well-known trademarks. A consensus of prior UDRP panels has found that a pattern of abuse under paragraph 4(b)(ii) of the Policy is established where the respondent registers,
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simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks
of individual brand owners. WIPO Overview 3.0, section 3.1.2. The Panel’s review of the WhoIs data and
corresponding registrations of internationally recognized trademarks is sufficient to find Respondent’s
registration and use of the disputed domain name in bad faith under paragraph 4(b)(ii) of the Policy.
Accordingly, Complainant has met its burden of showing that the disputed domain name was registered and is being used in bad faith. 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 <uberteen.com> be transferred to Complainant.
/Scott R. Austin/
Scott R. Austin
Sole Panelist
Date: May 14, 2025
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