Decision for dispute CAC-UDRP-107419

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of the trade mark INSTANT POT registered, inter alia, as UK trade mark registration no 3031331 for Cookers since 2014. 

The disputed domain name  was registered in 2023 and has been used for a site using the Complainant's INSTANT mark in its logo form as a masthead to impersonate the Complainant.

The Complainant's contentions can be summarised as follows:

Confusing similarity

The disputed domain name is confusingly similar to and wholly incorporates the Complainant's INSTANT POT mark.

The disputed domain name includes the Complainant’s INSTANT POT mark as the dominant element, along with a non-distinctive term “store”. Panels have consistently held that the addition of other generic terms do not avoid a finding of confusing similarity. The TLD suffix ".com" is disregarded as merely a technical requirement used for domain name registrations.

The Respondent has no rights or legitimate interests in respect of the disputed domain name; (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))

Based on the considerable reputation of the INSTANT POT brand, there is no credible, believable, or realistic reason for registration or use of the disputed domain name other than to take advantage of the Complainant’s rights and brand reputation. The disputed domain name was registered 25 January 2025, by this point, the Complainant already had rights (both registered and unregistered) in INSTANT POT.

The Respondent is using the disputed domain name to resolve to an active website (the “Infringing Website”). The Infringing Website offers counterfeit goods targeting the Complainant for commercial gain. For the avoidance of doubt, the Respondent and the Infringing Website does not have authorisation or consent from the Complainant. The Respondent’s use of the disputed domain name is merely to pass off as the Complainant in order to sell counterfeit and competing goods, this shows that they are not using the disputed domain name in relation to a bona fide offering of goods or services. Consequently, the Respondent cannot claim a defence under the Policy, Paragraph 4(c)(i). The Respondent has never legitimately been known by the name INSTANT POT at any point in time. The use is commercial so the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.

The disputed domain name was registered and is being used in bad faith; (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant submits that the disputed domain name has been registered and used in bad faith in accordance with Policy, Paragraph 4(a)(iii). The Registered Trade Marks pre-date the registration of the disputed domain name and the INSTANT POT brand enjoys a wide reputation. Furthermore, the Respondent was unequivocally aware of the INSTANT POT brand given the Respondent’s Infringing Website made substantial use of INSTANT POT brand assets such as the Complainant's INSTANT mark in its logo form in order to sell counterfeit and competing goods. Therefore, the Complainant submits that the Respondent had knowledge of the INSTANT POT brand and that the disputed domain name was registered with the sole purpose of targeting the Complainant’s trade marks.

The Complainant submits based on the Respondent’s use of the INSTANT POT brand to offer for sale counterfeit and competing goods, the Respondent has actual knowledge of the Complainant’s rights in the INSTANT POT brand at the time of registering the disputed domain name. Actual knowledge of a complainant’s rights in a mark prior to registering a confusingly similar domain name evinces bad faith under paragraph 4(a)(iii) of the Policy.

The Respondent has registered the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to the Infringing Website, by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation, or endorsement of the Infringing Website under Policy, Paragraph 4(b)(iv).

Response

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The disputed domain name is confusingly similar to the Complainant's prior INSTANT POT mark merely adding the descriptive word "store" and the gTLD .com neither of which prevent said confusing similarity. 

The Respondent is not authorised by the Complainant or commonly known by the disputed domain name.

The Respondent is using the disputed domain name for a site using the Complainant's INSTANT mark in its logo form as a masthead to purport to offer the Complainant's products and impersonate the Complainant which is not a bona fide offering of goods or services. It is registration and bad faith confusing Internet users for commercial gain and disrupting the Complainant's business with competing behaviour.