Decision for dispute CAC-UDRP-108495

The Respondent asserts that the disputed domain name <eshikhon.com> was previously the subject of a police complaint (“General Diary”) by the Respondent in Bangladesh.  The Respondent further asserts that the disputed domain name was subsequently restored to him through registrar action and that the police complaint was withdrawn following recovery of the disputed domain name.  The Panel has not seen any documentary evidence in relation to the police complaint or registrar action.  The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant owns the US national word and device trade mark ESHIKHON, registration number 7771356, first registered on 22 April 2025 in international class 41.  The Panel notes that the Complainant’s registered trade mark pre-dates registration of the disputed domain name <eshikhon.net> but post-dates the registration of the disputed domain name <eshikhon.com>. The Complainant therefore asserts that he also owns unregistered trade mark rights and that he has used the name ESHIKHON in the course of business since at least 2016.  The Panel notes that the registration certificate for the United States trade mark states “First USE 11-9-2019; IN COMMERCE 12-00-2024”.  The Complainant seeks to adduce evidence to show that the name ESHIKHON has been in use since at least 2016.  However, for the reasons given below, the Panel makes no determination whether any unregistered trade mark rights exist in the name ESHIKHON and whether any such unregistered trade mark rights accrued to the Complainant or the Respondent.  

The Complainant and the Respondent are both private individuals resident in Bangladesh and were previously engaged in a business relationship concerning an e-learning platform trading under the name ESHIKHON. The disputed domain name <eshikhon.com> was registered on 1 March 2015.  The disputed domain name <eshikhon.net> was registered on 27 May 2025. Both disputed domain names resolve to the same active website at https://eshikhon.co.bd, which offers predominantly IT and digital marketing related e-learning services in Bangladesh.  The Bengali language term “shikhon” appears to mean “learning” in English.  The name ESHIKHON is therefore prima facie descriptive of E-learning in the Bengali language.  Numerous You Tube video tutorials have been published under and by reference to the name ESHIKHON.

Complainant

The Complainant asserts that the disputed domain names are associated with his business, online presence, and trade marks. The Complainant asserts that he initially owned the disputed domain names uninterruptedly between 2016 and 2002 but that the Respondent, a former independent contractor working for the Complainant, unlawfully transferred the disputed domain names to himself without the Complainant’s authorisation in February 2022, using the technical and administrative information to which he had access.  The Complainant further states that, in 2026, he contacted the registrar of the disputed domain name <eshikhon.com> to obtain the domain name for himself but was informed by the registrar that this matter was a domain name ownership dispute that needed to be resolved either directly with the Respondent or through appropriate legal channels.  The Complainant argues that the Respondent has no rights or legitimate interest in the disputed domain names and registered and is using the disputed domain names in bad faith.

Respondent

The Respondent asserts that he founded the e-learning platform INFONETBD in 2012, and that he rebranded the platform into ESHIKHON in 2015, when he also registered the disputed domain name <eshikhon.com>.  The Respondent claims to have used the disputed domain name <eshikhon.com> continuously since that date in connection with his bona fide e-learning business.  The Respondent asserts that the Complainant was a student of the Respondent in a web design course in 2014.  The Respondent further states that, from 2015 onwards, the Complainant assisted the Respondent with international transactions, and the Respondent later retained him also to assist with You Tube channel management.  In 2022, the Complainant is said to have changed the access credentials and to have taken control of the Respondent’s You Tube channel without authorisation; demanded partnership; and attempted to change domain access, which was restored to the Respondent following the police complaint referred to above. The Respondent claims to be the legitimate owner of the ESHICON business and platform. The Complainant is said only to have managed certain video tutorial activities and not to have had ownership or decision-making authority in the business. The Respondent denies that he acted in bad faith.

Complainant’s Reply

In an unsolicited further submission in form of a “witness statement”, the Complainant in response to the Respondent’s submissions asserts that he founded ESHIKHON as his own brand venture in 2015, that he funded the business, owns the brand assets, and maintains a valid trade licence for his business operations.

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

The Complainant has not, 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 not, 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 Complainant asserts that the disputed domain names have been registered by the same domain-name holder and that this administrative proceeding may therefore relate to both disputed domain names in accordance with paragraph 3(c) of the UDRP Rules.  At the same time as circulating the Registrar Verification to the Parties, the case administrator informed the parties that “even though the Registrant´s name, address etc. are the same and most of the Registrant details are also similar, the e-mail address, which is the most important for UDRP differs, therefore, please insert the details as there are 2 Respondents in the proceeding”.  The Respondent initially submitted one response but, at the request of the case administrator, subsequently submitted a separate response in relation to the second disputed domain name within the applicable procedural deadlines. 

The Panel notes that the Amended Complaint includes no fewer than 33 annexes and the Response includes some 24 annexes.  The Panel has reviewed the Complainant’s unsolicited further submissions but, for the reasons given below, nothing turns substantively on these further submissions for the purpose of the Panel’s decision.  

The circumstances of the proceeding could be said to indicate that the disputed domain names have indeed been registered by the same domain-name holder, including the fact that the name of the registrant of both domain names is identical and that both disputed domain names point to the same website.  However, the Panel is in any event satisfied for these reasons that it would otherwise be equitable and procedurally efficient in the circumstances for the disputes relating to the two disputed domain names to be consolidated into one proceeding in accordance with paragraph 10(e) of the UDRP Rules.

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

With regard to the first UDRP element, the Panel finds that the disputed domain name <eshikhon.net> is identical with the Complainant's registered trade mark ESHIKHON. Indeed, the disputed domain name incorporates the Complainant's registered trade mark in its entirety without any alteration. The Panel follows in this respect the view established by numerous other decisions that a domain name which wholly incorporates a Complainant's registered trade mark is sufficient to establish confusing similarity for the purposes of the UDRP (see, for example, WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin <porsche-autoparts.com>).  However, the Complainant’s registered trade mark post-dates the registration of the disputed domain name <eshikhon.com> by some 10 years.  It appears to the Panel difficult for the Complainant to suggest that the unregistered trade mark rights which he asserts in the name ESHIKHON commencing in 2016 pre-date registration of the disputed domain name <eshikhon.com> in 2015 although the Panel notes that the Complainant seeks to argue the existence of nascent trade mark rights and that these nascent rights should nevertheless be recognised.  The Panel alluded above to its decision not to make any finding whether any unregistered trade mark rights exist in the name ESHIKHON and whether any such unregistered trade mark rights accrued to the Complainant or the Respondent. 

With regard to the second UDRP element, the Panel observes that the disputed domain names resolve to an active website providing e-learning services, which would ordinarily be apt to demonstrate that the Respondent has legitimate rights or interests in the disputed domain name.

However, the Panel is unable to make any findings and to determine whether the Respondent lacks rights or legitimate interests in the disputed domain names and/or has registered and is using the disputed domain names in bad faith within the meaning of the third UDRP element.  The present matter concerns a contested ownership dispute between the Complainant and the Respondent not only relating to the disputed domain names but also to the associated brand assets, social media accounts, and You Tube channel, which arises out of a prior business relationship between the parties.  The UDRP is only designed and intended to resolve reasonably clear cut cases of cybersquatting and cyberpiracy.  The limited expedited and administrative nature of the UDRP procedure is neither suited nor intended for resolving complex ownership disputes with voluminous and contradictory evidence, the veracity of which the Panel has no means of testing.  In these circumstances, the Policy requires Panels to identify those cases appropriate for resolution and to dismiss those that are not.  Courts or other appropriate tribunals, which are equipped to examine evidence, including through discovery and witness-examination, should be deferred to where a case involves material unreconcilable facts and versions of events, or where credibility is a key issue and is unable to be determined.  It is not possible for the Panel in this matter thoroughly to assess the parties’ respective opposing factual allegations, including as to alleged fraud and wrongful activity.  The Panel therefore concludes that resolving the factual issues involved in this matter is well beyond the limited means available for that purpose under the UDRP.  The determination of the present dispute is beyond the scope of the Policy and needs to be effected by a court or arbitral tribunal of competent jurisdiction and with full procedural and evidential powers.  In so concluding, the Panel takes no position with regard to the ownership issue of the disputed domain names.

The Panel follows in this regard an established line of decisions of other Panels in similar situations, including but not limited to: Jeppe Eriksen (Equiom Capital Invest Sp.zo.o) v. Sabri Felix Can Denis Ansay, CAC UDRP Case No. 107286 <canngo.org>; Styleline Studios International Limited v. lillian litvack / JSlides Footwear / JAY LITVACK / JSL STUDIO, Forum Case FA2503002143824 <jslidesfootwear.com> and <jslides.com>; and Bayer Intellectual Property GmbH v. Bediamond GmbH, WIPO Case No. D2023-5303 <bevigra.com>.

For all the reasons stated above, the complaint is rejected.