Decision for dispute CAC-UDRP-108805

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 owns the following trademark registrations for EDITPAD:

• European Union trademark number 019167318 (figurative mark) applied for on 3 April 2025 and registered on 18 July 2025 in classes 9 and 42;
• United Kingdom trademark number UK00004183681(figurative mark) applied for on 3 April 2025 and registered on 27 June 2025 in classes 9 and 42; and
• United States trademark number 7947610 (word mark), applied for on 13 January 2025 and registered on 16 September 2025 in class 9, and noting the date of first use in commerce on 1 July 2000.

The Complainant has used the name EditPad since 2000 and holds the following domain name registrations that include that term:

• <editpadclassic.com.>, <editpadpro.com>, and <editpadlite.com>, registered on 26 July 2000; and
• <editpad.app> registered on 13 February 2025.

The Complainant is based in Thailand. The Complainant has owned trademark registrations for EDITPAD in the EU, UK and the US since 2025. The US trademark notes its first use in commerce in July 2000.

The Complainant created the EditPad product in 1996. He has used the term EditPad for his on-line editing tools since 2000, and has held the domain names <editpadclassic.com>, <editpadpro.com>, and <editpadlite.com>since 2000.

The disputed domain name <editpad.org> was created on 30 November 2006 using a privacy service. The original registrant was based in Germany. In September 2021, the disputed domain name was offered for sale by auction on the Sedo site. There was one bid to purchase it for €30,000.

The Respondent is based in Pakistan and controls the company Enzipe UK Limited.

The Respondent filed with the Response the Sedo, Purchase and Sale Agreement of 01/09/2021 between the original registrant, Thomas Churn, and Maxed Out Social Media for the purchase of the disputed domain name for €30,000.

The date the Respondent became the registrant was not specified in the registrar verification. On 6 August 2026, the Registrar, GoDaddy, confirmed that the disputed domain name was registered to the Respondent “since at least 8/8/2024”.

Complainant

The Complainant asserts that the disputed domain name is confusingly similar to its distinctive registered and common law trademarks for EDITPAD.

The Complainant claims that he has used the EDITPAD mark since 1996 in the online space and on websites accessible worldwide. His domain names <jgsoft.com>, registered since 22 December 1998, and <just-great-software.com>, registered on 14 July 2001 are used for his websites referring EditPad.

The Complainant asserts that the Respondent would have been aware of the Complainant’s rights when he acquired the disputed domain name Respondent. The Complainant has submitted evidence of his use of the term EditPad since 1996 and states the amount of €30,000 paid for the disputed domain name is a measure of the well-established reputation, goodwill and search demand already attached to the Complainant’s mark.

When the Respondent purchased the disputed domain name, the Respondent was listed on the <prepostseo.com> website as the website developer and offered various SEO (search engine optimisation) services under his own name. The Complainant asserts that such a person would have conducted screening prior to purchasing the disputed domain name and would have determined that the disputed domain name was identical or very similar to the Complainant’s mark and have a high value.

The Complainant asserts that the Respondent does not have any rights or legitimate interest in the disputed domain name and states:

1. the Complainant had acquired rights to the name “EditPad” many years before the disputed domain name was registered to the Respondent, and before the disputed domain name was first registered;
2. the Respondent has not applied for or registered any trademarks for EDITPAD, which highlights an inability to establish any legitimate claim to the mark;
3. the Complainant has not authorised or licensed the Respondent to use its registered EDITPAD marks or its confusingly similar alterations on the Respondent’s website or in the disputed domain name;
4. after the Respondent acquired the disputed domain name, he launched a website linked to the disputed domain name offering software that was confusingly similar to the Complainant’s software and branded under the identical EDITPAD mark;
5. the Respondent’s website shows multiple trademarks, not only owned by the Complainant, but also trademarks of others without authorisation, which shows the Respondent’s main goal is to divert consumers and confuse visitors to the website; and
6. the Respondent launched mobile applications via Google Play, Apple App Store and Microsoft Store, named in the same way as the Complainant’s EDITPAD software. Google Play and Microsoft Store took down the Respondent’s infringing mobile applications. The Respondent renamed the Apple app, which evidences the Respondent was aware of the Complainant’s rights.

The Complainant submits that the Respondent acquired and has used the disputed domain name in bad faith and states:

1. the assessment of bad faith should be at the time the Respondent acquired the disputed domain name, not its creation date, see WIPO Overview 3.1, section 3.9;
2. the Respondent has used the disputed domain name intending to exploit the goodwill associated with the Complainant’s trademarks, and to disrupt the Complainant’s thriving business by misleading consumers and diverting them from the Complainant's online offer;
3. the disputed domain name was originally registered on 30 November 2006, over 6 years after the registration of the Complainant’s EDITPAD domain names and 10 years after the launch of Complainant’s software. The Respondent acquired it over 20 years after the Complainant’s software and websites were launched;
4. the Respondent must have known that the Complainant’s rights when he acquired the disputed domain name as a simple online search would have revealed the Complainant’s domain names and EditPad software;
5. the Respondent brands the website as “EditPadˮ with a representation of the EDITPAD logo and similar content that invites an association with the Complainantʼs brand, as a result users are likely to assume a connection between them; and
6. the Respondent was found in Nerdlegame Ltd v. Ahmad Sattar, WIPO Case number D2023-3000 to have registered and used the domain name in bad faith.

In the Complainant’s further submission, he notes that the Purchase and Sale Agreement filed with the Response is between the original registrant and the buyer, Maxed Out Social Media on 21 September 2021. There is no explanation of the chain of title between the purported agreement date and when the Respondent acquired it.

Respondent

The Respondent contends that there are no grounds for the disputed domain name to be transferred to the Complainant. He asserts that disputed domain name registration predates the registration date of the Complainant’s trademarks and postdates his purchase of the disputed domain name in 2021.

The Respondent claims he has rights in the disputed domain name and states it is irrelevant that he is not the original proprietor. He states he became aware of the disputed domain name during the course of his business and purchased it and the existing website in good faith around September 2021. Since its acquisition, he has continued to use the disputed domain name for a bona fide offering of an online notepad and has expanded <editpad.org> services by adding more functionality and niche editing tools. He states that the website has been in operation since 2007. He has not claimed any affiliation with the Complainant and is willing to take reasonable steps in other channels to mitigate potential confusion.

He claims that “Edit” and “Pad” are ordinary English words with descriptive meaning and he cannot monopolise descriptive words.

The Respondent admits that there has been some use of the EditPad sign by the Complainant since 1996, but the scale and geographical spread are impossible to determine. The Respondent says the sales of EditPad were de minimus. He denies he would have been aware of the Complainant and his rights when he acquired the disputed domain name and denies that the disputed domain name was registered in bad faith.

The Respondent states that he searched the trademark register and no trademark was registered. He asserts that even if he had been aware of the Complainant’s use of the sign EditPad when the disputed domain name was purchased, that fact would be irrelevant given that he was purchasing a domain name and associated website that had been in operation concurrently with the Complainant’s use, apparently without any complaint from the Complainant, for approximately 15 years.

The Respondent claims the disputed domain was sold for €30,000 on 21/09/2021, and the Respondent does not lose the earlier date of acquisition in 2006 as it stands in the former owner’s shoes.

The Respondent asserts the Complainant was aware of the Respondent’s site and services before filing his trademark application and cites the WIPO Overview that panels will not normally find bad faith where the disputed domain name was acquired or registered before the complainant’s trademark rights accrued. The Respondent asserts that the Complainant is reverse domain name hijacking on the basis that the Complainant’s trademark registrations post-date the disputed domain name’s 2006 creation and the website’s operation since 2007.

The Respondent denies that his website makes use of third-party software without authorisation.

Lastly, the Respondent’s further submission claims he acquired the disputed domain name on 15 January 2021.

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).

On 1 August 2026, the Complainant filed a request for permission to file a brief additional submission to correct factual assertions in the Response that were not foreseeable when filing the Complaint. On 3 August 2026, the Respondent filed its opposition to the request. Some of the evidence submitted with the Response and the allegation of reverse domain name hijacking were not things the Complainant could have reasonably contemplated when filing the Complaint. To allow both parties to properly present their case, the Panel issued a Procedural Order on 4 August 2026 exercising the powers granted under the UDRP Rules, paragraph 10 (General Powers of the Panel) and paragraph 12 (Further Statements) allowing the Complainant to file an additional submission and the Respondent to respond. The Complainant filed a further submission in reply on 7 August 2026. No further submission was received from the Respondent.

 On 14 August, the Provider informed the Panel that the Registrar had confirmed the date that the disputed domain name was registered to the Respondent. This date was missing from the original Registrar verification. The Panel made a further Procedural Order allowing the parties until 19 August to comment on this new information and extending the decision date to 21 August 2026.

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.

Paragraph 4(a) of the Policy requires the Complainant to prove that:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in the disputed domain name; and
3. the disputed domain name has been registered and used in bad faith.

The Panel must decide the Complainant based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law deemed applicable, see UDRP Rules paragraph 15. The applicable standard of proof is the balance of probabilities, that is, it is more likely than not that the claimed fact is true.

IDENTICAL OR CONFUSINGLY SIMILAR

It is well accepted that the first element functions primarily as a standing or threshold requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. While paragraph 4(a)(i) of the Policy requires proof of trademark rights, it does not specify the date on which the owner of the mark acquired its rights, although this may be relevant to the assessment of bad faith under paragraph 4(a)(iii).

The disputed domain name incorporates the entirety of the Complainant’s EDITPAD trademark. That mark is clearly recognisable in the disputed domain name. The addition of the top-level domain “.org” can be disregarded when assessing confusing similarity.

The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of Paragraph 4(a)(i) of the Policy have been met.

NO RIGHTS OR LEGITIMATE INTERESTS

Paragraph 4 (c) of the Policy sets out how a Respondent may demonstrate rights or legitimate interests to the domain name, which include without limitation:

(i) before notice of the dispute, the Respondent has used, or made demonstrable preparations to use, the domain name or a name corresponding to it in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the domain name; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not claimed, nor does the evidence suggest, that he is commonly known by the disputed domain name. Nor does the Respondent assert that he is making a legitimate noncommercial or fair use without intent for commercial gain.

The Respondent asserts his legitimate rights arise from his purchase in good faith of the disputed domain name and accompanying website. The Respondent claims he became aware of the disputed domain name during the course of his business and acquired it in September 2021. It seems implausible to the Panel that the Respondent would purchase a domain name for €30,000 without carrying out normal due diligence checks. It appears unusual that the Respondent, whose business includes search engine optimisation, would search the trademark register but not carry out an online search of the term “editpad” before buying the disputed domain name at considerable expense.

The Respondent says he stands in the shoes of the former owner who registered the disputed domain name in 2006. However, the Respondent is not the purchaser of the disputed domain under the September 2021 Sale and Purchase Agreement and there is no evidence that he has any rights granted under that agreement by the former owner.

The Complainant has submitted a screenshot of the previous holder's website via the Wayback Machine dated 29 September 2021, which states that the original owner sold the disputed domain name without the content of the website. It is unclear how the Respondent acquired the website if the original owner did not sell it.

The Complainant has registered trademarks for EDITPAD in the UK, EU and US, which were registered in 2025. The Complainant has unregistered rights that predate those registrations. The Respondent admits that there has been some use of the EditPad sign by the Complainant since 1996, but queries its scale of use. The Complainant has submitted evidence of the number of licences sold between 2002 and 2026, annual revenue between 2002 and 2021, details of invoices from 2000 to 2002 showing sales in thirteen countries, and market and customer reviews. The €30,000 bid to acquire <editpad.org> appears a measure of the reputation attached to the name.

The Respondent’s website accessed via the disputed domain name features the Complainant’s mark “EditPad” and distinctive notepad logo on the left-hand side, The confusingly similar depiction of the Complainant’s trademark on a website offering services similar to those of the Complainant, appears intended to confuse internet users into thinking they are dealing with the Complainant. The same depiction of the Complainant’s mark also appears on the Respondent’s website using the domain name <enzipe.com>. This is not a bona fide offering nor gives rise to rights or legitimate interests in the disputed domain name.

The Respondent states he has not claimed any affiliation with the Complainant and is willing to take reasonable steps in other channels to mitigate potential confusion. The fact that the Respondent sees the need for a disclaimer to mitigate potential confusion appears an acknowledgement that users may be confused.

Having considered all the factors outlined above the Panel finds that the Respondent lacks rights or a legitimate interest in the disputed domain name and the requirements of paragraph (a)(ii) of the Policy are satisfied.

REGISTERED AND USED IN BAD FAITH

It is well accepted that a change of registrant or transfer of a domain name constitutes a new registration. This requires the issue of bad faith to be determined at the time the Respondent took possession of the disputed domain name, see Ticketmaster Corporation v Global Access, WIPO CASE No. D2007-1921 and WIPO Overview 3.1 at section 3.9.

The Respondent has used a privacy service to register the disputed domain name and has provided conflicting information on when he acquired the name. The Response claims the Respondent became the registrant of the disputed domain name in September 2021. The Registrar verification stated the Respondent became registrant “since at least 8 August 2024”. Subsequently, the Respondent filed a further submission claiming he became registrant on 15 January 2021. 

At the time the Respondent acquired the disputed domain name, which at the earliest was 15 January 2021, the Complainant already had established common law trademark rights, which became formalised when the mark was registered in 2025.

The Respondent accepts that there is some similarity between the disputed domain name and the Complainant’s trademark but says they are not identical. What the Respondent does not explain is why the website using the disputed domain name features both the term EditPad and on the left-hand side a virtual replica of the Complainant’s distinctive logo. These also feature on the Complainant’s <enzipe.com> website.

Considering all the factors outlined above including, the Panel concludes that the Respondent knew of the Complainant’s rights when he acquired the disputed domain name and registered and used it in bad faith and that the requirements the requirements of paragraph (a)(iii) of the Policy have been met.

REVERSE DOMAIN NAME HIGHJACKING

The Complainant has common law rights in the mark EDITPAD that predate the Respondent’s acquisition of the disputed domain name. There is no evidence that the Complaint was bought in bad faith or constitutes an abuse of the administrative process. The Panel finds that the allegation of reverse domain name hijacking is unfounded.