DECISION

 

Ziff Davis, LLC v. Stephen Ham / Consulting on Digital

Claim Number: FA2502002139510

 

PARTIES

Complainant is Ziff Davis, LLC ("Complainant"), represented by Alyssa Flores of Ziff Davis, LLC, New York, USA. Respondent is Stephen Ham / Consulting on Digital ("Respondent"), Switzerland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mashable.ai>, registered with Porkbun LLC.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Lynda Braun, Paul DeCicco as Panelists and Dennis A. Foster as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 10, 2025; Forum received payment on February 10, 2025.

 

On February 11, 2025, Registrar Porkbun LLC confirmed by e-mail to Forum that the <mashable.ai> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun LLC registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP").

 

On February 11, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@mashable.ai. Also on February 11, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on March 27, 2025.

 

The Complainant submitted an Additional Submission on March 28, 2025. The Respondent in turn submitted an Additional Submission on April 4, 2025. Since the Additional Submissions contained information that assisted the Panel with technical issues in this case, the Panel has decided to use its discretion (Rule 12 of the Rules and Rule 7 of Forum Supplemental Rules) to accept the Additional Submissions.

 

On April 8, 2025, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Lynda Braun and Paul DeCicco as Panelists, and Dennis A. Foster as Chair.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

--The Complainant is the owner of global MASHABLE trademarks that are contained in or consist of the disputed domain name.

 

--The disputed domain name is identical or confusingly similar to the Complainant's MASHABLE trademark.

 

--The country code ".ai" is irrelevant in determining identity or confusing similarity. 

 

--Respondent cannot demonstrate any rights or legitimate interests in the disputed domain name per Policy paragraph 4(c)(i, ii and iii).

 

--Registration of a domain name incorporating another party's famous trademark does not confer any rights or legitimate interests in the disputed domain name.

 

--Respondent is not endorsed by, associated with, or authorized by Complainant to use any of its intellectual property.

 

--The Respondent was clearly aware of the Complainant and its MASHABLE trademark when he registered the <mashable.ai> disputed domain name because the Complainant's trademark is a leading media brand for technology and digital culture.

 

B. Respondent

 

--"Mashable" is a common English word which also is used in technical contexts to describe the ability to consolidate diverse data sources such as Application Programming Interfaces ("APIs").

 

--Respondent registered <mashable.ai> specifically for an Artificial Intelligence ("AI") driven data integration project, investing substantial personal resources, including extensive education and training.

 

--The Complainant never attempted to communicate with Respondent to clarify Respondent's intentions.

 

--The disputed domain name has never hosted content, advertising, or monetization efforts.

 

--As recognized in UDRP precedent, quoting a valuation in response to an inquiry -absent evidence of targeting or opportunism-does not constitute bad faith.

 

--Without any public-facing use, there is no factual basis for a claim of misappropriation or unfair benefit, and certainly no evidence of bad faith registration or use under the Policy.

 

--Over two decades of inaction undercut the Complainant's claims.

 

--Relevant precedent: Maternity IP Holding v. Michael Fournier, WIPO Case No. DAI 2024-0021, disputed domain name <motherhood.ai>.

 

Complainant's Additional Submission Contentions

--Complainant rejects Respondent's assertion that MASHABLE is a "generic term". As set forth in the Complaint, Complainant is the owner of numerous famous federally registered trademarks with the United States Patent and Trademark Office (USPTO) and foreign trademark offices. Such marks have been used extensively since 2005 in connection with a variety of goods and services, including computer software, online content, social networking services and advertising and marketing services.

 

--Even assuming, arguendo, that Respondent's contention that MASHABLE corresponds to a dictionary definition is correct, UDRP panels have consistently found that this is insufficient automatically to confer rights or legitimate interests. Respondent has not submitted any materials or evidence showing genuine use, or demonstrated that it is intended for such use.

 

--Although Respondent has submitted a plethora of affidavits espousing Respondent's experience in the technology space generally, not one of those contains a mention of Respondent being commonly known as or promoting a venture called MASHABLE or MASHABLE.AI. The Respondent affidavits merely contain vague references to MASHABLE. The Exhibits similarly do not evidence genuine use of the disputed domain name or MASHABLE. 

 

--Amid all of this information submitted by the Respondent, one fact is clear: Respondent has yet to put any content related to his alleged project on the disputed domain name website, more than two years after its acquisition.

 

--Additionally, Complainant rejects Respondent's notions that Complainant had no genuine concern with the disputed domain name because Complainant did not purchase the domain name itself. A trademark owner is not required to purchase every domain name extension in order to maintain its legitimate rights.

  

--Furthermore, Respondent's contention that he never offered the disputed domain name for sale to the Complainant simply because the contact about a sale was initiated by Complainant strains credulity. Although the Respondent claims to have been working on this alleged artificial intelligence project for over two years, he was eager and willing to sell the disputed domain name to Complainant for the outrageous price of $250,000.

 

--This clearly evidences Respondent's bad faith.

 

Respondent's Additional Submission Contentions

--Complainant "rejects Respondent's assertion that MASHABLE is a 'generic term,'".  The Complainant's own rebuttal confirms that its trademarks cover [only] "computer software, online content, social networking services, and advertising and marketing services." These marks relate to media—they possess no trademark registration, commercial activity, or consumer association in AI tools, SaaS platforms, or data integration. Having chosen a common English word that predates Complainant's commercial use, it cannot now assert monopoly rights over that term across unrelated industries. The Complainant offers no evidence refuting the centuries-long use of "mashable" in English, or its meaning in technical contexts—such as "mashable APIs". My intended use—AI-driven data integration—reflects that meaning and has no overlap with the Complainant's media business. Finally, I have not relied solely on the dictionary status of the word "mashable." My rights stem from a bona fide, documented, and independently developed AI project intended for use with this domain—evidence the Complainant has not substantively rebutted.

 

-- "Eager to sell" and Price Quote Mischaracterized: The Complainant contacted me twice—on January 22 and again on January 29—before I replied once, briefly, on February 3, 2025.

 

--That timeline does not suggest eagerness. Even if my response had been immediate, quoting a non-binding price to an unsolicited inquiry is not bad faith under UDRP precedent. The $250,000 figure was based on relevant experience. 

 

-- Affidavits and AI-Focused Intent Support Legitimate Interest. All three affidavits confirm that, in late 2022 and early 2023, I was developing an AI project—precisely the purpose for which <mashable.ai> was registered.

 

--Passive Holding is not equivalent to Bad Faith. The Complainant emphasizes that no site has been launched. As explained in my original response, "this reflects other work obligations and financial constraints… [and] the passive status of the disputed domain name simply mirrors the typical realities of a self-funded, iterative development process." Further, the Complainant's claims are inconsistent: it first alleges I am "benefitting from confusion," now, in its rebuttal, it faults me for not having launched the website. That contradiction further undermines the credibility of the Complaint.

 

--Complaint Strategy and Delay. The Complainant's 20-year inaction was not raised to suggest it had a duty to register every domain variation. Rather, it underscores that <mashable.ai> was never within its scope of activity or concern.

 

--The Complaint should be denied in full.

 

FINDINGS

Complainant is the owner of the well-known MASHABLE trademark.  Complainant is a limited liability company organized and existing under the laws of the state of Delaware in the United States. Since 2005, from its main website at <mashable.com>, the Complainant has used its MASHABLE trademarks to provide technical news, digital culture and entertainment content through various forms of digital media to its users all over the world in several languages. In 2007, the Complainant launched its first "International Open Web Awards," and in 2010, the Complainant launched its "Annual Mashable Awards" and expanded its award categories to include "Best API," "Best Web Video," "Most Promising New Company," and "Entrepreneur of the Year."

 

The Complainant's trademarks include: United States (USPTO) registration no. 4,339,040, registration date May 21, 2013, international classes 09, 035, 041, 042 inter alia, for online news about technology and services, social and digital media, computer software for providing online news and much more. The Complainant owns additional, comparable MASHABLE trademark registrations in the European Union, Japan, Australia, Russia, Indonesia and other countries around the world.

 

Respondent registered the disputed domain name <mashable.ai> on January 6, 2023. 

 

The Respondent has worked in the field of artificial intelligence (AI) for a number of years and currently is working on a project to be able to offer data integration from many different sources. 

 

At all times relevant to this proceeding, the Respondent was familiar with the Complainant, its internationally strong trademark, and the breadth of its computer and digital technology programming.

 

On January 22 and January 29, 2025, the Complainant sent an email to the Respondent asking how much the Respondent would charge to sell the disputed domain name <mashable.ai>. On February 3, the Respondent quoted an asking price of $250,000.

 

The Merriam-Webster, the Oxford and the Cambridge English On-line Dictionaries do not list "mashable" as a word. However, per the Respondent, the crowd-sourced slang dictionary, the Urban Dictionary,  does list "mashable" as two or more on-line applications that work together.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

As detailed in the Findings section of this Decision above, Complainant is the owner of trademarks that consist of the term MASHABLE found in the disputed domain name <mashable.ai>. Accordingly, Complainant has met the UDRP threshold requirement of trademark ownership. Herbalife Int'l of Am., Inc. v. Kumar, et al., FA 1381930 (Forum May 12, 2011) ("Complainant's registration of the Herbalife mark with the USPTO proves that it has rights in a trademark as required by UDRP Paragraph 4(a)(i)"). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO 3.0"), section 1.2.1.

          

The disputed domain name, <mashable.ai>, is identical to the Complainant's MASHABLE trademark. The addition of the country code top-level domain (ccTLD) ".ai" is irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant's Mashable trademark. See Pomellato S.p.A. v. Tonetti, WIPO Case No. D2000-0493 (Jul. 12, 2000), and Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (Dec. 9, 2000).

 

The Respondent counters that he is using the disputed domain name in its generic sense and therefore the disputed domain name is not identical or confusingly similar to the Complainant's trademark. The Panel finds this contention about meaning is premature for the identity or confusingly similar section of this Decision, but the Panel will address the Respondent's contention in the Bad Faith section below. 

   

Accordingly, the Panel finds the disputed domain name <mashable.ai> is identical to the Complainant's MASHABLE trademark, and that the Complainant has carried its burden of proof under Policy paragraph 4(a)(i). 

 

Rights or Legitimate Interests

The Complainant contends that the Respondent has no authorization or license to use its MASHABLE trademark in the disputed domain name. The Complainant also contends that the Respondent does not have rights or legitimate interests in the disputed domain name per Policy paragraph 4(c))(i, ii and iii). This constitutes a prima facie case under the Policy, and the burden of production then shifts to the Respondent to come forward and show that he does have rights or legitimate interests in the disputed domain name.  WIPO 3.0, section 2.1.

 

The Respondent has indeed come forward and contends that he has rights or legitimate interests in the disputed domain name per Policy paragraph 4(c)(i), i.e., before being notified of this proceeding, the Respondent was using or had made plans to use the disputed domain name in a bona fide offering of goods or services.

 

The Respondent has written at some length to describe his plans to create a center for research and production of "mashable" data integration capability at the disputed domain name. The Respondent contends he is in good faith doing this because his scientific and technical use of "mashable" is technical and therefore different from the Complainant's media and entertainment use of the term "mashable".   

 

The Respondent also contends that he is using "mashable" for its generic, dictionary meaning which he is allowed to do as in, for example, Maternity IP Holdings LP v. Michael Fournier, WIPO Case No. DAI 2024-0021 where a respondent kept ownership of <motherhood.ai> versus a complainant who had a MOTHERHOOD trademark. The difference in our present case is that "motherhood" is listed in the Merriam-Webster and Oxford and Cambridge On-line English Dictionaries whereas "mashable" is not. The Panel has no doubt that the Respondent is well aware of this.

 

As the Panel has stated in the Findings above, the Panel finds that, at all times relevant to this Decision, the Respondent was familiar with the Complainant, the Complainant's trademark, the renown of the Complainant's trademark, and the fact that the Complainant's website media offerings subsume familiarity with virtually everything the Respondent contends for his AI undertakings. The Respondent on the other hand patronizes and contends the Complainant's extensive AI programming is only for media and entertainment.

 

The Panel finds the Respondent is engaging in a post facto rationalization while he is well-aware that he is making a bad faith utilization of the Complainant's strong trademark in the disputed domain name. The Panel will elaborate further on this in the Bad Faith section of this Decision below.

 

The Panel finds, then, that the Complainant has shown that the Respondent does not have rights or legitimate interests in the disputed domain name per Policy paragraph 4(a)(ii).  

 

Registration and Use in Bad Faith

The Policy provides four non-exhaustive grounds (Policy paragraph 4b(iv)) on which a Respondent may be found to have registered and to be using a disputed domain name in bad faith. The Complainant urges the Panel to find bad faith because the Respondent offered to sell the disputed domain name to Complainant for US$250,000. However, as the Respondent points out, this was only after the Complainant twice wrote to the Respondent asking for a sale price for the disputed domain name. Thus, the Panel finds that Policy paragraph 4(b)(i) is not applicable to this situation, and nor is any other bad faith provision of 4b(iv).

 

The Panel instead finds that the conduct of the Respondent corresponds to the bad faith doctrine of passive holding which issues from several factors in the case at hand. WIPO 3.0, section 3.3.

 

First, the Complainant's MASHABLE trademark is a strong worldwide trademark. Second, the Respondent willfully registered this trademark in the disputed domain name in a proposed use closely related to the Complainant's business using the same name but in a different gTLD, ie, .com for the Complainant and .ai for the Respondent. Third, the Respondent has been holding the disputed domain name for two years without a website and proposes to continue while he works on a data integration project. Even so, as the Respondent concedes, as matters now stand, he could go public with a website any time he wishes and thus be in open competition with the Complainant: the Respondent's  website would feature AI material that already is prominently featured on the Complainant's website. Fourth, the Respondent has casually misled the Panel about easily verifiable facts: for example, the Respondent has repeatedly contended that "mashable" is a dictionary word and at one point states it goes back centuries.  Yet, as the Panel has stated in the Findings section, neither the Merriam-Webster nor the Oxford, nor the Cambridge English Dictionaries list "mashable" as a word.

 

The Respondent has repeatedly contended that the Complainant waited over two years to bring this UDRP action, and that therefore the doctrine of laches should estop the Complainant from bringing this action. The Panel finds that the doctrine of laches as a rule does not apply to UDRP cases. WIPO 3.0, section 4.17.

 

The Panel finds that the above factors combine to show that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel also finds that the Complainant has carried its Bad Faith burden of proof under Policy paragraph 4(a)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mashable.ai> domain name be TRANSFERRED from Respondent to Complainant. 

 

 

 

Lynda Braun and Paul DeCicco, Panelists

Dennis A. Foster, Chair

Dated: April 25,2025