DECISION

 

Willkie Farr & Gallagher LLP v. Bogic Popovic

Claim Number: FA2502002140300

 

PARTIES

Complainant is Willkie Farr & Gallagher LLP ("Complainant"), represented by Matthew Makover of Willkie Farr & Gallagher LLP, New York, USA. Respondent is Bogic Popovic ("Respondent"), Serbia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wilkiee.com>, registered with EuroDNS S.A. (the "Disputed Domain Name").

 

PANEL

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

 

Kendall C. Reed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 14, 2025; Forum received payment on February 14, 2025.

 

On February 19, 2025, EuroDNS S.A. confirmed by e-mail to Forum that the <wilkiee.com> domain name is registered with EuroDNS S.A. and that Respondent is the current registrant of the name. EuroDNS S.A. has verified that Respondent is bound by the EuroDNS S.A. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On February 20, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 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@wilkiee.com. Also on February 20, 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 10, 2025.

 

On March 10, 2025, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Kendall C. Reed as Panelist.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is the owner of the WILLKIE trademark (U.S. Reg. Nos. 2,510,701; 2,609,895; and 3,184,316) ("Complainant's Mark"). Complainant has engaged in business activities relating to the goods and services associated with Complainant's Mark in the United States and around the world. These goods and services include: conducting seminars and workshops in the field of law and legal services and providing information in the field of law via the Internet.

 

Complainant is the owner of several domain names, including <willkie.com> ("Complainant's Domain Name"), registered on July 30, 1995.

 

Complainant is an international law firm with its headquarters in New York City, New York, U.S. Complainant has offices in six countries around the world with more than 1,200 attorneys, and an annual revenue exceeding US $1.5 billion. Complainant's substantial advertising and promotion of Complainant's Mark and Complainant's Domain Name have created significant goodwill and consumer recognition in the United States and around the world. Complainant has operated for more than 130 years and has received global recognition as one of the most reputable and well-known law firms in the world.

 

Complainant reasonably asserts that its customers who receive emails from Respondent could be confused as having originated from Respondent.

The Disputed Domain Name currently resolves to a parking page, and Complainant's customers could believe that something has gone wrong with Complaint's website.

 

The Disputed Domain Name <wilkiee.com> is confusingly similar to Complainant's Domain Name <willkie.com> and Complainant's Mark WILLKIE. The Disputed Domain Name consists entirely of a slight misspelling of Complainant's Domain Name. This minor difference in spelling can lead to confusion and does not serve to avoid a finding of confusing similarity with the Complainant's Domain Name and Mark.

 

Respondent does not have rights or legitimate interests in connection with the Disputed Domain Name. Respondent registered the Disputed Domain Name on December 18, 2024, long after Complainant acquired its WILLKIE trademark. Complainant has not licensed or otherwise allowed Respondent to use its WILLKIE trademark. Given the strength of Complainant's Mark, Respondent cannot have rights or legitimate interests in the Disputed Domain Name that is essentially indistinguishable from it.

 

Respondent's actions are in bad faith. The Complainant's Mark is famous and it is therefor likely that consumers will associate a misspelled version of the word "Willkie" in a domain name with Complainant's business and various insurance services.

 

B. Respondent

Respondent is a video game developer. He registered the Disputed Domain Name on December 18, 2024 with the bona fide intention of using "Wilkiee" as a name under which video game projects would be launched.

 

Respondent's registration of the domain name was neither motivated by, nor connected to, Complainant or Complainant's Mark. Instead, the domain name was chosen as a personal, invented name to reflect Respondent's own creative activities.

 

The domain <wilkiee.com> currently displays a default "parking page" provided by the registrar. Respondent derives no commercial revenue from this parked page.

 

Respondent's plan is to launch a video game–related site, featuring creative content, on or around March 23, 2025. Respondent has completed the website design for <wilkiee.com>, and it remains unpublished consistent with Respondent's development timeline.

 

Respondent has never offered the domain name for sale to Complainant or any competitor of Complainant.

 

Respondent is unaware of any instance in which <wilkiee.com> was used to send emails or communications that might confuse third parties into believing they were dealing with Complainant.

 

FINDINGS

Complainant is the owner of a US trademark registration for the trademark WILLKIE, US registration number 2,609,895, issued on August 20, 2002, among others.

 

Respondent registered the domain name <wilkiee.com> on December 18, 2024.

 

Respondent's purpose in registering said domain name and his intended use thereof is in connection with a video game currently under development by him.

 

In registering the domain name <wilkiee.com>, Respondent did not intend to reference Complainant or seek to gain for himself the goodwill that Complainant has in its WILLKIE trademark.

 

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

Complainant has established the first element of the Policy.

 

Complainant owns US trademark registration number 2,609,895, issued on August 20, 2002, for the trademark WILLKIE (the "Complainant's Mark"). As such, Complainant has rights in a mark for purposes of the Policy. See the WIPO Overview 3.0 (the "Overview"), section 1.2.1.

 

The Disputed Domain Name is not identical to Complainant's Mark because it differs by two letters, but the Disputed Domain Name  is sufficiently similar in both sight and sound for purposes of the Policy to be confusingly similar. See the Overview sections 1.7. and 1.11.1.

 

Rights or Legitimate Interests

Complainant has failed to establish the second element of the Policy.

 

Complainant makes out a prima facia case, and Respondent, in its turn, establishes rights or legitimate interests.

 

Policy Paragraph 4(a)(ii), as expanded upon by Paragraph 4(c), provides Respondent an opportunity to demonstrate that his conduct was not in bad faith. This can be accomplished by Respondent providing sufficient evidence that his conduct falls within one of three non-exclusive circumstances that are recognized and deemed to be incompatible with a finding of bad faith. See the Overview Section 2.2.

 

One of these noted circumstances presented in Policy Paragraph 4(c)(ii) is as follows, in pertinent part:

"before any notice to you [Respondent] of the dispute, your…demonstrable preparations to use…the [Disputed Domain Name ] …in connection with a bona fide offering of goods and services."

 

Respondent asserts that he did not target Complainant's Mark, but rather he developed the expression "wilkiee" on his own and without either knowledge of or reference to the Complainant's Mark. Respondent further asserts that his purpose for developing the expression "wilkiee" was for a domain name to be used in connection with a fantasy video game currently under development by him. His creation and selection of this expression, as well as his development efforts for his video game, predated notice to him of the present dispute.

 

In support of these assertions, Respondent provides a number of exhibits the Panel finds persuasive, and these exhibits are reviewed here.

 

Respondent presents an exhibit that is a photograph of a pinup board showing approximately 50 elements, including such things as a development schedule, drawn character sketches, a fanciful world map, a listing of software feature requirements, and a prominently displayed project title of "Wilkiee.com." Respondent states that this picture was taken on December 19, 2024.

 

Respondent presents an exhibit that is a screenshot of two pages of a Microsoft OneNote file. Both of these pages show 20 sub-pages within this OneNote file in a directory format, including sub-pages with titles such as "Frozen Tundra," "Coral Reef," "Cursed Island," Mysterious Jungle," "Monsters," "Skills & Descriptions," and "Domain." This exhibit further shows that the "Monsters" sub-page is time stamped January 8, 2025, and the listed monsters in this sub-page include titles such as: "yeti," "white dragon," "elemental sprits made of fire or sand," "water drakes," "kraken" and "shark-human hybrids." Another of these sub-pages, the "Domain" sub-page, shows that it is time stamped December 8, 2024, and this sub-page includes a single entry that reads: "Check availability and purchase wilkiee.com for upcoming website."

 

Respondent presents an exhibit that appears to be a mockup of a website landing page. This mock up shows the expression "Wilkiee" prominently displayed in the top left of the screen. This exhibit also shows a rough graphical image of a scene including a pirate standing on a sail boat, the sail boat being situated in a tropical lagoon. Below this image appear the words, "Welcome to Wilkiee. Unleashing epic adventures, one game at a time."  

 

In further support of his allegation that Respondent is intending to use the Disputed Domain Name in connection with a video game, he provides an additional exhibit which suggests that prior to this current effort with respect to his video game, he created a number of cyber objects, including such items as tools and weapons. These cyber objects are intended for use in the context of other third-party video games. Respondent has made these cyber objects available to the public.

 

An additional consideration under Policy ¶ 4(c)(ii) relates to timing, and this, in turn, relates to the issue of pretext; efforts that begin before a respondent becomes aware of the dispute are less likely to have been pretextual. In the present matter, Respondent does not say when his efforts to create his video game began, but one of the above noted exhibits shows a time stamp of December 8, 2024, so his efforts would have begun at least as early as that. Complainant also does not address this issue, so the Panel must assume that Respondent became aware of the dispute when he was served with the complaint herein, which as is noted above in the Procedural History section was on February 20, 2025. As such and based on the record, Respondent shows demonstrable preparations for use of the Disputed Domain Name before he received notice of the present dispute.

This is not to say that Complainant is necessarily without a remedy. If Respondent eventually uses the Disputed Domain Name in a way that Complainant believes constitutes trademark infringement, Complainant may pursue the matter in the appropriate court.

 

Registration and Use in Bad Faith

It is not necessary for the Panel to address this element because a finding of rights or legitimate interests on the part of Respondent is incompatible with a finding of bad faith.

 

REVERSE DOMAIN NAME HIJACKING

The Panel declines to declare that Complainant has committed reverse domain name hijacking.

 

Respondent alleges that Complainant's pursuit of this UDRP action constitutes reverse domain name hijacking because Complainant fails to present evidence in its complaint that would support a finding of Respondent's bad faith.  

 

The concept of reverse domain name hijacking is addressed in the Overview in Section 4.16, first paragraph, which reads:

"Paragraph 15(e) of the UDRP Rules provides that, if "after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding".

 

Bad faith has been found in situations in which a complainant knew or should have known at the time it filed its complaint that it could not prevail. See Clean Slate Credit Solutions v. Jake Rustenhoven, FA 1924095 (Forum Jan. 8, 2021) ("Counsel should have known that she could not prove either the 4(a)(ii) or (iii) elements of Complainant's case, yet proceeded to institute this dispute nonetheless. Accordingly, the Panel finds that Complainant attempted reverse domain hijacking by instituting this dispute."); See Pet Life LLC v. ROBERT RIESS / blue streak marketing llc, FA 1810870 (Forum Nov. 11, 2018) ("Complainant has engaged in reverse domain name hijacking. Complainant --who is represented by competent counsel-- knew or should have known at the time it filed the instant complaint that it would be unable to prove each of the three elements of Policy ¶ 4(a) necessary to prevail.").

 

However, a declaration of reverse domain name hijacking is to be approached cautiously and be reserved for more extreme situations. See Empire Flippers, LLC v. Ansh Gupta / Jamkain Media Ventures, FA 1925050 (Forum Jan. 27, 2021) ("The Panel concludes that Complainant has not offered sufficient evidence to support its claims, but those claims were nevertheless credible and supported by evidence (including the similarity of the domain names and of the website design)."); See My Gameroom LLC v. Domain Admin / Facebook, Inc., FA 1923613 (Forum Jan. 14, 2021) ("The fact that a Complainant has failed to satisfy its burden under the Policy, does not necessarily render a finding of reverse domain name hijacking."); See Shilen Amin v. Dong Jin Kim, FA 1918372 (Forum Dec. 10, 2020) ("Complainant does not seem to have been motivated by bad faith, but rather by excessive and unjustified optimism about a case that was always dubious. Therefore, the Panel does not make a finding of Reverse Domain Name Hijacking."); See Timothy Edward Jones v. Joshua Eisenhower, FA 1800144 (Forum Sept. 18, 2018) ("After reviewing the record as a whole, the Panel is convinced that in filing the complaint and pursuing this matter Complainant has been misguided as opposed to malicious.").

 

Additionally, there is little basis for finding fault if the complainant did not know the facts and could not have learned them through reasonable investigation. See Fisby S.A> v. Rgistraton Private, Domains by Poxy LLC/ Michael Appolionia, D2020-0706 (WIPO May 12, 2020)("RDNH is concerned with the bringing of a Complaint in bad faith and the Respondent has not suggested that the Complainant had any reason to be fully aware of the Respondent's potential legitimate interest in the disputed domain name, which was held through a privacy service, before seeing the Respondent's position as set out in a formal Response…"). See Ponthier S.A.S. v. Domains BY Proy, LLC / Shannon Ponthier, D2022-1787 (WIPO July 28, 28, 2022)("For the record, the Panel does not consider this is an appropriate case for a finding of Reverse Domain Name Hijacking under paragraph 15(e) of the Rules. First, it does not appear to have been possible for the Complainant to ascertain the Respondent's identity until receipt of the Registrar's verification response. In addition, the only use being made of the disputed domain name apparent to the Complainant was the resolution of the disputed domain name to a parking page with PPC links to the Complainant's competitors. In these circumstances, the Panel is not able to find that the Complaint was brought in bad faith."). see Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, D2005-0309 (WIPO July 19, 2005), ("Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.").

 

In the present case, there is no evidence presented that would suggest Complainant knew the facts about Respondent's legitimate interests. It appears that Respondent was working by himself without any sort of public disclosure, which is not to suggest that he should have been more public about his efforts; such would be an anathema in the context of most development projects. The parties did not communicate before the complaint was filed, which is not to suggest that such was required. In any event, Complainant was not aware of Respondent's legitimate interests and had no reasonable way to learn about them until Respondent formally filed his response.

 

The Complainant did know that the Complaint's Mark is strong for purposes of the Policy (as opposed to it being generic) and that the degree of similarity between the Disputed Domain Name and the Complainant's Mark is very high, which together are strongly suggestive of targeting, and as such the Panel cannot say that a negative outcome was a foredrawn conclusion.

 

Given this record, the Panel is not able to find that Complainant acted in bad faith.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief is DENIED.

 

The Panel further concludes that Complainant did not commit reverse domain name hijacking.

 

Accordingly, it is Ordered that the <wilkiee.com> domain name REMAIN WITH Respondent.

 

 

 

 

Kendall C. Reed, Panelist

Dated: March 19, 2025