DECISION

 

Styleline Studios International Limited v. lillian litvack / JSlides Footwear / JAY LITVACK / JSL STUDIO

Claim Number: FA2503002143824

 

PARTIES

Complainant is Styleline Studios International Limited ("Complainant"), represented by Michelle Weaver of Steptoe & Johnson PLLC, Pennsylvania, USA. Respondents are lillian litvack / JSlides Footwear / JAY LITVACK / JSL STUDIO ("Respondent"), represented by Paul Hugel of Clayman, Rosenberg, Kirshner & Linder LLP, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <jslidesfootwear.com> and <jslides.com>, registered with NameSilo, LLC and GoDaddy.com, LLC.

 

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 Panelists in this proceeding.

 

Nicholas Smith and The Hon. Neil Anthony Brown, KC as Panelists and Gerald M. Levine as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 6, 2025; Forum received payment on March 6, 2025.

 

On March 7 and 10, 2025, NameSilo, LLC and GoDaddy.com, LLC confirmed by e-mail to Forum that the <jslidesfootwear.com> and <jslides.com> domain names are registered with NameSilo, LLC and GoDaddy.com, LLC and that Respondent is the current registrant of the names. NameSilo, LLC and GoDaddy.com, LLC have verified that Respondent is bound by the NameSilo, LLC and GoDaddy.com, LLC registration agreements 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 March 17, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 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@jslidesfootwear.com, postmaster@jslides.com. Also on March 17, 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 April 16, 2025.

On April 18, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Nicholas Smith and the Hon. Neil Anthony Brown, KC as Panelists and Gerald M. Levine as Chair.

 

On April 23, 2025 the Complainant filed a supplemental submission.

 

On April 30, 2025 the Respondent filed a supplemental submission.

 

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 names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: CONSOLIDATION OF TWO DOMAIN NAMES

At issue in this proceeding are two domain names respectively in the names of Respondents Lilian Litvack for <jslides.com> and Jay Litvack for <jslidesfootwear.com>. The Policy provides at Paragraph 4(f) that "In the event of multiple disputes between [a respondent] and a complainant, either [the respondent] or the complainant may petition to consolidate the disputes before a single Administrative Panel."  The Complainant has petitioned to have the two domain names consolidated in this proceeding.

 

The individual Respondents are husband and wife. According to Lilian Litvack duly set forth in a declaration submitted by her she registered both domain names in 2013 in connection with a business venture for women's shoes that her husband Jay Litvack founded in 2012. From that date to today, <jslides.com> has redirected to <jslidesfootwear.com> displaying JSLIDES NYC footwear.

 

The parties are engaged in a contentious dispute over the ownership of the domain names and their use following the dissolution of their business relationship. Given the circumstances of this dispute, the Panel finds that it is appropriate to consolidate the domain names in a single proceeding. See Ty Inc. v. Joseph Parvin d/b/a Domains For Sale, WIPO Case No. D2000-0688 ("Because the Panel believes it to be efficient to resolve all such claims in one proceeding, and because the Respondent expressed no opposition to such consolidation, the Panel unanimously agrees to consolidate the claims as to the four [here, two] domain names at issue.")

 

PANEL DECISIONS

While the Panel is in agreement as to the outcome of this case, Panelist Mr. Smith and Chair Mr. Levine have subscribed to the below decision.  Panelist The Honorable Neil Anthony Brown, KC has subscribed to a separate decision that follows. Mr. Smith and Mr. Levine concur with Mr. Brown on the issue of reverse domain name hijacking but on narrower ground as more fully noted under the heading REVERSE DOMAIN NAME HIJACKING.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a Hong Kong limited corporation with an address in Hong Kong. It contends that "by and through its predecessors in interest, [it] has used the trademark J/SLIDES and similar variations thereof (collectively the "J/SLIDES Marks since at least as early as September 2012 in connection with a wide variety of footwear merchandise and online retail store services featuring footwear."  

 

Complainant claims that "[p]ursuant to the Intellectual Property Rights Transfer Agreement [with Respondent Jay Litvack], Respondent or an affiliate thereof, transferred the J/SLIDES marks to Complainant on April 2, 2015. It also claims that this agreement included transfer of the two domain names. However, "[d]espite having transferred the aforementioned intellectual property rights to the Complainant, Litvack continues to wrongfully hold over the Domain Names." In regard to the disputed domain names, "More than seven years after granting the Complainant sole ownership of the J/SLIDES marks, the Respondent knowingly reregistered the disputed domain name <jslidesfootwear.com> on September 14, 2022 and reregistered the disputed domain name <jslides.com> on July 21, 2024."

 

It contends in specific that Complainant and [Jay] Litvack have had a long-standing business relationship related to the sale of J/SLIDES branded products in the United States, which in recent years became contentious. By way of background, in April 2015, Litvack and his associated company transferred the intellectual property rights in and to the J/SLIDES brand to Complainant." During this business relationship, "Complainant permitted use of its trademark in the Domain Names for the purpose of promoting, advertising, and selling its high-quality J/SLIDES branded footwear products."

 

In or around 2018, disputes arose between Litvack and Complainant over issues regarding whether Litvack had acted beyond his authority and caused an affiliated company to incur unauthorized obligations. In or around November 2023, Complainant terminated its business relationship with Litvack. It claims that despite having transferred the aforementioned intellectual property rights to the Complainant, Litvack continues to wrongfully hold over the Domain Names. 

 

The Complainant states that "by way of further background, Complainant and Hilldun Corporation ("Hilldun"), among others, were part of an intellectual property dispute involving the J/SLIDES brand in September 2024. As a result of a resolution between Hilldun and Complainant, Complainant agreed to a phase-out period whereby Complainant will permit the depletion of infringing J/SLIDES inventory via the domain name <jslidesfootwear.com>. The phase-out period will lapse on July 1, 2025.

 

The Complainant concludes by noting that "[c]ritically, and for purposes of adjudicating the present dispute, the Domain Names have always been used to market, advertise, and sell J/SLIDES branded footwear products. Moreover, Litvack was never granted any ownership interest in the Domain Names. The Domain Names were always used for commercial purposes to sell Complainant's J/SLIDES branded footwear products."

 

B. Respondent

Respondents focus their narrative on the formation of Jay Litvack's business, J/Slides in 2012, and the registration of <jslides.com> and <jslidesfootwear.com> in 2013. They state that these registrations occurred "over a year before Complainant (a Hong Kong company) came into existence)."  They further state that since at least 2014, Jay Litvack "has used the domain names in connection with his businesses JSL Studios LLC and Styleline Studios, LLC to sell J/Slides shoes, a brand that Jay created in 2012."

 

Respondents recount that in September 2014, Jay Litvack, through JSL Studios Intl. LLC, applied to the US Patent and Trademark Office for a trademark on the name J/SLIDES. The USPTO approved this application in June 2015. In late 2014, Jay Litvack decided to go into business with Dimitri Mavridakis, a resident of Canada, and Tina Liu, a resident of Hong Kong.

 

In December 2014, Jay, Mavridakis and Liu formed a New York company named Styleline Studios, LLC to design, promote and sell J/SLIDES shoes. On March 20, 2015, JSL Studio Intl, LLC assigned the mark to a newly formed Hong Kong corporation, the Complainant in this proceeding. On April 1, 2018, Complainant assigned J/SLIDES to Styleline Studios LLC. and on August 12, 2022 the trademark was reassigned to Complainant. 

 

Respondents (as more particularly set forth in a declaration submitted by Jay Litvack) state Jay Litvack's relationship with Styleline Studios LLC ended in 2018 and Liu began using Complainant rather than Styleline NY as a middleman. From 2018 until November 2023, Styleline NY ordered J/SLIDES shoes from Liu/Complainant, which she sourced from various manufactures in Asia and sold to Styleline NY. Respondents state that it does not appear that Complainant sold shoes to anyone other than Styleline NY during this period.

 

Respondents also states that Complainant did not have any rights in the J/SLIDES trademark as those rights were held by Styleline Studios, LLC not by Complainant. [The Panel notes in this regard that Respondents are incorrect. The Panel exercised its right to review the assignment file in the USPTO records (see Sec. 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition). The file included a correction which is evident in the registration certificate which names the Complainant as the mark owner (Complainant Annex 5)]. 

 

Respondents deny that they registered the disputed domain names in bad faith and point out that <jslidesfootwear.com> and <jslides.com> predate the corporate formation of Complainant. They also claim that they have rights and legitimate interests in these domain names.

 

C. Additional Submissions

Complainant filed an additional submission which was countered by Respondent with its own submission. As these submissions include some additional facts and arguments that assist the Panel in its determination, the Panel agrees to accept them into the record.

 

FINDINGS

1.       Complainant has a duly registered trademark for J/SLIDES;

2.       Respondents' registration of <jslides.com> and <jslidesfootwear.com> predates Complainant's right to the mark;

3.       Complainants have not established that Respondents registered <jslides.com> and <jslidesfootwear.com> in bad faith; and

4.       There is an issue as to whether the Intellectual Property Rights Transfer Agreement included transfer of ownership of <jslides.com> and <jslidesfootwear.com>. Accordingly, this issue is outside the scope of the Policy.

 

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

Although Respondents question when Complainant became the trademark owner, there is no dispute that the Complainant is the current trademark owner of the J/SLIDES mark. Indeed, according to a copy of the USPTO trademark registration attached to the complaint as Annex 5, Registration No. 4,746,857, the Complainant was the original trademark registrant of J/SLIDES, dated June 2, 2015. 

 

Respondents do not dispute that <jslidesfootware.com> is confusingly similar to the mark and that <jslides.com> is identical to the mark. 

 

Accordingly, Mr. Smith and Mr. Levine find that the Complainant has satisfied Para. 4(a)(i) of the Policy.  

 

Rights or Legitimate Interests

In view of the Panel's determination under Para. 4(a)(iii), it finds that it is unnecessary consider the issue of rights or legitimate interests. That issue, as further discussed below, is better left to a court of competent jurisdiction.

 

Registration and Use in Bad Faith

To be sufficient for a complainant to succeed under Para. 4(a)(iii) of the Policy it must prove that the respondent both registered and is using the disputed domain names in bad faith. To succeed on any of the four nonexclusive circumstances set forth in Para. 4(b) presupposes that the subject domain name was registered in bad faith.

 

Here, it is undisputed that the Litvacks' registrations of the disputed domain names predate the Complainant's trademark rights which as already noted Complainant received by assignment from JSL Studio Intl, LLC in 2015. Moreover, Complainant did not exist as a corporate entity until late 2014 whereas the disputed domain names were registered in 2013. Thus, even if the Panel were to accept that <jslidesfootwear.com> and <jslides.com> are being used in bad faith this would not be sufficient to satisfy Para. 4(a)(iii). See Platterz v. Andrew Melcher, FA1705001729887 (Forum June 19, 2017) (holding that "Whatever the merits of Complainant's arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.")

 

In an attempt to overcome this infirmity, Complainant advances two arguments, one based on assertion of a fact and the other based on law. It asserts that "in April 2015, Jay Litvack and his associated company transferred the intellectual property rights in and to the J/SLIDES brand to the Complainant. Such intellectual property rights include the Domain Names at issue." Respondents deny this allegation and Complainant has not submitted any documentary evidence of any such assignment of the domain names. Regardless of the veracity of the Complainant's claims, the purported assignment of rights two years after registration does not result in the original registration being made in bad faith. Indeed, Complainant recognizes this and states in its Supplemental Submission that "the Complainant does not contest the viability of the original registration of the Domain Names." 

 

This, of course, puts Complainant in a bind which it attempts to escape by turning to the debunked theory of retroactive bad faith registration. It argues first that "the Panel should consider domain name renewal" and further that the Anticybersquatting Consumer Protection Act "provides similar relief to parties in federal court." The ACPA has no bearing on the UDRP which operates on its own terms as a conjunctive model of liability. See James Linlor v. Host Master / McAfee LLC, FA2202001985124 (Forum March 31, 2022) ("The Complaint further lays out arguments arising under the federal Anticyber-squatting Consumer Protection Act (ACPA) (15 U.S.C. § 1125(d)). These arguments are inapposite to a proceeding conducted under the Policy, which permits the Panel to consider and decide only claims of abusive cybersquatting as specifically contemplated by its terms."). 

 

Accordingly, the Panel declines this invitation on both counts in favor of the sound reasoning that has developed on this issue under the UDRP. The determinative date for bad faith registration is measured from the acquisition of the disputed domain names not from any renewal. See Arena Football League v. Armand F. Lange & Assocs., FA0210000128791(Forum December 26, 2002) ("once a Panel finds that a domain name was originally registered in good faith, any subsequent renewal which could qualify as having been done in bad faith is irrelevant"); and Securus Technologies, LLC v. Domain Administrator, WIPO Case No. D2021-3383 ("[F]undamentally it is now well-established that for the purposes of this element of the Policy a mere renewal by the same registrant is insufficient to support a finding of bad faith registration.") 

 

With regard to the disputed ownership of the disputed domain names the Panel concludes that this dispute is outside the scope of the UDRP. See Courtney Love v. Brooke Barnett, FA0703000944826 (Forum May 14, 2007) (holding that the dispute "hinge[s] mostly on a business or civil dispute between the parties. [. . .] [A] dispute such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy."). 

 

Although Complainant alleges that the Intellectual Property Rights Transfer Agreement included transfer of these domain names, it has not submitted the agreement. The Respondent in its Supplement Submission states that the 2015 agreement transferring the J/SLIDES trademark to Complainant "in fact makes no mention of the transfer of any domain names," nor is there "any other agreement in which Litvack agreed to transfer the Domain Names to Complainant. 

 

Accordingly, on the record before it, the Panel concludes that <jslides.com> and <jslidesfootwear.com> were not registered in bad faith. In thus concluding, the Panel takes no position with regard to the ownership issue of these domain names. What is meant by "intellectual property rights" is better left to a court of competent jurisdiction together with other claims that Complainant states that it anticipates bringing against the Respondents.

 

Accordingly, Mr. Smith and Mr. Levine find that Complainant has not satisfied Para, 4(a)(iii) of the Policy.

 

Reverse Domain Name Hijacking ( RDNH)

Mr. Smith and Mr. Levine concur with the Hon. Neil Anthony Brown KC in finding RDNH but on narrower grounds. Complainant launched its complaint on several misguided grounds of fact and law. As to facts, it proceeded by claiming ownership of the disputed domain names by virtue of an Intellectual Property Rights Transfer Agreement, but failed to proffer any evidence of such a transfer and Respondents denied the allegation as discussed above.  Moreover, Complainant failed to disclose the history between the parties such as the fact that it was incorporated 2 years after the Domain Name was registered and all rights were held by the Respondent to those disputed domain names at the time of registration of J/SLIDES. The circumstances set forth in Para. 4(b)(i-iv) do not support bad faith registration of domain names that predate the trademark except under circumstances that are not present in this case.  

 

Complainant also could not succeed on any of the bad faith grounds by relying on discredited law of Retroactive Bad Faith and that particular branch of the theory that would find renewal of registration a factor of bad faith. Or, that Complainant could overcome these legal shortcomings by arguing that US federal courts would find cybersquatting under the Anticybersquatting Consumer Protection Act.  

 

The UDRP operates under its own terms. It has its own jurisprudence. The introductory definition of RDNH and Rule 15(e) are clear that in launching a complaint that relies on discredited grounds or law and fact, the Complainant opens itself up to sanction for Reverse Domain Name Hijacking, which the Panel accordingly finds.  

 

DECISION

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

 

Accordingly, it is Ordered that the <jslidesfootwear.com> and <jslides.com> domain names REMAIN WITH Respondent.

 

 

 

Gerald M. Levine, Chair

Nicholas Smith, Panelist

The Hon. Neil Anthony Brown KC, Panelist

 

Dated: May 5, 2025

 

 

Panelist The Hon. Neil Anthony Brown KC concurs in the above outcome but writes separately, as follows:

 

CONCURRING OPINION

In this Panelist's opinion, the Complainant prevails only on the first element of Identicality or Confusing Similarity. The Respondents have prevailed on the second element of Rights and Legitimate Interests and this Panelist is of the opinion that it should be said so, and why. The Respondents have also succeeded on both of the allegations of bad faith registration and bad faith use. As the Complainant has not succeeded on all three of the elements required to be proved under the UDRP, the Complaint should be dismissed and the domain names should remain with the Respondents. There should also be a finding that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

FINDINGS

1.       The Complainant has rights in the trademark for J/SLIDES, registered in the United States Patent and Trademark Office on June 2, 2015, registered number 4,746,857 ("the J/SLIDES trademark").

2.       The Respondents registered the <jslides.com> domain name on 20 July 2013 and the <jslidesfootwear.com> domain name on 15 August 2013 (collectively "the disputed domain names").

3.       The disputed domain name <jslides.com> is identical to the J/SLIDES trademark and the disputed domain name <jslidesfootwear.com> is confusingly similar to the J/SLIDES trademark.

4.       The Respondents have rights and legitimate interests in the disputed domain names.

5.       The Respondents did not register and use the disputed domain names in bad faith.

6.       The domain names should therefore remain with the Respondents.

7.       The Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

  

Identical and/or Confusingly Similar

The Complainant is first required to prove under paragraph 4(a)(i) of the Policy that it "has" a trademark, meaning at the time the Complaint was filed. Annex 5 to the Complaint shows that the Complainant is the registered owner of the United States trademark for J/SLIDES, registered number 4,746, 857, registered on June 2, 2015 ("the J/SLIDES trademark"). It therefore "has" rights in a trademark and has established its standing to bring this proceeding.

 

The Respondents have, between them, registered two domain names, the <jslides.com> domain name being registered on 20 July 2013 and the <jslidesfootwear.com> domain name being registered on 15 August 2013. The Complainant must therefore establish that the domain names are identical to the trademark or confusingly similar to it.

 

The <jslides.com> domain name is identical to the J/SLIDES trademark. Traditionally, and correctly, the Top Level Domain ".com" is ignored in making this comparison between the domain name and the trademark, as all domain names must have such an extension. When it is ignored in the present case, as it must be, the wording of the domain name is the same as the wording of the trademark, with the exception of the oblique or virgule "/" in the trademark which has not been transposed into the domain name; however, such features are generally regarded as being too minor to have any real significance. When the domain name is then compared with the trademark it is seen to be identical to the trademark.

 

The <jslidesfootwear.com> domain name is obviously not identical to the trademark because, although it includes the J/SLIDES trademark in substance, it also includes wording that is additional to the trademark, so it cannot be identical to it. However, it is confusingly similar to the trademark. That is so, first, because it includes the whole of the trademark and where a domain name includes the whole of a trademark it is more likely than not that the domain name is invoking the trademark, making it similar to the trademark. In the present case, that is clearly so. Secondly, the similarity is also confusing, because the addition of the word "footwear" in the domain name would lead internet users to read it to mean that it is invoking the footwear produced under the trademark and hence that it gives rise to the question whether it is an official or genuine domain name of the Complainant or not.

 

Accordingly, the Panel finds that the <jslides.com> domain name is identical to the J/SLIDES trademark and the <jslidesfootwear.com> domain name is confusingly similar to that trademark.

 

The Complainant has therefore satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights and Legitimate Interests

The next question that arises is whether the Respondents have a right or legitimate interest in either of or both of the domain names. The Respondents have argued that they have a right or legitimate interest in the domain names on two grounds. In the opinion of this Panelist, the Respondents have made out both of those grounds.

 

The first ground is that contained in paragraph 4(c)(i) of the Policy, namely that before the Respondents had notice of the dispute, they had used the domain names for "a bona fide offering of goods or services", meaning that it did so at some, or for that matter, any time, before they had notice of the dispute.

 

Clearly, because of the definition of "Applicable Disputes" in the Policy, the word "dispute" in paragraph 4(c)(i) means a dispute under the UDRP. In that regard, the only factual issue to be decided is whether the Respondents have used the domain names for such a purpose at some time and before they had notice of the dispute. On that issue, this Panelist finds that the conduct of the Respondents, as demonstrated by the evidence, was a bona fide offering of goods or services, and probably both, and that it was conduct engaged in before the Respondents had notice of the domain name dispute.

 

The evidence that the Respondents have used the domain names for a bona fide offering of goods or services is as follows:

 

(a)                      Exhibit A to the Response, where Jay Litvack deposes that he started the J/SLIDES shoe business as early as 2012, that he included the letter "J" in the brand because it is the first letter of his given name and that he continued to sell J/SLIDES shoes thereafter; the two domain names were registered in 2013 and the <jslides.com> domain name was caused to resolve to <jslidesfootwear.com>; he also deposes that he has used the <jslidesfootwear.com> "ever since then", i.e., since the year 2013, to market and sell J/Slides shoes; this can only mean that he has used both domain names to sell shoes in his own business from the year 2013, which he did;

(b)                      the record of the use of the domain names on the Wayback Machine just described is consistent with this evidence and shows that the domain names were used for that purpose at least from 14 January 2014¹, the <jslides.com> domain name being used to resolve to the <jslidesfootwear.com> domain name and that domain name being used directly to offer J/Slide shoes for sale;

(c)                      Exhibit B to the Response in which Lillian Litvack deposes that she registered both domain names in 2013, the domain name <jslides.com> being registered on 20 July 2013 in her own name and the <jslidesfootwear.com> domain name being registered on 15 August 2013 in the name of Mr. Litvack; she also deposes that the domain names were used from 2013 "to assist Jay in marketing and selling these shoes";

(d)                      the Wayback Machine also shows that the <jslides.com> domain name was redirected to <jslidesfootwear.com>² which was used to sell J/SLIDES shoes;

(e)                      the Respondents also adduce (at Respondents' Exhibit G) screen captures for <jslidesfootwear.com> which show that from 2014 through 2023, that domain name was used to sell J/SLIDES shoes;

(f)                      the Complainant's own evidence is also consistent with the Respondents' submission that they have used the domain names for a bona fide offering of goods or services; the Complainant's evidence is that before the parties' commercial relationship "became contentious", "Complainant permitted use of its trademark in the Domain Names for the purpose of promoting, advertising, and selling its high-quality J/SLIDES branded footwear products"; it repeats the same proposition by its evidence that "(w)ith Complainant's permission, the <jslidesfootwear.com> domain name was used to sell and market J/SLIDES footwear products in conjunction with Litvack"; indeed, it goes so far as to say that "the Domain names have always been used to market, advertise, and sell J/SLIDES branded footwear products"; in other words, the Complainant itself says that the domain names have been used by the Respondents to sell J/Slides footwear that was clearly for the benefit of both parties.

 

All of the foregoing conduct was bona fide because, on the evidence, it was conduct clearly designed to advance the sale of the products of a business that had been started by the Respondents themselves in 2012, of which their corporate vehicle JSL STUDIO INTL, LLC  was the original trademark owner of the J/SLIDES trademark and which was a going concern subsequently conducted by the parties as a form of joint venture with other parties and which used the same name as the substance of the domain names themselves, namely "jslides" and "jslides footwear".

 

The expression bona fide means in good faith and, in particular, without any fraud or deception. The evidence shows that the Respondents used the domain names without any fraud or deception to offer goods for sale by a business that was initially the Respondents' own business and subsequently in conjunction with the Complainant and others. The interests of all parties were thus being served by this use of the domain names, making it bona fide.

 

The foregoing evidence gives some details of the uses made of the domain names, giving them their character of being used in a bona fide manner to offer goods for sale and the services offered in relation to those goods. The same conclusion is reached when the general history of the relationship between the parties is examined. That relationship, on the evidence, went through three stages. The first stage was when the Respondents had their own business, conceived the name J/Slides, ran their business through a corporate vehicle named JSL Studios, obtained the J/SLIDES trademark and registered two domain names which they used as they went about their business. This is amply demonstrated by the Respondents' Exhibit K, which is a media report as early as 31 March 2014 showing that at that date the Respondents were running their own business of selling J/SLIDES shoes. The second stage was when the Respondents were in a commercial relationship with interests associated with the Complainant, a stage described by the Complainant itself as being before the relationship "became contentious". During this stage the J/SLIDES trademark was assigned to the Complainant. The third stage was when the relationship became contentious and culminated in the Respondents being sent a cease and desist letter on 14 December 2023 and discovering that a new domain name, <shopjslides.com> had been registered and was being used, as it is today, to sell J/SLIDES shoes. This panelist's assessment of the evidence is that the Respondents' use of the domain names was bona fide during the whole of first stage, as it was for the legitimate promotion of their own business; during the second stage because it was for the legitimate promotion of the joint business of the Respondents and its associates including the Complainant; and during the third stage at least until the cease and desist letter on 14 December 2023 and conceivably later, as the parties had a joint interest in selling the remainder of the inventory that they held.

 

Thus, the Respondents used the domain names to offer goods and services when they were operating on their own account from 2013-2014 as part of their own legitimate business; as part of an arrangement with other parties from 2015 until 2023 and when the relationship was harmonious; probably up to late in 2023 and until the cease and desist letter of 14 December 2023 was received; and, conceivably, even later than that date and up 30 October 2024 when the parties agreed under the apparent settlement with Hilldun that the Respondents would continue to use the <jslidesfootwear> domain name for yet a further 245 days to pay down Hilldun's debt claim by selling off the remainder of the inventory that they held. The domain names were thus used during each of these periods to sell products that were part of a legitimate business and for the benefit of the Respondents initially and then for the joint benefit of all of the others involved in the joint business they were conducting together. In the opinion of this panelist, all of that use was bona fide.

 

As to when the Respondent received notice of the dispute, the only direct evidence of this is that the Complainant sent the Respondents a cease and desist on December 14, 2023 and the Complainant necessarily implies in its Additional Submission that this was the date on which it claimed the domain names, giving rise to the current dispute.

 

Accordingly, the above-mentioned bona fide conduct was engaged in by the Respondents "before any notice to (it) of the dispute". It certainly occurred before the Complainant was incorporated on 22 January 2015 and before it acquired its trademark rights in J/SLIDES on June 2, 2015. There is also nothing at all to suggest that for most of that time, the relations between the parties were anything other than harmonious and no notice had been given to them of the dispute, probably because there was none. The Respondents' evidence in that regard is that from the end of 2014 the parties were consolidating their joint business which clearly continued for some years until in all probability the end of 2023 or by 27 April 2024 when the Complainant registered the new domain name, <shopjslides.com> and started to use it to sell J/SLIDES shoes³. Mr. Litvack's own evidence is consistent with the dispute emerging late in 2023 or early in 2024. Ms. Litvack's evidence is that both domain names were used to sell J/SLIDES shoes and that she is still the registrant of one domain name and Mr. Litvack is still the registrant of the other domain name.

 

It is therefore clear from the foregoing that from 2013, through 2014 and until late 2023, over a considerable period of time and before there was any dispute between the parties, the Respondents were using both domain names to offer J/SLIDES shoes for sale and that they did so before they had notice of the dispute within the meaning of paragraph 4(c)(i) of the Policy.

 

In particular, the Complainant's own evidence is that it actually consented to the Respondents' using the domain names to sell their shoes until the parties' commercial relationship "became contentious" and produced the cease and desist letter of December 14, 2023. Until then, and while the relationship was harmonious, the Complainant clearly had no objection to the Respondents' using the domain names to sell their shoes because all parties benefited from it. How then, if the Complainant agreed to this being done for so long, could it be anything other than bona fide?

 

This panelist therefore accepts, on the evidence, the Respondent's submission, that "The Litvacks have been using the domains at issue to market and sell J/Slides shoes, first via JSL Studio and then via Styleline NY from at least 2013, -i.e. for over a decade before any dispute concerning the domains arose".

 

The Respondents have therefore established on the evidence that they have a right or legitimate interest in the disputed domain names.

 

It is therefore not necessary to decide the second ground relied on by the Respondents, which is that they were commonly known by the domain names within the meaning of paragraph 4(c)(ii) of the Policy. But there is at least some evidence, particularly the media report of 31 March 2014 in Exhibit K, showing that there probably was a public association between the domain names and the Respondents because the "J" of JSlides was the "J" of Mr. Litvack's given name and the public would therefore probably read the domain names as "Jay's Slides" and " Jay's Slides footwear".

 

Registration and Use in Bad Faith

It is clear that to make out the allegation of bad faith, the Complainant must show that the domain names were registered and used in bad faith. The two domain names were registered in 2013, but the Complainant was not incorporated until January 22, 2015 and did not acquire its trademark rights until later that year. Thus, the Respondents could not have directed any bad faith animus at the Complainant at the time the domain names were registered in July and August 2013 even if they had been minded to do so.

 

Nor, in the opinion of this Panelist, was there ever any conduct by the Respondents that could be described as bad faith use of the domain names. The Respondents' intention must have been to use the domain names initially to make their own business successful, then to help the joint business work and finally in the interests of all parties by selling down their remaining inventory after the apparent settlement with Hilldun.

 

In any event, it is hard to believe that the Complainant did not know of and consent to the domain names being so used, at least up to the cease and desist letter of December 14, 2023. As the Respondents also point out, it is illogical to suggest that the Respondents would be motivated by bad faith which could only harm themselves.

 

The Complainant says that bad faith use is proved by what it calls in the Complaint "a resolution between Hilldun and Complainant" and by the same expression in its Additional Submission. However, that resolution does not do anything other than provide a mechanism for the Respondents to use the <jslidesfootwear.com> domain name to sell some of their remaining inventory. It certainly does not show that the Respondents have used either domain name in bad faith. Indeed, it probably shows good faith, as it shows the domain names, or at least one of them, being used to reduce the debts that had been accumulated by the joint business.

 

The Complainant also says that bad faith use is proved by the fact that there was at some stage an agreement between the parties called "the Intellectual Property Rights Transfer Agreement" under which the Respondents transferred the J/SLIDES trademark to the Complainant. The Complainant elaborates on this alleged agreement in its Additional Submission to say that this agreement "include(s) the Domain Names at issue…". This alleged agreement has not been produced to the Panel and the Panel is presumably being asked to accept on the Complainant's say-so that it exists and that its terms applied to the disputed domain names. The Respondents say they have not been provided with any such agreement. This Panelist is therefore not prepared to give any evidentiary value to any such alleged agreement that has not been produced, particularly in any respect alleged to show that the Respondents signed away their entitlement to the domain names. On the evidence, this simply did not happen. In any event, even if any such agreement did have the effect for which the Complainant contends, it was clearly overtaken by events, as the evidence shows that the Respondents retained one of the domain names to sell shoes for the benefit of all of the parties, which is more akin to good faith than bad faith.

 

The Complainant has therefore not made out a case that the Respondents registered and used the domain names in bad faith within the meaning of paragraph 4(a)(iii).

 

As the Complainant has not established either the issue of a lack of rights and legitimate interests nor the issue of registration and use in bad faith, it cannot succeed in this proceeding.

 

Reverse Domain Name Hijacking (RDNH)

Rule 15(e) of the Rules provides that if, after considering the submissions, the Panel finds that the Complaint was brought in bad faith or to harass the Respondent, the Panel "shall" say so. The better view of what this means is that the Panel should at least " consider" the issue; then, the Rule imposes not a discretion but an obligation on the Panel to make a declaration of RDNH if it finds that the Complaint was brought in bad faith or to harass the Respondent.

 

This Panelist has considered the issue and finds that the Complaint was brought both in bad faith and to harass the Respondent. It was brought in bad faith because, first, any reasonable and objective assessment of the facts, as the Complainant must have known them to be, should have told it that it could not prove the issue of rights and legitimate interests and yet it filed the Complaint. The known facts were that the Respondents between them had for over a decade used the domain names in a legitimate business, at first on their own account and then as part of a joint business with other parties where the interests of all parties were being served by the domain names being used as they actually were used, namely to sell shoes, the sale of which would benefit all parties.

 

The Complaint was also brought to harass the Respondents by making unfounded allegations for which there was little if any evidence.

 

The Complainant seems to have based its claim largely on a so-called Intellectual Property Rights Transfer Agreement which allegedly transferred the domain names to the Complainant, obviously a pivotal issue if it were true. However, despite the fact that the Complainant had two bites of the cherry by making an additional submission, this agreement if it exists at all, was never put in evidence by producing it, or proved in any other way. Not only was that so, but the original allegation of the Complainant was that this alleged agreement transferred to the Complainant not the domain names, but "the J/SLIDES marks."

 

On the issue of bad faith, the Complainant must have been apprised of the insurmountable fact that when the domain names were registered, the Complainant did not exist and that the Respondents could hardly have been actuated by any bad faith animus towards a non-existent entity.

 

This Panelist therefore finds that within the meaning of Rule 15(e) the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

Dated the 5th day of May 2025.

 

The Honorable Neil Anthony Brown KC