DECISION

 

Pixels.com, LLC v. Gavin Liu / MELONG INFORMATION TECHNOLOGY LIMITED

Claim Number: FA2509002179695

 

PARTIES

Complainant is Pixels.com, LLC ("Complainant"), represented by Mari-Elise Paul of McBrayer PLLC, Kentucky, USA. Respondent is Gavin Liu / MELONG INFORMATION TECHNOLOGY LIMITED ("Respondent"), represented by Chao RU of Ruyuan IP Agency, China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <metalposter.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

The Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 29, 2025; Forum received payment on September 29, 2025.

 

On September 30, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <metalposter.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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" or the "UDRP").

 

On October 1, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@metalposter.com. Also on October 1, 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 October 17, 2025.

 

On October 20, 2025, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 made the following contentions.

1.       The Complainant is a United States company engaged in the provision of an art market and print-on-demand technology and it has been so engaged since 2006.

2.       The Complainant has common law trademark rights in METAL POSTERS and has used that mark in its business since 2023.

3.       In addition, the Complainant owns the domain name <metalposters.com> which it uses as a marketplace for its contributors to upload their images, set prices to sell their images as prints or print-on demand products and then sell those products.

4.       The domain name <metalposter.com> was registered on September 24, 2001 and the Respondent has owned and used it since September 11, 2025 ("the disputed domain name").

5.       The disputed domain name is confusingly similar to the METAL POSTERS trademark, as there is a difference of only one letter, the letter "s", between the disputed domain name and the METAL POSTERS trademark.

6.       The Respondent has no rights or legitimate interest in the disputed domain name as the Complainant has never authorized or licensed the Respondent to use its trademark in a domain name or for any other purpose and the Respondent is not commonly known by the domain name.

7.       The disputed domain name was registered and has been used in bad faith, as the Complainant has strong common law rights in the METAL POSTERS trademark, it has used the domain name consistently in commerce in connection with online photographic and image processing services, online retail store services and print on demand services and products featuring art since October 2023 and the Respondent has copied the Complainant's website at www.metalposters.com for a highly similar business at <metalposter.com>

8.       The use of the disputed domain name is likely to confuse internet users into believing that the Respondent's website is affiliated with the Complainant and it attempts to divert traffic from consumers to the Respondent  and disrupts the Complainant's business.

9.       Accordingly, the disputed domain name should be transferred from the Respondent to the Complainant.

 

B.  Respondent

   Respondent made the following contentions.

1.       The Complainant has not proved that it has a registered trademark for METAL POSTERS.

2.       The Complainant has not proved that it has unregistered or common law trademark rights for METAL POSTERS which is a descriptive term that lacks inherent distinctiveness.

3.       The Respondent purchased the disputed domain name on August 27, 2024, and has maintained and renewed it ever since.

4.       The Respondent began using the disputed domain name in its business in March 2025 and has continued such use to the present day exclusively in the metal poster segment of industry.

5.       The aforesaid use of the domain name by the Respondent in its business commenced prior to notice of the dispute and accordingly constitutes the use of the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i).

6.       The Respondent did not register or use the dispute domain name in bad faith.

7.       In that regard, the Respondent bought the disputed domain name on August 27, 2024 which was not an acquisition in bad faith.

8.       Nor has the Respondent used the domain name in bad faith but rather has used it legitimately in connection with its metal poster business and its website is materially and visually distinct from the Complainant's website.

9.       Moreover, the Respondent has used the domain name exclusively to market and sell physical goods and to provide related services directly related to metal posters.

10.       The Respondent has invested more in the development of its website than the Complainant claims to have invested in its website.

11.       Accordingly, the Panel should dismiss the Complaint, the disputed domain name should remain with the Respondent and the Panel should make a finding against the Complainant of Reverse Domain Name Hijacking.

 

FINDINGS

1.       The Complainant has not established that it has a registered or common law trademark.

2.       Thus, the Complainant has no standing to institute the proceeding.

3.       The domain name <metalposter.com> was registered on September 24, 2001 and the Respondent has owned and used it since September 11, 2025 ("the disputed domain name").

4.       The Respondent has a right and legitimate interest in the disputed domain name.

5.       The Respondent did not register and use the disputed domain name in bad faith.

6.       Accordingly, the Complaint is denied and the disputed domain name should remain with the Respondent.

 

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

The first question that arises is whether the Complainant has a trademark on which it may rely in this proceeding. That is because the UDRP is an arbitration process to give protection to trademark owners against abusive use of their trademarks. Thus, whatever the Panel's general impression of the whole of the evidence in a given case may be, a complainant cannot bring a UDRP proceeding unless it has rights in a   trademark.

 

That requirement is expressly stated in Policy ¶ 4(a)(i). It is also universally understood that by "trademark" the Policy means a registered trademark or an unregistered or common law trademark. That is made clear by there not being any qualification to the word "trademark" in the Policy, a view endorsed by countless prior UDRP decisions and reflected in such sources as the textbook on the subject¹.

 

In the present case, there is no evidence that the Complainant "has" a registered trademark and consequently, if the Complainant is to get to first base, it must establish that it "has" an unregistered or common law trademark.

 

The Complainant itself is of the same view, as is seen from the Declaration of Sean Broihier, the sole owner of the Complainant which is Exhibit A to the Complainant and where Mr. Broihier states: "Pixels owns common law rights its METAL POSTERS mark in connection with online retail store services, online photograph and image processing services, print on demand services, posters, prints, and framed art." The Complainant therefore properly concedes that as its does not have a registered trademark, it is obliged to show that it has a common law trademark to that effect.

 

However, as with all facts and particularly with contentious issues of fact, they must be proved. This also is clearly stated in the Policy, where it is said with respect to the three elements that must be shown by the Complainant that "(i)n the administrative proceeding, the complainant must prove that each of these three elements are present." It is equally clear that by "prove", the Policy means proved by evidence. In other words, it is not enough for a complainant merely to assert that it has an unregistered or common law trademark; it must prove it.

 

Here again, it is now well-established that although a complainant is at large to adduce any evidence it wishes to prove the issue, it must adduce evidence showing that the trademark it claims is the mark of its trade and hence, its trademark. In the present case, the words "METAL POSTERS", which clearly mean posters made of metal, do not identify the goods or services of the Complainant, or to put it in different words, they are not inherently distinctive of the Complainant's goods and services but merely describe them. Thus, a complainant in that position must adduce evidence that the words also have a secondary meaning which achieves the objective of identifying the goods and services as being those of the Complainant.

 

This may be done by evidence such as evidence that the Complainant actually provides the goods and services in question and has done so for at least some time, that it has promoted them under that name, advertised them, invoiced buyers using the name, or that it has been recognized by the commercial community by such means as testimonials, surveys, reviews or awards. When that is done, it may well be that the conclusion is that the words claimed as a trademark identify the Complainant as the source of the goods or services in question, giving the Complainant the standing to bring the proceeding as a trademark owner.

 

The Complainant asserts in the Complaint that METAL POSTERS is its trademark. Beyond that assertion, however, there is little if any evidence that the term is used as a trademark to distinguish itself from other providers of metal posters of which, as will be seen, there are many.

 

Mr. Broihier's declaration does not say that the expression has acquired any distinctiveness. It is true that the Complainant asserts that it has had sales that are "extensive", particularized at $50,000. But according to the Complaint, that appears to be for "online photographic and image processing services, online retail store services, and print on demand services and products featuring art since October 2023" in general and not specifically for metal posters. It is not evidence of the quantity of products sold.

 

Apart from that, there is no evidence of any recognition by the community, or any part of it, of METAL POSTERS as being the source of those products rather than merely a description of what they are. There is also no evidence of advertising, public opinion assessments, awards, media write-ups, polls, industry recognition, testimonials or other indica that might indicate that the Complainant is the source of the goods and services in question.

 

The Complainant also calls in aid its own domain name and its resolving website at www.metalposters.com. On examination, however, the website deals with the whole range of the Complainant's products, namely canvas prints, art prints, posters, framed prints, acrylic prints, wood prints and "metal prints", the last-mentioned being so called because they are prints where "(e)ach metal print is hand-crafted at one of our global production facilities using 1/16" thick aluminum." Thus, the website certainly shows that the Complainant provides what can fairly be described as metal posters, but it essentially describes the products and how they are made, rather than as a brand or to distinguish them from the same products of other providers who might produce the same or similar goods. Each of the products on the website is described in a similar way as, for example, "acrylic prints" which are "hand-crafted at one of our global production facilities using 1/8" thick acrylic", or wood prints being "printed directly onto a sheet of 3/4" thick maple wood". 

 

Nor is the expression indicated anywhere on the website, so far as the Panel can see, as being a trademark. 

 

Moreover, not only is there little if any evidence of the expression being used as a trademark, but there are other indications to the contrary. Thus, it appears that the expression "metal posters" is generally seen in the community as a description of a type of product produced by many different providers and as not identifying any one producer rather than others. The Respondent has produced a wealth of evidence of the success of, for example, a company named DISPLATE which since 2013 has widely used the term Metal Posters to describe the same product and that there is a large number of Metal Poster products openly advertised on Amazon and Etsy with extensive news reporting of the products that are produced by many suppliers under the generic name used to describe the goods. So far as the evidence goes, the Respondent's conclusion seems more than justified, namely that Metal Posters "functions solely as a product description term to identify posters made of metal, not as a trademark that distinguishes the goods or services of a particular brand".

 

The panel also notes from an internet search under "Metal Posters" that the product is produced under that name by a very extensive list of producers including MyPictures, Photobook Australia, Prints and Signs International, LLC and many others. They all offer for sale metal posters, but none of them claims the term as a trademark, not doubt because it is not a trademark.

 

Thus, the conclusion has to be that the Complainant has not made out a case on the normal tests for an unregistered or common law trademark for METAL POSTERS.

 

Thus, as the Complainant does not have a registered or common law trademark, it has not been able to prove Policy ¶ 4(a)(i) to give it standing to institute this proceeding and the proceeding must therefore fail.

 

Rights or Legitimate Interests 

In the light of the panel's findings on the first element, and as the Complainant cannot succeed, it is not strictly necessary to discuss this issue at any length. However, what has emerged from consideration of the first element is that the Respondent registered a domain name that consisted of the generic expression "metal poster" that accurately described the products it produced in its business. There was no trademark in existence that prevented or restricted it from doing so and in particular, no such trademark vested in the Complainant. Moreover, the evidence is that the Respondent was well-embarked on this activity before it received any notice from the Complainant of the dispute. Thus, as well as having a right and legitimate interest in the domain name on general principles, the evidence brings the case squarely within the meaning of Policy ¶ 4(c)(i), as the Respondent's offerings of metal posters was clearly bona fide. The Complainant therefore also fails on this issue.

 

Registered and Used in Bad Faith

The same considerations apply to this element. The evidence is such that a case has not been made out that the Respondent either registered or used the domain name in bad faith. The evidence is that the Respondent bought the domain name on August 27, 2024 for which it paid the going price, that it has used it for its legitimate business from March 2025, and that it has maintained and used it in its business since then. There is no evidence that it acquired the domain name with a view to re-selling it or for any other underhand reason. The Complainant submitted that the Respondent in effect copied its, the Complainant's, website and that it was "highly similar". The Panel does not find that at all; both websites include examples of images that can be mounted or set on metal, but that is inevitable, given that the object of a website is to show how products would appear if they were purchased; the real difference is that the Respondent's site deals solely with metal posters, whereas the Complainant's site deals with a vast range of poster and related products, only one category of which is metal. Furthermore, in that regard, the business models of the two parties are different, as the Complainant gives effect to transactions, as the Respondent puts it, "between independent buyers and sellers" and offers a wide range of products most of which are not metal posters, whereas the Respondent on the evidence is marketing and selling metal posters. In total, there is no evidence that the Respondent engaged in conduct that constituted bad faith and the substance of the evidence is that it was conducting a regular business and chose a domain name that reflected the goods it was actually selling.

 

The Complainant therefore also fails on this ground.

 

REVERSE DOMAIN NAME HIJACKING

The Panel has no wish to criticize the Complainant, but the discretion to make a finding of Reverse Domain Hijacking is in the Rules to deter claims being made which a complainant knew or, properly advised, should have known could not succeed and to preserve the integrity of the system. The requirement for a trademark is pivotal to the entire UDRP structure and the Complainant should have known that the plain words of the Policy required it to prove this element. The Complainant did not do this and, more egregiously, did not try to do so. Instead, it advanced the case that it had a common law trademark because it says so. It must therefore have known or should have known that the case could not succeed and yet it brought the proceeding, necessarily involving the Respondent in time and cost. Such conduct has frequently been described as being in bad faith.

 

Accordingly, in all the circumstances, the Panel exercises its discretion by declaring that the Complainant was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

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 <metalposter.com> domain name REMAIN WITH the Respondent.

 

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated: October 21, 2025