DECISION

 

DataGrail, Inc. v. William Hobbs / La Plata Press

Claim Number: FA2602002206263

 

PARTIES

Complainant is DataGrail, Inc. ("Complainant"), represented by Tate S. Coulter of Barnes & Thornburg LLP, Indiana, USA. Respondent is William Hobbs / La Plata Press ("Respondent"), represented by Timothy Hyland of Hyland Law PLLC, Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <datagrail.ai>, registered with GoDaddy.com, 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.

 

Gerald M. Levine and Sandra J. Franklin, Panelists and Charles A. Kuechenmeister, Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 19, 2026; Forum received payment on February 19, 2026.

 

On February 20, 2026, GoDaddy.com, LLC confirmed by e-mail to Forum that the <datagrail.ai> 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").

 

On February 23, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 16, 2026 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@datagrail.ai. Also on February 23, 2026, 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 12, 2026.

 

Complainant submitted an unsolicited Additional Submission on March 17, 2026. It contains no information that was not available to Complainant before the Complaint was filed. The Panel does not accept or consider it.

 

On March 17, 2026, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Gerald M. Levine and Sandra J. Franklin as Panelists and Charles A. Kuechenmeister 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant provides software for companies to build privacy programs and control their data. It has rights in the DATAGRAIL mark based upon its registration of that mark with the USPTO.  Respondent's <datagrail.ai> domain name is identical or confusingly similar to Complainant's mark as it incorporates the mark in its entirety, merely adding the ".ai" generic top-level domain (gTLD).

 

Respondent has no rights or legitimate interests in the domain name. Respondent is not affiliated with Complainant and Complainant has not authorized or licensed him to use its DATAGRAIL mark, he registered the domain name to secure a windfall by selling it to Complainant, the domain name previously resolved to a website with no active content and after rejecting Complainant's offer to buy the domain name Respondent caused it to resolve to a website promoting his own business, and he has not been commonly known by the domain name.

 

Respondent registered the domain name in bad faith. He registered it for the sole purpose of attempting to sell it to Complainant at a price far in excess of out-of-pocket costs directly related to it, he is using it to promote his own data services business, disrupting Complainant's business with the intent to force Complainant to pay his price for the domain name, and he had actual knowledge of Complainant and its mark when he registered the domain name.

 

B. Respondent

Respondent previously owned a company named La Plata Press, L.L.C. That firm is still shown on the registrar's records as associated with the domain name but it is no longer in existence. Respondent formed a different company named Epiphany Collective, Inc. (Epiphany), which is a media, entertainment and brand strategy company that analyzes data to advise brand owners how best to market to various cultures and subgroups. In March of 2022 he registered two domain names then being considered for a new, AI-driven product for Epiphany. Those domain names were the domain name involved here and <epiphanyiq.ai>. Later in 2022 the <epiphanyiq.ai> domain name was chosen for the new products. At the time the domain name was registered Respondent did not know of the existence of Complainant or its trademark.

 

In February 2024 he received an email from a GoDaddy broker who stated that he had a client who was seriously interested in purchasing the domain name. Respondent located an individual associated with Complainant on LinkedIn and sent a message through LinkedIn inquiring whether Complainant wanted to connect directly with him about the domain name. This was the first time he became aware of Complainant.

 

Respondent admits that the domain name is confusingly similar to Complainant's mark, but that does not preclude him from establishing his rights in it. The domain name is a combination of two common dictionary words, "data" and "grail," and he selected it in the course of his development of a new product for his business.  He ultimately selected the other domain name but at the time he registered both of them they were both under serious consideration for use with the new product. He registered the domain name as part of demonstrable preparations to use it in connection with a bona fide offering of his services. There was no intent on his part to divert traffic from Complainant, no impersonation and no effort to sell the domain name before the GoDaddy broker acting on behalf of Complainant approached him. He was not even aware of Complainant at the time of registration.

 

Respondent did not register and is not using the domain name in bad faith. He had no knowledge of Complainant or its mark when he registered the domain name, and he had no thought of selling the domain name until a GoDaddy broker told him he had a client who was interested in buying it.  Respondent is not competing with Complainant, as the services they provide are different. Respondent redirected the domain name to his own website only because during recent negotiations about a sale of the domain name Complainant complained about the fact he was making no active use of it.

 

C. Complainant Additional Submission

Not accepted, not considered.

 

FINDINGS

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

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

(2)       the 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.

 

The Panel finds as follows with respect to the matters at issue in this case:

 

Identical and/or Confusingly Similar

The DATAGRAIL mark was registered to Complainant with the USPTO (Reg. No. 5,709,764) on March 26, 2019 (USPTO registration certificate submitted as Amended Complaint Exhibit E). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i).

 

Respondent's <datagrail.ai> domain name is identical or confusingly similar to Complainant's DATAGRAIL mark. It incorporates the mark in its entirety, merely adding a gTLD. Complainant's mark is clearly recognizable within the domain name. Adding a gTLD does not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the DATAGRAIL mark, in which Complainant has rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

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

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) Respondent is not affiliated with Complainant and Complainant has not authorized or licensed him to use its DATAGRAIL mark, (ii) he registered the domain name to secure a windfall by selling it to Complainant, (iii) the domain name previously resolved to a website with no active content and after rejecting Complainant's offer to buy the domain name Respondent caused it to resolve to a website promoting his own business, and (iv) he has not been commonly known by the domain name.  These allegations are addressed as follows:

 

Complainant states that Respondent is not affiliated with it and that it has not authorized or licensed Respondent to use its mark. Complainant has specific competence to make this statement, it is unchallenged by any evidence before the Panel and is taken as true.  Evidence that a respondent is not authorized to use a complainant's mark in a domain name supports a finding that the respondent has no rights or legitimate interests in the domain name.

 

Amended Complaint Exhibit F contains a series of emails between the parties beginning with an email from Respondent to a Complainant representative on March 23, 2024 in which Respondent asks Complainant's representative if he "wants to connect directly" on the domain name. Complainant responds in the affirmative but the discussions go no further at that time. Then, on January 19, 2026 Complainant writes to Respondent offering $1,000.00 for the domain name. Inconclusive discussions follow that day and a few days later Complainant writes that before it files a UDRP case it will offer $3,000.00. Respondent declines the offer. This evidences a willingness on Respondent's part to sell the domain name in March of 2024 and January 2026, shortly before the Complaint was filed.  Based upon this evidence Complainant argues that Respondent "only registered the domain name for the purpose of securing a windfall from Complainant." The evidence falls short of demonstrating that intent. Respondent was willing to consider a sale just before the Complaint was filed. While this may under certain circumstances support a finding of no rights or legitimate interests, an offer to sell a domain name does not by itself prove a lack of rights or legitimate interests. If a respondent has rights or legitimate interests in a domain name he may sell it for whatever price he deems sufficient. As stated by the panel in JC Global, Inc. v. DOMAIN ADMINISTRATOR / NAME ADMINISTRATION INC., FA 1787481 (Forum July 9, 2018), "A respondent may offer to sell a domain name without a finding that it lacks rights and legitimate interests in a domain name."  Whether Respondent's willingness to sell the domain name is evidence of no rights or legitimate interests depends upon whether he had rights or legitimate interests in the domain name based upon other factors. Policy 4(c) provides that a respondent can demonstrate rights or legitimate interests in a domain name if it proves that any one of the three sets of circumstances listed in subparagraphs (i) through (iii) of ¶ 4(c) is present. A willingness to sell a domain name does not by itself prove a lack of rights or legitimate interests.

 

Complainant also alleges that Respondent was making no active use of the domain name but instead was passively holding it until February 2026, following the breakdown of negotiations between the parties, at which time he redirected the domain name to his own business which is in an industry related to Complainant's business. Complainant submitted no evidence of Respondent's use of the domain name before the change, but Amended Complaint Exhibit G is a screenshot of the website to which the domain name resolved on February 16, 2026. Respondent's Company, Epiphany Collective, is identified as the sponsor of the site, which advertises and promotes Epiphany's services.  Using a confusingly similar domain name to redirect traffic to the Respondent's website is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).

 

The WHOIS information furnished to Forum by the registrar lists the named Respondent as the registrant of the domain name. This name bears no resemblance to the domain name. Evidence could in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. The Panel finds that Respondent has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(iii).

 

The evidence furnished by Complainant establishes the required prima facie case. It is thus incumbent upon Respondent to come forward with evidence that he has rights or legitimate interests in the domain name.  

 

Policy ¶ 4(c)(i) and (iii) are for the most part directed toward the present tense. A respondent's rights or legitimate interests in a domain name are evaluated as of at or about the time the Complaint is filed. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.1), at ¶ 2.11 ("Although the historical use of a domain name may be relevant to assessing the parties' claims, panels tend to assess claimed respondent rights or legitimate interests at the time of the filing of the complaint."). The WIPO Overview 3.1 is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. This Panel accepts that consensus on this and other issues addressed later in this Decision.

 

The evidence furnished by both parties establishes that at the time the Complaint was filed the domain name was redirecting traffic to one of Respondent's websites. Respondent states that prior to the parties' January 2026 negotiations he had been passively holding it since an unspecified date in 2022 and changed the use only because Complainant criticized him during those negotiations for passively holding it. Neither of these uses qualifies as using or preparing to use the domain name in connection with a bona fide offering of goods or services, or as a legitimate noncommercial or fair use. Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) ("The Panel finds that using Complainant's mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant's actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . ."); Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("both Domain Names resolve to a web site that shows the words, 'Not Found, The requested URL / was not found on this server.'  Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).").

 

Respondent does not claim that he has ever been known by the domain name or anything similar to it.  His evidence fails to support any viable claim to rights or legitimate interests in the domain name.

 

On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration or Use in Bad Faith

Policy ¶ 4(a)(iii) requires Complainant to prove that the domain name has been registered or is being used in bad faith. Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product of service on the respondent 's web site or location.

 

The concept of bad faith as illustrated in the above four subparagraphs necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of the complainant. The respondent must intentionally have targeted the complainant's mark. Such subjective intent would in turn require that the respondent actually knew of the complainant or its rights in the relevant mark when it registered the domain name.  

 

In attempting to discern actual knowledge and a subjective bad faith intent, panels have looked at many different types of evidence, including but not limited to use of a domain name in direct competition with a trademark owner, impersonation, the parties operating in the same market segment, the parties being physically located in the same general geographic area, a pattern of bad faith conduct, actual prior association between or among the parties, the distinctive nature of the trademark, and the extent to which the trademark has been publicized and is known as a source indicator for the complainant. Unsupported allegations about a respondent's subjective intent are not evidence in this regard.

 

Complainant argues that Respondent registered the domain name primarily for the purpose of selling it at an exorbitant price to Complainant. It bases this on Respondent's willingness to consider selling the domain to it in March 2024 and the fact of that during negotiations Respondent threatened to redirect traffic from the domain name to his own site if Complainant did not pay his price for the domain. It offered neither argument nor evidence bearing upon whether Respondent was aware of Complainant or its mark in March 2022 when he registered the domain name.

 

Respondent offers a detailed explanation of the circumstances surrounding and the reasons for his registration of the domain name. In support, he submitted his Declaration under penalty of perjury (Response Annex 1) stating as follows:

 

In 2019 he formed a company named Epiphany Collective, Inc. (Epiphany), which is in the business of gathering and analyzing open-source third-party data and using that to advise brand owners how best to market to various cultures and subgroups. Early in 2022 Epiphany was developing a plan to expand its offerings to include AI-driven data products which would incorporate data from the brands themselves (first-party data) and couple that with its open source data. In connection with this effort he registered two domain names, <epiphanyiq.ai> and <datagrail.ai>, which were associated with names then being considered for the new products. Response Annex 3 is a copy of the purchase orders for both of these domain names and a WHOIS printout for the <epiphanyiq.ai> domain name which corroborate Respondent's testimony that he registered both of them simultaneously on March 1, 2022. The WHOIS printout for the domain name submitted as Response Annex 2 also verifies the March 1, 2022 registration date. At that time neither he nor anyone else at Epiphany knew of the existence of Complainant or its mark. In selecting these domain names he brainstormed potential possibilities for names for the new product, and the terms "data" and "grail" came together as a possible apt name. No website was associated with either domain name until later in 2022, when Epiphany chose the other domain name to use for its new product, and that domain was directed to the new website at <epiphanyco.ai>. Respondent made no active use of the <datagrail.ai> domain name until February 2026, when he redirected it to one of his Epiphany websites.

 

Respondent's Declaration also states that negotiations for the sale of the domain name began in February 2024, when a GoDaddy broker contacted him stating that he had a client who was seriously interested in buying the domain name and asking Respondent to furnish a price or ball-park range if he was interested in selling. Response Annex 7 is a copy of the broker's email dated February 16, 2024 verifying this initial contact. Respondent says his interest was piqued and he researched to learn who might be interested in buying the domain name. Rather than responding through the broker he located an individual associated with Complainant on LinkedIn and sent him a message through LinkedIn asking if he wanted to deal directly with him regarding the domain name. This is how and when he learned for the first time of Complainant's existence.  He emphasizes that it was Complainant acting through the broker who initiated discussions about a sale of the domain name, not he.

 

The evidence before the Panel falls far short of proving actual knowledge at the time of registration.

 

Neither Respondent's Declaration nor the Complaint sheds any light on what plans if any he had for the domain name prior to the commencement of this proceeding or for afterward, should he prevail.

 

The evidence convincingly refutes Complainant's allegation that Respondent registered the domain name primarily to sell it to Complainant at a price in excess of his out-of-pocket costs. Respondent's Declaration is in the nature of sworn testimony and his version of events is plausible.  Complainant offers no evidence whatever in support of its claim but asks the Panel to find for it solely on the basis of Respondent's willingness to discuss a sale after being approached by Complainant's broker and an alleged threat to redirect traffic from the domain name to his site if Complainant would not pay his price.  In the view of a majority of the Panel, Respondent's evidence is more credible and is accepted as true.

 

Further, there is no evidence that Respondent was aware of Complainant or its mark when he registered the domain name. Complainant argues that both it and Respondent are in the same or a related industry. However, it appears to the Panel that Complainant is in the business of providing computer privacy and security services, while Respondent's business offers marketing consulting services. Respondent offered a plausible reason for selecting the domain name. His is not the only business that registered a domain name combining the words "data" and "grail." Response Annex 5 is a WHOIS printout for the <datagrail.com> domain name, which was registered in 2005.

 

Even if Respondent had been aware of Complainant or its mark when it registered the domain name, there is no evidence of targeting, which is an essential element of bad faith registration. Respondent registered the domain name in March 2022. His first contact with Complainant did not occur until some two years later, and then it was Complainant who contacted him. It is not likely that he would have waited the two years minimum to contact Complainant about purchasing the domain name had that been his intent at registration.

 

The Policy requires proof of both bad faith registration and use. Without proof of actual knowledge and intent to target, Complainant cannot prevail on the Policy 4(a)(iii) element. For the reasons set forth above, the Panel finds that Complainant has failed to establish that Respondent registered the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <datagrail.ai> domain name REMAIN WITH Respondent.

 

 

 

Charles A. Kuechenmeister, Chair

March 24, 2026