Sleep patch seller loses second cybersquatting claim in two months

Silent nights has many uses.

SoletLuna Holdings, Inc. and Lifewave, Inc., which sell a skin patch that the companies say helps you get better sleep, have lost their second cybersquatting claim in as many months.

In October, the companies filed a claim against silentnights net, .art, .life, and .xyz. The registrant of those names said he wanted a domain for an art project and chose silentnights .net. He said he was obviously aware of the Complainant’s registration of SilentNights.com, but noted that its use was very specific and wouldn’t conflict with his use.

The registrar offered him the alternative top level domains for free with his purchase.

In a decision dated December 2024, panelist Warwick Rothnie wrote (pdf):

Given the absence of evidence about the fame and repute of the Complainants’ trademark, the comparatively limited and specialized field in which the Complainants use their trademark and, conversely, the wide scope for non-infringing uses of what is otherwise an ordinary, descriptive expression, the Panel is not prepared to infer that the Respondent has registered the disputed domain names to take advantage of their significance as the Complainants’ trademark. That is, the Panel is not prepared to infer on the very limited information presented by the Complainant in this proceeding that the Respondent registered the disputed domain names in bad faith.

The second case was filed in December and published this week.

In this case, the Complainants filed against SilentNights .org, registered by domain name investor Bahl Co. Once receiving a response with a claim for reverse domain name hijacking, the Complainants tried to withdraw the case.

They admitted that domain investing was a legitimate use of the domain and said they were unaware that the registrant was a domain investor.

The Complainants said that third party distributors sometimes violate the Complainant’s policy of registering domains with the mark, and they were concerned that was the case here. They stated:

Unfortunately, due to WHOIS protections and difficulties in communications around the holidays, Complainants concluded that on information and belief the registration of the Disputed Domain Name was targeted behavior and had no information to contradict this until receiving Respondents position.

Bahl Co. wanted the case to be heard so it could get a finding of reverse domain name hijacking. Panelist Lawrence K. Nodine agreed that a decision should be rendered.

While Nodine found (pdf) in the domain registrant’s favor, he declined to find reverse domain name hijacking:

Although Complainant failed to prove that its Mark is well known, such a failure is not uncommon in UDRP proceedings and does not necessarily evidence bad faith. On the other hand, when Complainant requested leave to withdraw its Complaint, it did not explain why it apparently ignored the holding in Soletluna Holdings. This failure supports a finding of RDNH, but Complainant’s request that its Complaint be withdrawn is evidence of good faith. The Panel finds that, although this is a close case, a finding of RDNH is not warranted. The Panel also considers that it good policy to encourage parties to seek termination of proceedings when it becomes apparent that they will not succeed. A finding of RDNH in these circumstances would discourage future litigants from seeking to terminate claims for fear that doing so would been seen as an admission.

The Complainants filed a flurry of cybersquatting cases last fall. Other than these two cases, its filings were against domains with the Lifewave brand in them.