Panelist orders domain transferred, but it seems like a complex trademark dispute.
I write about many UDRP cases where a complaint is dismissed because it’s really a trademark dispute, not a cybersquatting dispute.
Today, World Intellectual Property Organization posted a decision over bearfoot.com (pdf). It seems to me like a trademark dispute, but panelist David H. Bernstein found in the complainant’s favor. That said, there is a slight bit of nuance here that could separate it from traditional trademark vs. cybersquatting UDRPs.
Bearfoot LLC filed the dispute against BRFT Holdings LLC.
Both companies sell minimalist shoes. Bearfoot LLC uses the domain bearfoot.store. BRFT Holdings uses the domain bearefoot.com, and the brand on its website is Bearefoot.
Obviously, both companies are making a play on the word bare. Bernstein noted that there are many similar brands.
The respondent acquired the domain bearfoot.com in 2024, after it started operating on bearefoot.com, and forwarded the domain to its website.
BRFT Holdings said this was a defensive measure to protect against “typos” of its bearefoot.com domain.
Clearly, both companies operate in a similar space with similar names. You could argue this is a complicated trademark dispute best handled in the courts. But Berstein found in the complainant’s favor.
There is a bit of nuance in this case compared to others I’ve covered.
First, the domain the respondent acquired exactly matches the complainant’s brand, which is slightly different from the respondent’s brand. Bernstein wrote:
The Respondent more likely than not has rights in the BEAREFOOT trademark and, the Panel notes, the bearefeet.com domain name, but given the crowded field of marks in this category, that does not give the Respondent rights or legitimate interests in the disputed domain name in light of the fact that the disputed domain name is identical to a trademark that has been used by a competitor in the same space since prior to the Respondent’s incorporation.
Another thing that makes this case somewhat different is that the domain at issue isn’t the respondent’s primary domain for its website. Ordering the domain transfer will not take down an active business’s website.
However, taking a step back, if you believe UDRP is designed to handle clear-cut cases of cybersquatting, you could argue this is not such a case.
One question keeps coming to mind. If bearfoot.com was publicly available for acquisition in 2024, why didn’t Bearfoot LLC acquire it themselves? If both parties had the same opportunity to purchase the domain, where should UDRP draw the line between first-come, first-served and abusive registration? Otherwise, does UDRP risk becoming a way to obtain a domain after a competitor has already paid market value for it?
The point Vincent raises is exactly right. What makes this case interesting from an acquirer’s perspective is that the trademark risk was detectable before the purchase. “Bearfoot” with active registrations under an identifiable competitor in the same category is the kind of signal a basic trademark check would have surfaced. Whether BRFT Holdings ran that check and proceeded anyway, or simply missed it, changes how you read the bad faith argument. From what I see building dom-verify.com, most buyers of expired domains never check trademark exposure at all before bidding.