ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION 12613212 Canada Inc. v. Leigh Coda, cyvex ltd Case No. D2025-3213 1. The Parties The Complainant is 12613212 Canada Inc., Canada, internally represented. The Respondent is Leigh Coda, cyvex ltd, United Kingdom, represented by Wilson Gunn, United Kingdom. 2. The Domain Name and Registrar The disputed domain name
is registered with Tucows Domains Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2025. On August 12, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 18, 2025. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2025. The Response was filed with the Center on September 5, 2025. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 19, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On September 16, 2025, the Complainant submitted an unsolicited supplemental filing to the Center.
page 2 4. Factual Background Since 2020, the Complainant, a Canadian company, has been selling around the world a kit for the treatment of hirsutoid papillomatosis or hirsuties papillaris coronae glandis. This condition is apparently benign, small bumps or spots on the human penis. The condition is commonly known as pearly penis papules or PPP for short. The Complainant has been conducting this business from the website at “www.pppkit.com”. (The domain name was registered in May 2020.) The landing page for the domain name features the logo shown below, then follows the words “Pearly Penile Papules Removal Kit” and “Remove PPP at Home, Guaranteed”. Amongst other things, there is also an image of packaging featuring the logo and another image of what the panelist presumes is the device itself featuring a 3Ps diamond logo under the heading “PPP Home Removal Kit”. The Complainant has secured registration for a trademark in a number of jurisdictions. For present purposes, it is sufficient to note the following: (a) Canadian Registered Trademark No. 2182474, which has been registered with effect from April 28, 2022; (b) United Kingdom Registered Trademark No. WO000001704145, designating, inter alia, the United Kingdom, which has been registered with effect from July 14, 2022; (c) European Union Registered Trademark No. 1704145, which has also been registered with effect from July 14, 2022; and (d) United States of America Registered Trademark No. 7341742, which has been registered in the Principal Register on April 2, 2024. While there is some variation in the wording of the specifications, the trademarks are registered for ionizers being low-power high-frequency electric apparatuses for the cosmetic treatment of the skin in International Class 10. The trademark the subject of the registrations is: In March 2022, the Respondent registered the domain name and contacted the Complainant about becoming a distributor in the United Kingdom. In April 2025, an Expert under the Nominet Dispute Resolution Service subsequently ordered the transfer of that domain name to the Complainant. At some point, the Respondent commenced a business supplying treatment kits for the treatment of PPP under the name PPP Clinic. Currently, the website at “www.pppclinic.co.uk” is headed “PPP Clinic Life Changing Results” and proclaims that it is Europe's leading “PPP Home Treatment Specialists. Click here to purchase your treatment kit”.
page 3 According to the WHOIS report, the disputed domain name was registered on May 16, 2025. At the time this decision is being prepared, it resolves to a website headed “PPP Clinic Life Changing Results” and then has the text: PPP Home Removal Kit. Europe's Leading PPP Home Treatment Specialists. Scrolling down, there is an image of the device which bears a seal-like device with the words PPP CLINIC across its diameter. The design of this website is somewhat different to the website at “www.pppclinic.co.uk” (but similar in content). The website to which the disputed domain name resolves also claims under the heading “Our Mission” that the business PPP Clinic was founded in the United Kingdom in 2019. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules directs the Panel to decide the 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. In the interests of ensuring that the decision is based on all available relevant information, the Panel will admit the Complainant's unsolicited supplemental file into the record in the exercise of the Panel's powers under paragraph 10 of the Rules. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights. It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has proven ownership of several registered trademarks for the 3Ps diamond logo identified above. The Complainant also contends it has developed a reputation in “PPP Kit” as an unregistered trademark. In support of that claim, the Complainant refers to the more than 150 reviews of its product on its website. In its supplemental filing, the Complainant has also provided some Google analytics reports which show that there were no searches for PPP Kit prior to the Complainant’s business starting, there have been numerous searches since then (having regard to the niche nature of the product). Having regard to the descriptive nature of the expression PPP kit (alone), the Panel has reservations about concluding the Complainant has established secondary meaning in the term on this rather limited evidence.1 1 The Panel notes that the Expert in the Nominet Dispute Resolution Service proceeding found the Complainant did have a reputation in the expression. That was in a context, however, where there was a question whether the Respondent had registered the domain with knowledge of the Complainant’s trademark. That was relevant because the Respondent registered that domain name before the
page 4 The comparison of the disputed domain name to the Complainant's trademark simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties, the date they were acquired and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview 3.0, section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. See for example, WIPO Overview 3.0, section 1.10. Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark with the term “treatment” interposed between “PPP” and “KIT”. As this requirement under the Policy is essentially a standing requirement, the addition of this term does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. Complainant had applied to register, let alone registered, its trademark. That is similar to the types of consideration discussed in section 3.8.2 of WIPO Overview 3.0.
page 5 While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. There is no dispute between the Parties that: (1) The Respondent registered the disputed domain name after the Complainant began using the trademark and also after the Complainant had registered its trademark; (2) The Respondent is not affiliated with the Complainant; (3) The Complainant has not otherwise authorised the Respondent to use the disputed domain name; (4) The disputed domain name is not derived from the Respondent's name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. The Panel also notes that the disputed domain name was registered shortly after the Expert in the Nominet Dispute Resolution Service proceeding ordered the transfer of the domain name to the Complainant. The Complainant contends that the website to which the disputed domain name resolves impersonates or misleads consumers into thinking the Respondent’s website is the Complainant’s. The Complainant submitted a Google search of “PPP Kit” showing that the website to which the disputed domain name resolves is returned on the second page for a product apparently described as “3M PPP-KIT Patch Plus Primer Kit”. In its unsolicited supplemental filing, the Complainant submits three emails said to evidence this confusion. The third email is indeed from someone who has mistakenly contacted the Complainant about a purchase made on the Respondent’s PPP Clinic website. The other two emails are inquiries whether the Complainant is the same as or associated with PPP Clinic. First, these emails arise from the use of PPP Clinic or , not the disputed domain name. Secondly, the expression “PPP treatment kit” is descriptive of the product and is being used by the Respondent in connection with that descriptive function. Even if the Panel accepts that the Complainant has developed a reputation in the expression “PPP Kit”, its descriptive nature means its scope is limited. There is a price to be paid for adopting such terms. While some risk of confusion may be inevitable, as Lord Simonds explained in Office Cleaning Service Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 the risk: “must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion.” Accordingly, the Panel finds the Complainant has not established the second requirement under the Policy. C. Registered and Used in Bad Faith As the Complaint must fail, no good purpose would be served by considering this ground.
page 6 D. Reverse Domain Name Hijacking Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Panel does not consider this an appropriate case for a finding of Reverse Domain Name Hijacking. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16. There appears to be a genuine dispute between the Parties particularly bearing in mind the earlier decision under the Nominet Dispute Resolution Service. 6. Decision For the foregoing reasons, the Complaint is denied. /Warwick A. Rothnie/ Warwick A. Rothnie Sole Panelist Date: October 3, 2025
Full & Egal Universal Law Academy