Pdfsoda.com

The timeline behind pdfsoda.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION 7104189 Canada Inc. (D.B.A. Gestion Avanquest Canada) v. Ngo Minh Tuan Case No. D2025-4112 1. The Parties The Complainant is 7104189 Canada Inc. (D.B.A. Gestion Avanquest Canada), Canada, represented by Benoît & Côté Inc., Canada. The Respondent is Ngo Minh Tuan, Viet Nam, self-represented. 2. The Domain Name and Registrar The disputed domain name <pdfsoda.com> (the “Disputed Domain Name”) is registered with Mat Bao Corporation (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2025. On October 9, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 10, 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 October 17, 2025. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2025. The Response was filed with the Center on October 22, 2025. A supplemental filing from the Complainant was received by email on October 23, 2025. The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on November 3, 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. page 2 4. Factual Background The Complainant, 7104189 Canada Inc. (D.B.A. Gestion Avanquest Canada), is a software publisher creating and developing software products. The Complainant offers an all-in-one PDF solution under the brand SODA PDF. The Complainant is the owner of various trademarks, including the following: - SODA, European Union word mark No. 009161845 registered on November 30, 2010, covering products in class 9; and - SODA, Canadian word mark No. TMA850865 registered on May 14, 2013, covering products in class 9. The Complainant operates via the domain name <sodapdf.com>, registered in October 2009. The Disputed Domain Name was registered on October 11, 2019, and resolves to a website which appears to offer free PDF and other converting tools under the name “PDFSoda”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Notably, the Complainant contends that the Disputed Domain Name is confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name as, in summary: - the similarity between the Complainant’s SODA mark and the Respondent’s offerings on the Disputed Domain Name suggests a lack of independence in the Respondent’s business activities. Instead of engaging in a distinct and original business venture, the Respondent’s actions appear as an ill-concealed passing-off attempt to leverage the reputation and recognition built by the Complainant over years of extensive operation; - there is no evident indication of any explicit authorization, permission, or license granted by the Complainant to the Respondent for the use of the term “pdf soda”. This is especially more so considering that the word “soda” does not possess any significance in the industry the Complainant offers its services, and its use by the Respondent cannot therefore be misconstrued as being a mere coincidence, but rather a clear attempt at copying the Complainant’s trademarks to divert consumers; - the Respondent does not appear to be commonly known by the Disputed Domain Name and does not possess any registered trademark (or pending application) associated with SODA PDF or SODA. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. In summary, according to the Complainant, the circumstances surrounding the registration and utilization of the Disputed Domain Name by the Respondent are indicative of a deliberate intent to disrupt the business operations of the Complainant. The Complainant claims that the choice of the Disputed Domain Name creates a strong likelihood of consumer confusion and that individuals actively seeking the Complainant’s legitimate products and services are likely to be led to the Respondent’s website due to the misleading resemblance. According to the Complainant, the Respondent was aware of the Complainant and the Complainant’s SODA trademarks when the Disputed Domain Name was registered. The use of “soda” page 3 here clearly evokes the Complainant’s trademarks in such a way that it is evident that the Respondent selected the word for the sole reason of intentionally attempting to attract, for commercial gain, Internet users to its website. B. Respondent The Respondent contends that the Complainant has not satisfied all three of the elements required under the Policy for a transfer of the Disputed Domain Name. In summary, the Respondent claims that the Disputed Domain Name is not identical or confusingly similar to the Complainant’s trademarks as: - the Disputed Domain Name is composed of two common, descriptive English terms: “PDF” and “soda”. The term “PDF” is a widely known abbreviation for “Portable Document Format” - a file standard developed by Adobe - and is therefore a generic, non-protectable term. The term “soda” is a common noun in English, referring to a type of beverage, and is used in numerous brand names and trademarks across different industries; - while the Complainant may hold certain trademark registrations for the word “soda” in relation to software and SaaS services (Classes 9 and 42), this does not confer an exclusive monopoly over the ordinary English word “soda” in all contexts or combinations; - the Respondent selected the Disputed Domain Name independently, using “PDF” to describe the nature of the website’s tools, and “soda” as a creative, user-friendly term evoking simplicity and ease of use; - the overall impression of the Disputed Domain Name is clearly distinct from the Complainant’s “SodaPDF” mark. The word order is reversed, the branding and logo design are entirely different, and the Respondent’s website includes a visible disclaimer on every page explicitly stating: “PDFSoda operates independently and has no connection or association with SodaPDF. Our tools and services are developed and provided under our own brand to help users work with PDF files easily and securely.” The Respondent also claims rights and legitimate interests in the Disputed Domain Name as: - it operates the related website as a genuine, independent platform offering free and useful PDF tools to users worldwide; - although both the Complainant and the Respondent provide utilities related to PDF processing, the Respondent’s tools are substantially broader and distinct in both scope and implementation; - the Respondent’s branding, logo, and website interface are entirely different from those of the Complainant, and the website displays a clear and prominent disclaimer on every page; - the Respondent has never attempted to conceal its identity or mislead users in any way. Finally, the Respondent claims that the Disputed Domain Name was not registered or used in bad faith as, in summary: - the Disputed Domain Name was not acquired or used to target the Complainant or any competitor, nor was it ever offered for sale, rent, or transfer to the Complainant; - at the time of registration, the Respondent was unaware of the Complainant’s “SodaPDF” brand; - the Respondent’s website has never displayed any commercial advertisements, nor has it generated income through affiliate links or redirects; page 4 - all tools on the Respondent’s website are completely free of charge, and the Respondent has never requested payment or monetized the services. C. Complainant’s Supplemental Filing The Complainant claims that the disclaimer to which the Respondent refers was not apparent at the time of filing of the Complaint. According to the Complainant, the timing of the Respondent’s disclaimer may suggest prior awareness of the Complainant’s mark, which can undermine claims of good faith. 6. Discussion and Findings 6.1. Preliminary procedural issue: the Complainant’s Supplemental Filing Paragraph 12 of the Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel. Panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. In the present case, the Panel observes that the Complainant’s supplemental filing is limited in scope to strictly address the Respondent’s reference to the disclaimer on the website related to the Disputed Domain Name. As the Respondent does not deny that this disclaimer was not apparent at the time of filing of the Complaint, this obviously constitutes a new fact that could not have been anticipated by the Complainant. The Panel therefore accepts to take the Complainant’s supplemental filing into consideration. 6.2. Substantive elements of the Policy A. Identical or Confusingly Similar 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 3.0, section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel observes that the entirety of the SODA mark is reproduced within the Disputed Domain Name. In such cases, the domain name will normally be considered confusingly similar to the incorporated mark for purposes of UDRP standing. WIPO Overview 3.0, section 1.7. Additionally, the Panel finds that the addition of another term – here, “pdf” – does not prevent a finding of confusing similarity between the Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. It is well established that generic Top-Level Domains (“gTLDs”), here “.com”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights. WIPO Overview 3.0, section 1.11.1. The Panel finds the first element of the Policy has been established. page 5 B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. The Respondent’s name is “Ngo Minh Tuan”. The Respondent does not provide any evidence showing that he acquired trademark or service mark rights in a name corresponding to the Disputed Domain Name. In the Panel’s view, the Respondent does not show either that he has been commonly known (as opposed to merely incidentally being known) by the relevant moniker, apart from the Disputed Domain Name. WIPO Overview 3.0, section 2.3. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists or existed. Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry. Where a domain name is identical to a complainant’s trademark, UDRP panels have largely held that it carries a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1. The Disputed Domain Name incorporates the Complainant’s distinctive SODA mark in its entirety and combines it with the term “pdf”. As confirmed by the Respondent, “PDF” is a widely known abbreviation for “Portable Document Format”. In the Panel’s view, this combination even increases the risk for confusion with the Complainant and its business. Indeed, the Complainant’s evidence shows it offers PDF software tools under its SODA mark, and often uses the combination “SODA PDF”, e.g., through the domain name <sodapdf.com> linked to its official website. Therefore, the Panel finds that the Disputed Domain Name in itself carries a risk of implied affiliation with the Complainant and its SODA mark. Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name, support a fair use or not. WIPO Overview 3.0, sections 2.5.2 and 2.5.3. The Panel observes that the Disputed Domain Name resolves to a website offering free PDF tools similar to those of the Complainant, as well as other converting tools. Although the Respondent claims that its tools are substantially broader and distinct in both scope and implementation, the Panel finds that the available evidence clearly shows that both Parties are active in the same sector. The Respondent also claims that its branding, logo, and website interface are entirely different from those of the Complainant. However, the Panel observes that the Respondent’s logo presents remarkable similarities with the logo used by the Complainant until at least 2014: Complainant’s logo until at least 2014 Respondent’s logo Finally, the Panel finds that the presence of a disclaimer on the Respondent’s website cannot play in its favour as it appears the disclaimer was added after the filing of the Complaint. In light of the foregoing, and taking into account the additional circumstances as explained below under section 6.2.C., the Panel finds that the Respondent’s conduct does not rise to the required level necessary to have legitimate interests to or rights in the Disputed Domain Name within the meaning of paragraph 4(a)(ii) of the Policy. Given the distinctive character of the Complainant’s SODA mark in the field of PDF software, page 6 the Panel considers it more likely than not that the Respondent registered the Disputed Domain Name for the purpose of taking an unfair advantage of the Complainant’s mark. In the circumstances of this case and on the balance of probabilities, the Panel does not consider the use of the Disputed Domain Name to be bona fide, legitimate or fair. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel finds it very unlikely that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name as: - the Disputed Domain Name incorporates the Complainant’s distinctive trademark in its entirety, and combines it with a term which can easily be linked to the Complainant’s business. The Disputed Domain Name only differs from the domain name linked to the Complainant’s official website by the position of this term; - some of the Complainant’s trademarks predate the registration of the Disputed Domain Name by more than 5 years; - as mentioned above, the Respondent’s logo presents remarkable similarities with the logo used by the Complainant until at least 2014. The Respondent uses the Disputed Domain Name to offer tools at least similar to the Complainant’s software tools, albeit for free. In the Panel’s view, the above circumstances (including the Respondent very likely knowledge of the Complainant’s mark and the distinctive character of this mark) indicate that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain or other such purposes inhering to the Respondent’s benefit, by creating a likelihood of confusion with the Complainant and its trademark. Where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused. WIPO Overview 3.0, section 3.7. In the present case, the disclaimer was apparently added during the course of the proceedings. In any event, the Panel finds that this circumstance cannot be taken into account for the Respondent’s benefit. The Panel finds the third element of the Policy has been established. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <pdfsoda.com> be transferred to the Complainant. /Flip Jan Claude Petillion/ Flip Jan Claude Petillion Sole Panelist Date: November 17, 2025

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.