0.19 Trademark Infringement
Unintentional trademark infringement is outside of the scope of the UDRP. Intentional trademark infringement is within the scope of the UDRP but may raise complex legal issues that may make the dispute inappropriate for resolution under the UDRP.
A Panel may find that the determination as to whether the alleged trademark infringement is intentional or unintentional requires a level of inquiry that makes the dispute inappropriate for resolution under the UDRP.
Trademark infringement and cybersquatting, while related, are distinguishable. Cybersquatting requires intent, whereas trademark infringement does not.
In some instances, cybersquatting and trademark infringement may both exist, such as where a Respondent intentionally registers and uses a confusingly similar domain name for identical or similar goods or services and does so with the intention of misdirecting visitors and passing itself off as the Complainant. In contrast, a Respondent who merely happens to use a domain name that is identical or similar to a Complainant’s trademark – even for identical or similar goods or services, may be infringing, but may not be cybersquatting, if the Respondent did so unknowingly, i.e. without any intent to specifically target the Complainant’s trademark.
To fall within the scope of the UDRP, the Complainant must provide adequate evidence that the Respondent intentionally targeted the Complainant’s trademark specifically. For example, where parties are in different jurisdictions or where a Complainant’s mark is not well known, a Complainant will generally need to provide evidence that it was the intended target of the Respondent – rather than being the unintended victim of mere and unintentional trademark infringement.
Where a dispute involves competing claims of trademark or other rights – even where trademark infringement may exist – Panels should exercise caution in ensuring that the case is appropriate for resolution under the UDRP. The UDRP is not intended to provide a route around trademark infringement court actions. Such disputes may raise a genuine issue of whether the Respondent can lawfully use the Domain Name due to defenses available in court that are generally not available in the UDRP. They may involve complex and nuanced factual and legal determinations that are unsuitable for resolution under the UDRP.
Panels should also consider whether a Respondent that is intentionally targeting the Complainant with its choice of a Disputed Domain Name may have a nominative fair use defense.
See also 0.1 (Scope of the Policy), 0.2 (Standard of Proof), 2.3 (Nominative Fair Use), 3.3 (Targeting), 3.4 (No Constructive Notice under the UDRP) and 3.10 (Reputation).
Additional Information
Relevant Decisions
PaySend Group Limited v. 祥禄 陈 / Xianglu Chen, CAC-UDRP-107429 (2025) <pay-send. cash>, Transfer
The content of the website accessed through the disputed domain name clearly demonstrates the Respondent’s knowledge and targeting of the Complainant and its trade marks and websites, and of its connected business, products and services, as well as the Respondent’s intent to take unfair advantage of the Complainant’s marks.
Highervisibility, LLC v. Dino Andrade, WIPO D2025-0203 < highervisibilityllc. com>, Denied
These differences may not avoid a finding of infringement under the Lanham Act in a United States court, but they are sufficient to raise doubts about whether Respondent was engaged in cybersquatting and intentionally targeting Complainant. It is at least as likely that Respondent adopted the Disputed Domain Name without knowledge of Complainant. Moreover, Complainant apparently concedes that Respondent in fact offers the services described on the Disputed Webpages as there is no allegation or evidence that Respondent’s offer of services is false or pretextual.
Data Parrot Holdings, LLC v. Christopher Hamoen, WIPO DAI2024-0072 <dataparrot. ai>, 3-Member, Denied
When a dispute involves potential trademark infringement that raises complex issues beyond clear cybersquatting, such matters are generally more appropriately resolved in judicial proceedings rather than under the UDRP.
Guy Carpenter & Company, LLC v. Chun Xie, WIPO D2024-4353, <metarisk. com>, 3-member, Denied
Although there is some commonality between the Parties’ respective businesses in the overarching risk management space, the Parties do not appear to be competitive and appear to target different sectors and clients…
On balance, the Complainant’s case may be one of alleged trademark infringement as opposed to bad faith cybersquatting as required under the Policy and stands to be denied.
Tesla Inc. v. hao zou / FEL – Friendly Elder Life Store, Forum FA2410002120768, <teslaunch.net>, Denied
Furthermore, the current facts and evidence present a case that is beyond the scope of the Policy as it involves questions of whether the disputed domain name infringes Complainant’s trademark…Should Complainant feel that Respondent is perpetrating an infringement of its rights in the TESLA trademark, a court of law would be the proper venue for addressing such dispute.
National Automotive Parts Association LLC, Genuine Parts Company v. Ralph Wood, WIPO D2024-3192, <napawarranty.com>, 3-member, Transfer
In any event, even if the Respondent was simply engaging in “bait and switch” tactics, using a competitor’s mark to redirect Internet users to a competing site…In the present case, the Panel notes that the Respondent was clearly aware of the Complainant and its marks, as the Respondent’s website reproduced the Complainant’s registered figurative trademark and expressly (and falsely) claimed to “work with” the Complainant.
SEEK Careers/Staffing, Inc. v. Yassin Boutwaline, Skandia-Stockholm and Seek Personnel Staffing LLC, WIPO D2024-3160, <seekpersonnelstaffing.com>, Denied
While the Complainant’s trademark is registered in the Principal Register and both parties appear to be providing the same or very similar services, the evidence in this case does not persuade the Panel that the Respondent likely knew of and targeted the Complainant and its trademark.
Insight Global, LLC v. Clement Odongo, Core Insight LLC, WIPO D2024-2630, <coreinsightglobal.com>, Denied
At most, this may be more of trademark claim than a cybersquatting situation. To the extent that Complainant believes it may have a claim against Respondent for trademark infringement or unfair competition based on Respondent’s registration and use of the disputed domain name, such a claim belongs in another forum and is beyond the scope of this UDRP proceeding.
Fox Factory, Inc. v. Wenhui Chen, Forum FA2403002088919, <bikefoxsuspension.com>, 3-member, Transfer
Respondent’s resolving website is but a mirror image of Complainant’s goods, branded with Complainant’s marks. As such, this website cannot be considered to be a bona fide offering of goods and services by the Respondent. That is, Respondent’s website serves merely to divert internet users to a misleading website that prominently incorporates Complainant’s marks… These screenshots of the disputed domain name’s resolving website, show webpages offering merchandise identical to that offered by Complainant, branded by Complainant’s registered trademarks. This is a bold attempt by Respondent to attract Internet users for commercial gain.
Thor Tech Inc. v. Eric Kline, WIPO D2023-4275, <airstreammarketplace.com>, 3-member, Denied
Panelists frequently observe that the UDRP is meant to address intentional bad faith conduct and not “ordinary” trademark infringement. This case illustrates the distinction. Although Complainant may have a credible claim of trademark infringement, it has not proved that Respondent registered the Disputed Domain Name in bad faith within the meaning of the Policy.
ATVTracks.net Property, LLC v. Domains By Proxy, LLC, DomainsByProxy.com / Chad Green, FPNW, WIPO D2021-1774, <atvtracksystems.com>, 3-member, Denied
The Panel is sympathetic to the disruption that Respondent’s business may be causing to Complainant, but on the evidence, that is a consequence of Complainant’s selection of a weak trademark, comprised of a generic term for the parties’ products plus a TLD. To the extent Complainant believes that the totality of Respondent’s actions, including the alleged instances of actual consumer confusion, might establish a claim of trademark infringement or unfair competition, as Complainant appears to suggest in its submissions, any such claim is more appropriately adjudicated in another forum and not through the UDRP.
Yosemite / Bass Lake Activities, Inc. v. Miller’s Landing Resort, Inc., WIPO D2020-0719, <basslakewatersports.com>, 3-member, Denied
In sum, this appears to be a dispute ill-suited for disposition of the UDRP, which is best applied to clear cases of cybersquatting. Whether Complainant could make out a case for trademark infringement against Respondent in a court of law or other forum is not for the Panel to say. In any event, the record here does not reflect a clear case of cybersquatting.
Terracon Consultants, Inc. v. Steven Dye, Off The Wall, WIPO D2019-2055, <taraconprecast.com>, 3-member, Denied
To be sure, to the extent that Complainant may have a claim against Respondent for trademark infringement or unfair competition, such a claim belongs in another forum and is beyond the scope of a UDRP proceeding which is limited to considering whether a disputed domain name has been registered and used in bad faith pursuant to a non-exhaustive list of circumstances set forth in paragraph 4(b) of the Policy.
Digest Commentary
-
Digest Vol.5.18 <mento.ai>, Transfer
-
Digest Vol. 5.2 <dataparrot. ai>, Denied
-
Digest Vol. 4.44 <bobcatfinaldrivesales .com>, Denied
-
Digest Vol. 4.43 <praythevote2024 .com> and <praythevote2024 .org>, Denied
-
Digest Vol. 4.40 <vidsavefrom .com>, Denied
-
Digest Vol. 4.34 <teachella .net> and <teachella .org>, Transfer
-
Digest Vol. 4.21 <puntoblum .com>, Denied
-
Digest Vol. 4.8 <silverpointequity .com> and <silverpointequities .com>, Denied
-
Digest Vol. 4.7 <principalriskadvisors. com>, Denied
-
Digest Vol.4.4 <savefromweb .com>, Denied