Relevant Decisions

Themis Solutions Inc. v. Narendra Ghimire / Deep Vision Architects, Forum FA2502002139218, <clio. ai>, 3-Member, Denied

Bad faith, under the Policy, is predicated on a respondent specifically targeting the asserted mark of the complainant and this “can be established by either direct evidence (e.g. content of the website) or circumstantial evidence such as strength of the mark and nature of a disputed domain name (e.g. mark plus a term describing Complainant’s business), timing of registration of a domain name and timing of trademark registration, geographic proximity of the parties.” UDRP Perspectives on Recent Jurisprudence, § 3.3 (updated Jan. 15, 2025)… The Panel cannot conclude that Respondent knew of or targeted Complainant’s CLIO mark at the time that it registered the disputed domain name.

JD Sports Fashion PLC v. Mira Holdings, Inc., WIPO D2025-0375 <jdsport. com>, 3-Member, Denied

Nonetheless, the central question is whether the Respondent targeted the Complainant and its mark JD SPORTS. The disputed domain name is not identical to the Complainant’s trademark. Although it differs from the mark only in the omission of the plural “s”, the disputed domain name can also be read as two initials followed by the dictionary word “sport”, correctly spelt. The Complainant shows that the Respondent has used the disputed domain name with a PPC links landing page, but none of the links are related to the Complainant, its competitors, or the types of goods and services that it offers. The Complainant does not allege that the disputed domain name was registered for the purpose of resale at a profit to itself (or its competitor) based on its value as a misspelling of its mark. The Respondent has in detail explained and substantiated its modus operandi, in general and in in relation to the disputed domain name, as described in the Respondent’s contentions.

HAT HOLDINGS LLC v. Micah Githens / WebWit LLC, Forum FA2503002145207 <builderscapital. loan>, Transfer

Here, the evidence establishes that the Respondent built the <builderscapital.loan> website with prior knowledge of the Complainant and its mark and that it sought to take advantage of the mark by registering it in the dot loan space. See American Society of Landscape Architects, Inc. v. Jenel Murgu / XM Solutions, FA 2143345 (Forum Mar. 28, 2025); also American Council on Education and GED Testing Service LLC v. WA, FA 1614043 (Forum June 1, 2015) (finding respondent registered the disputed domain name in bad faith with knowledge of complainant’s mark based on federal trademark registrations). Actual knowledge of the Complainant and its mark is transparent from the fact that Mr. Githens deliberately crafted his website with its different parts pretextually to make the argument that the two businesses are distinguishable.

Capsugel Belgium NV v. ilyas YILMAZ, WIPO D2024-2365, <duocap.com>, 3-member, Transfer

Accordingly, the Panel is satisfied that both the Respondent’s promotional activities and its acquisition of the disputed domain name were carried out in the knowledge of the Complainant’s rights in the DUOCAP mark. Notably, the Respondent produces what it describes as “fair photos” covering its activities at various promotional events, which include photographs of a machine branded “CAPSUGEL®” that clearly references the Complainant and one of its brands…Furthermore, it is found well below multiple misleading uses of the Complainant’s

DUOCAP mark in phrases such as “DUOCAP IN TURKEY / MADE IN TURKEY”, and references to DUOCAP as the subject of previous imports to the country but now “produced 100% domestically and nationally” by which the Respondent means that products bearing the (Complainant’s) mark, formerly imported, are now being manufactured domestically by the Respondent’s company, suggesting endorsement or sponsorship by the Complainant where none exists.

DrFuhrman Online, Inc. v. Jason Crook, WIPO D2023-4432, <eattolive.com>, 3-member, Denied

Even if we assume that Respondent conducted the search before he purchased the disputed domain name, this would not require a finding that Respondent thereafter acted in bad faith when he purchased the disputed domain name. The Panel appreciates Respondent’s candor in disclosing the fact of his Google search and accordingly accepts his assertion that “my only thoughts were that maybe that’s who let the domain expire since its 20 years old maybe he didn’t need it anymore and didn’t think any more about it.” The Panel finds that Respondent’s learning of a 20-year-old book title is not alone enough to put him on notice of Complainant’s rights, especially when considered together with the other circumstances of this case discussed above and below.

OneTab Ltd v. Ankit Oberoi,WIPO No. D2024-2412, <onetab.com>, 3-member, Denied

Paradoxically, the fact that the Respondent doubled his asking price for the disputed domain name upon learning of an enquiry from an interested buyer, unprincipled as it may have been, may point away from the Respondent having targeted the Complainant at the time of initial acquisition of the disputed domain name.

Alpha Bank S.A. v. Ehren Schaiberger, WIPO D2024-0818, <alpha.fund>, 3-member, Denied

In the Panel’s view, the fact that the Disputed Domain Name’s gTLD is “.fund” does not mean that the Respondent is targeting the Complainant.  In fact, as evidenced by the Respondent, the term “alpha” appears to be widely used in the specific finance sector and can thus not be exclusively linked to the Complainant or the Complainant’s ALPHA BANK marks.  According to the Panel, there is insufficient evidence showing that the Respondent specifically targeted the Complainant or its marks when registering the Disputed Domain Name.

NOMEN International v. Niklas Järvikare, Proaudit Oy, WIPO D2024-0803, <nomenagency.com>, Denied

The issue in the present case turns on the question of whether the Respondent knew of the Complainant and/or its mark when it registered the disputed domain name and whether, in such knowledge, it then proceeded with such registration in order to target the Complainant’s rights unfairly.  There is insufficient evidence before the Panel demonstrating that the Respondent might have had any such knowledge at the material time.  The only evidence before the Panel from which such knowledge might be inferred is the Complainant’s Google search for the term “nomen”, showing the Complainant’s presence in the first two results.  The remainder of the Complainant’s case is based entirely upon conclusory allegations that it or its mark are well-known, which are not supported in the record by any other evidence.

ALTILINK Real Estate Hungary KFT v. Domain Administrator, SK Creations, Inc., WIPO D2023-5401 <nestra.com>, 3-member Panel, denied

Importantly, there is no evidence that the Respondent has targeted the Complainant in any way.  There is no evidence of abusive use of the Domain Name.  There are several stakeholders globally with an interest in “nestra”.

Tencent Holdings Limited v. He Huang, Working Venture Capital Inc., WIPO DAI2023-0024, <tencent.ai>, 3-member, Transfer

In all of these circumstances, the Panel considers it more probable than not that the Respondent registered the disputed domain name with the primary intent of selling it to the Complainant for an amount in excess of its out of pocket costs as anticipated by paragraph 4(b)(i) of the Policy.  The Panel concludes that the Respondent sought to disguise its intent by constructing a pretextual coin collecting business so that it would have a plausible explanation that would avoid the thrust of the Policy should the Complainant approach it.  The Respondent would then be in a position to fix a high price for the transfer of the disputed domain name.  This business, however, the Panel finds to be merely a pretext for the Respondent’s cybersquatting and in fact supportive of the notion that the disputed domain name was acquired and has been used by the Respondent in bad faith.

Sage Global Services Limited v. Narendra Ghimire, Deep Vision Architects, WIPO DAI2023-0010 <sage.ai>, Denied, 3-member

Even if the Respondent had been aware of the Complainant’s trademark rights, this knowledge would not have necessarily prevented the Respondent from acquiring the disputed domain name in good faith for its common meaning, so long as the disputed domain name is not used by the Respondent in a manner that infringes upon the Complainant’s trademark rights.  Obviously, if the Respondent attempts to use the disputed domain name in relation to the Complainant or related software goods or services, the Respondent will cross the line.  Intocable, Ltd. v. Paytotake LLC, WIPO Case No. D2016-1048 (“the Intocable case”).  In short, knowledge of the existence of a trademark is of no help to the trademark owner unless the domainer is making a use of it indicating that the trademark or its owner is being targeted.

E Group BV v. Justian de Frias, WIPO D2023-5032, <ecosaver.com>, Denied

The verbal component of the Complainant’s ECOSAVERS mark is comprised of two dictionary words that appear to be largely descriptive of the Complainant’s business.  The verbal component of the Complainant’s mark is therefore not particularly distinctive inherently, and the Complainant has presented no evidence showing that its mark has acquired distinctiveness or a reputation through use. In cases involving marks that are comprised of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning

Astellas Pharma Inc. v. Sumit Biswas / Astellaz Pharmaceuticals, WIPO D2023-3327, <astellaz.com>, 3-member, Transfer

In the absence of a convincing explanation from the Respondent about how its confusingly similar name came to be adopted in connection with pharmaceutical goods and services, therefore, the Panel infers that the Respondent adopted its name and the disputed domain name to take advantage of their resemblance to the Complainant’s trademark.

Carrefour SA. and Atacadão – Distribuição, Comércio E Indústria LTDA. v. Nikolai P. Golovenkov, WIPO D2023-2576 <atacadão.com>, Denied

Considering the above, and on the balance of probabilities, the Panel finds no reasonable inference may be drawn that the Respondent specifically targeted the Complainant in bad faith to take advantage of the reputation and fame of the Complainant’s mark at the time of registering the disputed domain name. Therefore, the Complainant has not satisfied paragraph 4(a)(iii) of the Policy.

Red Bull GmbH v. Redbull forex, redbulforex, WIPO DIO2023-0027 <redbul.io>, Transfer

In light of the use of a logo similar to the Complainant’s Red Bull logo, the use of a slight misspelling of the Complainant’s name and Mark, as well as the undoubted notoriety of the Mark and the Complainant’s recent activity in the field of NFTs, the Panel considers it most likely that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name.

EBS Enterprises LLC v. Ade Aji / Wired Elite Inc, Forum FA2211002021799, <airsculpting.com>, 3-member, Transfer

Respondent admits that before he registered the <airsculpting.com> domain name, he conducted a trademark search that revealed Complainant’s AIRSCULPT mark. He says a Google search for Air Sculpt showed a number of web sites using AIRSCULPT for cosmetic and plastic surgery (Response Exhibit B). However, that Exhibit shows a search for “air dried sculptures”, not “Air Sculpt”. As noted above, the majority of the results of a Google search for “air sculpting” (Exhibit D to Respondent’s Additional Submission) relate to body contouring treatment, including some that use the word “sculpting” in relation to such treatment.

Under these circumstances the Panel finds it likely, on the evidence before it, that, in light of the confusing similarity between Complainant’s AIRSCULPT mark and Respondent’s <airsculpting.com> domain name, many Internet users will mistakenly expect that the domain name and the site to which it resolves are connected with Complainant. Although Respondent’s parked website reflects no mention or reference to Complainant’s business, Respondent could hardly have been unaware of the likelihood of such initial interest confusion when he chose to register the domain name, and the Panel infers that Respondent registered the domain name intending to take advantage of the traffic resulting from this confusion.

Zenith Payments Pty Ltd v. BPW / Mysin Vadim Yurievich, WIPO D2022-3156 <universalgiftcard.org>, Transfer

In the present circumstances the fact that the Domain Name was used to link to the Website, which impersonated the Complainant and which was fraudulent in nature leads the Panel to conclude the registration and use were in bad faith.

TEVA Pharmaceutical Industries Limited v. Privacy service provided by Withheld for Privacy ehf / Oren Harrison, Pacific States Insulation and Acoustical Contracting Inc., WIPO D2022-1977 <tevapharm.careers>, Transfer

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Victron Energy B.V. v. Privacy Administrator, Anonymize Inc. / SARVIX, INC., WIPO D2022-1186, <victron.com>, 3-member, Transfer with Dissenting Opinion

Majority View:

All the above leads the majority of the Panel to the conclusion that it is more likely than not that the Respondent has purchased the disputed domain name because of its potential to be resold at a profit mainly to the Complainant or to one of the other parties having rights over the name “Victron”, and that the Respondent has targeted them with the acquisition of the disputed domain name and its subsequent putting up for sale.  The fact that more than one entity has been targeted by the Respondent does not mean that such targeting would be legitimate, and the purchase of the disputed domain name with the expectation to set up a bidding war between two trademark owners is plainly a speculative attempt to exploit the trademark significance of the disputed domain name.

Dissenting View:

This Panelist believes that the “value” referenced by the Respondent was not an admission that it would be targeting trademark owners to engage in cybersquatting, but rather that given there are several current users of the mark, there potentially could be many other users of the mark in a non-infringing manner…

In sum, the majority has found registration and use in bad faith based upon a new generalized targeting standard to conclude that Respondent must have acquired the disputed domain name to “extract profit” from the Complainant or another entity that holds a trademark.  But the standard is not a generalized standard, but a very specific one where the Complainant must prove that the Respondent registered the disputed domain name specifically to sell that name to the Complainant.  However, there is simply no evidence in the record establishing that.

Matias Eduardo Araya Varela v. Jason Newby, WIPO D2021-4256, <reimex.com>, 3-member, Transfer with Dissenting Opinion

Majority View:

The Respondent acquired the disputed domain name knowing about the existence of the Complainant’s trademark, acquiring the disputed domain name in consideration to the disputed domain name identity to the Complainant’s REIMEX mark, as well as its identity or similarity to other brands owned by third parties including or consisting of the term “reimex”. The Respondent acquired the disputed domain name due to the value that he knew it would have for the Complainant and other third parties, due to the fact that the disputed domain name is identical to the Complainant’s trademark and identical or similar to other existing trademarks.

The majority of the Panel considers that the fact that the Respondent targeted the Complainant’s trademark in bad faith cannot be cured by the allegation that this target was not alone or exclusively to the Complainant and his trademark, but included as well other third parties’ brands. In this respect, the majority of the Panel finds that the fact that the Respondent targeted more than one trademark does not cure or dilute his existing bad faith in relation to each of the targeted brands. In other words, the Respondent has admitted he had specifically in mind the Complainant and his REIMEX mark when he acquired the disputed domain name; and this fact cannot be cured by the Respondent’s allegation that he had also in mind other potential interested parties in the disputed domain name.

Dissenting View:

The Panel majority has delivered an opinion forfeiting <reimex.com> to Complainant on a theory of liability that is inconsistent with UDRP jurisprudence. It is based on a subjective conclusion that in registering an expired domain name corresponding to a mark that is multiply used by other parties to market their goods or services Respondent acted in bad faith…

This view of the law is a departure from consensus. This is particularly so since there is no evidence that “Respondent’s only purpose [was] to sell the disputed domain name to [Complainant or] a known prior user thereof” (my emphasis). Respondent’s purpose as it alleges in the response is that it recognized an opportunity to add the expired domain name to its portfolio of domain names for possible future sale to any party who might find it attractive for their new brand…

The cited cases and the WIPO Overview illustrate the consensus view of the law, namely, to have an actionable claim there must be targeting. The evidence in this record does not support such a claim for the reason that “Reimex” is not a sign associated alone with Complainant. The Panel majority emphasizes the length of time Complainant previously held <reimex.com> before Complainant allowed it to drop. While the Panel majority may find this a compelling and sympathetic fact, it cannot be the legal basis for reclaiming <reimex.com> in a UDRP proceeding. Had “Reimex” truly been a coined word solely associated with this Complainant this Panelist would have joined the majority. This Panelist dissents not because the word is not coined which at some point in the past it may have been but because the coinage has become common property as evidenced by the many who are using it to market their goods or services.

Corning Incorporated v. Domain Admin, HugeDomains.com, WIPO D2021-0549, <corming.com>, 3-member, Denied

Needless to say, it was incumbent on Complainant to establish with evidence that Respondent intentionally targeted Complainant and its CORNING mark, as Complainant contends. However, there is nothing in the record that shows that Respondent registered the disputed domain name to take advantage of Complainant’s claimed rights in CORNING, apart from Complainant’s unsubstantiated assertions which are entitled to no weight.

Sociedad Puerto Industrial Aguadulce S.A. v. AbdulBasit Makrani, WIPO D2019-1378, <aguadulce.com>, 3-member, Denied, RDNH by majority finding

The Complainant must establish that the Respondent had knowledge of an AGUADULCE mark and intent to target such at the point of registration of the disputed domain name. This involves demonstrating that the Complainant (or another co‑existing trademark owner) and/or its rights were of sufficient notoriety at that point, so that it is more likely than not that the Respondent had the requisite knowledge. It is worth noting that merely establishing the Respondent’s likely knowledge of such mark on its own is unlikely to be sufficient to demonstrate registration and use in bad faith, given that the words in the trademark concerned can also serve as a phrase with a non-trademark dictionary meaning…

Turning briefly to the Response, the Panel accepts that the term “agua dulce” can represent a dictionary phrase in the Spanish language meaning “sweet water” or, in an alternative and potentially more apt translation, “fresh water”. As a general rule, anyone can register such words in a domain name without transgressing the Policy and one cannot infer without evidence, which is lacking in this case, that one user of such words is necessarily being targeted. Some dictionary words may be so well-known in connection with a particular business or trademark (for example, DELTA, UNITED or APPLE) that the general rule would be displaced but that is not the case here. Similarly, a very specific combination of dictionary words might lead to an inference of targeting, for example, if the disputed domain name had contained the dictionary word “puerto” along with “aguadulce”. However, this is not the case with the Spanish translation of “fresh water” which could be of value to multiple organizations.

ASSOCIATION FRANCAISE CONTRE LES MYOPATHIES v. Yemliha Toker, CAC-UDRP-102229 (2018), <telethon.online>, Denied

In particular, no evidence that the Respondent specifically targeted the Complainant is available in this case. The word “Telethon” is not associated exclusively or primarily with the Complainant and is used by different organizations. From the evidence available in this case there is no indication that the Respondent based in Turkey was aware of the Telethon event organized and conducted by the Complainant in France. There is no evidence to demonstrate that the Complainant’s marks were popular or famous in Turkey. The Complainant did not provide any proof that the Respondent registered the disputed domain name targeting the Complainant specifically and not because of its value and attractiveness as a dictionary word.

Digest Commentary

• Digest Vol. 5.19 <clio.ai> Denied
• Digest Vol. 4.34 <otoki .com>, Transfer
• Digest Vol. 3.44 <doncastercable.com>, Denial without prejudice
• Digest Vol. 3.41 <atacadão.com>, Denied
• Digest Vol. 3.38 <redbul.io>, Transfer
• Digest Vol. 3.37 <sage.ai>, Denied
• Digest Vol. 3.4  <airsculpting.com>, Transfer
• Digest Vol. 2.14 <reimex.com>, Transfer with a dissent
• Digest Vol. 2.4 <revitam.com>, Transfer