Panel Finds RDNH Against French Bank for Second Time
This was the second time that this Complainant was found to have engaged in RDNH with respect to a four-letter acronym domain name. The first time was covered in our Digest here. The first case involved (Respondent represented by Ankur Raheja, our Editor-in-Chief), whereas the present case involved (represented by author, panelist, counsel and Digest guest columnist, Gerald Levine). In both cases the Complainant was represented by counsel and in both cases the respective Panels found inter alia, that the Complainant had failed to provide sufficient evidence of unregistered trademark rights in the respective acronym. Continue reading commentary here.
WIPO and ICA Conclude Comprehensive Review of the UDRP
This initiative was driven by a robust international process that included nearly a dozen consultations with industry leaders, legal experts, and stakeholders. The goal was to identify best practices, establish areas of consensus, and pinpoint potential improvements to the policy. Coordinated by Zak Muscovitch, General Counsel to the ICA and Brian Beckham, WIPO, the project team, comprising experts and UDRP stakeholders from around the world.
The UDRP is the cornerstone for resolving domain name disputes globally, and its effectiveness relies on continuous review and refinement. We thank everyone involved. You can access the complete WIPO/ICA UDRP Review Final Report and background information on WIPO’s website. The Executive Summary Table of Recommendations in the Final Report, is also available here.
We hope you will enjoy this edition of the Digest (vol. 6.6) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel Finds RDNH Against French Bank for Second Time (bvpf .com *with commentary)
‣ Panel: “No Doctrine of ‘Bad Faith Retention’” (hyperpc .com *with commentary)
‣ Did the Panelist Get this Case Wrong? (aigenthelp .com *with commentary)
‣ Broker Outreach Was Not Shown to Be Attributable to the Respondent (beeasy .com *with commentary)
‣ When Prior Ownership Does Not Establish Targeting (spaceplanet .com *with commentary)
Panel Finds RDNH Against French Bank for Second Time
BANQUE POPULAIRE VAL DE FRANCE v. Domain Administrator, NameFind LLC, WIPO Case No. D2025-4630
<bvpf .com>
Panelists: Ms. Stephanie G. Hartung (Presiding), Mr. Christopher Caron and Mr. Warwick A. Rothnie
Brief Facts: The Complainant is a company organized under the laws of France that is active in the banking and financial services industry. It is the registered owner of the trademark relating to its company name and brand BANQUE POPULAIRE VAL DE FRANCE, registered on December 9, 1987. Moreover, the Complainant has demonstrated that its parent company acquired the domain name <bvpf .fr> on December 22, 2008, which is presently used by the Complainant to redirect to its official website. The Respondent acquired the Domain Name on October 12, 2022, is engaged in the business of acquiring and reselling domain names composed of generic or common words, descriptive phrases, and short strings of letters. By the time of this Decision, the disputed domain redirects to the Registrar’s site stating it is taken. The Complainant showed that on November 7, 2025 the Domain Name was listed for sale for EUR 26,101.97 and at another time resolved to a PPC site.
The Complainant alleges that the Respondent holds domain names in its portfolio with the aim of reselling them and that the Respondent uses the disputed Domain Name to operate a PPC website that refers to banking products offered by companies competing with the Complainant, demonstrating that the Respondent is targeting the BPVF trademark. The Respondent contends that the four-letter string “bpvf” has no presence in the United States such that it would have been brought to the Respondent’s attention as an acronym for a French trademark and, moreover, that the Respondent has rights and legitimate interests in respect of the disputed Domain Name, since the Respondent conducts a legitimate business of brokering domain names, which includes buying and selling dictionary names and descriptive phrases. In addition, the Respondent asserts that the PPC website to which the disputed Domain Name resolved is not of the Respondent’s making, but must have been created by an earlier holder.
Language for the Proceedings: The Complaint was filed in French and the Complainant requested that the language of the proceeding be French for several reasons, including the fact that it was ignorant of the language of the Registration Agreement when the Complaint was filed. The Respondent, in turn, requested that the language of the proceeding be English claiming that there was no reason in the case at hand to deviate from the general principle set forth by Rules, paragraph 11(a), and given that the Respondent, as a company located in the United States, had no specific command of the French language.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of proceedings shall be English. The Panel sees no reason to deviate from the general rule of language consistency between the language of the registration agreement for the disputed Domain Name and the language of proceedings. This case has no more specific ties with France and the French language other than that the Complainant here has its principal place of business. In turn, both the Registrar and the Respondent are located in the United States, and the latter undisputedly has no specific command of the French language. Also, the aspect of urgency which the Complainant has brought forward is no reason not to lead these proceedings in the English language.
Held: The Complainant claims “bpvf” is a distinctive, well-known acronym of its name that consumers associate with its goods and services, but provides insufficient evidence to support this. Therefore, the Panel ascertains that the Complainant has demonstrated rights in its BANQUE POPULAIRE VAL DE FRANCE for the purposes of the Policy, however, it has failed to produce sufficient evidence of such rights on the four-tetter string “bpvf”. A string of four letters of this kind may be considered descriptive as it may represent any number of different things or organizations. Though the Panel is certainly aware of the fact that UDRP panels, in general, tend to require a reasonably low threshold of confusing similarity between the disputed Domain Name and the Complainant’s trademark for the purposes of paragraph 4(a)(i) of the Policy (see WIPO Overview 3.0, section 1.7), even such low level has obviously not been achieved here. The Panel, therefore, finds the first element of the Policy has not been established.
The Panel was nevertheless somewhat undecided whether or not to accept rights or legitimate interests of the Respondent with respect to the disputed Domain Name as set forth by paragraph 4(a)(ii) of the Policy merely on the basis that its domainer business of acquiring and reselling domain names composed of generic or common words, descriptive phrases, and short strings of letters is per se legitimate; the Respondent itself does not purport to hold any intellectual property rights relating to the specific four letter string “bpvf” as it is reflected in the disputed Domain Name. It is also noted that the Respondent has not given any particular explanation as to why this very four-letter string is so valuable as to justify a sales price in the range of EUR 26,000. At the same time, the Panel was willing to agree that the Complainant at least has failed to provide sufficient evidence that the Respondent registered the disputed Domain Name in bad faith, as expressly required by paragraph 4(a)(iii) of the Policy.
It must be recognized that the Complainant has not provided any evidence or at least other circumstances which allow to conclude that the Respondent had any knowledge of the France-based Complainant and its BANQUE POPULAIRE VAL DE FRANCE trademark which enjoys reputation particularly with respect to the French market, and its alleged renown as “bpvf”, at the time when the disputed Domain Name was acquired in 2022.
RDNH: Having considered the specific circumstances of this case, the Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking. The Panel is willing to accept that the Complainant strongly and in good faith believes in the reputation that its BANQUE POPULAIRE VAL DE FRANCE trademark undisputedly enjoys and so attempts to transfer such reputation to the trademark’s acronym “bpvf”, which, however, is unjustified for the reasons set out above.
Despite such good faith belief, still, the Complainant must have been aware of the fact that it had little chance to successfully bring this UDRP complaint; in particular, the documentation submitted by the Complainant itself demonstrates that there is no serious commercial use by the Complainant of the acronym “bpvf” to form a basis for a UDRP proceeding; also, the Complainant was legally represented in these proceedings, which rather increases than reduces the requirements for a complaint to have been submitted on a solid basis only and so in good faith.
Complaint Denied (RDNH)
Complainant’s Counsel: SELARL JB avocat, France
Respondent’s Counsel: Levine Samuel, LLP, United States
ICA Case Comment:
*Case Comments are edited and approved by ICA General Counsel, Zak Muscovitch:
This was the second time that this Complainant was found to have engaged in RDNH with respect to a four-letter acronym domain name. The first time was covered in our Digest here. The first case involved <vdft .com> (Respondent represented by Ankur Raheja, our Editor-in-Chief), whereas the present case involved <bvpf .com> (represented by author, panelist, counsel and Digest guest columnist, Gerald Levine). In both cases the Complainant was represented by counsel and in both cases the respective Panels found inter alia, that the Complainant had failed to provide sufficient evidence of unregistered trademark rights in the respective acronym. For further coverage, see DNW.com.
This decision is a reminder that acronyms – particularly short, four-letter strings – are not trademarks by assumption, and that complainants bear a real evidentiary burden when attempting to extend goodwill from a full corporate name to an asserted abbreviation. While the Complainant plainly demonstrated rights in its long-standing BANQUE POPULAIRE VAL DE FRANCE mark, it failed to substantiate that “BPVF” functioned as a source identifier in its own right. As the Panel correctly observed, a four-letter string of this nature is inherently ambiguous and capable of multiple meanings, and the low threshold for confusing similarity under the Policy does not dispense with the need for some proof of trademark significance in the string actually reflected in the domain name.
The finding of Reverse Domain Name Hijacking was therefore unsurprising. Even accepting that the Complainant genuinely believed its acronym enjoyed reputational spillover from its full name, the Panel emphasized that belief alone is insufficient—particularly where the complainant is legally represented and the evidentiary record affirmatively demonstrates the weakness of the asserted claim. The decision underscores that UDRP complaints should not be used to test unproven theories of trademark extension, especially against short, non-distinctive domain names held by professional registrants.
In short, this case reinforces two well-established principles: even if a name or phrase has demonstrated enforceable trademark rights, whether the acronym of that phrase or name has enforceable trademark rights must be proven, not presumed; and complainants – and their counsel – remain responsible for assessing whether a case is viable before invoking the UDRP. When those obligations are ignored, a finding of RDNH remains an appropriate and necessary corrective.
There is however, two aspects of the decision that are somewhat troubling. The first is that the Panel stated that it was “somewhat undecided whether or not to accept rights or legitimate interests of the Respondent… merely on the basis that its domainer business of acquiring and reselling domain names composed of generic or common words, descriptive phrases, and short strings of letters is per se legitimate”. Lack of familiarity with the business of domain name investing is a recurring issue when Panels are required to draw inferences about the intentions of domain name investors. The Panel may not have been aware that, as noted in an article in Slate, as far back as 2013, every combination of four-letter dot-com domain name had been registered, because, as the article notes: “Short domain names have long been prized because they’re easy to remember, even if they don’t spell anything in particular—think xkcd.com.” This demonstrates that four-letter dot-com domain names are treated as investment grade assets by domain name investors such that the prima facia explanation for why a domain investor would own a four-letter dot-com domain name is due to its inherent value as a short domain name. Further, the legitimacy of investing in domain names is well established by the case law and confirmed in the WIPO Overview 3.0 at 2.1:
“(G)enerally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP.”
It is therefore unclear why the Panel cited the WIPO Overview in nine instances throughout the case in regard to various other issues in order to confirm what the proper interpretation of the UDRP is, but in this particular instance didn’t do so.
The decision is also somewhat troubling with regard to the Panel’s comment on domain name resale pricing: “It is also noted that the Respondent has not given any particular explanation as to why this very four-letter string is so valuable as to justify a sales price in the range of EUR 26,000”. As noted in UDRP Perspectives at 3.5, Panels should exercise considerable caution when attempting to draw an inference from an asking price alone. Panels are typically not experts in valuations in the domain name aftermarket nor do they typically have a clear grasp of the pricing required to support a domain investor business model (See for example, YPF S.A. v. Internet Portfolio SA, WIPO DCO2024-0038, <ypf.co>, Denied: “the Panel is ill-equipped to judge whether the Respondent’s asking price of EUR 10,000 for the disputed domain name better reflects its value to the Complainant or a competitor of the Complainant as a domain name identical to the YPF mark, rather than its potential value to a wider group of third parties as a three-letter acronym”).
An inference drawn from an asking pricing is best treated as confirming or undercutting a finding drawn from other evidence, rather than as the primary basis for a finding. For example, if other evidence indicates that the Respondent registered a domain name primarily for the purpose of targeting the Complainant, an exceptionally high asking price that could reasonably be justified only due to the value of the Complainant’s goodwill could assist in supporting such an inference.
On the other hand, if other evidence suggests that a domain name investor registered the Disputed Domain Name based on a business strategy of registering domain names that fit a similar pattern, if the Respondent can demonstrate that it consistently listed and/or sold such domain names at prices that were similar to that set for the Disputed Domain, then the asking price could support an inference of good faith registration and use. Such was the case here, as demonstrated by evidence provided by the Complainant: “Indeed, Annex 12 to the Complaint discloses that the Respondent was offering another unrelated four-letter acronym in the .com gTLD, <pvfs.com>, for exactly the same price”.
Panel: “No Doctrine of ‘Bad Faith Retention’”
<hyperpc .com>
Panelist: Mr. John Swinson
Brief Facts: The Russian Complainant, registered on April 14, 2010, has been operating under the HYPERPC brand for more than a decade, offering high-performance gaming computers and professional workstations, and has an online presence at <hyperpc.ru>. On January 25, 2019, the Complainant became the owner of a trademark for HYPERPC, enjoying legal protection in the territory of the Russian Federation, with a priority date of June 7, 2018. The Complainant owns a portfolio of trademark registrations for HYPERPC, including in the Russian Federation, the United States, the European Union, Belarus, Israel and Kazakhstan. The Respondent is an Internet hosting company operating from Hong Kong, China. The Respondent registered the disputed Domain Name in 1999 and from 1999 to 2003, operated a web hosting business using the subdomain <hosting .hyperpc .com>. In September 2025, the Complainant used the Registrar’s brokerage service to offer a purchase price for the disputed domain. The Respondent declined and did not negotiate.
The Complainant alleges that the time of registration or acquisition of the disputed Domain Name and the long-term passive holding of a highly distinctive, commercially relevant domain name strongly suggests that the Respondent’s intent was to offer the disputed Domain Name for sale rather than to use it legitimately. Further, the Respondent’s decision to maintain control over the disputed Domain Name after this date constitutes bad-faith acquisition or, at minimum, ‘bad-faith retention’. The Respondent contends that he took “Hyper” from hyperlink and added the machine we were using, namely the PC. That is how HYPERPC was selected by the Respondent for his hosting business. Over the years, the disputed Domain Name has been a critical operational asset of the Respondent, and served as the backbone of the Respondent’s infrastructure, acting as an authoritative Name Server resolving customer’s domain names. The Respondent further contends that if consumers are confused, it is because the Complainant chose to build a business around a descriptive term where the corresponding domain name was already registered by the Respondent.
Held: The Panel finds that, before notice to the Respondent of the dispute, the Respondent used the disputed Domain Name in connection with a bona fide offering of services found inter alia in the Internet Archive. The Respondent provided evidence of use of the disputed Domain Name to host a website to advertise and promote web hosting services in 1999. This website included a banner with “HYPERPC .COM” in coloured letters, and also an email contact address that used the disputed Domain Name. Further, the Complainant and its rights did not exist in 1999, and had no nascent trademark rights at that time, the disputed Domain Name could not have been registered in bad faith, see WIPO Overview 3.0, section 3.8.1. This is fatal to the Complainant’s case.
There is also no evidence before the Panel demonstrating bad faith use of the disputed Domain Name by the Respondent. The Complainant argues that an update date in the WHOIS records for the disputed Domain Name of March 3, 2025 demonstrates that “the Respondent either acquired, renewed, transferred, or otherwise modified the registration at a time when the Complainant’s HYPERPC trademark was already well-established.” The Respondent provided evidence from the Registrar that the Respondent renewed the disputed Domain Name on March 3, 2025. Renewal of the disputed Domain Name in 2025 does not demonstrate that the Respondent was aware of the Complainant in 1999 when the Respondent first registered the disputed Domain Name. Moreover, there is no doctrine of “bad faith retention” as argued by the Complainant.
Even if the Complainant could demonstrate bad faith use by the Respondent, which it cannot, the result of this case would be the same because the Complainant cannot demonstrate bad faith registration.
RDNH: The Panel has little difficulty in making such a finding of Reverse Domain Name Hijacking for the following reasons. First, the Complainant made an unsuccessful pre-filing attempt to buy the disputed Domain Name from the Respondent. Second, the Complaint itself acknowledged that the Respondent registered the disputed Domain Name in 1999 whereas the Complainant asserted trade mark rights that commenced only in 2010, thereby ignoring established and long-standing Policy precedent that registration in bad faith could not arise in those circumstances.
Third, the Complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint. Finally, the Complaint advanced implausible arguments, cited no prior decisions under the Policy, and made no reference to the WIPO Overview 3.0 or any comparable authority. Instead, the Complainant appeared to invent legal principles and relied on arguments that did not correspond to the facts set out in the Complaint.
Complaint Denied (RDNH)
Complainant’s Counsel: Volodin Dmitry Alekseevich, Russian Federation
Respondent’s Counsel: Bill Wong, Hong Kong, China
ICA Case Comment:
*Case Comments are edited and approved by ICA General Counsel, Zak Muscovitch:
This decision represents a textbook application of settled UDRP principles—and a pointed rebuke of attempts to evade them. The disputed Domain Name was registered in 1999 and used in connection with a bona fide web-hosting business years before the Complainant existed or asserted any trademark rights. On those undisputed facts alone, the Complaint was always bound to fail. As the Panel succinctly put it, where a Domain Name predates a complainant’s rights, registration in bad faith is legally impossible under the Policy.
The Panel’s analysis is particularly instructive in rejecting the Complainant’s effort to recast routine domain renewal as evidence of “bad-faith acquisition” or “bad-faith retention.” No such doctrines exist under the UDRP, and panels have consistently refused to entertain arguments that attempt to decouple bad-faith registration from the time of original acquisition. Renewal does not reset the clock, nor does it retroactively imbue a registrant with knowledge or intent that did not exist at the time of registration. The Panel’s reliance on WIPO Overview 3.0 section 3.8.1 reflects orthodox UDRP reasoning and leaves little room for doubt on this point.
Equally notable was the Panel’s acceptance of the Respondent’s long-standing operational use of the Domain Name as authoritative infrastructure for hosting services. Even where current use may appear passive or technical, historical use prior to notice of a dispute remains highly relevant in assessing rights and legitimate interests. Here, the Internet Archive evidence, coupled with contemporaneous business explanations, decisively undermined the Complainant’s assertions.
The finding of Reverse Domain Name Hijacking was therefore not merely warranted but, one would expect, inevitable. The Complainant attempted to acquire the Domain Name through brokerage channels before filing the Complaint, acknowledged the Respondent’s 1999 registration, and nonetheless proceeded while advancing legally unsupportable theories untethered from UDRP precedent. As the Panel observed, inventing legal principles and ignoring foundational Policy requirements falls well below the standard expected of complainants, particularly where the factual record is clear.
This case serves as a strong reminder that the UDRP is not a vehicle for re-litigating commercial disappointment or for testing novel legal constructs. Where a Domain Name long predates a complainant’s rights, the Policy provides no remedy – and proceeding regardless risks a well-deserved finding of RDNH.
Did the Panelist Get this Case Wrong?
Ubiquity Global Services, Inc. v. Anthony Eggleston, NAF Claim Number: FA2601002199452
<aigenthelp .com>
Panelist: Mr. David L. Kreider, Chartered Arbitrator (UK)
Brief Facts: The Complainant is a global business process outsourcing company that provides technology-driven services, including AI-driven software tools under the trademark AIGENT. The Complainant owns a registered AIGENT trademark (USPTO registration dated September 22, 2020) and claims common-law rights in the mark since 2018. The Respondent incorporated AIgent, LLC, a domestic limited liability company, in Texas, USA, on June 4, 2024, and acknowledges in a signed declaration that he registered the disputed Domain Name <aigenthelp .com> on May 22, 2024, and only became aware of the Complainant after receiving the UDRP complaint in the present action. The Complainant alleges that the Respondent, without Complainant’s authorization, is utilizing the disputed Domain Name to offer software services which compete directly with the Complainant’s services, under an identical “AIgent” trademark. On September 23, 2025, and October 2, 2025, Complainant’s legal counsel sent cease and desist letters to the Respondent demanding that the Respondent cease all use of the AIGENT Intellectual Property. The Respondent claims he did not receive the letters.
The Respondent asserts his rights and legitimate interest under Policy Paragraph 4(c)(i), since before any notice of the dispute he has been using the disputed Domain Name in connection with a bona fide offering of services and under Policy Paragraph 4(c)(ii), as he has been commonly known by the disputed Domain Name since the disputed Domain Name corresponds to Respondent’s company name and to Respondent’s book title “AIgents”. The Respondent further contends that he had every right to register the disputed Domain Name, as it corresponds to the name of his registered business in Texas, reflects his own experience in the field of AI, and includes the descriptive term “help.” He explains that the term “aigent” is a combination of two dictionary words: “AI” (a shortened form of “artificial intelligence”) and “agent,” and that it is used by numerous third parties unrelated to the Complainant, including businesses offering software products and related services. As a result, it is not surprising that the term “aigent,” as a combination of “AI” and “agent,” is popular and used by various unrelated businesses.
Held: The Respondent is using the disputed Domain Name without authorization to offer software services that directly compete with the Complainant’s services under the AIGENT trademark, which the Complainant used well before the Respondent’s first use of “AIgent.” The Respondent’s website contains no disclaimers or clarifications whatsoever that the site is operated by the Respondent, and not the Complainant, nor does it identify the Respondent or Respondent’s Texas limited liability corporation in any way. Further, the inclusion of the word “HELP” in the disputed Domain Name falsely suggests affiliation with the Complainant, owner of the registered AIGENT mark, as a reasonable visitor might incorrectly believe the website to be Complainant’s official or incidental “help” portal. The Panel considers that the disputed Domain Name and Respondent’s website carry a high risk of implied affiliation and correlation with the Complainant and Complainant’s registered Mark, and that the Respondent intentionally and unfairly benefitted commercially from such correlation. The Panel finds that the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services.
The disputed Domain Name differs from Complainant’s registered AIGENT Mark only by the addition of the word “HELP”. The Panel considers that the inclusion of “HELP” increases the likelihood of confusion by visitors that the disputed Domain Name and website are complementary to or affiliated with the Complainant. Moreover, although the Respondent alleges in conclusory terms that the Respondent’s website “is clearly different” from the Complainant’s website, the Panel finds the substantive content of the respective websites indistinguishable. The Respondent’s website identifies neither the Respondent, who purports to be an author and figure of some prominence in the AI field, nor the Respondent’s company. The Panel finds by a preponderance of the evidence that the disputed Domain Name and Respondent’s website are misleading as to source or sponsorship and were registered and used by the Respondent in bad faith as a pretext to unfairly benefit from the Complainant’s goodwill for Respondent’s own commercial gain. The third element at Policy Paragraph 4(a)(iii) is satisfied.
Transfer
Complainant’s Counsel: Julie M. Latsko of Royer Cooper Cohen Braunfeld LLC, USA
Respondent’s Counsel: Igor Motsnyi of Motsnyi IP (dba Motsnyi Legal), Serbia
ICA Case Comment:
*Case Comments are edited and approved by ICA General Counsel, Zak Muscovitch:
This decision invites closer scrutiny as to whether the Panel’s conclusions are adequately supported by the facts as stated. While the Panel ultimately found that the Respondent lacked rights or legitimate interests and acted in bad faith, the reasoning offered leaves open the question of whether that outcome flowed from a proper application of the Policy or from assumptions insufficiently anchored in the evidentiary record.
On the Panel’s own recitation of the facts, the Respondent had adopted the term “AIgent” independently: he had published a book using the term, formed a business entity incorporating it, and engaged in related professional activities prior to receiving notice of the dispute. Those facts point toward an independent rationale for registering the Domain Name, grounded in the Respondent’s own contemporaneous use of a term that is, at least linguistically, an obvious combination of “AI” and “agent.” Whether those activities were exhaustively disclosed on the website should not, without more, negate their relevance. The Policy asks whether the Respondent had a legitimate basis for registering the Domain Name- not whether that basis was perfectly or prominently articulated online.
The Panel’s treatment of implied affiliation is also notably underdeveloped. While the decision asserts that the Respondent’s website was “substantially identical” to the Complainant’s and carried a high risk of confusion, it does not identify which features were allegedly identical, nor explain why any differences were immaterial. Moreover, a comparison of the Complainant’s website with an archived record of the Respondent’s website casts doubts on the Panel’s finding that the content of the two sites were “substantially identical” as the content was markedly different as were the services being offered. Such conclusions, that appear to conflict with the evidentiary record, stated at a high level of generality, make it difficult to assess whether confusion was likely or merely presumed. Findings of bad faith, particularly where registration intent is concerned, require more than conclusory characterizations.
Most strikingly, the decision appears to conflate concerns about website presentation with the distinct question of registration intent. Even if the Respondent’s use might have benefited from clearer disclosure or disclaimers, that does not necessarily establish that the Domain Name was registered in bad faith – especially where the Respondent demonstrably had a concurrent, non-pretextual connection to the term at issue. The absence of a clear explanation as to why the Panel rejected that independent rationale leaves a critical gap in the analysis.
Cases such as this also highlight the potential value of a limited appeal mechanism within the UDRP framework. As recognized in the WIPO–ICA UDRP Review, an appeal layer could serve as a safeguard where outcomes appear inconsistent with established Policy principles or insufficiently reasoned. An appellate review process would not be aimed at re-litigating close cases, but at addressing decisions that raise legitimate concerns as to analytical rigor or doctrinal coherence. Where a decision’s reasoning leaves material questions unanswered – as arguably occurred here – an appeal mechanism could enhance confidence in the system by ensuring that results are not only final, but sound.
Broker Outreach Was Not Shown to Be Attributable to the Respondent
Justin Gotthardt, Be Easy Trust v. Tomer Babad, WIPO Case No. D2025-5193
<beeasy .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Complainant operates a website at <beeasyboards .com> (titled “Be Easy”), offering skateboards, clothing, and accessories. The Complainant is the owner of trademark registration before USPTO for the word mark BE EASY, registered on January 24, 2017. The WhoIs report relating to the disputed Domain Name records a creation date of December 28, 2024. The disputed Domain Name has resolved to a GoDaddy landing page stating that the disputed Domain Name is for sale. The Complainant submits that the disputed Domain Name was registered and has been used in bad faith, noting that it was contacted by the Respondent’s broker on December 28, 2024, the same day the Respondent acquired the disputed Domain Name. The Complainant alleges that the Respondent’s immediate approach to the Complainant in this manner demonstrates that it was aware of the Complainant’s BE EASY trademark, and that it registered the disputed Domain Name primarily for the purpose of selling it to the Complainant for an inflated sum.
The Respondent denies that he approached the Complainant on December 28, 2024 and states that he could not indeed have done so, since the auction was still ongoing at that time and he had not yet acquired the disputed Domain Name. He submits that Tasha was most likely a speculative broker or “scraper”, who was aware of the drop status of the disputed Domain Name and was seeking to capitalize upon it by prospectively offering it to potentially interested parties. The Respondent contends that the disputed Domain Name comprises a generic term in common usage, widely understood to mean “relax” or “take it easy”. The Respondent further produces evidence of his receipt of e-mails from GoDaddy, dated May 8, 2025, May 27, 2025, and June 4, 2025, reporting substantial offers for the disputed Domain Name. The Respondent contends that these offers demonstrate the significant market value of the disputed Domain Name, comprising a generic term and independent of the Complainant’s trademark.
Held: The Panel finds that the term “be easy” is a phrase comprising dictionary words, which is in relatively common usage in the English language. It is not an invented term uniquely referable to the Complainant, nor has the Complainant provided evidence that its mark has become widely recognized by the public as referencing its business. Investment and trading in domain names is not illegitimate per se, and the question for the Panel in this proceeding is whether the Respondent registered the disputed Domain Name with a view to its legitimate use by a purchaser in connection with its dictionary meaning, or alternatively, in order to target the Complainant’s goodwill attaching to its BE EASY trademark.
The Complainant argues that the Respondent’s same‑day approach to sell the disputed Domain Name for a price far exceeding his acquisition costs evidences both prior knowledge of the Complainant’s trademark and bad‑faith intent. However, the Complainant has not provided direct evidence that the approach made on December 28, 2024 was indeed made by or on behalf of the Respondent, and the Respondent has given a plausible explanation that, the drop status of the disputed Domain Name having been known, this approach could have been made speculatively by a third-party dealer.
In these circumstances, while the Respondent may well have hoped to attract a buyer connected with the “Be Easy” phrase, the Panel finds no evidence upon which to conclude that the Respondent targeted the Complainant’s BE EASY trademark specifically. While the approach to the Complainant on December 28, 2024 might have been relevant in this regard, on the evidence available the Panel is unable to conclude, on the balance of probabilities that approach came from the Respondent as the Complainant has assumed.
RDNH: The Complaint in this proceeding appears to have been triggered by the Complainant’s receipt of an unsolicited broker’s approach on December 28, 2024, offering to sell the disputed Domain Name to the Complainant. Given that this date coincided with the creation date for the disputed Domain Name disclosed by a WhoIs search, it is understandable that the Complainant may have assumed that the broker represented the Respondent and was targeting its BE EASY trademark specifically. While the Complainant has not been able to prove that scenario, the Panel does not consider that the Complaint was brought in bad faith.
Complaint Denied
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Self-represented
ICA Case Comment:
*Case Comments are edited and approved by ICA General Counsel, Zak Muscovitch:
This decision illustrates the evidentiary limits of relying on post-registration sales outreach to establish bad faith under the Policy, particularly where the disputed Domain Name comprises a common phrase with an obvious dictionary meaning. While the Complainant’s suspicion was understandable given the timing of the broker’s approach, suspicion alone was insufficient to meet the Complainant’s burden of proof.
The Panel correctly focused on whether the Respondent registered the Domain Name to target the Complainant’s trademark rights, rather than whether the Respondent hoped to sell the Domain Name at a profit. Investment in domain names, including the acquisition of dictionary or commonly used phrases for resale, is not inherently illegitimate. Here, the phrase “be easy” is in widespread colloquial use, and the Complainant did not establish that its BE EASY mark had acquired such distinctiveness that the Respondent’s registration could reasonably be inferred to have been directed at the Complainant.
Central to the Complainant’s case was the allegation that the Respondent – or his broker – approached the Complainant on the very day the Domain Name was acquired. However, the Panel was not persuaded that the outreach was made by or on behalf of the Respondent, and accepted the Respondent’s explanation that the approach could have been made speculatively by a third-party broker aware of the Domain Name’s drop status. In the absence of evidence tying the approach to the Respondent, the Panel declined to infer targeting or bad faith registration.
The Panel’s refusal to find Reverse Domain Name Hijacking was also measured. While the Complaint ultimately failed, it was not wholly unreasonable for the Complainant to draw inferences from the coincidence in timing between the Domain Name’s creation date and the broker contact. The decision reflects a balanced application of the Policy, distinguishing between unproven assumptions and bad-faith abuse of the UDRP itself. For practitioners, the case serves as a reminder that allegations of targeting must be supported by evidence linking the Respondent—not merely a broker or intermediary – to the alleged conduct.
When Prior Ownership Does Not Establish Targeting
Simon Wernli v. Michael Ambrose, XYZ Invest LLC, WIPO Case No. D2025-4907
<spaceplanet .com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant, a musician and DJ, has used the name “Space Planet” or “Spaceplanet” since at least 1998 and was the previous registrant of the disputed Domain Name, which appeared on compact disc album credits as a website URL and email address from about 1998. The Complainant’s music releases have been distributed in Switzerland, Austria, and Germany. The Complainant does not have registered trademark rights in the name “Space Planet” but claims unregistered rights therein. The disputed Domain Name was registered on January 10, 2025 and is being offered for sale in the sum of USD $21,499, or lease for USD $466 per month. Between August 27, 2025, and August 28, 2025, the Complainant and the Respondent’s legal counsel engaged in correspondence. During this correspondence, the Complainant indicated that it was the rightful owner of the disputed Domain Name for 30 years before it was “lost” following the sale of the Complainant’s company, adding that it had been an established brand since 1994.
The Complainant states that the Respondent has made no demonstrable preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services, adding that it has been registered anonymously and resolves only to a parking page, which it says reinforces the absence of legitimate interest. The Respondent contends that the term “space planet” is inherently generic or descriptive, and that the combination of these two words is likewise non-distinctive and open to innumerable legitimate uses across a broad spectrum. The Respondent further contends that a respondent cannot be found to have registered a domain name in bad faith if it had no knowledge (actual or constructive) of a complainant’s claimed rights, and that the asking price for the disputed Domain Name reflects the legitimate market value for a short, two-word domain name containing commercially attractive dictionary words, and adds that this reflects a standard in the domain name aftermarket known as a “premium generic domain.”
Held: The Panel determines, taking all of the above evidence into account, that the Complainant has established unregistered trademark rights in the SPACE PLANET mark, albeit only marginally. While this is sufficient for the first part of the first element test under the Policy, section 1.3 of the WIPO Overview 3.0 notes that even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant’s mark may be considered relevant in evaluating the second and third elements, whereby the Panel will return to the Respondent’s corresponding challenges to the Complainant’s evidence. The Panel finds the Complainant has established unregistered trademark or service mark rights for the purposes of the Policy. WIPO Overview 3.0, section 1.3.
The Panel notes that the Respondent registered the disputed Domain Name after it had dropped and returned to the general pool for registration. This does not therefore seem to be a case involving a “drop caught” domain name where the Respondent might have been objectively aware that the Complainant held the registration immediately prior, and might thereby have been on notice that the Complainant possessed rights in a corresponding trademark (see, for example, WIPO Case No. D2018-0540). Even had the circumstances of this case led the Respondent to such an awareness, the typical research it might have conducted on multiple entries for the disputed Domain Name in the Internet Archive “Wayback Machine” would have suggested that the disputed Domain Name had most probably been abandoned by the artist which had formerly used it, based upon apparent inactivity since as long ago as 2012.
Further, the Complainant’s Google search for “spaceplanet+dj+s.i.one” is unhelpful, since the Respondent wouldn’t know to combine “space planet”/“spaceplanet” with the DJ name. Better evidence would be a Google search for “space planet” or “spaceplanet” alone, time-limited to before the Respondent’s domain registration, and based upon servers in the Respondent’s location rather than that of the Complainant, thus showing extent and reach of the claimed mark. In these circumstances, the Panel does not consider that the Complainant’s case has established that the Respondent registered the disputed Domain Name with the Complainant in mind and with intent to target its rights in the SPACE PLANET mark. On the evidence before the Panel, such rights are limited in nature and there is no reason to believe that they came to the Respondent’s attention or that its intent in registering the disputed Domain Name was to sell it specifically to the Complainant. Consequently, the Complaint fails.
RDNH: The Respondent seeks the corresponding finding because its counsel pointed out what it saw as the weaknesses of or flaws in the Complainant’s case before it proceeded to file the Complaint, and yet the Complainant decided to proceed without making any modifications. Nevertheless, the Panel found contrary to the Respondent’s position that the Complainant was able to establish unregistered trademark rights in the mark SPACE PLANET. As discussed above, the Panel considers that there is some distinctiveness in the term, and consequently the Complainant had legitimate suspicions regarding the Respondent’s registration of the disputed Domain Name and its offer for sale. The Panel considers that the Complaint was not wholly without merit and therefore was not brought in bad faith.
There is evidence, albeit limited, of the Complainant’s ongoing use of the mark, not least from the monthly listeners and the recent livestream. Moreover, the Complainant owned the disputed Domain Name for many years prior to its registration by the Respondent, and appears to have assumed the offering of the disputed Domain Name for sale was directed at it as the prior registrant. In these circumstances, the Panel considers that the Complainant was entitled to put the Respondent to the proof as to whether it was being targeted via the registration of the disputed Domain Name. The fact that such proof has failed does not necessarily mean that the Complainant brought the Complaint in bad faith. The Respondent’s request for a finding of Reverse Domain Name Hijacking is denied.
Complaint Denied
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Grant G. Carpenter, United States
ICA Case Comment:
*Case Comments are edited and approved by ICA General Counsel, Zak Muscovitch:
This decision turns in large part on the Panel’s treatment of the circumstances under which the disputed Domain Name was re-registered following its lapse. While the Panel accepted that the Complainant had established unregistered rights in the SPACE PLANET mark, those rights were found to be limited in strength, and the Panel ultimately concluded that the Respondent had not registered the Domain Name with the Complainant or its mark in mind.
Central to that conclusion was the Panel’s observation that the Domain Name had dropped and returned to the general pool of available domain names, rather than having been acquired through a targeted drop-catching process. The Panel suggested that this reduced the likelihood that the Respondent would have been aware of the Complainant’s prior ownership or asserted rights, particularly where the historical record indicated that the Complainant’s use of the Domain Name had been dormant for many years.
That distinction, however, warrants careful consideration. In practical terms, the method by which a domain name is technically acquired — whether through automated drop-catching mechanisms or manual registration once it appears available in the general pool — does not necessarily correlate with a registrant’s awareness of a prior rights holder. Drop-catching systems commonly operate at scale and are driven by objective characteristics such as string length, dictionary meaning, or perceived market value, rather than by knowledge of a former registrant’s identity or trademark claims. In that respect, a respondent who acquires a domain name via drop-catching technology may have no greater reason to suspect prior rights than one who registers the same domain name after it has re-entered the general pool.
Under the Policy, the decisive inquiry remains whether the Respondent registered the Domain Name with the Complainant or its mark in mind for the purpose of targeting the Complainant’s trademark rights. That assessment properly turns on evidence of targeting, not on the mechanics of acquisition alone. In this case, the descriptive nature of the term “space planet,” the limited scope of the Complainant’s asserted reputation, and the apparent lapse in use all weighed against an inference of targeting. The Panel’s refusal to infer bad faith from the Respondent’s offer to sell the Domain Name at a premium price was therefore consistent with established UDRP principles governing investment in dictionary-based domain names.
Read as a whole, the decision appropriately emphasizes that prior ownership of a domain name, without more, does not establish that a subsequent registrant acted with knowledge of or intent to exploit a complainant’s rights. At the same time, it serves as a reminder that distinctions based on acquisition methods should be approached with caution, and that conclusions regarding respondent awareness must ultimately be grounded in evidence rather than assumptions about how a domain name was obtained.
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings. He is the founder of Cylaw Solutions.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.