Panel: A “Textbook” Case of Reverse Domain Name Hijacking
This decision is noteworthy for two reasons. First, the Panel reaffirmed that neither the renewal of a domain name registration nor its transfer from an individual registrant to a corporation under the same ownership constitutes a new registration for UDRP purposes. The Complainant’s attempt to characterize a 2026 Whois “updated” date as evidence of a fresh registration was rejected, with the Panel relying on the well-established principle reflected in WIPO Overview 3.1, section 3.9, that renewal is not re-registration. Likewise, the transfer of the domain name to a corporate entity controlled by the original registrant did not reset the registration date. Continue reading commentary here.
Join us for this year’s Levine Lecture featuring Nick Gardner, who will present: “26 Years of Deciding UDRP Cases—What Does a Panelist Actually Do, and Why? How Will AI Change This?“ A veteran of UDRP practice, Nick’s experience ranges from early landmark English court cases to presiding over hundreds of disputes as a leading WIPO and Nominet panelist. The session will include an introduction by Zak Muscovitch, opening remarks by Tony Willoughby, and closing remarks from Gerald Levine.
We hope you will enjoy this edition of the Digest (vol. 6.26) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel: A “Textbook” Case of Reverse Domain Name Hijacking (planetharvest.com *with commentary)
‣ A “Fanciful” Mark That Was Neither Fanciful Nor Unique (gressus.com *with commentary)
‣ Default Does Not Eliminate the Burden of Proof (nano-banana-ai.studio *with commentary)
‣ The Original Acquisition Remained the Relevant Inquiry (ritebite.com *with commentary)
‣ Not Every Trademark Dispute Belongs Under the UDRP (coshield.com *with commentary)
Panel: A “Textbook” Case of Reverse Domain Name Hijacking
Planet Harvest, LLC v. Domain Manager / MV3 Inc, NAF Claim no. FA2606002226562
<planetharvest.com>
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant, since 2023, claims to have marketed and sold fresh produce, packaged meal kits, and food-delivery services under the trademark PLANET HARVEST. The Complainant owns rights in the PLANET HARVEST mark based upon registration with the USPTO (March 25, 2025). The disputed Domain Name was registered by Vance More on March 30, 1999, more than 20 years prior to the registration of the Complainant’s trademark or the commencement of use. The Domain Name was transferred to the present Respondent, a corporate entity owned by Vance More, in 2012.
The Complainant alleges that the Domain Name does not resolve to an active site and that the Respondent’s offer to sell it for $100,000 confirms the absence of a legitimate interest. The Complainant further alleges that the Whois record having recently been updated suggests the Domain Name was transferred to a new owner, and that this recent transfer evidences bad faith registration and use. Following an initial offer to purchase the Domain Name for $2,201, the Respondent requested $100,000 indicating registration and use in bad faith.
The Respondent contends that the Domain Name consists of two generic words registered as part of a portfolio of generic two-word domain names, and was not registered in contemplation of the then non-existent Complainant. The Respondent further contends that the Domain Name has not been subsequently transferred, and that neither the renewal of the registration in 2026 nor the use of a privacy service amounts to a transfer. The Respondent also adds that the Complainant had itself approached the Respondent seeking to acquire the Domain Name, and the Respondent merely made a counteroffer.
Held: The Domain Name was registered in 1999 and transferred to a corporate entity controlled by the previous individual registrant in 2012. The Complainant states that it commenced use of the PLANET HARVEST mark in commerce in 2023. The Complainant makes various assertions that there may have been a transfer in 2026 based on the Whois recording reflecting an “updated” date of May 30, 2026 but the Panel is satisfied from the Response that the “updated” date reflects a renewal and the renewal of a Domain Name is not a new registration, see WIPO Overview 3.1 at ¶ 3.9. The Respondent’s registration of the disputed Domain Name thus predates Complainant’s first claimed rights in the PLANET HARVEST mark (and date of first use), and thus the Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017).
The Panel finds that the Respondent could not have entertained bad faith intentions respecting the PLANET HARVEST mark because it could not have contemplated Complainant’s then non-existent rights in PLANET HARVEST mark at the moment the disputed Domain Name was registered. Moreover, the Panel accepts the Respondent’s submissions that in this case, where the Domain Name was obviously not registered in contemplation of the Complainant, neither the fact that the Respondent made a counter-offer to the Complainant’s offer to purchase the Domain Name, nor the present use of the Domain Name for a site maintained by the Registrar is relevant to the question of registration in bad faith, which the Complainant must establish to succeed under the Policy. Therefore, the Panel finds the Respondent did not register the Domain Name in bad faith.
RDNH: The Panel finds this a textbook case of Reverse Domain Name Hijacking, with at least grounds (i), (iii), and (vii) of WIPO Overview 3.1, Para 4.16 established: a) The PLANET HARVEST mark postdates the Domain Name by 23-24 years. The only evidence of a possible transfer was a Whois “updated” date of May 2026, equally consistent with a routine renewal, and no evidence supported the theory that the Domain Name was registered in contemplation of Complainant’s mark. The Complainant filed knowing this. b) Despite representation by sophisticated counsel citing the WIPO Overview 3.1, the Complaint relied on discredited theories that renewal equals re-registration and that declining a purchase offer establishes bad faith, both squarely contradicted by WIPO Overview 3.1 ¶¶ 3.8 and 3.9. c) The Complainant approached the Respondent to buy the Domain Name. When the Respondent countered at a price Complainant would not pay, the Complainant filed this proceeding arguing the counteroffer itself constituted bad faith, a textbook example of ground (vii) and not a plausible legal basis.
Notwithstanding Complainant’s certification that the Complaint was filed for no improper purpose, the Panel finds otherwise and concludes the Complaint was brought in bad faith, constituting an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Rachel Saunders, Esq. of Saturday Legal, LLC, USA
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision is noteworthy for two reasons. First, the Panel reaffirmed that neither the renewal of a domain name registration nor its transfer from an individual registrant to a corporation under the same ownership constitutes a new registration for UDRP purposes. The Complainant’s attempt to characterize a 2026 Whois “updated” date as evidence of a fresh registration was rejected, with the Panel relying on the well-established principle reflected in WIPO Overview 3.1, section 3.9, that renewal is not re-registration. Likewise, the transfer of the domain name to a corporate entity controlled by the original registrant did not reset the registration date.
Second, the Panel did not merely find RDNH – it described this as a “textbook case.” The disputed domain name had been registered approximately twenty-four years before the Complainant first used its PLANET HARVEST mark, yet the Complaint advanced legal theories directly contrary to the WIPO Overview, including that renewal amounted to re-registration and that a counteroffer of $100,000 in response to the Complainant’s unsolicited purchase inquiry constituted evidence of bad faith.
The decision also underscores the important role that RDNH plays in preserving the integrity of the UDRP. As discussed in UDRP Perspectives 4.1 – Obligation of Panelists to Consider RDNH, panels have an obligation to expressly consider RDNH where the facts warrant. Here, the Panel did exactly that, identifying multiple independent grounds for RDNH and concluding that, notwithstanding the certification accompanying the Complaint, it had been brought in bad faith and constituted an abuse of the administrative proceeding. Well done, Panel.
A “Fanciful” Mark That Was Neither Fanciful Nor Unique
Guillermo Vázquez Álvarez v. Domain Admin, FindYourDomain, WIPO Case No. D2026-1481
<gressus.com>
Panelist: Mr. Jeremy Speres
Brief Facts: The Complainant, an individual resident in Mexico, holds Mexican trademark registrations for GRESSUS LOS PASOS DE LA HISTORIA (device mark, registered August 31, 2017, use claimed from October 2, 2015) and GRESSUS (word mark, registered September 28, 2020). The Complaint provided little information about the nature of his business; his only demonstrated use of the mark was the domain <gressus.com.mx>, which resolved to an “Under Construction” page. In its Supplemental Filing, the Complainant appeared to concede that his contemplated project had not actually launched, despite the Complaint having claimed use since 2015.
The Respondent is a US-based domain name investor specialising in dictionary-word, classical language, and short-string domain names acquired for resale. The disputed Domain Name <gressus.com> was registered on February 14, 2004, more than a decade before the Complainant’s earliest claimed trademark rights and currently resolves to a registrar parked page advertising the domain for sale, previously listed at USD $13,799. The Complainant alleges that the disputed Domain Name was registered and is being used in bad faith because it is listed for sale, has no active website, and is being passively held for speculative purposes.
The Complainant further alleges that the Respondent’s continued renewal and retention of the disputed Domain Name after the Complainant acquired its trademark rights shows knowledge of those rights and an intent to block the Complainant’s use of the disputed Domain Name. The Respondent contends that “gressus” is a common Latin word used by many unrelated third parties, making any inference of targeting of the Complainant implausible. The Respondent further contends that listing the disputed Domain Name for sale as part of a domain name investment business, without any evidence of targeting, impersonation, or misuse, does not amount to bad faith.
Held: The disputed Domain Name’s registration date in 2004 is, prima facie, dispositive of the question of bad faith registration. Here, the Complainant’s earliest claimed registration and use of its GRESSUS mark long postdate 2004. Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. WIPO Overview 3.1, section 3.8.1. However, the Respondent was “coy” about the precise date it personally acquired the domain, declining to state categorically when it purchased the name and instead relying on the Complainant’s own pleaded date of 2004. The Complainant had not provided any evidence credibly alleging a post-trademark change in registration, as required by WIPO Overview 3.1, section 3.9.
The only evidence in the record suggesting usage by the Complainant of its mark is its registration (in 2015) of the domain name <gressus.com.mx> and that it has resolved to an “Under Construction” page. There is no other evidence in the record showing any use by the Complainant of its mark at all. There is therefore no indication that the Complainant is known under the GRESSUS mark or that it is unique to it, and, accordingly, no indication that the Respondent was or should have been aware of the Complainant. This is especially so given that the Respondent is based in the United States and the Complainant has not presented any evidence of use in that jurisdiction. The Respondent’s explanation for registering the disputed Domain Name is plausible. The Respondent owns at least four other Latin dictionary word domain names and “gressus”, being a Latin word meaning “walk” or “step”, is consistent with that pattern.
RDNH: The Panel found RDNH, grounding the finding not solely on the chronological barrier but on additional conduct by the Complainant. The Complainant misrepresented GRESSUS as “highly distinctive and fanciful” when a basic Internet search would have revealed widespread third-party use and a clear Latin dictionary meaning. The Complainant also created a misleading impression of commercial use since 2015 while later appearing to concede the project had never launched. The Panel held represented complainants to a higher standard and found that a proper review of the WIPO Overview 3.1 and cited precedents, even assuming a post-trademark acquisition date, should have made clear that the Complaint could not succeed.
Complaint Denied (RDNH)
Complainant’s Counsel: Regalado & Galindo Abogados, Mexico
Respondent’s Counsel: Grant Carpenter, United States
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The RDNH finding is the most noteworthy aspect of this decision. The Panel found that the Complainant had materially misled the Panel in two respects. First, it characterized GRESSUS as a “highly distinctive and fanciful” mark, when a basic Internet search would have revealed that “gressus” is a Latin dictionary word meaning “walk” or “step” and is widely used by unrelated third parties. The Panel accepted the Respondent’s explanation that its registration of the disputed domain name was consistent with its established practice of investing in Latin dictionary word domain names, making any inference of targeting implausible.
Second, the Panel found that the Complainant created a misleading impression that it had used the GRESSUS mark commercially since 2015, while its supplemental filing appeared to concede that the contemplated project had never launched. Coupled with the absence of evidence that the Complainant was known by the GRESSUS mark or had acquired any reputation outside Mexico, the Panel concluded that represented counsel should have appreciated that the Complaint had no reasonable prospect of success and accordingly found Reverse Domain Name Hijacking.
Default Does Not Eliminate the Burden of Proof
Google LLC v. Roland C, Forum Claim No. FA2605002223679
<nano-banana-ai.studio>
Panelist: Mr. David E. Sorkin
Brief Facts: The Complainant launched its NANO BANANA AI-powered image editing and generation software on August 12, 2025, to immediate and widespread unsolicited media coverage. The Complainant holds trademark registrations for NANO BANANA in Australia, Singapore, the United Kingdom, and the European Union, with a pending application in the United States, and also asserts common law rights in the mark. The disputed Domain Name was registered on September 13, 2025 and resolves to a website purporting to promote an AI image editing tool under the name “Nano Banana AI,” designed to create the impression of affiliation or endorsement by the Complainant, while in fact promoting the Respondent’s own competing commercial software under an identical name and mark.
The Complainant alleges that the Respondent has used the Domain Name solely for a misleading website passing off as the Complainant to promote competing services. The Complainant further alleges bad faith registration and use, citing the domain’s registration immediately after the NANO BANANA launch, the use of a privacy service with incomplete registration information, and the Respondent’s deliberate attempt to attract internet users by creating confusion as to source, affiliation, or endorsement of the competing software. The Respondent failed to file a Response.
Held: The disputed Domain Name incorporates Complainant’s registered mark without authorization. Its sole apparent use has been for a misleading website that attempts to pass off as the Complainant to promote competing services. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Google LLC v. GAI YA, supra (finding lack of rights or interests in similar circumstances). The Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the domain name, and the Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that the Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed Domain Name.
Finally, the Complainant must show that the disputed Domain Name was registered and is being used in bad faith. The Respondent used a privacy registration service and what the Complainant alleges to be incomplete underlying registration information to register a domain name incorporating Complainant’s mark, and is using it for a misleading website that attempts to pass off as the Complainant to promote competing services. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., Google LLC v. GAI YA, supra (finding bad faith registration and use in similar circumstances); Google LLC v. cheng Xiao, supra (same); Google LLC v. Lambert YANG, supra (same).
Transfer
Complainant’s Counsel: Griffin Barnett, Morgan Lewis & Bockius LLP, United States
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
Although the Respondent defaulted, the Panel began its analysis with an important reminder that a respondent’s failure to participate does not relieve a complainant of its burden under the UDRP. Citing both section 4.3 of the WIPO Overview 3.1 and sections 0.2 and 0.8 of the UDRP Perspectives, the Panel emphasized that while reasonable factual allegations may be accepted as true in the absence of a response, conclusory or unsupported assertions remain insufficient. The Panel also cited eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, underscoring that a complaint may still fail where the evidence does not substantiate the allegations.
Although that principle did not affect the outcome here, where the Complainant submitted ample evidence that the disputed domain name was being used for a website that impersonated the Complainant while promoting competing AI services, the Panel’s discussion serves as a useful reminder that default judgments are not automatic under the UDRP. Even in undefended cases, Panels remain obligated to scrutinize the evidentiary record and determine whether each of the three elements of the Policy has been established on the evidence presented.
The Original Acquisition Remained the Relevant Inquiry
Naturell India Private Limited v. Michael Edwards, WIPO Case No. D2026-1317
<ritebite.com>
Panelist: Mr. Luca Barbero
Brief Facts: The Complainant is an Indian food and beverage company that has used the RITEBITE mark since 2003 in connection with protein bars, fiber bars, and health products. It holds Indian trademark registrations for RITEBITE (April 27, 2005) and RITEBITE MAX PROTEIN (February 2012), but holds no trademark registrations in Canada or the United States. The disputed Domain Name was first registered in 2004 by an unrelated third party; the Respondent, a Canadian entrepreneur, purchased it on January 8, 2015 for USD $2,550. The domain subsequently fell out of the Respondent’s control from January 2022 to November 2023 due to an unrelated employment legal dispute, and was returned to him upon settlement. At the time of the decision, the domain resolved to a “launching soon” page.
The Complainant alleges that registration of a domain name identical to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith, and that no plausible good faith use could arise without misleading customers as to the source or affiliation of the disputed Domain Name. The Respondent contends that he selected the name for its descriptive quality “the right bite” for a Toronto-based meal delivery service he launched briefly in early 2015, investing approximately CAD $4,000 in the venture. The Respondent further contends that “rite bite” is a phonetic variant of the common English phrase “right bite,” a descriptive phrase with obvious legitimate uses across food, nutrition, health, wellness, and dentistry.
Held: The Panel notes that the disputed Domain Name, despite being registered since 2004, was acquired by the Respondent on January 8, 2015, years after the registration of the Complainant’s trademark RITEBITE. However, the Panel also notes that the Complainant’s trademark RITEBITE and its additional marks consisting of RITEBITE in combination with other words and/or design elements are registered only in India, and that the Complainant’s RITEBITE products appear to be primarily sold in the Indian territory. Considering that the terms “rite bite” encompassed in the Complainant’s mark do not appear to be exclusively referable to the Complainant and its products, to demonstrate the Respondent’s bad faith it is necessary that the Complainant show that the Respondent actually intended to target the Complainant’s mark through the registration and use of the disputed Domain Name.
The Complainant has not shown that the Respondent actually intended to target the Complainant’s mark through the registration and use of the disputed Domain Name. Indeed, based on the additional screenshots provided by the Parties, including one provided by the Complainant showing the disputed Domain Name redirecting to a parking page with sponsored links in January 2026, the disputed Domain Name has not been used with website content displaying the Complainant’s figurative mark and products. In addition, the Respondent did not contact the Complainant to offer the disputed Domain Name for sale and, according to the records, the Respondent has not been involved in a pattern of bad faith registrations. Under the circumstances, the Complainant’s assertion that the Respondent’s passive holding of the disputed Domain Name, at the time of this Decision and in the prior years, amounts to bad faith is not sufficient to demonstrate that the Respondent acted in bad faith.
RDNH: The Panel is not persuaded that the circumstances of this case justify a finding of RDNH. The Complainant has a long-standing registration for the RITEBITE mark in India, which predates the Respondent’s acquisition of the disputed Domain Name and is identically reproduced in it. Moreover, the Complainant’s trademark is unusual, and the disputed Domain Name has been directed for most of the time since registration to parking pages with sponsored links or other landing pages. Therefore, the Complainant’s case that the disputed Domain Name was registered in bad faith, while unsuccessful, was not so weak as to render the filing of the Complaint an act of bad faith. Accordingly, the Panel declines the request to make a finding of Reverse Domain Name Hijacking.
Complaint Denied
Complainant’s Counsel: Rahul Chaudhry & Partners, India
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The most interesting aspect of this decision is the Panel’s focus on the Respondent’s original acquisition of the disputed domain name and his intentions at that time. Although the Respondent purchased the disputed domain name in 2015, after the Complainant had obtained trademark rights in India, the Panel found that the Complainant had failed to establish that the Respondent actually intended to target its mark. The Respondent’s explanation that “Rite Bite” was selected as a phonetic variation of the descriptive phrase “right bite” for a contemplated Toronto-based meal delivery business was found to be credible, and there was no evidence that the Respondent had ever displayed the Complainant’s branding or products, approached the Complainant to sell the domain name, or otherwise sought to exploit the Complainant’s goodwill.
The factual history of the disputed domain name was unusual. Although the Respondent temporarily lost control of the domain name from 2022 to 2023 as the result of an unrelated employment dispute before recovering it pursuant to a settlement agreement, the Panel’s analysis nevertheless focused on the Respondent’s original 2015 acquisition and intended use. Although the Panel did not expressly address the legal significance of the temporary loss of control, it treated the Respondent’s original acquisition as the relevant point for assessing bad faith, rather than viewing the restoration of the domain name as a fresh acquisition.
The Panel also declined to find Reverse Domain Name Hijacking. Although the Complaint failed because the Complainant did not establish targeting, the Panel concluded that it was not so weak as to render its filing an act of bad faith. Given the Complainant’s longstanding trademark rights, which predated the Respondent’s 2015 acquisition, and the identity between the mark and the disputed domain name, the Panel concluded that the Complaint, while unsuccessful, did not warrant an RDNH finding.
Not Every Trademark Dispute Belongs Under the UDRP
Polyco Healthline Limited v. David Beatson, WIPO Case No. D2026-1893
<coshield.com>
Panelist: Mr. Jeremy Speres
Brief Facts: The Complainant is a UK-based personal protective equipment company that has traded under the SHIELD mark since 1997, holding registered trademark rights in the United Kingdom and European Union, the earliest being UK Trademark registration dated June 5, 1998. The Complainant’s SHIELD-branded PPE products generated revenues exceeding GBP 129 million in the UK between 2017 and 2022, with distribution networks spanning Singapore, Australia, Ireland, Saudi Arabia, Latvia, and the Netherlands. The disputed Domain Name was acquired by the Respondent in May 2020, after which it resolved to a website operating a competing PPE business trading as “CoShield”, offering gloves, masks, and other PPE products, claiming operations across 20 countries including the UK and Europe. In 2021, the Complainant concluded a written settlement agreement with a UK company, Coshield Global Ltd, requiring it to cease use of the COSHIELD mark and transfer `coshield.co.uk` to a related non-competing entity. From at least February 2023, Coshield Global Ltd began redirecting `coshield.co.uk` to the disputed domain in alleged breach of that agreement.
The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name, as it was used to operate a competing PPE business in direct breach of the 2021 settlement agreement. The Complainant further alleges that the Respondent is a proxy for, or holds the domain on trust for, Coshield Global Ltd or a related party, and that the Domain Name was registered and used in bad faith to market competing PPE products, create confusion with the Complainant’s SHIELD marks, divert customers for commercial gain, and unfairly exploit the Complainant’s goodwill. The Complainant also argues that the relevant date for assessing bad faith should be August 2020, the earliest Internet Archive record showing the domain resolving to the competing PPE website, rather than the 2014 original registration date. The Respondent did not file a formal Response but submitted informal correspondence to the Center stating that he had left CoShield Global in June 2022 and did not believe the email addresses used were monitored, nor that the company had any active employees to whom the matter could be passed. No substantive arguments were advanced on the merits.
Held: The Panel has independently established, using publicly available domain name sales records, that the disputed Domain Name was sold in May 2020. This aligns with changes to the disputed Domain Name’s registrar and name servers, evident from publicly available WhoIs history records, that occurred over the same period. It thus appears that the Respondent may have acquired the disputed Domain Name in May 2020, and that this is likely the relevant date for assessing bad faith registration of the disputed Domain Name (the “acquisition date”). WIPO Overview 3.1, section 3.9. The Panel notes that this is close to the Complainant’s claimed relevant date of August 2020, and that the Panel’s independent findings do not materially alter the Complainant’s position in this regard.
Nevertheless, the evidence concerning bad faith registration and use of the disputed Domain Name is finely balanced. The primary evidence in favour of the Complainant is that its SHIELD brand enjoyed significant goodwill for 23 years prior to acquisition, in markets where the Respondent also operated. The primary evidence in favour of the Respondent is that it ran a genuine PPE business from the domain from 2020 until at least April 2026; traded overwhelmingly as COSHIELD rather than SHIELD; launched during the COVID-19 pandemic when “CoShield”, shielding users from COVID, had a plausible descriptive rationale; and used “shield” generically throughout its website. Beyond the shared “shield” element, the Respondent adopted none of the Complainant’s branding, and no evidence of active confusion-seeking or actual confusion was presented.
In the circumstances, the Complainant’s case appears to be one of potential trademark infringement and breach of the settlement agreement. It is well established that the UDRP is not the forum for addressing either of these, unless they also amount to cybersquatting in the sense that the Respondent registered the disputed Domain Name with the Complainant in mind. Even if the conduct alleged by the Complainant amounts to trademark infringement and/or breach of the settlement agreement, such matters do not, by themselves, establish that the disputed Domain Name was acquired in bad faith within the meaning of the Policy. In respect of the latter, the Panel finds that the evidence, although finely balanced, does not support a finding, on balance of probabilities, that it is more likely than not that the Respondent acquired the disputed Domain Name with the Complainant in mind.
Complaint Denied
Complainant’s Counsel: Edwin Coe LLP, United Kingdom
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Panel is to be commended for recognizing the limits of the UDRP. Although the evidence suggested a genuine commercial dispute between competitors, potentially involving trademark infringement and an alleged breach of a prior settlement agreement, the Panel correctly distinguished those issues from the narrow question presented by the Policy: whether the Respondent acquired the disputed domain name with the Complainant’s trademark in mind.
The evidence was, as the Panel observed, “finely balanced.” On the one hand, the Complainant had longstanding goodwill in its SHIELD mark in markets in which the Respondent also operated. On the other hand, the Respondent had operated a genuine PPE business under the COSHIELD name during the COVID-19 pandemic, traded overwhelmingly as COSHIELD rather than SHIELD, and used “shield” in a descriptive sense throughout its website. In the absence of persuasive evidence that the Respondent acquired the disputed domain name to target the Complainant, the Panel declined to convert what appeared to be a broader commercial dispute into a finding of cybersquatting.
The decision reflects an important principle discussed in UDRP Perspectives 0.1 – Scope of the Policy: the UDRP is intended to address a limited class of abusive domain name registrations, not every trademark dispute or allegation of unfair competition. Even where the facts may support claims for trademark infringement or breach of contract, those claims do not, without more, establish bad faith registration under the Policy. By recognizing that distinction, the Panel preserved the limited scope of the UDRP while leaving the parties to pursue any broader commercial claims in a more appropriate forum.
Disclaimer: The facts are taken from the decisions themselves and have not been independently verified. The editors and publishers accept no responsibility for their accuracy.
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.