Panel: UDRP Panels Are Not Pricing Boards
This is an exemplary decision, and one that domain name investors and their counsel will be citing for some time. The three-member Panel, presided over by Professor Frederick Abbott, addressed each of the Complainant’s theories directly and disposed of them with a clarity that leaves little room for doubt. The result is a decision that not only reaches the right outcome but articulates the governing principles in terms that will be useful well beyond the facts of this case. Continue reading here
We hope you will enjoy this edition of the Digest (vol. 6.30) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel: UDRP Panels Are Not Pricing Boards (glide.ai *with commentary)
‣ Passive Holding Cannot Cure What Was Never There (dmsl.com *with commentary)
‣ Outlet Impersonation Sites No Outlet for Respondent (americangirldolloutlet.com *with commentary)
‣ Unregistered Trademark Claim Collapses for Want of Evidence; Criticism Site Survives as Noncommercial Fair Use (greatstreettimmiller.com *with commentary)
‣ Family Feud Over Legacy Electronics Brand Ends in RDNH (addison-electronique.com *with commentary)
Panel: UDRP Panels Are Not Pricing Boards
typeguard, inc. v. Narendra Ghimire, WIPO Case No. DAI2026-0029
<glide.ai>
Panelist: Mr. Frederick M. Abbott (Presiding), Mr. W. Scott Blackmer and Mr. Nick J. Gardner
Brief Facts: The Complainant is a Delaware-incorporated no-code/low-code software platform operating at <glideapps.com> since February 2019. The Complainant launched an AI product line in October 2023 and repositioned itself as “Glide, built for the AI age” in March 2026. It owns registrations for GLIDE with the USPTO, dated October 29, 2019, and an international registration dated February 2, 2024. The Complainant also holds trademark registrations for GLIDE APPS in the EU and the UK since 2025. The Respondent is a professional domain investor, who acquired the disputed Domain Name <glide.ai> in January 2021 in an auction and has since listed the domain for public sale through GoDaddy’s brokerage service. In March 2026, the Complainant made an anonymous opening offer of USD 103,750 with a note indicating willingness to negotiate; the Respondent rejected it without a counteroffer, and GoDaddy subsequently listed the domain with a minimum offer of approximately CAD 1,061,891 (USD 700,000).
The Complainant asserts that the existence of a dedicated, commercially active product line operating under the GLIDE AI name, combined with the broader positioning as an AI-powered business software platform, makes the Respondent’s ownership of the domain particularly harmful. The Complainant further alleges that the Respondent has engaged in a pattern of registering domain names to prevent trademark owners from reflecting their marks in corresponding domain names, referring to various dispute decisions. The Respondent contends that he maintains a portfolio of 28+ dictionary-word .ai domain names thematically grouped around movement and locomotion, and globally there are 199 pending or registered trademarks for the sole term “GLIDE.” The Respondent further contends that he has a well-established record of registering and offering dictionary word domain names for public sale, and the Complainant has offered no evidence that the Respondent lacked rights or legitimate interests to do so in respect to “glide”.
Held: It is common ground among UDRP panels that there is nothing inherently wrongful in the business of purchasing and selling domain names. The business of the “domainers” is substantial and it is actively facilitated by major registrars, such as GoDaddy in this instance. The Panel cannot discern from where the Complainant derived the idea that registering “dictionary terms” and offering them for sale is illegitimate because it is “speculative”. This is a long-standing business model. The Panel rejects Complainant’s suggestion that its service mark is “well-known”, and that because of this well-known character Respondent must effectively have been targeting the Complainant when it registered the disputed Domain Name. The Complainant has provided evidence that it may have passed the initial start-up phase for a Silicon Valley venture and has reached asserted revenues of USD 10 million per year but these are current figures and there is little detail about its activities over time. The Complainant has failed to demonstrate that the Respondent did not have a legitimate interest in acquiring the disputed Domain Name with the intent to resell it at a price the market would bear.
Further, the Complainant’s GLIDE mark was neither well-known at the time of Respondent’s 2021 acquisition nor shown to be well-known on the evidence presented, particularly as the Complainant had then registered GLIDE only for cloud-based spreadsheet-to-app development tools and had not entered the AI field. The Respondent’s rejection of an anonymous offer and subsequent higher asking price did not constitute bad faith; UDRP panels are not pricing boards, and where a mark is not famous, an “excessive” price does not by itself suggest the seller was targeting the trademark owner. The fact that the Respondent raised its asking price after Complainant’s opening offer is immaterial; the Respondent is entitled to seek the market value it considers warranted and is not required to lower its price simply because the Complainant would prefer to acquire the Domain Name. The Complainant’s reference to prior cases in which the Respondent did not prevail is not dispositive, as the Respondent deals in a volume of domain names and each dispute must be assessed on its own merits.
RDNH: The Complainant proceeded to file its Complaint on grounds principally that it is the owner of a well-known mark, when its mark did not satisfy the criteria of a well-known mark at least at the time the disputed Domain Name was acquired, and that the Respondent specifically attempted to take unfair advantage of the Complainant by registering the dictionary term constituting Complainant’s trademark in the .ai ccTLD well before the Complainant introduced an AI product, implying that the Respondent should have foreseen Complainant’s evolution of its services line.
Importantly, the Complainant either reviewed the earlier cases involving the Respondent in similar contexts and elected not to disclose the outcomes in its Complaint, or perhaps listed the decisions without reviewing them. In either case, the failure to act responsibly in filing its Complaint cannot be countenanced by the Panel given the burden it has imposed on the Respondent in preparing and filing its Response. The Complainant by its own characterization initiated the proceeding because it believed it had a more compelling use for the disputed Domain Name than the Respondent. The UDRP requires more than that: an actual assessment of Respondent’s probable bad faith given the known circumstances.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: John Berryhill, Ph.D., Esq., United States
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This is an exemplary decision, and one that domain name investors and their counsel will be citing for some time. The three-member Panel, presided over by Professor Frederick Abbott, addressed each of the Complainant’s theories directly and disposed of them with a clarity that leaves little room for doubt. The result is a decision that not only reaches the right outcome but articulates the governing principles in terms that will be useful well beyond the facts of this case.
The Panel’s affirmation of the legitimacy of the domain name investment business is as clear a statement as one could hope for. It observed that there is nothing inherently wrongful in the business of purchasing and selling domain names, that the business of domainers is substantial and actively facilitated by major registrars such as the very registrar involved here, and that it could not discern the source of the Complainant’s notion that registering dictionary terms and offering them for sale is somehow illegitimate because it is speculative. This is, as the Panel put it, a long-standing business model. Investors have long understood this, but a complainant’s instinctive characterization of investment as inherently suspect persists, and it is valuable to have a distinguished panel reject that characterization in such plain terms.
Equally important is the Panel’s treatment of the “well-known” assertion. The Complainant’s case rested substantially on the proposition that its GLIDE mark was well-known, and that its fame compelled the inference that the Respondent must have been targeting it. The Panel rejected the premise. GLIDE was not well-known at the time of the Respondent’s 2021 acquisition, and it was registered then only for spreadsheet-to-app development tools, years before the Complainant entered the AI field. A complainant cannot bootstrap a targeting inference from a reputation it did not possess when the domain name was acquired, still less from a repositioning that occurred five years later. The Respondent could not have been targeting an AI business that did not yet exist.
The most quotable passages concern price, and they deserve to be quoted often. The Panel held that a respondent’s rejection of an anonymous offer followed by a higher asking price does not constitute bad faith, that UDRP panels are not pricing boards, and that where a mark is not famous an excessive price does not by itself suggest the seller was targeting the trademark owner. It added that the Respondent’s decision to raise its asking price after the Complainant’s opening offer was immaterial, because a seller is entitled to seek the market value it considers warranted and is not required to lower its price simply because a would-be buyer would prefer to pay less. This is exactly right. The value of a domain name is what the market will bear, and a complainant who makes an offer, is refused, and then complains that the asking price is too high has described a negotiation, not a wrong. Panels have no warrant to police the prices at which lawful assets are offered for sale.
The Panel also dealt sensibly with the Complainant’s pattern allegation. Citing prior cases in which the Respondent did not prevail was not dispositive, because a respondent who deals in a volume of domain names will inevitably appear in some decisions, and each dispute must be assessed on its own merits. That is the correct approach. A pattern for purposes of paragraph 4(b)(ii) requires bad faith registrations, not merely a count of proceedings, and an investor’s litigation history is not itself evidence of anything.
The RDNH finding follows naturally, and the Panel’s reasoning is notably candid. The Complainant either reviewed the earlier cases involving the Respondent and chose not to disclose their outcomes, or listed them without having read them, and neither is acceptable. More fundamentally, the Complainant filed because it believed it had a better use for the domain name than the Respondent did. As the Panel observed, the Policy requires more than that. A belief that one could put a domain name to better use is not a basis for taking it, and a complainant who proceeds on that belief, against a mark that was not famous when the domain name was acquired, invites precisely the finding it received here.
Passive Holding Cannot Cure What Was Never There
Deepak Mining Solutions Limited v. Steve Ward, J.D. Irving Limited IT Div Case No. D2026-2135
<dmsl.com>
Panelist: Mr. Nick J. Gardner
Brief Facts: The Complainant, an Indian company incorporated in August 2008 as a wholly-owned subsidiary of Deepak Fertilisers and Petrochemicals Corporation Limited, engaged in the manufacture of mining chemicals and provision of mining consultancy services principally within India. The Complainant holds two Indian figurative trademark registrations for DMSL DEEPAK MINING SOLUTIONS LIMITED and DMSL PARTNERS IN UNLOCKING VALUE, both registered from May 21, 2025, with a user detail indicating prior use since October 14, 2024. The Complainant also asserts unregistered common law rights in DMSL since its incorporation in 2008. This claim is supported principally by financial and corporate information relating to its parent group rather than evidence of acquired distinctiveness of DMSL as a standalone source identifier.
The disputed Domain Name was created on July 13, 1996 by a bona fide Canadian corporate group and does not resolve to any active website at the time of the Complaint. The Complainant acknowledges that the domain name <dmsl.com> was originally registered in 1996. Nevertheless, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed Domain Name, having made no bona fide use, and that the Respondent’s passive holding, alleged offer for sale, failure to respond to outreach, and prevention of the Complainant from reflecting its mark in the corresponding .com domain name collectively establish bad faith. The Complainant expressly acknowledged the 1996 registration date but argued that the Respondent’s subsequent conduct established ongoing bad faith use under the Policy. The Respondent did not file a Response.
Held: The Complainant expressly acknowledges the 1996 registration date, but seeks to overcome it by reliance on the Respondent’s alleged “subsequent conduct”, in particular passive holding and an alleged offer for sale. Even if the Respondent’s conduct did establish ongoing bad faith that is not enough for the Complaint to succeed; it is well established that the requirements for showing bad faith registration and use are conjunctive. The doctrine of passive holding, as articulated in Telstra Corporation Limited, and reflected in WIPO Overview 3.1, section 3.3, operates to treat a respondent’s continued passive holding of a domain name as use in bad faith where the domain name was registered in bad faith in the first place, having regard to factors such as the degree of distinctiveness or reputation of the complainant’s mark.
As to the alleged offer for sale, this appears to be an offer by the Registrar’s brokerage service to assist in a purchase attempt, rather than an offer made by the Respondent. In any event, even had such an offer been substantiated, the offering for sale of a short, non-distinctive acronym is not of itself objectionable absent evidence that the offer was targeted at this Complainant specifically, which is not the case here. Nor does the Respondent’s non-response to the Complainant’s unsolicited approach seeking to acquire the disputed Domain Name support an inference of bad faith registration made decades earlier; a registrant’s silence in the face of an unsolicited approach is not, without more, evidence of bad faith.
RDNH: The Complaint itself discloses, on its face, that the disputed Domain Name was registered in 1996, some twelve years before the Complainant’s incorporation and twenty-nine years before its first trademark filing. Rather than concluding, as the consensus view reflected in WIPO Overview 3.1, section 3.8.1 plainly required, that bad faith registration could not be established on such a timeline, the Complainant proceeded to construct an argument around the doctrine of passive holding that misapprehends its function, treating it as capable of curing a registration that could not, on any view, have targeted the Complainant. The Complainant is represented by a counsel, who executed the certification required by the Rules, paragraph 3(b)(xiii), thereby certifying that the assertions in the Complaint were, to the best of the Complainant’s knowledge, warranted under the Rules and applicable law. The Panel is entitled to assume that counsel signing that certificate undertook the necessary research to ensure the Complaint was properly founded.
The Panel further notes that the Complainant’s trademarks postdated the disputed Domain Name by many years and its claimed common law rights were supported by evidence directed substantially at its parent company rather than at DMSL itself. The Complainant operates in a niche, business-to-business sector with no demonstrated reputation outside India. Proceeding against a respondent identified in the WHOIS record as associated with a bona fide and well established Canadian corporate group, on the basis of a four-letter acronym registered as a domain name three decades ago, without any evidentiary basis for supposing the Respondent could have had the Complainant in contemplation, compounds the difficulty. In these circumstances, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding within the meaning of the Rules, paragraph 15(e), and so finds and declares.
Complaint Denied (RDNH)
Complainant’s Counsel: Photon Legal, India
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Panelist careful explanation of the passive holding doctrine’s actual function is a particularly valuable aspect of this well analyzed decision. Complainants regularly invoke Telstra as though passive holding were a freestanding basis for relief, capable of converting any dormant domain name into a bad faith registration. The decision explains why that is backwards. Passive holding operates to treat continued non-use as bad faith use where the domain name was registered in bad faith in the first place. It presupposes a bad faith registration; it does not supply one. Where, as here, the registration predates the complainant’s very existence, there is nothing for the doctrine to attach to, and no amount of subsequent conduct can cure the deficiency. The requirements of registration and use in bad faith are conjunctive, and a complainant who cannot satisfy the first cannot succeed by elaborating on the second.
The chronology here was not merely unhelpful to the Complainant; it was insurmountable on the face of its own Complaint. The disputed Domain Name was registered in 1996, twelve years before the Complainant was incorporated and twenty-nine years before its first trademark filing. The Panel’s other observations follow sensibly from that starting point. The alleged offer for sale appears to have been the registrar’s brokerage service responding to the Complainant’s own purchase attempt, and in any event offering a short, non-distinctive four-letter acronym for sale is unobjectionable absent evidence of targeting. And a registrant’s silence in the face of an unsolicited acquisition approach is not evidence of anything. Registrants are under no obligation to answer strangers who want to buy their domain names, and the suggestion that declining to engage supports an inference of bad faith registration made decades earlier only had to be stated to be rejected.
The RDNH analysis deserves particular attention for its treatment of the certification requirement. Counsel who signs a Complaint certifies under paragraph 3(b)(xiii) of the Rules that its assertions are warranted, and the Panel held that it is entitled to assume counsel undertook the research necessary to ensure the Complaint was properly founded. Where the Complaint itself discloses a fatal timeline, that certification rings hollow, and the Panel was right to say so. The decision thus joins the line of authority holding represented complainants to a professional standard: a lawyer who files a complaint that the consensus view, plainly stated in section 3.8.1 of the WIPO Overview 3.1, doomed from the outset cannot shelter behind a creative but misconceived theory of passive holding. This is the third RDNH finding covered in recent weeks arising from a complaint that was untenable on publicly available facts, and the pattern suggests panels are increasingly willing to treat the certification as meaning what it says.
Outlet Impersonation Sites No Outlet for Respondent
MATTEL, INC. v. black horse company, CAC Case No. CAC-UDRP-108758
<americangirldolloutlet.com> and <matteloutlet.com>
Panelist: Ms. Ivett Paulovics
Brief Facts: The Complainant is a global toy and entertainment company founded in 1945 and headquartered in El Segundo, California, holding extensive trademark portfolios for both MATTEL and AMERICAN GIRL across the US and EU, with registrations dating back to 1999. The disputed Domain Names were registered on 11 April 2025 and 18 April 2025, respectively, in the name of “black horse company,” with registrant addresses in Taiwan and China, though the registrant names and countries differed between the two registrations, and CAC’s written notices could not be delivered as the postal addresses were found to be non-existent. Prior to filing, both domains resolved to websites reproducing Mattel’s trademarks and mimicking the visual layout of its official sites, offering products presented as bearing Mattel’s marks. At the time of filing, both had reverted to HTTP 403 error pages. The Respondent did not file a Response.
Held: The Panel notes that each disputed Domain Name wholly incorporates one of the Complainant’s Trademarks and combines it with descriptive terms closely related to the Complainant’s business. The composition of the disputed Domain Names carries a risk of implied affiliation with the Complainant, suggesting to Internet users that they are associated with official outlet stores of the Complainant. The evidence further shows that the disputed Domain Names were used in connection with websites reproducing the Complainant’s Trademarks and imitating the layout, visual identity and overall presentation of the Complainant’s official websites, while offering for sale products presented as products bearing the Complainant’s Trademarks. Such use was likely to mislead Internet users into believing that the disputed Domain Names and the associated websites were operated, authorised or endorsed by the Complainant. Such impersonation cannot confer rights or legitimate interests under the Policy.
The Panel finds it inconceivable that the Respondent registered the disputed Domain Names without knowledge of the Complainant and its trademarks. Each disputed Domain Name incorporating the Complainant’s Trademarks reinforces the false impression that the disputed Domain Names are associated with official outlet stores operated or authorised by the Complainant. Further, the evidence shows that, prior to the filing of the Complaint, the disputed Domain Names resolved to websites reproducing the Complainant’s Trademarks and imitating the layout, visual identity and overall presentation of the Complainant’s official websites, while offering for sale products presented as products bearing the Complainant’s Trademarks. The Panel further notes that the associated websites are currently inactive. According to the well-established passive holding doctrine (Telstra Corporation Case), the passive holding of a domain name does not preclude a finding of bad faith.
Transfer
Complainant’s Counsel: Convey srl
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This is the fact pattern the Policy was written for, and the decision requires little elaboration on its merits. Domain names combining famous toy brands with “outlet”, resolving to websites that reproduced the Complainant’s trademarks and mimicked the visual presentation of its official sites while offering purported Mattel products, registered under differing names with postal addresses that turned out not to exist. The Panel’s finding that it was inconceivable the Respondent registered the disputed Domain Names without knowledge of the Complainant was plainly correct, and the composition of the domain names themselves, a famous mark plus a term signaling authorized retail, carried the implied affiliation that section 2.5.1 of the WIPO Overview 3.1 identifies as effectively impersonation.
The decision earns its place in this issue for its treatment of passive holding, which makes an instructive pairing with the <dmsl.com> decision above. By the time of filing, both websites had reverted to error pages, a familiar move by counterfeit-shop operators who go dark at the first sign of enforcement. The Panel correctly held that this reversion to inactivity did not preclude a finding of bad faith. The two decisions together mark out the doctrine’s proper boundaries from opposite directions. In <dmsl.com>, passive holding could not manufacture bad faith where the registration, made twelve years before the complainant existed, could never have been in bad faith. Here, passive holding could not launder bad faith away where the registration and prior use plainly established it. The doctrine neither creates a case that does not exist nor rescues a respondent from one that does. A registrant who impersonates a brand owner and then pulls the site down upon being caught has changed its evidence, not its position. For more on Telstra and passive holding, see UDRP Perspectives at 3.7 and at 3.8.
One practical observation for brand owners: the differing registrant names and countries across the two registrations, and the non-existent addresses, illustrate why paragraph 4(b) analysis in counterfeiting cases is rarely where the effort lies. The real work in such cases is consolidation and attribution, and the Complainant here sensibly captured both domain names in a single proceeding against a common registrant. Where counterfeit networks fragment their registrations across aliases, complainants who invest in tying the registrations together at the outset save themselves serial filings.
Unregistered Trademark Claim Collapses for Want of Evidence; Criticism Site Survives as Noncommercial Fair Use
GreatStreet Realty Partners, LLC v. Frank Watson / WebSlingers, Forum Claim No. FA2605002222679
<greatstreettimmiller.com>
Panelist: Mr. Steven M. Levy
Brief Facts: The Complainant is a Chicago-based commercial real estate brokerage firm that has operated under the GREATSTREET brand since at least 2003. It asserts common law trademark rights in the GREATSTREET mark based on extensive advertising and promotion of its services, as well as industry recognition and consumer association of the mark with the Complainant’s commercial real estate services. The Complainant uses the domain name <greatstreetrealty.com> and submitted two screenshots from that website as its sole evidence of trademark rights. The disputed Domain Name was registered on April 16, 2026. It resolves to a website criticizing Tim Miller, one of the Complainant’s named principals, headed “!!!!Warning!!!! Warning About Tim Miller of Great Street Realty” and concluding that it is an “opinion-based consumer warning” based on personal experience.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed Domain Name because the Respondent is not commonly known by it and is not using it in connection with a bona fide offering of goods or services. The Complainant further argues that use of the disputed Domain Name for a website that allegedly disparages or defames the Complainant does not constitute a legitimate noncommercial or fair use of the GREATSTREET mark. The Complainant also alleges that the Respondent was aware of the Complainant and its mark when registering the domain name, and that the Respondent is using the domain name to create confusion with the Complainant’s mark while publishing allegedly disparaging material. The Respondent did not submit a Response.
Held: The Complainant asserts that it has common law trademark rights in the term GREATSTREET based on its longstanding use and recognition by the real estate industry and relevant consumers. It submits two screenshots in support of these contentions. Neither screenshot shows the address bar of the asserted website, but the Panel visited the site and confirmed that the submitted images are, in fact, from the <greatstreettimmiller.com> website. Nevertheless, having reviewed the Complainant’s very limited evidence, the Panel finds it insufficient to support the claim that the term GREATSTREET has developed secondary meaning or common law trademark rights. The Complainant relies upon unsupported allegations rather than documentary evidence such as advertising materials, media coverage, awards, or consumer recognition. The two submitted screenshots from the <greatstreettimmiller.com> website simply do not provide evidence by which the Panel can accept the Complainant’s claims. In sum, the Panel is unable to conclude, based on the record before it, that the asserted mark has acquired secondary meaning and common law trademark rights.
On the second and third elements, while the Complainant asserts defamation and disparagement, the Panel finds that its evidence falls short of establishing, prima facie, that the Respondent has no rights or legitimate interests in the disputed Domain Name or that it registered and used the domain name in bad faith. It has been noted that “Par. 4 (c)(iii) of the Policy does not restrict the safe harbour afforded to domain names legitimately used for free expression or criticism; it applies to all domain names, whether they are identical or confusingly similar to the Complainant’s trademark.” see UDRP Perspectives on Recent Jurisprudence, § 2.10. See also The Clash Of Trademarks And Domain Names On The Internet, at 10.02-B.5.iii.b (Gerald M. Levine, Legal Corner Press, 2025) (“The general rule is that critical speech if not pretextual and properly conveyed is protected. Alleged claims of defamation or invasion of privacy are outside the scope of the Policy.”) Here, the <greatstreettimmiller.com> website contains what appears to the Panel to be criticism of one of Complainant’s Principals. It also contains a statement expressly identifying itself as an opinion site.
Complaint Denied
Complainant’s Counsel: Christopher J. Verstrate, McGuireWoods LLP, United States
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Complainant here failed at every step, but the decision is worth reading for how methodically the Panelist documented each failure, in a default proceeding where he could easily have been less exacting. The asserted common law rights rested on two screenshots, which, remarkably turned out, on the Panel’s own inspection to come not from the Complainant’s website but from the Respondent’s criticism site. Even setting that aside, the evidence consisted of assertions rather than the advertising materials, media coverage, awards, or consumer recognition evidence that establishing secondary meaning requires. The case thus joins <greenlandturf.com> from vol. 6.28 in a lesson that bears repeating: a complainant relying on unregistered rights must prove them, and a quarter century of claimed use is worth nothing on paper that does not evidence it. That the Complainant here was represented by a major law firm makes the evidentiary showing harder to understand, not easier.
The more significant portion of the decision concerns the criticism site. The Panel quoted section 2.10 of UDRP Perspectives on Recent Jurisprudence for the proposition that paragraph 4(c)(iii)’s safe harbour for free expression applies to all domain names, whether or not identical or confusingly similar to the complainant’s mark, and Gerald Levine’s treatise for the general rule that critical speech, if not pretextual and properly conveyed, is protected, with claims of defamation and invasion of privacy falling outside the scope of the Policy. The website announced itself as an opinion-based consumer warning, criticized a named principal by name, and displayed no commercial content. Whether its contents are defamatory is a question for a court applying defamation law, with its attendant defences and procedural safeguards, and not for a UDRP panel. Complainants who plead disparagement are usually pleading their real grievance, and their real grievance is usually one the Policy cannot address.
A final observation on the domain name itself. The disputed Domain Name coupled the Complainant’s claimed mark with the name of the individual criticized, a composition that signals commentary about a person rather than impersonation of a business. Where a domain name on its face directs users toward criticism rather than toward a supposed official presence, the argument for implied affiliation weakens considerably. The contrast with the <matteloutlet.com> decision above is instructive: a mark plus “outlet” implies the brand owner’s own store, while a mark plus a principal’s name in front of a warning site implies exactly what it delivers. Composition matters, and it cut against the Complainant here at every element it needed to prove.
Family Feud Over Legacy Electronics Brand Ends in RDNH
<addison-electronique.com>
Panelist: Ms. Nathalie Dreyfus
Brief Facts: The Complainant Jérémy Labrèche is a self-represented individual filing jointly with Addison Électronique Entreprise Inc. He claims rights in the ADDISON and MADDISON ÉLECTRONIQUE marks based on a pending Canadian trademark application No. 2429036 for ADDISON filed October 6, 2025, and an asserted association with Canadian trademark registration TMA803748 for MADDISON ÉLECTRONIQUE (registered August 5, 2011), held in the name of Maddison Electronics Inc., a corporate entity in which the Complainant claims to hold a minority, non-controlling shareholding with no director role. The Complainant alleges both parties operate in the same electronics sector and compete directly, and that the disputed Domain Name causes marketplace confusion. The Respondent, 9117-4227 Québec Inc. (of which Maxime Labrèche is Vice-President), contests the Complainant’s claimed rights and asserts continuous use of the ADDISON and ADDISON ÉLECTRONIQUE marks in connection with an electronics retail business since at least 1964, through a chain of title including two corporate mergers and a licensee.
The Respondent registered the disputed Domain Name on May 4, 2001, in connection with that longstanding business, and filed Canadian trademark application No. 2458193 for ADDISON on February 25, 2025, which remained pending as of the Response. The parties are related by family: the Complainant’s grandfather owned the original Addison stores until 2002, his father founded Maddison Électronique in Laval, Québec in 1994, and the Complainant describes himself as a direct cousin of the Respondent’s founding family, with family ties to the ADDISON name tracing back to the late 1930s. The Complainant further alleges that the chain of title on which the Respondent relies is broken: the corporate predecessor was struck off in 2025 and several related trade names were withdrawn during the course of this dispute. The Respondent commenced Federal Court of Canada proceedings against the Complainant on May 4, 2026; this Complaint was filed one week later on May 11, 2026.
Preliminary Issue: Parallel Court Proceedings: The Panel has considered the option under Rule 18(a), which grants it discretion, and has determined, in the exercise of that discretion, to proceed to a decision on the merits below. The Panel notes, however, that the existence of the parallel Federal Court proceeding, which was commenced before this Complaint was filed and concerns the same dispute That proceeding alone could have supported the suspension or termination of this proceeding without reaching the substantive elements of the Policy.
Held: The Domain Name incorporates the term ADDISON in its entirety. However, a pending trademark application does not, by itself, establish trademark rights within the meaning of Paragraph 4(a)(i) of the Policy (WIPO Overview 3.0, section 1.1.4). The Complainant’s claimed rights in Canadian trademark registration TMA803748 for MADDISON ÉLECTRONIQUE are likewise insufficient to establish standing, as the registration is held in the name of a corporate entity rather than the Complainant personally. Moreover, the uncontested evidence on the record indicates that the Complainant holds, at most, a minority shareholding in that company, without serving as a director or otherwise demonstrating authority over the mark. In addition, the Complainant has not provided evidence capable of establishing unregistered or common law rights in ADDISON or MADDISON ÉLECTRONIQUE, such as evidence of acquired distinctiveness through the duration, nature, and extent of his personal use of the term.
The Complainant’s claim that the 2025 dissolution and recreation of a corporate predecessor, and the July 2025 withdrawal of related trade names, concerns corporate continuity; it does not negate the Respondent’s uncontested use of the ADDISON name and the Domain Name since 2001. Nor does the timing of either party’s trademark applications, filed in October 2025 and February 2026, respectively, long after the Domain Name was registered, bear on whether the Respondent has rights or legitimate interests in the Domain Name. The Complainant has therefore not met his burden, even prima facie, of showing that the Respondent lacks rights or legitimate interests in the Domain Name. The evidence also shows that the Domain Name was registered on May 4, 2001, more than 20 years before the Complainant’s trademark application and well before the earliest trademark rights upon which he relies. Nor is there any evidence that the Respondent has used the Domain Name in bad faith.
RDNH: The Complainant’s own account of his family history demonstrated personal, first-hand, and longstanding knowledge of the Respondent’s and its predecessors’ use of the ADDISON name, the 2001 registration date of the disputed Domain Name was a matter of public record verifiable by WHOIS search before filing, and the Complainant’s claimed rights, a pending application and a minority shareholding, could not plausibly support a claim that a 2001 registration was made in bad faith.
Further, the Complainant’s misrepresentation of the age of his own domain portfolio, the multiple material internal contradictions in his filings, and the timing of the Complaint, filed one week after the Respondent commenced Federal Court proceedings, all suggested to the Panel a retaliatory or defensive motive rather than a genuine attempt to remedy cybersquatting. The Panel acknowledged the Complainant was self-represented but held that self-represented status does not excuse a complainant from objective facts reasonably available prior to filing.
Complaint Denied (RDNH)
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Caroline Guy, Groupe TCJ
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This is a family dispute wearing a cybersquatting costume, and the Panelist saw through the costume at every layer. Two branches of a Québec family whose association with the ADDISON name traces to the 1930s, a business lineage running through the Complainant’s grandfather, a domain name registered in 2001 in connection with a retail operation dating to 1964, and a Federal Court action commenced one week before the Complaint was filed. Whatever this is, it is not what the Policy was designed to resolve, and the Panel said as much in noting that the parallel court proceeding alone could have supported terminating the case under Rule 18(a) without reaching the merits. Her choice to decide the merits anyway was nonetheless reasonable: a reasoned dismissal with an RDNH finding gives the Federal Court a clean record and the Respondent a measure of vindication that a bare termination would not.
The standing analysis is a useful primer on a point that trips up self-represented complainants with some regularity. A pending trademark application establishes nothing under the first element, and rights held by a corporation do not belong to its shareholders. The Complainant’s asserted association with the MADDISON ÉLECTRONIQUE registration failed because the registration belongs to a company in which he holds, at most, a minority stake with no directorship and no demonstrated authority over the mark. Trademark rights are held by legal persons, not by families, and a complainant must either own the rights he asserts or prove common law rights through his own use. The Complainant did neither. The Panel’s further observation that attacks on the Respondent’s corporate continuity could not negate twenty-four years of uncontested use of the name and the domain name kept the analysis where it belonged: on use, not on corporate housekeeping.
The RDNH finding is notable for its treatment of self-representation. Panels frequently temper their approach for unrepresented parties, and appropriately so, but as this Panel held, self-represented status does not excuse a complainant from objective facts reasonably available before filing. This Complainant needed no legal training to know what he knew first-hand: his own family history, the Respondent’s decades of use, and a 2001 registration date verifiable by anyone. Filing one week after being sued in Federal Court supplied the motive, and the internal contradictions in his filings supplied the rest. The decision pairs well with <dmsl.com> above: there, a represented complainant was held to its counsel’s certification; here, an unrepresented one was held to what he personally knew. The standard flexes for legal sophistication, but not for facts within the complainant’s own knowledge, and that is exactly the right calibration.
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.