A Dissent That Never Asks the Targeting Question
The majority opinion is a disciplined application of settled principles and requires little elaboration. That is the Policy working as designed. The dissent is another matter, and it warrants careful attention precisely because the approach it embodies surfaces from time to time and must be answered each time it does. Nowhere in the dissenting opinion is there a finding, or even a reasoned assertion, that the Respondent knew of the Complainant’s group or had it in mind when it acquired the disputed Domain Name in 2012. That is the indispensable element of bad faith registration (see UDRPPerspectives.org at section 3.3), and no accumulation of other considerations can substitute for it. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 6.36) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ A Dissent That Never Asks the Targeting Question (cactuspartners.com *with commentary)
‣ Priority is Not Targeting (tradeview.com *with commentary)
‣ Careful Even When It Was Easy: A Model Default Transfer (galgotias.com *with commentary)
‣ Escrow Buyer Gets Its Day: Panel Joins the Real Party in Interest (scavanger.ai and scavenger.ai
*with commentary)
‣ An Infringement Dispute in UDRP Clothing (k9grassonline.com *with commentary)
A Dissent That Never Asks the Targeting Question
Cactus Partners LLP v. Kwok-on lo, 2057914 Ontario Inc., WIPO Case No. D2026-2933
<cactuspartners.com>
Panelist: Mr. Jeremy Speres (Presiding), Mr. David E. Sorkin and Mr. Maninder Singh (Dissenting)
Brief Facts: The Complainant, an Indian early-growth investment platform originally formed in 2020 as Cactus Venture Partners LLP and renamed Cactus Partners LLP in 2024, holds two Indian trademark registrations for CACTUS VENTURE PARTNERS dating to November 2023 with claimed use from 2021. It claims broader rights through its affiliated group company, Cactus Communications Private Limited (CCPL), which owns CACTUS-formative marks in India and the US dating back to 2010-2011 with use claimed from 2002. The Respondent, a Canadian company principal, acquired the disputed Domain Name in 2012 for USD $250, contemporaneous with incorporating a Nevada real estate investment vehicle, Cactus US Holdings Inc., which the Respondent’s 2013 marketing materials and a 2014 PwC report show operated under the “CACTUS FUND” name investing in distressed post-2008 US real estate.
The Complainant alleges that the disputed Domain Name is confusingly similar to trademark rights it claims in the CACTUS mark, and that it was registered and has been used in bad faith with the primary intention of selling the disputed Domain Name to the Complainant for an amount in excess of its out-of-pocket costs directly related to the disputed Domain Name. The Respondent contends the Complainant did not exist under any CACTUS-related name until 2020, eight years after the Respondent acquired the disputed Domain Name in 2012, and eleven years after adopting the CACTUS name, in 2009, for its own real estate fund business. The Respondent further contends that the Complaint constitutes RDNH, brought only after a failed anonymous purchase attempt by a professionally represented the Complainant whose own pleaded facts defeat its case.
Held: Although the Complainant claims “colossal goodwill” in the CACTUS mark since 2002, the Complaint provides virtually no independent supporting evidence beyond self-generated material from the Complainant’s and CCPL’s own websites. “Cactus” is a commonplace word, and there are many businesses that have adopted it as part of their names. The Respondent has also operated in an altogether different industry (real estate business) to that of the Complainant and cannot be assumed, by virtue of industry knowledge, to have been aware of the Complainant, who is based in a different jurisdiction. The Respondent’s acquisition of the disputed Domain Name in 2012, in the same year in which it incorporated CUSHI, weighs in favour of the Respondent’s stated intention of acquiring the disputed Domain Name for use in connection with CUSHI’s business.
The Complainant’s case rests substantially on paragraph 4(b)(i) of the Policy, contending that the Respondent registered the disputed Domain Name primarily to sell it to the Complainant at a profit. The record does not support this. It was the Complainant, acting through a broker, who initiated contact with the Respondent in 2025 and who made the first offer, of USD $20,000, which the Respondent declined. Only after sustained solicitation did the Respondent name a figure, USD $65,000, to which the Complainant’s broker responded with a “best and final” counteroffer of USD $29,000.
It is important to note that the Complainant, in the form of Cactus Venture Partners LLP, did not exist until 2020, it only changed its name to Cactus Partners LLP in 2024, its CACTUS VENTURE PARTNERS Indian trademarks were only registered in 2023, and they only claimed usage from 2021. Thus, the closest mark to the disputed Domain Name featuring the word “partners” owned and/or used by the Complainant had not been adopted by the Complainant at the time of acquisition of the disputed Domain Name in 2012 and could not have informed the Respondent’s selection of the disputed Domain Name.
RDNH: The Panel notes that CCPL owns registered trademark rights that predate the Respondent’s acquisition of the disputed Domain Name, and CCPL does appear to have been trading under a CACTUS-formative mark since before the Respondent’s acquisition of the disputed Domain Name. The Respondent has made very little public use of its CACTUS-formative name that might have pointed the Complainant to the Respondent’s genuine real estate business, and the disputed Domain Name is somewhat similar to the Complainant’s CACTUS VENTURE PARTNERS mark. In the circumstances, the Panel considers that it was not entirely unreasonable of the Complainant to bring the Complaint, and the Panel declines to find RDNH.
Dissenting Opinion by Mr. Maninder Singh: The Panelist agreed with the majority that the Complainant has rights in a mark confusingly similar to the disputed Domain Name, but decided rights/legitimate interests and bad faith together, applying a “flexible and not a mechanical approach,” taking all relevant facts into consideration collectively and in their totality (citing Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO D2000-0003).
The Complainant is part of a larger group using the CACTUS mark/name since 2002, when Cactus Communications Pvt. Ltd. was incorporated; the group registered <cactusglobal.com> in 2003 and opened its first overseas office in Tokyo that year. The group holds CACTUS trademark registrations in India, Japan, South Korea, and the United States, including a Madrid Protocol registration with WIPO, and owns roughly thirty domain names in which CACTUS is the prominent feature. The benefit of use since 2002 “ought to be given” to the Complainant as the use is by a group company.
The Respondent has made no use of the disputed Domain Name, which has only one webpage referencing an email address. Wayback Machine printouts show no use of the Domain Name since acquisition. As of the Complaint’s filing, the page read: “Domain for Sale! www.cactuspartners.com USD $63,000. Please contact Aloysius Lo.” After the Complaint was filed, the sale offer was removed and the words “CACTUS FUND” were inserted – terminology, the Panelist noted, “which could easily be passed off” against a Complainant running a venture capital fund.
The Respondent acquired the Domain Name for USD $250 in 2012 and offered it for sale at USD $63,000 – a disparity from which a panel may draw an inference of bad faith absent a credible economic explanation (citing Academy of Motion Picture Arts and Sciences v. This Name is For Sale, WIPO D2005-1063). This was “an invitation to the entire world” to buy the Domain Name. Moreover, the Respondent’s declining the Complainant’s USD $20,000 offer has no bearing on the bad-faith finding; even where a complainant approaches first, bad faith has been found when the price sought vastly exceeds out-of-pocket costs (citing DigiPos Store Solutions v. Hiname Inc., WIPO D2010-0297).
That other entities hold CACTUS-formative domain registrations has no bearing on the present facts and does not negate the Complainant’s claim; a respondent’s conduct is not excused merely because more than one party holds rights in the term across different goods and territories (citing New Rosme SIA v. Privacydotlink Customer 684816 / Domain Admin, Abstract Holdings International Ltd., WIPO D2016-2637). A registrant is expected to conduct a simple online search, and failure to do so can itself constitute bad faith (citing Echobox Audio LLC v. Nanci Nette, WIPO D2019-0751).
Prior to 2012, the Complainant’s group had already secured domain and trademark registrations for CACTUS across multiple jurisdictions. The Respondent’s conduct “does not appear to be innocent,” and the disputed Domain Name’s registration and use, in totality, “would not deserve to be held as being in good faith.” The Panelist would find all three elements of Paragraph 4(a) established and would order the Domain Name transferred to the Complainant.
Complaint Denied
Complainant’s Counsel: ZeusIP Advocates LLP, India
Respondent’s Counsel: Western IP Law Group, United States
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The majority opinion is a disciplined application of settled principles and requires little elaboration. That is the Policy working as designed.
The dissent is another matter, and it warrants careful attention precisely because the approach it embodies surfaces from time to time and must be answered each time it does. Nowhere in the dissenting opinion is there a finding, or even a reasoned assertion, that the Respondent knew of the Complainant’s group or had it in mind when it acquired the disputed Domain Name in 2012. That is the indispensable element of bad faith registration (see UDRPPerspectives.org at section 3.3), and no accumulation of other considerations can substitute for it.
What the dissent offers instead is a tally of the Complainant’s group assets: use of CACTUS since 2002, registrations in multiple jurisdictions, a Madrid Protocol registration, thirty CACTUS-formative domain names, offices on several continents. That is the methodology of a trademark opposition, where priority of use and breadth of a family of marks decide the contest. The Policy asks a different question entirely: not who used the word first or owns more registrations, but whether this registrant acquired this domain name because of this complainant. On that question the dissent is silent.
The structural error underlying that silence is the lumping together of the elements. The dissent announces that it is deciding rights or legitimate interests and registration and use in bad faith “together”, and it treats bad faith as a single, undifferentiated conclusion drawn from the totality of facts and events. But the Policy’s conjunctive requirement is not a drafting accident. Bad faith registration and bad faith use are two distinct concepts, both of which must be proven, and the first must be assessed as of the moment of acquisition (see UDRPPerspectives.org at section 3.1, “And not Or”).
Collapsing the elements into a single totality assessment permits precisely what happened here. An asking price, a public sale listing, and a webpage change made after the Complaint was filed, all conduct from 2025 and 2026, are projected backward onto a 2012 acquisition, without any evidence about 2012 itself. That is the long-discredited theory of retroactive bad faith in a new wrapper. A methodology that never isolates the registration moment never has to confront the absence of evidence about it, which is exactly why the Policy requires that the question be asked separately.
Nor do the individual doctrines invoked by the dissent fill that gap. The dissent relies on Telstra for a “flexible” totality approach, but Telstra’s inference of bad faith rests on stringent conditions: a mark of such strong reputation, and a record such, that no plausible good faith use of the domain name can be conceived. Where those conditions are met, non-use can indeed support an inference of bad faith registration as well as use. Here they were absent. The word, “cactus” is a common English word, the Respondent had a documented business corresponding to the Domain Name, and plausible good faith uses were readily conceivable. Invoking Telstra’s totality language while its limiting conditions are missing is not an appropriate application of the doctrine.
Dissents serve the jurisprudence when they engage the consensus and explain why it should bend. This one proceeds as though the consensus did not exist, finding bad faith in the totality of a record containing no evidence of the one thing the third element requires.
The consensus framework, including the rule that bad faith is assessed as of the registrant’s acquisition and the requirement of proving targeting, exists to ensure that like cases are decided alike, so that parties can rely on established principles rather than on the composition of a particular panel. Had the dissent commanded a majority, the Domain Name would have been transferred away from a registrant who acquired it years before the Complainant existed and before related companies in the group had used the “Cactus Partners” combination, on the strength of a corporate group’s earlier use of “Cactus” for unrelated services. Recent prominence is not proof of targeting at the time of registration. It is fortunate that the contrary view remains a dissent.
Priority is Not Targeting
<tradeview.com>
Panelist: Mr. Luca Barbero (Presiding), Mr. Felipe Claro, and Mr. Nick J. Gardner
Brief Facts: The Complainants, three affiliated companies in the Tradeview group regulated in Malta (MFSA) and the UAE (SCA), provide trading technology and order-routing services for forex, equity, and futures markets under the TRADEVIEW and TRADEVIEW MARKETS marks, operating from <tvmarkets.com> since 2004. They hold numerous trademark registrations across Chile, the EU, Mexico, Brazil, Colombia, and Peru, with the earliest TRADEVIEW-inclusive marks dating to 2017 and standalone TRADEVIEW word marks filed in December 2024. The disputed Domain Name was acquired by the Respondent, a UK company incorporated in January 2024 that operates a domain acquisition, brokerage, and web-development business, for a substantial sum on June 10, 2025. The Respondent has since built the Domain Name into a decentralized cryptocurrency trading platform offering its own “TVX” token, trader leaderboards, and white-label services, supported by press coverage in crypto trade publications and Business Insider predating the Complaint.
The Complainants allege that the Respondent is using the disputed Domain Name in bad faith in order to attempt to attract, for commercial gain, users to its website, by creating confusion with the Complainants. The Complainants further point out that the Respondent started using the disputed Domain Name to offer services identical to the ones of the Complainants after the registration of the Complainants’ trademarks, and alleges that the Respondent’s use of the Complainants’ well-known and widely recognized trademark to identify the same services is not a mere coincidence. The Respondent contends that “trade” and “view” are common descriptive terms used and that it had no awareness of the Complainants’ marks (none registered in the UK). The Respondent further points out that the Complainants have failed to demonstrate that the Complainants’ trademarks are uniquely associated with the Complainants and that the Respondent targeted the Complainants at the time it registered the disputed Domain Name.
Held: The Panel finds that, before notice of the dispute, the Respondent used the disputed Domain Name and the name “TradeView” in connection with a bona fide offering of services, as supported by evidence of pre-Complaint media coverage of its platform and cryptocurrency trading services. The Panel notes that, under the circumstances, the Respondent appears to have registered the disputed Domain Name in view of its combination of the combined English words “trade” and “view”, which are descriptive or suggestive of the Respondent’s business. Moreover, the Respondent has demonstrated that such terms are concurrently used by several third parties, including many operators in the financial trading sector. Furthermore, the Panel finds that the Complainants have failed to demonstrate that the Respondent intended to target its trademarks through use of the disputed Domain Name.
The Complainants provided evidence of ownership of trademark registrations and also demonstrated that they used their trademarks TRADEVIEW and TRADEVIEW MARKETS in connection with its financial trading services prior to the Respondent’s registration of the disputed Domain Name, but, in the Panel’s view, has not proven that its TRADEVIEW mark is well-known also in the Respondent’s country and, above all, that “Tradeview” is a name that users identify exclusively as the Complainants’ trademark. In view of the above and since the Respondent appears to have used the disputed Domain Name to promote its independent business without intending to capitalize on the Complainants’ trademarks, the Panel finds that the Complainants have failed to demonstrate that the Respondent registered and used the disputed Domain Name in bad faith.
RDNH: The Panel is not persuaded that the circumstances of this case justify a finding of Reverse Domain Name Hijacking. The Panel notes that the Complainants filed the Complaint against the disputed Domain Name without addressing the bad faith registration element, but, according to the Respondent’s submissions, the disputed Domain Name was acquired by the Respondent only on June 10, 2025. The Complainants have registrations for the TRADEVIEW mark which predate the acquisition of the disputed Domain Name by the Respondent and the mark is identically reproduced in the disputed Domain Name.
Moreover, the disputed Domain Name has been redirected to a website offering services similar to the ones provided by the Complainants under the TRADEVIEW mark in the financial sector and the Panel also noted the Complainants’ asserted concerns as to the use of the disputed Domain Name for fraudulent activities given the field in which they operate. However, as detailed above, the Panel is of the view that, based on the records, the Respondent, on balance of probabilities, registered and used the disputed Domain Name to promote its independent business and not to defraud users passing off as the Complainants.
Complaint Denied
Complainant’s Counsel: Diaz Donoso & Cia, Chile
Respondent’s Counsel: Bernstein IP, United States
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
Here, the Complainants’ trademark registrations did predate the Respondent’s June 2025 acquisition of the Domain Name, and the Complaint failed nonetheless. Priority is not targeting. A complainant whose marks came first must still prove that the respondent acquired the domain name because of them, and that is where this Complaint failed.
The Panel deserves commendation for deciding the second element affirmatively in the Respondent’s favour rather than bypassing it, a practice this Digest has repeatedly encouraged and which is supported by UDRP Perspectives at Section 2.1. The Respondent demonstrated use of the Domain Name for a bona fide offering of cryptocurrency trading services before notice of the dispute, corroborated by press coverage predating the Complaint. The Panel further found that the Respondent appeared to have selected the name for the descriptive or suggestive combination of “trade” and “view,” terms concurrently used by numerous third parties, including operators in the financial trading sector itself. It also found that the Respondent’s website did not imitate the Complainants’ website in layout, content, colours, or overall appearance. That is a complete second-element analysis, and the Respondent leaves the proceeding with the express vindication that the record warranted.
Crucially, the Panel also avoided a trap that claims of this kind invite. The Complainants argued that because websites are not limited by territorial borders, the Respondent’s use of the Domain Name necessarily infringed their registered trademarks wherever those registrations existed. The Panel did not treat that assertion as defeating the Respondent’s legitimate interest, and rightly so. Whether particular conduct infringes a trademark in a particular jurisdiction is a question for the courts applying the law, territorial scope, and defences of that jurisdiction. It is a different inquiry from whether a registrant has rights or legitimate interests under the Policy. A legitimate interest can exist under the Policy notwithstanding a trademark owner’s assertion of infringement; otherwise, virtually any trademark dispute involving similar commercial activity could be recast as a UDRP case.
The third-element analysis is equally important. Although the Complainants’ registrations predated the Respondent’s acquisition, priority alone did not establish targeting. The Complainants held no registration in the Respondent’s country, did not establish that their mark was well known there, and, critically, could not show that “Tradeview” was a name users identified exclusively with them given the several concurrent third-party uses even within the financial trading sector. The fact that the Respondent operated in an adjacent field — decentralized cryptocurrency trading as compared with the Complainants’ forex and equities services — could not supply the missing inference where the term itself was descriptive or suggestive and demonstrably shared.
As UDRP Perspectives at Section 3.3 explains, the complainant must prove that the respondent intended to target the specific complainant or its mark. Where the attraction to and value of a domain name derives from the nature of the term itself rather than from the complainant, that burden is not discharged merely by pointing to earlier trademark rights.
Careful Even When It Was Easy: A Model Default Transfer
<galgotias.com>
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant, established in 2011, owns and operates Galgotias University in Uttar Pradesh, India, which currently caters for over 15,000 students, including a large body of international students from more than 28 countries. The Complainant owns a number of registered trade marks for GALGOTIAS including Indian trade mark registered on February 24, 2011. The Complainant operates a website at <galgotiasuniversity.edu.in>. The Respondent acquired the disputed Domain Name on or around April 10, 2014 and it resolves to a pay-per-click (“PPC”) website with education-related sponsored links. The Respondent has been found to have registered and used domain names in bad faith in many other cases under the Policy. See, e.g., RTX Corporation v. Nanci Nette, Name Management Group, WIPO Case No. D2025-0880.
Held: Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name. As to paragraph 4(c)(i) of the Policy, the disputed Domain Name has been used for a parking page with PPC links to education-related services. Use of a domain name to host PPC links that compete with or capitalise on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users does not represent a bona fide offering. Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy are relevant in the circumstances of this case. The Panel finds the second element of the Policy has been established.
In the Panel’s view, by using the disputed Domain Name – which the Respondent acquired after establishment of the Complainant’s university and which comprises the Complainant’s trade mark – in connection with a parking page with PPC links relating to the Complainant’s industry, the Respondent has intentionally created a likelihood of confusion with the Complainant’s trade mark in accordance with paragraph 4(b)(iv) of the Policy. The Respondent cannot disclaim responsibility for “automatically” generated PPC links on its website. The fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate) and/or the fact that the respondent itself may not have directly profited, are relevant considerations but do not of themselves prevent a finding of bad faith.
Further, or alternatively, the Panel considers that the Respondent registered the disputed Domain Name in order to prevent the Complainant from reflecting its mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct, in accordance with paragraph 4(b)(ii) of the Policy. The Panel finds that the Complainant has established the third element of the Policy.
Transfer
Complainant’s Counsel: Scriboard Advocates & Legal Consultants, India
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Domain Name is identical to the Complainant’s GALGOTIAS mark. It would have been easy to proceed directly to transfer on the papers. Instead, the Panel issued a Procedural Order directed at the fact that actually matters under section 3.9 of the WIPO Overview 3.1: when the Respondent acquired the Domain Name. The evidence produced established acquisition on or around April 10, 2014, some three years after the University’s establishment and trademark registration, and the Respondent was expressly invited to produce dated evidence if it contended otherwise. It did not. Only then did the Panel assess bad faith as of that acquisition date.
Chronological discipline of this kind is something we have repeatedly praised in respondent-favourable decisions, and it is just as important, and just as commendable, when it precedes a transfer. Establishing the relevant acquisition date before analysing bad faith removes an avoidable source of uncertainty and ensures that the third element is decided on the correct temporal record.
The PPC analysis also merits careful comparison with recent decisions in which registrar-generated links were held not to establish targeting. There is no tension between the two lines of authority. Where a domain name has an independent descriptive or generic significance, automatically generated links may tell a panel very little about why the registrant selected the name. Here, by contrast, the Domain Name was identical to the Complainant’s mark, the Respondent offered no alternative explanation for its selection, and the PPC links related directly to the Complainant’s education industry. In those circumstances, the Panel found that the links capitalized on the Complainant’s mark, and correctly noted that a registrant cannot escape responsibility merely because the links were generated automatically by a registrar or other third party. The distinction is not who supplied the advertising algorithm, but what the Domain Name and resulting links reveal in the circumstances of the particular case.
Finally, the pattern finding under paragraph 4(b)(ii) illustrates the provision working as intended. A complainant does not establish a pattern merely by counting proceedings in which a respondent has appeared; what matters is a demonstrated pattern of abusive registrations. Here, the decision expressly records that the Respondent had been found to have registered and used domain names in bad faith in many other UDRP cases. Against that record, the Panel was entitled to find that the Respondent had engaged in a pattern of preventing trademark owners from reflecting their marks in corresponding domain names.
The Policy protects legitimate domain name investors and condemns serial cybersquatters by asking the same questions of both. This decision asked those questions in the right order: first fixing the acquisition date, then examining the Respondent’s explanation and use, and finally considering the Respondent’s adjudicated history. That is the kind of disciplined analysis that deserves commendation whether the result is denial or transfer.
Escrow Buyer Gets Its Day: Panel Joins the Real Party in Interest
<scavanger.ai> and <scavenger.ai>
Panelist: Ms. Marilena Comanescu (Presiding), Mr. Andrew D. S. Lothian and Mr. Matthew Kennedy
Brief Facts: The Complainant, a German venture-backed AI company, holds a German trademark registration for SCAVENGER filed in January 2024 and registered in September 2024, covering software, e-commerce, and SaaS classes, and operates a business-data-analytics platform at <scavenger-ai.com>. The Respondent, a finance influencer, registered the misspelled <scavanger.ai> in March 2025 as part of building a consumer deal-finding tool, and his company Scale Ventures LLC later acquired the exact-match <scavenger.ai> in March 2026 for USD $49,000, with the misspelled domain permanently redirecting to it. The disputed Domain Name is used in connection with a website that allows users to locate discount merchandise near a US ZIP code and runs a paid subscription funnel.
The Complainant alleges that this is a typosquatting-plus-exact-match cybersquatting targeting its mark, pointing to functional proximity between the parties’ AI-software offerings and unsubstantiated claims of actual customer confusion. The Complainant further alleges that the Respondents and their operation related to the disputed Domain Names is connected to a serial cybersquatter involved in a past UDRP procedure decided against it, and to a broad parked portfolio associated by reverse-WhoIs. The Respondents contend that “scavenger” is a common dictionary word used by numerous unrelated trademark holders (including several in the US), that their business was independently conceived around the “scavenging for deals” concept alongside a sister product called “Penny AI,” and that they had no awareness of the German Complainant or company’s mark when building a US-facing consumer product.
The Complainant’s Supplemental Filing claims to address non-public information provided in the Response, while the Respondent’s Supplemental Filing counterargues that the Complainant’s Supplemental Filing exceeds the substance of the original Complaint, is re-framing its case-in-chief, and makes inaccurate allegations. The Panel notes that the evidence provided in the Response concerns non-public information that was not available to the Complainant at the time of filing of the Complaint. In the view of the Panel, the new facts introduced by the Respondent could not have been reasonably anticipated in the Complaint. Fairness dictates that the Complainant be given a chance to present its arguments and evidence in response, and that the Respondent, in turn, be given an equal opportunity to rebut or reply to such statements
Held: The Complainant claims it establishes targeting here not through trademark reputation but through other specific facts, and does not assert that SCAVENGER is a famous mark, claiming that it need not do so. The Complainant holds a German trademark, registered six months before the registration of the first disputed Domain Name and 18 months before the Respondent’s acquisition of the other disputed Domain Name but with little evidence of reputation. The Respondent provided a plausible alternative justification regarding the selection of the disputed Domain Names and the prior registration of an available alternative spelling. The meaning of “scavenger” and the ccTLD extension “.ai” (widely understood as an abbreviation of “artificial intelligence”) is suggestive of the automated price markdown discovery service offered at the Respondent’s website.
The Complainant failed to demonstrate that the use of the disputed Domain Names with that website is merely pretextual; in fact, the negative customer review that it quoted is from a source that rates the Respondent’s website “Likely Safe.” The Complainant further claims actual confusion based on the section 3.1.4 of the WIPO Overview 3.1, and alleges that the Complainant’s managing director has received numerous messages from prospective clients searching for the Complainant and diverted to the website under the disputed Domain Names. However, it made no attempt to substantiate this claim. Therefore, the Panel does not find it more likely than not that the Respondent was aware of the Complainant and its mark at the time of registration of the disputed Domain Names, or that the Respondent targeted the Complainant when registering the disputed Domain Names.
RDNH: The Panel notes that the Complainant is represented by counsel. It alleged a pattern of bad faith conduct based on the identity of a prior registrant of one disputed Domain Name, but overlooked that the prior registrant’s contact information had been supplied to the Center by itself. This was careless. Bearing in mind the following: the Complainant is the holder of a registered trademark; the registration of the first disputed Domain Name, which is an obviously misspelled version of the word composing the Complainant’s trademark, after the Complainant’s trademark rights accrued; the common control over the disputed Domain Names and the common redirect of these; the functional proximity between the services provided by the Parties; and the actual confusion reported (although not directly evidenced) by the Complainant’s managing director, the Panel finds that the facts do not support a finding that the Complainant acted in bad faith and therefore denies the Respondent’s request.
Complaint Denied
Complainant’s Counsel: kumkar & co. Rechtsanwälte PartG mbB, Germany
Respondent’s Counsel: John Berryhill, Ph.D., Esq., United States
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The most consequential aspect of this decision is procedural. The Domain Name <scavenger.ai> sat in escrow midway through an instalment purchase, registered in the name of a neutral custodian while the buyer paid down a USD $49,000 purchase price. The Panel joined the buyer as a Respondent, finding that it had control over the Domain Name, a legitimate interest in protecting the value of its investment, and a legitimate expectation of ownership upon payment of the agreed price in full. It also redacted the custodian’s identity as immaterial to the proceeding.
That is exactly the right treatment of an instalment transaction. The party with the substantive economic interest and operational control defends the proceeding, while the escrow intermediary is not unnecessarily exposed or treated as the substantive respondent merely because it temporarily appears in the registration record. The Panel’s even-handed admission of both supplemental filings was equally sound. The escrow arrangement and beneficial-control structure were non-public facts that could not reasonably have been anticipated when the Complaint was filed, so fairness required allowing the Complainant to respond and the Respondent to reply.
On the merits, the case follows a now-familiar arc. The Complainant held a German registration for a dictionary word, offered little evidence of reputation, and did not establish that its mark was known in the Respondent’s market. As section 3.2.2 of the WIPO Overview 3.1 recognizes, panels are reluctant to infer knowledge where a mark is neither inherently distinctive nor shown to be known in the respondent’s location.
The Respondent, meanwhile, supplied a coherent alternative explanation. Its principal had developed a following in the deals and personal-finance field and was building an automated price-markdown service. “Scavenger” was suggestive of precisely that concept. The misspelled <scavanger.ai> was registered first because the correctly spelled term was already taken in the major extensions, and the Respondent later negotiated the USD $49,000 purchase of <scavenger.ai>. The Complainant’s assertion of actual confusion was unsupported, and its supposed pattern evidence fell away entirely because it concerned a prior registrant whose contact details the Complainant itself had supplied to the Center — an error the Panel aptly described as “careless.”
The lesson for complainants is one this Digest keeps drawing because the cases keep teaching it: a trademark registration somewhere, standing alone, establishes rights and priority, not targeting. A dictionary word with an obvious suggestive fit to the respondent’s actual business will not ordinarily be inferred to have been selected because of a foreign mark with no demonstrated reputation in the respondent’s market. Nor does functional proximity between two AI-enabled services substitute for evidence that the respondent knew of the complainant and selected the domain name because of it. The Panel ultimately found that it was not more likely than not that the Respondent was even aware of the Complainant when the Domain Names were registered or acquired.
One familiar note: the Panel did not consider it necessary or appropriate to decide the second element, notwithstanding a Respondent that documented its business and development history and supported the negotiation and acquisition of <scavenger.ai> with sworn affidavits from the transaction participants. As UDRPPerspectives.org observes at section 2.1, a respondent whose bona fides have been challenged may deserve the express vindication that the record supports, and this record supported it.
An Infringement Dispute in UDRP Clothing
ForeverLawn, Inc. v. Joshua Apodaca / Artificial Grass Masters, Forum Claim No. FA2607002230463
<k9grassonline.com>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant has sold synthetic turf and related products since 2002 through a nationwide network of over eighty franchisees operating under the FOREVERLAWN brand. Its K9GRASS product line has been in continuous use since 2005, and Complainant obtained a US trademark registration for K9GRASS in 2024 (application filed December 2023), pointing to prior brand recognition including a 2021 NASCAR Xfinity sponsorship. The disputed Domain Name was registered by the Respondent in 2019, years before Complainant’s trademark application, and was activated at the end of December 2023 to promote Respondent’s business, Artificial Grass Masters, an independent Arizona landscaping contractor offering synthetic turf installation, sod, pet areas, drainage, and related services under its own branding.
The Complainant alleges that the Respondent registered and uses the disputed Domain Name in bad faith. The resolving website promotes competing products, which shows that the Respondent had actual knowledge of Complainant’s mark. The Respondent contends that, at all relevant times, it operated Artificial Grass Masters as an independent Arizona landscaping contractor providing a variety of outdoor improvement services. The Respondent further contends that the domain was part of a broader portfolio of descriptive, search-oriented domain names, and denies any affiliation with or impersonation of the Complainant.
Held: The Panel finds that the question of whether or not Respondent’s use of Complainant’s mark is legitimate falls outside of the scope of the present proceedings, and is best resolved in national courts. See Happy State Bank d/b/a GoldStar Trust Company v. Ronny Yakov / CrowdPay.us, Inc. FA 1802648 (Forum Sept. 27, 2018); see also Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
The Respondent presents evidence showing that it has used the disputed Domain Name to market a variety of artificial turf products, none of which purport to be associated with the Complainant. Since, the instant Panel cannot determine whether or not this constitutes trademark infringement, the Panel finds that, on the balance of the evidence before it, the Complainant has failed to satisfy its burden of proving that the Respondent does not use the disputed Domain Name in connection with a bona fide offering of goods or services. Consequently, the Panel finds that Complainant has failed to satisfy its burden of proving that the Respondent has no rights or legitimate interests in the disputed Domain Name pursuant to Policy ¶ 4(a)(ii).
This is of course without prejudice to what may be found by a national court under trademark law, unfair competition law, or other national laws which may be relevant.
Complaint Denied
Complainant’s Counsel: Howard L. Wernow, Sand Sebolt & Wernow, LPA, Ohio, USA
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Panel clearly noted that if the existence of rights or legitimate interests turns on resolution of a legitimate trademark dispute, the respondent must prevail, because such disputes are beyond the scope of the proceeding.
The Complainant’s theory was that the Respondent’s use was not bona fide because it infringed the Complainant’s mark. The Respondent, an independent Arizona landscaping contractor, showed that it marketed a range of turf and landscaping services under its own Artificial Grass Masters branding, without purporting to sell the Complainant’s products or to be affiliated with it. Whether that use nonetheless infringes is a question of trademark law, with its evidentiary record, applicable defences, and governing national law. The Panel rightly held that question belongs in a national court and expressly preserved the parties’ positions there.
The chronology reinforced why this was not an appropriate dispute for summary adjudication under the Policy. The Domain Name was registered in 2019, whereas the Complainant did not apply to register K9GRASS until December 2023, claiming first use from 2005. The Complainant therefore sought to rely on alleged common-law rights predating the Domain Name, while the Respondent disputed that those rights existed at the relevant time. The Panel declined to decide the issue because the Complaint failed under the second element. That restraint is itself significant. Contested common-law priority, the scope of unregistered trademark rights, and competing commercial uses by genuine businesses are precisely the kinds of trademark questions that the Policy’s summary procedure was not designed to try.
The Complainant made out a prima facie case under the second element, but the Respondent answered it with evidence that it used the Domain Name to market its own artificial-turf and landscaping business and did not purport to offer the Complainant’s products. Because deciding whether that conduct nevertheless constituted trademark infringement would have required the Panel to adjudicate the underlying trademark dispute, the Complainant could not carry its burden of proving that the Respondent lacked a bona fide offering of goods or services. The Panel therefore denied the Complaint without reaching bad faith.
The decision joins a line of recent scope rulings covered in this Digest, including the <esimo.com> dismissal (Forum Claim No. FA2606002225200), where competing claims to the same mark likewise placed the substance of the dispute outside the Policy. The through-line is the same: the UDRP addresses abusive cybersquatting, and the true nature of the dispute, rather than the form in which a complainant pleads it, determines whether the Policy is the proper forum. A complainant with a genuine infringement grievance against a genuine competitor has remedies. The UDRP is not a substitute for them, and panels that say so plainly, rather than attempting to resolve trademark questions that a summary proceeding cannot fairly adjudicate, keep the Policy within its intended scope.
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.