When the Resort Moves in Next Door: Is Selling Your Lot to the Obvious Buyer Bad Faith?
This case produced three opinions from three panelists, and the one that got the law right was the concurrence. The Respondent coined the word “quobly” and registered <quobly.com> in March 2014. He built a small inspirational quotes website on it, with AdWords traffic and user sign-ups, and then let the registration lapse in 2015 and again in 2022, re-registering it each time at the ordinary fee rather than paying a redemption charge. His most recent registration, in September 2022, came two months before the Complainant was incorporated and ten months before it adopted the name QUOBLY. In 2024 he put the Domain Name on a for-sale page and contacted the Complainant, and when its CEO asked “how much would you like?”, he answered USD $150,000. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 6.38) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ When the Resort Moves in Next Door: Is Selling Your Lot to the Obvious Buyer Bad Faith? (quobly.com *with commentary)
‣ Malaga Cars, Take Two: Descriptive Use Carries the Day (malagacars.com *with commentary)
‣ DownSlides Is Not SlideShare: Website Content Cannot Supply a Mark the Domain Name Lacks (downslides.com *with commentary)
‣ Bought at Auction, Challenged Within a Week: Why Inference Was Not Enough in HiSmile.com (hismile.com *with commentary)
‣ Two Years Too Late: How the Complainant’s Own Domain Name Undercut Its Case in Perla-Foods.com (perla-foods.com *with commentary)
When the Resort Moves in Next Door: Is Selling Your Lot to the Obvious Buyer Bad Faith?
QUOBLY v. Chris Dolland, WIPO Case No. D2026-2518
<quobly.com>
Panelists: Mr. Assen Alexiev, Mr. Joseph Dalby SC, and Mr. Jeffrey Neuman
Brief Facts: The Complainant is a French quantum-computing start-up, incorporated in November 2022 and renamed “Quobly” in July 2023, holding French (registered in October 2023) and international (December 2023) trademark registrations for QUOBLY. The disputed Domain Name was first registered by the Respondent, a U.S.-based former real estate appraiser and licensed insurance producer, in March 2014 and, after lapsing, was re-registered in 2015 and again on September 10, 2022. It currently resolves to a “For Sale” landing page with a purchaser contact form. Beginning in July 2024, the Respondent contacted the Complainant directly, ultimately quoting an asking price of USD $150,000 in December 2024. The Complainant sent a cease-and-desist letter in August 2025.
The Complainant alleges that the Respondent’s years of passive holding evidenced an intent to resell at a profit. It further pointed to the Respondent’s unsolicited LinkedIn outreach in July 2024, the USD $150,000 offer in December 2024, and a follow-up in March 2025 checking back before approaching an alternative buyer as proof the Domain Name was being held for resale to the trademark owner. The Respondent contends that he registered the Domain Name in March 2014, roughly eight years before the Complainant existed and nearly a decade before it adopted “Quobly”, coining the term as evocative of “quotes/quotations,” unconnected to any third party. The Respondent further points to a 2014 email account, an active website with Google AdWords advertising, and a mailing list as evidence of genuine use.
Held: It seems from the evidence that until 2024, the Respondent did not regard the disputed Domain Name as a particularly important and valuable asset, worthy of payment of the restoration fee for it during the redemption period. By passively waiting for the registration to lapse, the Respondent effectively waived any rights or legitimate interests he may have had in the disputed Domain Name prior to the lapse, and this happened twice. In May and June 2024, the Respondent registered more domain names and initiated contact with the Complainant in July 2024. The correspondence exchanged between the Parties shows that the contact between the Parties was initiated and maintained by the Respondent, and that it made several attempts to sell the disputed Domain Name and to motivate the Complainant to purchase it. This, coupled with the facts that the Respondent did not maintain an active website at the disputed Domain Name after its re-registration in 2022 and acquired in 2024 three other domain names that directly suggest insurance-related activities, leads the Panel to conclude that the Respondent did not consider the disputed Domain Name as a good fit for its insurance business and preferred to sell it. This leads a majority of the Panel to conclude that the Respondent’s attempt to sell the disputed Domain Name to the Complainant at such price was an attempt to unfairly exploit the Complainant’s goodwill for commercial gain. Such conduct does not support a finding that the Respondent has rights or legitimate interests in the disputed Domain Name, although his earlier conduct may have supported a different conclusion, if considered separately.
The current registration of the disputed Domain Name was made by the Respondent on September 10, 2022, while the Complainant was registered in November 2022 and changed its name to “Quobly” in July 2023. The Complainant’s domain name <quobly.io> was registered on June 21, 2023, and its QUOBLY trademark was first applied for on June 23, 2023 and registered on October 13, 2023. For a majority of the Panel the above plainly means that the Respondent could not have registered the disputed Domain Name in bad faith targeting the Complainant or its QUOBLY trademark, because the Complainant did not exist and had no trademark rights at the time that the Respondent registered the disputed Domain Name. WIPO Overview 3.1, section 3.8.1. It is clear that the Respondent registered the disputed Domain Name without knowledge of the yet non-existent Complainant, and, even if it has registered it with an idea to later resell it to anyone who wished to buy it (which the Respondent denies), that was just an ordinary investment and the taking of a commercial risk that no one may wish to buy it and the investment would not bring profit. This is not bad faith under the Policy, as the critical element of taking an unfair advantage of or abusing a complainant’s trademark is missing. See section 3.1. of the WIPO Overview 3.1. Therefore, a majority of the Panel finds that the Complainant has failed to establish that the disputed Domain Name was registered in bad faith. However, the Respondent’s conduct after the registration of the disputed Domain Name in 2022 leads a majority of the Panel to other conclusions on bad faith use.
RDNH: The majority of the Panel does not consider that the Complainant has attempted to mislead the Panel by mischaracterising its correspondence with the Respondent. Although the Complainant did not fully present the correspondence that it exchanged with the Respondent in 2024 – 2025, the omissions are not material and do not appear to have been intended to mislead, when considering the whole correspondence. Also, a finding of RDNH is an equitable remedy, so it is justified to provide it only to a party that comes to the proceedings in equity as well. No one can benefit from their own wrongdoing. The Respondent’s bad faith attempt to sell the disputed Domain Name to the Complainant undermines the Respondent’s position as a party itself acting in an equitable manner, at least in this proceeding
Concurring Opinion (Jeffrey Neuman): This Panelist agrees on identity and on the failure of bad-faith registration but disagrees with the majority everywhere else. On rights or legitimate interests, he finds that the Respondent’s contemporaneous 2014 evidence, the AdWords campaign, more than a thousand ad clicks, user signups, and the active email account credibly establish an independent, pre-existing reason for choosing the term, and argues that the lapses did not erase that evidentiary weight. He also credits the 2024 insurance-related preparations – licensing, related domain registrations, and a WordPress installation – as further support, and reasons that deciding to sell later does not by itself destroy a legitimate interest absent proof that the sale traded on the Complainant’s goodwill, which he finds lacking.
On use, he reads paragraph 4(b)(i) as requiring an intent, at registration, to sell specifically to the trademark owner or a competitor, not merely a later, general willingness to sell for profit and views the negotiation as aggressive but not trademark-targeting, especially since the Complainant’s own CEO had invited the price quote. He would additionally have found RDNH, reasoning that the Complainant knew that the 2022 registration predated both its own existence and its mark, omitted the fact that its CEO had solicited the price, and could point to no facts bringing the case within any exception for domains registered before a complainant’s rights arose, explicitly rejecting the majority’s “clean hands” rationale for withholding RDNH as focused on the wrong party’s conduct.
Dissenting Opinion (Joseph Dalby SC): This Panelist agrees only on identity and on declining RDNH, dissenting from the rest. On rights or legitimate interests, he reasons that a lapse in registration should generally cut off reliance on pre-lapse use unless preparation or use continued afterward, leaving only the post-September-2022 window as relevant and on that narrower record finds the Respondent’s insurance-platform evidence unpersuasive, doubting whether the WordPress installation was ever genuinely built for an insurance product rather than just a resale landing page. On bad-faith use, he agrees with the majority; he disagrees most sharply on bad-faith registration. Reading WIPO Overview 3.1’s “exceptional case” standard for domains predating a complainant’s rights as defining the required circumstances, not urging restraint, he relies on the lack of legitimate interest, credible good-faith explanation, and the established bad-faith use to conclude that the Respondent registered the Domain Name in September 2022 intending to resell it above cost. This satisfies paragraph 4(b)(i), despite the Complainant’s not yet existing. He would have ordered the transfer.
Complaint Denied
Complainant’s Counsel: GALIA PARTNERS, France
Respondent’s Counsel: ESQwire.com PC, United States
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This case produced three opinions from three panelists, and the one that got the law right was the concurrence. The Respondent coined the word “quobly” and registered <quobly.com> in March 2014. He built a small inspirational quotes website on it, with AdWords traffic and user sign-ups, and then let the registration lapse in 2015 and again in 2022, re-registering it each time at the ordinary fee rather than paying a redemption charge. His most recent registration, in September 2022, came two months before the Complainant was incorporated and ten months before it adopted the name QUOBLY. In 2024 he put the Domain Name on a for-sale page and contacted the Complainant, and when its CEO asked “how much would you like?”, he answered USD $150,000.
The presiding panelist denied the Complaint because the Domain Name could not have been registered in bad faith. Along the way, however, he found that the Respondent had no rights or legitimate interests, that he had used the Domain Name in bad faith, and that the Complainant had not engaged in RDNH. The concurring panelist agreed with the result and disagreed with all three of those findings. The dissenting panelist would have ordered a transfer.
The composition of the majority shifted with the issue. On bad faith registration and on the result, the majority was the presiding and concurring panelists. On the second element, on bad faith use and on RDNH, it was the presiding and dissenting panelists. Every finding adverse to the Respondent that carries the label “majority” was therefore made with the concurrence of the panelist who would have transferred the Domain Name. Readers weighing those findings should keep that in mind.
The majority’s first difficulty arose on the second element, where it held that the Respondent’s two lapses had cost him his legitimate interest: “by passively waiting for the registration to lapse, the Respondent effectively waived any rights or legitimate interests he may have had in the disputed domain name prior to the lapse, and this happened twice.” I do not think the Policy supports a doctrine of waiver by lapse. Paragraph 4(c) asks what the respondent did with the domain name and why he chose it. A registrant who declines to pay a redemption fee and re-registers the same name at the standard rate a few weeks later has made a sensible economic choice, not an abandonment, and the 2014 records remain what they were: contemporaneous proof that he coined the term for a quotations business and used it for that purpose years before the Complainant existed.
The concurrence saw this clearly. The lapses “interrupted the registrations,” but “the prior use remains relevant to the Respondent’s independent reason for selecting and reacquiring the disputed domain name.” The dissent went further than the majority and treated the pre-2015 evidence as “inadmissible,” reasoning that because the Center cannot register a complaint against an expired domain name, “the Policy ceases to apply on expiration.” That confuses an administrative practice with a rule of evidence. Whether a complaint could have been filed against an expired name in 2015 has nothing to do with whether a 2014 website shows why the same person chose the same name in 2022.
The majority’s second and more consequential difficulty concerned the price. Its central finding, on which both its second element and bad faith use conclusions depended, was that the USD $150,000 figure was “more likely than not based on the Respondent’s expectations about the possible attractiveness that the disputed domain name may have particularly for the Complainant,” rather than on its “inherent value or attractiveness” to any third party, and that seeking that price was therefore “an attempt to unfairly exploit the Complainant’s goodwill for commercial gain.”
I respectfully disagree, because this is not how assets are priced. Suppose I buy a vacant lot, hold it for ten years, and a resort then goes up next door. My lot is now worth more to the resort than to anyone else. If I sell it to the resort for what the resort will pay, I have not exploited the resort’s goodwill. I have sold my property to the buyer who wants it most, which is what markets do. The Respondent registered a coined term before the Complainant existed. The Complainant then chose that term as its brand and built its business on the .io. That the .com became valuable to the Complainant is the Complainant’s doing. As UDRP Perspectives, §3.5 (Setting a Price and Offering for Sale) explains, the Policy is concerned with a price that reflects trademark value where the domain name was registered to target the mark. Where the registration long predates the mark, a high price to the one buyer who most wants the name is ordinary commerce. Nor does it matter that the Respondent had not previously treated the Domain Name as “a particularly important and valuable asset.” Assets change in value, and the Complainant’s arrival is what changed this one.
There is a deeper inconsistency in the majority’s approach. The Policy permits the registration of domain names as investments, and the majority itself said so in finding no bad faith registration: holding a name for possible resale is “just an ordinary investment and the taking of a commercial risk.” But an investment that can never be sold is not an investment. If a registrant may lawfully hold a domain name for resale, he must be able to find a buyer, and a company that has since adopted the term is an obvious one. A reading of the Policy that permits the holding but treats reaching out to the obvious purchaser as bad faith takes away with one hand what it grants with the other. A registrant can, of course, acquire a name innocently and later use it abusively toward a trademark owner that has since arrived, and the Policy’s separation of registration and use exists for that case. But knowledge of a later-arising mark, an approach to its owner and a high asking price do not, without more, turn an independently acquired domain name into abusive use. Here there was nothing more: the Respondent made contact and, when asked, named a price.
The concurrence framed the question well:
“The narrower question is whether a registrant who independently selected, registered, and used a domain name before the complainant existed necessarily loses any legitimate interest upon deciding to sell it. In my view, he does not, absent sufficient evidence that the sale trades upon the complainant’s goodwill.”
The Domain Name was never used to impersonate the Complainant, advertise competing quantum computing services, display advertising keyed to its field, or mislead users as to affiliation. As the concurrence put it, “seeking to maximize the price from a particularly interested prospective purchaser may be aggressive commercial conduct, but it is not necessarily bad-faith use under the Policy.”
The updated WIPO Overview 3.1, section 2.10 bears on this as well. It records that panels have accepted that “aggregating and holding domain names (usually for resale) consisting e.g., of acronyms, dictionary words, common phrases, or unique/catchy or memorable terms (alone or in combination) can be bona fide and is not per se illegitimate under the UDRP where the respondent can show that the purpose of the registration was not to target a trademark.” Section 2.10.1 rightly cautions that a bare claim of brandability may not be enough. The concurrence did not rest on brandability. It rested on a coined term, a 2014 website, email accounts and a chronology, which is a good deal more than most respondents can show.
On bad faith registration the majority was right, and clearly so. It found that the Respondent “could not have registered the disputed domain name in bad faith targeting the Complainant or its QUOBLY trademark, because the Complainant did not exist and had no trademark rights at the time,” and added:
“It is clear that the Respondent registered the disputed domain name without knowledge of the yet non-existent Complainant, and, even if it has registered it with an idea to later resell it to anyone who wished to buy it (which the Respondent denies), that was just an ordinary investment and the taking of a commercial risk that no one may wish to buy it and the investment would not bring profit. This is not bad faith under the Policy, as the critical element of taking an unfair advantage of or abusing a complainant’s trademark is missing.”
Exactly right. That is the principle recorded in WIPO Overview 3.1, section 3.8.1 and in UDRP Perspectives, §3.2 (Trademark Rights Must Predate Domain Name Registration), and it disposed of the Complaint.
The majority nonetheless went on to find bad faith use, on the price reasoning already discussed, and that finding had a consequence. The majority gave several reasons for declining RDNH, among them that the Complainant could not independently verify the Respondent’s claimed 2014 use before filing and that its omissions from the correspondence were not material. But it also reasoned that RDNH is “an equitable remedy” available only to a respondent with clean hands, and that the Respondent’s “bad faith attempt to sell” disqualified him. A finding on use that was unnecessary to the result thus became a reason for excusing a Complaint that, on the majority’s own analysis, could never have succeeded.
The concurrence’s answer is the better one. Paragraph 15(e) “focuses on whether the Complaint was brought in bad faith,” and an RDNH declaration “neither transfers rights nor awards damages, and the rule does not condition it on equitable relief to the respondent.” This Complainant knew from the public record that the September 2022 registration predated its own incorporation. It admitted it knew the Domain Name was taken when it chose the name. It received a warning from the Respondent’s counsel before filing. It pleaded that the Domain Name had never been used. And it presented the correspondence without mentioning that its own CEO had asked for the price. The concurrence would have declared RDNH, and there is a strong case for that view (see UDRP Perspectives, §4.2 (When a Finding of RDNH is Appropriate)).
That leaves the dissent, which accepted that the Complainant did not exist when the Domain Name was registered and that the Respondent “could not target” it, yet found bad faith registration anyway. It inferred from the 2024 asking price, the supposed absence of legitimate interests and inconsistencies in the Respondent’s evidence “that the intention at the point of registration to sell the disputed domain name was for valuable consideration in excess of the Respondent’s documented out-of-pocket costs,” described this as “exceptional circumstances,” and dismissed the timing argument as “a technicality.”
This cannot be reconciled with the Policy. Paragraph 4(b)(i) is not satisfied by a general intention to sell at a profit. It requires registration “primarily for the purpose of selling” to “the complainant who is the owner of the trademark or service mark or to a competitor of that complainant.” An intent to sell a coined term to whoever might one day want it is not an intent to sell to a trademark owner who does not yet exist. The “exceptional cases” described in section 3.8.2 are cases in which the respondent anticipated nascent rights, such as a registration on the eve of an announced merger. They are not cases in which a panel reasons backward from 2024 conduct to a 2022 registration made before the Complainant was born. The concurrence answered the point precisely: “the circumstances in paragraph 4(b) are nonexclusive, but that does not create a free-standing concept of generalized bad faith divorced from trademark targeting,” and “later conduct cannot establish that the Respondent had the then-nonexistent Complainant, its unadopted mark, or a competitor in mind at registration.”
The requirement that trademark rights predate the registration is not a technicality. It is the line that separates the Policy from a general tribunal for handing domain names to whoever wants them most. Andrew Allemann of Domain Name Wire made the same point on September 15, 2026: under the dissent’s reading, “if you register a domain intending to sell it to any future company that might adopt the name, that’s registration in bad faith.” That is where the dissent’s logic ends up, and it would condemn every domain investor on earth.
I will close with a question for the providers rather than a criticism of any individual. According to UDRP.Tools, the dissenting panelist has fifteen prior decisions, thirteen as sole panelist, and the most recent from 2013. If that record is complete, this was his first appointment in thirteen years, and his first on a contested three-member panel involving a registrant with a documented prior interest. The authorities cited in his earlier decisions run from 2000 to 2006.
The Policy has moved a long way since then, above all in the treatment of registrants who acquire coined or brandable terms for their own purposes, and in the position of most panels that a mark postdating the registration ordinarily forecloses bad faith registration. The dissent cites the current Overview, so the text was in front of him; the difficulty lies in the application. Providers who maintain rosters over decades might reasonably ask whether a panelist who has not sat in over a decade should be appointed to a three-member panel in a case like this one without some means of confirming familiarity with the intervening case law.
Malaga Cars, Take Two: Descriptive Use Carries the Day
Bardón y Rufo 67, S.L. v. Hans Lempka, WIPO Case No. D2026-2875
<malagacars.com>
Panelists: Mr. Douglas M. Isenberg (Presiding), Mr. José Carlos Erdozain, and Mr. Nick J. Gardner
Brief Facts: The Complainant claims that it has continuously and notoriously used the MALAGACAR trademark in the Spanish market for more than 20 years and is the legitimate holder of the principal domain name <malagacar.com>, through which it markets its vehicle rental services. It owns a trademark registration in Spain for the mark MALAGACAR.COM, registered on July 18, 2002, for use in connection with “car rental without a driver.” The disputed Domain Name was registered on August 22, 2018, by the Respondent, a domain name investor. It redirects to a website at <localrent.com/en/spain/malaga>, which contains the headline “Car rental in Malaga.” The Respondent claims to be “active in the domain investment industry since at least 2008, with a specific focus on the travel and tourism sector since 2011”; that he “identifies geographic combinations of real place names with travel service descriptors, acquires them through backorder services, and monetises them through affiliate programmes including Travelpayouts, a mainstream and widely-used travel affiliate network.”
The Complainant alleges that the disputed Domain Name was configured to redirect traffic to an online vehicle rental portal that operates in direct competition with the Complainant in the Málaga market”, which “constitutes a paradigmatic example of bad faith use within the meaning of Paragraph 4(b)(iv) of the Policy”. The Respondent contends that he registered and used by the Respondent as a descriptive geographic travel domain consistent with his established global portfolio strategy; redirecting the disputed Domain Name to a mainstream car rental booking platform […] constitutes a bona fide offering of goods or services in connection with the domain name’s descriptive geographic meaning, well before any notice of this dispute. The Respondent requests a finding of RDNH because the Complainant failed to disclose the prior UDRP case WIPO-D2012-0941 in its Complaint, in which it lost on the ground that “Malaga cars” is a descriptive/generic expression.
Held: The facts of this proceeding are atypical because, despite Complainant’s registration of the MALAGACAR.COM trademark, the Respondent is using the disputed Domain Name for its descriptive meaning. Although the Complainant refers to the “renown” of the MALAGACAR.COM trademark, it has provided no evidence to support this assertion or otherwise demonstrate that the trademark is well known. This Panel considers the decisions in Erase Technologies and Viajes Holidaysinspain.com, cited by the Respondent, to be directly relevant here. Furthermore, the Panel agrees with the Respondent that a previous UDRP decision in a case also filed by the Complainant concerning <malaga-cars.com>, which the Complainant did not cite and, therefore, did not attempt to distinguish from the instant case, is especially relevant here as well. The panel in that matter concluded that “use of ‘Malaga cars’ in a descriptive or generic sense is not illegitimate, since it is a common name in English for the motor vehicles offered for rent in the Malaga area, the language in which the website is written under the disputed Domain Name” (unofficial translation).
The Panel acknowledges that registering a domain name containing a complainant’s trademark and then using it in connection with the same goods or services associated with the trademark will often create a likelihood of confusion and, therefore, bad faith. However, again, the facts here are not typical. In addition to the disputed Domain Name’s descriptive nature, the Respondent submitted a signed declaration. Given the Policy’s streamlined proceedings, the Panel cannot question its veracity. Moreover, given the descriptive nature of the words that comprise the disputed Domain Name, the Respondent’s practice of registering tourism-related domain names that consist of a city name plus an activity, and Complainant’s registration of a single relevant trademark in a country other than where the Respondent is located, the Respondent’s declaration is credible. While the Panel recognizes that “domainers” such as the Respondent may be required to exercise a higher duty of care, “the nature of the domain name” is especially relevant here.
RDNH: This is an unusual case given that, at first glance, it appears appropriate for the Policy in light of the facts that the Complainant owns a trademark registration, the disputed Domain Name is nearly identical to the trademark and the Respondent uses the disputed Domain Name in connection with the same goods or services associated with the trademark. But, of course, the descriptive nature of the disputed Domain Name means that it is a very weak trademark, and the Complainant presented no evidence that the Respondent knew, or should have known, of the trademark when it registered the disputed Domain Name. Further, the Complainant knew, and did not disclose that it had lost a previous proceeding under the Policy involving an almost identical domain name <malaga-cars.com> and facts.
Despite the foregoing, the Panel recognizes that many decisions evaluating the applicability of RDNH have concluded that it is applicable where it is apparent that the complaint should not have been filed in the first instance because it was obvious that there was no likelihood of success. Here, despite the weaknesses in the Complaint and the Panel’s decision in this case, the Panel does not conclude that the Complainant should not have been filed. As a result, the Panel does not find that the Complaint has been brought in bad faith in an attempt at RDNH.
Complaint Denied
Complainant’s Counsel: Trebia Abogados, Spain
Respondent’s Counsel: Cylaw Solutions, India
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
In 2012 this Complainant brought a UDRP complaint against <malaga-cars.com> and lost, the panel finding that “Malaga cars” is a common English description of the motor vehicles offered for rent in the Malaga area. Fourteen years later, represented by the same law firm, it filed against <malagacars.com>, the same domain name without the hyphen, and did not mention the earlier case. The three-member Panel denied the Complaint on the second and third elements, and its reasoning on both is a model of how a geographic-plus-descriptive domain name should be analysed. Its treatment of RDNH is noted below.
The Complainant holds a single Spanish registration for MALAGACAR.COM, dating from 2002, for car rental. The Respondent is a Guernsey-based investor who has specialised in travel domain names since 2011, acquiring city names paired with travel descriptors through backorder services and monetising them through the Travelpayouts affiliate network. He produced a portfolio of 24 such names, all following the same formula, and a notarised declaration that he had no knowledge of the Complainant or its mark when he registered the Domain Name in August 2018. The Domain Name redirects to a Localrent.com page for car rental in Malaga.
The Panel found the first element satisfied, which the Respondent conceded, and then turned to the second. It accepted that using a domain name confusingly similar to a mark for the same services is not usually bona fide, but held that the facts here were “atypical because, despite Complainant’s registration of the MALAGACAR.COM Trademark, Respondent is using the Disputed Domain Name for its descriptive meaning.” Redirecting a domain name made up of “malaga” and “cars” to a site offering car rental in Malaga was, in the Panel’s words, “nothing more than exploit[ing] the descriptive meaning of the Disputed Domain Name. This is both bona fide and fair.” The Panel relied on Erase Technologies, LLC v. Web Presence LLC, WIPO Case No. D2022-3797 and Viajes Holidaysinspain.com, S.A. v. NORTAQ, Ltd., WIPO Case No. D2006-1480, and on the Complainant’s own 2012 loss in Bardón y Rufo 67, S.L. v. ColDen Communications, WIPO Case No. D2012-0941, which it described as “especially relevant” and which the Complainant “did not cite and, therefore, did not attempt to distinguish.”
On bad faith the Panel was equally clear. It accepted the Respondent’s declaration as credible, noting that “given the streamlined nature of proceedings under the Policy, the Panel is not in a position to question the veracity of Respondent’s declaration,” and that the descriptive nature of the words, the Respondent’s established practice of registering city-plus-activity names, and the Complainant’s single registration in a country other than the Respondent’s all supported it. It drew on We Buy Cars (Pty) Limited v. Ray Thompson, WIPO Case No. D2026-1231, where a United States registrant of <webuycarscashfast.com> was found to have registered a plain description of a car-buying business without any knowledge of a South African company using the same phrase. The Complainant, for its part, had asserted “renown” and offered nothing to support it. This is the approach recorded in WIPO Overview 3.1, section 2.10 and in UDRP Perspectives, §3.3 (Targeting), and the Panel applied it well.
On RDNH, the Panel set out the section 4.16 factors and noted that the mark is “very weak,” that the Complainant offered no evidence of the Respondent’s knowledge or of the mark’s strength, and that the Complainant “knew – and did not disclose – that it had lost a previous proceeding under the Policy involving an almost identical domain name and facts.” It declined to declare RDNH because it did not consider the Complaint one that “should not have been filed.” Other panels, applying the “ought to have known” limb of section 4.16 to a complainant that had lost fourteen years earlier on the same phrase and filed again without new evidence, might have reached a different conclusion (see UDRP Perspectives, §4.2 (When a Finding of RDNH is Appropriate)). The Panel did observe that the Complainant “should have” disclosed the 2012 decision and attempted to distinguish it.
The Respondent in this case was represented by Cylaw Solutions, whose principal, Ankur Raheja, is the Editor in Chief of this Digest.
DownSlides Is Not SlideShare: Website Content Cannot Supply a Mark the Domain Name Lacks
Scribd, Inc. v. Tuan Le, WIPO Case No. D2026-3439
<downslides.com>
Panelist: Mr. Stefan Bojovic
Brief Facts: The Complainant operates the SlideShare platform, which allows users to host and share professional content, including presentations and documents, and uses <slideshare.net> (registered: April 4, 2006) as its principal platform website. The Complainant, along with its affiliates, is the owner of the SLIDESHARE trademark which is protected by various trademark registrations, including the US registration for SLIDESHARE, registered on September 25, 2012. The disputed Domain Name was registered on January 2, 2026 and it resolves to a “SlideShare Downloader” website that purportedly lets users download presentations from the Complainant’s SlideShare platform without registration or subscription. Users can enter or paste a SlideShare URL to download presentations in PDF, PPT, PPTX, or ZIP format.
The Complainant alleges that the disputed Domain Name is confusingly similar to the Complainant’s SLIDESHARE trademark because it incorporates the identical or nearly identical, dominant, and recognizable first portion, “slides,” of the Complainant’s trademark. The Complainant further alleges that the content of a website may indicate a respondent’s targeting of a specific trademark through its choice of the disputed Domain Name and the context in which the domain name is being used. The Complainant also alleges that the disputed Domain Name is not being used in connection with a bona fide offering of goods or services, as it currently offers no services or goods of its own but instead provides free and unauthorized access to copyrighted works that would otherwise be accessible in full only by paying for the Complainant’s services.
Held: The Panel notes that the Domain Name incorporates the term “slides”, reflecting SLIDESHARE’s first component plus the initial letter of its second, in combination with the term “down”, as a reference to the downloader function purportedly offered on the website to which it resolves. The Panel is aware that the portion “slides” can be perceived as a dictionary word in English, however, the circumstances of this case indicate that the Respondent’s intention was to use this portion as the reference to the Complainant’s SLIDESHARE trademark and the SlideShare platform. Under similar circumstances, similar conclusions regarding confusing similarity of the “slides” element with the Complainant’s SLIDESHARE trademark have been drawn by a number of previous panels (see for example Scribd, Inc. v. om parkash, Soccer Gears Store, WIPO Case No. D2026-1728, Scribd, Inc. v. Host Master, Njalla Okta LLC, WIPO Case No. D2026-1729).
From the resolving website, Internet users can circumvent the subscription required to access the services offered on the Complainant’s platform, which does not constitute a bona fide offering of services. Panels have held that the use of a domain name for illegitimate activity (here, the alleged circumvention of the subscription required for the Complainant’s services, which may be perceived as a form of fraud) can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.1, section 2.13.1. Furthermore, the content of the website to which the disputed Domain Name resolves leaves no room for doubt that the Respondent was aware of the Complainant and its trademark and demonstrates that the Respondent had the Complainant and its trademark in mind when registering the disputed Domain Name. Moreover, such use of the disputed Domain Name, which is specifically directed at the Complainant’s SLIDESHARE trademark and the SlideShare platform, further supports a finding of bad faith.
Transfer
Complainant’s Counsel: IPLA, LLP, United States
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Complainant operates the SlideShare platform and holds a United States registration for SLIDESHARE. The Respondent registered <downslides.com> in January 2026 and used it for a website titled “SlideShare Downloader,” which invites users to paste a SlideShare URL and download the presentation without a subscription. The Respondent did not respond, and the Panel ordered transfer. The result is open to question, because the Complaint appears to fail at the first element, and the way the Panel got past that element illustrates how loosely confusing similarity can be applied.
The first element asks whether the domain name is identical or confusingly similar to the mark. Here the comparison is between “downslides” and SLIDESHARE. The two share the word “slide” and nothing else. The domain name does not contain “share,” and the mark does not contain “down.” On the side-by-side comparison that panels generally apply, as summarized in WIPO Overview 3.1, section 1.7, the mark is not recognizable within the domain name.
The Panel acknowledged that “slides” is a dictionary word but found that “the circumstances of this case indicate that the Respondent’s intention was to use this portion as the reference to the Complainant’s SLIDESHARE trademark.” Those circumstances were the website, which displayed the SLIDESHARE mark and offered a service directed at SlideShare content. On that basis, and citing four earlier decisions involving the same Complainant, the Panel found the first element satisfied.
Panels have on occasion looked to website content at the first element, and section 1.7 records that “in some cases” a panel “may find that the broader case context (such as website content) supports a finding of confusing similarity.” The Panel was therefore not without a basis for consulting the site. The question is how far that exception reaches. The decisions applying it have generally involved a mark that is present in the domain name in an altered form, such as a misspelling, translation or truncation, with the website confirming that the alteration was aimed at the mark. The content supports a recognizability the string already suggests. Section 1.15, which addresses the point directly, speaks of website content confirming that the respondent “seeks to target a trademark through the disputed domain name.” Here the string suggests nothing of the kind, and whatever targeting the website showed was through the website, not the domain name. “Downslides” is a plain description of downloading slides.
What the Panel used the website to establish was that the Respondent meant “slides” as a reference to SLIDESHARE rather than to slides. That is a finding about intent, and intent is the subject of the second and third elements. Carried into the first element, the reasoning would make any domain name containing a word that also appears in a mark confusingly similar to that mark whenever the registrant’s website refers to the mark owner. Applied that way, confusing similarity is almost meaningless as a requirement, and the first element ceases to be a threshold at all (see UDRP Perspectives, §1.8 (Confusingly Similar)).
The Complainant argued that “slides” is the “dominant and recognizable first portion” of SLIDESHARE, and the Panel’s finding that the mark is “recognizable within the disputed domain name” tracks the language of section 1.7, which records that a domain name will normally be found confusingly similar where “at least a dominant feature of the relevant mark is recognizable” in it. The dominant feature principle has a sensible core. A domain name that reproduces the distinctive part of a mark and drops a descriptive tail still contains what makes the mark a mark. It has no purchase on a mark whose parts are both descriptive. SLIDESHARE is “slide” plus “share,” each describing the service, and the United States registration issued under Section 2(f) on a showing of acquired distinctiveness in the combination (see UDRP Perspectives, §1.4 (Descriptive Marks)). Neither word dominates the other, and the word the Complainant claims as dominant is the one that describes the goods themselves, the part of the mark over which it has the weakest claim.
The decision shows the strain. The Panel reasoned that “slides” reflects “SLIDE” together with “the initial letter of the second component ‘SHARE’,” which is an argument about letters, not about a feature anyone would recognize as the mark. If “slide” is the dominant feature of SLIDESHARE, then “share” is the dominant feature of every SHARE-formative mark, and the first element is satisfied by any domain name containing one word of a two-word mark. On that logic, a business selling burgers at YUMMYBURGERS.com using a domain name that included “burger” would be using a name confusingly similar to BURGER KING because both contain “burger,” and BURGER KING, unlike SLIDESHARE, is an inherently distinctive mark.
Nor does the website’s focus on SlideShare content change the analysis. That the Respondent built a service around the Complainant’s platform and displayed its mark shows that it had the Complainant in mind, which bears on the second and third elements and may well have made them out. It does not make the string “downslides” resemble SLIDESHARE. Whatever may be said of a tool that extracts content from a platform in circumvention of its terms, and nothing here is said in its defence, the first element asks about the domain name, not the website. The temptation to stretch the first element is greatest where the respondent’s conduct is unattractive, and that is precisely when a threshold requirement needs to hold.
The decision cites four earlier transfers obtained by the same Complainant against similar “slides” domain names, all apparently undefended. A line of uncontested decisions applying the same reasoning can come to look like established practice, and this decision adds a fifth. Panels considering the next such case may wish to ask whether the mark is recognizable in the domain name before turning to the website, rather than after, and to deny the complaint at the first element when it is not.
Bought at Auction, Challenged Within a Week: Why Inference Was Not Enough in HiSmile.com
HiSmile IP Pty Ltd v. Evgenii Astarov, WIPO Case No. D2026-2531
<hismile.com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Australian Complainant owns and licenses the HISMILE trademark and the “Hismile” brand of teeth-whitening and oral-care products. The Complainant submits that its official website uses the domain name <hismileteeth.com>, which was registered on November 4, 2014. The Complainant owns various trademark registrations for the HISMILE mark, the earliest being an Australian registration dated March 2, 2015, as well as international registrations extending to numerous jurisdictions, including Ukraine, registered in September 2024. The Respondent, a Ukraine-based individual, acquired it at a competitive expired-domain auction for USD $12,201 in early June 2026. The Domain Name briefly resolved to a Registrar-default PPC parking page displaying sponsored links, some for competing teeth-whitening products, before going inactive. The Respondent maintained it acquired the Domain Name for a planned crypto “community token” project, pointing to an undated Brandbook and a portfolio of other crypto- and wallet-themed domain names.
The Complainant alleges that HISMILE is a distinctive, well-known mark associated with the Complainant’s oral-care brand, that the Respondent acquired, through a competitive expired-domain name auction, and it can be inferred that the Respondent acquired the disputed Domain Name with knowledge of, and in order to target, the Complainant’s mark. The Complainant further adds that monetizing a Domain Name identical to the Complainant’s mark through such industry-specific PPC advertising is a paradigm example of bad-faith use and the Respondent is responsible for this content even where the links are automatically generated by the parking service. The Respondent contends that it acquired the disputed Domain Name because of its independent positive and brandable meaning and that its intended use of the disputed Domain Name is consistent with its broader practice of acquiring brandable domain names for contemplated digital, crypto, token, wallet and Web3-related projects.
Held: The Respondent asserts that it acquired the disputed Domain Name for a planned international digital/crypto community-token project, though it offers no credentials, market rationale, or evidence of prior steps toward establishing a token. Its principal supporting evidence is the HISMILE 2026 Brandbook, a short, largely graphical document bearing only the year 2026, with no version history and no clear indication of who prepared it or for whom. The Respondent also cites other cryptocurrency-related domain names it holds, though these are descriptive of crypto activities in a way the disputed Domain Name is not, making it not obviously related in the same sense. The Panel notes WIPO Overview 3.1, section 2.2, allows that business plans take time, so immediate evidence isn’t always required, though delay can bear on whether preparations are genuine. Here, the Complaint was filed only a week after the Respondent’s acquisition. Weighing the evidence in the balance, the Panel finds this issue to be something of a close call. Given that its finding in the third element assessment below is determinative of the dispute, the Panel need not reach a definitive conclusion on this topic.
The Panel notes that the Respondent acquired the disputed Domain Name at auction and that it was immediately placed on a PPC parking page featuring links targeting the Complainant’s trademark and pointing to the Complainant’s competitors. The present Panel adopts and follows the reasoning in Haemonetics Corporation v. Brent Bristow, WIPO Case No. D2024-2838. Although the disputed Domain Name was used in bad faith while the PPC content remained online, the content appears to have been inadvertent, of very short duration, and corrected swiftly once brought to the Respondent’s attention. For the registration in bad faith to be made out, in the particular circumstances of this case, there needs to be other evidence of targeting than merely the existence of the automated PPC. The Panel further rejects the Complainant’s inference that the Respondent must have known of the mark, noting a third party had independently used “hismile” for an unrelated dental practice for years, that other HISMILE marks exist globally, and that the Complainant offered no search-engine or other evidence its brand would likely have reached the Respondent.
The Panel also declines to hold the Respondent to a heightened “professional domain investor” standard, given there is no evidence that the Respondent is engaged in acquiring domain names as products in and of themselves, typically for resale at a profit, or that the disputed Domain Name or any of the Respondent’s other domain names have been offered for sale, in an attempt to realize any such investment. While the circumstances on this topic also represent something of a close call, given the substance of the Complainant’s trademark portfolio and its considerable follower count on social media, the Panel has reached the conclusion that the Complainant has not proved that the disputed Domain Name was registered with the Complainant in mind and with intent to target it, whether on the basis of willful blindness or otherwise. The Panel considers it sufficiently plausible that the disputed Domain Name was acquired for a crypto token project that would not cut across the Complainant’s trademark rights, and that the Respondent’s case cannot be rejected despite the limited evidence of intended or actual use of the disputed Domain Name.
Complaint Denied
Complainant’s Counsel: Internally represented
Respondent’s Counsel: Mark Musiienko, Ukraine
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This case follows a pattern that has become familiar. A domain name held by someone else for years lapses and is sold at a public expiry auction. A trademark owner that did not buy it then files a complaint against the winning bidder within days, before the bidder has done anything with the name, relying on the registrar’s default parking page as evidence of bad faith. The Complaint here was filed seven days after the auction closed. The Panel’s denial is a useful illustration of why a record built that quickly will usually consist of inference rather than evidence, and of what a panel should require before drawing the inference.
The chronology matters more than the Complainant acknowledged. The Domain Name was registered in 2011 by a dental practice in Hawaii. The Complainant adopted HISMILE in 2015, four years later, and has operated from <hismileteeth.com> ever since, presumably because the .com was taken. When the name finally came free it went to a public auction, attracting 77 bids from 14 bidders and a price of $12,201. The Complainant argued that the price reflected the value of its mark. But an auction that draws 14 bidders for a short, pronounceable .com is at least as consistent with a market for the name that exists independently of the Complainant, and the Panel did not treat the auction, the mark and the parking page as adding up to targeting. It required evidence connecting this bidder’s acquisition to this Complainant, and there was none.
The Complainant’s case rested largely on the parking page. The Panel found that the page was the Registrar’s default, that the Respondent had not selected the links and earned nothing from them, and that it came down at some point after the Complaint was notified. Given how briefly it was up, the Panel said, “it is difficult to infer that this was actually the Respondent’s deliberate intent when it registered the disputed domain name. Rather, it appears to have been inadvertent, of very short duration, and corrected swiftly once brought to the Respondent’s attention.” Drawing on Haemonetics Corporation v. Brent Bristow, WIPO Case No. D2024-2838, it held that for bad faith registration to be made out on these facts “there needs to be other evidence of targeting than merely the existence of the automated PPC,” and there was none. The Panel thus kept the question of why the name was acquired separate from the question of what happened to it in the week that followed, which is exactly the separation the Policy’s conjunctive requirement calls for. Had it reasoned the other way, anyone who wins a domain name at auction and does not immediately disable the registrar’s parking page would be at risk of a finding of bad faith registration on a screenshot alone.
The Complainant’s remaining evidence was of the kind that is routinely offered as a substitute for proof of targeting, and the Panel’s treatment of each item is instructive. The assertion that “hismile” is a coined term, so that the Respondent must have had the Complainant in mind, did not survive the Panel’s own check of the public record: the Hawaii practice had coined the same term without reference to the Complainant, and unrelated parties hold HISMILE registrations in Brazil, China and Japan. A term that several businesses have arrived at independently does not point to one owner. Social media follower counts were likewise held not to show what a person in the Respondent’s position would have seen, particularly where the Complainant produced no search results at all. The approach recorded in UDRP Perspectives, §3.3 (Targeting), which asks for evidence of the respondent’s knowledge and intent rather than assertions of the mark’s strength, was applied here without allowances for the gaps.
The Complainant also argued that the Respondent was a professional domain investor who should be held to a heightened standard, and that a “cursory” search would have revealed the mark. The Panel declined to apply that standard, holding that a portfolio of domain names and a reference to “brandable” value do not on their own make a registrant a professional investor, and added an observation that ought to be more widely recognized: a Ukrainian trademark search revealing a mark for oral-care products “would not necessarily have given the Respondent any good reason not to proceed” with bids on a name intended for an unrelated crypto project. A search that turns up a mark in a different field does not tell a registrant to stop, and the frequent assumption that it does deserves the scrutiny the Panel gave it.
Finally, the Panel confronted the circularity in the Complainant’s position on preparations. The Respondent’s evidence of his crypto project was thin, and the Panel described the second element as “something of a close call” that it did not need to decide. But a registrant faced with a complaint within a week of acquisition cannot be expected to have generated dated, contemporaneous evidence of preparations, and the Complainant’s haste created the very gap it then relied on. The Panel gave the Respondent “the benefit of the doubt at this particular point in time,” noting that a later offer to sell or further targeted advertising could support a refiled complaint. That is a measured resolution, and one that other panels facing a complaint filed on the heels of an auction might usefully follow.
Two Years Too Late: How the Complainant’s Own Domain Name Undercut Its Case in Perla-Foods.com
<perla-foods.com>
Panelist: Mr. Stefan Bojovic
Brief Facts: The Complainant is a Polish company operating in the food sector for over 20 years, distributing products across international markets including Germany, the UK, Australia, Colombia, and the UAE. It owns International registration for the figurative trademark PERLA, registered on January 30, 2020 and operates its primary website at <perlafoods.com>, registered on November 17, 2023. The Respondent is a Greek entity established on November 19, 2021, registered for the non-specialized wholesale of food, beverages, and tobacco. The disputed Domain Name was registered on December 14, 2021 and resolves to a Greek-language website operating under the brand “perla foods,” offering Greek food products (such as olives, rice, and chickpea dip) from various third-party producers, and listing Greek and German contact phone numbers.
The Complainant alleges that the Respondent uses the disputed Domain Name to offer food products, including olives, rice, and chickpea dip, which are similar to those offered by the Complainant and this use is likely to mislead Internet users into believing they are visiting the Complainant’s website, particularly because the only difference between the disputed Domain Name and the Complainant’s domain name is a hyphen. The Complainant also notes that the Respondent’s website displays a German telephone number and that Germany is one of the markets in which the Complainant operates. On June 10, 2026, the Complainant’s representative sent a cease-and-desist letter to the Respondent concerning the disputed Domain Name but the Respondent did not respond and the Respondent did not file a Response in these proceedings as well.
Held: The Panel notes that the Registrar identified the Respondent as “ADEL Alshamari, PERLA IMPORTS & EXPORTS I.K.E.”, while the website to which the disputed Domain Name resolves is operated under the name “perla foods” (using a different logo from the one the Complainant uses). The present record contains evidence of actual use of the corresponding name in connection with the Respondent’s food business. The Panel, therefore, considers that the Respondent’s registered business name, the name under which its website operates, and its use of the disputed Domain Name provide an indication that the disputed Domain Name is being used in connection with the Respondent’s own business identity. In connection with the above, the Respondent’s food business seems to be a genuine business that was established before the Complainant first contacted the Respondent through cease-and-desist letter on June 10, 2026. The Panel finds that, before notice to the Respondent of the dispute, the Respondent used the name correspondent to the disputed Domain Name in connection with a bona fide offering of goods.
The Panel notes that the disputed Domain Name was registered on December 14, 2021, while the Complainant’s Domain Name on November 17, 2023. Thus, their similarity alone cannot support an inference that the Respondent adopted the disputed Domain Name by reference to the Complainant’s domain name, although the Respondent may nevertheless have been aware of the Complainant and its PERLA trademark at the time of registration. The question before the Panel is whether the evidence establishes, on the balance of probabilities, that the Respondent registered the disputed Domain Name to target the Complainant’s trademark. The Panel does not find sufficient evidence to support such an inference. Additionally, the Complainant did not provide any evidence on the extent of use and recognition of its PERLA trademark at the time of registration of the disputed Domain Name, that would indicate that the Respondent was likely aware of this trademark. Nor did the Complainant indicate any other circumstances that would further indicate the Respondent’s awareness of the Complainant and its trademark. The overlap in the Parties’ product categories does not alter this conclusion.
Complaint Denied
Complainant’s Counsel: BG Kancelaria prawnopatentowa Wojciech Gierszewski, Poland
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
A default is not a concession, and this decision is a good example of a panel treating it that way. The Respondent, a Greek food importer, ignored a cease-and-desist letter, filed no Response, asked for more time after the deadline had passed, and then failed to use the extension the Panel gave it by Procedural Order. On that procedural record a transfer would have surprised nobody. The Panel instead examined what the file actually showed, and what it showed was a business using its own name. Readers will note that the same sole panelist decided DownSlides.com, commented on above; the evidence-first approach taken here is the one this Digest commends.
The Complainant’s case was built on resemblance. Its PERLA figurative mark was registered internationally in January 2020, the Domain Name was registered in December 2021, and the Respondent’s website sells olives, rice and chickpea dip, products the Complainant also sells. Its principal argument was that the Domain Name differs from the Complainant’s own <perlafoods.com> “only by the hyphen.” That argument had a difficulty the Complainant did not address: the Complainant registered <perlafoods.com> in November 2023, nearly two years after the Domain Name. The Panel noted that the similarity between the two domain names “cannot, as such, support an inference that the Respondent adopted the disputed domain name by reference to the Complainant’s domain name.” A complainant whose own domain name postdates the respondent’s cannot rely on that resemblance as evidence that the respondent copied it, and pleading it without disclosing the dates was unwise.
What remained was a mark registered a year or so before the Domain Name, an overlap in product categories, and a German telephone number on the Respondent’s site, offered because Germany is one of the Complainant’s markets. The Panel’s answer to each was measured. Priority of registration “is not, by itself, sufficient to establish bad faith,” particularly where the Complainant “did not provide any evidence on extent of use and recognition of its PERLA trademark at the time of registration of the disputed domain name.” Two food businesses selling olives is not evidence that one chose its name because of the other, and the record did not show the Respondent selling the Complainant’s products, copying its branding, or presenting itself as connected to the Complainant. A German number on the site of a self-described import and export business “is not inconsistent with such international business activities.” This is the evidence-based approach to targeting that UDRP Perspectives, §3.3 (Targeting) describes, applied to a record that contained assertions of similarity and little else.
The Panel also did something that panels in default cases often do not: it looked at who the Respondent was. The Registrar’s verification identified the registrant as “PERLA IMPORTS & EXPORTS I.K.E.,” and the Panel’s own limited research confirmed a Greek company of that name incorporated in November 2021, a month before the Domain Name was registered. The website operates as “perla foods” in Greek, with a logo of its own. The Panel found that the business name, the trading name and the Domain Name “form a coherent combination,” and that the Respondent had used the name in connection with a bona fide offering of goods before any notice of the dispute. The Complainant “has not provided evidence establishing that the Respondent adopted the name ‘perla’ in order to trade on the Complainant’s trademark, as opposed to using it as part of its own business identity.” That finding disposed of the second element as well as the third.
The Panel added that the circumstances “may give rise to concerns on the part of the Complainant regarding the Respondent’s use of the disputed domain name under applicable trademark or other laws,” but that such matters “fall outside the scope of the present proceeding, which is confined to the requirements of the Policy.” That is the limited role of the UDRP as described in UDRP Perspectives, §0.1 (Scope of the Policy): a remedy for abusive registration targeting a mark, not a forum for resolving whether two food companies using the same common word can coexist. A complainant with an infringement claim against a going business has a court for that.