Ask First, File Later: A Model Procedure for Supplemental Filings
After the Response was filed, the Complainant did not simply send in an unsolicited reply. It asked for an opportunity to file one. The Panel then issued a Procedural Order granting the request on defined terms, with the Complainant’s filing capped at 5,000 words. The Respondent was given a fixed date to reply, confined to what the Complainant had raised. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 6.40) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Ask First, File Later: A Model Procedure for Supplemental Filings (askafrica.com *with commentary)
‣ You Cannot Cybersquat on Your Own Trademark: RDNH in AliceTemperley.com (alicetemperley.com *with commentary)
‣ A Winning Case, Nearly Lost: Panel Considered Dismissing a Deficient Complaint (comme-des-garcons.us *with commentary)
‣ Timing Is Not Targeting: Baviera.com Registered Days After Complainant Made the News (baviera.com *with commentary)
‣ Employee Control Dispute Falls Outside UDRP Scope (permixtec.com *with commentary)
Ask First, File Later: A Model Procedure for Supplemental Filings
Ask Africa (Proprietary) Limited v. Ryan Moore, WIPO Case No. D2026-2358
<askafrica.com>
Panelists: Mr. Luca Barbero (Presiding), Mr. David H. Bernstein and Mr. Wilson Pinheiro Jabur
Brief Facts: The Complainant, founded in 1995, is a South African market research and data analytics company that provides consumer insights, brand health tracking, and customer experience benchmarks for businesses. The Complainant was formally incorporated under the name Askafrika CC. The company was converted into a private company on July 31, 2000, and traded as Askafrika (Proprietary) Limited until May 16, 2025. In May 2025, the Complainant underwent a rebrand, adopting the ASK AFRICA mark. The Complainant is the owner of the various trademark registrations for ASK AFRIKA and ASKAFRIKA LIBERATING TRUTH FOR HUMANITY (figurative marks). According to the records, the Complainant controlled the disputed Domain Name until at least July 12, 2019, after which its service provider abandoned it for unknown reasons. The Respondent acquired it from a third party in May 2024 for approximately USD $5,000, and the Domain Name now resolves to a website promoting an application under development named ASK AFRICA, which is described as a social app rewarding sports and betting insights.
The Complainant alleges that there is no evidence that the Respondent is using the ASK AFRICA mark or the disputed Domain Name in connection with a bona fide offering of goods or services, since the software application mentioned on the website to which the disputed Domain Name resolves cannot be located on the Google or Apple app stores. In its additional submissions, the Complainant points out that the Respondent is a South African citizen, is listed as the sole director of another company located in South Africa and, in 2023, posted on social media asking his friends and family to recommend any “good market survey / market research agency in South Africa”. The Respondent contends that it selected the Domain Name in light of its descriptiveness for the purposes of promoting a consumer-polling mobile application for African sports and betting audiences. The Respondent further contends that it has been actively developing its application since May 2024, well before receiving notice of the dispute by means of the cease-and-desist letter sent by the Complainant on July 24, 2025, and before the Complainant decided to rebrand as ASK AFRICA in May 2025.
Held: Having reviewed the available record, the Panel finds that the Complainant has failed to prove, and that the Respondent managed to demonstrate, that the Respondent has a legitimate interest in the disputed Domain Name. The Panel also finds that the Respondent appears to have used the disputed Domain Name in connection with the relied-upon dictionary meaning and not to capitalize on the Complainant’s trademark rights. Indeed, there is no evidence that the Respondent has used the disputed Domain Name to impersonate the Complainant or otherwise confuse or divert consumers looking for the Complainant. As long as the disputed Domain Name is being used in a way that does not trade off the Complainant’s trademark and where there are no other indicia of cybersquatting, such use may support the respondent’s claim to a right or legitimate interest.
The evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademarks. Even though the Complainant has demonstrated that it owned trademark registrations for ASK AFRIKA at the time of the acquisition of the disputed Domain Name by the Respondent in May 2024, and that its trademark enjoyed reputation in South Africa at that time, the Complainant has not proven that, on balance of probabilities, the Respondent had the Complainant’s trademark in mind when it acquired the disputed Domain Name and registered the disputed Domain Name to trade-off the Complainant’s trademark rights. Moreover, there is no evidence that the Respondent, through the use of the disputed Domain Name, intended to confuse consumers with the Complainant’s marks or disrupt the Complainant’s business.
RDNH: The Panel is not persuaded that the circumstances of this case justify a finding of RDNH. The Complainant has provided evidence of ownership of long-standing registrations for the trademark ASK AFRIKA and of substantial reputation in South Africa which predate the acquisition of the disputed Domain Name by the Respondent. Moreover, the Complainant’s ASK AFRIKA mark is almost identically reproduced in the disputed Domain Name, and the latter was also owned by the Complainant in the past (until 2019) before the acquisition of the disputed Domain Name by the Respondent.
Complaint Denied
Complainant’s Counsel: Adams & Adams Attorneys, South Africa
Respondent’s Counsel: Chyrkin Law, Ukraine
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
After the Response was filed, the Complainant did not simply send in an unsolicited reply. It asked for an opportunity to file one. The Panel then issued a Procedural Order granting the request on defined terms, with the Complainant’s filing capped at 5,000 words. The Respondent was given a fixed date to reply, confined to what the Complainant had raised.
This is the preferable approach and credit is due to the Complainant for employing it. As UDRP Perspectives, §0.5 (Supplemental Filings) explains, where a complainant believes that exceptional circumstances justify an additional submission, the preferred procedure is to make a request to the Panel with a brief explanation, for the Panel to rule on that request, and for any permitted filing to stay within the parameters the Panel sets, with the respondent given adequate time to answer. It is also consistent with the Final Report of the WIPO-ICA UDRP Review Project Team, which placed supplemental filings among the topics on which the Project Team was unanimous and recommended that ICANN’s Phase 2 review “seek a consistent approach to the procedures and parameters concerning supplemental filings”. The Report observed that unsolicited filings slow cases down, that the other party often feels obliged to answer them at significant cost even where the filing is ultimately disallowed, and that no rules govern their length or content. The Procedural Order here addressed several of those concerns. Both parties knew in advance what could be filed, how long it could be, and when it was due.
On the merits, the treatment of the second element stands out. Panels often dispose of this element by finding only that the complainant did not meet its burden, or pass over it altogether once bad faith has failed. This Panel went further and made an affirmative finding in the Respondent’s favour:
“Having reviewed the available record, the Panel finds that the Complainant has failed to prove, and that the Respondent managed to demonstrate, that the Respondent has a legitimate interest in the disputed domain name.” [emphasis added]
As UDRP Perspectives, §2.1 (When a Finding as to Rights or Legitimate Interest is Appropriate) explains, panels should generally make an affirmative finding where the facts warrant it, because paragraph 4(c) of the Policy entitles a respondent to prove its rights or legitimate interests and implicitly directs a panel to say so when they are proven. A respondent whose bona fides have been challenged may deserve that confirmation, and here the Respondent received it.
The finding was earned by the Respondent. The Respondent produced a Scope of Work for its app dated six days before the first instalment payment for the Domain Name, marketplace correspondence, receipts and bank statements for the approximately USD $5,000 lease-to-own purchase, a sworn declaration, exchanges with two development houses and a corporate finance advisor, third-party correspondence on the design of the survey questions, investor pitch decks, a design commission, a development quote, and an Internet Archive capture of the pre-launch website.
All of it predated the Complainant’s July 2025 cease-and-desist letter, and most of it predated the Complainant’s own May 2025 rebrand from ASK AFRIKA to ASK AFRICA. The evidence was dated, contemporaneous and in large part generated with or by third parties, which is what makes preparations “demonstrable” as opposed to merely asserted.
On the third element, the Panel identified the two things the Complainant had to prove on the balance of probabilities: that the Respondent “had the Complainant’s trademark in mind when it acquired the disputed domain name”, and that it registered the Domain Name “to trade-off the Complainant’s trademark rights”.
Both are fundamental. As UDRP Perspectives, §3.3 (Targeting) explains, it is generally essential to a finding of bad faith registration that the respondent targeted the complainant or its mark, and the onus is on the complainant to prove it. The Panel accepted that the Complainant held ASK AFRIKA registrations and enjoyed a reputation in South Africa when the Respondent acquired the Domain Name in May 2024. That did not establish either element, given the different spelling, the descriptive quality of “Ask Africa” for a product that polls African consumers, and the year of preparations that preceded the Complainant’s rebrand.
You Cannot Cybersquat on Your Own Trademark: RDNH in AliceTemperley.com
Temperley Holdings Limited v. alice temperley, alice temperley, WIPO Case No. D2026-3313
<alicetemperley.com>
Panelists: Mr. Andrew D. S. Lothian (Presiding), Mr. David Stone, Mr. Jonathan Agmon
Brief Facts: The Complainant is the parent company of the luxury fashion brand Temperley London and owns the UK trademark for ALICE TEMPERLEY (filed in September 2007 and registered in May 2008). The mark is currently subject to the Respondent’s non-use cancellation action, filed on August 20, 2026. The Respondent originally owned the mark and assigned it to the Complainant on November 23, 2023, under an Assignment Agreement that made no reference to the Domain Name. The disputed Domain Name was registered on January 26, 2016, by the Respondent, the founder of Temperley London and a former employee of the Complainant. She left that employment on July 8, 2026, after serving notice on April 1, 2026. The disputed Domain Name now resolves to a holding page stating that she works independently and inviting enquiries about speaking engagements, creative collaborations, and consultancy.
The Complainant alleges that the unauthorized use of the disputed Domain Name is manifestly intended to lure its consumers to the Respondent’s website under the false impression that the Respondent owns rights in the marks and/or to take unfair advantage of the considerable international goodwill acquired by the Complainant in its marks. The Respondent contends that she has rights and legitimate interests in the disputed Domain Name on two independent bases: (i) an express contractual right, granted by the Complainant itself across three separate agreements spanning six years, to use her own name for a new business venture; and (ii) the fact that the Respondent is, and has always been, commonly known by the name “Alice Temperley” within the meaning of paragraph 4(c)(ii) of the Policy.
Held: The Panel finds no content on the website associated with the disputed Domain Name that competes with the Complainant’s business or promotes goods of the kind associated with the Complainant’s business or trademark registration. Rather, the website identifies the Respondent as an individual offering personal services founded on her own experience, reputation, and creative expertise. Accordingly, the Panel finds that, prior to receiving notice of the dispute, the Respondent had used, or made demonstrable preparations to use, the disputed Domain Name or a corresponding name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy. Further, the Panel has no doubt that the Respondent has been commonly known by a name corresponding to the disputed Domain Name. This is amply demonstrated by the evidence submitted, including media coverage, her honorary doctorate, published book, and references to her as “Alice Temperley”.
The Panel further notes that the Respondent registered the disputed Domain Name in 2016, while employed by the Complainant. Crucially, however, she owned the relevant trademark, which she assigned to the Complainant in 2023. In these circumstances, there can be no notion that the Respondent registered the disputed Domain Name in a trademark-abusive manner at the time of registration, and indeed, the Complaint does not even discuss the issue of bad faith registration in terms of the circumstances prevailing in 2016. On the contrary, the evidence before the Panel indicates that the Respondent has not concealed her desire and intention to trade independently under her own name. Furthermore, although the Parties have since fallen out and parted ways, the evidence before the Panel shows that the Respondent did not register the disputed Domain Name in bad faith because, at the time, the disputed Domain Name matched the then-registrant’s personally owned trademark (and matched her personal name).
RDNH: The Complainant, a represented party, should have known that it could not succeed under any fair interpretation of the facts reasonably available to it prior to the filing of the Complaint. This arises most markedly on the issue of registration in bad faith as discussed in the immediately preceding section. The Complainant’s averment that the Respondent’s knowledge of the Complainant and desire to profit fraudulently from association with the Complainant appears to have been what prompted the registration of the disputed Domain Name is a wholly speculative and unconvincing submission. It cannot be reconciled with the fact that, at the time of registration, the Respondent herself owned the corresponding trademark which was not assigned to the Complainant until almost eight years later.
To compound matters further, the Complainant put forward the Letter of Intent as a document intended to establish the Parties’ contractual rights and duties when such document expressly stated on its face that it was a non-contractual statement of intent that was subject to further definitive agreement and was superseded by later-in-time Service Agreements. In addition, despite the fact that the Respondent’s Service Agreements contained clauses relevant to her use of her own name (a matter plainly known to the Complainant as her employer) the Complainant failed to produce and address these documents. This amounts to the provision of intentionally incomplete material evidence, which the Respondent was required to clarify. WIPO Overview 3.1, section 4.16.
Complaint Denied (RDNH) Complainant’s Counsel: Maucher Jenkins, United Kingdom
Respondent’s Counsel: Briffa Legal Limited, United Kingdom
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Respondent, Alice Temperley, registered the Domain Name in January 2016. At that time, she owned the ALICE TEMPERLEY trademark herself. She did not assign it to the Complainant until November 2023, almost eight years later. That is a particularly interesting point in this decision. A person who registers a domain name matching her own name and her own trademark is not targeting anyone. As UDRP Perspectives, §3.2 (Trademark Rights Must Predate Domain Name Registration) explains, a respondent could not have registered a domain name in bad faith before the complainant acquired rights in the corresponding trademark. The Panel accordingly called the Complainant’s theory of bad faith registration “a wholly speculative and unconvincing submission”.
There is a practical lesson here for anyone acquiring a trademark. The Panel noted that the 2023 assignment agreement “makes no reference to domain names”. That agreement was the time and place to deal with the Domain Name. A party that takes an assignment of a mark from the registrant, and leaves the corresponding domain name in her hands, is not generally in a position to use the Policy later to obtain what the transaction did not give it.
As UDRP Perspectives, §4.2 (When a Finding of RDNH is Appropriate) explains, one of the most common types of RDNH is a complaint brought by a party that knew or ought to have known that it could not succeed because its trademark rights postdate the domain name registration. This case is a variation on that category. The trademark was not new, but in 2016 it was not the Complainant’s. The Panel found that the Complainant “ought to have been aware of this obstacle”.
What was key to the RDNH finding, however, was the state of the evidence. The Complainant relied on a Letter of Intent that was non-binding on its face, and did not produce its own Service Agreements, which expressly permitted the Respondent to use her own name for a new business venture. The Panel held that this “amounts to the provision of intentionally incomplete material evidence, which the Respondent was required to clarify”. Paragraph 3(b)(xiii) of the Rules requires a complainant to certify that its complaint is complete and accurate, and UDRP Perspectives, §4.2 identifies breach of that certification as a recognized basis for RDNH. The certification matters most in a case like this one, where the missing documents are the complainant’s own. Had the Respondent not filed a Response, the Panel would have had only the Letter of Intent before it.
A Winning Case, Nearly Lost: Panel Considered Dismissing a Deficient Complaint
<comme-des-garcons.us>
Panelist: Mr. Douglas M. Isenberg
Brief Facts: The Complaint named two complainants without explaining their relationship; the Panel treated Comme des Garcons Company Limited, owner of the relevant registrations, as the sole Complainant. The Complainant describes itself as a world-renowned fashion brand operating at <comme-des-garcons.com>. The Complaint states that it owns “a portfolio of trademarks consisting of dozens of international and U.S. registrations that cover clothing, shoes, cosmetics, fragrances and other products,” including US registrations for COMME DES GARCONS (registered August 28, 1984); for COMME DES GARCONS NOIR (registered January 12, 2021) and for COMME DES GARCONS POCKET (registered January 22, 2019). The disputed Domain Name was registered on June 4, 2024.
The Complainant alleges that the “Respondent was selling counterfeit Comme des Garcons products and engaging in a fraudulent scheme to deceive consumers into believing the website and products are affiliated with and/or sponsored by Complainants.” The Respondent did not submit a formal Response. Instead, it submitted an email stating that its business, “DMCNIC,” operates independently, sells its own clothing products, and has no intention of impersonating the Complainants or misleading customers into believing that the website is official. It further stated that it respects the Complainants’ intellectual property rights and understands their concerns regarding customer confusion. The Respondent requested 90 to 120 days to transition its business to a different name and domain. During that period, it offered to redirect customers seeking the Complainants’ products to the official website and to document an agreement before the Forum.
Preliminary Issue: Adequacy of the Complaint: In addition to failing to explain the relationship between the two named complainants and citing irrelevant and dead trademark registrations, the Complaint fails to cite any authority and includes repetitive and incomplete arguments. In addition, the Panel notes that the original version of the Complaint included a reference to a domain name other than the disputed Domain Name and failed to include a proper election of mutual jurisdiction and a table of contents for the evidence, all of which the Complainant corrected following a notice of deficiency from Forum.
In light of the foregoing shortcomings in the Complaint, the Panel considered dismissing this proceeding. However, mindful of its ability to “conduct the administrative proceeding in such manner as it considers appropriate” (Rules, para. 10(a)) as well as the necessity to “ensure that the administrative proceeding takes place with due expedition” (Rules, para. 10(c)), and the obvious outcome had the Complaint been drafted with the professionalism expected for these proceedings, the Panel proceeds to a decision on the merits of the dispute.
Held: WIPO Overview 3.1, section 2.1, states: “Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Panel finds that the Complainant has established its prima facie case, and Respondent’s submission contains no evidence to the contrary, so the Panel is satisfied that Complainant has satisfied the second element of the Policy.
By using the disputed Domain Name in connection with a website that appears to be a website for, or associated with, the Complainant – by using the COMME DES GARCONS Trademark on its website, by offering for sale the same goods associated with the COMME DES GARCONS Trademark and by allegedly “either sell[ing] counterfeit goods bearing Complainants’ trademarks or defraud[ing] Complainants’ customers” (allegations that the Respondent has not denied; indeed, the Respondent implies that its website using the disputed Domain Name may be perceived as “represent[ing] that [Respondent’s] business is affiliated with or operated by [Complainant]”) – the Respondent has clearly created a likelihood of confusion pursuant to paragraph 4(b)(iv) of the Policy. Further, Respondent’s inclusion of an inaccurate copyright notice and incomplete contact information on its website using the disputed Domain Name are further evidence of bad faith.
Transfer
Complainant’s Counsel: Alexa Sussmane of McCue Sussmane Zapfel & Cohen P.C., USA
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
Panels rarely comment on the quality of a complaint that succeeds. This Panel gave the subject its own heading, “Adequacy of the Complaint”, and disclosed that it “considered dismissing this proceeding”. That is a notable statement in a case where the Respondent operated an online clothing store under the Complainant’s mark, with a copyright notice in the Complainant’s name, and answered the Complaint with an email asking for 90 to 120 days to move the business to a different name.
The Panel was specific about what it found wanting. In its words, the Complaint did not explain the relationship between the two named complainants, cited “irrelevant and dead trademark registrations” supported by printouts that “appeared to be obtained five years ago”, failed “to cite any authority”, and included “repetitive and incomplete arguments”, among them a retained reference to the wrong domain name. The Panel added that the original version lacked a proper election of mutual jurisdiction and a table of contents for the evidence until Forum issued a notice of deficiency.
The reason the Panel gave for proceeding is the most instructive part of the decision. It relied on its authority to conduct the proceeding as it considers appropriate, on the need for due expedition, and on “the obvious outcome had the Complaint been drafted with the professionalism expected for these proceedings”. That phrase underscores the standard expected in these proceedings. The Complaint was not saved by its own adequacy. It was saved by the strength of the underlying facts and by a Respondent who did not deny the allegations. Dismissal would likely have produced a refiled complaint and several more weeks of the website remaining in operation, so the decision to proceed was a reasonable one.
Timing Is Not Targeting: Baviera.com Registered Days After Complainant Made the News
Clínica Baviera S.A. v. Domain Administrator, Tfourth, LLC, WIPO Case No. D2026-2800
<baviera.com>
Panelists: Ms. Karen Fong (Presiding), Ms. Reyes Campello Estebaranz and Mr. W. Scott Blackmer
Brief Facts: The Complainant is an ophthalmology company specialising in the diagnosis, treatment, and monitoring of visual disorders and eye diseases. It operates 130 ophthalmology clinics in Spain, Germany, Austria, Italy, and the United Kingdom. The Complainant’s principal website is available at <clinicabaviera.com>. It owns Spanish registrations for C CLINICA OFTALMOLOGICA BAVIERA (figurative, registered February 20, 1996) and CLINICA BAVIERA (word, registered June 9, 2009), and EUTM for BAVIERA (figurative, registered March 1, 2011). The disputed Domain Name was registered on May 6, 2001 by a domain investor whose portfolio includes geographic terms and surnames. The Domain Name has at various times resolved to parking pages with random pay-per-click links. Around June 2026, shortly before the Complaint was filed, the links began to relate to ophthalmology services and the Complainant’s competitors. The domain now resolves to a landing page with a search interface and a disclaimer that the domain owner has no relationship with third-party advertisers.
The Complainant alleges that these PPC links appear to have been generated through a keyword-targeted or monetization-based configuration specifically aligned with the Complainant’s field of activity, rather than occurring at random, and that the Respondent is ultimately responsible for this content. The Complainant further alleges that the registration of the disputed Domain Name on May 6, 2001, coincided with a significant period of international commercial growth and increased market visibility for the Complainant, thereby evidencing bad faith. The Respondent contends “Baviera” is the Spanish, Italian and Portuguese name for Bavaria and a widespread surname, including that of the Complainant’s own founders, and that more than 250 companies worldwide use the term. It further contends that the historical PPC links were random, that it never selected ophthalmology keywords or directed the parking provider to show such links, and that it removed them immediately on receiving the Complaint.
Held: The Panel notes that news of a substantial investment in the Complainant’s business by Dresdner Kleinwort Capital was announced around May 1, 2001, days before registration. While the Panel acknowledges the proximity in timing between the Complainant’s corporate expansion and developments and the registration of the disputed Domain Name, it finds that the evidence is insufficient to establish, on the balance of probabilities, that the disputed Domain Name was registered in bad faith, for the following reasons. First, the Complainant’s trade mark rights at the time of registration of the disputed Domain Name consisted only of a composite figurative mark, and it did not apply for a standalone word mark for BAVIERA with a device until September 17, 2010.
Second, the term “Baviera” is the Spanish, Italian, and Portuguese term for Bavaria, a well-known German region, and is independently a rare surname, including that of the Complainant’s own founders. The record does not establish that “Baviera” had acquired secondary meaning exclusively associated with the Complainant or that the mark was internationally well-known as of May 2001. Third, the Respondent is based in the Cayman Islands, with its principal in the United States, and the record does not establish that coverage of this kind would probably have come to the attention of a United States-based domain name investor in May 2001.
Fourth, the PPC advertising evidence submitted by the Complainant does not establish that the Respondent had the Complainant in mind at the time of registration of the disputed Domain Name. The historical PPC content, and particularly the initial content right after the registration of the disputed Domain Name, was non-targeted and unrelated to the Complainant’s field of activity. Fifth, there is no evidence that the Respondent ignored the Complainant’s cease-and-desist letter, which was addressed to the Registrar, not the Respondent, and which the Respondent denies receiving
RDNH: The record does not establish that the Complainant was aware of the Respondent’s identity, its status as a long-standing domain name investor, or its portfolio of geographic and surname-based domain names, at the time the Complaint was filed. The Panel notes that the nature and history of the Respondent’s business, including whether it has held the disputed Domain Name since its original registration in 2001, is not readily ascertainable from public records, as the Respondent used a privacy service for the disputed Domain Name, and the Complainant’s knowledge of such matters postdates the filing of the Complaint.
Furthermore, the Complainant’s decision to bring this proceeding was not without foundation: the disputed Domain Name was, at and around the time the Complaint was prepared, resolving to PPC advertising links directed at the Complainant’s field of activity, providing a legitimate basis for investigation and Complaint, even if that evidence ultimately proved insufficient to establish bad faith registration. Bringing a complaint that is later found to be unsuccessful, where the complainant reasonably believed in its claims on the basis of the evidence available to it, does not amount to an abuse of the proceeding.
Complaint Denied
Complainant’s Counsel: Ubilibet, S.L., Spain
Respondent’s Counsel: Cylaw Solutions, India
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Complainant’s best fact was a striking one. The Domain Name was registered on May 6, 2001, days after news of a substantial investment in the Complainant’s business was published. The Panel took that coincidence seriously and still found it insufficient. As UDRP Perspectives, §3.3 (Targeting) explains, the onus is on a complainant to prove that the respondent targeted that specific complainant, and this is harder to prove where the domain name corresponds to a common term. The Panel asked the right question. It was not whether the news existed, but whether coverage in a Spanish financial newspaper and a specialist private equity publication “would probably have reached, or been noticed by, a domain name investor in the Respondent’s position”. “Baviera” is the Spanish, Italian and Portuguese word for Bavaria and a surname, including that of the Complainant’s own founders. Suspicious timing invites scrutiny. It does not replace evidence of targeting.
The Panel did not address the second element, given its finding on bad faith. As UDRP Perspectives, §2.1 (When a Finding as to Rights or Legitimate Interest is Appropriate) explains, panels should generally make an affirmative finding of rights or legitimate interest where the facts warrant it. The facts recorded by the Panel, namely a geographical term and surname held for 25 years by an investor whose portfolio includes such names, may well have supported one.
On Reverse Domain Name Hijacking, the Panel reasoned that the Respondent’s identity and business were hidden behind a privacy service, so that the Complainant’s knowledge of them “postdates the filing of the Complaint”. That is a fair answer for the original Complaint. The registrant was disclosed to the Complainant on July 6, 2026, however, and an amended Complaint followed on July 10. As UDRP Perspectives, §0.13 (Responsibilities on Complainant When Privacy is Lifted) explains, a complainant’s failure to take the newly disclosed identity of a respondent into account can prejudice its complaint and in some cases result in a finding of RDNH. The decision does not say what the Complainant did with that opportunity. The 2001 registration date, and the meaning of “Baviera” as a place name and as its founders’ surname, were known to the Complainant from the outset.
The Respondent in this case was represented by Cylaw Solutions, whose principal, Ankur Raheja, is the Editor in Chief of this Digest.
Employee Control Dispute Falls Outside UDRP Scope
PerMix Tec. Co. Ltd. of China, PerMix North America LLC v. Name Redacted, WIPO Case No. D2026-3327
<permixtec.com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Complainant, registered in China and in the United States, is a manufacturer of industrial mixers, specializing in custom powder blenders, paste kneaders and liquid agitators. It owns US trademark registration for the word mark PERMIX, registered on July 19, 2022. The disputed Domain Name was registered on June 11, 2011 by the Respondent, a founder of the Complainants, who remains the Registrar-disclosed registrant. Prior to the circumstances giving rise to this dispute, and from about October 16, 2011, the Complainant operated a website at “www.permixtec.com”. From a date on or about May 8, 2026, the disputed Domain Name redirected to a website at “www.permixmixers.com”, which made prominent use of the PERMIX trademark and purported to be that of the Complainant. At the date of this Decision, the disputed Domain Name redirects to a website at “www.quantummixers.com”, promoting industrial vacuum mixer/dryer products.
The Respondent, a founder, registered the Domain Name in 2011; the Complainant says a Senior Executive, hired as CEO in August 2020, later took control of it and moved it to the current Registrar. It said it terminated his employment, though it gave no date, and that on May 13, 2026 he emailed customers to say he had “made the decision to step down”. It argued that it now has no control of the disputed Domain Name, the associated website or email accounts linked to the Domain Name, and that the Senior Executive “hijacked” the Domain Name by obtaining control surreptitiously, although the registrant details did not change. The Complainant relies on cases such as Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972, where a former employee took control of a complainant’s domain and altered the registration details. The Respondent did not reply to any of these contentions.
Preliminary Issue – Scope of the UDRP: It is well accepted in prior Decisions under the UDRP that certain categories of dispute will be deemed to fall outside the scope of the Policy. The UDRP provides a forum, principally, for the determination of cases of, or akin to, “cybersquatting”, and is not apt to decide, for example, commercial disputes between competing owners of a domain name, or those which may relate to internal issues within a complainant’s organization. The Panel found that the Registrar-disclosed registrant, a founder of the Complainants, remains the proper respondent, even though the account holder, who appears to be another individual, may be the only person with effective control of the Domain Name. In this case, the Complainant submits that the seizure of control of the disputed Domain Name by the Senior Executive amounted to a new acquisition of the disputed Domain Name, such that the Senior Executive is the proper respondent in the proceeding. However, the Panel cannot accept that submission in a case where there has been no change in the identity of the registrant of the disputed Domain Name, or any evidence that the beneficial ownership of the disputed Domain Name has changed.
Nor would the appropriation of the disputed Domain Name by the Senior Executive amount to a change in its beneficial ownership, as the Complainant also contends. The beneficial holder of a domain name is the party entitled to ownership, which may differ from the party whose name is shown as registrant (particularly in cases involving a privacy or proxy service). It is not, however, a party who exercises actual control over the disputed Domain Name without the entitlement to ownership of it. The Panel finds in this case that the Complainant has remained the beneficial holder of the disputed Domain Name throughout. In the view of the Panel, the reality of this case is that it involves circumstances internal to the Complainant which appear to have enabled the Senior Executive to obtain control of the disputed Domain Name, and to deny the Complainant access to it. The Senior Executive appears to have obtained account access around the time he commenced his role at the Complainant’s company, and then to have refused to relinquish it after leaving. In the circumstances, the Panel views this case as being a dispute which implicates commercial, employment and/or corporate governance issues, which fall outside the limited scope of the UDRP.
Redaction of Respondent’s Name: The Panel notes the Complainants have made a request to redact the name of the Respondent from the Decision noting that the identified registrant is one of the Complainants’ founders. In the circumstances of this case, the Panel grants the Complainants’ request and authorizes the Center to transmit Annex 1 to the Registrar as part of the Decision in this proceeding and directs that Annex 1 should not be published due to the exceptional circumstances of this case.
Complaint Denied
Complainant’s Counsel: The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Complainant had a real grievance. It had operated its website at the Domain Name since 2011. According to the Complaint, a former CEO took control of the registrar account, refused to give access back, and the Domain Name was then redirected, first to a website that the Panel described as one that “purported to be that of the Complainant”, and later to a website promoting another line of industrial mixers. The Complainant lost control of its website and of the email accounts linked to the Domain Name. It is easy to see why it turned to the UDRP, which provides a comparatively fast and inexpensive remedy in clear cases of trademark-abusive domain name registration.
The difficulty is that the Policy is directed at the registrant, and the registrant of record was, and had been since 2011, one of the Complainant’s own founders. By the Complainant’s own description, the former CEO was only the account holder. The Panel accepted that an account holder may have “effective control” of a domain name, but held that this “does not alter the identity of the registrant of the disputed domain name for the purposes of the UDRP”. Nor had beneficial ownership changed. A beneficial holder is “the party entitled to ownership”, not “a party who exercises actual control over the disputed domain name without the entitlement to ownership of it”. The Complainant, in the Panel’s words, “has remained the beneficial holder of the disputed domain name throughout”. Without a change of registrant or beneficial owner, there was no new registration for a finding of bad faith to attach to.
This is a limitation of the Policy, not a reflection on the merits of the Complainant’s position. As UDRP Perspectives, §0.1 (Scope of the Policy) explains, the Policy is designed only for clear cut cases of cybersquatting, and other disputes, however deserving, are left to the courts. The Panel found that this one “implicates commercial, employment and/or corporate governance issues, which fall outside the limited scope of the UDRP”. The requirement of bad faith registration and use would have stood in the way in any event. Assuming the former CEO obtained account access in 2020 in the course of his employment, the Panel saw no evidence of bad faith intent at that time. Later misuse of a domain name, however serious, does not supply bad faith registration. The Complainant’s remedy lies with the registrar or a court, and the lesson for other businesses is to keep control of the registrar account as well as the registrant record.
The Panel also granted the Complainant’s request to redact the Respondent’s name, citing “the exceptional circumstances of this case”. That was appropriate. The registrant of record was one of the Complainant’s own founders, who was named as Respondent only because the Policy required it and was not accused of any wrongdoing. As UDRP Perspectives, §0.18 (Redaction) explains, paragraph 4(j) of the Policy permits a panel to redact portions of its decision in exceptional cases, including the names of individuals.
The decision does raise a wider question, however. If a person who did nothing wrong can be spared having their name attached to a published UDRP decision, why is the same not available to an innocent respondent who successfully defends a complaint? The Final Report of the WIPO-ICA UDRP Review Project Team recorded the argument that there is little justification for publishing a respondent’s name where the respondent was completely innocent and the victim of an abusive complaint. The Report also recognized the value of publishing party names, including to identify patterns of cybersquatting and repeat RDNH, and noted that some respondents want their win on the record. It concluded that panels already have the power to redact party names where appropriate, and said that a considered and uniform framework for doing so may be beneficial and could be discussed in a dedicated work track.
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.