No Deal and No Website Do Not Add Up to Bad Faith
The Complainant’s case on bad faith rested on two things. Its attempts to buy the Domain Name “for a fair price” had failed, and the Domain Name did not resolve to a website. The Panel held that neither fact establishes bad faith registration decades before the Complainant’s rights arose. That is correct. Bad faith registration is assessed at the moment of registration, and in June 2001 there was no Complainant, no NETA mark and nothing for the Respondent to target. As UDRP Perspectives §3.2 (Trademark Must Predate Domain Name Registration) explains, it is axiomatic that a respondent could not have registered a domain name in bad faith before the complainant acquired rights in the corresponding trademark. The one limited exception, for nascent rights that the respondent anticipated, could not apply to a foundation incorporated 22 years after the registration. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 6.45) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ No Deal and No Website Do Not Add Up to Bad Faith (neta.org *with commentary)
‣ Standing on Disclaimed Ground (restaurantassociation.com *with commentary)
‣ Look-Alike Heating-Oil Price Site Within Weeks of Registration Is Ordered Transferred (fastenergy24.com *with commentary)
‣ Reliance’s JIO Complaint Fails Against a Business Using JIOLAT Since 2006; Panel Finds RDNH Over Omitted Opposition History (jiolat.com *with commentary)
‣ Korean Auction Buyer’s USD $685,000 Asking Price Does Not Show Targeting (dcal.com *with commentary)
No Deal and No Website Do Not Add Up to Bad Faith
Neta Foundation, Inc. v. michael witczak, WIPO Case No. D2026-3312
<neta.org>
Panelist: Mr. Lawrence K. Nodine
Brief Facts: The Complainant, a non-profit based in New York, New York, United States, has operated as Neta Foundation since July 5, 2023, since its incorporation. The Complainant owns the United States trademark, registered on June 30, 2026 for NETA (plus design). The Complainant does not include in the Complaint any allegations describing its business, but the trademark registration describes Complainant’s services as, inter alia, “[f]inancial consulting services in the field of planned giving for non-profit and charitable organizations … .” The disputed Domain Name, registered on June 24, 2001, does not resolve to an active website.
The Complainant bases its allegation of bad faith solely on its contention that “attempts to acquire the disputed Domain Name for a fair price failed and there’s no indication that the Respondent has or ever will have an intent to use the domain name for a legitimate purpose.” The Respondent contends that it registered the disputed Domain Name on June 24, 2001, which was 25 years before the trademark was registered on June 30, 2026. The Respondent denies having engaged in negotiations to sell the disputed Domain Name or made any demands, but acknowledges receiving an unsolicited offer from an unidentified broker approximately three years ago, to which it chose not to respond.
Held: The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. The Panel finds the trademark is recognizable within the disputed Domain Name. Although the disputed Domain Name does not include design elements which are a part of the trademark as registered, the literal component “neta” is identical. Although a trademark registration with design elements would satisfy the requirement that the Complainant show ‘rights in a mark’, panels would tend to focus on the non-design elements for purposes of assessing confusing similarity. Accordingly, the disputed Domain Name is confusingly similar to the Mark for the purposes of the Policy.
In view of the Panel’s findings under the third element of the Policy, the Panel will not address the second element. On the third element, the disputed Domain Name was registered 25 years before Complainant’s trademark was registered on June 30, 2026. The Complainant offered no evidence of prior unregistered use. “[W]here a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.” (WIPO Overview 3.1 section 3.8.1). There is no allegation or evidence that any exception to this well-established rule applies. See id., section 3.8.2. The Panel finds the third element of the Policy has not been established.
RDNH: The Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking. The Respondent registered the disputed Domain Name in 2001, whereas the Complainant was incorporated in 2023 and obtained its trademark registration in 2026. The Complainant offered no evidence of trademark rights predating Respondent’s registration and alleged no circumstances bringing this case within an exception to the general rule. In these circumstances, the Complainant should have known that it could not establish bad-faith registration under the Policy.
Moreover, the Complainant based its allegation of bad faith on its assertion that “attempts to acquire the disputed Domain Name for a fair price failed” and that there was no indication that the Respondent had or ever would have an intent to use the disputed Domain Name for a legitimate purpose. Neither unsuccessful acquisition attempts nor the absence of an active website establishes that the Respondent registered the disputed Domain Name in bad faith decades before Complainant’s rights arose. Unless a domain name was registered in bad faith, the owner may demand any price or reject any offer for transfer of the domain name.
Complaint Denied (RDNH)
Complainant’s Counsel: OlyverApp, United States
Respondent’s Counsel: Self-represented
Commentary by ICA General Counsel, Zak Muscovitch:
The Complainant’s case on bad faith rested on two things. Its attempts to buy the Domain Name “for a fair price” had failed, and the Domain Name did not resolve to a website. The Panel held that neither fact establishes bad faith registration decades before the Complainant’s rights arose. That is correct. Bad faith registration is assessed at the moment of registration, and in June 2001 there was no Complainant, no NETA mark and nothing for the Respondent to target. As UDRP Perspectives §3.2 (Trademark Must Predate Domain Name Registration) explains, it is axiomatic that a respondent could not have registered a domain name in bad faith before the complainant acquired rights in the corresponding trademark. The one limited exception, for nascent rights that the respondent anticipated, could not apply to a foundation incorporated 22 years after the registration.
The failed purchase adds nothing to the analysis. The Policy says nothing about what price is “fair”. Paragraph 4(b)(i) asks whether the domain name was registered primarily to sell it to the trademark owner or a competitor, and a registrant cannot have registered a domain name in 2001 in order to sell it to an entity that would not exist until 2023. UDRP Perspectives §3.5 (Setting a Price and Offering for Sale) describes the position of most panels that a respondent with a legitimate interest may convey its domain name for whatever price it deems appropriate, regardless of the value a complainant ascribes to it, and that panels are generally ill equipped to judge market prices in any event. Here the Respondent did not set a price at all. It received an unsolicited approach from an unidentified broker and chose not to respond. A registrant that declines to sell has exercised a right, not revealed a motive. The panel in haulpay.com met the same theory, that the respondent “should have been more accommodating in price negotiations”, and observed that it was not apparent how the complainant had developed it. The Panel here put the point crisply:
“Unless a domain name was registered in bad faith, the owner may demand any price or reject any offer for transfer of the domain name.”
Nor does the absence of a website fill the gap. Non-use of a domain name is not bad faith in itself. As UDRP Perspectives §3.7 (Passive Holding in General) describes, passive holding is a product of the Telstra test and applies only where its narrow criteria are met, foremost a mark with a strong reputation and the impossibility of conceiving any plausible good faith use of the domain name. Neither could be shown for a four-letter string held since 2001 against a mark registered in 2026. More fundamentally, passive holding is a doctrine about bad faith use. Even where it applies, it cannot supply bad faith registration where the trademark did not exist when the domain name was registered. The absence of an active website does not establish bad faith registration, and the Policy does not require a registrant to develop a website in order to keep its domain name.
The Panel briefly and appropriately found RDNH. UDRP Perspectives §4.2 (When a Finding of RDNH is Appropriate) identifies the so-called “Plan B” case, where a complainant turns to the Policy after failing to acquire the domain name in the marketplace, and its close relation, the “selling price gripe” case, where the only real complaint is the respondent’s price. It also identifies as one of the most common forms of RDNH the complaint brought despite the complainant knowing, or being in a position to know, that its trademark rights post-date the domain name registration. This Complaint combined the classic defect of trademark rights postdating the Domain Name with an apparent attempt to use the UDRP after unsuccessful acquisition efforts. It also invoked the familiar grievance over an allegedly unfair sale price, although the Respondent had neither quoted a price nor agreed to negotiate. It was filed by a represented complainant on the strength of a trademark registration less than a month old. As the panel in Handy Guy observed in the same circumstances, if the complainant wanted the domain name it should have bought it, and whether the price is too high or not, it is the respondent’s prerogative to set it.
The Complainant was represented by OlyverApp, a New York-based online platform that offers entrepreneurs entity formation, trademark application and other business compliance services, and whose published Terms of Service state that its operator, Seawall Technologies LLC, does not provide legal services or representation.
Standing on Disclaimed Ground
National Restaurant Association v. Mitesh Gala, Restaurant Association, WIPO Case No. D2026-3459
<restaurantassociation.com>
Panelists: Mr. Georges Nahitchevansky (Presiding), Ms. Sally M. Abel and Mr. Douglas M. Isenberg
Brief Facts: The Complainant is a U.S. foodservice trade association operating since 1919 that supports restaurants through advocacy, education, research and industry resources. It owns U.S. registrations for NATIONAL RESTAURANT ASSOCIATION (May 31, 1983), NRA NATIONAL RESTAURANT ASSOCIATION (June 28, 1983) and a stylized logo of NATIONAL RESTAURANT ASSOCIATION (October 30, 2012), and uses <restaurant.org>. The Respondent is a Texas nonprofit corporation incorporated in July 2026, with the stated mission of promoting and improving business conditions in the restaurant industry. It purchased the Domain Name through Afternic in January 2024. In mid-2026, it posted a partially developed website displaying a “Restaurant Association” logo, foodservice articles, leadership information, and membership offers. The site now displays an “American Restaurant Association” logo with largely the same content.
The Complainant alleges that the Respondent hid its identity, used AI-generated team content and runs a membership-style site mirroring the Complainant’s services, and it relies on emails linking to the website that referred to “membership” in the “Restaurant Association.” In all, the Complainant contends that the Respondent is “dishonestly masquerading” by using the disputed Domain Name in a way that suggests that it is connected to the Complainant. The Respondent denies abusively registering or using the disputed Domain Name, arguing that “restaurant association” is not distinctive of the Complainant and that the Complainant withheld evidence of its habitual disclaimer of the term. The Respondent further claims legitimate interests and contends it has made demonstrable preparations to use the disputed Domain Name by launching a website and configuring email.
Held: For the majority of the Panel, although “restaurant association” may be descriptive, or even possibly generic, particularly in light of the many third parties who use and/or have registered the term, as the Respondent maintains, the Complainant does enjoy some rights in at least NATIONAL RESTAURANT ASSOCIATION. As the disputed Domain Name consists of two of three words in NATIONAL RESTAURANT ASSOCIATION, the majority of the Panel is willing to accept that the Complainant has sufficient standing for purposes of the first element only and believes that the issue regarding the scope of Complainant’s rights is more properly addressed below.
There are serious questions as to the scope of Complainant’s rights in the term “restaurant association.” Numerous third parties use the term, and the Complainant has disclaimed it in several registrations that it did not disclose in this proceeding. These facts show that “restaurant association” is a common descriptive term over which the Complainant lacks exclusive rights. That the Respondent chose to acquire the disputed Domain Name in January 2024 which solely consists of the common term “restaurant association” does not ipso facto constitute bad faith registration. To hold otherwise would essentially give the Complainant broad rights over a common term that is not exclusive to the Complainant.
Subsequent uses of the disputed Domain Name and the associated website by the Respondent in 2026 that the Complainant considers as impinging on its rights cannot establish bad faith registration of a common term in January 2024. Whether the Respondent’s current actions with the disputed Domain Name infringe Complainant’s trademark rights or unfairly compete with the Complainant is a matter for a court of competent jurisdiction, on which the Panel expresses no view.
Concurring Opinion (Ms. Sally M. Abel): I agree with the majority that the Complainant fails to satisfy the third element of the Policy, but I disagree that the Complainant satisfies the first element of the Policy and that it “has a low threshold,” as suggested by the majority. Nor do I agree, notwithstanding WIPO’s Overview 3.1, that the first element “functions primarily as a standing requirement.” That was not the intent of the drafters of the UDRP, who considered each of the three elements to be substantive and each to be proven by the complainant before relief could be granted.
The UDRP was never intended to protect generic terms. If the first element requires only a “low-threshold” showing of confusing similarity, unscrupulous complainants can abuse the process by forcing less well-funded respondents to incur legal fees or surrender domains, regardless of whether the domain name predates the alleged trademark rights or, as in this case, is merely a generic phrase that the Complainant has admitted is generic, despite attempting to pull the wool over our eyes. This was never the intent of the first element.
WIPO Overview 3.1 at section 1.10 provides in part: “where the trademark registration entirely disclaims the textual elements … panels may find that the complainant’s trademark registration is insufficient by itself to establish confusing similarity.” Complainant has entirely disclaimed the textual elements “restaurant association” in 6 registrations and a pending application and wants us to look the other way. I will not. In addition to the second and third element of the Policy, the Complainant has not established the first elements of the Policy.
Complaint Denied
Complainant’s Counsel: Eversheds Sutherland (US) LLP, United States
Respondent’s Counsel: John Berryhill, Ph.D., Esq., United States
Commentary by ICA General Counsel, Zak Muscovitch:
“Restaurant association” is used by numerous third parties, appears as disclaimed matter in a series of United States registrations, and was acquired by the Respondent in January 2024 as the common descriptive term that it is. The majority held that acquiring such a term does not ipso facto constitute bad faith registration, and that the Respondent’s later uses of the Domain Name and website in 2026 cannot establish bad faith registration of a common term in January 2024. Whether the current site crosses into infringement or unfair competition was left to the courts, where it belongs. As UDRP Perspectives §1.4 (Descriptive Marks) explains, the Policy was not intended to permit a party who elects to register a common term as a trademark to bar others from using that term in a domain name, unless the use is clearly seeking to capitalize on the goodwill the trademark owner has built.
The Panel divided on the first element. The majority treated it as a low threshold standing requirement, found that the Domain Name reproduces two of the three words of NATIONAL RESTAURANT ASSOCIATION, and deferred the question of the scope of the Complainant’s rights to the later elements. The concurring panelist agreed on the third element but found the first element unmet as well, for two reasons. The Complainant disclaimed “restaurant association” in six registrations and a pending application, none of which it disclosed. A disclaimer, in turn, is a statement to the trademark office that the applicant claims no exclusive right in the disclaimed wording apart from the mark as a whole. On the concurrence’s reasoning, where the Domain Name reproduces only wording that the Complainant has expressly disclaimed apart from its composite mark, confusing similarity should not be established without evidence that the shared wording has independently acquired distinctiveness.
UDRP Perspectives §1.5 (Disclaimed Words) supports that reading. It explains that a disclaimer disclaims any right in the disclaimed term apart from the mark as a whole, and that where the similar elements of a domain name are made up exclusively of disclaimed terms, trademark rights under the Policy may not be found unless the complainant shows secondary meaning in those terms. WIPO Overview 3.1, section 1.10, on which the concurrence relied, records the same view: “where the trademark registration entirely disclaims the textual elements … panels may find that the complainant’s trademark registration is insufficient by itself to establish confusing similarity.” Panels have denied complaints at the first element on this basis, as in perfume-oils.com, where the complainant’s registration disclaimed “perfume” and “oils” and no evidence of secondary meaning was offered, and more recently in fundlaunch.ai, where the shared words “fund” and “launch” were disclaimed in every registration relied on.
The majority reasonably pointed out that the registrations the Complainant put before the Panel were word marks for NATIONAL RESTAURANT ASSOCIATION registered under Section 2(f), with no disclaimer, and a complainant with rights in a three-word mark will ordinarily have standing against a domain name that reproduces two of the words. The difficulty the concurrence identifies is that the two words reproduced are precisely the two the Complainant has elsewhere disclaimed. What makes NATIONAL RESTAURANT ASSOCIATION a mark at all, on the Complainant’s own filings, is the combination, and the combination is not present in the Domain Name. Whether the dominant feature of a mark can be wording in which its owner has told the trademark office it claims no exclusive right is the question the majority deferred to the later elements and the concurrence answered at the first.
The concurrence also pressed a broader point about the weight of the first element, and here UDRP Perspectives §1.8 (Confusingly Similar) is in agreement. Although the first element can be considered preliminary, in that only an identical or confusingly similar trademark allows a complainant to proceed to the second and third elements, it is no more nor less important than the other parts of the test, and panelists should apply the same focus to it as they do to the others. Mere similarity is not enough; the Policy requires confusing similarity. If the first element is treated as a formality, a substantive requirement of the Policy loses its protective function, and, as the concurrence observed, weak complaints can be used to force less well-funded respondents to incur legal fees or give up. Where a complainant’s own filings disclaim any exclusive right in the shared wording apart from its mark as a whole, the concurrence treats the first element as a requirement the complaint does not meet.
Look-Alike Heating-Oil Price Site Within Weeks of Registration Is Ordered Transferred
FastEnergy GmbH v. Setkeev Sergey Evgenievich, CAC Case No. CAC-UDRP-108958
<fastenergy24.com>
Panelists: Ms. Ganna Prokhorova, Mr. Igor Motsnyi and Mr. Neil Brown
Brief Facts: The Complainant is a German company operating an online heating-oil price-comparison and ordering business. It states that it has supplied customers in Germany and Austria since 2003 through a network of partner dealers. It owns German Trademark Registration for the word mark FASTENERGY, filed May 15, 2003 and registered November 5, 2003, covering heating oil and e-commerce services. It also operates <fastenergy.de> (registered October 14, 2002) and <fastenergy.at> (registered May 6, 2004). The disputed Domain Name was registered on or about January 30 or 31, 2026 by a Russian Respondent and resolves to a German-language heating-oil price comparison and ordering website branded “fastenergy24.” The website claims more than 33,000 customers and more than ten years of experience. The Panel notes that its legal notice names a Hamburg company whose address was reportedly copied from an unrelated firm, and gives a VAT number reported as invalid.
The Complainant alleges that the website is a fake shop offering the same services as the Complainant, and that the use of a disputed Domain Name for illegal activity can never confer rights or legitimate interests. The Complainant further alleges that the Respondent selected the disputed Domain Name with knowledge of its business and uses it to attract customers through confusion for commercial gain. The Respondent contends that “fast energy” describes rapid energy supply and “24” indicates round-the-clock service and that he has used the disputed Domain Name since registration for a bona fide offering of goods and services. The Respondent further contends that the registration was not directed at the Complainant; the fraud and phishing allegations rest only on automated scanners (Fakeshop-Finder, Watchlist Internet), which issue warnings algorithmically without review by any authority or court; third parties took the company address in the legal notice without his knowledge.
Held: On the first element, based on the evidence submitted by the Complainant, the Panel finds that the Complainant has shown rights in respect of its Fastenergy mark for the purposes of the Policy on the basis of its trademark registration in Germany. WIPO Overview 3.1, section 1.2.1. The Respondent’s contention that “fast energy” is descriptive goes to the second and third elements rather than to standing. The first element is a comparison between the mark and the disputed domain name, and the UDRP is not a forum for challenging the validity of a registered mark. The Complainant has a word trademark that has no disclaimed elements. The Panel notes, in any event, that the website at the disputed domain name offers the same services in the same market as the Complainant, which confirms that the Respondent sought to target the mark and this is an additional factor that confirms confusing similarity, see WIPO Overview 3.1, section 1.15.
On the second element, the Respondent asserts an operating online shop with real orders, customers, and deliveries, but does not provide any evidence in support. If the business were as genuine and as well documented as he says, evidence of it would have been readily available to him, and he must have understood that the Panel would need to see it. His statements remain assertions, and the Panel cannot accept them as proof. The Panel accepts the Respondent’s point that automated scanners, warning lists and online reviews are not judicial findings and must be weighed with care. Trustpilot itself states that it does not verify the accuracy of reviews. The Panel’s conclusion does not rest on those sources alone. It rests on the website itself, on the false statements it contains about the operator’s history and identity, and on the Respondent’s failure to substantiate any of his claims. Use of a domain name to impersonate a trademark owner or to mislead consumers about the source of an offer cannot confer rights or legitimate interests.
On the third element, the Complainant’s trademark registration predates the disputed Domain Name by more than twenty years, and the Complainant’s website at <fastenergy.de> had operated since 2002. That chronology, without more, would not establish targeting, particularly for a mark composed of ordinary English words. Within weeks of registration, the Respondent was using the disputed Domain Name for a German-language heating oil price-comparison service, the very field in which the Complainant operates under its mark. The Panel considers it implausible that the Respondent arrived at a domain name reproducing the Complainant’s mark, and then deployed it in the Complainant’s market, by coincidence. A clear absence of rights or legitimate interests, coupled with no credible explanation for the choice of the domain name, supports a finding of bad faith registration.
As to use, the website does not present the Respondent as an independent business that happens to use a descriptive expression. The photographs of delivery tankers, presented as genuine deliveries, show the lettering “fastenergy” as the dominant element, with “24” set apart in a contrasting colour. The website mirrors the structure of the Complainant’s website: the same postcode-and-quantity price calculator, the same rating seals, the same style of payment icons, and footer menus identical in content and order. It also presents itself as an established German comparison service of long standing, which it is not. In the Panel’s view, the Respondent was presenting himself as the Complainant, or as connected with it, rather than promoting a business of his own. Mimicking a complainant’s website is a recognised indicator of an intent to attract users by confusion. WIPO Overview 3.1, section 3.1.4.
Transfer
Complainant’s Counsel: Stefanie Efstathiou
Respondent’s Counsel: Self-represented
Commentary by ICA General Counsel, Zak Muscovitch:
FASTENERGY is composed of two ordinary English words. The Panel said that a German registration from 2003 and a website operating since 2002 “without more, would not establish targeting, particularly for a mark composed of ordinary English words”. The targeting was proven by what the Respondent did with the Domain Name.
Within weeks of registering it in January 2026, the Respondent was running a German-language heating oil price comparison and ordering service, which is the Complainant’s business. The site copied the structure of the Complainant’s portal, with the same postcode-and-quantity price calculator, the same rating seals, the same style of payment icons and footer menus identical in content and order. The tanker photographs showed “fastenergy” as the dominant lettering. The site claimed activity since 2014 and more than 33,000 customers, which, on the Respondent’s own account of a business begun on a domain name registered in January 2026, could not be true.
The Panel found it implausible that the Respondent arrived at this domain name and deployed it in the Complainant’s market by coincidence, and concluded that he was presenting himself as the Complainant, or as connected with it.
As UDRP Perspectives §3.3 (Targeting) explains, targeting is less easy to prove where a domain name corresponds to a common term than to a distinctive one, and it may be established by direct evidence such as the content of the website as well as by circumstantial evidence such as the timing of registration and the nature of the domain name.
The Respondent described an operating shop with real orders, deliveries and customer support records, and filed no annexes. The Panel declined to treat his assertions as proof, observing that if the business were as well documented as he said, the evidence would have been readily available and he must have understood that the Panel would need to see it.
The Respondent also objected that the fraud allegations rested on automated scanners and review sites that issue warnings algorithmically, without review by any authority or court. The Panel accepted that such sources must be weighed with care and said its conclusion did not rest on them alone, but on the website itself, the false statements it contained about the operator’s history and identity, and the Respondent’s failure to substantiate his claims.
Was the Panel asking more of the Respondent than of the Complainant? For the most part, no. The Complainant filed screenshots from which the impossible trading history and the copied layout could be seen directly, and the Respondent filed nothing.
At the margin, the Panel’s statements that the legal notice address had been copied from an unrelated company and that the VAT number was invalid came, as the decision records, from the Fakeshop-Finder report, the same source the Panel said must be handled with care. The Panel was open about this and the result did not turn on it. A complainant alleging a fake shop is nonetheless better served by verifying such details itself than by relying on an automated report.
Reliance’s JIO Complaint Fails Against a Business Using JIOLAT Since 2006; Panel Finds RDNH Over Omitted Opposition History
Reliance Industries Limited v. A P Singh, Indiacon.com, WIPO Case No. D2026-3905
<jiolat.com>
Panelist: Mr. Saisunder Nedungal Vidhya Bhaskar
Brief Facts: The Complainant, part of the Reliance Industries Limited Group, adopted the JIO trademark for its telecommunications business in December 2011 and launched Reliance Jio Infocomm Limited’s flagship telecommunications services under the JIO brand on September 5, 2016. The Complainant owns numerous Indian trademark registrations for JIO and JIO-formative marks across multiple classes, dating back to 2011. The disputed Domain Name was registered on November 24, 2022, in the name of A P Singh (Indiacon.com), described as the nominee of the proprietor of M/s JIOLAT Auto Gas Industries, which has been known by the name JIOLAT since at least February 2006. The Respondent provides several government-issued and statutory records evidencing the use of the term “JIO” as part of its trade name, “JIOLAT,” predating the Complainant’s adoption of the JIO mark.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed Domain Name, citing the struck-off status of JIOLAT-named companies, the abandonment of Trade Mark Application No. 3742661, and the website’s display of expired ISO certificates and photographs of allegedly non-associated individuals. It further claims bad-faith registration and use, noting the 2022 registration after the JIO mark became well known, the parties’ overlapping businesses (fuels, CNG, mobility), and the alleged mala fide intention to misappropriate the JIO brand. The Respondent contends that, through its group company Jiolat Fuel Tech Private Limited, it holds Trade Mark Registration No. 3520949 for JIOLAT in Class 12, registered after the Complainant’s opposition was held abandoned by the Indian Trademarks Registry.
Held: Registered in November 2022, the disputed Domain Name hosts the website of M/s JIOLAT Auto Gas Industries, accurately describes its goods and services, and reproduces the Respondent’s established trade name without addition. There is no evidence that it has been used for any purpose other than promoting the Respondent’s business. The business of JIOLAT Auto Gas Industries is carried on not by any of the incorporated entities but by Mr. Suresh Chaudhary as a proprietor, who has used the JIOLAT name since 2006. The Companies Act proceedings concerning JIOLAT Automotive India Private Limited, a separate legal entity, do not affect the proprietorship’s independent, long-standing use of the JIOLAT name. Those proceedings neither involved the proprietorship M/s JIOLAT Auto Gas Industries nor had any bearing on the trademark or the disputed Domain Name.
Similarly, the abandonment of trademark applications in other classes is not germane to the present dispute. As for the state of the Respondent’s website, the Panel finds that the currency or completeness of a business website does not bear on the legitimacy of an underlying trading name that has been documented for nearly twenty years. These factors, relied upon by the Complainant, do not displace the Respondent’s established rights. The Panel further notes that Trade Mark Registration No. 3520949 for JIOLAT in Class 12 was issued on August 21, 2026, eleven days before this Complaint was filed. This registration was applied for in 2017, five years before the disputed Domain Name was registered, and was granted after a contested opposition by the Complainant was abandoned. The Panel finds that the Respondent has established rights and legitimate interests in the disputed Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
RNDH: Having considered all the circumstances of this case, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Complainant had known of the JIOLAT business and its claim of prior use when it opposed Trade Mark Application No. 3520949 in September 2017. The Complainant therefore had actual knowledge of the Respondent’s usage claim of the trade name “JIOLAT” at least since then. A complainant that is aware of a respondent’s pre-existing, business use of its trade name and nonetheless proceeds with a UDRP complaint cannot claim to have had a plausible basis for believing it could succeed on the second and third elements.
Moreover, the Complainant failed to disclose that it had already opposed the Respondent’s JIOLAT trademark application under the Indian Trade Marks Act. The opposition was treated as abandoned on August 20, 2026, after the Complainant failed to file its evidence affidavit within the prescribed time. Only twelve days later, the Complainant filed this UDRP Complaint, without informing the Panel of the prior proceedings or their outcome. This omission deprived the Panel of material information and, given the timing and circumstances, supports the inference that the Complaint was filed to obtain through the UDRP an outcome the Complainant had not pursued successfully in the trade mark proceeding. WIPO Overview 3.1, section 4.16, expressly identifies the use of the UDRP to obtain what a complainant could not obtain through other proceedings as a factor indicative of RDNH.
Complaint Denied (RDNH)
Complainant’s Counsel: Ajay Sahni & Associates, India
Respondent’s Counsel: CA Dhananjay Jha, A D S G & Co., Chartered Accountants, India
Commentary by ICA General Counsel, Zak Muscovitch:
The RDNH finding rests on two facts the Complainant knew and one it did not disclose. It knew of the JIOLAT business, and of its claim to have traded under that name since 2006, because it had opposed the Respondent’s JIOLAT trademark application in September 2017. It knew that the opposition had been treated as abandoned on August 20, 2026, after it failed to file its evidence in time. Twelve days later it filed this Complaint and mentioned neither.
On the first point, the Panel held in its RDNH analysis that a complainant aware of a respondent’s pre-existing business use of its trade name cannot claim a plausible basis for believing it could succeed on the second and third elements. Paragraph 4(c)(ii) of the Policy recognizes being commonly known by the domain name as a legitimate interest, and a proprietorship that traded as JIOLAT for sixteen years before the Domain Name was registered is the paradigm case. The Panel’s own route was prior bona fide use: it relied on WIPO Overview 3.1, section 2.2, and on government-issued records showing use of the JIOLAT name since 2006. Having contested the Respondent’s claim of prior use in the opposition, the Complainant could not treat that claim as unknown when it filed the Complaint. The panel in desconautomation.ae, a decision under the .ae policy, reached the same conclusion where the complainant had known for years of the respondent’s long-standing trading name, holding that the complaint was foredoomed and should not have been pursued. UDRP Perspectives §4.2 (When a Finding of RDNH is Appropriate) describes the “fatally weak” complaint, where the complainant should have known its case could not succeed, as one of the established categories of RDNH.
On the second point, the Panel inferred from the timing and the silence that the Complaint was filed to obtain through the UDRP what the Complainant had not pursued successfully before the Trade Marks Registry. Paragraph 3(b)(xiii) of the Rules requires a complainant to certify that the information in its complaint is complete and accurate. An opposition against the very name that makes up the Domain Name, treated as abandoned for failure to file evidence twelve days before filing, is material on any view. UDRP Perspectives §4.2 identifies “breach of certification” cases such as Pick Enterprises as a recognized basis for RDNH, and WIPO Overview 3.1, section 4.16, on which the Panel relied, lists “the provision of intentionally incomplete material evidence” and “otherwise attempting to mislead the panel” among the reasons panels have given. The panel in mevlanaceylontea.com likewise found RDNH where the complainant failed to disclose trademark registrations held by companies associated with the respondent, in circumstances indicating that it knew, or should have known, of those rights.
Andrew Allemann (DNW.COM) covered the decision at Domain Name Wire under the headline “India’s biggest public company tries to reverse hijack domain name”.
Korean Auction Buyer’s USD $685,000 Asking Price Does Not Show Targeting
A&Z Pharmaceutical, Inc. v. Jeongyong Cho, WIPO Case No. D2026-3823
<dcal.com>
Panelist: Mr. Moonchul Chang
Brief Facts: The Complainant is a New York pharmaceutical and dietary supplement company, established in 1995, that markets its flagship calcium supplement, D-CAL, in North America, Asia and Europe. It owns three U.S. registrations for D-CAL: No. 4944782 (design) and No. 4944783 (word), both filed July 21, 2015 and registered April 26, 2016, and No. 6284953 (design), filed December 26, 2019 and registered March 2, 2021. The Domain Name was created on February 7, 2000. The Korea-based Respondent contends that he bought it at a public auction in March 2023 for USD $2,492 to build a personal website, and that financial difficulties delayed development. Before the proceeding the Domain Name resolved to a parking page offering it for sale, and the Complainant cites an asking price of USD $685,000.
The Complainant alleges that the Respondent has neither used nor made demonstrable preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services. Rather, the disputed Domain Name merely resolves to a landing page offering it for sale. The Complainant further alleges that the disputed Domain Name was registered and has been used in bad faith, as evidenced by the Respondent’s offering it for sale at the exorbitant price of USD $685,000, which it calls a “paradigmatic demonstration of bad faith” under paragraph 4(b) of the Policy. The Respondent contends that the disputed Domain Name is a single, uninterrupted four-letter string; that omitting the hyphen materially changes the mark’s visual, phonetic, and commercial identity; that the exact-match <d-cal.com> is held by an unrelated third party; and that he invested in the disputed Domain Name solely for its intrinsic commercial value.
Preliminary Issue: Language of the Proceeding: The registration agreement is in Korean, while the Complaint was filed in English. The Complainant requested that English be the language of the proceeding because it conducts business in English, the disputed website is in English and lists prices in USD, and using English would not prejudice the Respondent. Although the Respondent initially requested that the proceeding be conducted in Korean or in both Korean and English, it submitted its formal Response in English, demonstrating its ability to participate in English. Under paragraph 11(a) of the Rules, the Panel determines that English shall be the language of the proceeding.
Held: Under established UDRP jurisprudence, panels have consistently held that the practice of registering a domain name for subsequent resale (including at a profit) does not, of itself, substantiate a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner or its competitor. WIPO Overview 3.1, section 3.1.1. In the present case, the Panel notes that the disputed Domain Name is a short, four-letter term capable of varied legitimate third-party uses (for instance, the prior registrant appears to have utilized the disputed Domain Name to offer boat decals for sale).
Taking the foregoing into account, panels have generally held that where a registrant possesses an independent right to or legitimate interest in a domain name, an offer to sell that domain name does not, of itself, constitute evidence of bad faith for the purposes of the Policy, regardless of which party initiated the prospective sale. This applies equally to “generalized” offers to sell, including listings on third-party market platforms. With respect to paragraph 4(b)(i) of the Policy, panels have noted that an offer to sell a domain name for more than documented out-of-pocket costs constitutes bad faith only where it specifically targets the trademark owner; a mere profit-motivated offer, without such targeted bad faith, is insufficient.
The Panel further observes that the Complainant has failed to adduce evidence establishing the fame or commercial notoriety of its mark, whether generally or within the jurisdiction where the Respondent appears to be based. Furthermore, the Respondent expressly asserts a lack of actual knowledge of the Complainant at the time of registration. Under these circumstances, the Panel finds no compelling direct evidence to establish, on a balance of probabilities, that the Respondent specifically targeted the Complainant, rather than acquiring the disputed Domain Name for its intrinsic value as a short, memorable designation capable of alternative legitimate uses.
Complaint Denied
Complainant’s Counsel: Rivkin Radler LLP, United States
Respondent’s Counsel: Self-represented
Commentary by ICA General Counsel, Zak Muscovitch:
The Complainant’s case on bad faith was the asking price. It argued that offering a domain name for USD $685,000, far above out-of-pocket costs, is a “paradigmatic demonstration of bad faith” under paragraph 4(b) and that the figure itself showed the Respondent had targeted the Complainant. The Panel rejected that reading of the Policy. Paragraph 4(b)(i) is concerned with a registration made primarily to sell to the trademark owner or a competitor, and an offer above cost is evidence of bad faith only where it targets the owner. A profit-motivated offer without that targeting is not a violation, whichever party opened the discussion and whether or not the listing sat on a third-party platform.
The record gave the Panel nothing to connect the price to the Complainant. The Domain Name is a four-letter string with varied uses, the prior registrant having used it to sell boat decals, and, according to the Respondent, the exact-match <d-cal.com> is held by an unrelated third party. The Respondent bought it at public auction in March 2023 for USD $2,492. The Complainant’s registrations date from 2016, so the chronology was in its favour, but it filed no evidence of the reputation of D-CAL anywhere, let alone in Korea, and the Respondent denied knowing of the Complainant when he bought the Domain Name. On that record the Panel found no basis to conclude that the Respondent acquired the Domain Name for anything other than its intrinsic value as a short, memorable string.
The decision tracks UDRP Perspectives §3.5 (Setting a Price and Offering for Sale), which explains that panels should exercise considerable caution before drawing any inference from an asking price alone, since they are not experts in aftermarket valuation and rarely have a grasp of the pricing a domain investment model requires. An inference from price is best treated as confirming or undercutting a finding drawn from other evidence, not as the primary basis for one. The panel in iba.com put the same point directly: there is nothing inherently wrong in asking a high price for a domain name that is legitimately held.
The acquisition at public auction was consistent with the Respondent’s account of buying the Domain Name for its intrinsic value, particularly given the absence of evidence that he knew of or targeted the Complainant. As UDRP Perspectives §2.8 (Purchasing Domain Names at Public Auction) describes, buying an appealing short domain name at a public auction of expired names, without evidence of awareness of the complainant, points to legitimate activity rather than targeting. And the absence of any reputation evidence was decisive in its own right, since UDRP Perspectives §3.10 (Reputation) explains that a complainant will generally be unable to prove targeting without first proving that its mark had a reputation the respondent was likely to know of.
The Panel declined to find RDNH on the footing that the Complainant “appears to have misapprehended the evidentiary weight or probative value of its submitted evidence.” That gives the benefit of the doubt to a represented complainant whose entire third-element case was a price and whose complaint contained no evidence of reputation or targeting. UDRP Perspectives §4.2 (When a Finding of RDNH is Appropriate) identifies the “selling price gripe” case, such as Patricks, where the complainant’s only real complaint is the respondent’s price, as an established category of RDNH, alongside the “fatally weak” complaint filed without evidence of targeting. Whether a complaint that fits both descriptions is excused by the complainant’s misreading of its own evidence, or is explained by it, is a fair question.
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.
This Digest was prepared using UDRP.Tools and the resources: Library of UDRP & ACPA Materials | The Clash of Trademarks and Domain Names on the Internet (by Mr. Gerald M. Levine)