A Google Search Could Have Avoided This RDNH Finding
The most noteworthy aspect of this decision is the Panel’s emphasis on a complainant’s obligation to conduct a reasonable pre-filing investigation. The Panel found Reverse Domain Name Hijacking not merely because the Complaint failed, but because readily available information would have revealed that the claim had little prospect of success. Continue reading commentary here.
Join us for this year’s Levine Lecture featuring Nick Gardner, who will present: “26 Years of Deciding UDRP Cases—What Does a Panelist Actually Do, and Why? How Will AI Change This?“ A veteran of UDRP practice, Nick’s experience ranges from early landmark English court cases to presiding over hundreds of disputes as a leading WIPO and Nominet panelist. The session will include an introduction by Zak Muscovitch, opening remarks by Tony Willoughby, and closing remarks from Gerald Levine.
We hope you will enjoy this edition of the Digest (vol. 6.24) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ A Google Search Could Have Avoided This RDNH Finding (inyo.com *with commentary)
‣ Panel: No Rule of Constructive Notice for Domain Investors (fermec.com *with commentary)
‣ Trademark Post-Dating Domain by Nine Years Dooms Complaint; Panel Finds RDNH (ceoathlete.com *with commentary)
‣ A Trademark Dispute Is Not Necessarily a Cybersquatting Dispute (smartsettle.ai *with commentary)
A Google Search Could Have Avoided This RDNH Finding
Inyo, Inc. v. Domain Management / Blue Nova Inc, Forum Case No. FA2604002216806
<inyo.com>
Panelist: Mr. Georges Nahitchevansky (Chair), Mr. David L. Kreider and Mr. Steven M. Levy
Brief Facts: The Complainant is a Florida-based financial services company that has used the INYO mark since as early as 2015. It owns a US trademark registration for its INYO mark in connection with its payment and related services (registered: January 28, 2025; first use in commerce: June 15, 2016). The Complainant notes that it owns the domain names <inyoglobal.com> and <inyopay.com> as well as social media pages that use the identifier “InyoPay.” The Respondent is a professional domain name investor that acquired the disputed Domain Name <inyo.com> in or around November 2005, and operated a large portfolio of short four-letter and generic domain names for over twenty-five years.
The Complainant alleges that the disputed Domain Name currently features, and has featured since 2019, a web page displaying the name and logo of an entity called “Venture” and offering the disputed Domain Name for lease or rent. The Complainant further alleges that the content at the disputed Domain Name was different in 2015, consisting of a page with a picture of sandals and click-through links to general categories. Based on this difference in use, the Complainant maintains that the current owner was not the owner of the disputed Domain Name when the Complainant began using the INYO mark, and that the Complainant’s use of the INYO mark appears to predate the Respondent’s registration and use of the disputed Domain Name.
The Respondent notes that it changed its business model in 2015 and points out that for the last seven years the disputed Domain Name has been showcased with other valuable domain names on the Venture.com platform, which allows interested parties to lease the Domain Names for personal or business use. The Respondent contends that it purchased the disputed Domain Name because it was inherently valuable as a short four letter combination that is brandable and did so well before the Complainant acquired its claimed trademark rights in the INYO mark. The Respondent further contends that there is much third party use of “inyo” and that such term is not exclusively connected to the Complainant.
Held: The Complainant admits that its first use of the INYO mark was in 2015 and thus it is obvious that the Respondent could not have registered or acquired the disputed Domain Name in bad faith some ten years earlier when the Complainant had no rights in the INYO mark. Consequently, the Complainant has failed to meet its burden of showing that the Respondent registered the disputed Domain Name in bad faith. The Complainant further attempts to argue that a change of ownership of the disputed Domain Name “appear[s] to” have occurred in 2019 based on a change of use of the Domain Name. That argument is flimsy at best as a change of use of the disputed Domain Name (from a domain name parking page with PPC links to a page offering to lease the disputed Domain Name) in and of itself does not establish a change of ownership. What is needed and glaringly missing is evidence showing that an actual ownership change more likely than not occurred.
But even assuming arguendo, that the Complainant is right and an ownership change had occurred after 2015 (when the Complainant first started using the INYO mark), the Complainant’s complaint nevertheless fails for failing to prove bad faith registration and use of the disputed Domain Name. First, while the Complainant claims that its INYO mark is well known, the Complainant has failed to substantiate that claim with evidence beyond screenshots of its Facebook and X social media pages. To be sure, conclusory statements unsupported by evidence are entitled to little weight. Second, the Respondent provided much evidence showing that there is third party use of “inyo” and that as a result “inyo” is not exclusive to the Complainant. Lastly, the Complainant did not provide any evidence that the Respondent was targeting the Complainant either when it registered the disputed Domain Name or when it offered it for lease on the Venture.com website.
RDNH: The Complainant, who was represented by counsel, should have known that its claim could not succeed under the Policy. The Complainant brought this case claiming its mark was well-known, but provided no evidence supporting that claim. The Complainant similarly provided no evidence that the Respondent was in fact more likely than not targeting the Complainant and registered the disputed Domain Name on account of its significance in relation to Complainant’s INYO mark. Even if there were challenges in ascertaining the date on which the Respondent acquired the domain name, such lack of evidence further underscores that there was no bad faith registration or use of the disputed Domain Name by the Respondent and that the Complainant’s complaint was doomed to fail.
Moreover, the Complainant could have readily found after receiving the registrar’s disclosure concerning the disputed Domain Name that the registrant was a domain name investor and he had changed its name in 2015 in a rebrand. A simple Google search would have revealed Respondent’s website at <bluenova.com> along with prior UDRP decisions in which the Respondent had prevailed. The Complainant could have also ascertained that the Respondent had likely acquired the disputed Domain Name in 2005, some ten years before the Complainant began using the INYO mark for its financial services and that the Complainant’s claimed change of ownership based on a change of use of the disputed Domain Name in 2019 was an unsupportable argument.
Complaint Denied (RDNH)
Complainant’s Counsel: Benjamin P. Harbuck, Dentons US LLP, Illinois, USA
Respondent’s Counsel: Jason Schaeffer, ESQwire .com P.C. / The Domain Name Law Firm, New Jersey, USA
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The most noteworthy aspect of this decision is the Panel’s emphasis on a complainant’s obligation to conduct a reasonable pre-filing investigation. The Panel found Reverse Domain Name Hijacking not merely because the Complaint failed, but because readily available information would have revealed that the claim had little prospect of success.
The Complaint faced an obvious chronological problem from the outset. The Respondent had acquired the disputed domain name approximately ten years before the Complainant began using its INYO mark. To overcome this obstacle, the Complainant advanced the theory that a change in website content in 2019 suggested that the domain name had changed hands after the Complainant acquired trademark rights. The Panel found this argument unsupported by any actual evidence of a transfer and observed that a change in use is not evidence of a change in ownership.
More significantly, the Panel held that the Complainant should have undertaken basic due diligence before filing. Following the registrar’s disclosure, the Complainant knew the identity of the registrant. A simple internet search would have revealed that the Respondent was a longstanding domain name investor operating a substantial portfolio of domain names and that it had previously prevailed in other UDRP proceedings. Similar inquiries would also have undermined the Complainant’s speculative ownership-change theory.
The decision is a useful reminder that once a registrant’s identity becomes known, complainants are expected to investigate the facts before advancing allegations of bad-faith registration. Here, the Panel concluded that the information necessary to assess the viability of the Complaint was readily available and that the Complainant nevertheless proceeded with a claim that was ultimately “doomed to fail.”
Panel: No Rule of Constructive Notice for Domain Investors
<fermec.com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The UK-based Complainant offers little information concerning its business or its use of the FERMEC mark, but the Complainant operates a website at “www.mecalac.com”, which describes the Complainant as “an international manufacturer of wheel excavators, crawler excavators and wheel loaders” and a part of the Fayat Group. The Complainant claims two relevant trademark registrations for FERMEC as a word mark, EU and UK trademarks, both registered on October 14, 1998. The disputed Domain Name was created on October 6, 2019, and resolves to a GoDaddy landing page with a “Purchase this domain” button. The Respondent describes itself as a domain name investor that acquires “short, memorable, and commercially valuable domain names as investment assets”. The Respondent reports that it acquired the disputed Domain Name at auction in October 2019 after its registration had lapsed, for the nominal sum of USD $240.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed Domain Name, as it is used only to redirect to a page advertising the disputed Domain Name for sale, citing a single precedent. The Respondent claims a legitimate interest in the disputed Domain Name for the value of this “short, pronounceable combination of common French dictionary words, suitable for investment and resale”, citing UDRP precedents on the legitimacy of investing in domain names and observing that UDRP precedents do not require “active use” to establish legitimate interests in such domain names. The Response provides evidence that its portfolio includes many other examples of aggregating short strings including the “fer” element (referring to “iron”) or the “mec” element referring to “mechanics”, typically using suffixes or prefixes from Latin or Romance languages.
Held: The Panel finds that, before notice to the Respondent of the dispute, the Respondent registered and then offered the disputed Domain Name for sale consistent with a longstanding business practice of investing in short strings composed of aggregated, memorable elements. In this case, the string is demonstrably similar to many others in the Respondent’s portfolio built around the same elements “fer” and “mec” that are of possible interest to industrial or commercial enterprises and are in fact used in many other corporate, product, and domain names, across multiple languages.
The Respondent also denies prior awareness of the Complainant or its mark, and this is credible in these circumstances. Although there was a registered FERMEC mark, the available record indicates that the Complainant’s products had been marketed principally since 2001 under the TEREX mark not the FERMEC mark; the Complainant offers no evidence to the contrary of commercial use of the mark, and the mark did not appear even on the website associated with the disputed Domain Name before its registration expired in 2019.
The Panel is not inclined to adopt a rule of constructive notice of global trademark registrations or a general standard of due diligence for domain investors, particularly for domain names composed of short strings and dictionary elements such as this one. Thus, the available evidence supports the Respondent’s contention that the disputed Domain Name was selected for its inherent potential commercial value and not as a pretext for exploiting the Complainant’s mark or in an attempt to make a sale to the Complainant for an extortionate amount. 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 trademark.
RDNH: The Complaint was filed by specialist intellectual property counsel and yet failed to disclose and explain material facts concerning the status of the Complainant’s trademark registrations, the commercial use of the trademark, and the ownership and use of the disputed Domain Name by the Complainant’s former parent company immediately prior to the Respondent’s acquisition of the disputed Domain Name. The Complainant relied on the second element in a UDRP decision that it grossly mischaracterized as supporting the novel proposition that “domain name reselling, without actual use, does not establish a legitimate interest”.
The Complainant’s case on the third element hinged on the Respondent’s offering the disputed Domain Name for sale and stated, incorrectly, that “Panels have consistently held that offering a domain name for sale at a price in excess of documented out-of-pocket costs constitutes evidence of bad faith under paragraph 4(b)(i) of the Policy”. That is not what the Policy says (and not what panels hold), and it is an overgeneralization that would largely invalidate the domain resale industry.
The Policy infers bad faith where circumstances indicate that the respondent has acquired the disputed Domain Name primarily for the purpose of selling it to the owner of a trademark for a price in excess of out-of-pocket costs. This requires evidence demonstrating the probability that the respondent was aware of the trademark when the respondent acquired the Domain Name and did so primarily with the intention of selling it to the trademark owner. The cumulation of these material omissions or misstatements of fact and of Policy provisions and precedent lead the Panel to a finding of Reverse Domain Name Hijacking in this proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: IPSILON, France
Respondent’s Counsel: Cylaw Solutions, India
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision is noteworthy for the Panel’s express refusal to adopt “a rule of constructive notice of global trademark registrations” or “a general standard of due diligence for domain investors.” In the context of a domain name “composed of short strings and dictionary elements,” the Panel declined to infer bad faith merely from the existence of an earlier trademark registration.
The Panel was persuaded by the Respondent’s evidence that the disputed domain name had been acquired as part of a longstanding business practice of investing in short and memorable domain names. In particular, the Panel found that the disputed domain name was “demonstrably similar to many others in the Respondent’s portfolio built around the same elements ‘fer’ and ‘mec'” and accepted that these elements were used in numerous corporate, product, and domain names across multiple languages. On that record, the Panel concluded that the disputed domain name had been selected for its “inherent potential commercial value” rather than as a pretext for exploiting the Complainant’s trademark.
The Panel also found credible the Respondent’s denial of prior knowledge of the Complainant or its mark. Significantly, although the Complainant owned trademark registrations dating back to 1998, the record indicated that its products had principally been marketed under a different brand since 2001, and the Complainant provided little evidence of contemporary commercial use of the FERMEC mark. The Panel, therefore, found no basis to conclude that the Respondent more likely than not acquired the disputed domain name with the Complainant or its trademark in mind.
The RDNH finding was equally forceful. The Panel criticized the Complainant, represented by specialist intellectual property counsel, for material omissions concerning the history and use of the FERMEC mark and for mischaracterizing both UDRP precedent and paragraph 4(b)(i) of the Policy. In particular, the Panel rejected the Complainant’s assertion that offering a domain name for sale at a price exceeding out-of-pocket costs is itself evidence of bad faith, observing that such a proposition “would largely invalidate the domain resale industry.”
The decision provides a clear reaffirmation that domain name investing remains a legitimate business under the UDRP. Where a respondent can demonstrate that a domain name was acquired as part of a consistent investment strategy focused on commercially attractive strings, and not because of a complainant’s trademark rights, the mere existence of a trademark registration and a sale offer will not establish bad faith.
Congratulations to ICA UDRP Digest Editor Ankur Raheja, who successfully represented the Respondent in this proceeding.
Trademark Post-Dating Domain by Nine Years Dooms Complaint; Panel Finds RDNH
Anshul Singhal v. Katie Kelly, WIPO Case No. D2026-1415
<ceoathlete.com>
Panelist: Mr. David Taylor
Brief Facts: According to the Complainant, he is an entrepreneur, fund manager, and business leader based in India, and his combination of business acumen, entrepreneurial achievement, and leadership development forms the foundation of the “CEO Athlete” leadership development platform. The Complainant created the CEO Athlete leadership development platform to help emerging leaders and aspiring entrepreneurs through podcasts, guidebooks, e-books, newsletters, digital tools, practical frameworks, and downloadable resources. The Complaint is based on various trademark applications for CEO ATHLETE filed with the Registrar of Trade Marks in India, which are pending, except for an Indian registration for the device mark “ceo.athlete,” filed on February 28, 2025, and registered on December 15, 2025.
The Complainant owns the domain names <ceoathelete.com>, <ceo-athlete.com>, and <ceoathlete.ai>, which resolve to a parking page. The disputed Domain Name was registered on March 23, 2016 and currently resolves to a webpage displaying “Account Suspended”. The Complainant alleges that the Respondent has not created any website at the disputed Domain Name, but that such non-use does not preclude a finding of bad faith. The Complainant further alleges that the Respondent’s registration of the disputed Domain Name is a deliberate act of infringement and misrepresentation, intended for unlawful monetary gain and to mislead consumers. The Respondent did not file a Response.
Held: The disputed Domain Name was registered on March 23, 2016. The Complainant’s case is based on Indian trademark applications for CEO ATHLETE, one of which has only recently matured to registration in 2025, nearly nine years after the disputed Domain Name was registered. The Complainant has not asserted nor demonstrated reputation in “CEO Athlete” at the relevant date. There is no indication of first use in commerce of the CEO ATHLETE mark, no material as to publicity, reach, or market presence, and no documentation from which awareness of the Complainant on the part of the Respondent might reasonably be inferred. Against that background, the Complainant’s assertion that the Respondent registered the disputed Domain Name in bad faith cannot be upheld and the Complaint must therefore fail.
See Philip Savino v. Cykon Technology Limited, WIPO Case No. D2020-1156: “In the present case, however, the Respondent registered the disputed Domain Name more than 10 years before the Complainant registered the Trademark and at least seven years before the date of first use in commerce claimed in the United States Patents and Trademarks Office. That gulf of time between the registration of the disputed Domain Name and the Complainant commencing use of the Trademark does not lend itself to those exceptional situations where Panels have been prepared to find registration in bad faith… The record in this proceeding does not suggest anything like those scenarios or other basis to depart from the usual rule. Accordingly, the Complainant has failed to establish this requirement under the Policy and the Complaint must fail.”
For completeness, the Panel finds that the absence of a website at the disputed Domain Name does not alter the analysis. Passive holding may, in appropriate cases, support an inference of bad faith where other indicia point clearly to targeting; however, no such indicia are present here. WIPO Overview 3.1, section 3.3. The Panel further finds that the Complainant has failed to demonstrate that the disputed Domain Name is being used in bad faith.
RDNH: The disputed Domain Name was registered on March 23, 2016, whereas the Complainant has sought to rely upon Indian trademark applications for CEO ATHLETE, one of which matured to registration only in 2025, nearly nine years after the Respondent registered the disputed Domain Name. No evidence of any earlier relevant rights, registered or unregistered, has been produced. On a plain reading of the Policy and well-established UDRP principles, the Complaint as filed lacked a reasonable prospect of success.
The Complainant was represented by counsel and referred in its submissions to views as expressed in WIPO Overview 3.1 and prior decisions, which underscores that the determinative timing issue under the third element of the Policy should have been apparent. In these circumstances, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Panel therefore finds that the Complaint amounts to an attempt at Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: Luthra & Luthra Law Offices, India
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This was a straightforward case, but the RDNH finding is noteworthy. The disputed domain name was registered in 2016, while the Complainant’s trademark rights arose years later, with its only registration issuing in 2025. The Complainant produced no evidence of earlier trademark rights, reputation, or use from which the Respondent could have been found to have targeted the Complainant at the time of registration.
The Panel had little difficulty concluding that the Complaint could not succeed. As the Panel noted, the timing issue was apparent on the face of the record and was fatal to the claim. The Complainant’s reliance on passive holding was equally unavailing, since passive holding can only support a finding of bad faith where there is other evidence pointing to targeting, which was absent here.
The RDNH finding followed naturally. The Complainant was represented by counsel and cited both the WIPO Overview and prior UDRP decisions, making it difficult to argue that the fundamental timing problem was not understood. As the Panel observed, on a plain reading of the Policy and well-established UDRP principles, the Complaint lacked a reasonable prospect of success from the outset.
A Trademark Dispute Is Not Necessarily a Cybersquatting Dispute
iCan Systems Inc. v. Jason Fertel / SmartSettle AI, Inc., WIPO Case No. DAI2026-0026
<smartsettle.ai>
Panelist: Mr. Jeremy Speres
Brief Facts: The Complainant has, since 1999, operated an online dispute resolution platform under the SMARTSETTLE mark from its domain name (registered in 1999). The Complainant owns Canadian trademark registration for SMARTSETTLE, having a registration date of October 14, 2004. The disputed Domain Name was registered on November 7, 2023. Since 2024, the disputed Domain Name has been used to offer artificial intelligence (“AI”) based financial transaction settlement services under the SMARTSETTLE AI mark.
The Complainant alleges that the Respondent registered and used the disputed Domain Name in bad faith because the SMARTSETTLE mark had been used and registered by the Complainant for decades before the registration of the disputed Domain Name, and the Respondent used the identical mark in a related field to create confusion and capitalize on the Complainant’s reputation. Notably, the Respondent contends that the disputed Domain Name was registered and used in good faith without prior knowledge of the Complainant for a bona fide AI-driven financial settlement business unrelated to the Complainant’s negotiation and dispute-resolution services, and that the parties operate in distinct industries with different meanings attached to “settlement”.
Held: Apart from the shared SMARTSETTLE name, there are no indicators pointing to the Respondent seeking to take advantage of the Complainant’s mark. The logos, colors, and general look and feel of the Parties’ respective websites are easily distinguishable, and there is no other indicator suggesting targeting by the Respondent. The Respondent appears to have operated a legitimate business since 2024 at the disputed Domain Name. The Respondent’s explanation for its choice of brand and domain name is quite plausible and in line with the descriptive nature of the brand and the disputed Domain Name in the context of the Respondent’s industry.
Furthermore, the Respondent’s industry is markedly different from that of the Complainant, and confusion and targeting are less likely as a result. The Respondent claims to have been unaware of the Complainant when it registered the disputed Domain Name, which appears quite plausible. The Complainant operates in Canada and has provided no evidence of any trademark rights, any usage of its mark nor any notoriety within the Respondent’s jurisdiction of the United States. As noted, the Parties’ industries are also different, and the Respondent cannot be assumed, by virtue of its industry knowledge alone, to have had prior knowledge of the Complainant. The Complainant claims actual confusion on the part of consumers but provides no evidence in this regard.
RDNH: In the present case, the Complainant had been using its trademark, which is identical to the disputed Domain Name, for over 20 years prior to registration of the disputed Domain Name, and its trademark was registered for roughly 19 years prior to registration of the disputed Domain Name. The Complainant’s mark also appears to enjoy some goodwill within its industry. Noting that the Complainant appears pro se, in light of the factors discussed above, the Panel considers that it is more likely than not that the Complainant genuinely believed this to be a case of cybersquatting, and that belief does not seem to have been entirely unreasonably held in light of the facts. The Panel declines to find RDNH.
Complaint Denied
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Wilmer Cutler Pickering Hale and Dorr LLP, United States
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Panel deserves credit for resisting the temptation to equate identical trademarks with cybersquatting. Although both parties used the SMARTSETTLE name, the Panel focused on the central question under the Policy: whether the Respondent registered the disputed domain name because of the Complainant’s mark.
The Panel found that the Respondent had established and was operating a legitimate AI-driven financial settlement business at the disputed domain name. The Respondent’s explanation for its adoption of the SMARTSETTLE AI name was consistent with the descriptive nature of the term in the context of its services, and the Panel found no evidence that the Respondent was seeking to capitalize on the Complainant’s reputation. Rather than treating the identical names as dispositive, the Panel carefully examined the surrounding circumstances and concluded that the record supported independent adoption rather than trademark targeting.
Particularly significant was the Panel’s recognition that the parties operated in different jurisdictions and different industries. The Complainant was a Canadian provider of online dispute resolution services, while the Respondent operated a U.S.-based business focused on AI-assisted financial transaction settlements. In the absence of evidence that the Complainant enjoyed a reputation in the Respondent’s market, the Panel was unwilling to assume that the Respondent must have been aware of the Complainant when adopting its brand.
The decision is a useful reminder that the UDRP and the Policy are concerned with targeting, not merely coexistence. Even where two parties use identical trademarks, the existence of a legitimate business, a credible explanation for adoption, and a lack of evidence of targeting may defeat a complaint.