Cultural Heritage & Mythology in Domain Name Disputes: Legitimate Interests, Bad Faith, and Targeting by Bart Van Besien
What happens when a domain name is identical to a trademark, but the same word is also the name of a mythological figure or otherwise forms part of cultural heritage?
Both trademarks and domain names frequently draw on names from mythology and other parts of our shared cultural heritage. A domain name such as Nike, Juno, Clio or Artemis may therefore correspond exactly to a trademark without having been chosen because of that trademark. This can be particularly relevant when assessing whether a domain name holder has rights or legitimate interests in the domain name and whether the domain name was registered and used in bad faith. The cases below illustrate how panels have approached these questions. Continue reading here.
We hope you will enjoy this edition of the Digest (vol. 6.32) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ A Weak Response Is Not a Substitute for the Complainant’s Burden (tise.org *with commentary)
‣ Sentimental-Gift Explanation for Acronym Domain Rejected as Implausible (wta.tennis *with commentary)
‣ Founder’s Own Reddit Admission Undercuts Complaint (pluggable.com *with commentary)
‣ What Did the Complainant Know When It Amended? (venturi.ai *with commentary)
‣ Complainant’s Own Evidence Names a Third Party as Site Creator; Panel Finds RDNH (theswamp.com *with commentary)
A Weak Response Is Not a Substitute for the Complainant’s Burden
eBay Marketplaces GmbH v. N Sanchez, Forum Claim Number: FA2606002229696
<tise.org>
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant claims to have operated an online shopping market and auction website for over 25 years and since 2016 operated a community-driven second-hand fashion and lifestyle marketplace under the mark TISE and from the website www.tise.com. It also claims to have built a strong global reputation in the TISE mark through 10 years of trading and millions of users. The Complainant owns rights in the TISE mark through registration in numerous jurisdictions including USPTO (registered on November 14, 2017). The disputed Domain Name was registered April 11, 2026 through DropCatch.com. The Complainant alleges that the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services as the Domain Name is essentially inactive, initially resolving to a non-functional landing page with a link to a placeholder domain and now entirely inactive. The Complainant further alleges that the Respondent registered the disputed Domain Name with awareness of Complainant’s well-known TISE mark based on Complainant’s long-term use of (and significant reputation in) the mark, a coined word with no ordinary meaning in the English language.
The Respondent contends that he has not engaged in any activity that would indicate any deliberate or apparent confusion with the Complainant and that there are numerous entities with rights in the TISE mark. The Respondent further contends that by reason of the multiple entities using the TISE mark there is no basis to find that the Respondent is using the Domain Name to mislead others or to act in bad faith and the Respondent does not offer any goods from the Domain Name that conflict with the Complainant’s goods.
Held: The Domain Name is inactive. In the absence of any additional evidence inactive holding of a disputed Domain Name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). The Panel has reviewed the Response, which provides no explanation for why the Respondent chose to register the Domain Name or what it has done or seeks to do with it. The Response merely asserts that by reason of the Complainant not having exclusive rights in TISE (a matter addressed earlier in this decision) that the Respondent must have rights or legitimate interests. Noting that the term TISE is a coined term with no meaning in the English language (or any other language apparent to the Panelist) and the absence of any explanation for the registration of the Domain Name and the lack of use, the Panel finds that the Respondent’s conduct does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel also notes that Respondent’s actions do not fall under Policy ¶ 4(b), but those examples are illustrative, not exclusive. A Panel may consider all circumstances, including passive holding, in making its bad faith analysis. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”). The Respondent has, without a coherent or supported explanation (or active use), registered a domain name that is identical to the coined and well-known TISE mark. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii) and, after considering the totality of the circumstances (including the nature of the TISE mark and no explanation for the Respondent’s actions, or any possible good faith use of the Domain Name by the Respondent), the Panel finds on the balance of probabilities that this inactive holding of the Domain Name amounts to use in bad faith per Policy ¶ 4(a)(iii).
Transfer
Complainant’s Counsel: Amanda Marston, Holland & Hart LLP, Colorado
Respondent’s Counsel: Self-represented
Commentary by ICA President, Nat Cohen: Inferences depend on context. The TISE.org decision illustrates how much distance can separate the perspective of a domain name investor from that of a panelist whose background is in IP law. What reads as an ordinary acquisition to the one can read as an unexplained one to the other.
The Response in this case was considerably weaker than it might have been. The Respondent appears to have believed it had said enough; the Panel found that it had not. That gap—between what the Respondent thought sufficient and what the Panel required—is where the decision turns, and it is worth examining what the record did and did not establish.
To a domain investor, the acquisition of TISE.org calls for no special explanation. The string has an appealing, pronounceable consonant-vowel-consonant-vowel (CVCV) pattern and is composed entirely of common, frequently used letters—a combination of traits shared by only about one percent of four-letter strings. When names of this kind are offered at expiry auctions, they draw active bidding from domain name investors, who expect that a domain name with these characteristics will appeal to a range of potential third-party users.
That premise is borne out here. TISE is used as an acronym by many organizations around the world. The Internet Archive records that tise.org was previously registered to the Telematikinstitut für Software Engineering—itself known as TISE—demonstrating the term’s appeal and suitability to entities other than the Complainant. (Internet Archive capture, March 25, 2011.)
The Complainant operates a community-driven secondhand fashion and lifestyle marketplace under the TISE mark at tise.com. It has a USPTO registration dating to 2017. The Domain Name was registered on April 11, 2026, and was held inactively. The Respondent appeared but argued only that the Complainant lacked exclusive rights in the term. The Panel found that the Domain Name had been registered in bad faith and that its passive holding amounted to use in bad faith. It ordered tise.org transferred.
Critically, the Respondent offered no account of why it had acquired the Domain Name. Its defense, in substance, was that “there are numerous entities with rights in the TISE mark” and that it was not targeting the Complainant. The decision relied on that omission, observing that the Response provided “no coherent or supported explanation for the registration.” A professionally prepared Response would very likely have looked quite different—addressing the recognized investment appeal of four-letter domain names, their acronym potential, and the existence of plausible third-party uses as sufficient reasons for acquiring the domain name at auction. The decision may have been different had the response been better. The result of the dispute may therefore say more about the deficiencies of the response than about the underlying merits of the dispute.
The decision nonetheless raises recurring fundamental questions about the implementation of the UDRP as to the sufficiency of evidence from which to draw inferences of bad faith and as to which party bears the evidentiary burden. The Policy requires that the Complainant bears the burden of proving bad-faith registration and use. A weak Response may leave a complainant’s allegations unrebutted, but it does not itself supply affirmative evidence of targeting. The reasoning here illustrates the risk that the absence of a convincing explanation from the Respondent substitutes for evidence that the Respondent registered the Domain Name with the Complainant in mind.
That risk is heightened where the finding rests on passive holding. As articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and preserved in section 3.3 of the WIPO Overview 3.1, the doctrine is a confined exception that turns on “the implausibility of any good faith use to which the domain name may be put.” Yet the decision itself acknowledged that TISE “could, and indeed does, operate as an acronym used by other entities”—conceding that a plausible good-faith use exists. Having recognized the very circumstance the doctrine requires to be absent, the decision ultimately rests on the Panel’s dissatisfaction with the Respondent’s explanation rather than on a faithful application of the passive holding doctrine.
Can an inadequate Response leave a respondent worse off than no Response at all? Had the Respondent defaulted, would the Panel have found the Complainant’s evidence of targeting sufficient on its own? It is at least possible that the Respondent’s ability to muster only a weak Response lent the Complainant’s case an appearance of strength it had not independently earned. A domain name investor is well advised to articulate a coherent, supported rationale for acquiring the particular name in dispute. Engaging experienced counsel is also a good idea.
Yet a deficient Response is merely a weakness in the respondent’s case; it is not a substitute for the Complainant’s burden of proof. In this dispute, the weakness in the Complainant’s evidence was overlooked, and the burden fell disproportionately on the Respondent to disprove the Complainant’s allegations rather than on the Complainant to prove them on the balance of probabilities.
Sentimental-Gift Explanation for Acronym Domain Rejected as Implausible
WTA Tour, Inc. v. Badan Sergiu, Badan Sergiu, WIPO Case No. D2026-2148
<wta.tennis>
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant is the Women’s Tennis Association, operator of the WTA Tour, holding numerous registered WTA marks including US registration (2011) and operating from “wtatennis.com.” The disputed Domain Name was registered May 20, 2015. It resolved to Sedo parking pages by 2024–2025 with tennis-related PPC links and by May 2026 it was listed for sale on Sedo with a minimum offer of USD $9,999. In 2025, investigator acting for the Complainant approached the Respondent posing as a buyer for “a friend”; the Respondent indicated it wasn’t actively selling but “may consider” a good offer, mentioned “an open offer for 20x” the investigator’s USD $42,500 bid, then later suggested the investigator try <shop.tennis> instead. The Respondent rejected a USD $7,500 offer. After Complainant’s April 2025 legal demand, the Respondent removed the Sedo listing, posted a disclaimer stating the domain was a gift for his tennis-fan wife and was “not affiliated” with the Complainant, and offered to point the domain to Complainant’s servers for no more than annual registration costs.
Post-Complaint, once the Respondent learned the earlier offer had come from the Complainant itself, he indicated openness to reconsidering the USD $7,500 offer to settle. The Respondent contends that the disputed Domain Name was registered solely as a sentimental gift for the Respondent’s wife, a lifelong tennis fan, and not to target the Complainant or its trade marks. The Respondent further contends that the Sedo parking was implemented only to offset renewal costs and that the asking price was intended merely to discourage unsolicited approaches from potential buyers rather than as a genuine sale offer. The Respondent further adds that he never initiated contact with the Complainant and had rejected the investigator’s offers as too low relative to an “open offer” he received, which he characterized as a discouraging tactic and that the investigator’s use of a false identity amounted to entrapment. Finally, after the legal letter he acted transparently and in good faith by removing the Sedo listing, posting a disclaimer, and offering free DNS pointing.
Held: Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name. The disputed Domain Name has been used for a parking page with PPC links to tennis-related goods/services. Use of a domain name to host PPC links that compete with or capitalise on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users does not represent a bona fide offering. WIPO Overview 3.1, section 2.9. It does not assist the Respondent that the PPC links were automatically generated by Sedo or that the Sedo parking generated only “pennies” in revenue. WIPO Overview 3.1, section 3.5. Nor is it relevant, if true, that some or all of the PPC links ultimately led to the websites of broadcasters authorised by the Complainant. The fact remains that the PPC links capitalised on trade mark value and do not represent a bona fide offering under the second element.
Further, the Panel considers that the Respondent registered the disputed Domain Name for sale to the Complainant for an amount likely to exceed the Respondent’s out-of-pocket costs. First, the Respondent has not provided any evidence to substantiate the claim that the disputed Domain Name was a sentimental gift for his wife, let alone explained what he envisaged his wife would do with a domain name that has been parked since its registration in 2015. Second, the Complainant has established a vast reputation and it is inconceivable that that the Respondent chose the acronym “wta” in conjunction with the gTLD suffix “.tennis” other than by reference to the Complainant. Third, the Respondent offered the disputed Domain Name for sale at USD $9,999 and, the Panel does not find it credible that this was merely to discourage unsolicited approaches from potential buyers, as the Respondent claims. More likely than not, the Respondent was aiming this price at the Complainant.
Transfer
Complainant’s Counsel: IPAssure Brand Protection Services, LLC, United States
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision shows the targeting framework producing a transfer for exactly the right reasons, and it makes an instructive companion to the TISE acronym case covered above in this Digest in which the complainant prevailed. An acronym standing alone typically has many potential users and referents, which is why targeting must be proven rather than presumed. But composition matters, and here the composition did the talking: “wta” paired with the gTLD “.tennis” is not three random letters in a neutral space, it is the acronym joined to the very field that defines the Complainant, an organization with a vast reputation and a billion-strong audience. As the Panel put it, it is inconceivable that the Respondent chose that combination other than by reference to the Complainant. Where <nuwave.ai> failed for want of any connection between term and complainant, <wta.tennis> succeeded because the domain name itself supplied the connection.
The Respondent’s explanation then collapsed under its own weight. The sentimental-gift account was supported by no evidence at all, came with no explanation of what the Respondent’s wife was meant to do with a domain name parked for over a decade, and sat awkwardly beside a USD $9,999 Sedo listing, a claimed “open offer for 20x” the investigator’s bid, and a story that shifted from possible sale to not-for-sale to free DNS pointing as the pressure mounted. The lesson for respondents is one this Digest has drawn before: an explanation for a registration must be documented, not merely asserted, and a plausible account offered at the outset is worth more than a disclaimer posted after the legal letter arrives.
What makes the decision particularly worthy of note is the Panel’s evidentiary discipline in reaching a conclusion it could have reached carelessly. It declined to treat the Respondent’s statements to the Complainant’s undercover investigator as evidence of the Respondent’s intent a decade earlier, placed no weight on the Respondent’s post-Complaint openness to settlement, made no bad faith finding on the automatically generated PPC links, and disregarded the disputed post-demand relisting. Each of those items might have been pressed into service by a less careful panel, and each was properly set aside, with the finding resting instead on the implausibility of the Respondent’s account, the strength of the mark at the date of registration, and the composition of the disputed Domain Name itself. Transfers built on that kind of record strengthen the Policy; respondents lose nothing when clear cases are decided clearly, and the care taken here is what makes the outcome unassailable.
Founder’s Own Reddit Admission Undercuts Complaint
Leancode, Inc. v. Richard Harrison, WIPO Case No. D2026-2365
<pluggable.com>
Panelists: Mr. Kaya Köklü (Presiding), Ms. Lynda J. Zadra-Symes, and Mr. Nick J. Gardner
Brief Facts: The Complainant is a US computer-accessories company holding a USPTO registration for PLUGABLE (registered: May 10, 2011, first use: September 18, 2009), operating from <plugable.com>. The UK-based Respondent acquired the disputed Domain Name on February 18, 2009. The Respondent had run a consulting business called “Pluggable Ltd.” since 2007 and used the domain in connection with it until discontinuing the business in 2012, after which he retained the Domain Name. In 2026, the Respondent reactivated the domain’s email account, began receiving emails misdirected from Complainant’s customers, and notified the Complainant of this on March 17 and 19, 2026. In the ensuing exchange, the Respondent indicated willingness to sell without naming a price; the Complainant offered USD $5,000, which Respondent’s counsel declined, stating expectations were “in the mid-six figure range.” The domain now resolves to a for-sale landing page.
The Complainant argues that the relevant date for assessing bad faith should be the Respondent’s 2026 reactivation of use rather than the original registration or 2009 acquisition, and further alleges that offering the domain for sale at a price likely exceeding the Respondent’s out-of-pocket costs was itself sufficient evidence of bad faith. The Respondent contends that the disputed Domain Name consists of a common English dictionary word that the Respondent never targeted the Complainant or its PLUGABLE trademark, and that offering the disputed Domain Name for sale does not, in itself, constitute evidence of bad faith. In addition, the Respondent submits a screenshot of a 2025 Reddit post in which the Complainant’s founder stated, in response to a user’s comment: “Yes! It’s the classic issue of name clash and branding. We’re Plugable because the dictionary word pluggable.com wasn’t available, and can’t be trademarked!”
Held: The Panel notes that the disputed Domain Name consists of the common English dictionary term “pluggable”, which the Respondent registered before the Complainant acquired any trademark rights. The record further shows that the Respondent subsequently used the disputed Domain Name for a number of years in connection with a business operating under the corresponding company name. There is nothing in the record suggesting that this use by the Respondent was not bona fide or otherwise illegitimate. In this regard, the Complainant does not dispute that the disputed Domain Name may initially have been used by the Respondent legitimately but argues that the Respondent’s business was discontinued for many years and that the disputed Domain Name is currently being offered for sale at a price that likely exceeds the Respondent’s out-of-pocket costs related to the disputed Domain Name. However, the Panel finds that the mere discontinuation of a business or the subsequent offering of a domain name for sale does not, without more, negate rights or legitimate interests that arose from an originally legitimate registration and use of a dictionary term within a domain name.
The Panel further finds no evidence in the case record that the Respondent acquired the disputed Domain Name with the intention of targeting the Complainant or any trademark rights that did not even exist at that time. The Complainant has not even argued, and there is nothing in the record suggesting that the Respondent registered the disputed Domain Name in anticipation of the Complainant’s future PLUGABLE trademark rights. The Panel does not overlook the Complainant’s argument that the Respondent’s discontinuation of its business, followed many years later by the resumption of use of the disputed Domain Name and the offering for sale, should effectively be treated as the relevant point in time for assessing bad faith registration. The Panel is unable to accept this argument. The Policy contains no provision suggesting that a domain name registrant’s subsequent decision to resume use of a domain name, while remaining the same registrant throughout, constitutes a new registration or otherwise resets the date for assessing bad faith registration Also, the Respondent’s decision to offer the disputed Domain Name for sale does not alter this conclusion.
RDNH: Based on the case record, the Complainant knew that the disputed Domain Name had been registered before the Complainant acquired any trademark rights. The Complainant was also fully aware that the disputed Domain Name corresponds to a common dictionary English term. Even more, the Respondent produced evidence that the Complainant itself had publicly acknowledged in 2025 in a Reddit post that the disputed Domain Name was already registered by another party and that the descriptive term “pluggable” itself was not capable of trademark protection, which is why the Complainant instead opted for the different spelling PLUGABLE as its trademark.
Notwithstanding these circumstances, the Complainant asked the Panel to find bad faith registration based essentially on the Respondent’s later resumption of use of the disputed Domain Name and its subsequent attempt to sell the disputed Domain Name. However, the Policy provides no basis for treating a later conduct as creating a new registration date. The Panel also takes into account that the Complainant was represented by legal counsel throughout this administrative proceeding. The Panel considers that under these circumstances the Complainant either knew, or should have known after reasonable investigation, that the essential requirement of bad faith registration could not be established on the facts of this case. Despite these circumstances, the Complainant chose to pursue this administrative proceeding. Consequently, the Panel concludes that the Complaint was filed in bad faith and therefore constitutes an attempt of RDNH.
Complaint Denied (RDNH)
Complainant’s Counsel: Eligon IP LLC, United States
Respondent’s Counsel: Adlex Solicitors, United Kingdom
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Panel stated that there were “substantial grounds” for finding that the Respondent has rights or legitimate interests in the disputed Domain Name, and then declined to decide the point, resting the decision on the third element instead. That sequence deserves attention, because the Panel’s own analysis had already done all of the work that an affirmative finding required.
The Respondent established a consulting company named Pluggable Ltd. in 2007 and then acquired the corresponding dictionary-word domain name in February 2009, months before the Complainant’s claimed first use of its deliberately modified PLUGABLE spelling, using it for that business for a number of years before discontinuing the business in 2012 and retaining the Domain Name thereafter.
On those facts the Panel observed that registering a dictionary term absent targeting is legitimate, that the system is first come, first served, and, most valuably, that the mere discontinuation of a business or the subsequent offering of a domain name for sale does not, without more, negate rights or legitimate interests that arose from an originally legitimate registration and use. That finding merits particular attention, since complainants routinely argue that a lapsed business model or an asking price converts a once-legitimate registration into an illegitimate one. It does not, and this Panel said so.
The burden analysis underlying the second element reinforces the point. Without evidence of a complainant’s trademark rights at the time of a respondent’s registration, there is no foundation for concluding that the respondent lacks rights in the domain name; logically, a complainant cannot meet its threshold of showing that a respondent has no rights or legitimate interests where the complainant itself had no demonstrable rights at the time of registration (see UDRPPerspectives.org at section 2.2). Upon the Respondent’s acquisition of the disputed Domain Name in 2009, the only party with any rights or legitimate interests in it was the Respondent, since the Complainant had no trademark rights at that time. A right or legitimate interest so arising may be extinguished by some intervening event before a complaint is filed, but it falls to the complainant to demonstrate that extinguishment through evidence. Here the Complainant offered only the discontinuation of the Respondent’s business and the offer for sale, and the Panel found that neither, without more, negates rights or legitimate interests arising from an originally legitimate registration and use. The Complainant thus never carried its burden at any point in the timeline: not in 2009, when it had no rights at all, and not in 2026, when it had nothing to show but a lapsed business and an asking price it disliked.
Having said all of that, the definitive finding would have cost a single sentence, and the Respondent was entitled to it. As UDRPPerspectives.org explains at section 2.1, a respondent needs only “a” legitimate interest, not a better one than the complainant’s, and while panels may be tempted to resolve cases on a single element for reasons of judicial economy, paragraph 4(c) of the Policy expressly entitles a respondent to “prove” its rights and legitimate interests and implicitly directs a panel to make that finding where proven. A respondent whose bona fides have been challenged, and who has effectively been accused of a species of fraud, may deserve the vindication and confirmation that the Policy provides for. Where, as here, a panel has found the grounds substantial and articulated them, declining the conclusion withholds from the respondent the one thing the analysis had earned it. We have had occasion to make this point in recent editions in connection with <scentstories.com> and <pasar.com>, and this decision illustrates it more starkly than either, because here the second-element analysis was not merely available but substantially written.
The Complainant’s theory of bad faith deserves attention as the latest variant of an argument this Digest has tracked for weeks. Unable to dispute that the disputed Domain Name predated its rights, the Complainant argued that the Respondent’s 2026 resumption of use should be treated as the relevant point in time for assessing bad faith registration. The Panel’s answer was categorical: the Policy contains no provision by which a registrant’s resumption of use, while remaining the same registrant throughout, constitutes a new registration or resets the assessment date, and neither a period of nonuse nor a later change in use can retrospectively convert an originally good faith registration into a bad faith one. Renewal cannot do it, as recent decisions have repeatedly confirmed, and neither can reactivation. Reactivation does not reset the registration date.
Then there is the Reddit post. About a year before filing, the Complainant’s founder publicly acknowledged the name-clash issue, writing that the company is called Plugable because the dictionary word “wasn’t available, and can’t be trademarked!”. It is difficult to recall a complainant supplying more complete advance refutation of its own case: an acknowledgment that the disputed Domain Name was already registered by another party, and the founder’s own expressed view that the term itself was not capable of exclusive trademark protection. The Panel noted, with restraint, that these statements were not consistent with the position taken in the proceeding, and they duly featured in the RDNH analysis.
The RDNH finding itself was well laid and rightly expressed in plain terms: the Complaint had no reasonable prospect of success and should never have been filed. The Complainant knew the chronology, knew the term was a dictionary word, had publicly said as much, and was represented by counsel throughout. What remained was a grievance about price, the Respondent’s mid-six-figure expectation against the Complainant’s USD $5,000 offer. As in Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653, the Complainant’s real gripe was the price the Respondent expected for the disputed Domain Name. An asking price that a complainant considers excessive does not convert an otherwise legitimate registration into bad faith, and it cannot substitute for evidence that the domain name was registered to target the complainant.
What Did the Complainant Know When It Amended?
Venturi v. Anthony Chan, Venturi Engineering Solutions Inc., WIPO Case No. DAI2026-0044
<venturi.ai>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant is a Monaco-based manufacturer of high-performance and electric vehicles, whose website at venturi.com has operated since 1995, and holds registered VENTURI word marks in Monaco (2003), the UK, and the EU (2008). The disputed Domain Name was registered on May 25, 2021, by the Respondent, who is the CEO and co-founder of Venturi Engineering Solutions Inc., a Canadian company federally incorporated in 2015 that provides machine-learning-based pipeline optimization services to oil and gas companies, and operates its primary website at “venturies.com” since at least 2018. At the time of the Decision, the disputed Domain Name did not resolve to an active website; archived records showed it displaying a pay-per-click parking page in 2021 and 2026, with links relating to electric vehicles as well as machine learning and pipeline automation. The Complainant attempted to contact the registrant through a third-party service but received no reply; the Respondent states it never received that message.
The Complainant alleges that it is obvious the Respondent had the VENTURI Trademarks in mind when registering the disputed Domain Name, asserting that the marks are distinctive and widely recognized in the fields of electric vehicles, Formula E, advanced mobility, and space technologies, and that the “.ai” extension increases the likelihood of association, particularly given these industries’ growing focus on AI and autonomous technologies. The Complainant further points to PPC links on the landing page referencing electric vehicles and, in more recent instances, artificial intelligence, characterizing this as evidence of opportunistic bad faith. The Respondent points out that “venturi” has an independent technical meaning in fluid dynamics, consistent with the Respondent’s engineering business, and contends that the disputed Domain Name was registered in May 2021 for potential data analytics work in line with that business, whereas the Complainant’s mark concerns automobile- and vehicle-related goods and services.
Held: The Panel finds on this record that the Respondent has been commonly known by a name correspondent to the disputed Domain Name. WIPO Overview 3.1, section 2.3. The Respondent Venturi Engineering has been federally registered in Canada since 2015, and the record shows that it does business in North America under that name and operates a website at “www.venturies.com”. Thus, the Respondent has rebutted the Complainant’s prima facie case unless the evidence shows that the Respondent’s choice of a company name in 2015, as well as its later registration of the disputed Domain Name, cannot be considered a “legitimate interest” because it represents a deliberate effort to exploit the Complainant’s trademark. That possibility is better addressed in the following section.
The Complainant’s reasoning regarding the Respondent’s prior knowledge of the Complainant and its VENTURI mark is strained, given that the Respondent operates in a very different market and that PPC links are typically generated by the Registrar’s algorithms, which, in this case, produced links relevant to both the Complainant and the Respondent. In any event, the Respondent denies any intent to target the Complainant’s mark and provides a credible alternative explanation for using the term “venturi” in the disputed Domain Name. The Panel notes that “venturi” is defined in the online Dictionary as “a short tube with a tapering constriction in the middle that causes an increase in the velocity of flow of a fluid”. The term is potentially relevant both to fluid dynamics in the Respondent’s business and to aerodynamics in the Complainant’s business.
The Complainant has the burden of proof on this issue, and the Respondent has credible reasons for choosing “venturi” in 2015 for its company name and its domain name, and in 2021 for the (thus far undeveloped) disputed Domain Name. The Respondent potentially would remain responsible for use of the disputed Domain Name, for example, for PPC advertising links that misdirected Internet users, but the Respondent cannot be deemed to have registered the disputed Domain Name in bad faith without a finding that it did so in contemplation of the Complainant’s mark. On this record, the Panel finds it more likely that the Respondent registered the disputed Domain Name to correspond to its own company name, having to do with its dictionary meaning and not its trademark value associated with the Complainant.
RDNH: While the Complaint ultimately fails, the Panel does not find that it was brought in bad faith. At the time of filing, the Respondent’s identity was concealed by a privacy service, the disputed Domain Name resolved to PPC parking pages, and the Complainant possessed longstanding trademark rights. The Panel considers that these circumstances provided a sufficient basis for the Complainant to seek clarification through the UDRP proceedings. While the Respondent ultimately provided a credible explanation for its registration and use of the disputed Domain Name, the circumstances of this case do not support a finding of Reverse Domain Name Hijacking.
Complaint Denied
Complainant’s Counsel: BBLM Avocats, France
Respondent’s Counsel: Kingsgate Legal, Canada
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision rewards reading less for its outcome than for what it reveals about a question the Policy has never squarely answered: what a complainant owes the process once a registrar disclosure shows it whom it is actually suing. But first, the merits. The Respondent’s company, Venturi Engineering Solutions Inc., was incorporated six years before the disputed Domain Name was registered, operates a genuine pipeline analytics business, and “venturi” is a technical term of fluid dynamics directly relevant to that business. The Panel found the Respondent commonly known by the corresponding name under paragraph 4(c)(ii), rejected the Complainant’s “it is obvious” targeting theory as strained given the parties’ entirely different markets (see UDRPPerspectives.org at section 3.3), gave no weight to registrar-generated PPC links that pointed at both parties’ fields alike, and, commendably, circled back to confirm that the same evidence disposed of the second element rather than leaving it undecided.
One point on the merits bears emphasizing. The Complainant argued that the “.ai” extension increased the likelihood of association with its brand; the Panel observed that the Complainant’s own website contains no references to artificial intelligence at all, while the extension fits the Respondent’s machine-learning business naturally. The contrast with <wta.tennis>, covered in this Digest, is instructive: there the extension supplied the connection to the complainant, here it supplied the connection to the respondent. An extension is evidence of targeting only when it actually points at the complainant.
The decision does not record any request by the Respondent for an RDNH finding, yet the Panel considered the question, consistent with the sound practice of addressing RDNH wherever the circumstances warrant (see UDRPPerspectives.org at section 4.1), regardless of whether it is requested or not. The denial itself, however, deserves scrutiny. The Panel rested it entirely on the circumstances at filing: a privacy-shielded registrant, a PPC parking page, and silence in response to the Complainant’s outreach. Those were genuine unknowns, and they distinguish this Complaint from the recent RDNH findings in <pasar.com> and <pluggable.com>, where the fatal defects were on the public record before filing. But the Panel’s further suggestion that these circumstances provided a sufficient basis “to seek clarification through the UDRP proceedings” cannot be endorsed. A complaint is a certified assertion that the elements can be proven, not a discovery device, and anonymity at filing explains at most why a complaint was commenced, not why it was maintained.
What the filing-date snapshot leaves out is the amendment. On June 5, the Registrar disclosed the registrant’s identity, including a contact email address at <venturies.com>, and on June 9 the Complainant amended and pressed on. A glance at that website would have revealed much of what the Response later proved. An amended complaint is not assessed in a vacuum based solely on what the complainant knew when the original complaint was filed; by the time it amends and elects to proceed against the disclosed registrant, the information then reasonably available to it bears directly on whether continuing the proceeding is abusive. Indeed, in Advice Group S.P.A. v. Privacy Administrator, Anonymize, Inc. / Michele Dinoia, Macrosten LTD, WIPO Case No. D2019-2441, a decision of the very panelist who decided the present case, the panel found RDNH, holding it “inexcusable to ignore the obvious deficiency in evidence and reasoning” in the amended complaint once the registrar had disclosed the registrant’s identity and the timing of its acquisition. Assessed at the amendment stage, as Advice Group assessed it, the denial of RDNH is difficult to sustain.
The point has significance beyond this case. Where the true registrant is unmasked mid-proceeding, the amendment is the natural checkpoint for a complainant to re-evaluate, and panels weighing RDNH would do well to ask not only what the complainant knew at filing, but what it knew when it amended and chose to proceed. Until post-disclosure persistence carries some consequence, a complainant who learns mid-stream that its theory is untenable has little reason not to see the proceeding through, and respondents with legitimate interests will continue to bear the cost of proving what a complainant could have read on their websites.
Complainant’s Own Evidence Names a Third Party as Site Creator; Panel Finds RDNH
The University Athletic Association, Inc. v. Michael LeValley, NAF Claim Number: FA2607002230489
<theswamp.com>
Panelist: Ms. Lynda M. Braun
Brief Facts: The Complainant is the Florida non-profit that operates the University of Florida’s athletic program, whose football stadium was nicknamed “The Swamp” by coach Steve Spurrier in 1992. The Complainant holds a USPTO registration for THE SWAMP (registered: May 15, 2007; first use: 1991) plus claimed common law rights. The disputed domain, first registered in 1997, once redirected (circa 1999–2002) to a Florida Gators fan/merchandise site that had gone inactive and been listed for sale by 2008. The Respondent acquired the disputed domain from a prior owner on December 5, 2016 for USD $3,500 via escrow, as one of several generic domain names in an ongoing domain-investment business; the domain has never resolved to an active site under his ownership and was listed for sale at USD $150,000.
The Complainant alleges that the Respondent appropriated the Complainant’s goodwill by using the domain and its associated website to divert and confuse consumers into believing the site was affiliated with or sponsored by the Complainant, profiting from third-party sponsorships and sales of merchandise bearing the Complainant’s marks. The Respondent contends that it has held the disputed Domain Name as one of several other domain names owned in the ordinary course of its various business activities, including the ownership and use of the SWAMP YANKEE family of marks. The Respondent concedes that it offered the disputed Domain Name for sale at a listed price of USD $150,000, and contends that such sales are permitted when an individual buys and sells domain names as part of a legitimate business model.
Held: The Panel finds Respondent’s Response to be comprehensive and credible. It presented convincing documentary evidence to demonstrate that the disputed Domain Name was purchased from a prior owner on December 5, 2016 through Escrow.com for USD $3,500. The disputed Domain Name was one of several generic domain names the Respondent acquired as part of its established business of acquiring and marketing generic word domain names. Most significantly, Complainant’s own evidence shows that the original website to which the disputed Domain Name redirected was designed by a third party.
From 2016 forward, the Respondent did not use the disputed Domain Name and eventually put it up for sale. The Complainant also argues that the sale of the disputed Domain Name for USD $150,000 demonstrates that the Respondent did not have rights or legitimate interests in respect of the disputed Domain Name. However, the Panel disagrees. The business of investing in and selling a domain name at a higher price based on a generic term can constitute a legitimate interest when it is done, as here, not to trade off the trademark rights associated with the trademark of another.
RDNH: The Panel concludes that the Complaint was brought in bad faith, although it does not find that it was necessarily brought to harass the Respondent. However, because Complainant’s own cited evidence identifies a party, namely, Sean Fletcher, other than Respondent as responsible for the creation of the website content, and because the Complainant omitted from its own Annex E-2 the explicit language crediting Sean Fletcher with the website’s design, the Panel finds that the Complaint was filed without a good-faith basis either intentionally or merely carelessly. Therefore, the request for a finding of reverse domain name hijacking is granted.
Complaint Denied (RDNH)
Complainant’s Counsel: Meredith Frank Mendez, Malloy & Malloy, P.L., USA
Respondent’s Counsel: Alexander P. Montgomery, Hinckley Allen & Snyder LLP, USA
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Complaint here was built on a website that someone else made, a quarter century ago, and it took the Respondent’s careful documentary work to expose that its foundation was missing. The site to which the disputed Domain Name once redirected, circa 1999 to 2002, was created by a Florida Gators fan, Sean Fletcher, whose identity was revealed by the Complainant’s own evidence. Most significantly, the Panel found that Annex E-2 omitted the website-design credit identifying “Die-Hard-Bleeding-Orange-and-Blue Gator Sean Fletcher (’92)”, while Annex E-3 still expressly credited the “CyberSwamp Website design” to Sean Fletcher.
The Respondent did not acquire the disputed Domain Name until December 2016, for USD $3,500 through escrow, years after the site had gone dark and been listed for sale by its prior owner. Yet the Complaint attributed the fan site’s merchandise sales and sponsorships to the Respondent.
The decision’s structure deserves as much attention as its outcome. The Panel found the Response comprehensive and credible, and made an affirmative finding that the Respondent carried its burden of demonstrating rights and legitimate interests: a documented purchase from a prior owner through Escrow.com, an established business of acquiring and marketing generic word domain names, years of nonuse following the Respondent’s acquisition, and no basis for treating the Respondent’s generic-domain investment as an effort to trade on another’s trademark. As readers of recent editions will recognize, this Digest has repeatedly urged that respondents who prove their bona fides deserve exactly this kind of express finding rather than a decision that stops at another element, and this decision delivers it.
The Panel’s treatment of the USD $150,000 asking price deserves particular commendation for its clarity: investing in and selling a domain name at a higher price based on a generic term can constitute a legitimate interest where it is not done to trade off another’s trademark rights. That is exactly the correct formulation, stated without hedging, and it is heartening to see it applied so matter-of-factly in a Forum proceeding. Price is not a proxy for illegitimacy or targeting, a proposition now affirmed in a steady line of recent decisions, and panels who state it this plainly help ensure complainants stop pleading asking prices as though they were evidence of targeting.
Although the Panel did not reach the third element, the record illustrates a chronology principle worth stating plainly. The relevant date for assessing this Respondent’s registration intent would be its own December 2016 acquisition, and conduct of a prior registrant cannot simply be attributed to a subsequent arm’s-length acquirer. Whatever the fan site was between 1999 and 2002, it was not the Respondent’s doing, and a complainant proceeding against the current registrant of a long-traded domain name must investigate who did what, and when, before pleading a theory that depends on collapsing twenty years of ownership history into one person.
The RDNH finding follows with unusual force, and the Panel deserves real credit for making it in these particular circumstances. It would have been easy to deny the Complaint on the merits and stop there. Instead, the Panel engaged with what the annexes actually showed, caught that the Complainant’s own cited evidence identified a third party as responsible for the website content, noted that the crediting language had been omitted from Annex E-2, and drew the conclusion the record compelled: the Complaint was filed without a good-faith basis, whether intentionally or merely carelessly. Scrutinizing a complainant’s exhibits against its allegations is exactly the level of engagement that RDNH analysis requires and does not always receive.
Either alternative the Panel identified is disqualifying for a represented complainant. The Rules require a complainant to certify that the Complaint is complete and accurate and that its assertions are warranted; for a represented complainant, that certification necessarily presupposes adequate investigation. Whether the omission from Annex E-2 was deliberate or careless, and the Panel expressly declined to choose between the two, neither is compatible with that certification when the omitted language sat at the bottom of the Complainant’s own exhibit. Complainants and their counsel should take note: annexes are read, including by respondents’ counsel and by panels, and the gap between what an exhibit shows and what a complaint says about it is precisely where RDNH findings are made.
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.