Complainant Pays More for UDRP than for Purchase, Gets RDNH Instead
Interestingly, it appears that the Complainant requested permission to file a supplementary before actually filing the supplementary filing. This is indeed the way it should be done though it rare for complainants to take this approach. Indeed, this was one of the issues identified in the WIPO-ICA UDRP Review Report. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 6.33) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Complainant Pays More for UDRP than for Purchase, Gets RDNH Instead (loyalsoldiers.com *with commentary)
‣ No Targeting Proven Where Third Parties Independently Use Same Brand (hyperfly.ai *with commentary)
‣ Website Conduct Reinforces Confusing Similarity (thepondgear.com *with commentary)
‣ AI Hallucinations Do Not Automatically Justify a UDRP Refiling (grinderscape.org *with commentary)
‣ Two Claimants to One Mark Is Not a Cybersquatting Case (esimo.com *with commentary)
Complainant Pays More for UDRP than for Purchase, Gets RDNH Instead
Callum Charnock v. Hola Domains, WIPO Case No. D2026-1897
<loyalsoldiers.com>
Panelist: Ms. Stephanie G. Hartung
Brief Facts: The UK-based Complainant trades apparel through a company, “Loyal Soldiers Ltd,” incorporated on February 24, 2025. He holds a UK word/device trademark for LOYAL SOLDIERS (filed June 29, 2025; registered September 26, 2025). The Respondent, a Costa Rica-based domain investment company focused on generic domain names, registered the disputed Domain Name on December 28, 2014. The Domain Name resolved to a domain trading platform where it was offered for sale at prices ranging from GBP 2,805.15 to GBP 3,380.57. On April 29, 2026, the Complainant contacted the Respondent through the Registrar, combining a formal notice of trademark infringement with an offer to buy the domain for GBP 100.00, which the Respondent declined, countering with an offer to sell for USD $999.00. The Complainant did not accept and filed the Complaint on May 1, 2026.
The Complainant asserts that he has established comprehensive rights in the LOYAL SOLDIERS trademark through government registration, corporate identity, and a documented 17-year business history. In particular, e.g. in its supplemental filing of July 4, 2026, the Complainant further asserts that the LOYAL SOLDIERS trademark originated in 2009, was formally assigned to the Complainant effective October 1, 2013, and has been continuously exploited in commerce under consistent management of the Complainant to identify his business, to interface with the public, and to protect the LOYAL SOLDIERS brand’s accrued goodwill from 2013 to the present day. The Complainant finally argues that the Respondent is “passively holding” the disputed Domain Name solely to profit from its resale to the trademark owner.
The Respondent challenges the Complainant’s trademark registrations, noting that the first cited UK trademark expired in 2019 and the second was filed only in 2025, more than ten years after registration of the disputed Domain Name. The Respondent contends that the Complainant has not shown that LOYAL SOLDIERS acquired distinctiveness or secondary meaning through independent media coverage, consumer surveys, or substantial advertising evidence. The Respondent further contends that the Respondent acquired the disputed Domain Name as part of a legitimate domain investment business and for its common meaning, generic nature and inherent commercial attractiveness and that the Complainant has produced no evidence whatsoever that his LOYAL SOLDIERS brand is famous outside the United Kingdom, let alone in Costa Rica where the Respondent is operating.
Held: There are no circumstances in the facts of the case to suggest why the Costa Rican Respondent should have been aware in 2014 of the existence of the UK-based Complainant and its trademark. Although the Complainant submitted evidence of social media activity, advertising, sponsorships, revenue, and sales to establish common law rights predating the disputed Domain Name’s registration, this limited evidence is not sufficient to overcome Respondent’s contention that he was unaware of the Complainant and, as a domain name investor, registered the disputed Domain Name for its brandable value. This leads the Panel to conclude that Respondent’s registration and holding of the disputed Domain Name falls within the category of legitimate domain name investment activity, thereby demonstrating Respondent’s rights to and legitimate interests in the disputed Domain Name under the broader legitimate interests framework recognized in UDRP jurisprudence.
While the Complainant has introduced some evidence of pre-2014 commercial activity under the LOYAL SOLDIERS name, this falls well short of establishing that the Respondent was aware of, or targeted, the Complainant when registering the disputed Domain Name in 2014. Neither Complainant’s company nor its registered LOYAL SOLDIERS trademark existed when the disputed Domain Name was registered by the Respondent back in 2014, and the Respondent is based in Costa Rica while the Complainant carries on a modest apparel business in the United Kingdom with no demonstrated international profile or reputation that would have brought it to Respondent’s attention. In the absence of any credible evidence of targeting, there are no grounds to find that the Respondent registered or acquired the disputed Domain Name primarily for the purpose of selling it specifically to the Complainant, within the meaning of paragraph 4(b)(i) of the Policy.
RDNH: The Panel has recognized that through all the years since the registration of the disputed Domain Name in 2014, the Respondent never approached the Complainant with any offer or the like to acquire the disputed Domain Name, presumably because it was not aware of the Complainant and its LOYAL SOLDIERS trademark and business in the United Kingdom at all. Rather, it was the Complainant who initiated contact with the Respondent on April 29, 2026, with an offer to buy the disputed domain for GBP 100.00. After the Respondent declined, the Complainant promptly initiated this UDRP proceeding on May 1, 2026. This close timing may suggest an attempt to use the UDRP to gain leverage to purchase the domain at a discount, which prior panels have found indicative of bad faith. Besides, the Complainant failed to disclose that its earlier UK trademark expired on October 23, 2019, and the dictionary-word domain names cannot establish bad faith absent evidence that it targeted the Complainant or its LOYAL SOLDIERS business.
Accordingly, the Complainant, although not represented by counsel, should have realized that it could not succeed in this UDRP proceeding, and so its Complaint was brought in bad faith within the meaning of paragraph 15(e) of the Policy.
Complaint Denied (RDNH)
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Andrii Raietsky, Ukraine
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
Interestingly, it appears that the Complainant requested permission to file a supplementary before actually filing the supplementary filing. This is indeed the way it should be done though it rare for complainants to take this approach. Indeed, this was one of the issues identified in the WIPO-ICA UDRP Review Report.
Also of interest is that the self-represented Complainant, who solicited the purchase for £100, refused a counteroffer for only £999 and instead chose to file the UDRP Complaint – and lost.
No Targeting Proven Where Third Parties Independently Use Same Brand
<hyperfly.ai>
Panelist: Mr. Luca Barbero (Presiding), Ms. Deanna Wong Wai Man and Mr. Gerald M. Levine
Brief Facts: The Complainants are DO OR DIE, INC. d/b/a HYPERFLY, together with Pascal Pakter and Kerstin Pakter, its owners. The first Complainant is the operating entity that uses the HYPERFLY mark in commerce and is the registered owner of domain names encompassing the HYPERFLY mark. The Second and Third Complainants are the owners of the first Complainant and the record co-owners of trademark registrations for HYPERFLY in the United States and other jurisdictions. HYPERFLY is an established and widely recognized performance apparel brand in the grappling and combat sports categories.
The Complainants state that the Respondent registered the disputed Domain Name in bad faith to offer it for sale at amounts in excess of the out-of-pocket costs and essentially based its bad faith claim on the notoriety of its trademark, asserting that HYPERFLY can be exclusively referred to the Complainants’ mark. The Complainants further points out that, given the Respondent is a domain name investor, it had heightened duty of trademark due diligence before registering the disputed Domain Name and no reasonable basis exists on which the Respondent could claim it was unaware of the HYPERFLY registered trademark when it registered the disputed Domain Name.
The disputed Domain Name was acquired by the Respondent, for USD $202.96, as part of a single bulk portfolio transaction in which the Respondent purchased twenty premium .ai domain names for USD $8,628.20 in total. The Respondent contends that “Hyperfly” is a common-word composite with multiple independent uses by third parties globally in contexts entirely unrelated to the Complainants and that he acquired the disputed Domain Name since it is a short, pronounceable, evocative combination of two ordinary English words with substantial independent commercial appeal across multiple industries, suitable for investment and resale.
Procedural Issue: Following the Respondent’s nomination of Mr. Levine to be a member of this Panel, the Complainants requested the Center consider whether replacement or recusal was appropriate on the alleged grounds that Mr. Levine had a professional relationship with the Respondent’s counsel. Panelists have a duty pursuant to Rule 7 to disclose any facts “that could give rise to justified doubt as to the impartiality or independence of the Panelist.” The “ultimate arbiter on this question” of recusal is the nominee. Teaching Company, LLC, d/b/a The Great Courses v. Brendhan Hight, Marchex Sales, LLC, WIPO Claim No. D2014-0448.
In any event, the issue was put to rest by the Respondent’s supplemental submission: “Counsel recommended Mr. Levine on the basis of nearly a decade of studying his published treatise… Professional admiration for published scholarship is an entirely legitimate basis for a nomination recommendation in any jurisdiction. The final nomination decision was the Respondent’s, not counsel’s.” The Panel here by its two other members notes its concurrence with the two other members in Teaching Company, supra: “One of the reasons a UDRP party is given the opportunity to request (at additional expense) a three-member panel is to include a panelist likely to sympathize with each party’s desired interpretation of an issue of Policy precedent […]. Following that election in this case, the Complainant presumably exercised that same opportunity at least in part for the same reasons when nominating its panelist choices”.
Held: The Panel notes that, when the Respondent, a professional domain investor based in the UAE, acquired the disputed Domain Name in November 2025, the Complainants had registered the HYPERFLY mark in the United States and other countries for goods in Classes 25 and 28 and online retail services in Class 35, though not in the UAE. The Panel notes that, as stated in prior decisions, such as typeguard, inc. v. Narendra Ghimire, WIPO Case No. DAI2026-0029 (<glide.ai>), the practice as such of registering a domain name for subsequent resale does not by itself support a claim that the registrant registered the domain name in bad faith with the primary purpose of selling it to a trademark owner, as the complainant must demonstrate that the disputed Domain Name was registered to profit from or exploit the complainant’s trademark. The Panel has carefully reviewed all the documents and statements submitted by the parties and notes that, based on the records, there is no evidence that the Respondent specifically targeted the Complainants’ mark when it registered and offered the disputed Domain Name for sale. See section 3.1.1 of WIPO Overview 3.1.
The Panel also notes that, whilst the Complainants appear to have established over time a well-known brand within the martial arts and combat sports community, the evidence provided by the Respondent shows that the HYPERFLY mark had already been independently used by multiple parties before the Complainants’ first use of the mark and continues to be used by unrelated third parties operating in different sectors, including across AI, water sports, pharma, aviation, and marketing. The disputed Domain Name was acquired as part of a documented batch acquisition together with other .ai domain names consisting of two-word combinations, a circumstance which appears to be more consistent with a portfolio investment strategy than with targeting the Complainants. Under the circumstances, the fact that the Respondent has listed the disputed Domain Name for sale for five figure prices and, after May 18, 2026 (notably, before the filing of the Complaint), increased the price on the Atom.com website to a six-figure amount is not sufficient to demonstrate that the Respondent intended to profit from or exploit the Complainants’ trademark.
RDNH: The Panel is not persuaded that the circumstances of this case justify a finding of RDNH. The Complainants have long-standing registrations for the HYPERFLY mark which predate the acquisition of the disputed Domain Name by the Respondent and the mark is identically reproduced in the disputed Domain Name. Moreover, the Complainants’ trademark appears to be known in its sector, and the disputed Domain Name has been redirected to a website offering the disputed Domain Name for sale. Therefore, the Complainants’ case that the disputed Domain Name was registered in bad faith, while unsuccessful, was not so weak as to render the filing of the Complaint an act of bad faith.
Complaint Denied
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Cylaw Solutions, India
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Panel made an interesting observation about the nature of UDRP Panel selection, stating that it concurred with the Panel in Teaching Company, LLC, d/b/a The Great Courses v. Brendhan Hight, Marchex Sales, LLC, WIPO Case No. D2014-0448, wherein it stated that; “One of the reasons a UDRP party is given the opportunity to request (at additional expense) a three member panel is to include a panelist likely to sympathize with each party’s desired interpretation of an issue of Policy precedent [. . .]. Following that election in this case, the Complainant presumably exercised that same opportunity at least in part for the same reasons when nominating its panelist choices”. We frequently see parties nominate Panelists which they believe are likely to side with them on the basis of the Panelist’s prior decision. Indeed, failing to research a nominee’s prior decision would be negligent prior to making the nomination. There is no better source for conducting such research than UDRP.Tools Panelist Research facility.
This case, which appears to have been hotly contested involved two submitted Complainant supplemental submissions which were each met with a response from the Respondent. It was up to the Panel to determine if they were admissible and this unfortunately presented an entirely additional layer of work by the Panel. This is yet another reason why a better method is desirable for addressing supplemental filings, as noted above and as referenced in the WIPO-ICA UDRP Review Report.
Ultimately however, the Panel came to the conclusion that there is no evidence that the Respondent specifically targeted the Complainants’ mark when it registered and offered the disputed domain name for sale, noting that “the practice as such of registering a domain name for subsequent resale does not by itself support a claim that the registrant registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor), as the complainant must demonstrate that the disputed domain name was registered to profit from or exploit the complainant’s trademark” – in other words, targeting is required to be proven. For a good explanation and discussion of the centrality of “targeting”, please see UDRPPerspectives at 3.3.
Notably, the Respondent was able to demonstrate a pattern of registering other “hyper” formative domain names. In addition, the Panel recognized that where there is evidence of numerous parties independently using the term corresponding to the Domain Name in different sectors, it was more likely that the Domain Name was “selected for its perceived commercial or brandable value as combination of two ordinary English words with substantial independent commercial appeal across multiple industries, without specifically targeting the Complainants.” Such evidence is precisely the key to determining such disputes. The Respondent was successfully represented by the Digest’s Editor-in-Chief, Ankur Raheja.
Website Conduct Reinforces Confusing Similarity
The Pond Guy, Inc. v. Charles Bourne, Forum Claim Number: FA2607002231904
<thepondgear.com>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant claims to be a leading supplier of pond, lake, fountain, water garden, and aquatic maintenance products and services throughout the United States. The Complainant owns rights in the US registered marks THE POND GUY (2003) and WE KNOW PONDS (2021). The disputed Domain Name was registered in 2025 and the resolving website offers pond products and related goods directly competing with those sold by the Complainant. The Complainant alleges that the resolving website prominently displays its THE POND GUY trademark and distinctive logo, as well as its WE KNOW PONDS trademark, a slogan exclusively associated with its business. The Complainant further adds that the Respondent copied substantial portions of Complainant’s website, including its overall appearance, branding, layout, navigation structure, product organization, marketing language, and commercial presentation. Rather than creating an independent business identity, the Respondent intentionally copied Complainant’s online presence in order to capitalize upon the reputation and goodwill associated with Complainant’s trademarks.
Held: The disputed Domain Name incorporates the dominant portion THE POND of the Complainant’s THE POND GUYS mark, merely adding the generic/descriptive term “gear” along with the “.com” gTLD. Such changes do not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of the Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed Domain Name from the ADP WORKFORCE NOW mark.”) Further, the Complainant presents evidence showing that the resolving website contains elements likely intended to make consumers believe that Respondent’s site is somehow affiliated with the Complainant, in accordance with section 1.7 of the WIPO Overview 3.1.
The resolving website displays Complainant’s mark and distinctive logo in an attempt to impersonate the Complainant, which is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Therefore, the Panel finds that the Respondent does not use the disputed Domain Name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). This also supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See American International Group, Inc. v. Walter Busby d/b/a AIG Mergers and Acquisitions, FA 156251 (Forum May 30, 2003) (finding bad faith where the resolving website gave every appearance of being associated or affiliated with the complainant’s business).
Bad faith is also established under Policy ¶ 4(b)(iii) because the website offers products that compete with Complainant’s products, thereby diverting Complainant’s customers to Respondent’s competing business. Thus the Panel finds bad faith registration and use per Policy ¶ 4(b)(iii). In addition, the Respondent registered the disputed Domain Name with actual knowledge of Complainant’s mark: resolving website displays Complainant’s mark and distinctive logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii).
Transfer
Complainant’s Counsel: Geoffrey D. Aurini of Harness, Dickey & Pierce, P.L.C., USA
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The decision illustrates that website content, while ordinarily considered under the second and third elements, can also reinforce a finding of confusing similarity under the first element where it demonstrates an apparent attempt to associate the domain name with the complainant.
The disputed Domain Name included the “THE POND” without “GUY”, and the latter portion, i.e. “Guy” is arguably the most distinctive part of the mark considering that the Complainant is a purveyor of pond products and services. Ordinarily, that mark could be different enough from the Domain Name to fail the confusing similarity test.
Here, however, the Panel noted that the Respondent’s website displayed the Complainant’s trademark and distinctive logo and copied substantial elements of its website, including its presentation and product organization. At that point it can hardly be argued that the Respondent didn’t intentionally target the Complainant. The impersonation demonstrated an intention to exploit the Complainant’s goodwill, while the sale of competing products supported a finding under paragraph 4(b)(iii). The website itself established the Respondent’s actual knowledge of the Complainant’s rights, and the Panel additionally treated the allegedly false WHOIS information as evidence of bad faith. The Respondent’s failure to respond left these allegations unrebutted, although the Panel appropriately noted that default does not automatically establish the elements of the Policy.
Although confusing similarity is ordinarily assessed through a relatively straightforward comparison of the domain name and trademark, the Panel recognized that the surrounding conduct may reinforce what that comparison suggests. Where a disputed domain name combines a recognizable portion of a mark with a descriptive term and the associated website then adopts the complainant’s branding, appearance, and competing commercial offering, the website evidence can provide powerful confirmation that the resemblance is not coincidental.
AI Hallucinations Do Not Automatically Justify a UDRP Refiling
Jagex Limited v. R.S.H Grinder, GSS, WIPO Case No. D2026-2336
<grinderscape.org>
Panelist: Mr. Jeremy Speres (Presiding), Mr. Alistair Payne and Mr. Knud Wallberg
Brief Facts: The Complainant, incorporated on April 28, 2000, operates a business designing, developing, publishing and operating online video games and other electronic-based entertainment. The Complainant holds registrations for the trademark RUNESCAPE and variations of it in numerous jurisdictions, including, the United States in classes 16, 25, and 41, registered on April 6, 2004. The Complainant also holds a registration for the United Kingdom for SCAPE (figurative) in class 41, registered on November 21, 2025. The disputed Domain Name was registered on May 11, 2009, and presently resolves to a website relating to a private server version of the Complainant’s Old School RuneScape game, entitled “GrinderScape”. The Complainant acknowledges that the present Complaint is a refiling of the prior case before a different provider, CAC, in Jagex Limited v. GSS, CAC Case No. CAC-UDRP-108326 (February 25, 2026), in which the Complainant’s complaint was denied.
The Complainant alleges that the Respondent’s prior response contained numerous misstatements of UDRP policy and WIPO Overview 3.0, along with citations to a fictitious UDRP decision, breaching natural justice and due process. The Complainant further adds that the Respondent relied on AI-generated “hallucinations,” including fabricated case citations and inaccurate statements of UDRP law, which it characterizes as “perjured evidence” that materially affected the earlier proceeding. The Respondent contends that the Complaint should be dismissed as an impermissible refiling because it concerns the same domain name, the same parties, and substantially the same issues as the earlier CAC proceeding, which was decided on the merits. It further contends that the Complainant has not established any exceptional circumstances justifying a refiling and is simply seeking to relitigate an unsuccessful case before a different UDRP provider.
Held: The alleged hallucinations concerned citations in the Respondent’s response in the prior case, which the Complainant points out does not exist. Regardless, they were fictitious, and the Panel must contend with the Complainant’s assertions that their inclusion within the Respondent’s response in the prior case justifies refiling of the case on the basis that that amounted to a breach of natural justice or due process, or serious misconduct that influenced the outcome of the prior case. The Panel does not find that to be the case for the following reasons. Firstly, the panel in the prior case based her decision on the first element alone, specifically finding that the Complainant’s RUNESCAPE mark was not recognizable in the domain name and was therefore not confusingly similar. The CAC panelist also disregarded the other cited trademarks because they were registered after the domain name. The complaint was denied exclusively on those two bases, and, as such, the fictitious references seemingly would not have influenced the outcome given that they do not concern the bases upon which the panelist based her findings.
Secondly, even if the CAC panelist was influenced by the fictitious references, she may not have been influenced in a way that is contrary to established consensus views under the Policy, given that the propositions set out in the Respondent’s two hallucinated quotations are, in substance, well-established UDRP principles despite the citations being fictitious. Thirdly, as the Panel in Blizzard Entertainment, Inc. v. Anastassiya Pikalova, WIPO Case No. D2025-4169 noted, the use of AI-hallucinated citations will affect the credibility of the case of the party who uses them. Here, the CAC panelist in the prior case did not base her findings on anything that might have been affected by the credibility of the Respondent’s case. Fourthly, the fact that a panel does not expressly discuss every submission, or reaches a conclusion with which a party disagrees, does not constitute a denial of natural justice. Here, the Complainant was given an opportunity to present its case fully in the prior case, and its supplemental filing in the prior case, addressing the hallucination and other issues it now raises in support of the refiling, appears to have been received by the CAC panel in the prior case.
RDNH: The Panel notes that the Complainant is represented by experienced counsel, and that represented parties are often held to a higher standard. WIPO Overview 3.1, section 4.16. However, the Panel does not consider that the refiling was made in bad faith given that the Complainant expressly acknowledged that this case was a refiling and did not attempt to conceal that fact. The AI hallucination issue in the context of a refiling is novel, as far as the Panel can tell, and the view of the Panel is that the Complainant was entitled to put that to the Panel and obtain guidance on whether it might constitute serious misconduct influencing the prior case or raise natural justice or due process concerns, with there being no such guidance in the jurisprudence on point; and the Complainant did genuinely attempt to fit its case within the recognized refiling grounds in section 4.18 of the WIPO Overview 3.1, albeit unsuccessfully. The Panel, therefore, declines to find that the refiling was made in bad faith or that it constituted RDNH.
Complaint Denied
Complainant’s Counsel: Stobbs IP Limited, United Kingdom
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision provides a careful analysis of an increasingly relevant question: when a party relies on AI-generated authorities that turn out to be fictitious, can that misconduct justify reopening an unsuccessful UDRP proceeding? The Panel concluded that it can in principle, but only where the misconduct materially influenced the earlier decision or otherwise satisfies the exceptional circumstances governing refiling.
The Panel accepted that the citations in the earlier Response were fictitious and considered it likely that they resulted from AI hallucinations, noting that the Respondent was coy on the question and did not deny it outright. It went further than merely criticizing the conduct, expressly characterizing the use of fictitious references as “serious misconduct”. Whether intentional or negligent, such conduct can mislead a panel, affect the credibility of the party relying on it, and potentially justify a refiling. But the critical question was not whether misconduct occurred. It was whether the misconduct affected the outcome of the prior proceeding.
The Panel’s analysis of that question was particularly disciplined. The earlier panel had denied the complaint exclusively on the first element, finding that RUNESCAPE was not recognizable in <grinderscape.org> and disregarding the later-registered SCAPE mark. The fictitious authorities did not concern those bases for decision. And even if the earlier panel had been influenced by them, the propositions attributed to the fabricated sources were, in substance, established UDRP principles, correctly stated but falsely sourced. There was accordingly no basis to infer that the hallucinated authorities materially influenced the result.
Importantly, the Panel did not find RDNH. Although the Complainant was represented by experienced counsel, it openly acknowledged that this was a refiling and genuinely attempted to bring the case within the recognized exceptions. The Panel considered the application of AI hallucinations to the refiling doctrine novel enough that the Complainant was entitled to seek a ruling on whether the misconduct could justify reopening the case.
The decision is therefore notable for avoiding both extremes. It did not minimize the significance of fabricated AI-generated authorities, but neither did it treat their presence as automatically contaminating an entire proceeding. Instead, the Panel examined what effect the hallucinations could actually have had on the prior decision. That causal approach preserves the seriousness of AI-generated false authorities while maintaining the exceptional nature of UDRP refiling and the finality that the doctrine is intended to protect. The lesson for respondents, particularly self-represented ones, is equally plain: this Respondent survived because the fictitious citations happened not to matter to the outcome, and the next party who submits unverified AI-generated authorities may not be so fortunate, whether through an adverse credibility finding or a successful refiling. Well done, Panel.
Two Claimants to One Mark Is Not a Cybersquatting Case
Alma Technologies, LLC v. Mustafa Vardali / Teknasyon, Forum Claim Number: FA2606002225200
<esimo.com>
Panelist: Mr. David S. Safran (Chair), Mr. Steven M. Levy and Mr. David E. Sorkin
Brief Facts: In item 9 of Complainant’s Complaint, it is stated that no legal proceedings have been commenced or terminated in connection with or relating to the Domain Name that is the subject of the complaint. However, the evidence establishes that the Complainant filed an Opposition against a trademark application for ESIMO filed by the Respondent in the U.S. Patent and Trademark Office and this Opposition, No. 9130779, and Trademark Trial and Appeals Board (“TTAB”) records show that proceeding is currently pending under suspended status.
Additionally, the record shows that the Respondent filed a trademark dispute with the Apple App Store asserting that the Complainant is infringing its rights in the ESIMO mark. The Respondent contends that the Panel should abstain from reaching a decision on the merits because the Complainant is using this UDRP proceeding to sidestep the parties’ broader trademark dispute, the UDRP proceeding being but one part of a broader trademark and platform dispute, and should not act as a de facto substitute for the reasoned resolution of that broader dispute in other forums.
Held: In summary, both the Complainant and the Respondent assert rights to the ESIMO mark. The Panel may determine that this dispute falls outside the scope of the Policy, and therefore choose to dismiss the Complaint. In Harvest Dispensaries v. Martin Higgins, FA 1823636, the panel stated: “In deciding whether this dispute is properly within, or outside the scope of, the UDRP it is necessary to analyze the true nature of the dispute. The Complainant asserts rights in Complainant’s Marks based on its registration of the marks with the United States Patent and Trademark Office (‘USPTO’)…” However, currently, the parties are engaged in a dispute in two different fora relative to their rights. In both of these proceedings the ESIMO mark is involved and is central to those proceedings.
The Respondent argues the Panel should abstain from reaching a decision on the merits because the Complainant is using this UDRP proceeding to sidestep the parties’ broader trademark dispute. Other panels have chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes. See, e.g., Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006). The Panel agrees with Respondent’s argument that the dispute is not a classic case of cybersquatting and is far too broad to address appropriately in a UDRP proceeding. There are competing trademark claims here, and disputes pending in other fora. Therefore, the Panel elects to dismiss the instant Complaint on the grounds that it is outside the scope of the policy and is not susceptible to adjudication in a UDRP proceeding.
Complaint Dismissed
Complainant’s Counsel: Mark L. Seigel Esq., USA
Respondent’s Counsel: Jake Dini of Perkins Coie, USA
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
Both parties claimed rights in the same trademark. The Complainant had opposed the Respondent’s pending ESIMO trademark application before the TTAB, while the Respondent had separately asserted that the Complainant was infringing its ESIMO rights through an Apple App Store dispute. The Panel therefore confronted not a conventional cybersquatting claim, but a broader trademark dispute already being addressed in other fora (see UDRPPerspectives.org at section 0.1 on the scope of the Policy)
The Panel correctly declined to turn the UDRP into a substitute for those proceedings. Citing Harvest Dispensaries v. Martin Higgins, the Panel emphasized the need to consider the “true nature” of a dispute when determining whether it falls within the Policy. Here, resolving the parties’ competing claims to the ESIMO mark would have required the Panel to determine substantive trademark rights that extended well beyond the limited question of abusive domain name registration. As the Panel observed, the dispute was “far too broad to address appropriately in a UDRP proceeding.”
That conclusion reflects an important boundary on the Policy. The UDRP is designed to provide an expedited remedy for cybersquatting, not to determine which of two parties has superior substantive trademark rights where that question is already being litigated elsewhere. Attempting to resolve such a dispute through a UDRP proceeding risks converting the Policy’s limited framework into a de facto trademark adjudication without the procedural mechanisms available in the TTAB or a court. The Panel’s decision to step aside therefore preserved both the proper scope of the UDRP and the parties’ ability to have their underlying trademark dispute determined in the appropriate fora.
The procedural handling of the case is also worth noting. The Panel rejected the Complainant’s Additional Submission because it contained arguments that could have been presented with the original Complaint and therefore did not satisfy Forum’s Supplemental Rule 7. The Panel also dismissed the Complaint with prejudice to refiling absent new circumstances that could not reasonably have been foreseen. That qualification is significant. Having determined that the present dispute was unsuitable for UDRP adjudication, the Panel did not leave the door open to repeated complaints based on the same circumstances. At the same time, it preserved the possibility of a future proceeding if genuinely new circumstances were to arise.
The decision is a useful reminder that the UDRP’s narrow scope is not merely a limitation on what panels may decide. It is also a reason for panels to decline jurisdiction where deciding the complaint would necessarily require them to resolve a broader and genuine dispute over trademark ownership or entitlement. Here, the Panel appropriately recognized that the real dispute was not whether the Respondent had cybersquatted on the Complainant’s mark, but which party had the better claim to ESIMO in the first place. That question belonged elsewhere. Well done, Panel.
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.