“Complete Absence of Evidence of Targeting” Leads to RDNH
Although not expressly mentioned in the decision, the word, “ONIRIC” happens to be a dictionary word meaning “related to dreams or dreaming”. That provides an explanation of why the Respondent registered the Domain Name in the first place and also why the Complainant selected it for its brand as well.
Of course, that wasn’t the determinative factor, or a factor at all really in the circumstances of the case, because regardless, the Respondent’s registration rights in the Domain Name preceded the creation of the Complainant corporation. In the circumstances, the case had to be dismissed… continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 5.35) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ “Complete Absence of Evidence of Targeting” Leads to RDNH (oniric .com *with commentary)
‣ Descriptive Term Selected for No Reason Associated With Complainant (mailtrack .email *with commentary)
‣ Passive Holding Alone, Insufficient to Show Bad Faith (photocircle .com *with commentary)
‣ Respondent Attempted to Impersonate the Complainant (shopifymascot .com)
‣ Panel: Cannot Assist Complainant Where Evidence Has Not Been Made Available (genesys .london)
“Complete Absence of Evidence of Targeting” Leads to RDNH
ONIRIC STUDIO v. Stanley Pace, CAC Case Number CAC-UDRP-107791
<oniric .com>
Panelist: Mr. Fabrizio Bedarida
Brief Facts: The Complainant, incorporated on October 15, 2020, provides consulting, infrastructure management, and software development services. It is the owner of the Belgian trademark ONIRIC (device), registered on June 26, 2021. The disputed Domain Name was registered on April 19, 2012 and redirects to a parking page displaying some sponsored links unrelated to the Complainant’s business, along with the message: “The domain <oniric .com> may be for sale.” The Complainant alleges that the Respondent has registered the domain name solely for the purpose of selling or renting it for valuable consideration exceeding the out-of-pocket costs, and that the Respondent declined the Complainant’s US$1,500 offer, and countered with US$88,000. The Complainant further alleges and documents that the Respondent has a history of registering several infringing domain names and has been found to have made bad faith registrations in previous UDRP cases.
The Respondent contends and provides evidence that it has owned the disputed Domain Name since April 19, 2012, and that it could not have registered or acquired the domain name in 2012 with the intent to exploit a non-existent entity. Furthermore, it is well established by now that the use of common words and phrases for advertising purposes and the mere offering for sale of dictionary words and geographic terms capable of a wide range of potential meanings and uses, is not itself an illegitimate activity, absent evidence of targeting of a particular mark owner. The Respondent further points out that, although the Complainant conducted some research into prior cases involving the Respondent, it failed to mention those UDRP cases, at least five, in which the complaints were rejected. Finally, the Respondent claims that this proceeding appears to have been brought as a Plan B, thus requests a finding of RDNH.
Held: It is well established that the Complainant’s rights do not need to precede the registration of the disputed Domain Name when assessing the existence of confusing similarity. The existence of prior rights does, however, have great relevance when assessing the existence of bad faith registration. In the present case, it is quite clear that the Complainant has satisfied paragraph 4(a)(i) of the Policy, but has failed to show the existence of bad faith registration and use of the disputed Domain Name. The fact that the Respondent may have been found to be a serial cybersquatter in other UDRP cases is not sufficient, in the circumstances of this case, to demonstrate to the Panel that the Respondent acted in bad faith when registering the disputed Domain Name.
In fact, the Respondent registered the disputed Domain Name well before (i.e. more than 8 years before) the Complainant acquired any rights on the ONIRIC name. Consequently, the Respondent could not have been aware of the registered trademarks of the Complainant or of its very existence, and therefore could not have targeted and/or had in mind the Complainant’s trademarks when it registered the disputed Domain Name. On the contrary, it appears that the Respondent has acted within the framework of its regular commercial domain business, i.e. to register and to offer domains for money without targeting the Complainant’s trademark. Owing to the above finding, relating to the registration and use in bad faith, there is no need to discuss whether or not the Respondent has rights or legitimate interests in respect of the disputed Domain Name.
RDNH: Applying the principles laid down in WIPO Case No. D2005-0309 and D2000-1202 to the facts of the present case, the Panel’s view is that there are several reasons why a finding of RDNH should be made. There is a complete absence of evidence or any facts from which an inference could reasonably be drawn that the Respondent registered the disputed Domain Name to tarnish the ONIRIC trademark of the Complainant, to prevent the Complainant from reflecting its ONIRIC trademark in a corresponding domain name, or for any other improper reason.
No inference could be drawn that the Respondent was targeting the Complainant or was minded to do so when it registered the disputed Domain Name. This is due to the fact that the Respondent registered the disputed Domain Name some eight years before the Complainant was incorporated and/or acquired trademark rights to the ONIRIC name, making it impossible for the Respondent to have known of the Complainant or to have been motivated by bad faith towards an as-yet non-existent company when it registered the disputed Domain Name.
Complaint Denied (RDNH)
Complainant’s Counsel: Pierre-Yves Thoumsin
Respondent’s Counsel: John B. Berryhill LLC
Case Comment by ICA General Counsel, Zak Muscovitch: Although not expressly mentioned in the decision, the word, “ONIRIC” happens to be a dictionary word meaning “related to dreams or dreaming”. That provides an explanation of why the Respondent registered the Domain Name in the first place and also why the Complainant selected it for its brand as well.
Of course, that wasn’t the determinative factor, or a factor at all really in the circumstances of the case, because regardless, the Respondent’s registration rights in the Domain Name preceded the creation of the Complainant corporation. In the circumstances, the case had to be dismissed.
Notably, the Panel made a finding of RDNH despite the lack of any apparent actual “malice” or “overt” intention to abuse the Policy. But the presence of such malice or intention isn’t always necessary in order to find RDNH. As was the case here, where there is a complete absence of evidence to support targeting of the Complainant or a complete absence of evidence that the Respondent registered the Domain Name for any improper purpose, RDNH may still be found. It is indeed abusive of the Policy to file a Complaint without any evidentiary basis to meet the requirements of the Policy, whether intentionally or not. Imagine what a judge in a courtroom would say if a case were filed spuriously without a care about meeting the well-established evidentiary requirements required to prove a case. The judge would likely say that the plaintiff abused the court’s process and would sanction the plaintiff and perhaps even the lawyer representing the plaintiff. That is what needs to be done with the UDRP as well in order to deter its misuse.
Descriptive Term Selected for No Reason Associated With Complainant
MAILSUITE, S.L. v. Mathias GILSON, Qualtir, WIPO Case No. D2025-2414
<mailtrack .email>
Panelist: Mr. Nick J. Gardner
Brief Facts: The Spanish Complainant supplies a software add-on that allows users of Google’s Gmail service to see when an email they have sent has been read by the recipient and use the domain name <mailtrack .io> which was created in 2013. The Complainant owns the registered trademarks for MAILTRACK in the United States – a wordmark registered on May 7, 2024; a device mark registered on May 15, 2018. The latter registration states “No claim is made to the exclusive right to use the following apart from the mark as shown: ‘MAILTRACK’“; and in Spain – a word trademark, registered on November 22, 2016; a device mark, registered on February 26, 2014. The Respondent is an individual resident in Switzerland who through his company offers a software add-on with the same functionality. The disputed Domain Name was registered on March 24, 2023, and has been used since then to promote the Respondent’s products and services.
The Complainant alleges that the Respondent registered and uses the disputed Domain Name in bad faith, seeking to attract users for commercial gain by creating confusion with the Complainant’s trademark. The Respondent contends that on March 2, 2022, the Respondent released an add-on then called “Gmail Track” on Google Workspace and bought the domain name <gmailtrack .com>. On March 17, 2022, Google requested the Respondent make certain changes to the add-on which included renaming the add-on from “Gmail Track” to “Mail Track for Gmail”. The Respondent’s adoption of “MAILTRACK” was nearly ten months before the Complainant’s US trademark for the word MAILTRACK was filed on January 25, 2023. The Respondent further contends that the disputed Domain Name consists of a combination of two common dictionary words, the word “mail” and the common term “track” and there are also numerous third-party domain names that feature the terms “mail” and “track”.
Held: The first difficulty the Complainant faces is that the Respondent has established by clear and corroborated evidence that it originally intended to adopt the name GMAILTRACK, but was opposed by Google. This to the Panel’s mind suggests it is more likely than not that the disputed Domain Name was acquired as a result of Google’s intervention rather than for any reason associated with the Complainant. The second difficulty with the Complainant’s case is that the term MAILTRACK is highly descriptive when used in relation to software which tracks whether an email message has been read. It seems to the Panel that this type of terminology could readily have been derived by many people and the Respondent could have readily independently chosen its name.
Given the widespread usage of “email tracker” or broadly similar terms for products from many parties which all appear to be broadly similar in nature the Panel does not think it appropriate to infer the Respondent necessarily had the Complainant in mind when it registered the disputed Domain Name. The Panel does not consider the filed evidence shows the Complainant or its product is so famous that this is a reasonable inference to draw. The Panel is neither persuaded that the examples of customer confusion the Complaint has produced alter this analysis, nor is that the fact both parties use a “double tick” logo relevant.
The Panel notes the Complainant has obtained the MAILTRACK trademark. It appears the USPTO during prosecution of this trademark raised an office action objecting to the trademark as being descriptive. The Panel does not know what steps the Complainant took to overcome that office action. It may or may not be the case that the Respondent’s actions infringe this trademark but that is a matter that would need to be determined by an appropriate court and is not for the present Panel to determine. Accordingly, the Panel concludes the Complainant has failed to discharge its burden of proof and has failed to establish that the third condition of the Policy has been fulfilled.
RDNH: On balance the Panel does not consider the Complainant’s conduct warrants a finding of RDNH. It considers the Complainant has attached too much weight to its own apparent success and too little weight to the descriptiveness of the terms relied upon and their widespread use by many persons for similar services. However, the Panel also notes that the Respondent’s original choice of domain name and the change prompted by Google’s intervention has only emerged in the Response and was not communicated to the Complainant in the earlier reply sent to its cease-and-desist letter. Had the Complainant been aware earlier of this fact it might have proceeded differently. Overall the Panel is not persuaded the Complainant’s conduct falls within the above guidelines nor that it deserves the censure of a finding of RDNH.
Claim Denied
Complainant’s Counsel: FOURLAW ABOGADOS, S.L.P., Spain
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: As the Panel noted, there was remarkably “clear and corroborative evidence” of the Respondent’s reasons for registering the Domain Name that had nothing to do with the Complainant. This, combined with the fact that the Domain Name was descriptive of the associated mail tracking service, led to the unequivocal dismissal of the Complaint, to the Panel’s credit.
Notably, RDNH was denied in this case, and the Panel provides a persuasive explanation. The Panel noted “that the Respondent’s original choice of domain name and the change prompted by Google’s intervention has only emerged in the Response and was not communicated to the Complainant in the earlier reply sent to its cease-and-desist letter”. Had the Complainant been aware of this crucial exculpatory evidence, the Complainant may have proceeded differently, as the Panel noted. When such exculpatory facts which are solely within the knowledge of a Respondent are only revealed in the course of a proceeding, a Panel can justly dismiss without necessarily finding RDNH, as the Panel did in this case.
It appears that in this case, the Complainant reasonably argued that since it was established in 2013 and had been extremely successful and well known, an inference could be draw that the Respondent had selected the Domain Name to target the Complainant’s goodwill. So there was an evidentiary basis for the Complaint, even if it was ultimately unsuccessful, which distinguishes it from the oniric case, above, where no such evidence was present and RDNH was found.
The other thing to bear in mind as the Panel did in this case, was to consider whether the Complainant’s conduct “deserved censure”. This consideration should generally be the ultimate driver in a Panel’s consideration of RDNH. The established case law and WIPO Overview does set out guidelines, but ultimately the Panel’s decision on whether to find RDNH or not turns on this determinative consideration.
Lastly, the Panel expressly noted that there could be a potential case for trademark infringement, but that this would be “a matter that would need to be determined by an appropriate court and is not for the present Panel to determine.” This is an important observation that is a good example of the line between cybersquatting as understood by the UDRP and trademark infringement as understood by national law. Trademark infringement does not require intention, whereas cybersquatting generally does. Where there is no intention to target a Complainant’s mark but it is nonetheless used in a potentially infringing manner, that is beyond the scope of the UDRP and must be determined by the courts, as the Panel determined in this case.
Passive Holding Alone, Insufficient to Show Bad Faith
PhotoCircle, Inc. v. Anthony Wood, c/o frank rimmerman, WIPO Case No. D2025-2352
<photocircle .com>
Panelist: Mr. Evan D. Brown
Brief Facts: The Complainant is in the business of providing downloadable computer software for photo and file sharing and social networking. It owns the trademark registration for PHOTOCIRCLE, with USPTO registered on April 16, 2024. The disputed Domain Name was registered on June 10, 2001. It appears that at least the past few years, the Respondent has not used the disputed Domain Name in connection with an active website. The Complainant alleges that it has operated under the PHOTOCIRCLE brand since 2012 and that the Respondent’s conduct reflects an intent to prevent the Complainant from reflecting its mark in a corresponding domain name.
The Complainant further alleges that the Respondent’s long-standing non-use of the disputed Domain Name, combined with its failure to respond to multiple purchase offers, supports a finding of bad faith. The Respondent contends that the disputed Domain Name, composed of descriptive terms, was registered in June 2001, more than a decade before the Complainant’s first claimed use of the PHOTOCIRCLE mark in April 2012. This timeline precludes any finding of bad faith registration. The Respondent further contends that the passive holding of the Domain Name and failure to respond to purchase inquiries, without additional evidence, do not amount to bad faith under the Policy.
The Complainant filed an unsolicited Supplemental Filing claiming the relevant date for assessing bad faith is a purported 2021 transfer to the current Respondent, not the original 2001 creation. It held common-law rights in the PHOTOCIRCLE mark long before 2021. The Respondent maintains that it has continuously owned the disputed Domain Name since 2001 and that the Complainant has misinterpreted a routine change in server or registrar information as evidence of a transfer. The Respondent further contends that the Complainant’s annexes purporting to show ownership history, are either unreliable, internally generated, or do not support the Complainant’s assertions.
Held: The Complainant asserts that the Respondent acquired the disputed Domain Name in 2021 and that this acquisition constitutes a new registration occurring after the Complainant’s trademark rights had accrued. In support of this, the Complainant has submitted copies of WhoIs records and a purported 2012 email exchange with a prior registrant. However, the Panel has doubts about the authenticity and reliability of this documentation. In particular, the Panel agrees with the Respondent’s observation that at least a portion of the provided WhoIs information appears to have been internally compiled. The Respondent has credibly challenged both the provenance and the interpretation of these materials. As for historical WhoIs information submitted, the Complainant does not explain how such information shows that the disputed Domain Name was transferred to the Respondent in 2021.
Moreover, there is no persuasive evidence that the Respondent targeted the Complainant or its PHOTOCIRCLE mark when registering or continuing to hold the disputed Domain Name. Even if the Respondent acquired the disputed Domain Name in or after 2012, the record does not support a finding that the registration was made with any intent to sell it to the Complainant, disrupt its business, or otherwise profit from consumer confusion. Absent credible evidence of targeting or any clear indicia of abusive intent, the Panel does not view this as a case of cybersquatting. The passive holding of this disputed Domain Name, which is comprised of two dictionary terms, without more, is insufficient to support a finding of bad faith. For these reasons, the Panel finds that the Complainant has not carried its burden under the third element of the Policy.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Loeb & Loeb, LLP, United States
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel made two important and admirable findings in this case. First, the Panel noted that, “absent credible evidence of targeting or any clear indicia of abusive intent, the Panel does not view this as a case of cybersquatting”. Precisely the sentiment which I have attempted to convey in my above comment on the mailtrack case. Second, the Panel also noted that “passive holding of this disputed domain name, which is comprised of two dictionary terms, without more, is insufficient to support a finding of bad faith.” Again, precisely as noted in UDRP Perspectives at 3.7, where a domain name is unused, it may be considered to be “passively held” – but that alone does not amount to bad faith use absent meeting the narrow requirements of the Telstra test. Crucially, the Telstra test requires a strong reputation of the mark and the impossibility of conceiving any plausible or actual good faith use of the particular domain name.
There has however, been some concern regarding the chronology of the Respondent’s registration, which the Respondent claimed to have continuously owned since 2001. It has been suggested subsequent to the release of the decision, that DomainTools historical Whois records may indicate that the Respondent may not actually have been the registrant continuously since 2001 as claimed. This does raise a serious issue of potential misrepresentation to the Panel if such allegations are borne out, however the Panel does not appear to have relied upon the chronology in reaching its decision, stating that in any event, “as for historical WhoIs information submitted, the Complainant does not explain how such information shows that the disputed domain name was transferred to the Respondent in 2021”, a crucial piece of the Complainant’s case. Moreover, the Panel noted that “there is no persuasive evidence that the Respondent targeted the Complainant or its PHOTOCIRCLE mark when registering or continuing to hold the disputed domain name” and “even if the Respondent acquired the disputed domain name in or after 2012, the record does not support a finding that the registration was made with any intent to sell it to the Complainant, disrupt its business, or otherwise profit from consumer confusion.”
Respondent Attempted to Impersonate the Complainant
Shopify Inc. v. Element SoFlo, CIIDRC Case No. 25376-UDRP
<shopifymascot .com>
Panelist: Mr. James Bridgeman SC
Brief Facts: The Complainant is an e-commerce platform designed for small and medium-sized businesses and holds a large international portfolio of registrations for the SHOPIFY trademark and service mark including Canadian trademark registration S SHOPIFY, (November 13, 2007); U.S. trademark registration SHOPIFY, (August 31, 2010); Canadian trademark SHOPIFY, (January 18, 2011). The Complainant has an established Internet presence and maintains a platform with a global reputation at <shopify .com>. The disputed Domain Name <shopifymascot .com> was registered on June 27, 2025, and resolves to a website that promotes a crypto product referred to as “Shoppy, the Shopify Mascot”.
The Complainant alleges that the Respondent included the Complainant’s trademarks in the disputed Domain Name and on the webpage to derive advantage from user confusion to create the illusion of an official affiliation with the Complainant, which does not exist. The Complainant further adds that where, as in this proceeding, a domain name at issue consists of a trademark plus an additional term, jurisprudence in decisions of panels established under the Policy, broadly holds that this cannot constitute nominative fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. No timely Response was received from the Respondent.
Held: The Complainant’s platform name, and registered trademark SHOPIFY is the initial and dominant element in the disputed Domain Name. The mark is a coined word which has acquired a global goodwill through use on the Complainant’s platform which has generated revenue of US$8.9 billion in 2025. The Complainant’s registered service mark rights in the mark long predate the registration of the disputed Domain Name on June 27, 2025. The earliest trademark registration relied upon by the Complainant dates back to 2007, and relevantly contains the Complainant’s shopping bag with the letter S device or logo. It is improbable that the registrant of the disputed Domain Name was unaware of Complainant’s mark when the disputed Domain Name was chosen and registered because the Complainant’s SHOPIFY mark is the initial and dominant element in the disputed Domain Name. There appears to be no plausible reason for registering the disputed Domain Name other than to create an association with the Complainant and its SHOPIFY mark.
The content of the Respondent’s website shows that the Respondent is purporting to impersonate the Complainant, in a considered manner. The evidence shows that the Respondent’s website purports to promote crypto products. Not only does the Respondent use the SHOPIFY name and mark; it has also created a character based on an anthropomorphised version of the Complainant’s shopping bag logo. The character is named “SHOPPY”, is based on the design of the Complainant’s logo and is described as being the Complainant’s “official mascot”. This Panel finds on the above evidence that the Respondent’s use of the Complainant’s trademark within the disputed Domain Name as the address of the resolving website, is on the balance of probabilities intentionally intended to attract and confuse Internet users and cause them to divert their Internet traffic intended for the Complainant and misdirect it to the Respondent’s website, which constitutes bad faith for the purposes of the Policy.
Transfer
Complainant’s Counsel: Daniel Anthony of Smart & Biggar LLP
Respondent’s Counsel: No Response
Panel: Cannot Assist Complainant Where Evidence Has Not Been Made Available
Genesys Cloud Services, Inc. v. ismail nihal azouzi / whatsnew, NAF Claim Number: FA2507002168855
<genesys .london>
Panelist: Mr. Debrett G Lyons
Brief Facts: The Complainant states that it has provided software and software-related consultancy services under the trademark GENESYS since at least 1994. The Complainant asserts ownership and registration of GENESYS (with and without added matter) in the United States and the United Kingdom. The Complainant submits that the disputed Domain Name is “virtually identical and confusingly similar” to its trademark. The disputed Domain Name was registered on July 4, 2025, using a privacy service to shield the name of the Respondent. The Complainant alleges that on July 4, 2025, the Respondent registered the domain name in bad faith and used it in connection with a copycat website. The Complainant further adds that when it became aware of this it filed a DMCA takedown notice for removal of the copycat website, which was successful and so evidence of the copycat website is no longer available. The Respondent failed to submit a Response in this proceeding.
Held: The Complainant asserts ownership and registration of GENESYS in the United States and the United Kingdom. The extracts from the United Kingdom register show composite marks which present a weaker case when it comes to comparison with the disputed Domain Name. The United States registrations for GENESYS (solus) shown in evidence are in the name of Genesys Telecommunications Laboratories, Inc., not the Complainant, and the Complaint claims, without proof, that the Complainant formerly bore that name. It has been said in numerous UDRP decisions that proof of trademark rights is a threshold issue under the Policy and so another panelist may have dismissed the Complaint at this point. However, the Panel has taken the added step of referencing USPTO records and found that USPTO Reg. No. 2,249,031, for the mark GENESYS was registered on June 1, 1999, and currently stands in the name of the Complainant. The Panel therefore finds proof of trademark rights.
There is no evidence of use of the disputed Domain Name, and while the Complainant asserts it was used for a copycat website, that website is no longer available. There is no further evidence of the takedown request or its supporting material, and nothing from the Internet Archive’s Wayback Machine has been provided, with the Panel’s use of it showing no page captures. The Complaint relies only on assertion and on a screenshot of Internet search results for <genesys .london> which may reasonably infer use but does not prove use in bad faith. The Complainant is professionally represented. Proof of use of the disputed Domain Name to support a copycat website, or in some other bad faith manner is not only essential to Complainant’s success, but within its control alone to adduce. The Panel cannot assist the Complainant where that evidence has not been made available. The Panel finds that the Complainant has not shown use in bad faith and so has not satisfied the third and final element of the Policy.
Complaint Denied
Complainant’s Counsel: Neil Peluchette of Taft Stettinius & Hollister LLP, USA
Respondent’s Counsel: No Response
About the Editor:
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.