Last Call! Only 3 days left to submit feedback on the Initial Report from the WIPO–ICA UDRP Project Team, co-led by Brian Beckham and Zak Muscovich.
You can re-watch the webinar with Brian Beckham and Zak Muscovitch, here:
https://youtu.be/lsJt81ryzrA.
Your input – whether it’s detailed feedback or a quick note – will help shape the final version of the report.
Deadline: Friday, June 27
Read the report here:
https://www.wipo.int/amc/en/domains/resources/wipo-icaudrpreview.html
Submit your comments here:
https://www3.wipo.int/contact/en/area.jsp?area=ica_udrp
We hope you will enjoy this edition of the Digest (vol. 5.25) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Dissenting Panel: Complaint is an “Overreach and a Long Shot” Such That RDNH is Appropriate (ignis .com *with commentary)
‣ Complainant’s Case is Fatally Flawed (tm7 .com *with commentary)
‣ Risk of RDNH: When Failed Purchase Attempt Leads to UDRP Abuse (watertimer .com *with commentary)
‣ Spanish Complainant Fails to Acknowledge that Domain Name is a Spanish Word (afianza .com *with commentary)
‣ Complainant Repeatedly Refers to her “Threat of Legal Action” to Negotiate the Purchase (eveli .com *with commentary)
‣ Panel: Respondent Did Not Provide a Proper Explanation for Selection of the Domain Name (exclusivebooksale .com)
Dissenting Panel: Complaint is an “Overreach and a Long Shot” Such That RDNH is Appropriate
Ignis Growth, S.L.U. v. Michael Bilde, WIPO Case No. D2025-1348
<ignis .com>
Panelist: Mr. Gerald M. Levine (Dissenting as to the failure to find RDNH), Ms. Lynda M. Braun and Mr. Evan D. Brown (Presiding)
Brief Facts: The Complainant is in the energy business. It owns the trademark IGNIS and several variations of that mark (e.g., IGNIS ENERGIA), including the United States registration for the mark IGNIS, registered on December 17, 2024. The Complainant asserts that the Respondent acquired the disputed Domain name on October 13, 2022 and that the Respondent has used the disputed Domain name to display a message that the disputed Domain name is for sale. The Respondent contends that the disputed Domain name was lawfully acquired on September 6, 2022, prior to any trademark rights held by the Complainant in the standalone term “IGNIS” as part of a legitimate domain name investment strategy focused on acquiring meaningful, dictionary or Latin-derived words.
The Complainant alleges that the Respondent acquired the disputed Domain name in October 2022 with actual or constructive knowledge of its IGNIS trademarks and with the intent of profiting from those marks. The Complainant also relies on two offers sent in February 2025 via BrandBucket proposing to sell the domain for nearly US$1 million. The Respondent contends that “ignis” is a common Latin word meaning “fire,” used widely and descriptively by unrelated third parties, and that he neither knew of nor targeted the Complainant at the time of acquisition. The Respondent further maintains that the disputed Domain name was acquired without reference to the Complainant’s brand or rights, and that any subsequent offer for sale, including an unsolicited outreach by BrandBucket, does not invalidate the Respondent’s legitimate interest or constitute bad faith under the Policy.
Held: The Panel finds that the Complainant has made a prima facie showing. However, the Respondent has presented credible evidence in rebuttal, asserting that he acquired the disputed Domain name as part of a legitimate domain name investment strategy based on generic or Latin-derived terms, without knowledge of the Complainant. “Ignis” is a Latin word meaning “fire,” and the Respondent has shown it is a term used widely and descriptively by unrelated parties for various purposes. The Panel accepts the Respondent’s explanation as plausible and consistent with legitimate domain name investment activity. The Complainant has not shown convincingly that the Respondent was targeting the Complainant’s mark or had reason to be aware of it at the time of acquisition. Nor is there persuasive evidence in the record to suggest the disputed Domain name was acquired primarily for the purpose of selling it to the Complainant.
The Panel notes that the Respondent acquired the disputed Domain name, prior to the registration of any trademark rights in the standalone term “Ignis.” Although the Complainant has earlier composite marks (e.g., IGNIS ENERGIA), there is no strong evidence these marks were well-known when the Domain Name was acquired. More significantly, the Respondent credibly claims it bought the disputed Domain name for its value as a Latin word, and not with the Complainant in mind. The disputed Domain name consists of a common word with broad meaning across centuries and languages. As for the purported targeting of the Complainant by the Respondent, the evidence tends to show that the offers to sell the disputed Domain name to the Complainant were initiated by a third-party platform, not by the Respondent directly. The Panel therefore accepts that the disputed Domain name was acquired not for bad faith targeting of the Complainant but because of the disputed Domain name’s intrinsic value as a generic or Latin term.
RDNH (Majority): While the Panel recognizes that the Complaint was ultimately without merit and rests on a weak factual and legal foundation, the majority of the Panel refrains from making a finding of RDNH in this instance. This is not because the Complaint is well-founded, but rather because the proximity in timing between the Respondent’s acquisition of the disputed Domain name and the Complainant’s trademark registration may have offered a glimmer of perceived credibility to the Complainant’s case in the eyes of its counsel. Although speculative and tenuous, the assertion that the Respondent may have acquired the disputed Domain name with some knowledge of the Complainant’s mark, given their near overlap, provides just enough context for the majority of the Panel to avoid a finding of RDNH. The majority of the Panel therefore views the Complaint as an overreach or a long shot, but not an abuse of the Policy.
RDNH (Dissenting): Panelist Levine respectfully dissents from the majority’s conclusion solely on the issue of RDNH. In this Panel member’s view, this is precisely the type of case where a finding of RDNH is warranted. First of all, there are many trademark holders other than the Complainant for the term “Ignis.” Secondly, the Respondent’s registration of the disputed Domain name which it acquired on a dropped auction (September 6, 2022) predated the application date for both the Spanish and the U.S. trademarks, see WIPO Overview 3.0, sec. 3.8. Without divine intervention, the Respondent could not possibly have anticipated that a business operating in Spain was at that moment contemplating applying for a trademark registration. I would also point out with double underscoring that the word “Ignis,” albeit in Latin, cannot be claimed exclusively by an owner who chooses that word for its mark, particularly where there are many other users that predated the Complainant in the market. Further, “Ignis” is no less a dictionary word because it may not appear in a Standard English or Danish dictionary.
Further, the Complainant was professionally represented. It should have been obvious to the professional representative that there could be no cybersquatting nor that the Respondent could conceivably have actual notice of the Complainant’s existence or of its plans. In this regard, the professional representative violated Rule 3(xiii) in certifying that to the best of its knowledge the information “is complete and accurate.” Where the facts dictate sanction, it ought to be applied. The majority of the Panel concluded its analysis by noting that although it “views the Complaint as an overreach or a long shot, [it was] not an abuse of the Policy.” It is precisely because the Complaint is an “overreach and a long shot” that RDNH is appropriate. The Complainant offered not even a shred of evidence that the Respondent violated the UDRP. It is for the above reasons that I respectfully disagree.
Complaint Denied
Complainant’s Counsel: PONS IP, Spain
Respondent’s Counsel: Cylaw Solutions, India
Case Comment by ICA General Counsel, Zak Muscovitch:
Notably, the Panel to its credit “accept[ed] the Respondent’s explanation as plausible and consistent with legitimate domain name investment activity” and found that “the Complainant has not shown convincingly that the Respondent was targeting the Complainant’s mark or had reason to be aware of it at the time of acquisition”. This strikes me as an appropriate yardstick by which to assess a Respondent’s rebuttal to a claim of ‘no legitimate interest’. As you can see, the key ‘yardsticks’ employed by the Panel were “plausibility”, “convincingly”, and “persuasive evidence”. Where a Respondent provides a plausible explanation consistent with legitimate domain name investment activity and where the Complainant fails to convincingly show that the Respondent was targeting the Complainant, the Complainant will generally have failed.
I would however add, that in such circumstances, a Panel may go one step further and make an affirmative finding of a Respondent’s legitimate interest, rather than merely “find[ing] that the Complainant has not established this second element”. As noted in UDRP Perspectives at 2.1, Panels may be tempted to skip over determining whether a Respondent has rights and a legitimate interest. This is often done for reasons of judicial economy, as strictly speaking a case can be dismissed on one prong of the three-part test and therefore the decision need not address any additional, extraneous grounds. Nevertheless, Panelists should generally make an affirmative finding of rights and legitimate interest if the facts so warrant, due to the implicit obligations of Rule 4(c).
Paragraph 4(c) of the Policy expressly entitles a Respondent to “prove” its rights and legitimate interests and implicitly directs a Panel to make such a finding if so proven:
“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):…”
A Respondent who has had its bona fides challenged and been falsely accused of what essentially amounts to a type of fraud, may deserve some vindication and confirmation of their rights and interests as the Policy provides for.
A word about the apparent direct solicitation of the Complainant by the third-party sales platform. The Panel noted that “the evidence tends to show that the offers to sell the disputed domain name to the Complainant were initiated by a third-party platform, not by the Respondent directly”. This is concerning and domain name investors would be well advised to look into what a sales platform does in terms of marketing the domain name to trademark holders. Although this can be done in good faith particularly when it comes to dictionary word domain names such as the Disputed Domain Name, it can nevertheless inadvertently lead to a needless UDRP, as was unfortunately the case here.
Lastly, this is an interesting situation where the Panel was divided on RDNH, with the majority denying RDNH with the minority finding RDNH. The majority of the Panel’s explanation for denying RDNH deserves some credit. Panels are required to consider RDNH and when they do – even where they ultimately deny it – they are fulfilling a responsibility. Moreover, RDNH is a discretionary remedy so where a Panel believes, as it did here, that there was “just enough” to avoid a finding of RDNH, a Panel has discharged its duty.
Nevertheless, the Minority’s view is quite compelling, noting that “without divine intervention, the Respondent could not possibly have anticipated that a business operating in Spain was at that moment contemplating applying for a trademark registration”. The Panel further noted that “Ignis,” albeit in Latin, cannot be claimed exclusively by an owner who chooses that word for its mark, particularly where there are many other users that predated the Complainant in the market. The Minority also stated that, “It should have been obvious to the professional representative that there could be no cybersquatting nor that the Respondent could conceivably have actual notice of the Complainant’s existence or of its plans. The key factor here apparently, was that “the Respondent’s registration of the page 5 disputed domain name which it acquired on a dropped auction (September 6, 2022) predated the application date for both the Spanish trademark (application date October 6, 2022, and registration issued on October 27, 2023) and the U.S. trademark (application date April 4, 2023, and registration issued on December 24, 2024).”
The majority indicated that there was “a glimmer of perceived credibility to the Complainant’s case in the eyes of its counsel” and this was apparently sufficient to avoid RDNH. However as noted by the minority, it is precisely because the Complaint is an “overreach and a long shot” that RDNH is appropriate… the Complainant offered not even a shred of evidence that the Respondent violated the UDRP.
So is a glimmer of hope enough? Ultimately it is a matter for a Panel’s discretion, but such discretion must be exercised judicially and upon a good appreciation of the material facts. Here, a Complainant’s self-serving reliance upon a glimmer of hope may have been outweighed by the chronology and the nature of the word corresponding to the Domain Name, such that RDNH may have been appropriate in the circumstances.
The Digest’s Editor, Ankur Raheja, acted for the Respondent in this case.
Complainant’s Case is Fatally Flawed
Vorwerk International AG v. Xu Liju, WIPO Case No. D2025-1260
<tm7 .com>
Panelist: Mr. Steven M. Levy, Mr. Flip Jan Claude Petillion, and Mr. Matthew S. Harris (Presiding)
Brief Facts: The Complainant is a company incorporated in Switzerland and forms part of the Vorwerk Group. One of the Vorwerk Group’s business divisions operates under the name “Thermomix”. This division is engaged in the distribution and sale of multifunctional kitchen appliances, that includes THERMOMIX TM5 (2014); THERMOMIX TM6 (2019) and THERMOMIX TM7 (2025), among others. The Complainant is the owner of an extensive portfolio of trade marks worldwide that incorporate or comprise the term “THERMOMIX”. The Complainant is also the owner of the International trade mark dated June 10, 2024, for TM7, a word mark. The Domain Name was registered on June 24, 2001 and has been offered for sale.
The Complainant argues that although TM7 is a new trademark, representing the latest Thermomix version, the brand’s history shows that at registration, there should have been awareness linking ‘TM’ plus a number to Thermomix products. The Respondent contends that the Domain Name was registered without any knowledge of the Complainant and those rights or legitimate interests include equitable interests such as the “right of seniority” in a domain name. The Respondent further contends that there cannot be bad faith registration where the corresponding mark that it is said to take unfair advantage of did not exist at the date of registration and observes that the numbering used by its products has not been sequential, with only the term “TM21” being used prior to the date of the registration of the Domain Name.
Held: The Complainant asserts that the disputed Domain name was registered by the Respondent to target the Complainant’s THERMOMIX marks. Given the dissimilarity between those marks and the Domain Name, that contention is rejected. Similarly, the Complainant at one point contends that the Respondent has used the Domain Name to sell “products related to the Complainant’s brand”. However, this claim is unsupported by evidence and is similarly rejected by the Panel. Given this, at its heart the Complainant’s case essentially boils down to the contentions that the Complainant had used the term “TM21” as a designation for one version of its products prior to the registration of the Domain Name, the Respondent was aware of that use and then registered the Domain Name in the belief that the Complainant would in future use the term “TM7” as a trade mark in respect of one of its products, and that accordingly the Domain Name has been registered in bad faith.
The Panel rejects these contentions because “TM21” was only one of several terms used by the Complainant before the Domain Name was registered, with no evidence of its fame or reputation at that time. “TM7” is a common acronym attractive to many businesses, and the Respondent’s ownership of similar domain names supports that it was registered for its inherent value, not to target the Complainant. The Respondent claims that because the Domain Name pre-dates the Complainant’s trade mark, then the Complainant must necessarily fail. There can be circumstances, where a domain name that predates trade mark rights has been registered in bad faith, but that is normally an exceptional state of affairs. These issues are more fully addressed in section 3.8.1 and 3.8.2 of the WIPO Overview 3.0. However, none of these sorts of limited circumstances, identified in section 3.8.2 of the WIPO Overview 3.0, apply in this case. Accordingly, the Complainant has failed to show that the Domain Name was registered or has been used in bad faith.
RDNH: The Complainant is not only legally represented but is represented by a firm that has acted as a legal representative in a large number of UDRP cases both for this Complainant and other entities. As such it should be very familiar with the requirements of the UDRP. Notwithstanding this, at the very least the Complaint has not been prepared with the care that it should have been. In this respect the Panel has already mentioned the Complainant’s unintelligible claims by reference to Oki Data test as well as to the THERMOMIX and VORWERK marks, and further the unsubstantiated allegation that the Domain Name has been used in respect of products that compete with the Complainant. Why this has happened is not entirely clear. The Respondent’s suggestion that this is a result of the “inept use” of copy and paste from submissions in earlier UDRP complaints strikes the Panel as a plausible explanation.
Further, the Panel is satisfied that the Complainant’s legal advisers knew or ought to have known that in circumstances where it was relying on a mark that was only registered nearly 25 years after the Domain Name was initially registered, and where the mark had not been used to any significant degree prior to the mark’s registration, that it could not show bad faith registration. Therefore, the Complainant’s legal advisers would or at least should have been aware both from the guidance provided by the WIPO Overview 3.0 and its involvement in the AKAPOL S.A., WIPO Case No. D2023-2284 that the Complainant’s case was also similarly “fatally flawed”. Further, although a poorly prepared complaint is usually of itself insufficient grounds to justify a finding of RDNH, it is in this case at the very least consistent with the Complaint being prepared with little concern as to whether the Complainant had a credible claim.
Complaint Denied (RDNH)
Complainant’s Counsel: Moeller IP & Co S.A., Argentina
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States of America
Case Comment by ICA General Counsel, Zak Muscovitch:
Notably, when examining legitimate interest under the Policy, the Panel noted that “2.10 of the WIPO Overview 3.0, appears to suggest that there will only be a legitimate interest in the case of dictionary terms where the domain name is “genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.” The Panel however also noted that the same part of the Overview seems to suggest that there can be a legitimate interest in holding a domain name comprising an acronym where there is evidence before the panel that the domain name “does not capitalize on the reputation and goodwill inherent in the complainant’s mark”. Ultimately, the Panel decided that “it does not consider it necessary to consider the issue of rights and legitimate interests any further given its findings as to the third element of the Policy.”
Parsing the Overview rather than the Policy itself may be problematic. The Overview, though very helpful in creating consistency in interpretation and application of the Policy, is not itself the law. The law is the Policy and Paragraph 4(c) of the Policy expressly entitles a Respondent to “prove” its rights and legitimate interests and implicitly directs a Panel to make such a finding if so proven:
“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):…”
Here, the Respondent argued that “a respondent can hold legitimate rights in domain names that take the form of either ordinary words, or short acronyms of a few letters that might be being used by a large number of businesses, in circumstances where the domain name was registered prior to the date of the trade mark rights upon which a complainant relies and that the Respondent was therefore unaware of those rights.” This seems to be a very convincing basis for finding that a Respondent has rights and a legitimate interest, absent some intervening event that terminated such rights and legitimate interest and is consistent with the view espoused in the case cited by the Respondent, namely Success Bank v. ZootGraphics c/o Ira Zoot, NAF Claim Number: FA0904001259918. As held in Riveron Consulting, L.P. v. Stanley Pace, NAF Claim No: FA1002001309793, without evidence of a complainant’s trademark rights at the time of a respondent’s registration, there is simply no foundation to conclude that a respondent has no rights in the domain name. Logically, a complainant cannot meet this initial threshold of showing that a respondent has no rights, if Complainant itself had no demonstrable rights at the time of registration.
In any event, the registration of a dictionary word, acronym, or the like does not require “use” in connection with its ordinary meaning to confer a right. A registrant that registers such a name in good faith, particularly prior to any claimed rights held by a Complainant, has a contractual right and legitimate interest in the Domain Name absent any bad faith use or intervening event. This “right” is apart from a “trademark right”. Trademark rights are only one type of rights. Moreover, it is well established that even if “use” were a prerequisite to rights, “use” includes use of a domain name within an investment portfolio.
The business of supplying domain names is well established as a legitimate interest under the Policy. As held in Alphalogix, Inc. v. DNS Services d/b/a MarketPoints.com – New Media Branding Svcs., NAF Claim Number: FA0506000491557, and as unanimously followed by the three-member Panel in Arrigo Enterprises, Inc. v. PortMedia Domains, NAF Claim Number: FA1304001493536, the business of creating and supplying names for new entities is a “legitimate activity in which there are numerous suppliers in the United States”. As held in Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, where a Domain Name forms part of a Respondent’s stock-in-trade (as it does here), it constitutes “use of the domain name in connection with a bona fide offering of goods or services”.
Ultimately however, the Panel to its credit, came not only to the right decision in this case, but also appropriately found RDNH. The Panel to its credit focused in on the fatal flaw of the case: “The Complainant’s assertions that the Respondent had such knowledge and intention when at the time the Complainant had only used the term “TM21”, where there is no real evidence of the extent of the fame of that product, and where it would or should have been aware that many businesses might equally have used the term “TM7”, are little more than bare assertions and are inherently incredible”. Making such “incredible” claims without any evidentiary basis is the crux of some forms of RDNH. A Complainant must not make such incredible allegations and expect to avoid RDNH.
Risk of RDNH: When Failed Purchase Attempt Leads to UDRP Abuse
Felipe Ospina v. Prempracha DMELLO, WIPO Case No. D2025-1642
<watertimer .com>
Panelist: Mr. Edoardo Fano
Brief Facts: The Complainant is from Colombia operating in the field of water control devices and has online presence at <watertimer .co>. It owns local trademark registration for WATER TIMER EVERY DROPS MATTERS and design, registered on April 9, 2025 and local application for WATER TIMER, filed on February 27, 2025. The Complainant also founded the Company Water Timer LLC in St. Petersburg, Florida, USA, and filed the trademark application for WATER TIMER on March 12, 2025. The Respondent is from Thailand operating in the field of automatic water timers for gardens, who acquired the disputed Domain name on February 8, 2023, for US$4,120, after a negotiation process that began in August 2019. The Domain Name currently resolves to a website on which information about automatic water timers for gardens is provided. On February 21, 2025, a DomainAgents broker contacted the Respondent on behalf of the Complainant in order to purchase the disputed Domain name with an offer of US$500, which was refused by the Respondent.
The Complainant alleges that the disputed Domain name was dormant for an extended period of time and only began displaying generic content after the Complainant initiated contact through DomainAgents in an attempt to purchase the disputed Domain name at fair market value. The Respondent contends that the term “water timer” is generic and descriptive, widely used to refer to irrigation and gardening equipment, and that the Complainant’s trademark is registered in Colombia and not universally recognized, and similar applications in the United States and Canada are still pending and unregistered. Moreover, the Respondent contends to have rights and legitimate interests in the disputed Domain name, as the latter is used for a genuine informational website related to water timers, which is a generic term, without trying to sell, lease, or transfer it for profit or to mislead users into thinking it is affiliated with the Complainant, but instead making a noncommercial use of it that aligns with common and fair domain use practices.
Held: The evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain name was to profit from or exploit the Complainant’s trademark. In fact, the Panel finds that the Respondent did not register the disputed Domain name in bad faith targeting of the Complainant or its trademark rights because the Complainant had no trademark rights at the time that the Respondent registered the disputed Domain name, WIPO Overview 3.0, section 3.8.1. The reason why the disputed Domain name, registered back in 2001, was dormant for an extended period of time is because the Respondent only acquired it in February 2023, in any case before the oldest trademark application for WATER TIMER that was filed by the Complainant in Colombia in April 2024.
RDNH: As detailed in the above analysis of the third element, the Panel finds that the Complainant has contravened the above RDNH bases, because he knew or should have known that there was no evidence of the Respondent’s bad faith directed towards the Complainant, making highly unlikely if not impossible that the Respondent had been targeting the Complainant. Finally, as it has been stated in previous decisions, a complainant is at risk of a RDNH declaration when its attempt to try and buy a domain name is not successful, and it tries to obtain it by using, or rather “abusing”, the UDRP. In the present case for the reasons explained above, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Kudos to the Panel for appropriately finding RDNH in this case, noting that the Complainant “knew or should have known that there was no evidence of the Respondent’s bad faith directed towards the Complainant, making highly unlikely if not impossible that the Respondent had been targeting the Complainant”.
For more on this case see “Entrepreneur Tries to Reverse Hijack His Way Into .com” (DNW, June 19, 2025).
Spanish Complainant Fails to Acknowledge that Domain Name is a Spanish Word
Afianza Asesores, S.L. v. Host Admin, SyncPoint, Inc., WIPO Case No. D2025-1542
<afianza .com>
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is a Spanish company that provides business consulting services, having online presence at <afianza-ac .es>. It holds multiple trademark registrations, including Spanish trademark for A AFIANZA CONSULTORA ECONOMICA Y DEL TRABAJO, registered on February 28, 2006; another Spanish trademark for A AFIANZAAPP, (November 21, 2016); and EU trademark for AFIANZA ASESORIA CONSULTORIA, (March 17, 2016). In February 2025, the Complainant filed several Spanish trademark and trade name applications containing the word “Afianza,” which are still pending. The disputed Domain name was created on April 27, 2005 and with the web page till recently showed it as reserved, and listing other domain names priced between US$24,700 and US$543,700. As of June 11, 2016, the disputed Domain name showed a web page advertising it for sale at US$8,000. On March 5, 2025, after the Complainant’s legal representative expressed interest in the domain via the “Make an Offer” button and received a US$300,000 asking price).
The Complainant alleges that the holder of the disputed Domain name has passively retained it since the moment of its registration and, in particular, for the past ten years, with the sole and exclusive purpose of financial gain, without any intention to commercialize goods or services or to develop a legitimate business model. In other words, the holder maintains the disputed Domain name solely for the purpose of trading and speculating with it. The Respondent contends that it has a legitimate interest in the disputed Domain name because “afianza” is a generic Spanish verb meaning “to secure” or “to guarantee”. The disputed Domain name was registered for it’s descriptive, linguistic, and investment value, not to target the Complainant. The Respondent further points out that the Complainant’s email communication of March 5, 2025 acknowledges the Respondent as the lawful holder of the disputed Domain name, contains no mention of trademark rights, confusion, or infringement, and seeks a commercial acquisition, not legal redress.
Held: In the present case, the disputed Domain name was registered in April 2005, four months before the Complainant’s earliest application to register a trademark containing the word “afianza”. In terms of WIPO Overview 3.0, section 3.8.1 and section 3.8.2, the Panel sees no exceptional circumstances that might establish that the Respondent’s intent in registering the disputed Domain name was to unfairly capitalize on the Complainant’s nascent, as yet unregistered, trademark rights. Indeed, the Complainant does not claim that there are any such exceptional circumstances, while the Respondent submits that it had no knowledge of the Complainant until 2025 and the Panel sees no reason to doubt that submission. In view of these circumstances, the Panel finds that the Respondent did not register the disputed Domain name in bad faith targeting of the Complainant or its trademark rights because the Complainant did not prove that it had trademark rights at the time when the Respondent registered the disputed Domain name.
As regards use, the disputed Domain name is used in connection with an active web page where it has been offered for sale. The Complainant alleges without supporting evidence that there is an association between “afianza” and its business. The Complainant fails to acknowledge that “afianza” is a Spanish dictionary word. The Respondent refers to that meaning as the value of the disputed Domain name. Nothing on the record indicates that the incorporation of that Spanish dictionary word in a domain name indicates a bad faith intention toward the Complainant and/or any of its marks, even now, when some of those marks are registered. None of the evidence shows that any other domain names that the Respondent offers for sale incorporate trademarks either. The mere fact of holding a domain name for subsequent resale (including for a profit), even for an extended period of time, does not by itself constitute bad faith conduct. The Complainant cites certain UDRP panel decisions regarding bad faith that are inapposite in the circumstances of this dispute.
RDNH: The Panel notes that the Complaint made no attempt to show that the Respondent could or should have been aware of the existence of itself or any of its marks at the time of registration of the disputed Domain name. Further, the Complainant failed to acknowledge that the disputed Domain name is a Spanish dictionary word and thus did not explain why a good faith use of the disputed Domain name in connection with that meaning was implausible. The Complainant was fully on notice of the above defects in its arguments. It has legal representation in this matter and consulted the WIPO Overview 3.0 in the preparation of the Complaint.
As a Spanish company, the Complainant must know the dictionary meaning of “afianza.” Prior to this dispute, the Respondent’s broker pointed out that dictionary meaning to the Complainant and warned it that a complaint may be considered an attempt at reverse domain name hijacking. Heedless, the Complainant proceeded to file the Complaint, evidently motivated by dissatisfaction with the price range that the Respondent was seeking for the disputed Domain name. The Complainant knew that it could not succeed on any fair interpretation of the Policy and put the Respondent to the time and effort of defending itself with no prospect of a costs order in its favor.
Complaint Denied (RDNH)
Complainant’s Counsel: Ceca Magán Abogados, Spain
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel did an admirable job in analyzing and writing this decision. Well done!
Complainant Repeatedly Refers to her “Threat of Legal Action” to Negotiate the Purchase
Mengjia Li (Eve Li) v. zhou zong wen, NAF Claim Number: FA2505002156311
<eveli .com>
Panelist: Mr. David L. Kreider
Brief Facts: The Complainant, Mengjia Li, runs an online business selling jewellery principally via the web address <eveli .co .uk>. The Complainant alleges that “Eve Li” has been her distinct and uniquely associated personal and professional identity in the jewelry trade, continuously used commercially since 2005, including in her professional email address. The Complainant owns the U.S. trademark EVE LI FINE JEWELLERY, registered on October 8, 2024. The Complaint alleges that the Respondent previously offered the Domain Name for sale and the parties exchanged several offers and counteroffers over the WeChat. The Complaint alleges that after break-down of the negotiations at approx. US$4,800, the Respondent replaced the “for sale” page on their website with a sign-in page reading “Welcome Back to Eveli” in Chinese, which the Complainant alleges is in bad faith.
The Respondent contends that the Complainant’s legal name is Mengjia Li and not “Eve Li”, and that the latter is a commonly used personal name that should not be monopolized by any single party. The Respondent further contends that before receiving the complaint, he had begun to lawfully use or was preparing to use the Domain Name for purposes such as e-mail communication and “other business-related uses”. When the Complainant inquired regarding the purchase of the Domain Name, the Respondent told the Complainant that he needed to use the Domain Name for his own purposes and “could not sell it at a low price”. There was no attempt to profit. The Respondent finally adds that the Domain Name was registered in 2005, long before the Complainant’s trademark “EVE LI FINE JEWELLERY” was registered.
Held: The Complainant’s only evidence adduced in support of her claim to common law trademarks rights in the mark “EVELI” extending back in time to 2005 when the Respondent registered the Domain Name <eveli .com>, is a school of gemology entrance application form in which the Complainant, under her own name, Mengjia Li, provided the contact email address “evedandan@hotmail.com”. The Panel notes that the Complainant’s own surname “Li” appears nowhere in the aforesaid email and that the Complainant’s more recent evidence of use in commerce of the name “EVE LI” in connection with her jewellery business is also sparse and dates back no earlier than 2021. The totality of the Complainant’s evidence is not enough to establish common law trademark rights in the EVE LI name.
Having considered the allegations of the parties and the evidence adduced, the Panel finds that the Complainant cannot prove “bad faith” registration of the Domain Name by the Respondent because the Complainant’s rights in the registered mark EVE LI FINE JEWELLERY arose nearly 20 years after the Domain Name was registered by the Respondent. The Panel considers that, although the Respondent no doubt expected in 2005, when he registered and posted for sale the Domain Name <eveli .com>, that a potential buyer would come forward, the Respondent could not have had the Complainant specifically in mind, as the Complainant’s EVE LI FINE JEWELLERY business would not even begin to establish a reputation or recognizable name for itself until two decades later.
RDNH: Here, the Panel notes that the Complainant, who is acting pro se and is not represented by legal counsel in this proceeding, refers repeatedly to her “threats of legal action” and “UDRP threat” against the Respondent. The Complainant admits to making these threats when her attempts to negotiate the purchase of the Domain Name from the Respondent broke off. While it may be reasonable to conclude that the use of “threat” was merely a less-than-optimal choice of words by an unrepresented party, the Panel still considers that the Complainant’s overall conduct supports a finding that this UDRP proceedings was a so-called “Plan ‘B'” and a way calculated by the Complainant to wrest the Domain Name out of the hands of the Respondent, knowing she had no legitimate right to do so under the UDRP.
Against the background facts explained above, where the Complainant has adduced no reliable evidence supporting her allegation that the name “Eve Li” is the Complainant’s long-used personal and professional identity, supported by continuous commercial use since 2005, and that the mark “Eve Li” is distinct, non-generic, and uniquely associated with the Complainant in the jewelry trade, where the available evidence shows the Complainant’s registered rights in the mark EVE LI FINE JEWELLERY arose nearly 20 years after the Domain Name was registered by the Respondent, the Panel finds this UDRP proceeding was instituted by the Complainant in bad faith and is reverse domain name hijacking by the Complainant.
Complaint Denied (RDNH)
Complainant’s Counsel: Mengjia Li, Thailand
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Strong and convincing finding by the Panelist. Well done. For more on this case, see “Jewelry maker tries to reverse hijack domain name” (DNW.com, June 21, 2025).
Panel: Respondent Did Not Provide a Proper Explanation for Selection of the Domain Name
Exclusive Books Group (Proprietary) Limited v. aaaa aaaa, WIPO Case No. D2025-1653
<exclusivebooksale .com>
Panelist: Mr. Tobias Malte Müller
Brief Facts: The Complainant claims to be one of South Africa’s largest bookselling chains, established in 1951 and currently owning 40 stores in South Africa but also Botswana and Namibia. It owns several registered trademarks in South Africa consisting of the verbal elements EXCLUSIVE BOOKS, registered on January 8, 1996, for goods in Class 16 and on January 8, 1996, for services in Class 42. The Complainant operates <exclusivebooks .com>, which redirects to <exclusivebooks .co .za>. The Respondent registered the disputed Domain name on February 15, 2025, and until recently used the disputed Domain name for a website purportedly selling clothing (“welcome to purchase at VADENDS”).
Following a demand letter sent by the Complainant’s attorneys to the Registrar of the disputed Domain name on February 27, 2025, the domain name was disconnected. The Complainant alleges that it has no doubt that said domain name was registered merely to interfere with the Complainant’s business and to confuse the public into believing that the disputed Domain name belongs to the Complainant, when it does not. The Complainant further alleges that the disputed Domain name was registered to conduct phishing activity, for the purposes of luring the Complainant’s customers, and/or to prevent the Complainant from reflecting the mark in a corresponding domain name. The Respondent did not provide a Response.
Held: The Panel observes that the disputed Domain name incorporates a slight variation of the Complainant’s registered trademark i.e. “exclusive book” (singular) with the term “sale” which has an inherent Internet connotation. Furthermore, it is the Panel’s view that the disputed Domain name is not a domain name one would logically adopt for a website selling clothing. Furthermore, the Panel notes that there is no evidence in the record that could lead to the conclusion that the Respondent is commonly known by the disputed Domain name in the sense of paragraph 4(c)(ii) of the Policy. Finally, the above-described use of the disputed Domain name for a commercial website purporting to sell clothing excludes any noncommercial use in the sense of paragraph 4(c)(iii) of the Policy from the outset.
In terms of the paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. In the present case, it results from the Complainant’s documented allegations that the disputed Domain name resolved to a commercial website purportedly selling clothing (“welcome to purchase at VADENDS”) without any disclaimer. The Respondent did not provide any reasonable explanation as to the selection of the disputed Domain name to sell clothes under the name “VADENDS”, and the Panel does not find any. The further circumstances surrounding the disputed Domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed Domain name in bad faith.
Transfer
Complainant’s Counsel: Moore Attorneys Incorporated, South Africa.
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.