Minority Panelist Would Have Found RDNH
Despite the law being clear, some Complainants still try to rely upon a merely pending trademark application. In this case, the Complainant initially relied on an EU trademark application. As the Panel noted, “it is well established in UDRP jurisprudence and confirmed by WIPO Overview 3.0 that a pending trademark application would not by itself establish trademark rights for the purpose of the Policy”. As also noted in UDRP Perspectives at 1.10 “Pending Trademark Applications or registrations in the U.S. Supplemental Register”, it is well settled that a mere trademark application affords no rights until registered. Continue reading commentary here.
WIPO and ICA Conclude Comprehensive Review of the UDRP
This initiative was driven by a robust international process that included nearly a dozen consultations with industry leaders, legal experts, and stakeholders. The goal was to identify best practices, establish areas of consensus, and pinpoint potential improvements to the policy. Coordinated by Zak Muscovitch, General Counsel to the ICA and Brian Beckham, WIPO, the project team, comprising experts and UDRP stakeholders from around the world.
Following a period of public comment on the draft, the Final Report is now being shared, including submission to ICANN for consideration in any future UDRP review undertaken by its Generic Names Supporting Organization (GNSO). By clearly identifying where stakeholder agreement and disagreement lie, this independent report is expected to significantly benefit and streamline ICANN’s official review process, ensuring any future changes are well-informed and reflective of community input.
The UDRP is the cornerstone for resolving domain name disputes globally, and its effectiveness relies on continuous review and refinement. We thank everyone involved. You can access the complete WIPO/ICA UDRP Review Final Report and background information on WIPO’s website. The Executive Summary Table of Recommendations in the Final Report, is also available here.
We hope you will enjoy this edition of the Digest (vol. 5.50) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Minority Panelist Would Have Found RDNH (gabler .com *with commentary)
‣ Panel: Complainant “Escaped” RDNH by “Very Small Margin” (artofliving .com *with commentary)
‣ Deceptive Domain Name Used to Promote Online Casinos (milli-lotto .net)
‣ Panel: No Bad Faith Found Where Respondent Sought Competing Offers (rams .com)
‣ No Evidence of Respondent’s Actual Knowledge of the Complainant’s Trademark at the Time of Domain Acquisition (orlandoliving .com)
‣ UDRP Panel Criticizes Complainant’s Legal Strategy and Presentation (theblackgpt .com)
Minority Panelist Would Have Found RDNH
Gabler Maschinenbau GmbH v. Stanley Pace, CAC Case No. CAC-UDRP-107921
<gabler .com>
Panelist: Mr. Sozos-Christos Theodoulou, Mr. Igor Motsnyi and Mr. Thomas Hoeren
Brief Facts: The Complainant provided little information about its business in its submissions; however, based on publicly available internet sources, it seems that for more than 60 years the Complainant is a large German-based international company, well-known in marine technology, especially in the field of submarine and special-purpose machinery. It owns a few related domain names, such as <gabler-naval .com> since September 6, 2018. The Complainant owns a small-sized portfolio of trademarks. In these proceedings, the Complainant initially relied on an EU trademark application and later, in its supplemental filing, relied solely on the GABLER wordmark (International Registration), registered on July 28, 2025. The Panel, through its own independent research, identified an additional EU trademark registration referenced in the Complaint, namely EU trademark, filed on March 20, 2020 and registered on February 4, 2021.
The disputed Domain Name <gabler .com> was registered on December 14, 1998, and was purchased in an auction by the Respondent in 2016. The Respondent is apparently a domain name investor who trades in domain names consisting of common words, including common surnames. The Respondent contends that a pending trademark application is not enough to establish trademark rights for the purpose of the UDRP, and that he did not target the Complainant, as “Gabler” is a popular surname and many businesses and persons use it, and it is not associated only or primarily with the Complainant. As a result, the Respondent claims a legitimate interest in the disputed Domain Name as a domain name investor who trades in domain names consisting of common words, including common surnames, and states that the Complainant has failed to prove any bad faith on the part of the Respondent in both the registration and/or use of the disputed Domain Name.
Held: The Panel finds that the Respondent established its legitimate interest in respect of the disputed Domain Name. First, the Panel finds that there was no evidence of any trademark rights of the Complainant at the time of registration of the disputed Domain Name by the Respondent in January 2016. Second, the disputed Domain Name is indeed a surname common in Germany and some other countries. The Complainant also failed to provide any evidence that the Respondent acquired the disputed Domain Name back in 2016 to take unfair advantage of the Complainant’s mark. It is well-established that domain investors have legitimate interest and trading in domain names when done without intent to profit from other’s trademarks can in and of itself constitute a “legitimate interest” under the Policy, see WIPO Overview 3.0, sec. 2.1. This legitimate interest usually extends to dictionary words, acronyms, surnames, brandable domain names or other names that can be attractive to numerous potential buyers in the absence of evidence of targeting with intent to take unfair advantage of the complainant’s mark.
There is further no evidence that the Respondent was aware of the Complainant and targeted the Complainant’s mark on the date the Respondent acquired the disputed Domain Name. The disputed Domain Name was registered in 2016, whereas the Complainant filed its EU trademark application in 2020. While the Complainant claims its existence since 1962, it failed to provide any evidence of common law trademark that predates Respondent’s registration of the disputed Domain Name. The reference by the Complainant to settlement correspondence between the Parties and an asking price for the disputed Domain Name, is not sufficient evidence of bad faith. Domain name registrant who has a legitimate right or interest in respect of the disputed Domain Name is entitled to ask any price he/she wants. Asking price per se is not evidence of bad faith registration and use absent any specific intent derived from exploitation of the goodwill associated with a trademark. This is a well-established principle in UDRP jurisprudence and confirmed by numerous previous decisions.
RDNH (Minority Opinion – Mr. Igor Motsnyi): The Complainant ignored that the disputed Domain Name was registered well before its trademark application date and provided no explanation, in disregard of established UDRP jurisprudence and the consensus reflected in WIPO Overview 3.0, section 3.8.1. After receiving the Registrar Verification, the Complainant proceeded on the assumption that the registrant was a deceased person who had registered the domain name in good faith. The Complainant effectively acknowledged that it could not establish bad faith registration, which is a mandatory requirement under paragraph 4(a)(iii) of the Policy, and instead relied on the unsupported claim that current use was in bad faith, a position that is insufficient under the UDRP absent bad faith at registration.
The Complaint openly admitted that it was driven by the Complainant’s desire to acquire the domain name for international presence, revealing a “Plan B” strategy after failed attempts to purchase the domain through Sedo and direct contact. The case was based on minimal allegations and weak evidence, including inadequate proof of trademark rights, and subsequent arguments in the Supplemental Filing similarly disregarded UDRP principles and established jurisprudence, despite the Complainant being professionally represented; accordingly, the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied
Complainant’s Counsel: Dr. Jasper Prigge LL.M.
Respondent’s Counsel: John B. Berryhill LLC
Case Comment by ICA General Counsel, Zak Muscovitch:
Despite the law being clear, some Complainants still try to rely upon a merely pending trademark application. In this case, the Complainant initially relied on an EU trademark application. As the Panel noted, “it is well established in UDRP jurisprudence and confirmed by WIPO Overview 3.0 that a pending trademark application would not by itself establish trademark rights for the purpose of the Policy”. As also noted in UDRP Perspectives at 1.10 “Pending Trademark Applications or registrations in the U.S. Supplemental Register”, it is well settled that a mere trademark application affords no rights until registered.
As the Panel to its credit clearly appreciated, there must be evidence of a trademark right of “at the time of registration of the disputed Domain Name by the Respondent”. Yes, having a trademark right at the time of commencement of the Complaint enables the Complainant to meet the first part of the three-part UDRP test, but it is of no assistance when determining whether bad faith existed at the material time, namely the time of the domain name registration.
This decision is particularly noteworthy for its clear and decisive language respecting the legitimate interests of domain name investors and should be bookmarked for future reference:
“It is well-established that domain investors have legitimate interest and trading in domain names when done without intent to profit from other’s trademarks can in and of itself, constitute a “legitimate interest” under the Policy, see WIPO Overview 3.0, sec. 2.1.: “For example, generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP”.
This legitimate interest usually extends to dictionary words, acronyms, surnames, brandable domain names or other names that can be attractive to numerous potential buyers in the absence of evidence of targeting with intent to take unfair advantage of the complainant’s mark. There is extensive UDRP case law that supports this view, including the following decisions: Lucien William Valloni v. Domain Administrator, NameFind Cayman Islands Ltd., WIPO Case No. D2024-5126; CAC-UDRP-106685; CAC-UDRP-106684: “See also WIPO Overview 3.0, section 2.1: “generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP.” Although “Alimonti” is not necessarily an acronym, dictionary word or common phrase, its status as a not uncommon surname fits within the same criteria” and Academy, Ltd. v. Ramesh Singh, Forum Claim Number: FA2301002026883.”
UDRP Perspectives at 2.6 “Investing in Domain Names in General” also makes this point; “Speculating in and trading in domain names when done without intent to profit from other’s trademarks can in and of itself constitute a ‘legitimate interest’ under the Policy – even without actually using the domain name in connection with its dictionary meaning. Speculating in and trading in domain names can indeed constitute a legitimate interest under the Policy. Such a practice may constitute use of the domain name in connection with a bona fide offering of goods or services (i.e. the sale of the domain name itself). The business of creating and supplying names for new entities is a ‘legitimate activity in which there are numerous suppliers.’”
As the Panel noted, even when a disputed Domain Name does not correspond to a dictionary word or acronym, but rather is a “brandable” term, a legitimate interest may still be found. As noted in UDRP Perspectives at 2.7 “Investing in ‘Brandable’ Domain Names”, registering domain names because of their potential value as a brandable domain name is supported by the Policy. The well-established legitimate interest in aggregating and holding domain names also extends to made-up terms which have no dictionary meaning. Registering a made-up domain name because it may in the future be of interest to someone who wants to adopt a new unique brand, can constitute a right and legitimate interest under the Policy.
The business of creating and supplying names for new entities is a legitimate business activity where there are numerous suppliers. Where a domain name investor or branding agency registers a made-up term because of its attractiveness and without knowledge of or intention to target a particular trademark owner, a Complainant will have failed to establish the second element of Paragraph 4(a) of the Policy.
Registering domain names because of their potential value as a brandable domain name for a new entrant to the market is supported by the Policy. Even if a term does not appear to be a common dictionary term, if a Respondent’s reason for registration a disputed Domain Name is its potential value as a brandable domain name, a right and legitimate interest may be found and constitutes a legitimate business model.
Where a Respondent can show that it is in the business of offering brandable domain names for sale and in particular where the Respondent demonstrates a pattern of registering comparable brandable domain names in good faith, a Respondent will have established its rights and legitimate interest under the Policy because the domain name was not registered to profit from or exploit a Complainant’s trademark.
For more case law on the topic of brandable domain names, see for example; Venderstorm Ventures GmbH & Co. KG v. Domain Administrator, PTB Media Ltd, WIPO D2024-1287, <babista .com>, 3-member, Denied; AKAPOL S.A. v. Ehren Schaiberger, WIPO D2023-2284 <plasticol .com>, 3-member Panel, Denied; Nobli Ltd. v. Cykon Technology Limited, WIPO D2022-2970 <nobli.com>, Denied, RDNH; Limble Solutions, Inc. v. Domain Admin, Alter.com, Inc, WIPO D2022-4900, <limble .com>, 3-member Panel, denied; Zydus Lifesciences Ltd. (formerly known as Cadila Healthcare Ltd.) v. Jewella Privacy LLC / DNS, Domain Privacy LTD, WIPO D2022-0880, <zydus .com>, 3-member, Denied, RDNH and more in UDRP Perspectives.
Lastly, this case is particularly noteworthy because my colleague, Igor Motsnyi, who co-authored UDRP Perspectives with me, sat on the three-member Panel and determined as a minority finding that RDNH was appropriate in this case. He set out nine reasons for his finding, all of which are compelling and which formed a solid basis for finding RDNH. Where warranted, Panelists must not shy away from finding RDNH. Declarations of Reverse Domain Name Hijacking play a critical role in the UDRP by deterring abusive use of the Policy and preserving the integrity of the UDRP for legitimate claims. A Panel will not have satisfactorily discharged its duty under the UDRP without an express consideration of RDNH where the facts and circumstances warrant.
Panel: Complainant “Escaped” RDNH by “Very Small Margin”
<artofliving .com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant is an individual and citizen of India. The Complainant, and related entities to the Complainant’s organization, are the owners of a global portfolio of registered trademarks in respect of the figurative mark THE ART OF LIVING, including Indian trademark, originally registered in the name of Prasanna Prabhu on July 16, 2010; and International trademark, registered on July 8, 2013, designated in respect of over 60 jurisdictions. According to the Complaint, these marks were accompanied by a “user claim” dated January 1, 1981, which is typically of limited evidentiary value on its own in administrative proceedings brought under the Policy. The Complainant states, but does not evidence independently, that it founded an organization under the name and mark THE ART OF LIVING in 1981, followed by the creation of “The Art of Living Foundation” in the United States of America and Germany in 1989. The Complainant adds that these organizations conduct core activities focused on wellbeing and social service initiatives.
The disputed Domain Name was registered on April 27, 1996 and the Respondent’s position is that the disputed Domain Name was registered by it on behalf of a (named) friend who had founded a non-profit organization as “The Art of LIVING Coalition.” The Respondent acknowledges that the string in the disputed Domain Name matches the Complainant’s mark textually, but adds that the disputed Domain Name predates all of the Complainant’s cited registrations by approximately 14 years, submitting that it was registered and publicly used in connection with a legitimate, good faith, bona fide, non-profit activity by its friend for years, after which the Respondent maintained it as caretaker, demonstrating a legitimate interest under the Policy. The Respondent submits that in the late 1990s and early 2000s, representatives of the Complainant’s foundation contacted its friend seeking to purchase the disputed Domain Name (evidence not provided), which offer was declined, and a disclaimer link was added directing visitors to the Complainant’s domain name.
Held: Panels under the Policy typically do not make a finding of registration in bad faith if, as here, the domain name concerned is registered or acquired by the respondent before the complainant’s trademark rights accrue. WIPO Overview 3.0, section 3.8.1. However, there is also the question of the Complainant’s claim to unregistered trademark rights predating the registration of the disputed Domain Name, based upon its alleged creation of its eponymous organization in 1981 and its foundation in 1989. As far as these are concerned, the Complainant’s case consists purely of assertions which have not been backed by evidence. Further, it must be observed that the disputed Domain Name consists of ordinary English words which create a meaningful phrase. In the absence of evidence to the contrary, it is perfectly reasonable for the Panel to infer that the Respondent or its friend came up with this name for a non-profit art project independently of any (then) nascent rights which the Complainant might have been developing.
The disputed Domain Name has recently been offered for sale. However, this fact in the circumstances of the present case does not demonstrate bad faith on the part of the Respondent, notably because it is inconceivable that the Respondent could play what would necessarily amount to an impossibly long game of cybersquatting from 1996 until much more recently. Having apparently acquired the disputed Domain Name independently of any rights of the Complainant, and for a legitimate, non-pretextual purpose, the Respondent is in a position to offer the disputed Domain Name for sale on whatever terms it considers appropriate. 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 has not established that the Respondent was, more likely than not, aware of the Complainant’s claimed trademark rights at the time that the Respondent registered the disputed Domain Name.
RDNH: The Respondent did not expressly seek a finding of Reverse Domain Name Hijacking in the present case. However, the Panel wishes to observe, for completeness, that the Complainant escapes such a finding here only by a very small margin. The Complainant was well aware of the fact that the disputed Domain Name had been registered a very long time ago, long before the registration of its various trademarks. While the Complainant made a series of submissions regarding the alleged existence of unregistered trademark rights at the material date, broadly along the lines of the WIPO Overview 3.0, section 1.3, it failed to back these up with any suitable dated and independent evidence whatsoever.
The Panel noted the Complainant failed to amend the Complaint to name the registrant identified by the Registrar and gave no evidence of any due diligence regarding the Respondent after the Center notified its existence. The Panel has determined not to make a finding of Reverse Domain Name Hijacking here for the sole reason that it remained a possibility, albeit not particularly likely, that the Respondent had subsequently acquired the disputed Domain Name, notwithstanding the date of registration as shown on RDAP records, and had offered it for sale in a manner which targeted the Complainant’s (by then) extant rights. In these circumstances, the Panel considers that the Complainant at least has a stateable case that the Complaint was not brought in bad faith.
Complaint Denied
Complainant’s Counsel: Photon Legal, India
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Interestingly in this case, the Panelist noted that the Complainant did not amend its Complaint after receiving the registrar’s verification identifying the registrant although this would not normally be treated as a complaint deficiency. The Panel however stated that it “nevertheless has discretion to substitute or join another entity as a respondent by way of its general powers as set out in paragraph 10(a) of the Rules, and as discussed further below”. This raises an interesting question however. If a Respondent is served with a Complaint that doesn’t name him, might he decide not to bother defending it because in any event his name won’t show up in the record, only to later find out that the Panel used his discretion to name him? On the other hand as the Panel rightly pointed out, Paragraph 1 of the Rules defines the Respondent as “the holder of a domain-name registration against which a complaint is initiated”, so whether or not the Respondent has been expressly named by the Complainant, perhaps the registrant is the de facto Respondent regardless.
It should also be borne in mind that sometimes a beneficial owner will Respond to a Complaint, for example where through some mix up a natural person was named as the Respondent when the facts actually demonstrate that it is a corporation of which the named Respondent natural person is a mere principal. In such circumstances, it benefits the Respondent to have the Panel exercise its discretion to treat the unnamed beneficial owner as the de facto Respondent, thereby demonstrating the importance of Panelist discretion in naming parties.
When examining Rights and Legitimate Interest, the Panel stated that “in light of the Panel’s findings in connection with the third element assessment under the Policy, no good purpose would be served by addressing the issue of the Respondent’s rights or legitimate interests in the disputed Domain Name”. This however may have left the Respondent somewhat disappointed and frustrated despite winning the case since Respondents are generally entitled to a declaration of their Rights and Legitimate Interest under the Policy (see UDRP Perspectives at 2.1 “When a Finding as to Rights or Legitimate Interest is Appropriate”). 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):…”
As the Panel rightly observed, “the disputed Domain Name consists of ordinary English words which create a meaningful phrase. In the absence of evidence to the contrary, it is perfectly reasonable for the Panel to infer that the Respondent or its friend came up with this name for a non-profit art project independently of any (then) nascent rights which the Complainant might have been developing”. Moreover, as the Panel also noted, “it is of some importance that the disputed Domain Name was then used for many years in connection with such art project whereby the name “art of living” (spaces added) within the disputed Domain Name is entirely apposite and does not, in and of itself, suggest that the Respondent or its friend were seeking to target, or were even aware of, any such rights of the Complainant”. Under the circumstances, the Panel rightly found that “the Respondent did not register the disputed Domain Name in bad faith targeting of the Complainant or its trademark rights because the Complainant has not established that the Respondent was, more likely than not, aware of the Complainant’s claimed trademark rights at the time that the Respondent registered the disputed Domain Name, while also noting the composition of the disputed Domain Name as consisting of ordinary English words which create a meaningful phrase.”
Which raises the question, why wasn’t the Respondent’s rights and legitimate interest declared? It wasn’t necessary for the ultimate disposition of the case as the Panelist noted, but the Policy entitles the Respondent to demonstrate its rights under Paragraph 4(c)(i) and having done so, it shortchanges the Respondent. As noted in UDRP Perspectives, supra at 2.1, 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.
I do however want to acknowledge that the Panel took the exactly right approach in considering RDNH, even if RDNH was ultimately not found “by a very small margin”. As noted in UDRP Perspectives at 4.1 “Obligation of Panelists to Consider RDNH”, “a Panel will not have satisfactorily discharged its duty under the UDRP without an express consideration of RDNH where the facts and circumstances warrant….because of Rule 15(e) which requires a Panel to consider RDNH”. The Panelist successfully discharged its duty despite not ultimately finding RDNH. Bravo.
Deceptive Domain Name Used to Promote Online Casinos
Veikkaus Oy v. Juha Lehtinen, CAC Case No. CAC-UDRP-108009
<milli-lotto .net>
Panelist: Mr. Matthew Harris, Ms. Barbora Donathová and Mr. Dominik Eickemeier
Brief Facts: The Complainant was formed in 2017 by reason of the merger of three betting and gambling entities previously operating in Finland, and is owned by the Finnish state. It is the only company that is entitled to legally offer gambling, betting and lottery operations in Finland. The Complainant filed the application for its MILLI registered trade mark on 21 March 2025 (registered on 23 June 2025), and on 29 May 2025 an article appeared in the Finnish press publicising that the Complainant would launch a new lottery game on 2 June 2025 under the “Milli” name. The Domain Name was registered on 30 May 2025. It has been used since registration for a website in Finnish that purports to provide details and information about the Complainant’s “Milli” lottery. That website also contains a section with a heading which (translated into English) reads: “WHILE YOU WAIT FOR THE FOLLOWING RESULTS, CLAIM THESE BENEFITS”. Under this heading are links to two casino websites as part of advertisements for those websites offering, inter alia, various numbers of “free spins”.
The Complainant also relies upon two Finnish registered trademarks for “Lotto” in stylised text combined with a logo that includes a trademark with an application date of 26 March 2025 and with a registration date of 5 May 2025. The Complainant alleges that the Respondent is using the Domain Name as part of an affiliate marketing scheme, whereby internet users following the links on the website operating from the Domain Name are directed to “illegal gambling websites” and “the owner of the webpage receives compensation for the marketing of the online casino”. The Respondent filed a response in these proceedings but did not do so using the appropriate Response form. The Respondent contends the Domain Name is being used for “a bona fide informational website” and that “any affiliate links (if present, as captured in the Complainant’s Annexes 3 and 4) are incidental, secondary to the informational content, and direct to internationally licensed gaming platforms available to non-Finnish users, without using or referencing Veikkaus marks”.
Procedural Factor: The requirement on the parties to use particular forms is set out in Article 3 of the CAC‘s UDRP Supplemental Rules. Non-compliance with the formalities set out in the UDRP Rules and the CAC’s Rules is not a trivial matter. So far as the CAC Rules are concerned, compliance with these requirements helps ensure that proceedings are conducted with administrative efficiency, and by using these forms parties are less likely to fail to comply with other important formalities under the UDRP Rules, such as the requirement of a Complainant to identify a court of mutual jurisdiction and the requirement of both parties to certify the truthfulness of their submissions.
As a consequence, panels are entitled to and on occasion disregarded submissions that are procedurally non-compliant. In this particular case, the failure to use the correct form does raise an issue of substance. For example, although the Response contains a certificate of truth, it is not in the form required by paragraph 5 (c)(viii) of the UDRP Rules. Nevertheless, when coming to its decision the Panel has taken the Respondent’s contentions in the Response into account.
Held: The Complainant claimed registered trade mark rights in LOTTO and MILLI. The Panel held that the Complainant had registered trade mark rights in MILLI and as this mark was recognisable in the Domain Name, had made out the requirements of paragraph 4(a)(i) of the Policy. The Domain Name was registered after the Complainant had applied for the MILLI registered trade mark and the day after press publicity to the effect that the Complainant was going to launch a lottery under the MILLI mark. The Domain Name was then used for a Finnish language website that purported to provide information in relation to the Complainant’s lottery but also contained links to two online casinos. These links were not merely incidental advertising as the website contained text that encouraged internet users visiting that website while they waited for results from the MILLI lottery, to go to these online casinos and claim the alleged “benefits” that these casinos provided.
The Panel concluded that the Domain Name was inherently and deliberately deceptive in that it comprised the Complainant’s MILLI mark combined with a term that described the Complainant’s service together with the <.net> TLD. Further, the Panel concluded that a main and most likely the primary reason why the Domain Name had been registered was to take advantage of the reputation of the Complainant’s MILLI mark to draw internet users to the website operating from the Domain Name and in order to generate revenues from the casino links. On this basis the Panel held that the Respondent had no rights or legitimate interests in the Domain Name and that the Domain Name had been registered and used in bad faith and that the Complainant had satisfied paragraphs 4(a)(ii) and (iii) of the Policy. So far as bad faith registration was concerned, it did not matter that the MILLI trade mark had not yet proceeded to registration at the time that the Domain Name was registered since the Domain Name had clearly been registered in order to target likely trade mark rights of the Complainant.
Transfer
Complainant’s Counsel: Berggren Oy
Respondent’s Counsel: Self-represented
Panel: No Bad Faith Found Where Respondent Sought Competing Offers
The Los Angeles Rams LLC v. Frank Mardian, MapleDots .ca, WIPO Case No. D2025-3761
<rams .com>
Panelist: Mr. Warwick A Rothnie (Presiding), Mr. Clive N.A. Trotman and Mr. Gerald M. Levine
Brief Facts: The Complainant, a team in the National Football League (NFL), and its predecessors have used RAMS and LOS ANGELES RAMS continuously in commerce for decades in connection with professional football, entertainment, and related merchandise. The Complainant has a website at <therams .com>. The Complainant owns a number of registered trademarks in the United States for RAMS, LOS ANGELES RAMS or LA RAMS including earliest US registration for RAMS dated October 16, 1973 (first use: 1937). The Respondent acquired the disputed Domain Name from a third party in or about November 23, 2022 for payment of the sum of CAD 50,000. Shortly before, and on the date the Complaint was filed, the disputed Domain Name resolved to a landing page featuring an image of two jumping rams above the word RAMS and “Domain For Sale”.
It also appears that one of the previous registrants made at least one unsuccessful attempt to “sell” the disputed Domain Name to the Complainant shortly after the Complainant won the Superbowl in February 2022. The Respondent holds a portfolio of other domain names including a number of four letter domains and also some descriptive domains. The Complainant alleges that absent the use as a domain for the professional football team (Los Angeles Rams) there is not a material value for the domain, which is the reason it continues to remain unused and unsold. The Respondent claims to have received an offer from a mysterious foreign company, which of course did not result in any sale, but simultaneously with this mystery offer, just happened to again approach the Complainant again to see if we would purchase the domain at an exorbitant price without mentioning or referencing the other alleged offer of $2,000,000.
Held: The Panel is prepared to put to one side the absence of evidence in the Complaint, or the supplemental filing, demonstrating the fame of the Complainant’s trademark. The Panel is prepared to accept that the name or trademark of one of the NFL franchises will be very well-known and recognisable amongst at least followers of American football. The word RAMS, however, is not like the word “ticketmaster” considered in Ticketmaster Corporation vs. DiscoverNet, Inc. WIPO Case No. D2001-0252.
The Complainant disputes that the Respondent received a USD 2 million offer for the disputed domain. The Panel reviewed emails showing a USD 2 million offer from Mr. Baltaci of Medyae Digital Agency, a legitimate Turkish firm acting for a client that already controlled several “Rams”-related domains tied to a multinational group named “Rams.” Given that context, the client plausibly had a genuine interest in the domain, and there is no evidence the offer aimed to exploit the Complainant’s reputation rather than the client’s use of “Rams.” Accordingly, the Panel found no basis to reject the Respondent’s evidence about how it became registrant or that it received the USD 2 million offer.
Proceedings under the Policy are proceedings on the papers and there is no basis before the Panel to reject the proffered email chains as anything other than what they appear to be. That conclusion is reinforced by the apparent existence of genuine businesses involved in the offer of USD 2 million insofar as websites on the Internet go. Given the Respondent had received what was a genuine offer for the disputed Domain Name in the sum of USD 2 million, the Respondent’s conduct in seeking to generate a bidding war over the rights to the disputed Domain Name of the short, dictionary word with multiple possible uses at issue here cannot be characterised as use in bad faith under the Policy.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States
No Evidence of Respondent’s Actual Knowledge of the Complainant’s Trademark at the Time of Domain Acquisition
Mitchell Kesller Holguin Fortunato v. Roberto (“Bobby”) Baldor, WIPO Case No. D2025-4090
<orlandoliving .com>
Panelist: Mr. David H. Bernstein
Brief Facts: The US-based Complainant is the owner of United States Trademark registration for ORLANDO LIVING for “Real estate agency services; providing information in the field of real estate,” filed on July 12, 2019, and registered before USPTO on March 3, 2020 (disclaimed word “orlando”). The Complainant claims continuous use of the ORLANDO LIVING mark since August 1, 2019. The Respondent acquired the disputed Domain Name on August 2, 2022, for USD $9,995 and uses the disputed Domain Name for a website promoting his real estate services located in Orlando, Florida, which he operates under his THE BALDOR GROUP brand. The Complainant, through his former counsel, sent two cease-and-desist letters, dated May 16, 2025, and June 27, 2025, to the Respondent. The Respondent’s counsel replied on June 4, 2025, by saying that the Respondent strongly disagreed with the Complainant’s contentions and denied that there was any trademark infringement.
The Complainant alleges that the Respondent’s acquisition of the disputed Domain Name more than a year after the Complainant registered his trademark was a strategic move by the Respondent to exploit the goodwill of the Complainant’s established brand. The Respondent contends that the Complainant lacks trademark rights because the mark is subject to challenge because it combines a geographically descriptive term that is not subject to exclusive trademark protection (“orlando”) with a term that is too descriptive or generic to function as a source identifier (“living”). The Respondent further contends that he has rights and legitimate interests in the disputed Domain Name, given his lawful purchase of the disputed Domain Name three years ago, and his public, consistent, and extensive use of the disputed Domain Name since that purchase. The Respondent asserts that he had no knowledge of the Complainant, or the Complainant’s trademark, prior to the initiation of this matter.
Held: On the facts of this case, the Complainant has a credible argument that the Respondent’s use is not “bona fide” given that the Respondent’s domain utilizes exactly the Complainant’s trademark, and the Respondent offers the same services in the same geographic area as the Complainant. The first two of these arguments are predicated on the assertion that the Respondent engaged in certain actions with knowledge of the Complainant’s trademark rights. The problem with these two arguments is that the Complainant has not submitted evidence that establishes or supports an inference that the Respondent knew or should have known of the Complainant’s mark when it acquired the disputed Domain Name in 2022. For his part, the Respondent has submitted a declaration in which he has sworn that he “had no knowledge of, contact with, or dealings of any kind with the Complainant. Weighing all of this evidence, the Panel finds the Respondent’s assertion that he never had heard of the Complainant or his mark at the time he acquired the disputed Domain Name to be credible (at least on the evidence submitted).
The Complainant’s third argument in favor of a finding of bad faith registration and use is that the Respondent continued to use the disputed Domain Name after receipt of the Complainant’s two cease and desist letters. However, the Respondent’s continued use provides no evidence of bad faith registration, which is a necessary element of the Complainant’s case. Nor, on this record, is it evidence of bad faith use. Contrary to the Complainant’s argument, the Respondent’s continued use is not bad faith if the Respondent had the reasonable subjective belief that he was entitled to use the disputed Domain Name. This is not a case where the Respondent’s only plausible motive in choosing the disputed Domain Name was to trade on the goodwill of the Complainant’s mark. Rather, this appears to be a case in which two parties, both offering real estate services in Orlando, Florida, selected identical signs because of their communicative elements.
RDNH: The Panel is not persuaded that the circumstances of this case justify a finding of Reverse Domain Name Hijacking. Although the Panel has found that the Complainant has failed to establish that the Respondent registered and used the disputed Domain Name in bad faith, the Complainant’s case was most assuredly not so weak as to render the filing of the Complaint an act of bad faith. Furthermore, a finding of Reverse Domain Name Hijacking is an equitable remedy that only should be granted to a Respondent who himself has acted in good faith. See Premium Blend, Inc. v. Michael Eymer, WIPO Case No. D2025-3012.
Here, the Respondent has made some overly aggressive assertions in his Response, such as his unsupported attack on the Complainant’s federal trademark registration and his unproven claim that the Complainant has not used his trademark in commerce. These arguments tarnish the Respondent’s position as a fully good-faith actor in this proceeding. The Panel therefore concludes that the Complainant has not engaged in Reverse Domain Name Hijacking.
Complaint Denied
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Nardella & Nardella, PLLC, United States
UDRP Panel Criticizes Complainant’s Legal Strategy and Presentation
BLACKGPT v. John Pasmore, JP Next, Inc, WIPO Case No. D2025-4144
<theblackgpt .com>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant owns the BLACKGPT trademark and is actively engaged in the business of providing artificial intelligence services. The Complainant holds a registered trademark with the USPTO for the word mark BLACKGPT, registered on July 8, 2025 in connection with, among other things, “software as a service (SaaS) services featuring software for artificial intelligence; Chatbot software using artificial intelligence for simulating conversation,” with claimed first use as December 6, 2024. The Complainant owns the domain name <blkgpt .com> and asserts that it has used that domain name since February 9, 2023, to host its commercial website. There is no evidence in the record of how well-known Complainant’s BLACKGPT mark is today or was at the time the Domain Name was registered.
The disputed Domain Name was registered on May 8, 2023 and redirected to Respondent’s commercial website, which features the company name “LATIMER” and the banner “AI FOR EVERYONE.” The home page states: “Latimer’s mission is to build empathetic and inclusive thinking machines.” The record, provided entirely by Complainant, contains various quotations from Respondent in media interviews in which he stated that one of his goals was to ensure that AI be developed to avoid bias by including the perspectives of “black and brown” people, whose perspectives might otherwise be underrepresented in the field of AI. Aside from Respondent’s email communication to the Center on October 14, 2025, stating, “What do you need from me”, Respondent did not reply to Complainant’s contentions.
By July 18, 2023, the Complainant’s representative had sent Respondent an instant message: “Not sure how we both landed on Black GPT – but we did / am going to explore other brands as I spoke to Keith – all the best.” On December 4, 2023, Complainant’s representative further wrote: “You know I own the BlackGPT IP. Stop using it man. You are confusing the marketplace.” Later that day, the Respondent wrote back: “As you may know, we’re building a business around Latimer.ai, and the parent of this entity is FutureSum AI, Inc.” The Respondent asked the Complainant to direct further comments to his counsel. On July 18, 2025, the Complainant sent a cease-and-desist letter to Respondent’s counsel, stating that Complainant held a registered trademark BLACKGPT and asserting that the mark “has been in active commercial use since 2022.”
Held: The Panel concludes that Respondent did not register the Domain Name in bad faith. The Domain Name was registered on May 8, 2023. As of that date, according to the record presented by Complainant and reflected in its USPTO filings, it first used the mark BLACKGPT only four months earlier and would not use that mark in commerce for 19 months after the Domain Name was registered. The Complainant provided no evidence of its use of the mark prior to May 8, 2023; much less evidence that its use was sufficiently extensive to give rise to the inference that someone in Respondent’s position would likely have been aware of the mark. Without any such evidence and given the fact that BLACKGPT is a combination of two fairly common terms rather than a coined word, there is little basis upon which to conclude that Respondent more likely than not had Complainant’s mark in mind when registering the Domain Name.
The Complainant may have been better off engaging a lawyer acquainted with the UDRP, which is in several key respects fundamentally different from a trademark infringement or unfair competition claim. The Complainant’s arguments and evidence did not appear well suited to a successful UDRP outcome, and in some senses actually made Respondent’s undefended case stronger. Whether Complainant has a viable claim under some legal theory in some other forum is not for this Panel to say.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: No Response
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.