Offer First, UDRP Second: Complainant’s Own Letter Set Out the Sequence
A “Plan B” complaint usually has to be inferred from the sequence of events. An offer is declined and a complaint follows. Here the Complainant put the plan in writing before it filed. Having offered USD $1,000 through a broker for a domain name registered in 2002, and having been quoted the list price of USD $15,000, it countered at USD $5,000, referred to its trademark registration and to the UDRP. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 6.41) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Offer First, UDRP Second: Complainant’s Own Letter Set Out the Sequence (hemocare.com *with commentary)
‣ Panel Refuses Complainant’s Unilateral Withdrawal Over Respondent’s Objection and Denies Complaint on the Merits (comind.com *with commentary)
‣ Copycat Retail Site Registered Days After Complainant’s Grand Opening Ordered Transferred (princessautotools.com *with commentary)
‣ Can a Trademark’s “Effective Date” Backdate Rights Under the UDRP? (plurai.ai *with commentary)
‣ Famous Name, No Trademark: Was the Panel Too Strict on the First Element? (kristinaromanova.com *with commentary)
Offer First, UDRP Second: Complainant’s Own Letter Set Out the Sequence
Deka Research & Development Corporation v. Aktan Kurtulmus, WIPO Case No. D2026-3457
<hemocare.com>
Panelist: Mr. John Swinson
Brief Facts: The Complainant is a United States research and development company that owns U.S. Trademark Registration for HEMOCARE, filed on November 28, 2017 and registered on September 15, 2020, claiming first use on July 31, 2019. The Respondent is an individual in Türkiye who registered the disputed Domain name on December 2, 2002 and has offered it for sale to the public at large through domain-name marketplaces. On July 1, 2026, the Complainant made an inquiry through a GoDaddy broker, without disclosing its identity, offering USD $1,000. The Respondent replied through the broker that his list price was USD $15,000 and his floor price USD $7,500. The Complainant countered with USD $5,000, referring to its trademark registration and the UDRP, and the broker declined to mediate. The Domain Name now resolves to a GoDaddy-generated website that does not say it is for sale.
The Complainant alleges that, before receiving notice of this dispute, the Respondent neither used nor made demonstrable preparations to use the disputed Domain name in connection with a bona fide offering of goods or services. The Complainant also points out that the Internet Archive captures several solicitations offering the disputed Domain name for purchase, and the current GoDaddy page lists the disputed Domain name for sale at USD $15,000, an asking price that far exceeds the Respondent’s out-of-pocket costs. The Respondent contends that HEMOCARE combines the common prefix “hemo” with the word “care”, has a medical meaning independent of the Complainant, and appears in 78 records owned by others in the trademark database. The Respondent further contends that he offered the Domain Name to the public without approaching the Complainant, that the USD $15,000 price was displayed publicly and not directed at it.
Held: The Panel finds that the Respondent did not register the disputed Domain name in bad faith targeting 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 3.1, section 3.8.1. It is not disputed that the disputed Domain name was registered on December 2, 2002, and that the Complainant has first use of its HEMOCARE trademark on July 31, 2019. The Complainant does not assert rights prior to July 31, 2019, through use of HEMOCARE or otherwise. In such circumstances, the Respondent could not have registered the disputed Domain name because of the Complainant’s trademark rights or to take advantage of the trademark owned by the Complainant.
Accordingly, on the evidence before the Panel, the Respondent could not have been aware of the Complainant’s HEMOCARE trademark when the Respondent acquired the disputed Domain name. The Panel therefore finds that there was no bad faith registration of the disputed Domain name. There is also no evidence before the Panel that shows that, after acquisition of the disputed Domain name, the Respondent targeted the Complainant. In short, the Respondent did not target the Complainant when the Respondent acquired the disputed Domain name, and there is nothing on the record that suggests the Respondent did so subsequently.
RDNH: The evidence shows that the Complainant was aware that the Respondent acquired the disputed Domain name before the Complainant filed its trademark applications for HEMOCARE. Knowing this, the Complainant should have known that its case had zero chance of success. The Complainant tried to purchase the disputed Domain name, and when unsuccessful, brought these proceedings under the Policy. The Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
A “Plan B” complaint usually has to be inferred from the sequence of events. An offer is declined and a complaint follows. Here the Complainant put the plan in writing before it filed. Having offered USD $1,000 through a broker for a domain name registered in 2002, and having been quoted the list price of USD $15,000, it countered at USD $5,000, referred to its trademark registration and to the UDRP, and added the following.
“We would prefer to resolve this amicably outside a formal proceeding. Our original $5,000 offer remains available as a practical resolution. That amount should more than compensate the owner for ordinary registration and maintenance costs while allowing both sides to avoid the time and expense of a UDRP proceeding.”
The Complainant thereby used the Policy as leverage in negotiation. The registrant was invited to accept a third of the list price or face defending a proceeding. As UDRP Perspectives, §4.2 (When a Finding of RDNH is Appropriate) explains, abusive complaints include “Plan B” cases, where the Policy is used after a failed attempt to acquire a domain name in the marketplace, and a related species where a proceeding is used to increase leverage in negotiations, a practice referred to in BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1811, as a “highly improper purpose”.
The measure of compensation the Complainant proposed is also worth noting. “Ordinary registration and maintenance costs” echoes the out-of-pocket costs language of paragraph 4(b)(i) of the Policy. That paragraph is concerned with a domain name registered or acquired primarily for the purpose of selling it to the complainant or its competitor. It does not cap what a lawful registrant may ask. As UDRP Perspectives, §3.5 (Setting a Price and Offering for Sale) explains, a lawful registrant has the right to sell a domain name for whatever price it deems appropriate, regardless of the value a complainant may ascribe to it.
The Panel briefly and appropriately found RDNH, observing that the Complainant “should have known that its case had zero chance of success”. As UDRP Perspectives, §3.2 (Trademark Rights Must Predate Domain Name Registration) explains, it is axiomatic that a respondent could not have registered a domain name in bad faith before the complainant acquired rights in the corresponding mark.
Panel Refuses Complainant’s Unilateral Withdrawal Over Respondent’s Objection and Denies Complaint on the Merits
Comind Technologies Limited v. Mikael Yan, WIPO Case No. D2026-2684
<comind.com>
Panelists: Mr. Kiyoshi Tsuru (Presiding), Mr. Philippe Gilliéron and Mr. Georges Nahitchevansky
Brief Facts: The Complainant is a UK company, incorporated on December 17, 2018, that operates in neurotechnology and is developing non-invasive optical sensing and brain monitoring technology. It owns UK registrations for COMIND (registered August 14, 2020 and January 8, 2021) and filed US applications on October 7, 2025. In December 2024 the Respondent acquired the Domain Name through Sedo for USD $63,100, however, before the Respondent acquired it, the Complainant negotiated with a prior registrant around July 2024 about buying it, with an offer and a counteroffer. The Respondent is a US entrepreneur with a background in psychology, coaching, conversational technology and mindfulness, and from December 2024 he prepared an AI-powered coaching application called “Comind”, supported by GitHub development records, a Telegram prototype, hosting and Google Workspace invoices, and logo and branding documents.
After the Complaint was filed, he formed Comind PBC and applied for a US COMIND trademark on July 16, 2026. The Domain Name resolves to a page showing “Comind”, the phrase “YOUR MIND MATTERS” and a “© 2024 Comind” notice. The Complainant alleges bad faith based on the July 2024 negotiations, in which it offered USD $15,000 and the person it dealt with made a “final” counteroffer of USD $90,000, the historical sale listing at a price above out-of-pocket costs, the use of a privacy service, and prior UDRP proceedings involving persons it said were associated with the prior registrant. The Respondent contends that he selected the name “Comind” because it succinctly captured the concept underlying his proposed AI-powered coaching application. The Respondent further contends that he never offered the Domain Name to the Complainant and has no connection to the prior registrant or the 2024 negotiations.
Preliminary Issue: On August 7, 2026, the Complainant announced its intention to withdraw and asked to suspend the proceeding. The Respondent objected. In a Supplemental Filing, the Complainant said it was unaware at filing that the Respondent had acquired the Domain Name in December 2024, that it does not challenge his legitimate use or allege that he is associated with the prior holder’s conduct, and that it wanted the withdrawal recorded “with abandonment of claim, with prejudice”. The Respondent’s Provisional Reply reaffirmed his objection, saying a merits decision might be preferable given possible future disputes. The Panel admitted both filings and held that, absent agreement and in light of the Respondent’s express objection, the Complainant should not be allowed to withdraw unilaterally (Gstaad Saanenland Tourismus v. Domain Administrator, PrivacyGuardian.org / Dimitri Dimitriadis, WIPO Case No. D2016-2601), and proceeded to decide the case on the merits.
Held: According to the Respondent, the disputed Domain name combines the notions of a “coach” or companion and the “mind”, thereby conveying the idea of a “co-mind” intended to assist users with mindfulness, attention management, and intentional living. The Respondent submitted evidence that he acquired the disputed Domain name through Sedo in December 2024 for USD $63,100, had no connection to the prior registrant or its conduct, and began preparations before notice of the dispute to use the name “Comind” for an AI-powered mindfulness and attention-management coaching application. The record further indicates that a functional alpha version had been developed on or around October 2025.
On the basis of the evidence comprised in the case file, the Panel finds that the Respondent has demonstrated preparations to use the disputed Domain name in connection with a bona fide offering of services prior to having received notice of the dispute, within the meaning of paragraph 4(c)(i) of the Policy. The Complainant filed the Complaint on the basis of allegations concerning conduct that, as the record shows, was carried out by a prior registrant of the disputed Domain name. However, the case record supports the Respondent’s claim that he has no relationship with the prior registrant, and the Respondent has proved that he has rights or legitimate interests in connection with the disputed Domain name.
Following the Respondent’s explanations, the Complainant acknowledged in its Supplemental Filing that the Respondent has a legitimate interest in the disputed Domain name and requested to withdraw the Complaint. Based on the above, the Panel finds that the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the disputed Domain name. In light of the Panel’s finding under the second element, the Panel finds it unnecessary to analyze the third element of the Policy.
Complaint Denied
Complainant’s Counsel: PYXIS LAW Ltd., Switzerland
Respondent’s Counsel: John Berryhill, Ph.D., Esq., United States
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
A complainant that reads a Response and realizes its case is misdirected will sometimes try to withdraw it. Whether it may do so on its own is another matter. The Response was filed on July 26, 2026, and it was only afterwards that the Complainant informed the Center that it intended to withdraw the Complaint and asked that the proceeding be suspended. The Respondent objected. The Panel dealt with the request as follows.
“The Complainant requested the withdrawal of the Complaint after the Response had been filed, and the Respondent objected to such withdrawal. Under the circumstances of this case, absent an agreement among the Parties to this proceeding, the Complainant should not be allowed to unilaterally withdraw the Complaint, especially in light of an express objection on the side of the Respondent”.
As UDRP Perspectives, §0.4 (Withdrawal After a Response is Filed) explains, withdrawing a Complaint after a Response is filed is not always permitted. Respondents in such circumstances may want to see a Complaint proceed to a final determination on the merits and particularly on the request for a finding of RDNH.
This Respondent had paid USD $63,100 for the Domain Name, had retained counsel to answer the Complaint, and pointed to the possibility of future disputes between the Parties. The Complainant later asked that its withdrawal be recorded “with abandonment of claim, with prejudice”. The Panel went to the merits anyway, and the Respondent obtained something a withdrawal could not give him, namely a finding that he “has proved that he has rights or legitimate interests” in the Domain Name. This is also a reminder of the importance of a Panel making affirmative findings of a Respondent’s legitimate interest where appropriate. As UDRP Perspectives, §2.1 (When a Finding as to Rights or Legitimate Interest is Appropriate) explains, panelists should generally make an affirmative finding of rights and legitimate interest if the facts so warrant, and a respondent whose good faith has been challenged may deserve some vindication and confirmation of their rights and interests.
The Panel noted that the Respondent had referred to RDNH considerations in general but had not expressly requested a ruling. It considered RDNH all the same, which is the right approach. Rule 15(e) says that a panel “shall declare” that a complaint was brought in bad faith where it so finds, and does not make that depend on a request. As UDRP Perspectives, §4.1 (Obligation of Panelists to Consider RDNH) explains, RDNH is to be considered where the facts warrant it, whether or not the respondent has asked.
The Panel’s stated reason for declining to make a finding was that the circumstances did not suggest a bad faith intention to abuse the proceeding when the Complainant “originally filed its Complaint”.
Is the date of original filing the only relevant moment? The Complainant stated in its Supplemental Filing that the time allowed for amendment did not give it sufficient time to identify the Respondent. The record suggests that the Complainant had time to investigate. The Center disclosed the registrant’s identity on June 24, 2026, and the Complainant filed its amendment that same day. The Response was not filed until July 26, 2026, more than a month later. Nothing prevented the Complainant from looking into the newly disclosed registrant during that month and withdrawing before the Response was filed. Nor was time short before filing. The negotiations on which the Complaint relied took place in July 2024, nearly two years earlier, and the Complaint itself described the website as displaying “YOUR MIND MATTERS” and a “Comind” copyright notice, and not an offer for sale. The Panel noted that the disclosed registrant information would not by itself have revealed the Respondent’s acquisition of the Domain Name, which leaves the question of what further inquiry was warranted before the Respondent was put to the expense of a Response. As UDRP Perspectives, §0.13 (Responsibilities on Complainant When Privacy is Lifted) explains, a failure to take the newly disclosed identity of a respondent into consideration can prejudice a complaint and in some cases result in a finding of RDNH.
Copycat Retail Site Registered Days After Complainant’s Grand Opening Ordered Transferred
Princess Auto Ltd. v. Mitchellz Mitchellz, CIIDRC Case No. 27712-UDRP
<princessautotools.com>
Panelist: Mr. Steven M. Levy
Brief Facts: The Complainant, established in 1933, is a Canadian retailer of automotive and industrial tools, parts and supplies, outdoor and farm equipment, and hardware, selling to tradespeople, businesses and consumers. It owns registrations for PRINCESS AUTO in Canada, the United States and China, and the Domain Names <princessauto.ca> and <princessauto.com>. The Respondent registered the disputed Domain name on June 5, 2026, a few days after the Complainant’s grand opening of a new location. It resolves to a website that purports to sell tools and outdoor equipment at deeply discounted prices, using images copied from the Complainant’s website. The Complainant alleges that the Respondent registered and used the Domain Name in bad faith, with prior knowledge of the Complainant’s mark, to impersonate the Complainant and offer tools at deep discounts without a bona fide offering. The Respondent did not file a Response.
Held: The Panel notes that Respondent’s site displays the PRINCESS AUTO mark at the top of the page in the same graphic logo form that the Complainant uses, along with various graphics promoting certain promotional deals followed by images of various tools and parts, some of which are identical to those appearing on the Complainant’s own site. There does not appear to be any message stating that Respondent’s site or products do not originate from the Complainant and the site offers no other indication that it has no relationship with the Complainant. Based upon the submitted evidence, the Panel agrees with the Complainant’s contention that the Respondent creates the false impression that its website is operated by the Complainant and that it thereby deceives potential customers. The Respondent has not participated in these proceedings to offer any explanation for its activities. Thus, the Panel finds that the disputed Domain name is not being used for a bona fide offering of goods or services or in a legitimate noncommercial or fair manner under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that the Respondent had actual knowledge of Complainant’s mark when it registered the disputed Domain name. The Respondent’s website reproduces Complainant’s graphic logo and some of its product photographs, and the disputed Domain name pairs the PRINCESS AUTO mark with the word “tools”, a term that directly relates to Complainant’s product line. Registered long after the Complainant first used and registered its mark, the disputed Domain name cannot plausibly be explained as a coincidence. The website gives the clear impression that it originates with the Complainant, with products supposedly offered at significant discounts, and shows that the Respondent is seeking commercial gain based on confusion with Complainant’s mark. Based on a strong preponderance of the evidence, the Panel finds that the Respondent is targeting the PRINCESS AUTO mark and seeking to impersonate the Complainant. Thus, the Panel finds that the Respondent both registered and used the disputed Domain name in bad faith under Policy ¶ 4(b)(iv) and thus under ¶ 4(a)(iii).
Transfer
Complainant’s Counsel: NA
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
How does a complainant prove that a respondent actually knew of its mark? Many try to do it by proving fame. The Complainant here offered its own website, a news article, and evidence of its sponsorship of a Canadian Football League stadium in Winnipeg named Princess Auto Stadium. The Panel accepted that this showed “some measure” of the mark’s reputation, but it rested its finding on something else.
“Respondent’s actual knowledge of Complainant’s mark is nevertheless clear from its own conduct. The website resolving from the <princessautotools.com> domain name reproduces Complainant’s graphic logo, some of its product photographs, and the domain name itself pairs the mark with the word ‘tools’, a term that directly relates to Complainant’s product line.”
The Panel cited UDRP Perspectives, §3.4 (No Constructive Notice Under UDRP and No Duty to Search, Generally) for the proposition that bad faith requires actual knowledge of the complainant. As §3.4 explains, the Policy has no place for constructive notice, since a registrant who is unaware of a complainant cannot have bad faith intent toward it. Where knowledge must be actual, the best evidence of it is often what the respondent did with the domain name, and a complainant need not prove fame where the respondent’s own website shows whom it had in mind. The Panel found that the registration could not plausibly be explained as a coincidence in view of the website’s content.
No Response was filed, and the Panel did not treat that silence as enough. It reviewed the screenshots and described what they showed. The Complainant’s logo appeared at the top of the page, product images were shown with one price struck through and a much lower price beside it, an “About Us” page was written in the Complainant’s voice, and nothing on the site said that it did not originate with the Complainant. As UDRP Perspectives, §0.8 (Inferences in No Response Cases) explains, even in no-response cases panels must evaluate the allegations and the evidence, and material factual allegations must be proven and not simply alleged. On that review the Panel found, on “a strong preponderance of the evidence”, that the Respondent was targeting the PRINCESS AUTO mark and seeking to impersonate the Complainant. It went no further than “perhaps” on whether the Respondent was also selling counterfeit or unauthorized goods or obtaining personal information from customers.
Can a Trademark’s “Effective Date” Backdate Rights Under the UDRP?
Plura AI LLC v. Ilan Kadar, Plurai Inc., WIPO Case No. DAI2026-0075
<plurai.ai>
Panelist: Mr. Lawrence K. Nodine
Brief Facts: The Complainant owns U.S. Trademark Registration No. 8,084,216 for PLURA, which issued on December 30, 2025, from an application filed on March 28, 2025. The application claims first use on February 3, 2025, and first use in commerce on March 26, 2025, for software as a service featuring artificial intelligence tools to generate images, write using shortcuts, summarize text, and create chatbots. The Complaint did not describe the Complainant’s history or business, and the Panel’s own search identified a website associated with <plura.ai> that promotes “AI agents for voice, SMS & RCS.” The Respondent registered the Domain Name on May 27, 2024, and it resolves to a website offering AI tools for evaluating and simulating AI agents.
The Complainant alleges that the Respondent was incorporated in the State of Delaware on May 27, 2025, a couple of months after the Complainant began using the Mark in commerce. The Complainant also alleges that the Respondent failed to respond to the Complainant’s July 10, 2026, cease-and-desist letter. The Respondent contends that it registered the disputed Domain name before the Complainant acquired any trademark rights. In support, the Respondent submits a Delaware certificate of incorporation showing that it was incorporated on October 7, 2024, and evidence that, in January 2025, it published its source code and a related research paper on the website associated with the disputed Domain name.
Held: The Complainant’s trademark registration, which issued December 30, 2025, is effective under United States law as of March 28, 2025, the date the underlying trademark application was filed. The application alleged that the Mark was first used on February 3, 2025, and first used in commerce on March 26, 2025. The disputed Domain name was registered on May 27, 2024, almost one year before the date that the Complainant acquired trademark rights. Given this timeline, the Complainant has not proved that the Respondent registered the disputed Domain name in bad faith.
“Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.” There is no evidence that the section 3.8.2 scenario occurred here. The Panel acknowledges that the parties offer conflicting evidence about the date that the Respondent was incorporated. There is no need to resolve this conflict. The relevant question is when the disputed Domain name was registered, regardless of the date of Respondent’s incorporation.
RDNH: The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.1, section 4.16. “Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements … such as registration of the disputed Domain name well before the complainant acquired trademark rights…” The Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: Law Offices of Seth W. Wiener, United States
Respondent’s Counsel: Goldfarb Gross Seligman, Israel
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
When does a complainant acquire trademark rights for the purposes of the UDRP? The Panel’s answer made no difference to the outcome of this case, but in another case it could. In the course of finding that the Domain Name was registered before the Complainant had rights, the Panel noted the following:
“Complainant’s trademark registration, which issued December 30, 2025, is effective under United States law as of March 28, 2025, the date the underlying trademark application was filed.”
The Panel cited 15 U.S.C. § 1057(c) and went on to describe the May 27, 2024 registration of the Domain Name as “almost one year before the date that Complainant acquired trademark rights”. The application date was therefore treated as the date on which rights were acquired. As a description of the statute, the statement is accurate. Section 1057(c) says that, contingent on registration on the principal register, the filing of an application “shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect” against any other person, subject to listed exceptions. It is a rule for ranking competing claimants to a mark. It tells a court or the trademark office which of two parties has the earlier claim.
The UDRP asks a different question. Bad faith registration turns on whether the respondent had the complainant’s mark in mind when it registered the domain name. A registrant cannot target a right that does not yet exist, and a priority date conferred after the fact cannot place knowledge in the registrant’s mind retroactively. From a UDRP perspective the retroactive “effective date” is immaterial. What matters is when the complainant actually acquired rights, and that is the date of registration or, where proven, the date on which common law rights accrued through use. On that footing the Complainant’s proven rights date from December 30, 2025, about nineteen months after the Domain Name was registered.
As UDRP Perspectives, §1.10 (Pending Trademark Applications or registrations in the U.S. Supplemental Register) explains, a mere trademark application affords no rights until registered. WIPO Overview 3.1, section 1.1.4, likewise records that “a pending trademark application would not by itself establish trademark rights”.
Fortunately, the choice of date made no difference in this particular case. The Domain Name was registered on May 27, 2024, before both the application date and the registration date. It would matter in a different case, one in which a domain name is registered after the trademark application is filed but before the registration issues. In that hypothetical case, counting from the application date would treat the registrant as having registered after the complainant acquired rights, when at the time the complainant held only a pending application and would have to rely on common law rights, if any, to show rights predating the Domain Name.
Famous Name, No Trademark: Was the Panel Too Strict on the First Element?
Kristina Romanova v. Garwat Creative Studio, CAC Case No. CAC-UDRP-108939
<kristinaromanova.com>
Panelist: Ms. Ganna Prokhorova
Brief Facts: The Complainant is a fashion model, entrepreneur, and business executive who began modelling around 2010 and has worked with renowned brands. She does not own a registered trademark but relies on unregistered rights in her personal name, KRISTINA ROMANOVA, which she claims have acquired secondary meaning through more than fifteen years of commercial use. Since 2020, the Complainant has served as CEO and Creative Director of Aman Essentials. The Respondent registered the disputed Domain name on June 7, 2026. It initially resolved to a website displaying the Complainant’s name, photographs, biographical information, and social media links. The Respondent claimed that the Domain Name was a birthday gift and tribute and offered to transfer it for “fair and reasonable consideration.” After the Complainant requested its deactivation and transfer, the website was taken down, but the Respondent did not transfer the Domain Name and repeated his request for consideration and later listed it on GoDaddy Marketplace for USD $4,100.
The Complainant alleges that the Respondent cannot rely on a “fan” or “gift” site given his request for compensation and the USD $4,100 listing and that the Respondent must have researched the Aman brand and the Complainant before registering, targeted her deliberately, and sought to monetize the association, citing paragraphs 4(b)(i) and 4(b)(iv) of the Policy. The Respondent contends that the Domain Name was registered to be transferred to the Complainant, that the website was a fan-made birthday gift with a disclaimer, and that his request for compensation was meant only to cover his costs, time and effort. The Respondent further denies bad faith and contends that he received several third-party inquiries but accepted none, and says he listed the Domain Name for USD $4,100 out of frustration and removed the listing shortly afterwards. Lastly, the Respondent adds that he does not seek to retain or use the Domain Name.
Held: The Panel accepts that the Complainant has had a substantial professional career and has achieved significant recognition in the fashion, beauty and luxury sectors. The issue, however, is not whether the Complainant has used her personal name in a commercial context, but whether the evidence establishes that KRISTINA ROMANOVA itself has acquired source-identifying significance for particular goods or services. The submitted materials identify KRISTINA ROMANOVA as a model appearing in advertising campaigns for goods sold under third-party brands, a distinction addressed in Vanisha Mittal v. info, WIPO Case No. D2010-0810. The record does not contain specific evidence demonstrating the extent to which consumers have come to perceive KRISTINA ROMANOVA itself as a distinctive identifier of modelling, endorsement, or other services supplied by the Complainant.
Taken cumulatively, the evidence establishes lengthy professional activity, commercial endorsements, substantial media exposure, social media recognition, and the Complainant’s involvement in the development and promotion of commercial products. These circumstances weigh in the Complainant’s favour under several of the factors identified in section 1.3 of the WIPO Overview 3.1. However, the evidentiary record does not include figures relating to sales of goods or services under the claimed KRISTINA ROMANOVA mark, advertising expenditures promoting goods or services under that mark, products or packaging bearing KRISTINA ROMANOVA as a brand, or comparable evidence demonstrating that consumers associate the name with a particular commercial source. Accordingly, while the Panel recognizes the Complainant’s substantial professional, commercial and media profile, the evidence before the Panel does not establish, on the balance of probabilities, that KRISTINA ROMANOVA has acquired secondary meaning as a trademark or service mark for purposes of the Policy.
Furthermore, the Respondent deliberately registered the disputed Domain name incorporating the Complainant’s exact personal name and initially used it for a website dedicated to the Complainant. Although the Respondent maintains that the website was created as a noncommercial gift, the Respondent subsequently requested compensation for the transfer of the disputed Domain name and later listed it for sale on the GoDaddy Marketplace for USD $4,100. In the Panel’s view, such conduct is difficult to reconcile with the Respondent’s claimed purely noncommercial purpose and would weigh strongly against a finding of rights or legitimate interests. The Respondent was also clearly aware of and specifically targeted the Complainant when registering the disputed Domain name. These circumstances would weigh in favour of a finding of bad faith. These findings, however, cannot assist the Complainant in this proceeding, the Complainant having failed to establish the first essential element under paragraph 4(a) of the Policy.
Complaint Denied
Complainant’s Counsel: HSS IPM GmbH
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
Was the Panel too strict on the first element? The Complainant is both a fashion model and a business executive, and the answer may differ depending on which of those two careers is being considered. She has modelled since about 2010 for brands including Ralph Lauren, Marc Jacobs, Alexander McQueen, Dolce & Gabbana and Vera Wang, and since 2020 she has been CEO and Creative Director of Aman Essentials. The Panel found that neither career had given her name secondary meaning as a mark, and denied the Complaint on the first element alone.
On the executive career, the Panel’s reasoning is persuasive. As UDRP Perspectives, §1.9 (Personal Names) explains, personal names as such are not protected by the Policy, being famous on its own may not be sufficient, and the use of the personal name for a commercial enterprise is key. An executive’s enterprise trades under the company’s name. The products here are sold under the AMAN and AMAN ESSENTIALS brands, and the Complainant’s name identifies the person who runs the business, not the source of its goods. As the Panel noted, citing Ryusaku Abe (Name Redacted) v. FlokiNET Ltd WhoisProtection, WIPO Case No. D2026-1145, to be known as a director of even a prominent company is not sufficient.
A model may be in a different position. A model does not sell goods under a company’s brand. She sells her own services, and she is booked, credited and promoted under her own name. That is not enough on its own. A model does not obtain trademark rights in her name merely by appearing in an advertisement for a branded product, any more than an actor does by being cast in a film. The name must be shown to function as a source identifier. The Panel accepted that the Complainant’s modelling and endorsement work was commercial use of her name, but gave it limited weight because the materials identified her as the model in campaigns for goods marketed under third-party brands. Could the same not be said of an actor, who appears in films marketed under a studio’s name? In Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, an actor’s name was found to have sufficient secondary association with her. The Panel distinguished that case on the basis that the actor’s name had itself become an identifier of her entertainment services, whereas the Complainant’s name identified the model appearing in campaigns conducted under third-party brands.
The Panel itself drew on the distinction in Abe between business executives and persons such as actors, authors and professional athletes, whose commercial activities are directly linked to their personal names. A model engaged by name as the face of a fragrance campaign would seem to belong with the second group. The fashion house is buying the services of a particular named person.
The difference also bears on who the relevant public is and what evidence can be expected. The relevant public need not be the general public. Where a service is sold to businesses, it is the segment that buys the service. The Panel quoted Margaret C. Whitman v. Domains For Sale, WIPO Case No. D2008-1534, for the proposition that the question is whether the recipients of the service are “a segment of the public which purchases and benefits from a service provided by the owner of the mark”. An executive ordinarily has no customers of her own, since the customers are the company’s. A model does. They are the fashion houses and agencies that book her, and the Panel found that the Complainant had worked for numerous fashion and luxury brands for many years. Fame with the general public is not the test, but recognition of her name within that trade is relevant evidence of secondary meaning. The Panel also noted the absence of sales figures, advertising expenditures, products or packaging bearing the name, or comparable evidence. The examples given suit a brand of goods. Is it the right measure for a person whose service is personal and whose name does not go on a package?
There is a fair answer to that question. As UDRP Perspectives, §1.1 (Demonstrating Common Law Trademark Rights) explains, a complainant relying on unregistered rights should show strong and serious evidence of constant use and recognition of the mark by customers. Evidence from the clients and agencies that engaged the Complainant under her name might have supplied that, and the Panel found the record lacking in specific evidence of that kind. The shortfall may therefore lie in the record more than in the test.
Disclaimer: The facts are taken from the decisions themselves and have not been independently verified. The editors and publishers accept no responsibility for their accuracy.
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings. He is the founder of Cylaw Solutions.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.