Panel: ‘Complainant Should Pay Respondent’s Costs’
Notably, the Panel stated that “if there were a provision in the Policy authorizing the award of costs to a prevailing Respondent, the Panel would be inclined to so order in this case, but there is no such provision in the Policy.” The Panel however, went on to clarify that it “does not intend to endorse or advocate the addition of such a provision to the Policy, which would present many difficult questions that the panel has not considered” and referred to the Initial Report of The WIPO-ICA UDRP Review Project Team, (April 17, 2025)(“[G]iven the complexities in administering such a [loser pays] system, we would recommend against the adoption of a loser pays system.”) last viewed October 31, 2025.”. Continue reading commentary here. 
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We hope you will enjoy this edition of the Digest (vol. 5.45) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel: ‘Complainant Should Pay Respondent’s Costs’ (drivendata.com *with commentary)
‣ Panels Are Required to Discern Cases Appropriate for Resolution and to Dismiss Those that are Not (visitturksandcaicos .com *with commentary)
‣ Inverted Domain Name Indicates Intentional Targeting and Bad Faith Under Policy (scapedark .com)
‣ Panel: Respondent ‘Could Not Have Had Complainant’s Trademark in Mind’ (vireo .com *with commentary)
‣ Panel: Entirely Plausible that Respondent Decided Upon Disputed Domain Name Without Knowledge of Complainant’s Trademark (ro .gold *with commentary)
Panel: ‘Complainant Should Pay Respondent’s Costs’
DrivenData, Inc. v. Alon Orlitsky, DM, WIPO Case No. D2025-2233
<drivendata .com>
Panelist: Mr. Lawrence K. Nodine (Presiding), Mr. Michael A. Albert and Mr. Tony Willoughby
Brief Facts: The Complainant is engaged in statistical and software services. It is the registered proprietor of US trademark registration for DRIVENDATA (registered: January 23, 2024; first use: June 18, 2014). The Respondent registered the disputed Domain Name on October 1, 2000, and it has never been connected to an active website. Since completing graduate school 39 years ago, the Respondent has worked as a researcher and faculty member in information and data science at the University of California San Diego’s Data Science Institute. On December 2, 2014, the Complainant emailed the Respondent to acquire Domain Name for a social venture running data science competitions; the Respondent later declined by phone, and from 2014-2023 the Complainant sent at least seven more emails (addressing “Professor Olitsky”), citing .org/.com confusion in 2016, with no replies.
On September 26, 2024, Complainant’s attorney cited U.S. Trademark registration and demanded transfer, and to which the Respondent replied he registered the Domain Name years earlier for a potential startup. The Complainant alleges that the Respondent registered the disputed Domain Name in bad faith when he renewed it after receiving actual notice of Complainant’s trademark rights. The Respondent contends that he registered the disputed Domain Name a decade before the Complainant acquired any trademark rights in the mark with the intention of using it in relation to a project. In its Supplement filing, the Complainant did not offer any argument or authority to support its original contention that renewal of a domain name could be considered bad faith registration. Instead, the Complainant claimed that the Respondent had recently transferred the disputed Domain Name.
Held: There is nothing in the record that causes the Panel to doubt the accuracy of Respondent’s statement in his Response to the Complainant in September, 2024: “I have spent most of my research career working on statistical learning and data-driven algorithms. I registered the driven-data domain while working with colleagues on a potential startup in the area, and I still consider starting a company in this or related area. This registration took place years before your client registered, and probably even thought about, the trademark.” It is a quasi-descriptive name consistent with his specialty and his stated plan for it. The Complainant has failed to satisfy the Panel that the Respondent does not have a right or legitimate interest in respect of the disputed Domain Name.
The Panel is further not persuaded by Complainant’s contention that Respondent’s several renewals of the disputed Domain Name may be considered registrations for the purpose of evaluating bad faith, see WIPO Overview 3.0, section 3.9. The Panel also rejects Complainant’s new argument that the Respondent recently transferred the disputed Domain Name. The balance of evidence favors finding that the Respondent maintained uninterrupted ownership of the disputed Domain Name since it was registered in 2000. The Complainant’s own behaviour shows that the Complainant has always believed that the Respondent continuously owned the disputed Domain Name – seven email messages to the Respondent seeking negotiations, counsel’s letter to the Respondent. And there is no allegation of a transfer in the Complaint.
RDNH: The Complainant went back 25 years seeking support for its case, citing five cases that all date back to the year 2000. As a result, the Respondent had to go back 25 years in search of documentation to support his defence, not only to retain ownership of the disputed Domain Name, but also in defence of his reputation from the false allegations of bad faith. The quality of the Response demonstrates that the Respondent devoted significant time to drafting it. He then spent USD $2,000 in fees for a three-member panel, no doubt to reduce the risk of an unfavourable decision from a single panel. Clearly, he is keen to retain ownership of the disputed Domain Name, a quasi-descriptive name registered in good faith and apt for use in his specialist area of research.
In the Complaint, the Complainant cited three of the five factors leading the panel in that case to come to its finding of bad faith passive holding. The excluded factors concerned Respondent’s identity and correctness of whois information. The Complainant ignored this key factor because at the date of the Complaint, the Complainant knew not only the identity of the Respondent and how to contact him, but also that he was an academic doing research in the field. Ignoring these key factors — ones that favor the Respondent — instead of fully addressing all the factors and acknowledging which way they each cut, further buttresses our conclusion that the proceeding was brought in bad faith.
The Panel further notes that if there were a provision in the Policy authorizing the award of costs to a prevailing the Respondent, the Panel would be inclined to so order in this case, but there is no such provision in the Policy. The Panel, however, invites the Complainant to consider voluntarily paying those costs. This would be appropriate given the exceptional facts of this case.
Complaint Denied (RDNH)
Complainant’s Counsel: Casner & Edwards, LLP, United States
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Notably, the Panel stated that “if there were a provision in the Policy authorizing the award of costs to a prevailing Respondent, the Panel would be inclined to so order in this case, but there is no such provision in the Policy.” The Panel however, went on to clarify that it “does not intend to endorse or advocate the addition of such a provision to the Policy, which would present many difficult questions that the panel has not considered” and referred to the Initial Report of The WIPO-ICA UDRP Review Project Team, (April 17, 2025)(“[G]iven the complexities in administering such a [loser pays] system, we would recommend against the adoption of a loser pays system.”) last viewed October 31, 2025.”
A ‘Loser Pays’ system has consistently been of interest to both Complainants and Respondents. For successful Complainants, it would be terrific if they were able to recover some or all of their costs and fees through a ‘Loser Pays’ system. For successful Respondents, it would also be great, especially because it would add some teeth to a finding of RDNH.
Nevertheless, the Initial WIPO-ICA Report, which I participated in on behalf of the ICA, “recognized that such awards may ultimately be unenforceable absent some form of bond payment system which ensures that the successful party receives its cost award. Moreover, between complainants and respondents, it is more likely that costs could be recovered from an unsuccessful complainant than a losing cybersquatter, presenting a vastly inequitable situation.” The Initial Report also noted that “requiring a bond to be paid by a registrant (or held against their credit card used to register a domain name) creates potential access to justice but also practical issues. Neither UDRP Providers nor registration authorities would seem inclined to assume the responsibility and costs for a bond payment system.”
Ultimately, the Initial Report determined that “while there was support for the principle of addressing the imbalance in enforcement costs and providing a deterrent against bad actors, given the complexities in administering such a system, we would recommend against the adoption of a loser pays system.” The Final Report is forthcoming following feedback from stakeholders.
The Panel deserves credit for finding RDNH and clearly expressing its view of the Complainant’s conduct and indicating that if costs were payable, it would have ordered them, in a particularly well written decision. The Panel’s analysis upon which the finding of RDNH was based was particularly sensitive to the difficulty, time, cost, and effort required of the Respondent when confronted with a meritless Complaint, noting that the “Respondent had to go back 25 years in search of documentation to support his defence, not only to retain ownership of the Disputed Domain Name, but also in defence of his reputation from the false allegations of bad faith. The quality of the Response demonstrates that Respondent devoted significant time to drafting it. He then spent USD 2,000 in fees for a three-member panel, no doubt to reduce the risk of an unfavourable decision from a single panel.”
I do however want to point out one unfortunate aspect of the decision, which is of course greatly overshadowed by the Panel’s strong finding of RDNH; the Panel’s finding on Rights and Legitimate Interest. The Panel found in part, that:
“There is nothing in the record that causes the Panel to doubt the accuracy of Respondent’s statement in his Response to Complainant on September 30, 2024: “I have spent most of my research career working on statistical learning and data-driven algorithms. I registered the driven-data domain while working with colleagues on a potential startup in the area, and I still consider starting a company in this or related area. This registration took place years before your client registered, and probably even thought about, the trademark.” It is a quasi-descriptive name consistent with his specialty and his stated plan for it.”
That is a very clear basis for finding that the Respondent had established his rights and legitimate interest in the Domain Name based upon a balance of probabilities. Nevertheless, the Panel did not make an affirmative finding of the Respondent’s Rights and Legitimate Interest, instead merely stating that:
The Panel finds the second element of the Policy has not been established. Complainant has failed to satisfy the Panel that Respondent does not have a right or legitimate interest in respect of the Disputed Domain Name.
Why didn’t the Panel make an affirmative finding?
Clearly the Panel had no qualms in making a strong finding of RDNH in favour of the Respondent, even going so far as to invite the Complainant to pay the Respondent’s costs. As written 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.”
This was a particularly appropriate case for a Panel to make an affirmative finding of the Respondent’s Rights and Legitimate Interest, particularly having regard to the Policy’s provisions as set out above. Moreover, the Panel specifically noted that the Respondent defended “his reputation from the false allegations of bad faith”. It is precisely this circumstance which demands an affirmative finding of the Respondent’s Rights and Legitimate Interest, as anything short of that is not a full affirmation of the Respondent’s bona fides and fails to afford the Respondent his full rights to exoneration under the Policy.
One final word about something that is frustrating about this case despite the Panel’s excellent decision overall and which does not reflect upon the Panel specifically. The Respondent was of course expressly named in the decision, which is completely proper under the Policy and Rules. Nevertheless, one must ask oneself what the policy reason or justification for this is, when the Respondent was completely innocent and entirely successful. His name will forever be featured on the Internet as a result. A reader of the decision will see that he ultimately won the case – if the reader makes it all the way through. But certainly if it were me as the Respondent, I would prefer not to be named at all, and not have my name dragged through the mud just to be publicly vindicated to those who read the entire decision.
Adding insult to injury, however, is the fact that the Complainant’s representative was not specifically named. The Complainant’s representative, as is very common in UDRP proceedings, is merely set out as the name of the law firm rather than the specific lawyer who filed the Complaint. So lawyer’s names are conveniently protected, even if they filed a Complaint that was found to be attempted RDNH, while the entirely innocent Respondent gets the unenviable privilege of being expressly named. Hat tip to John Berryhill for having pointed out this general concern.
Panels Are Required to Discern Cases Appropriate for Resolution and to Dismiss Those that are Not
<visitturksandcaicos .com>
Panelist: Mr. Nick J. Gardner
Brief Facts: The Complainant, incorporated in the Turks and Caicos Islands, is a privately owned commercial organisation. The Turks and Caicos Islands are a British Overseas dependency with their own legal system and government. The Complainant owns the domain name <visittci .com>, which resolves to a website which promotes the Turks and Caicos Islands. The Complainant’s Website contains a large amount of substantive content about the Turks and Caicos Islands including details of hotels, resorts, tourist activities and so on and includes links to the corresponding third-party websites relating to the featured items. The Complainant is the owner of several trademark registrations for Visit Turks and Caicos Islands and Visit Turks & Caicos Islands in Turks and Caicos (2012) and USA (2013).
The Respondent is a not-for-profit body established by the government of the Turks and Caicos Islands. The Respondent does business as “Experience Turks and Caicos” and has trademarked the name Experience Turks and Caicos and the name Experience TCI. It acquired the disputed Domain Name in or about June 2025 and redirects to a website at <turksandcaicostourism .com>. The Complainant alleges that the Respondent must have been aware of the Complainant’s trademark rights when acquiring the disputed Domain Name and is using it to compete directly with Complainant’s services. The Respondent contends that its use of the disputed Domain Name is for non-commercial, governmental purposes in promoting tourism to the Turks and Caicos Islands and that the phrase “Visit Turks and Caicos” is descriptive and relates to the geographic location, which the Respondent has a legitimate right to use in its official capacity.
Held: The Complaint plainly alleged the Respondent knew of the Complainant and its business when acquiring the disputed Domain Name, and the Response did not contest that allegation; the Panel therefore inferred it to be correct. That inference focused attention on the Respondent’s state of mind at registration – the Respondent, presenting itself as an authorised tourist board, may have believed it had equal or superior rights to use the phrase “Visit Turks and Caicos” and obtained the Domain Name to attract visitors to its site. Such conduct, if established, could indicate bad faith. At the same time, the Panel identified a significant and separate concern arising from the Complainant’s use of “Official Website” in its HTML title tag combined with the omission of its full legal name on the website. The overall presentation tends to suggest that the site is the official site of the Turks and Caicos government or its authorised tourism authority, which can reasonably mislead consumers. The Panel considered that the format is commonly used by official tourist boards, and transferring the disputed domain to a private company whose website gives an impression of official status could increase the risk of public confusion. The Respondent also alleges the Complainant’s site breaches local company‑naming requirements by omitting “Limited,” a matter outside the Policy but relevant to consumer perception.
Having carefully considered these issues and the circumstances of the present case the Panel has reached the conclusion that this issue is not suitable for determination within the limited framework provided by the Policy. The Panel considers this issue, and hence this dispute, is better determined by the appropriate Court in the Turks and Caicos Islands (see WIPO Overview 3.0 at section 4.14.6). Both parties reside there, and the Court can employ procedures unavailable under the Policy to resolve the factual and legal complexities in this case. The Court is better placed to assess the Respondent’s knowledge and intentions when acquiring the domain, to scrutinize the basis and public effect of the Complainant’s use of “Official Website”, and to evaluate whether any local statutory requirements governing company naming and website disclosure have been breached and, if so, what legal consequences follow. The Court can also address the Respondent’s descriptive-use claim and determine whether the disputed phrase is generic or protected by trademark rights, including the validity and scope of the trademarks each party holds in the Turks and Caicos Islands and any potential infringement. Moreover, the Court can examine the Respondent’s assertion of noncommercial use and its claimed status as the territory’s official tourist board, assessing the relevance and weight of those claims in context.
Complaint Denied
Complainant’s Counsel: The GigaLaw Firm, Douglas M. Isenberg, USA
Respondent’s Counsel: Misick & Stanbrook, Turks and Caicos Islands, UK
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel’s punting of this dispute was clearly not borne of laziness or fear, evidenced by the extensive treatment that the Panel gave the parties. Rather, despite having ample fortitude and acumen to have made a judgment should the Panel have wished to do so, the Panel admirably recognized that the UDRP is not intended to resolve all kinds of disputes. Rather, it is only designed and intended for clear cut cases of cybersquatting. Other disputes are not intended to be resolved by the expedited and administrative nature of the UDRP procedure. As written in UDRP Perspectives at 0.1:
The limited scope of the Policy is confirmed by its legislative history, namely the “Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy” (“ICANN Second Staff Report”) 1999, par. 4.1.c. It confirms that the Policy applies to “a small, special class of disputes” and “except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties)…” The “Final Report of the WIPO Internet Domain Name Process”, April 30, 1999 (“WIPO Final Report 1999”) states that the UDRP’s scope is limited to “abusive registrations or cybersquatting” and only to “egregious examples of deliberate violation of well-established rights…” (see par. 160). The limited nature of the UDRP has been highlighted as a “feature, not a flaw” (see ICANN Second Staff Report, par. 4.1.c). The Policy should not be applied inter alia to “good faith disputes between competing right holders or other competing legitimate interests…” or to “domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial consideration” (see par. 172 of the WIPO Final Report 1999).
The Policy requires Panels to discern those cases appropriate for resolution and to dismiss those that are not. Courts, which are equipped with robust discovery and cross-examination, should be deferred to where a case involves material unreconcilable facts and versions of events or where credibility is a key issue and is unable to be determined. [emphasis added]
UDRP Perspectives also expressly notes however, that “Complexity alone per se is not necessarily a reason to dismiss”. Some cases may have complicated facts or complex legal arguments and still be appropriate for resolution under the UDRP. Nevertheless, where the complexity of facts or law cannot be satisfactorily resolved under the limited procedural framework of the UDRP such as where cross-examination and discovery would be appropriate, or where the legal issues at play call into question whether it is a clear case of cybersquatting, dismissal remains appropriate. Panels should not however be dissuaded from adjudicating appropriate cases just because a Respondent has attempted to obfuscate with complexity, what are otherwise appropriate facts and legal arguments to resolve in the UDRP. That was not the case here. Rather, the Panel appropriately fulfilled its duties by rejecting the case despite what appears to have been a particularly well-argued case by the Complainant’s able counsel.
Inverted Domain Name Indicates Intentional Targeting and Bad Faith Under Policy
Jagex Limited v. Frank Gattuso, CAC Case No. CAC-UDRP-107955
<scapedark .com>
Panelist: Ms. Hana Císlerová
Brief Facts: The Complainant, incorporated on 28 April 2000, has been engaged in the design, development, publication, and operation of online video games and other electronic entertainment products. The Complainant owns the domain name <runescape .com>, which has hosted an active website relating to online video games since at least 17 August 2000. The Complaint is the owner of various RUNE-formative and RUNESCAPE or SCAPE trademark registrations, including DARKSCAPE (word) – European Union registered since 18 May 2022; and RUNESCAPE (word) – United Kingdom, registered since 27 December 2002. The disputed Domain Name was created on 3 February 2025.
The Panel has exercised its general powers under paragraph 10 of the Rules by visiting the website to which the disputed Domain Name resolves. As of the time of preparing this decision, the disputed Domain Name resolves only to a blank page. However, according to the Complaint, it previously resolved to a website offering a pirated version of the Complainant’s Old School RuneScape game. The Complainant alleges that the Respondent’s use cannot constitute a bona fide offering and represents a deliberate and abusive attempt to profit from the goodwill attached to the Complainant’s marks. The Complainant further submits that creating and distributing a pirated version of the Games violates its End User License Agreement (“EULA”) and applicable copyright law. No response has been filed.
Held: The evidence shows that the disputed Domain Name has been used to direct Internet users to content misappropriating elements of the Complainant’s trademarks and goodwill. Such use is misleading and cannot qualify as a bona fide offering of goods or services. Use of a domain name that incorporates a complainant’s trademark in this way does not establish legitimate rights or interests. Finally, the Respondent’s use of the disputed Domain Name is clearly commercial in nature and intended to divert Internet users for financial gain. There is no evidence of commentary, criticism, news reporting, or any other category of fair use. The Panel, therefore, finds that the Respondent lacks any legitimate non-commercial interest.
The Complainant’s trademarks are distinctive and well established for its online games, and given their long-standing use and international reputation the Respondent likely knew of the Complainant and its marks at the time of registration. The disputed Domain Name is an inversion of the Complainant’s DARKSCAPE trademark, a pattern which strongly suggests intentional targeting of the Complainant. Such deliberate rearrangement of trademark components is a recognised indicator of bad faith under the Policy. The Respondent’s use of the domain name, designed to evoke the Complainant’s marks and divert traffic to competing or misleading content, constitutes conduct falling squarely within paragraph 4(b)(iv) of the Policy. Furthermore, such conduct disrupts the Complainant’s business, which supports a finding of bad faith under paragraph 4(b)(iii) and (v).
Transfer
Complainant’s Counsel: Stobbs IP
Respondent’s Counsel: No Response
Panel: Respondent ‘Could Not Have Had Complainant’s Trademark in Mind’
VIREO S.r.l. v. Domain Admin, Ashantiplc Limited, WIPO Case No. D2025-3364
<vireo .com>
Panelist: Ms. Anne-Virginie La Spada (Presiding), Mr. Edoardo Fano, and Mr. Andrew Lothian
Brief Facts: The Complainant, founded in 2006, is a company based in Italy which offers sustainability certification services. The Complainant owns the Italian trademark registration for VIREO, registered on September 27, 2023; and EU registration for VIREO, registered on September 29, 2023. The disputed Domain Name was acquired by the Respondent, a professional domainer based in Hong Kong, on March 16, 2004. In 2010-2011, the disputed Domain Name was used in relation to a website displaying images of birds. Since 2015, the disputed Domain Name resolved to a page indicating that it was “possibly for sale”. The Complainant alleges that the fact that the disputed Domain Name has never been used and is offered for sale proves that the Respondent lacks rights or legitimate interests. The Complainant affirms that the disputed Domain Name was transferred more than a hundred times since its creation, the Respondent being the last owner.
The Respondent points out that it was the underlying registrant of the disputed Domain Name in March 2004, and it denies that the disputed Domain Name has been transferred multiple times, explaining that, since 2004, it has used successive privacy services offered by different registrars. The Respondent also contends that the word “vireo” is a dictionary word designating a kind of bird and there are numerous third-party registrations for VIREO that are not in the Complainant’s name and that predate the Complainant’s marks. Furthermore, the Respondent represents that prior UDRP panels have recognised that speculative investment in common descriptive terms can constitute a legitimate interest. The Respondent has not targeted the Complainant, neither when the disputed Domain Name was briefly used for bird related content, nor subsequently when the disputed Domain Name was offered for sale.
Held: 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 was founded in 2006 and had no trademark rights at the time that the Respondent registered the disputed Domain Name. WIPO Overview 3.0, section 3.8.1. Indeed, in the present case, the Respondent has brought forward sufficient evidence that it was the underlying registrant of the disputed Domain Name already in 2004, i.e., well before the Complainant came into existence in 2006, and well before the Complainant filed trademark applications for VIREO in 2023. The Respondent could not, therefore, have had the Complainant’s trademark in mind when it registered or acquired the disputed Domain Name in 2004.
Consequently, the Panel finds that the condition of registration in bad faith is not met. Furthermore, there is no indication in the file suggesting that the Respondent targeted the Complainant’s trademarks at any time after 2006. The Complainant has not provided evidence of any reputation outside Italy, and especially in Hong Kong, China where the Respondent is based. The Panel considers accordingly that the condition of use in bad faith is not met.
Complaint Denied
Complainant’s Counsel: Cantaluppi & Partners S.r.l., Italy
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States of America
Case Comment by ICA General Counsel, Zak Muscovitch: One can understand why RDNH was not considered or found in this case if the Complainant may not have been aware of the Respondent’s longstanding and preexisting registration of the Domain Name until the filing of the Response.
What about “Rights and Legitimate Interest” though? The Panel made no finding on this issue, stating that “it is unnecessary for the Panel to analyse whether the conditions of the second element of the Policy are established.” The Panel found that the Respondent’s registration of the Domain Name predated the Complainant’s trademark rights. The Complainant was founded in 2006 but the Respondent registered the Domain Name in 2004 and the Panel therefore concluded that “the Respondent could not, therefore, have had the Complainant’s trademark in mind when it registered or acquired the disputed domain name in 2004”.
In the circumstances, and particularly given the absence of any bad faith use of the Domain Name (there was none), why wouldn’t the Respondent have rights (as in registration, contractual rights, and ownership rights) and a legitimate interest in the Domain Name?
Panel: Entirely Plausible that Respondent Decided Upon Disputed Domain Name Without Knowledge of Complainant’s Trademark
Alrovi ApS v. Athanasios Kokoras, WIPO Case No. D2025-4052
<ro .gold>
Panelist: Mr. Steven A. Maier
Brief Facts: The Complainant, a company incorporated in Denmark, offers a cross-platform browser extension named RoGold, relating to a third-party proprietary gaming product, Roblox (free-to-play game creation platform), which enables players and developers to customize various aspects of the Roblox gaming experience. It does not appear to the Panel that either the Complainant or the Respondent has any official affiliation to Roblox, or any licence or authorization in respect of any of its products or services. The Complainant is the owner of the EU trademark for the word mark ROGOLD, registered on September 21, 2025, while the US trademark is pending registration. The Complainant operated a website at <rogold .me> from 2021 until November 2022, when it migrated its service to <rogold .live>. The disputed Domain Name was registered on November 4, 2023 and resolves to a website offering users the opportunity to earn free Robux by competing in a variety of quizzes and surveys.
The Complainant alleges that the Respondent’s offering of Robux currency is deceptive, does not constitute a genuine offering of goods or services, and is intended only to divert Internet users by impersonating the Complainant. It adds that the Respondent has displayed a copyright notice “© Copyright 2025 – RoGold” on its website, which further demonstrates that the Respondent is passing itself off as the Complainant. The Respondent contends that it registered various domain names in 2023 in connection with its Robux Gold offering, namely <robuxgold .com> in March 2023, and <robuxgld .com>, <rogld.com> in June 2023 and the disputed Domain Name in November 2023, which predate the Complainant’s trademark, and asserts that it had no knowledge of the Complainant at the date it registered the disputed Domain Name. The Respondent further contends that its rewards-based website has no business overlap with the Complainant’s product, which is a browser extension for user customization.
Held: While the Complainant asserts that the Respondent’s activities are not genuine, are deceptive and risk harming Internet users, it does not provide reasons or evidence in support of these assertions, nor is it obvious from the material available to the Panel that the Respondent’s website is a sham. It should be noted in this regard that the UDRP provides a relatively summary procedure for the resolution of, essentially, cases of cybersquatting, and is not geared to conducting an extensive factual or evidential investigation such as might be the case in a court of law. On that basis, the Complainant has not persuaded the Panel that the Respondent’s website does not represent a bona fide commercial venture. Nor does the Panel find the Complainant’s trademark so distinctive or widely known that the Respondent likely registered the domain to target it.
Although the Complainant points to the near identity between its ROGOLD trademark and the disputed Domain Name, the Panel observes that both the trademark and the disputed Domain Name comprise the letters “ro”, representing the third-party proprietary product Roblox, and the term “gold”, which is a term of general application in commerce to indicate goods or services of a high standard. In the circumstances, given the derivative and relatively non-distinctive nature of the Complainant’s trademark, the Panel finds it to be entirely plausible that the Respondent decided upon the disputed Domain Name without knowledge of the Complainant’s trademark rights, or in any event without any intent to impersonate the Complainant, or otherwise to target the goodwill attaching to its trademark. In the circumstances, the Panel does not agree that the Respondent’s copyright notice indicates an obvious intention to impersonate the Complainant.
RDNH: While the Panel considers that the Complainant’s case was misconceived and in some instances overstated, the Panel declines, principally in view of the near identity between the disputed Domain Name and the Complainant’s trademark, to make a finding of Reverse Domain Name Hijacking in this case.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self Represented
Case Comment by ICA General Counsel, Zak Muscovitch: I have a deep appreciation for the Panel’s nuanced analysis and determination in this case.
Firstly, the Panel declined to find RDNH but expressly considered it. RDNH is a discretionary remedy and in the circumstances of this case was likely inappropriate as the Panel duly found. Nevertheless, the Panel at least considered it, and therefore this is a good example of a Panel fully discharging its duty under Rule 15(e).
More importantly however, the Panel demonstrated an admirable appreciation for the limitations of the UDRP, noting;
“It should be noted in this regard that the UDRP provides a relatively summary procedure for the resolution of, essentially, cases of cybersquatting, and is not geared to conducting an extensive factual or evidential investigation such as might be the case in a court of law. On that basis, the Complainant has not persuaded the Panel that the Respondent’s website does not represent a bona fide commercial venture.”
The Respondent was engaged in what appears to be a genuine business, with the Panel noting that:
“On the evidence available to the Panel, the Respondent appears to be operating a genuine business offering Robux rewards in exchange for website user activity involving surveys and quizzes. It appears to have operated this business since 2023 and exhibits evidence of other complementary domain name registrations and of Internet user engagement with its service.”
Once a panel determines that the Respondent is operating a “genuine business”, as the Panel did here, the dispute would generally fall outside of the scope of the UDRP. The UDRP is a streamlined mechanism lacking most of the necessary procedures of courts and was adopted as an administrative public policy response to cybersquatting. Cybersquatters do not generally operate genuine businesses.
Where a Respondent operates a genuine business such that the Complainant’s allegation amounts to trademark infringement rather than cybersquatting, a Panel should not generally interpose itself into the dispute by purporting to resolve the trademark infringement case. Where a case involves an allegedly competing business and alleged trademark infringement, rather than treat the UDRP as a court of ‘broad trademark jurisdiction’, a Panel must apply the Policy which specifically requires registration in bad faith – which usually means having the Complainant’s trademark in mind when registering the Domain Name. Here, the Panel noted that “the Complainant’s trademark [is not] so distinctive or so widely known that the Respondent should be assumed to have registered the disputed domain name in order to target the Complainant’s trademark, as opposed to for the purposes of an independent business venture.” Precisely. Reputation is generally a precursor to a finding of targeting, and without adequately proving reputation, targeting can be elusive. As noted in UDRP Perspectives at 3.10:
“The mere existence of a trademark alone is insufficient for a Panel to conclude that a Complainant’s trademark has any particular reputation. Constructive notice of a trademark generally has no place in the UDRP and therefore a Complainant must prove not only that it has a trademark, but that its trademark had a reputation such that the Respondent was likely aware of it and targeted it. Such evidence can comprise sales volume data, marketing expenditures, advertising examples, and search engine rankings, for example.”
Moreover, it is not for Panels to decide whether a business is “bona fide” as a result of the existence of a Complainant’s trademark – in the sense that there very well could be Respondent use which appears infringing, but that is a trademark infringement rather than a cybersquatting matter, absent intent and targeting. Where the Respondent’s business is “genuine” in the sense of being a going concern business that is not engaged in fraud or counterfeiting and where there is no evidence of targeting, that is a matter best left to the courts, as the Panel did here.
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.