Panel: Filing an Unsatisfactory Complaint “Has Consequences” – No Refiling Absent Highly Limited Circumstances
The present case follows an earlier case brought in connection with the very same domain name. Essentially the Complainant alleged that SMASHMUSIC was a typographical error of the Complainant’s trademark, SAM ASH MUSIC. The earlier decision decided on December 10, 2025 was justifiably critical of the exceptionally skeletal Complaint before it. The Panel in the earlier case noted inter alia, that “a minor difference is especially relevant where, as here, the difference results in a word that is distinguishable from the relevant trademark”. The Panel in the earlier case also noted inter alia, that “other than providing a screenshot of the home page of Respondent’s website associated with the Disputed Domain Name, Complainant provides no evidence to support its arguments, nor does Complainant cite any authority” and that “Complainant does not even allege that Respondent has failed to engage in “a bona fide offering of goods or services”. Indeed, the Panel noted the Complainant’s “non-existent legal arguments”. Continue reading commentary here.
Registrant Sues to Overturn Temco.com Decision
See article at DNW.com and also see ICA Commentary from Digest vol. 6.3
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. 6.4) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel: Filing an Unsatisfactory Complaint “Has Consequences” – No Refiling Absent Highly Limited Circumstances (smashmusic .net *with commentary)
‣ Panelist Allows Refiling Because Respondent Didn’t Respond to Res Judicate (sesame-ai .pro *with commentary)
‣ Panel: “Follower Counts Do Not Establish Trademark Rights” (gains .com *with commentary)
‣ Former ‘Reverse Domain Name Hijacker’ Wins Undefended Case (poweragentai .com *with commentary)
‣ Respondent Registered the Domain Name with the Knowledge of the Complainant (cityofdreamscolombo .com *with commentary)
‣ Respondent’s Demonstrable Preparations Establish Legitimate Interests (healio .ai)
Panel: Filing an Unsatisfactory Complaint “Has Consequences” – No Refiling Absent Highly Limited Circumstances
Sam Ash LLC v. Keith Reardon, NAF Claim Number: FA2512002194369
<smashmusic .net>
Panelist: Mr. Gerald M. Levine (Chair), Mr. David P. Miranda and Ms. Marylee Jenkins
Brief Facts: Both Parties acknowledge that a previous decision was recently issued involving the same Parties and the same disputed Domain Name as in this case, see Sam Ash LLC v. Keith Reardon, FA 2188625 (Forum Dec. 10, 2025). The Panel in Sam Ash LLC v. Keith Reardon dismissed the complaint and ordered the disputed Domain Name to remain with the Respondent. The Complainant has responded to the dismissal of its complaint by filing a new complaint and requesting that it be submitted to a 3-member Panel. Whether a one- or three-member Panel, its members are guided by the Policy and its Rules. These do not provide for a refiling of dismissed complaints, and only exceptionally are they allowed. The jurisprudence sets a high burden on a refiling. See WIPO Overview, 3.0 at Sec. 4.18:
“Panels have accepted refiled complaints only in highly limited circumstances such a (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a “without prejudice” basis. (Number (v) was added to the Overview in 2011).”
Reconsideration of a complaint dismissed with prejudice is barred by the doctrine of res judicata. However, if the prior Panel dismissed the complaint without prejudice, a subsequent Panel may consider the merits of the dispute anew. Here, the Complainant is not eligible to have its initial complaint reconsidered under circumstances (i), (ii), (iii), or (iv) of Sec. 4.18. It is what the prior Panel in this matter did not do that is critical to our assessment.
Held: Reconsideration of a complaint dismissed with prejudice is barred by the doctrine of res judicata. However, if the prior Panel dismissed the complaint without prejudice, a subsequent Panel may consider the merits of the dispute anew. If the prior Panel intended that its decision was without prejudice it would have reflected such a determination in the decision. The Panel has carefully reviewed the Amended Complaint and the annexed documentary evidence. It is clear from the prior Panel’s discussion that the filing of the initial complaint was made without the necessary investigation of the circumstances and without proper consideration of the evidentiary demands of the UDRP. Even with this refiling of the complaint, the Complainant has failed to bring to the Panel’s attention any authority that would support its refiling. The Complainant’s filing of a complaint with a “limited record and nonexistent legal arguments” as in its first UDRP filing and without any documentary evidence has consequences. Sam Ash LLC v. Keith Reardon, Case No. FA 2188625 (Forum Dec. 10, 2025); see Kalyan Jewellers India Limited v. Subha Bharat, Case No. D2024-5279:
“where the panel in the earlier proceeding determined, under the terms of the Policy, that the Complainant had failed to establish that the disputed Domain Name had been originally registered in bad faith, and that the complaint must therefore fail. The Panel finds there to be nothing in the Complainant’s current submissions that requires the original panel’s findings in that regard to be reevaluated, or which otherwise meets any of the criteria mentioned in section 4.18 of WIPO Overview 3.0 for a refiled claim to be accepted.”
For the avoidance of doubt, the Panel does not regard the observations of the prior Panel as an invitation to the Complainant to refile its complaint. We therefore decline to accept the refiled complaint.
Complaint Denied
Complainant’s Counsel: Karen Artz Ash of Katten Muchin Rosenman LLP, USA
Respondent’s Counsel: Ira Bierman, New York, USA
Case Comment by ICA General Counsel, Zak Muscovitch: The present case follows an earlier case brought in connection with the very same domain name. Essentially the Complainant alleged that SMASHMUSIC was a typographical error of the Complainant’s trademark, SAM ASH MUSIC. The earlier decision decided on December 10, 2025 was justifiably critical of the exceptionally skeletal Complaint before it. The Panel in the earlier case noted inter alia, that “a minor difference is especially relevant where, as here, the difference results in a word that is distinguishable from the relevant trademark”. The Panel in the earlier case also noted inter alia, that “other than providing a screenshot of the home page of Respondent’s website associated with the Disputed Domain Name, Complainant provides no evidence to support its arguments, nor does Complainant cite any authority” and that “Complainant does not even allege that Respondent has failed to engage in “a bona fide offering of goods or services”. Indeed, the Panel noted the Complainant’s “non-existent legal arguments”. Also notable, was the Panel’s firm statement excerpted below”
“The Policy and the Rules, as well as more than 25 years of decisions, make clear what is required in parties’ submissions. For example, Rule 3(b)(ix) says that a complaint shall describe “why the domain name(s) should be considered as having been registered and being used in bad faith.” However, Complainant’s lone, conclusory statement about bad faith fails to meet this requirement. See, e.g., PJS International SA v. Carl Johansson, WIPO Case No. D2013-0807 (“[t]he Complainant’s case on bad faith is… deficient” and “amounts to little more than a couple of conclusory statements”).”
The Panel dismissed the earlier case as it should have noting in particular, “the complete lack of any relevant evidence in… the Complaint… to support Complainant’s assertion that the disputed Domain Name[] [was] registered in bad faith has left the Panel with no alternative but to deny the Complaint”, quoting an instructive and helpful case by another Panelist.
Now turning to the present case, this Panel too got it spot on, notably and forcefully stating inter alia, that the “filing of a complaint with a ‘limited record and non-existent legal arguments’ as in its first UDRP filing and without any documentary evidence has consequences”. And those consequences are that absent exceptional circumstances or the earlier dismissal made “without prejudice to a refiling”, a Complainant gets no second kick at the can. The reason for this is that the UDRP is of course intended to be a particularly streamlined and expedited process. To meet these ends, the Policy avoids many procedural aspects that are found in court and which make for a far more robust and involved process, bearing in mind that the Complainant can always go to court instead of or in addition to bringing a UDRP. Here, the Complainant took its one expedited kick at the UDRP can and having failed there, its recourse was to court, not to another UDRP proceeding absent exceptional circumstances.
Panelist Allows Refiling Because Respondent Didn’t Respond to Res Judicate
Sesame AI, Inc. v. Jingyi Huang, NAF Claim Number: FA2512002196719
<sesame-ai .pro>
Panelist: Mr. Paul M. DeCicco
Preliminary Issue (Prior UDRP proceeding): The instant case is a refiling of Sesame AI, Inc. v. Jingyi Huang, FA 2177996 (Forum Oct. 3, 2025) (“Jingyi Huang I”) to the extent that the parties and the at-issue domain name are the same in both cases. In Jingyi Huang I relief was denied as its panel found that the complainant did not establish enforceable trademark rights. There, the operative panel found that the Complainant did not present evidence of a trademark registration and Complainant’s complaint thus failed. The Complainants are not expressly precluded from again filing a complaint against the same respondent in respect of the same domain name notwithstanding a prior Panel’s disposition, but may and should per Rule 15(a) apply established legal principles or doctrines such as res judicata to determine whether or not to accept a particular refiling.
By failing to respond Respondent waived any claims of res judicata which is generally considered an affirmative defense. On the other hand, the Complainant asserts that its newly acquired trademark registration for SESAME and for SESAME AI is material evidence which was not reasonably foreseeable or known at the time of the dispute and this fact enables another filing to be considered. The Respondent failed to respond to this claim as well since no response was filed. Considering the foregoing, the Panel finds that the prior decision in Jingyi Huang I effectively dismissed the complaint in Jingyi Huang I without prejudice to Complainant’s ability to refile. Therefore, the Panel will consider the instant Complainant de novo. See BOVIVE LTD v. Mylon Hilderman / Erin Leskovar / Alex Muller, FA 2154299 (Forum Jun. 16, 2025) (initially filed case was permitted to be refiled since the initial case was dismissed without prejudice).
Brief Facts: The Complainant is an artificial intelligence company founded by well-known, repeat technology entrepreneurs. Sesame AI exited stealth on February 27, 2025, when they activated their website at <sesame .com>. Since exiting stealth, the Complainant has previewed two of its products, a conversational artificial intelligence (“AI”) companion and accompanying eyewear. Immediately after exiting stealth, Sesame AI’s conversational AI companion amassed global interest as evidenced by countless news articles, blogs, and unfortunately, imitation websites attempting to trade off the goodwill Complainant had created in its inherently distinctive SESAME and SESAME AI trademarks. The Complainant now owns two trademark registrations for its SESAME marks (in the UK and Switzerland) and several pending applications, along with the common law rights it created in its inherently distinctive SESAME trademarks soon after launching the brand and services on February 27, 2025. Under long-settled precedent, common law rights are recognized bases for establishing trademark rights in a UDRP proceeding. The fact that a respondent has targeted a complainant’s mark, as is the case here, also supports a complainant’s assertion that its mark has achieved significance as a source identifier.
The Complainant alleges that the Respondent registered the domain <sesame-ai .pro> on March 17, 2025, several weeks after Sesame AI had launched its software and services and created common law trademarks and goodwill in its inherently distinctive SESAME trademarks. The Respondent learned of Complainant’s software and trademarks from the public comments and press coverage of Sesame AI’s new, ground-breaking AI software. The Respondent clearly knew of Complainant’s trademarks and fame when he registered the Domain Name. The Respondents’ infringing website actually referred to Complainant and its trademarks, website and software! Notably, in Jingyi Huang I, the Respondent filed a response admitting that he sourced content from, and referenced, Sesame AI and its SESAME software on his infringing website. The Complaint further alleges that the Respondent is successfully using the infringing domain name and website to confuse consumers that believe they are using Sesame AI’s software. The Respondent also incorporates sponsored ads on the infringing website to generate revenue from confused consumers that may think they are visiting Sesame AI’s website. Moreover, Respondent’s redirecting web traffic to third-party websites and involuntary download of executable files is a clear attempt to use the disputed domain in bad faith. The Respondent failed to submit a Response in this proceeding.
Held: The Respondent uses it’s confusingly similar <sesame-ai .pro> domain name to feign an affiliation with Complainant and thereby drive internet traffic to its website or elsewhere. There, the Respondent promotes software conceptually similar to Complainant’s software and attempts to distribute malware. The Respondent’s use of <sesame-ai .pro> in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). The Respondent registered and used the at-issue domain name to address a website that lifts content from Complainant’s genuine website and references software described like Complainant’s offering under its SESAME marks. The Respondent offers its software for third-party consumption. The Respondent may in other ways use the domain name to divert traffic from Complainant to the at-issue domain name to ultimately benefit the Respondent. The Respondent’s use of <sesame-ai .pro> is thus disruptive to Complainant’s business and intended to deceptively attract internet users seeking Complainant to Respondent’s <sesame-ai .pro> domain name and <sesame-ai .pro> website.
The Respondent’s use of the at-issue domain name demonstrates Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). Additionally, at times browsing to the domain name may result in malware being automatically downloaded to internet consumers. This use of the domain name likewise demonstrates the Respondent’s bad faith registration and use of <sesame-ai .pro>. Moreover, the Respondent had actual knowledge of Complainant’s rights in the SESAME and SESAME AI marks when it registered <sesame-ai .pro> as a domain name. The Respondent’s prior knowledge is apparent given the marks’ notoriety, given Respondent’s registration of <sesame-ai .pro> subsequent to Complainant’s launch of its AI related SESAME AI software, and given Respondent’s references from Complainant’s genuine website on Respondent’s <sesame-ai .pro> website. The Respondent’s knowledge of Complainant’s rights in SESAME and/or SESAME AI further demonstrates Respondent’s bad faith.
Transfer
Complainant’s Counsel: Fabricio Vayra of Morgan, Lewis & Bockius LLP, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: The present case was a refiling of an earlier October, 2025 case, as noted by the Panel. In the earlier case, the Panel dismissed the Complaint because the Complaint did not present evidence of a trademark registration or sufficient evidence of common law trademark rights. In the present case however, the Panel allowed the case to proceed and ordered the Domain Name transferred, despite the earlier dismissal. Unlike the three-member Panel in the above-referenced SmashMusic .net decision, the Panel did not follow the consensus view that absent “highly limited circumstances” a case may not be refiled and considered the case de novo.
The Panelist explained his decision as follows:
Complainants are not expressly precluded from again filing a complaint against the same respondent in respect of the same domain name notwithstanding a prior Panel’s disposition, but may and should per Rule 15(a) apply established legal principles or doctrines such as res judicata to determine whether or not to accept a particular refiling.
By failing to respond Respondent waived any claims of res judicata which is generally considered an affirmative defense. On the other hand, Complainant asserts that its newly acquired trademark registration for SESAME and for SESAME AI is material evidence which was not reasonably foreseeable or known at the time of the dispute and this fact enables another filing to be considered. Respondent failed to respond to this claim as well since no response was filed.
This was a startling departure from the norm and very concerning. It is very concerning not just because it is detrimental to the reliability and predictability of the UDRP, but also because it encourages Complainants who failed in their first attempt to try and try again by bringing repeated UDRPs until they either get their facts and law right or the Respondent doesn’t respond. This approach goes against the entire premise and purpose of the UDRP and must not be countenanced or followed.
The doctrines of res judicata and abuse of process are grounded in the public interest and the purpose of the Policy and exist to protect the integrity of the adjudicative process. As such, these are matters that need not be raised by a Respondent for the Panel to consider.
Panel: “Follower Counts Do Not Establish Trademark Rights”
Axel Sylvian van den Braken v. Domain Administrator, afterTHOUGHT, Inc, WIPO Case No. D2025-4698
<gains .com>
Panelist: Ms. Ganna Prokhorova (Presiding), Mr. Douglas M. Isenberg and Ms. Karen Bernstein
Brief Facts: The Complainant is a private person based in the Netherlands (Kingdom of the) who claims to have used the name GAINS as a brand in the fitness and personal development sector since 2017. In 2025, the Complainant filed a US trademark application for the mark GAINS (pending registration), and two Benelux trademark applications for GAINS (preliminarily refused). In support of unregistered trademark rights, the Complainant provided evidence of social media use and limited commercial activity, including screenshots of a website displaying GAINS branded supplement products and a “pre-order” page for a GAINS journal, as well as two invoices from 2017 and 2025 which the Complainant claims show sales relating to a GAINS product.
The Respondent is a United States company owned by Mr. Ammar Kubba, who is a professional domain name investor. The Respondent acquired the disputed Domain Name on May 14, 2021, as part of its domain investment portfolio for USD $149,500. Since mid-2025, the Respondent has licensed the disputed Domain Name to a third-party startup (GamerGains Labs, Inc.) for use in connection with a “play-to-earn” cryptocurrency gaming platform branded as “Gains”. The disputed Domain Name currently resolves to the website of this gaming platform. Prior to filing this UDRP Complaint, the Complainant attempted to acquire the disputed Domain Name from the Respondent.
The Complainant alleges that the disputed Domain Name was never used for any bona fide offering of goods or services and was listed for sale. The Respondent held the disputed Domain Name passively for years, displaying only placeholder pages or sales redirects, which panels consistently deem evidence of lack of legitimate interest. The Respondent contends that the Complainant has not established trademark rights in the term “GAINS” and that the disputed Domain Name consists of a common dictionary word, which is inherently capable of legitimate use. Prior to notice of the dispute, the Respondent licensed the disputed Domain Name to a third party which constitutes a bona fide use of the domain name.
Held: The Complainant has filed trademark applications for GAINS, and the applications have not yet proceeded to registration. Therefore, the existence of these trademark applications do not by itself establish that the Complainant has trademark rights and standing to file a Complaint under the Policy. The Complainant also submits that it has common law trademark rights based on its business activities carried out under the brand GAINS. In the absence of a registered mark, the Complainant must prove that GAINS has become a distinctive identifier associated with the Complainant’s goods or services, i.e., that he has unregistered (common law) trademark rights in the name, see WIPO Overview 3.0, section 1.3. Moreover, if the term in question is an ordinary or descriptive word (as “gains” is), the threshold of proof is higher, and the complainant must provide compelling evidence that the descriptive term has become uniquely connected with the complainant’s offerings.
After careful review of the record, the Panel finds that the Complainant has not met this burden. While the Complainant claims to have used GAINS as a brand since 2017, the supporting evidence is scant and unpersuasive: a) Social media presence: Although the Complainant points to a large number of followers on Instagram and Facebook, follower counts alone do not establish trademark rights, and there is no evidence of sales, advertising spend, or sustained promotion of identifiable GAINS‑branded goods or services; b) Invoices and receipts: The two documents provided do not demonstrate sales of GAINS‑branded products to customers; and c) Website evidence: Screenshots of the Complainant’s websites show GAINS‑labeled products marked as “sold out” or available only for pre‑order, with no proof of completed transactions or customers, and therefore do not establish actual commercial activity under the GAINS name.
Crucially, the Complainant’s own communications undermine his claim of long standing GAINS business activities. In an email the Complainant sent to the Respondent in July 2023, the Complainant effectively presented GAINS as a future venture he was passionate about starting, rather than an already thriving enterprise. This timeline strongly suggests that whatever “goodwill” or recognition the Complainant claims to have built in the GAINS mark may have arisen primarily from his personal or online presence, not from a bona fide business distinguishing itself in the marketplace as “GAINS”. The Panel also notes that “gains” is a common English word, often used in colloquial fitness jargon and in other generic contexts. Such a term is inherently not distinctive. The Complainant has provided no evidence that consumers or the public uniquely associate “gains” with the Complainant’s fitness or self-improvement services, as opposed to its ordinary meaning or other third-party uses.
RDNH: Where a Complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy, a finding of RDNH may be appropriate. WIPO Overview 3.0, section 4.16. The Complainant submitted no evidence of the acquired distinctiveness required to support a claim of common law trademark rights. See Zelig AI, LLC v. dong xuyan, NAF Claim FA2410002120196. Instead, the Complainant relied primarily on recently filed trademark applications and provided only minimal evidence in support of its alleged common law rights. It is well established under the Policy that pending trademark applications do not confer rights. Moreover, the Complainant failed to submit credible evidence of sales, advertising, or public recognition sufficient to demonstrate acquired distinctiveness, despite asserting the existence of goodwill spanning eight years.
The Panel also notes that the Complainant’s own correspondence from July 2023 described its business plans as aspirational and acknowledged a lack of capital to acquire the disputed Domain Name. These statements directly contradict the Complainant’s assertions of longstanding trademark rights. In light of the Respondent’s continuous ownership of the disputed Domain Name long before the Complainant acquired or claimed any trademark rights, the Complaint lacked any realistic prospect of success. The Panel further observes that the Complainant had previously approached the Respondent in an attempt to purchase the disputed Domain Name. After failing to acquire it through negotiation, the Complainant initiated this proceeding, effectively seeking to obtain the disputed Domain Name without payment.
Complaint Denied (RDNH)
Complainant’s Counsel: Self-represented
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch:
This was a particularly well written and analysed case that hit upon several important and instructive issues.
First, the Panel to its credit followed well-established jurisprudence that merely pending trademark applications do not afford trademark rights (See for example; Horizon Publishing, LLC v. Opulence Communications Ltd., NAF Claim Number: FA1302001487500; “it is well settled that an application, without issuance, does not establish a Complainant’s trademark rights under the Policy”). Also see WIPO Overview 3.0 at 1.1.4; “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)”; and also see UDRP Perspectives at 1.10: “Neither pending trademark applications nor registrations in the US Supplemental Register establish trademark rights for the purpose of the UDRP”.
Second, the Panel appropriately upheld the requirement that common law trademark rights generally be proven by strong and serious evidence. As noted in UDRP Perspectives at 1.1, for a Panel to award common law rights to any expression, thereby granting it the same status as a registered trademark, without proper evidence would be improper and unjust. To support a claim of common law trademark rights, the Complainant should present strong and serious evidence of constant use by the Complainant and recognition of the trademark from the customers of the associated goods or services. As referenced by the Panel, Paragraph 1.3 of the Consensus View states that “to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”.
Most importantly perhaps on the issue of establishing common law rights, the Panel made the point that “if the term in question is an ordinary or descriptive word (as “gains” is), the threshold of proof is higher”. This reasoning is consistent with the recent single-member panel decision in the dispute over the adviceonly.com domain name, found at Quincy Hall / Advice Only v. Steven Fox / Advice Only, NAF Claim Number: FA2511002186579, which I favourably commented upon in a recent digest.
Third, the Panel appropriately found RDNH despite the fact that the Complainant was self-represented. Although it is well established that a represented party may be held to a higher standard (See WIPO Overview 3.0 at 4.16), it is also true that, where warranted, an unrepresented party is not immune from an RDNH finding. An unrepresented Complainant is still responsible for understanding the Policy. As stated in Everiii & Partners International Co. Ltd. v. Nien Chen, Hearty Creative Inc., ADNDRC Case No. HK-2301847 (See recent digest summary and commentary here:
“Complainant cannot even justify itself saying, for example, that it ignored the Policy and the well-established UDRP case law. Parties are free to self-represent themselves in UDRP disputes, but they also have to bear the consequences of not seeking appropriate legal counsel. This is particularly true considering that the Policy has been in place for 25 years and the decisions rendered by UDRP panels are publicly available.”
Former ‘Reverse Domain Name Hijacker’ Wins Undefended Case
Darryl Davis Seminars, Inc. v. Ramit Kar / Spacely, NAF Claim Number: FA2512002196948
<poweragentai .com>
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant, since 1993, has offered a variety of services, including marketing, training and workshops, to real estate agents, brokers and managers under the POWER AGENT mark, with agents who complete the Complainant’s POWER Program being designated as POWER AGENTS. The Complainant also offers a POWER AGENT AI Coach product using AI to provide training services. The Complainant has rights in the POWER AGENT mark through its registration with the USPTO on December 4, 2018. The disputed Domain Name was registered on August 21, 2024.
The Complainant alleges that the Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use. Rather the Domain Name has resolved to a website where the Respondent, under the Complainant’s POWER AGENT mark, purports to offer an AI tool to real estate professionals that will increase sales, a similar set of services to the Complainant’s services, which are aimed at assisting real estate professionals in increasing sales.
The Complainant further alleges that the Respondent registered and uses the <poweragentai .com> domain name in bad faith as it disrupts Complainant’s business by offering competing services. Furthermore, the Respondent had actual knowledge of Complainant’s rights in the POWER AGENT mark prior to registering the disputed Domain Name, given the fame and longtime use of the mark as well as the Respondent’s use of the Domain Name to offer competing services. The Respondent failed to submit a Response in this proceeding.
Held: The disputed Domain Name redirects to the Respondent’s Website where the Respondent purports to offer services to increase real estate sales in direct competition with the Complainant’s services to real estate professionals. The use of a confusingly similar domain name to redirect to a competing website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, NAF FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii)”).
The Panel finds that, at the time Respondent registered the Domain Name, August 21, 2024, the Respondent had actual knowledge of Complainant’s POWER AGENT mark which had been in use since 1993 and had developed a significant reputation in the real estate profession. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that wholly incorporates the POWER AGENT mark and use it to redirect visitors to a website offering services to real estate professionals that compete with the Complainant’s services other than to take advantage of Complainant’s reputation in the POWER AGENT mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶4(a)(iii).
The Panel finds that the Respondent registered and uses the Domain Name in bad faith as the Respondent used the Domain Name to redirect Internet users to Respondent’s own website where the Respondent offers services to real estate professionals in direct competition with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website can show bad faith registration and use per Policy ¶4(b)(iii).
Transfer
Complainant’s Counsel: Sarah Sue Landau of Cowan, Liebowitz & Latman, P.C., New York, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: In reading this case, I thought it sounded familiar. As it turns out, in an earlier dispute, a three-member panel found that the Complainant in this case was engaged in Reverse Domain Name Hijacking with respect to the same trademark, “POWER AGENT”. In the earlier case, the Panel noted inter alia the “common and descriptive nature of the term [POWER AGENT]”. In finding RDNH, the Panel found in the earlier case inter alia, that “the Complainant, which is represented by counsel, should have appreciated the weakness of its case and the fact that the term “power agent” encompassed in the disputed Domain Name cannot be exclusively referable to the Complainant, as claimed in the Complaint without any supporting evidence”.
Respondent Registered the Domain Name with the Knowledge of the Complainant
<cityofdreamscolombo .com>
Panelist: Mr. Ankur Raheja
Brief Facts: The Complainant owns numerous trademark registrations for CITY OF DREAMS and formative marks incorporating CITY OF DREAMS in various jurisdictions. The Complainant filed trademark applications in Sri Lanka on 26 April 2024, including CITY OF DREAMS COLOMBO, which are currently pending registration. The Complainant adopted the “City of Dreams” mark for the first time in 2006 as the brand name for an integrated entertainment resort in Macau, which was launched in 2009. In April 2024, the Complainant made a public announcement of its partnership with John Keells Holdings, Sri Lanka’s largest listed conglomerate, for the development of a landmark US$1 billion+ integrated resort under the City of Dreams brand in Colombo, Sri Lanka. The Complainant provides evidence in the form of an article dated 16 October 2024 that the 687-room luxury hotel “Cinnamon Life at City of Dreams Sri Lanka” officially opened in City Dreams Colombo on 15 October, 2024, while Casino was to launch in mid-2025.
The disputed Domain Name was registered on 17 November 2024. According to the Complainant’s evidence, it resolved to a “Coming Soon” page on 17 September 2025; however, by 16 October 2025, it had resolved to a developed website that included references to Bally’s Colombo and other Colombo-based casinos. The Complainant alleges that the Respondent’s use of the disputed Domain Name is the antithesis of a bona fide offering and is a calculated scheme to misappropriate the Complainant’s goodwill through a deceptive online ecosystem consisting of the website at the disputed Domain Name and associated social media accounts, to inject themselves into public conversations about the brand and mislead consumers. The Respondent, an industry insider in the Colombo casino sector apparently associated with Bally’s Casino Colombo, registered the domain name on 17 November 2024 with full knowledge of the Complainant’s prior and well-known trade mark rights and of the highly publicized “City of Dreams Sri Lanka” project.
The Respondent contends that CCC Events (Private) Limited is a Sri Lankan company incorporated on 16 February 2022 and claims to be an established event management, nightlife promotion, hospitality promotion, and entertainment facilitation company operating a family of brands including Charithra Wedding Planner, Colombo Night Life, and City of Dreams Colombo. The Respondent contends that “City of Dreams Colombo” was independently and internally conceptualized as a hospitality and nightlife promotional brand to promote casinos, hotels, restaurants, nightclub experiences, entertainment events, and tourism experiences within Colombo. The Respondent asserts legitimate rights and interests in the disputed Domain Name under Paragraph 4(c) of the Policy, claiming use of the name in connection with a bona fide offering of services and reliance on Sri Lankan trade mark applications, including Mark No. 308871 – CITY OF DREAMS COLOMBO (logo) in Class 35 filed on 29 August 2025, as evidence of good faith brand development and a formalized commercial identity.
Held: The Respondent’s evidence namely, pending trademark applications, a recently activated website, and branding material, may suggest, to some extent, demonstrable preparations to use the disputed Domain Name. However, such preparations must amount to bona fide use in terms of paragraph 4(c)(i) of the Policy, which the Respondent has not adequately established; see Medtronic, Inc. v. Aytekin Yilmaz (WIPO Case No. D2021-1758). Further, panels have repeatedly held that trademark applications do not by themselves confer rights or legitimate interests where the surrounding facts indicate an intent to capitalize on another’s reputation rather than an independent, good-faith business initiative; see WIPO Overview 3.0, section 2.12. Given the facts and circumstances of this case, the Respondent’s choice of the exact combination “City of Dreams Colombo” for a casino- and nightlife-focused promotional brand strongly suggests that the Respondent was seeking to align itself with, or ride on, the reputation of the Complainant’s CITY OF DREAMS SRILANKA project in Colombo.
Further, the facts and circumstances of the case satisfy the Panel that the Respondent registered the disputed Domain Name in opportunistic bad faith, specifically targeting the Complainant and its CITY OF DREAMS mark. First, the Panel is satisfied that the Respondent had actual knowledge of the Complainant and its CITY OF DREAMS mark and of the City of Dreams Sri Lanka project (opened on 15 October 2024) when it registered the disputed Domain Name on 17 November 2024. The Respondent is located in the greater Colombo area and has long been professionally involved in the local casino and nightlife sector; these circumstances make it implausible that he was unaware of the Complainant’s project or of the CITY OF DREAMS brand at the time of registration. Secondly, the Respondent’s use of the disputed Domain Name supports a finding of bad faith under paragraph 4(b)(iii) and, particularly, paragraph 4(b)(iv) of the Policy. The website at <cityofdreamscolombo .com> is not a mere descriptive use but it actively promotes Colombo-based casinos such as Bally‟s Colombo, as well as nightlife and hospitality offerings, under the “City of Dreams Colombo” banner.
Transfer
Complainant’s Counsel: King & Wood Mallesons, Hong Kong
Respondent’s Counsel: Self-represented
ICA Comment by ICA General Counsel, Zak Muscovitch: Plausibility is a primary consideration when considering a Response. Here, the Respondent claimed that it independently conceptualized the Domain Name to promote casinos, hotels, restaurants, nightclub experiences, entertainment events, and tourism experiences within Colombo. That was very hard to believe in the circumstances, considering the Complainant’s reputation. This case was heard by Ankur Raheja, who also serves as our Editor-in-Chief.
Respondent’s Demonstrable Preparations Establish Legitimate Interests
The Wyanoke Group v. Karmei Tse Morin, WIPO Case No. D2025-4909
<healio .ai>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant holds trademark registrations for the word mark HEALIO with the USPTO, that includes mark registered on August 7, 2012, (first use in commerce: September 29, 2011) and another mark registered May 3, 2016, (first use in commerce: October 31, 2014). The Complainant owns the domain name <helio .com> and uses that Domain Name to host its commercial website. The Complainant does not spend a great deal of time discussing its business or the extent to which its trademarks enjoy renown among consumers. The disputed Domain Name was registered on February 15, 2018 and currently does not resolve to an active website. The Complainant alleges that the disputed Domain Name has never been used for any bona fide offering of goods or services. According to Complainant, the Domain Name “has resolved for years either to a Google-generated 404 error page […] or to a bare, non-substantive shell page, and has shown no active content and no evidence of legitimate activity since approximately 2021…”
The Respondent contends that she registered the Domain Name because she and her colleague “JK” were developing a proposed “artificial intelligence driven genomics platform” and that “The disputed Domain Name corresponds directly to Respondent’s independently conceived and used business name HealioAI, which the Respondent adopted beginning in 2017–2018 for a bona fide artificial intelligence and genomics venture.” The Respondent further contends that, ‘HealioAI’ was used as a unitary coined term, derived from ‘Heal (improving health outcomes) + IO (data input/output) + AI (artificial intelligence),’ and not as a reference to Complainant’s publishing brand or trademark. Annexed to the Response are documents showing Respondent’s efforts to solicit investors for this enterprise while using the name “HealioAI,” and screenshots of a publicly accessible prototype website developed for Respondent’s HealioAI venture, which was live and publicly accessible during the period 2018–2021.
Held: The Panel concludes, on the record provided, that the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the Domain Name. There is enough plausible evidence in the record that the Respondent registered the Domain Name, for reasons unrelated to Complainant or its mark, in order to pursue a legitimate business. As noted above, although the Complainant had registered trademarks before the Respondent registered the Domain Name, there is nothing in the record to suggest that the Complainant’s HEALIO mark was so well known that one should infer that the Respondent more likely than not was aware of that mark. The Respondent’s explanation and evidence of demonstrable preparations before notice of this dispute compel a finding that the Complainant has not met its burden of proving that the Respondent has no rights or legitimate interests within the meaning of the Policy paragraph 4(c)(i).
RDNH: On the record presented, the Panel declines to make an RDNH finding against the Complainant. At the time the Complaint was filed, Complainant had a registered trademark to which the Domain Name was identical. Since 2021, it appears that the Domain Name has not been put to any use. It would not have been far-fetched for Complainant to conclude that the Domain Name may have changed hands between the original registration in 2018 and the period of non-use since 2021. The Parties had no direct communications before this Complaint was filed, and hence the Respondent had never articulated to the Complainant its bona fides before this proceeding was initiated. In these circumstances, the Panel cannot characterize this case as one in which the Complainant knew its UDRP case was doomed to fail, which circumstance can form the basis for an RDNH finding. In sum, this case does not warrant a finding of RDNH.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
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.