The ICA will hold a special webinar for the domain name community to discuss the recently released Initial Report of the WIPO-ICA UDRP Review Project Team.
Join Brian Beckham (Head – Internet Dispute Resolution Section at WIPO) and Zak Muscovitch (General Counsel, ICA)—co-leads of the review—for a conversation on the report’s key findings, areas of agreement and divergence in the community, and what this means for the future of UDRP reform.
Whether you’re a registrant, IP professional, panelist, registrar, or simply interested in the future of domain name dispute resolution, this session is a unique opportunity to engage directly with the authors of the report, ask questions and contribute to the conversation!
Questions can also be submitted in advance of the webinar by email.
Date & Time: Wednesday, May 28th at 11:15 AM EST on Zoom.
Registration is required – register here!
We hope you will enjoy this edition of the Digest (vol. 5.21) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel: Incumbent Upon Complainant to Prove Respondent had Complainant in Mind (bullionbank .com *with commentary)
‣ Panel Defers to Court on Whether Respondent’s Use Constitutes Nominative Fair Use (kingairacademy .com *with commentary)
‣ Did the Complainant have TM Rights Despite Disclaiming the Words? (cruisebookings .net *with commentary)
‣ Complainant’s Failure to Disclose Respondent’s Prior Trademark and Litigation Leads to Finding of RDNH (decodeage .com *with commentary)
‣ Did the Respondent Targeted the Complainant’s Mark? (bourso .vip)
Panel: Incumbent Upon Complainant to Prove Respondent had Complainant in Mind
Bullion and Diamond Co LLC v. Dan Torgny Persson Claim Number: FA2504002148846
<bullionbank .com>
Panelist: Mr. Bart Van Besien (Chair), Mr. Jonathan Agmon, and Mr. Dennis A. Foster
Brief Facts: The Complainant is a company engaged in the sale of gold bullion and related products and services. The Complainant is the owner of the two U.S. trademarks “THE BULLION BANK”, both registered on September 2, 2014 (with claimed first use since November 2011). The Respondent is the founder, chairman, and former CEO of BullionStar Pte. Ltd., a Singapore-based company engaged in the sale, purchase, and storage of bullion and other precious metals. The disputed Domain Name was created on September 9, 2017. The Complainant alleges that the Domain Name resolves to an error page and has remained unused for over seven years. Moreover, any use of the domain, according to the Complainant, would infringe upon its trademark rights. The Respondent contends that both the domain and the trademarks consist of common dictionary terms, and the combination “bullion bank” is a generic or descriptive term in English that typically refers to a financial entity dealing in bullion. As such, the Complainant Trademarks lack distinctiveness.
The Complainant further alleges that the Respondent is a direct competitor and registered the domain to disrupt the Complainant’s business. Furthermore, the Respondent took steps to conceal its identity by using a Whois privacy service and that the Respondent attempted to sell the Domain Name at an extortionate price, seeking a six-figure offer. The Respondent contends that concrete preparations were made to use the Domain Name, including plans dating back to 2013 to brand part of its business as “Bullion Bank.” The delay in active use is attributed to business planning and external factors, including regulatory restrictions on the use of the term “bank.” The Respondent notes that non-use of a domain name does not, in itself, establish a lack of rights or legitimate interests. The Respondent was unaware of the Complainant at the time of registration. Finally, regarding the alleged offer to sell the disputed Domain Name, the Respondent claims the price was hypothetical, not solicited, and that the Domain Name was never listed for sale on a public marketplace.
Held: The Panel notes that the Domain Name consists of the descriptive terms “bullion” and “bank,” which together may refer to financial services related to bullion. The Respondent’s use of these descriptive terms for services potentially competing with those of the Complainant does not, by itself, establish bad faith. This is particularly so in light of the absence of evidence that the Respondent intentionally targeted the Complainant or sought to disrupt its business. As the burden of proof rests with the Complainant, it is incumbent upon the Complainant to provide evidence that the Respondent had the Complainant or the Complainant Trademarks in mind when registering and using the domain name. The Panel also considers that the parties appear to operate in geographically distinct regions. The Complainant is based in the United States, and appears to serve primarily a North American clientele. The Respondent, by contrast, is based in Singapore and appears to focus on clients in South Asia.
With respect to the alleged offer to sell the disputed Domain Name, the Panel notes that the Complainant submitted three emails, which formed part of a broader exchange concerning a potential purchase of the Domain Name. These emails were sent by the CTO of Bullion Star (a company of which the Respondent is founder, chairman, and former CEO) to the Gmail address of the Complainant’s attorney. The Panel has not received the full email correspondence, including those from the Complainant’s attorney, nor is it clear if the Respondent knew of or approved the CTO’s communications. While it is true that the emails sent by Bullion Star’s CTO mentioned “a 6 figure offer”, this statement does not, in the Panel’s view, amount to evidence of bad faith by the Respondent at the time of registration and use of the domain. The Panel finds that the Complainant did not provide sufficiently convincing argumentation or evidence that any of the circumstances of paragraph 4(b) of the Policy are present in this case.
Complaint Denied
Complainant’s Counsel: Benjamin E. Maskell of Maskell Law PLLC, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Kudos to the Panel for applying sound principles and reasoning in determining this matter. As I have long said, ‘a trademark is not enough’. Merely having a trademark does not fulfil the requirements of the UDRP, even if the Domain Name is unused. As the Panel to its credit noted; “It is incumbent upon the Complainant to provide evidence that the Respondent had the Complainant or the Complainant Trademarks in mind when registering and using the domain name” [emphasis added]. This is the key to cybersquatting and what differentiates it from trademark infringement where intention is not required.
I also found it noteworthy that the Panel quite properly took into consideration the jurisdictional limits of trademarks. As we all know, trademarks can coexist for the very same goods and services provided that the trademarks are used in different jurisdictions. Having a trademark in one country as the Complainant did here in the U.S., does not create any rights in Singapore where the Respondent is located. The UDRP does not aggrandize nor expand trademark law and was not intended to and UDRP Panels should therefore not afford any party any greater rights than they would otherwise have under trademark law.
Panel Defers to Court on Whether Respondent’s Use Constitutes Nominative Fair Use
Textron Innovations Inc. v. Kevin Carson / King Air Academy, NAF Claim Number: FA2503002147185
<kingairacademy .com>
Panelist: Mr. Alan L. Limbury (Chair), Mr. Nicholas J.T. Smith, and Mr. Steven M. Levy
Brief Facts: The Complainant is the owner of the KING AIR mark that it licenses exclusively to its affiliate Textron Aviation Inc., the general aviation business unit of the conglomerate Textron that was formed in March 2014, following the acquisition of Beech Holdings, the maker of the King Air line of aircraft. The disputed Domain Name was registered on November 19, 2013, many years after the registration of the KING AIR mark and shortly before Textron’s acquisition of Beech Holdings. The disputed Domain Name resolves to a website that prominently displays the KING AIR mark as part of a logo and offers airline training programs for King Air aircraft, without any disclaimer of affiliation with the Complainant.
The Complainant alleges that utilizing a Complainant’s trademark in a Domain Name that competes directly with the Complainant’s business and/or creates a suggestion of endorsement or affiliation does not constitute a bona fide offering of goods or services nor a legitimate non-commercial fair use. The Respondent contends that the Complaint mis-describes and apparently misunderstands the nature of the Respondent King Air Academy’s pilot training services and the market for those services. As a result, the Complainant erroneously asserts that the Respondent competes with the Complainant and fails to recognize how the Respondent’s business name and the disputed Domain Name actually represent nominative fair uses of the Complainant’s KING AIR trademark.
The Complaint further points out that the factors articulated in Oki Data Americas, Inc. v. ASD, Inc. WIPO D2001-0903 do not apply or provide relief to the Respondents in this case. The Respondent further contends that the Complainant clearly knew about the Respondent’s business name as early as the 2017 King Air Gathering organized by the Respondent, took affirmative action supporting the Respondent by sponsoring many of those Gatherings, and took no action against the Respondent’s name while the Respondent’s business grew. Any reasonable evaluation would rate the Complainant’s chances in trademark infringement litigation as very slim, particularly in light of the laches and acquiescence defenses.
Held: The Panel concludes that, during the 12 years before any notice to the Respondent of this dispute, the Respondent has used the disputed Domain Name in connection with a bona fide offering of training services for KING AIR aircraft and that the Respondent (as a business organization) has been commonly known by the domain name. This reality is not undercut by the Complainant’s argument that the King Air Gatherings are separate from the Respondent’s primary business activities because, even accepting that the parties are in competition, the Complainant has, since at least 2017, clearly acknowledged and acquiesced in the Respondent being commonly known by the Domain Name and business name by collaborating with it for these Gatherings.
Hence, the Respondent has shown that it has Rights or Legitimate Interests in the disputed Domain Name. As to whether the Respondent’s use of the KING AIR mark in both the disputed Domain Name and its business name constitutes nominative fair use, the Panel notes the lack of any disclaimer on the Respondent’s website to avoid confusion or implied affiliation with the Complainant’s business (as required in the Oki Data Americas, Inc. v. ASD, Inc. line of cases), and considers that a court is best positioned to determine whether, based on the overall circumstances, the Respondent’s business falsely suggests sponsorship or endorsement by the Complainant.
Complaint Denied
Complainant’s Counsel: Jeremiah A. Pastrick of Pastrick Law LLC, USA
Respondent’s Counsel: Mark R. Bagley of Tolpin & Partners, PC, USA
Case Comment by ICA General Counsel, Zak Muscovitch: This decision is particularly noteworthy to me because it highlights the proper limitations of the UDRP. The UDRP was not intended to deal with trademark infringement absent cybersquatting, nor to resolve genuine competing claims of rights. Moreover, the UDRP is only intended to address clear cases of cybersquatting, not act as a court of general jurisdiction for all manner of claims regarding domain names. Here, the Panel to its credit was aware of its mandate and resolved the case appropriately.
In particular, the Panel noted that since its founding, King Air Academy had continuously provided insurance-mandated pilot training for King Air aircraft and that that the Respondent chose the business name King Air Academy and the corresponding domain name for the sole purpose of conveying to customers and potential customers that its business is the provision of pilot training for King Air aircraft. The Panel therefore rightly found that for 12 years before any notice of this dispute to the Respondent, the Respondent used the Domain Name in connection with a bona fide offering of services and has been commonly known by that name. Panels must differentiate (as the Panel did here) between genuine services and fraudulent services or the ruse of services. Generally, where the services offered are genuine and have been offered in the usual course of business, they should be considered bona fide. As noted by the Panel in Fareportal, Inc. v. Alejandro Atanes, Takeoff Flights LLC, WIPO Case No. D2025-0584 (see Digest Vol. 5.20), “the term ‘bona fide’ in Policy 4(c)(i) means ‘good faith,’ mainly to distinguish real businesses from fake ones used by cybersquatters”. It would likely have been an error if the Panel had instead found that such services were not “bona fide” since they were offered under a claimed “unauthorized” and “infringing” domain name. Such findings should generally be limited to instances where the Respondent is using the Domain Name for fake products or services or where the entire offering is a ruse.
I also want to acknowledge the Panel’s consideration of laches and acquiescence – two important defences generally available in the trademark infringement realm. Panels are quite right to consider these issues for this reason above all others; If a Respondent has bona fide defenses available to it at law that may be beyond the scope of the UDRP according to some, but which nevertheless show that the Respondent may ultimately be successful, guess what? It’s probably not a clear case of cybersquatting but more likely to be a genuine dispute between two parties with competing rights and therefore should likely be dismissed under the UDRP.
Lastly, I want to acknowledge the Panel’s treatment of the lack of a disclaimer as per the Oki Data test. The Oki Data test dates from 2001 and has long served as an important yardstick by which to judge nominative fair use. It helpfully addresses the key issues to consider in a dispute where a nominative fair use defence may be applicable. For this reason, it is one of the most cited decisions in UDRP jurisprudence. Recent panels have however, increasingly treated the Oki Data test as a guide rather than a required test that the Respondent must pass in order to be deserving of a nominative fair use defence, and have instead employed what is described as a “holistic” approach (See UDRP Perspectives at 2.3). This holistic approach will not mechanically reject a claim of nominative fair use even where, for example, there is an absence of a prominent disclaimer. As noted in UDRP Perspectives, under this more holistic and less rigid approach, Panels look at multiple factors including domain name composition, website content that may either confirm or deny affiliation with the Complainant, as well as any other circumstances relating to the use of the domain name and Respondent’s business.
In the case at hand, the Panel stated that although it noted the absence of a disclaimer as required by Oki, it “considers that a court is in the best position to determine whether, based on the overall circumstances of this case, Respondent’s business as a whole falsely suggests sponsorship or endorsement by Complainant”. This is an interesting wrinkle to the holistic approach because under the holistic approach, a Panel can evaluate whether all of the circumstances add up to nominative fair use. But as the Panel did here, a Panel can instead find that all of the circumstances surrounding nominative fair use make the case unsuitable for resolution under the UDRP because there are genuine competing legal claims and courts are the place to sort those out. Well done. Panels discharge their duties under the UDRP not only where they make affirmative determinations on the merits, but also where they make determinations on their proper jurisdiction and defer where appropriate.
Did the Complainant have TM Rights Despite Disclaiming the Words?
Avista Technology, LLC v. Muhammad Usman Javed, WIPO Case No. D2025-1332
<cruisebookings .net>
Panelist: Ms. Anna Carabelli
Brief Facts: The Complainant is a US based company providing cruise booking services to an international market, through its website <cruisebooking .com> since October 2019. The Complainant is the owner of the trademark registrations for CRUISEBOOKING, that includes US trademark (December 24, 2019) and International trademark (July 18, 2023). The disputed Domain Name was registered on August 20, 2024 and currently resolves to an inactive web page displaying a notice “This Account has been suspended”. The Respondent did not file a formal Response in reply to the Complainant’s contentions but in its communication to the Center stated that he was actually the developer of the website at the disputed Domain Name.
The Complainant alleges that previously the Respondent’s website at the disputed Domain Name consisted largely of a copy and paste of content and images from the Complainant’s official website, and reproduced the Complainant’s company name, mailing address and phone numbers. The Complainant also alleges that the only functioning part of the Respondent’s website appears to be the part that deals with calling or providing personal information to the Respondent, which suggests a phishing scheme. The Complainant also adds that the Respondent copied the html coding and javascript.
Held: Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name. The Panel notes the nature of the disputed Domain Name, which combined with the content of the Respondent’s website, carry a risk of implied affiliation with the Complainant. The Panel finds the second element of the Policy has been established.
The Panel further notes that the disputed Domain Name is confusingly similar to the Complainant’s CRUISEBOOKING mark and to the Complainant’s Domain Name. The evidence submitted with the Complaint shows that the disputed Domain Name resolved to an active website that largely copied the Complainant’s official website and reproduced the Complainant’s company name, mailing address, and telephone numbers.
On the balance of probabilities, and in the absence of any evidence to the contrary, the Panel concludes that the Respondent set out to target the Complainant and to deceive users by adopting a domain name that incorporates the Complainant’s trademark in its entirety, with an intention to divert Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product on its website. This is evidence of bad faith under paragraph 4(b)(iv) of the Policy.
Transfer
Complainant’s Counsel: Crush & Varma Law Group, P.C., US
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Panelists should generally closely examine a trademark registration before finding that the Complainant has rights under the first part of the three-part UDRP test. This becomes even more important if the trademark resembles what appears to be a descriptive term. In the case at hand, the trademark registration relied upon by the Complainant contains a crucial disclaimer.
As noted by WIPO’s Overview at 1.10, “where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP”. As also noted by UDRP Perspectives at 1.5:
“The USPTO has indicated that ‘[t]he purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone and therefore do not function as a trademark.’
Where an asserted registration consists of a design mark and the relevant words have been disclaimed apart from the mark as a whole, this requires the Complainant to provide additional evidence that the words have acquired a secondary meaning and, thus, status as a trademark as required by policy.
A disclaimer disclaims any right in the disclaimed term apart from the mark as shown in its entirety.”
Accordingly, in the case at hand, the Complainant’s US trademark registration afforded the Complainant no trademark rights at all in the term, “cruise booking”. Indeed, the USPTO forced the Complainant to disclaim the words in order to even get a trademark registration, finding that “the applicant must disclaim the wording “CRUISE BOOKING” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of a characteristic, function, feature, purpose, or use of applicant’s services.”
This should not come as a surprise as whenever a Complainant claims to have a trademark registration over what appears to be a common term, it is worth checking the claimed trademark registration to see if a disclaimer exists, which is likely in the circumstances.
Now, that being said, the Panel in this case did not expressly rely upon the Complainant’s trademark registration. Rather, the Panel obliquely stated that “the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy”, which may have referred to common law or unregistered rights rather than the trademark registration. Indeed, the Complainant apparently claimed that it had “continuously us[ed] the trademark CRUISEBOOKING since October 2019, when it started operating the domain name <cruisebooking .com>, and has acquired a significant customer base”. It is unclear whether this was the extend of the allegation and evidence provided by the Complainant, and if it was, it was likely insufficient to establish common law trademark rights in such a common descriptive term.
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. Proof of common law trademark rights cannot be based on conclusory allegations. A Complainant will have failed to establish common law rights in its mark where it makes mere assertions of such rights, which are insufficient without accompanying evidence to demonstrate that the public identifies a Complainant’s mark exclusively or primarily with a Complainant’s products.
Moreover, when it comes to a descriptive term, a Complainant will generally have an even higher burden. As noted in UDRP Perspectives at 1.4, descriptive terms are capable of acquiring distinctiveness but the more descriptive the term, the more evidence will be required to establish a secondary meaning. When it comes to descriptive terms, evidence required to show acquired distinctiveness or “secondary meaning” is directly proportional to the degree of non-distinctiveness of the mark at issue. Panels should be wary of easily conferring common law rights upon complainants where the claimed trademark comprises what appears to be a mere common descriptive term. In such cases, the conferral of common law rights upon a merely descriptive term may serve to unjustifiably provide standing to a Complainant under the Policy when in reality the Complainant is just one of many users of a common descriptive term in the marketplace. As Lord Herschell in Eastman Photographic Material Co., Ltd. v. Comptroller-General of Patents, Designs and Trade Marks, [1898] AA.C. 571 at p. 580: “The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent other members of the community from using it for purposes of description, a word which has reference to the character of quality of the goods.”
The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. But in this particular case at hand, although it is not apparent from a cursory look at the respective websites as they stand now, the evidence was apparently that the Respondent mimicked the Complainant’s website by copying portions of its content, even included references to the Complainant’s own domain name, cruisebooking .com.
Accordingly, this may have been a copyright infringment case rather than a cybersquatting case considering that the Complainant had no proven exclusive rights to the descriptive term corresponding to the Domain Name. On the other hand however, an argument exists that since the Respondent copied portions of the Complainant’s website in combination with copying the Complainant’s Domain Name that this proves cybersquatting since the Respondent would not have targeted the Complainant if it didn’t itself believe that the Complainant had acquired secondary meaning and goodwill in its otherwise descriptive brand. One must however, be very careful with this argument for the reasons explained by Panel Nick Gardner in the Cemex case:
“The Complainant however also relies on the fact of the Respondents’ use of the Disputed Domain Names is itself evidence that relevant unregistered rights exist. WIPO Overview 3.0 addresses this as follows (section 1.3): “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.” The Panel takes the view that this approach may support a case where there is other evidence which is of a doubtful or marginal nature, but normally it would not constitute the sole evidence of unregistered rights. If that was not the case then the test would be entirely circular and any term used in a domain name could be said to support a finding of unregistered trademark rights – which is clearly not the intention of the Policy.” [emphasis added]
Complainant’s Failure to Disclose Respondent’s Prior Trademark and Litigation Leads to Finding of RDNH
<decodeage .com>
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The US-based Complainant offers for sale a broad range of “high-quality nutritional supplements configured to support healthy aging, weight management, sport and fitness conditioning, and beauty, among other concerns”. The Complainant claims to have registered the domain name <codeage .com> in 2012 and began using the trademark CODEAGE or CODE AGE in or about 2016 or 2017. The Complaint includes evidence that the Complainant has registered numerous trademarks in the United States and other countries for CODEAGE or CODE AGE. These, inter alia, include United States trademarks (earliest registration dated November 21, 2017), International Registration (June 17, 2020) and Indian trademark registered on or about December 18, 2023. The disputed Domain Name was registered on April 29, 2022 and resolves to a website, branded as DECODE AGE, promoting the Respondent’s services and products relating to combating ageing.
The Respondent was incorporated in 2021 and, according to the Response, has been using the trademark DECODE AGE since August 2021. On June 27, 2022, the Respondent applied to register three trademarks in India, DECODE AGE (fancy), for goods and services in Classes 1, 5 and 42 respectively. All three had been registered before the Complaint was filed. On May 29, 2024, the Complainant commenced proceedings against the Respondent in the United States for, amongst other things, trademark infringement. The Respondent states that it ceased marketing its products in the United States under the trademark DECODE AGE in June 2024. The Complainant, however, demanded that the Respondent cease using the trademark worldwide and transfer the disputed Domain Name to it. The Respondent has not complied with these demands.
Held: While the Respondent adopted its trademark, DECODE AGE, after the Complainant began using CODE AGE / CODEAGE, the Respondent contends that it has priority in India from both use and registration before the Complainant began using or registered its trademark in India. In its supplemental filing, the Complainant seeks to establish that its products have been offered for sale and sold in India since at least 2019. The Respondent advances powerful criticisms to the cogency of that evidence.
The goods and services under DECODE AGE fit within the scope of the Respondent’s trademarks, and the trademarks themselves have different meanings. The Complainant’s evidence of sales is limited and does not show a significant reputation in India. Further still, at least following the commencement of the proceedings in the United States, the Respondent withdrew from the US market and now only serves India. Given these facts, the Respondent appears to have rights or a legitimate interest in the disputed Domain Name in India.
While the Complainant may still challenge the validity of the Respondent’s trademarks, those claims are disputed. Furthermore, the circumstances of this case fall well short of those which typically permit the Panel to decline to find rights or legitimate interests where a respondent relies on its own registered trademarks. WIPO Overview 3.0, section 2.12. Accordingly, the Panel finds the Complainant has not established the second requirement under the Policy.
RDNH: In the present case, the Panel considers a finding of reverse domain name hijacking appropriate, given that the Complainant was already engaged in litigation with the Respondent before filing the Complaint. That factor is not necessarily decisive in and of itself. The Complainant made no attempt to address the Respondent’s activities in India, even after receiving the Registrar Verification Response and an invitation to amend the Complaint.
It also seems highly likely that the Complainant knew the Respondent already had registered trademarks in India corresponding to the disputed Domain Name, as the Complainant’s own application was filed after the Respondent’s. If Indian authorities considered the two marks confusingly similar, the Respondent’s trademark would have been raised against the Complainant. However, these facts were not disclosed.
Complaint Denied (RDNH)
Complainant’s Counsel: OMNI Legal Group, PLC, United States
Respondent’s Counsel: Fidus Law Chambers, India
Case Comment by ICA General Counsel, Zak Muscovitch: The number of UDRP complaints that have been found by panels to be abusive and therefore deserving of a finding of Reverse Domain Name Hijacking has hit new highs in recent years. From a low of five RDNH findings in 2005, the number of RDNH findings set a new record of 48 in 2021, which was exceeded in 2022 with 50 findings of RDNH. 2023 again saw 50 RDNH findings. 2024 set another new record with 58 RDNH findings. Decodeage.com is the 26th RDNH finding of RDNH. If this pace continues, 2025 will again set a new record with around 62 RDNH findings for the year. [Source RDNH.com]
The increase in RDNH likely reflects an increased willingness by Panels to find RDNH combined with an better understanding of what constitutes RDNH. The higher RDNH numbers may also reflect the irresistibility of the UDRP for the unscrupulous, who covet valuable domain names that they have no entitlement to.
Did the Respondent Targeted the Complainant’s Mark?
BOURSORAMA v. h, CAC Case No. CAC-UDRP-107502
<bourso .vip>
Panelist: Mr. Alfred Meijboom
Brief Facts: The Complainant is an online bank with over 6 million customers in France, and its online banking platform has over 41.5 million visits each month. The Complainant is owner of French national trademark BOURSO with registration dated February 22, 2000 In addition to its aforementioned BOURSO trademark, the Complainant owns a number of domain names, including the domain name <bourso .com> which was registered since January 11, 2000. The disputed Domain Name was registered on April 16, 2025 and resolves to a webpage which offers the disputed Domain Name for sale for an amount of €307.12.
The Complainant claims its BOURSO trademark is well known in France and internationally for online financial services, as recognized in a previous panel decision (WIPO Case No. D2021-0671). Based on this reputation and the distinctiveness of its trademarks, the Complainant argues it is reasonable to infer the Respondent registered the disputed Domain Name with full knowledge of its trademarks. The Complainant further alleges that the Respondent fails to make an active use of the disputed Domain Name, and he has registered the disputed Domain Name only in order to sell it back to the Complainant, which also evidences bad faith registration and use. The Respondent did not file a Response.
Held: The Complainant alleges that it has been using the BOURSO trademark since 1995, and that the BOURSO trademark has “a significant reputation in France and abroad in connection with online financial services”. The Complainant did, however, not support these allegations with evidence beyond submission of a French trademark from 2000 and reference to WIPO Case No. D2021-0671, which is a French case where the panel found that the BOURSO trademark is well-known in France. Although the Panel has serious doubts about the Respondent’s intentions, it cannot conclude beyond reasonable doubt, based on the file, that the Respondent, who appears to be Chinese, was aware of the Complainant’s BOURSO trademark at the time of registration of the disputed Domain Name.
For the same reason, the Panel cannot establish that the Respondent is using the disputed Domain Name in bad faith because it is offering the domain name for sale. Although the Complainant has demonstrated that the offer for sale is €307.12 and has undisputedly stated that this asking price exceeds the out-of-pocket expenses for the acquisition of the disputed Domain Name, the amount of the offer for sale is not an indication that the Respondent was or is familiar with the BOURSO trademark and, consequently, targeted the Complainant and its BOURSO trademark with the use of the disputed Domain Name. The Panel therefore finds that the third element has not been met.
Complaint Denied
Complainant’s Counsel: NAMESHIELD S.A.S.
Respondent’s Counsel: No Response
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings. He is the founder of Cylaw Solutions.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.