Panel: No ‘Per se Legal Obligation’ Under the Policy to Conduct a Trademark Search
This case is notable for how the Panel took an appropriately nuanced view of the utility of conducting a trademark search. The Panel noted that “there is not a per se legal obligation under the Policy to conduct a search of trademark office databases as a prerequisite to registering domain names, and failure to conduct such searches, taken in context, is but one factor in analyzing whether registration is undertaken in bad faith.”. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 5.40) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel: No ‘Per se Legal Obligation’ Under the Policy to Conduct a Trademark Search (mediagiant .com *with commentary)
‣ Material Time for Trademark Rights is at Time of Registration, Not Now (turkiyesigorta .com *with commentary)
‣ Complainant Attempted to Use the UDRP Process for Leverage After Negotiations Failed (jiggle .com *with commentary)
‣ Egregious Bad-Faith Registration: Misleading “Canadian” Copycat Website Passing Off as Complainant (commedesgarconscanada .ca *with commentary)
‣ Panel: Case is Well Beyond the Panel’s Limited Jurisdiction Under the Policy (lofficieluk .com *with commentary)
‣ Complex Dispute: Panel Notes Inconclusive Evidence and Arguments (orlafoods .com *with commentary)
Panel: No ‘Per se Legal Obligation’ Under the Policy to Conduct a Trademark Search
Media Giant Holdings LLC v. Billy Karamouzis, WIPO Case No. D2025-2791
<mediagiant .com>
Panelist: Mr. Frederick M. Abbott
Brief Facts: The Complainant, established as LLC in January 2010, claims to have used the trademark MEDIA GIANT in commerce since 2009, but the Complainant provided virtually no evidence of its use of that trademark in commerce. Its claimed first-use date matches the date in its USPTO application for the MEDIA GIANT service mark, which was registered on April 4, 2017. The Respondent provides evidence of Complainant’s use of the MEDIA GIANT trademark in commerce on a website accessible at <mediagiantdesign .com> that advertises website design and marketing services. The Respondent acquired the disputed Domain Name at auction on or about September 6, 2017 and offered it for sale for USD $100,000. The Respondent has a documented record of acquiring descriptive domains, building them into businesses, and selling some for tens of millions, as reported on various news reporting platforms. Following initiation of these proceedings, the Respondent emailed to the Complainant: “You’re going to end up on this wall Ricky <hallofshame .com>… playing with fire here, you can reach out to my counsel and make a proper offer.”
The Complainant alleges that the Respondent has not used the disputed Domain Name in connection with an active website, but has rather offered to sell the disputed Domain Name for USD $100,000 in an attempt to capitalize on the Complainant’s established brand. The Complainant further alleges that the Respondent failed to conduct basic trademark due diligence by searching the USPTO trademark database at the time he acquired the disputed Domain Name which undermines any claim of good faith or ignorance of rights. The Respondent contends that the Respondent’s registration of the disputed Domain Name is consistent with his business model and that the Complainant’s trademark is descriptive and in wide third party use. The Respondent through its email directed to the Complainant was merely expressing frustration because the Complainant was trying to misuse a legal proceeding. The Respondent requests the Panel to make a finding of RDNH because Complainant’s cause of action is entirely without merit.
Held: The Respondent is an experienced domain name trader, but did not conduct a search of the USPTO database that would have provided information regarding Complainant’s trademark registration. The Respondent argues that this disputed Domain Name was chosen due to it being a combination of dictionary terms, but that does not make the Complainant’s mark merely descriptive. Common terms can function as trademarks for major enterprises, as shown by “General Electric,” “General Motors,” and “Universal Studios.” The Respondent has not presented any evidence that it had a specific business plan for the disputed Domain Name. Self-serving declarations by domain name registrants do not constitute evidence of good faith preparations for use of trademarks and domain names. This is well established. See WIPO Case No. D2025-2142 <rentlyai .com>. Further, there is nothing improper about purchasing and selling domain names, as such. This is a big business. But, the existence of that business does not per se legitimize purchasing a domain name incorporating the trademark of the third-party and selling it. The Panel finds that the Complainant has successfully established that the Respondent lacks rights or legitimate interests in the disputed Domain Name.
The Complainant’s trademark was registered a few months before the Respondent acquired the disputed Domain Name. The Complainant was operating as “media giant DESIGN” and had no trademark notice on its site. But this raises the question, as an experienced domain investor, the Respondent should have searched the USPTO database before buying the domain at auction to ensure good-faith registration but did not. There is a balance at play on the issue of bad faith registration and use. The Respondent might well have been more attentive to the trademark rights of the Complainant when he acquired the disputed Domain Name. On the other side, the Complainant has not provided evidence that the Respondent was deliberately seeking to take advantage of Complainant’s trademark rights when he registered the disputed Domain Name. The Respondent did not directly seek out the Complainant to exploit the value of the disputed Domain Name. On balance, this does not constitute “bad faith” registration and use by Respondent. The evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark.
RDNH: The Complainant has provided no basis for the Panel to find RDNH. The Respondent registered the disputed Domain Name without conducting a trademark search that would have informed him regarding the existence of trademark rights on the part of the Complainant. The Respondent has not established that he has rights or legitimate interests in the disputed Domain Name. The Complaint has been denied because on balance the Panel considers that the Respondent did not target the Complainant’s goodwill in its trademark. That does not provide the Respondent with grounds for RDNH. The Respondent’s aggressive statement directed to the Complainant is not condoned on grounds of “frustration”.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Wiley Rein LLP, United States
Case Comment by ICA General Counsel, Zak Muscovitch:
This case is notable for how the Panel took an appropriately nuanced view of the utility of conducting a trademark search. The Panel noted that “there is not a per se legal obligation under the Policy to conduct a search of trademark office databases as a prerequisite to registering domain names, and failure to conduct such searches, taken in context, is but one factor in analyzing whether registration is undertaken in bad faith.”
Taking the absence of a trademark search into account however, did not in the circumstances of this case, lead the Panel to conclude that the Respondent registered the Domain Name in bad faith. Rather, the Panel noted that the Complainant failed to provide “evidence that Respondent deliberately targeted Complainant and its trademark, or that Respondent was attempting to take advantage of Complainant’s specific goodwill in its trademark, when Respondent registered the disputed domain name”. The Panel thereby appropriately identified the key consideration here; namely that knowledge of a Complainant’s trademark (even if that knowledge “should have” been obtained via a trademark search beforehand) is not necessarily proof of bad faith registration in and of itself. If that were the case, then the UDRP would only require proof of a preexisting trademark and awareness by the Respondent. That is not the case. Rather, the UDRP requires proof of intent to target the Complainant’s trademark. In this case, the Complainant failed to provide that proof.
Amongst the several circumstances that the Panel found mitigated against a finding of bad faith registration, was that the Complainant adopted its brand after “the disputed domain name already was registered by a third party, even though that third-party was not Respondent.” This is a notable consideration since it means, as the Panel noted, that the “Complainant acted with knowledge that its business might not be able to acquire the disputed domain name”. If a domain name is already taken by someone prior to adopting the corresponding brand, that means that the domain name has proven value and interest to someone other than the Complainant – a factor that mitigates against the claim that the Domain Name was registered necessarily to target the Complainant.
Notably, some domain names are generally “immune” from any purported obligation to conduct a trademark search. Such was the case with the decision in the 3-member Panel in the matter of <sage .ai>, where a three-member panel held that “the Panel considers that this is not a case where an obligation to conduct searches should be imposed on the Respondent because ‘sage’ is a dictionary term.” Amongst the reasons that such terms should not attract any obligation to conduct a trademark search, is that the utility of conducting such searches is severely limited. As the Respondent noted in the sage.ai case, “such searches would have produced results showing that SAGE is a registered trademark of and used by other businesses”. If all that a trademark search reveals is that the Complainant is one of many parties that uses a common term as a trademark, it provides virtually no evidence of targeting.
Lastly, it is notable to see the Panelist stated that “there is nothing improper about purchasing and selling domain names, as such. This is a big business.” Of course, the Panel qualified this statement by adding that “the existence of that business does not per se legitimize purchasing a domain name incorporating the trademark of the third-party and selling it”, which is to say that being a domain name investor does not provide an unqualified and absolute defense. Rather, a Respondent domain name investor will still generally have to demonstrate that its reason for registering the Domain Name had to do with the value of the Domain Name as an investment within its business, rather than to capitalize off of the specific Complainant’s goodwill.
Material Time for Trademark Rights is at Time of Registration, Not Now
Turkiye Varlik Fonu A.Ş v. Mehmet Alper Sen, WIPO Case No. D2025-3046
<turkiyesigorta .com>
Panelist: Mr. Mehmet Polat Kalafatoğlu
Brief Facts: The Turkish Complainant is the owner of the Turkish trademark registration for TÜRKİYE SİGORTA, filed on April 13, 2020, and registered on February 8, 2022. The Complainant claims that its registered trademark is used in connection with insurance and financial services across Türkiye and enjoys widespread recognition. The disputed Domain Name was registered on January 27, 2017 and resolves to an active website that displays information about insurance in Türkiye, including a list of different types of insurance. At the bottom of the website, there is a message that reads as follows: “This domain name is for sale.”
The Complainant alleges that “the domain name was registered in 2017, significantly after the Complainant’s trademark rights were established and widely recognized in Türkiye” and that the Respondent’s use of a nearly identical domain name and attempt to sell it demonstrate bad faith. The Respondent contends that he registered the disputed Domain Name three years before the Complainant’s trademark registration and the establishment of “Türkiye Sigorta A.Ş.”, and that the disputed Domain Name consists of the general terms “Türkiye” and “Sigorta” (meaning “insurance” in the Turkish language), and it was acquired as a legitimate investment.
Held: The Panel recognizes that the Complainant’s trademark, as of today, is widely recognized in Türkiye for insurance services. However, the essential question in this case is whether the Respondent acted in bad faith at the time he registered the disputed Domain Name in 2017. However, the Complainant has not provided any supporting evidence that it had trademark rights on TÜRKİYE SİGORTA at an earlier date than the registration of the disputed Domain Name. The evidence also shows “Türkiye Sigorta A.Ş.” adopted its current name in 2020, following a merger, whereas its predecessor “Güneş Sigorta A.Ş.” dates to 1957. The company’s official site states it was founded in 2020 through the merger of three companies. Therefore, based on the available record, the Panel concludes that the Complainant’s statement is chronologically inaccurate. Furthermore, the Complainant did not address the exception to WIPO Overview 3.0, section 3.8.1.
Lastly, the Respondent submitted that he registered the disputed Domain Name on January 27, 2017, and provided evidence in support. The Panel further notes that the other domain names (registered and) renewed by the Respondent also seem to be dictionary and generic terms in Turkish. This further supports the Respondent’s claim that he is investing in generic domain names. In conclusion, the Panel finds that the Complainant’s trademark was registered over three years after the Respondent registered the disputed Domain Name, and based on the available record, the Respondent could not have targeted the Complainant’s trademark at the time of registering the disputed Domain Name. Since the Complainant has not met its burden of proving the bad faith registration, there is no need for the Panel to address the Parties’ contentions regarding the bad faith use of the disputed Domain Name.
RDNH: The disputed Domain Name was registered over three years before the registration of the Complainant’s trademark. In its Complaint, the Complainant initially acknowledges this, yet contradictorily claims the domain was registered “significantly after” its trademark became established in Türkiye, without evidence. In addition, it was incumbent on the Complainant to establish the existence of an exception to the general proposition stated in WIPO Overview 3.0, section 3.8.1. However, the Complainant has not provided any arguments or evidence on this subject.
More importantly, the record shows that the issue of the dispute domain name registration before the Complainant’s acquisition of trademark rights has been brought to the Complainant’s attention by the Respondent during the pre-complaint communications between the Parties. Nevertheless, the Complainant proceeded with its Complaint. Represented by external counsel, the Complainant was held to a higher standard (WIPO Overview 3.0 §4.16) and thus should have known it could not prove an essential element under the Policy.
Complaint Denied (RDNH)
Complainant’s Counsel: Asist Patent Ltd. Şti., Türkiye
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel rightfully noted that where a Complainant is specifically alerted in pre-Complainant communications, to the fact that the Domain Name predates the Complainant’s trademark rights – and the Complainant proceeds anyhow, it can and should be taken into account when determining RDNH.
Complainant Attempted to Use the UDRP Process for Leverage After Negotiations Failed
Jiggle LLC v. CHAD WRIGHT, WIPO Case No. D2025-3608
<jiggle .com>
Panelist: Ms. Kimberley Chen Nobles
Brief Facts: The Complainant is a limited liability company, organized in Florida in 2024, that offers caffeinated gummies. The Complainant owns the United States registered trademark for the JIGGLE word mark, registered on July 22, 2025. The disputed Domain Name was created on February 28, 1996, and registered to the Respondent since at least as early as 2015, and the record shows that the Domain Name was used in 2018 for PPC advertising related to animated graphics. At the time of the filing of the Complaint, the Domain Name resolved to a registrar parked page where it was offered for sale at USD $350,000.
The Complainant alleges that it far exceeds “registration costs of $10-20/year” and that the Respondent is engaged in “speculative domain flipping”, establishing a pattern of abusive practices. The Respondent contends that it is an online advertising agency that has legitimately owned the Domain Name since 2015 and showed use of the Domain Name in 2018. The Respondent further contends that the Complainant’s trademark rights only arose in 2025, shortly after the Complainant’s formation and long after the Domain Name was registered to the Respondent as early as May 23, 2015, that is, over ten years before the Complaint was filed.
Held: As the sole basis for bad faith in its Complaint, the Complainant alleged that the Respondent violated paragraph 4(b)(i) of the Policy, but on its face, paragraph 4(b)(i) of the Policy requires more. The Domain Name must have been registered to sell it to “the complainant who is the owner of the trademark or service mark or to a competitor of that complainant.” Such facts were never alleged to have existed. The Domain Name was registered to the Respondent on May 23, 2015, over nine years before the Complainant’s incorporation and more than ten years before its trademark registration. The Complainant itself claimed that the Domain Name was registered on February 28, 1996, showing that the Complainant knew or should have known of the Respondent’s ownership long before its formation, trademark registration, and this Complaint.
The Complainant could certainly have conducted a search in this regard, once the Center had informed the Complainant of the registrant’s identity on September 10, 2025. The facts of this case are similar to those in Charter Communications, Inc. v. Perfect Privacy, LLC / Sheri K Corwin, WIPO Case No. D2017-0040. In that case, the panel found that the respondent’s registration of the domain name predated the complainant’s trademark rights, and therefore, there could be no finding of bad faith registration. Therefore, the Panel finds that Respondent did not register the Domain Name in bad faith targeting of the Complainant or its trademark rights because the Complainant had no trademark rights at the time that the Respondent registered the Domain Name. WIPO Overview 3.0, section 3.8.1.
RDNH: The evidence demonstrates that the Complainant was aware of Respondent’s ownership and use of the Domain Name well before filing the Complaint. The evidence also suggests that the Complainant attempted to use the UDRP process for leverage after failing to acquire the Domain Name through negotiation or attempted negotiation. This is an improper use of the UDRP process, as noted in previous cases such as Charter Communications, Inc. v. Perfect Privacy, LLC / Sheri K Corwin, WIPO Case No. D2017-0040. In conclusion, the Complainant’s actions demonstrate the Complainant knew or should have known that it could not prove the essential elements required by the UDRP, particularly given the significant time gap between the domain registration and Complainant’s trademark rights. This conduct falls squarely within the circumstances described in WIPO Overview 3.0, section 4.16, justifying a finding of Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally represented
Respondent’s Counsel: John Berryhill, Ph.D., Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch: We often see a baseless Complaint that essentially complains that a Respondent is trying to “flip” a domain name for more than the out of pocket registration costs. Where the registration targeted the specific Complainant, such a complaint can have merit. But where the complaint is only about the fact that the Respondent is making a profit without any specific targeting of the Complainant’s mark, the case is wholly without merit. The Policy specifically states for there to be evidence of bad faith, the primary purpose of the registration must have been “to sell to Complainant or a competitor of Complainant”, i.e. not generally (See; Kitchens to Go, LLC v. KTG.COM, Whoisguard Protected / HUKU LLC,WIPO Case No. D2017-2241).
Egregious Bad-Faith Registration: Misleading “Canadian” Copycat Website Passing Off as Complainant
COMME DES GARCONS CO., LTD v. August Elzbieta, CIIDRC Case No. 25527-CDRP
<commedesgarconscanada .ca>
Panelist: Mr. Zak Muscovitch
Brief Facts: The Complainant claims that it is a “world-renowned fashion brand” and that “it has spent considerable sums developing, registering and maintaining their intellectual property”. The Complainant is the registrant of numerous trademarks, including in particular, for COMME DES GARCONS, registered June 15, 1990, and for COMME DES GARÇONS & Design, registered March 5, 1997. The Complainant operates its official website at the domain name <comme-des-garcons .com>. The disputed Domain Name was registered on June 13, 2024. The Complainant alleges that the Registrant registered and is using the Domain Name “to sell counterfeit versions of the Complainant’s goods” and is “prominently using Complainant’s trademark” on the Registrant’s Website.
The Complainant further alleges that the disputed Domain Name has been used for a website which “intentionally attempts to confuse consumers into the fraudulent believe that the website and the products on the website are manufactured by or otherwise endorsed by the Complainant to allow Registrant to sell the counterfeit items on its site bearing infringements of Complainant’s registered trademarks”, and that the Registrant’s Website appears to belong to the Complainant as a result of its prominent use of the Complainant’s Trademarks and sale of items that appear to be made by the Complainant. The Registrant did not respond to the Complaint though duly notified by CIIDRC of the commencement of proceedings.
Held: None of the possible indicia of “legitimate interest” as set out in the Policy appear to apply to the Registrant’s registration and use of the Domain Name. The Registrant appears to have registered a Domain Name specifically selected because of the Complainant’s Mark and then used it to pass his website off as the Complainant’s in order to deceive consumers. The Registrant has not responded to the Complaint and therefore has not come forward with any explanation of his registration and use of the Domain Name other than in order to misdirect consumers and trade off of the Complainant’s Trademarks. Accordingly, the Panel finds that there is no evidence that the Registrant has a legitimate interest in the Domain Name.
Further, given the facts and circumstance of the case, it is obvious that the Registrant registered the Domain Name in bad faith. The Registrant’s Website intentionally employs a Domain Name which conveys that it is the “Canadian” version of the Complainant’s official website, mimics the look and feel of the Complainant’s official website, uses the Complainant’s trademarks throughout in an effort to pass itself off as the Complainant’s website, and provides no indication whatsoever that the Registrant’s Website is owned by the Registrant as opposed to the Complainant itself. This is clearly an egregious bad faith registration and use of the disputed Domain Name that causes harm to both the Complainant and to consumers who are likely to be deceived by the Registrant.
Transfer
Complainant’s Counsel: Alexa Sussmane
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Many thanks to our Editor for generously including this .ca case in this week’s digest, despite it being undeserving. As you can see, I was the Panelist in this case.
Panel: Case is Well Beyond the Panel’s Limited Jurisdiction Under the Policy
AMTD Group Inc. v. Sidharth Saigal, ADNDRC Case No. HK-2502014
<lofficieluk .com>
Panelist: Mr. Peter Müller (Presiding), Mr. Douglas Clark and Mr. Ankur Raheja
Brief Facts: The Complainant is the owner of numerous trademark registrations for “L’OFFICIEL” in numerous countries, that includes the EU registrations dated 5 August 2023, and 24 September 2024. The Complainant’s trademarks are used in connection with the fashion and lifestyle magazine L’Officiel, (first published in Paris in 1921) and is presently distributed in a number of jurisdictions including, the United Kingdom (UK). The UK market is addressed through the website available at <lofficiel .co .uk>, which predates the registration date of the disputed Domain Name. The Magazine was published by Les Editions Jalou (LEJ), a limited company incorporated in France in 1984. In early 2022, the Complainant’s group acquired LEJ and LEJ granted a perpetual, irrevocable, exclusive, royalty-free and sub-licensable license to the Complainant with regards to, among others, the use, display and application of both its plain word mark “L’OFFICIEL” and its stylized and composite forms registered globally. LEJ and the Respondent are, among others, parties to a license agreement dated June 2018 relating to the distribution of the Magazine in the states of the Gulf Cooperation Council.
The Domain Name was registered on 24 May 2022 and is being used in connection with a website that reproduces the Complainant’s logo and publishes content expressly associated with the Complainant’s publication, L’Officiel, which is aimed at the UK market. The Complainant states that it “has not authorised, licensed or otherwise permitted any party, including the Respondent, to use the AMTD L’OFFICIEL Marks or other similar marks. The Complainant alleges that the disputed Domain Name is misleading users into believing that they are accessing the United Kingdom edition of the Complainant’s Magazine. The Respondent contends that the present dispute falls outside the scope of the Policy. It states that it is the “bonafide holder of valid Trademark and Domain Name Registrations in the brand ‘L’Officiel UK’ and the disputed Domain Name <lofficieluk .com> since 27 May 2022”, and that it has built a strong presence for its trademark “in the United Kingdom, investing approximately GBP 250,000 in brand promotion, advertising, and literature over the last few years.”
Held: The Panel finds the Respondent was not a licensee of the Complainant and lacked authorization to use the L’OFFICIEL mark in the UK. However, the Complainant did not hold UK trademark rights predating the Domain Name registration. Although the Respondent likely knew of the Complainant’s rights from prior dealings and a 2018 license agreement (which did not mention UK rights), that knowledge means the Domain Name was technically registered in bad faith under the Policy. The Respondent’s claimed UK trademark only transferred into its name after the Complaint was filed (1 July 2025), and the Complainant’s own trademark filings date from 2023 and do not predate the Domain Name registration; no unregistered trademark claim was advanced. The Respondent claims over GBP 250,000 investment and years of developing a UK edition, undermines an initial impression of cybersquatting, but provides little evidence. The Complainant’s <lofficiel .co .uk> predates the Domain Name and the Respondent’s UK filing, so the Respondent’s trademark defense may be contestable under national law.
On the record of the present case, namely the statements and documents submitted by the Parties, are underlying disputes regarding trademark rights and usage, trademark infringement, their legal consequences and effects, and related issues under UK law. The present case is well beyond the Panel’s limited jurisdiction under the Policy, which was adopted to address cybersquatting. It is evident from the record that this dispute involves broad factual and legal issues regarding trademark rights and usage under UK law, and not only the more narrowly framed questions that can be decided under the Policy, which was never intended to serve as a vehicle for adjudication of traditional trademark disputes. Domain name disputes such as the present are more appropriately decided by traditional means as they turn on questions of fact that cannot be resolved on the basis of the parties’ statements and documents filed in a summary proceeding, and on questions of law beyond the limited scope of the Policy.
Complaint Denied
Complainant’s Counsel: Clifford Chance, Hong Kong
Respondent’s Counsel: Scriboard, India
Case Comment by ICA General Counsel, Zak Muscovitch: Congratulations to the three-member Panel which included our Editor, Ankur Raheja. This case was indeed noteworthy for its clear and responsible rejection of the Complaint as being outside of the limited scope of the UDRP.
As noted by UDRP Perspectives at 0.1, 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.
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). See also 2.10 of this Document (“Free Speech”).
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.
Of course, complexity alone per se is not necessarily a reason to dismiss, however. 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.
Complex Dispute: Panel Notes Inconclusive Evidence and Arguments
Arla Foods Amba v. Shah Wazeer, CAC Case No. CAC-UDRP-107830
<orlafoods .com>
Panelist: Mr. Michele Antonini
Brief Facts: The Complainant, constituted in 2000, claims to be the fifth-largest dairy company in the world and a cooperative owned by more than 12,500 dairy farmers. It sells its milk-based products under its famous brands ARLA, LURPAK, CASTELLO, APETINA and others. The Complainant has also registered a number of domain names containing the term “ARLA” and “ARLA FOODS” like for example <arlafoods .com>, <arla .com>, <arlafoods .co .uk>. The Complainant is the owner of the registered trademarks ARLA and ARLA FOODS in numerous countries all over the world including Pakistan (registered on September 18, 2008) where the Respondent resides. The disputed Domain Name was registered by the Respondent on March 11, 2025 and is used in a website which shows the Respondent’s products bearing the ORLA sign, namely juices, flavored milk and ultra-heat treated milk. The Respondent submits that ORLA forms part of his trading name and he filed a trademark application for ORLA APPLE in Pakistan in 2010.
The Complainant alleges that the Respondent’s use of a misspelled version of the Complainant’s mark indicates an attempt to capitalize on users’ typographical errors. A prior version of the Respondent’s website displayed a logo similar to the Complainant’s logo and provided information about drinks (including flavored milk), which the Complainant says cannot be considered a bona fide offering of goods or services. The Respondent contends he has never tried to profit from the Complainant’s trademark because he considers ORLA different from ARLA, and does not sell or advertise cheese, yogurt or other dairy products (his primary business concerns juices). The Respondent further contends that the Respondent says he made significant financial and intellectual investments in the ORLA name and therefore has a legitimate interest in the disputed Domain Name, is not using the domain name to divert traffic to a site unconnected with the Complainant nor exploiting the Complainant’s reputation to generate business.
Held: In the Panel’s opinion, the Respondent’s company name ORLA FOODS & BEVERAGES, under which he carries out his business in Pakistan since 2010, might be considered as evidence of the Respondent’s legitimate interest in the disputed Domain Name. However, the Panel considers that this is a complex dispute, where the evidence and arguments of both Parties are not conclusive. While there is a similarity between the disputed Domain Name and the Complainant’s trademark and domain name, and some factors in this case may seem more than coincidental pointing to a possible target of the Complainant and its prior intellectual property rights, other factors may point to consider that the Respondent independently chose the names “ORLA” and “ORLA FOODS & BEVERAGES” for its business with no intention of taking advantage of the Complainant’s prior rights.
Furthermore, the Panel considers that this case may concern a much broader intellectual property or unfair competition dispute between what appear to be two businesses with alleged competing legitimate interests. For these reasons, the Panel considers that this case exceeds the relatively limited “cybersquatting” scope of the Policy and would be more appropriately addressed by the courts of competent jurisdiction. The limited written procedure provided under the Policy is not best suited to resolving this case, and the Parties would find other more suitable remedies, which may be available to them. In view of the above, and without prejudice to the right of the Complainant to submit the dispute to the courts of competent jurisdiction, the Panel finds that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in the disputed Domain Name.
Complaint Denied
Complainant’s Counsel: Abion GmbH
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This is another case where the Panel deserves credit for its responsible dismissal of the Complaint on the basis of the limited scope of the UDRP. Although the Panel duly noted that there were evidentiary aspects of this case that “may seem more than coincidental pointing to a possible target of the Complainant and its prior intellectual property rights”, the Panel also noted that there were “other factors may point to consider that the Respondent independently chose the names “ORLA” and “ORLA FOODS & BEVERAGES” for its business with no intention of taking advantage of the Complainant’s prior rights”.
Accordingly, this wasn’t a “clear case” of cybersquatting that the Panel was required to resolve under the Policy. Rather, as the Panel to its credit noted, “this case exceeds the relatively limited “cybersquatting” scope of the Policy and would be more appropriately addressed by the courts of competent jurisdiction”.
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.