Panel Rebukes “Doomed” Complaint Where Domain Predates Complainant by 12 Years
The disputed domain name was registered in 2010 — fully twelve years before the Complainant came into existence and fourteen years before its claimed first use. The Complainant went further and expressly disclaimed any allegation that the Respondent registered the domain name with knowledge of, or intent to target, its trademark. That concession was fatal. Continue reading commentary here.
AI.com Domain Name Sold
For Record-Breaking $70 Million
Read the detailed article at DNW.com and also AI.com before the $70 million sale
We hope you will enjoy this edition of the Digest (vol. 6.8) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel Rebukes “Doomed” Complaint Where Domain Predates Complainant by 12 Years (zember .com *with commentary)
‣ UDRP is Not a Safety Net for Missed Renewals (5starreview .com *with commentary)
‣ Recklessness in Bringing a UDRP Complaint amounts to RDNH (voicentric .com *with commentary)
‣ Majority Draws Critical Line between Knowledge and Targeting (barracudaai .com *with commentary)
‣ Second AIGENT Case Gets the Targeting Analysis Right; Earlier Transfer Decision Missed the Mark (aigentapp .com *with commentary)
‣ Thin Proof of Common-Law Rights and Misleading Record Lead to Denial and RDNH (anyformat .com *with commentary)
Panel Rebukes “Doomed” Complaint Where Domain Predates Complainant by 12 Years
Zember LLC v. Domain Manager, eWeb Development Inc., WIPO Case No. D2025-5211
<zember .com>
Panelists: Mr. Andrea Mondini (Presiding), Mr. David H. Bernstein and Mr. W. Scott Blackmer
Brief Facts: The Complainant, formed on October 10, 2022, operates a commercial real estate development and leasing business under the ZEMBER mark. The Complainant owns the United States trademark for ZEMBER for various real estate-related services, which was registered on September 10, 2024, and claims first use in commerce as of at least June 8, 2024. The Complainant has priority back to December 2, 2022, which is the date it filed its application. The Complainant holds the domain name <zembergroup .com>, which hosts its main website. The Respondent is a corporation active in the website development, hosting and branding business and registered the disputed Domain Name on November 5, 2010. The Complainant’s principal engaged in extensive correspondence with the Respondent between June 2016 and December 2025, attempting to purchase the disputed Domain Name, but the parties did not agree on a price.
The Complainant alleges that there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed Domain Name in connection with a bona fide offering of goods and services. The correspondence with the Respondent confirms that the disputed Domain Name has been treated as a monetizable asset rather than as a source identifier for any goods or services. The Respondent contends that “Zember” is not only a made-up term but is also a surname and was registered by the Respondent because it was capable of lawful use by potential customers of the Respondent and that the domain registration long-predates the existence of the Complainant and its trademark rights. The Respondent further contends that the Complainant was fully aware of this and therefore expressly “does not allege that the Respondent registered the disputed Domain Name with knowledge of the Complainant’s trademark”. This admission by itself renders the Complaint meritless.
Held: The Respondent is in the business of, inter alia, web hosting and website development. As part of that business it registers, maintains, and offers for sale on its website domain names that are coined or made-up, geographic, surnames, combinations of common dictionary words, and acronyms that have potential general appeal to new entrants to the marketplace. Like its predecessors, this Panel accepts that the Respondent’s business model can give rise to rights or a legitimate interest in the domain name as a bona fide offering for the purposes of paragraph 4(c)(i) of the Policy, so long as those domain names are registered for the bona fide purpose of investing in and selling domain names without intent to target the trademark of an existing trademark owner.
Further, the Respondent registered the disputed Domain Name in 2010, i.e., many years before the Complainant was formed, in 2022, and registered its trademark, in 2024. The Complainant expressly admits that it does not allege that the Respondent registered the disputed Domain Name with knowledge of the Complainant’s trademark. Under such circumstances, the Complainant cannot possibly claim that the disputed Domain Name was registered in bad faith by targeting the Complainant’s trademark. Nor has the Complainant shown bad faith use of the disputed Domain Name. The Respondent has shown rights or legitimate interests in the disputed Domain Name for purposes of investing and selling. Since the Respondent has those rights, the Respondent is entitled to sell the disputed Domain Name for an amount that the Respondent believes is appropriate.
RDNH: As explained above, given that the Complainant came into existence and registered its trademark many years after the Respondent registered the disputed Domain Name, there could not have been bad faith registration in bad faith by targeting the Complainant’s trademark. That means that the Complaint was doomed to failure, as the Respondent’s counsel pointed out twice in his correspondence with the Complainant. This issue is not close or subject to ambiguity. Both the Policy and the WIPO Overview 3.0 make it clear that bad faith can only be found if the Respondent acted in bad faith towards the Complainant and its trademark rights. Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an attempt at RDNH.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Muscovitch Law P.C., Canada
Case Commentary Edited and Approved by Editor-in-Chief, Ankur Raheja and ICA General Counsel, Zak Muscovitch:
The disputed domain name was registered in 2010 — fully twelve years before the Complainant came into existence and fourteen years before its claimed first use. The Complainant went further and expressly disclaimed any allegation that the Respondent registered the domain name with knowledge of, or intent to target, its trademark. That concession was fatal.
The Panel reaffirmed a foundational principle reflected in the Policy and confirmed in WIPO Overview 3.1: bad faith registration requires targeting of the complainant’s trademark rights at the time of registration. Where the complainant did not exist — and admits no knowledge or targeting — bad faith registration is legally impossible.
The decision also reinforces the legitimacy of domain investment as a business model. The Panel accepted that registering coined terms, surnames, and otherwise attractive strings for resale can constitute a bona fide offering under paragraph 4(c)(i), provided the registration was not undertaken to target a specific trademark owner. The fact that the domain name was treated as a monetizable asset does not, without more, establish bad faith.
Nor does the Policy operate on a “use it or lose it” theory. The absence of active development cannot retroactively convert a lawful 2010 registration into bad faith where the complainant’s rights arose many years later.
The RDNH finding followed directly from the chronology. The temporal defect was obvious. The issue was neither close nor ambiguous. WIPO Overview 3.1 makes clear that bad faith must be directed at the complainant and its mark. Proceeding in the face of that clear barrier — particularly after failed acquisition efforts — constituted an abuse of the administrative proceeding.
The decision stands as a reminder that the UDRP is not a substitute for purchase negotiations where the domain name predates the complainant’s very existence.
As noted above, Zak Muscovitch, ICA General Counsel, represented the Respondent in this case.
UDRP is Not a Safety Net for Missed Renewals
Kevin James Taylor v. Domain Admin / HugeDomains .com, NAF Claim Number: FA2601002200487
<5starreview .com>
Panelists: Mr. Gerald M. Levine (Chair) , Mr. Dennis A. Foster, and Mr. Robert A. Badgley
Brief Facts: The Complainant owns a U.S. trademark for 5 STAR REVIEW, registered with the USPTO on February 19, 2019. The Complainant asserts that he was the immediate prior registrant of the disputed Domain Name, having held it continuously since 2006 until it lapsed in 2025. The Respondent acquired the disputed Domain Name, somewhere in 2025, in the ordinary course of its domain business and contends that the phrase “5 star review” is a common descriptive expression referring to the highest possible rating in a review system and is universally understood by consumers as describing favorable feedback rather than identifying a unique source. The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name and that the Respondent acquired the domain name in bad faith for the purpose of selling it at a profit, that the registration infringes upon his trademark rights, and that the Respondent’s conduct constitutes cybersquatting.
The Complainant supports these allegations through a series of negative reviews of the Respondent’s business model from third-party consumers and concludes by stating that the domain name was purchased by the Respondent in bad faith to sell at a high profit. The Respondent notes at the outset that instead of presenting evidence that Respondent targeted Complainant’s trademark at the time of acquisition, the Complaint relies heavily on screenshots from third-party consumer review websites and generalized criticism of Respondent’s domain resale business. According to the Respondent, those materials do not establish bad faith registration or use under the Policy and do not satisfy Complainant’s burden of proof. It further adds that expiration and re-registration of descriptive domain names is a lawful and common practice and that the Policy does not provide a remedy for a complainant who allowed a domain name to lapse and later wishes to reacquire it.
Held: The Panel has carefully reviewed the submitted evidence to determine whether the Respondent could be found to have acquired the disputed Domain Name “primarily for a [forbidden] purpose” and finds no evidence that it did. Nor has the Complainant directly or indirectly suggested it was the intended target of the Respondent’s acquisition of the lapsed domain name. The Panel found that it is rather to the contrary. The Respondent saw the availability of <5starreview .com> as an opportunity to add it to its portfolio of generic and descriptive names. That it came at the expense of the Complainant cannot amount to an actionable claim of cybersquatting. See WIPO Overview at Sec. 3.1.1. The fact that there are consumer reviews by third parties who may regard the Respondent’s business model negatively and refer to it as “scums of the earth” and cybersquatters does not add up to evidence in this particular case that the Respondent’s registration and use of <5starreview .com> violates the Policy.
Finally, in arguing that the Respondent is a cybersquatter, the Complainant has a further obstacle to surmount, namely that it failed to timely renew its registration for <5starreview .com> resulting in the domain name returning to the general pool of available domain names. While it does not address this issue directly, the consequences of this lapse are set forth with particular clarity by the registrar in its Registrar’s Registration Agreement. The Registration Agreement reads at Sec. 3B “if the registrant fails to renew the registration agreement “the domain name will be cancelled, and you will no longer have use of that name.” As the Complainant has adduced no evidence of any kind from which it may be inferred that the Respondent acquired <5starreview .com> “specifically… to take unfair advantage of an obviously inadvertent expiration” it has not established the third element of the Policy and the complaint must fail.
Complaint Denied
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Internally Represented
Case Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision addresses a recurring but misplaced theory: that reacquiring a lapsed descriptive domain name and offering it for sale is itself evidence of bad faith. The Panel made clear that it is not.
The disputed domain name consists of the common phrase “5 star review,” a universally understood descriptive expression referring to the highest rating in a review system. The Panel had little difficulty accepting that the Respondent acquired the name as part of its portfolio of generic and descriptive terms. Critically, there was no evidence — direct or circumstantial — that the Respondent targeted the Complainant or its mark when it acquired the name after expiration, and the Complaint did not meaningfully assert such targeting.
Instead, the Complaint relied heavily on third-party consumer criticism of the Respondent’s business model and generalized allegations that domain resale at a profit constitutes cybersquatting. The Panel correctly observed that hostility toward a domain investor’s business model does not substitute for evidence of targeting in the particular case. Screenshots of negative reviews, even those using pejorative language, do not establish bad faith registration or use under the Policy.
The Panel emphasized that the Policy requires proof that a domain name was acquired primarily for a forbidden purpose. On this record, there was none. Consistent with WIPO Overview 3.1, section 3.1.1, the mere acquisition of a domain name for resale — even at a substantial price — does not establish bad faith absent evidence that it was registered to target a particular trademark owner.
The decision also underscores an important structural point about lapse. Once a registrant fails to renew, the domain name returns to the general pool of available names, as expressly contemplated in standard registrar agreements. The Policy does not provide a remedy for a prior registrant who allowed a domain name to expire and later wishes to reacquire it. Nor was there any evidence that the Respondent sought to take unfair advantage of an obviously inadvertent expiration.
The case reinforces two settled principles: descriptive phrases are capable of legitimate portfolio investment, and the UDRP is not a safety net for missed renewals.
Recklessness in Bringing a UDRP Complaint amounts to RDNH
Voicentric Ltd v. Domain Manager, eWeb Development Inc., WIPO Case No. D2025-5200
<voicentric .com>
Panelists: Mr. Jeremy Speres (Presiding), Mr. Andrew D. S. Lothian and Mr. Nicholas Smith
Brief Facts: The UK-based Complainant claims to have used the VOICENTRIC mark since 2002 or 2003 in relation to business-to-business lead generation services in the fields of life and materials sciences. The Complainant asserts that VOICENTRIC is a coined, distinctive term associated exclusively with the Complainant’s business since 2002. The Complainant owns UK trademark VOICENTRIC, registered December 7, 2018, and acquired by assignment in 2024. The Canada-based Respondent registers brandable domain names and offers customers either to buy a domain or a website development package along with a Domain Name. The disputed Domain Name was registered on February 10, 2011, and resolves to a landing webpage. The Respondent has been named as the respondent in seven prior cases under the Policy, succeeding in all of them, with five of the seven cases resulting in findings of RDNH.
The Complaint alleges that the Respondent offered to sell the disputed Domain Name to the Complainant for USD 25,000 and later USD 20,000, far above the Respondent’s out-of-pocket costs associated with the disputed Domain Name. The Respondent contends that it registered the disputed Domain Name eight years before the Complainant obtained its trademark registration and there is no evidence of any prior Complainant reputation that the Respondent would have been aware of. The Respondent further contends that for more than six years, the Complainant repeatedly sought to purchase the disputed Domain Name, escalating its offers from nominal sums to five-figure amounts while agreeing, through the Respondent’s terms and conditions for its quotations, that it was not asserting trademark rights or alleging bad faith, before only belatedly resorting to a UDRP proceeding in bad faith.
Under supplement filing, the Complainant does not allege bad-faith registration in 2011.. The Complainant’s case concerns bad faith use, including passive holding, inflated pricing, and obstruction of the Complainant’s longstanding brand… The Complaint does not rely on the Respondent ‘targeting’ the Complainant in 2011.
Held: Given the conjunctive nature of the bad faith element, requiring the Complainant to prove both bad faith registration and bad faith use, this admission by the Complainant under its supplement filing is fatal to its case. This is in line with the absence of any evidence in the Complaint showing that the Complainant’s mark was used, let alone enjoyed a reputation or any common law rights prior to registration of the disputed Domain Name in 2011. The Respondent’s evidence establishes that the Complainant’s business is not a large one, including archive evidence showing that the Complainant’s website in 2011 expressly stated that it was “relatively small”. In the circumstances, and noting that the Parties operate in jurisdictions far removed from one another and the fact that the Complainant operates in a niche market, there is no evidence in the record suggesting that the Respondent was or should have been aware of the Complainant when it registered the disputed Domain Name.
RDNH: It has been recognised that recklessness in bringing a Complaint can amount to RDNH. See also the WIPO Overview 3.0, section 4.16, wherein it is stated (emphasis added): “facts which demonstrate that the complainant clearly ought to have known it could not succeed…” In this case, the Complaint not only cites the WIPO Overview 3.0, but also uses the Center’s UDRP Model Complaint. The document explicitly states that registration in bad faith is generally considered to be possible only when the domain name registration occurs after your trademark rights accrue, please refer to section 3.8 of the WIPO Overview 3.0.
The Complainant therefore appears to have recklessly filed the Complaint without properly considering the documents it relied upon for filing the Complaint. The Respondent’s counsel fully and clearly explained to the Complainant why the Complaint was futile and in bad faith prior to filing its Response, and called on the Complainant to withdraw the Complaint. The Complainant persisted regardless. In the circumstances, the Panel considers it reckless of the Complainant to have filed the Complaint and to have persisted with it after the Respondent’s counsel’s letter. The Panel concludes that the Complaint was brought in bad faith in an attempt at RDNH.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Muscovitch Law P.C., Canada
Case Commentary Edited and Approved by Editor-in-Chief, Ankur Raheja and ICA General Counsel, Zak Muscovitch:
This case turned on a straightforward but often overlooked principle: the bad-faith element under the Policy is conjunctive. A complainant must establish both bad-faith registration and bad-faith use. Here, the Complainant ultimately did not allege bad-faith registration at all.
The disputed domain name was registered in 2011, years before the Complainant obtained its UK trademark registration. More importantly, under its supplemental filing, the Complainant expressly disclaimed reliance on bad-faith registration and framed its case exclusively around alleged bad-faith use, including passive holding and pricing. That position was fatal. Without proof of bad-faith registration, the third element cannot succeed.
The Panel also found no evidence that the Respondent was or should have been aware of the Complainant in 2011. The Complainant operated in a niche B2B field, in a different jurisdiction, and the record contained no persuasive evidence of reputation or common law rights predating the domain’s registration. Archive evidence even reflected that the Complainant described itself at the time as “relatively small.” In those circumstances, the absence of targeting was not merely unproven; it was implausible.
The Complainant attempted to rely on pricing and alleged passive holding, but as reflected in WIPO Overview 3.1, the mere offer to sell a domain name — even at a five-figure price — does not establish bad faith absent evidence that the domain was registered to target the complainant’s trademark. The Panel rejected the attempt to reframe a failed acquisition strategy as obstruction or abuse.
The RDNH finding flowed from the structure of the case. Recklessness can suffice. WIPO Overview 3.1, section 4.16, notes that RDNH may be found where the complainant clearly ought to have known it could not succeed. Here, the Complainant relied on materials, including the Model Complaint and the Overview itself, that expressly state that bad-faith registration generally requires trademark rights to predate the domain name. Despite this, and despite receiving a detailed pre-Response letter explaining why the Complaint was futile, the Complainant persisted.
Filing a complaint while expressly disavowing bad-faith registration, in a case involving a domain registered years before the complainant’s trademark rights accrued, was found to be reckless and an abuse of the administrative proceeding.
As noted above, Zak Muscovitch, ICA General Counsel, represented the Respondent in this case.
Majority Draws Critical Line between Knowledge and Targeting
Barracuda Networks, Inc. v. Mark Levine, WIPO Case No. D2025-4795
<barracudaai .com>
Panelists: Mr. Robert A. Badgley (Presiding), Ms. Diane Cabell and Mr. Richard W. Page (Dissenting)
Brief Facts: The Complainant is a cybersecurity firm that claims it has used the BARRACUDA mark since 2002 and is well known in the industry. The Complainant holds a registered trademark for the word mark BARRACUDA with the USPTO registered on April 7, 2015. The Complainant’s main website is located at <barracuda .com> and the Complainant’s site makes reference to its AI-powered platform “BarracudaONE.” The Complainant does not elaborate on when it began to offer such goods and services, while the Respondent provides evidence of the Complainant using the term AI at various points in time from May 2024 to the present. The Respondent, a domain name investor, acquired the Domain Name on May 31, 2024 “through a public GoDaddy expired-domain auction.” The Domain Name resolves to a parking page stating that the Domain Name is available for purchase at the price of USD 4,995.
The Complainant asserts that a simple Google or other search for “Barracuda” at or around the time of the acquisition would have clearly revealed the Complainant’s website and use of the BARRACUDA mark. Furthermore, cases have found that domain investors registered and used domain names in bad faith in instances where they should have known of Complainant’s mark, such that they must ‘accept the consequences of turning a blind eye … through failure to conduct adequate searches. The Respondent contends that ordinary Internet users would not automatically assume that Domain Name is connected to the Complainant. Several objective facts show that this case does not involve an “obvious” trademark match, since “Barracuda” is a dictionary word used by many unrelated parties, including at least four businesses that use “Barracuda” in connection with AI offerings.
Held: Given Complainant’s business, viz., cybersecurity, and given Respondent’s acknowledged status as a domainer, the Panel majority would be prepared to find, on the record and on a balance of probabilities, that Respondent was more likely than not aware of Complainant’s BARRACUDA mark. Knowledge of a trademark, though it may be evidence of targeting, is not necessarily the same thing as targeting that mark. If BARRACUDA were a fanciful mark, the Respondent’s mere knowledge of the mark may have been sufficient to yield a number of other conclusions, such as likely targeting, leading to the ultimate finding of bad faith registration. As should be clear from the guidance in “WIPO Overview 3.0”, section 3.2, the question before this Panel is rather fact-intensive and nuanced. Things like the composition of the Domain Name (including any differences from the subject trademark), the strength of the mark, the fact that the mark is also a dictionary word, the fact that the mark is used by other firms, the conduct of the Respondent, the surrounding context of the Respondent’s overall business plan, the precise use to which the Domain Name has been put, and so forth, may be brought to bear on the Panel’s ultimate decision about targeting.
The Panel majority cites several points in support of its conclusion that bad faith registration and use has not been established in this case: Respondent’s account of his business model appears plausible and there is no evidence in the record of Respondent registering an obviously trademark‑abusive term; Respondent has registered a number of domain names comprised of dictionary words plus “ai,” which tends to undermine the argument that Respondent was targeting the Complainant; the record is thin on the degree of fame Complainant’s BARRACUDA mark enjoyed in 2024, and it appears that there was little or no evidence that Complainant’s BARRACUDA mark was associated with AI in May 2024; BARRACUDA is a dictionary word, making the Domain Name potentially attractive to individuals or businesses other than the Complainant; and the Respondent points out that he has done nothing with the Domain Name except to advertise it on a parking page as being for sale (for USD 4,995), with no redirection to a pay‑per‑click page, no use as a false email address for fraud, no attempt to set up a website impersonating the Complainant, and no effort to reach out to the Complainant or a competitor to sell the Domain Name.
Dissenting Opinion: This Panel dissents from the majority decision because it is wrongly decided. The Complainant should prevail. Respondent is a United States resident who is a sophisticated, professional domainer with obvious access to the Internet. The Complainant has registered the BARRACUDA mark with the USPTO, which registry is readily available on the Internet. Any posturing by the Respondent that he did not know of Complainant’s trademark rights when offering the Domain Name for sale is not credible. Application of WIPO Overview 3.0, section 3.2.2 demonstrates that Respondent knew or should have known of Complainant’s trademark rights. Application of WIPO Overview 3.0, section 3.2.3 denies Respondent from taking a position based upon willful blindness. In the emerging secondary market for registered domain names, the risk of losing a domain name in a UDRP proceeding should fall on the professional domainer seeking to profit off another’s trademark rights, not on the trademark owner who built the brand.
Complaint Denied (with dissenting opinion)
Complainant’s Counsel: KXT LAW, LLP, United States
Respondent’s Counsel: Self-represented (USA)
Case Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This split decision turns on a distinction that is often blurred but doctrinally essential: knowledge of a mark is not the same as targeting of a mark.
The majority did an excellent job articulating this principle. Even assuming that the Respondent, a professional domainer, was aware of the Complainant’s BARRACUDA mark when he acquired <barracudaai.com> in 2024, that awareness did not end the inquiry. As the majority explained, knowledge of a trademark, though it may be evidence of targeting, is not necessarily the same thing as targeting that mark. If BARRACUDA were a fanciful, coined term with no dictionary meaning, mere knowledge might more readily support an inference of targeting and bad faith. But BARRACUDA is an arbitrary mark identical to an ordinary dictionary word. That reality materially changes the analysis. A dictionary word opens up the possibility of independent interest by others for reasons unrelated to the Complainant.
Consistent with WIPO Overview 3.1, section 3.2, the majority approached targeting as a nuanced, fact-intensive inquiry. It examined the composition of the domain name, the strength and scope of the mark, third-party uses, the Respondent’s broader portfolio pattern of dictionary-word-plus-“ai” registrations, and the actual use of the domain. The Respondent did nothing with the name beyond offering it for sale at a fixed price. There was no PPC monetization tied to the Complainant, no impersonation, no fraud, and no attempt to solicit the Complainant. On this record, targeting was not established.
The dissent’s error lies in collapsing awareness into targeting and effectively importing a negligence or strict-liability standard into the Policy. The “knew or should have known” formulation, particularly when applied to a common dictionary word, risks transforming the UDRP from a targeting-based regime into one where professional domain investors bear automatic risk whenever a registered mark exists somewhere in the trademark registry.
That is not the consensus reflected in WIPO Overview 3.1. Sections 3.2.2 and 3.2.3 address willful blindness in circumstances suggestive of targeting, but they do not create a duty on domain investors to avoid registering any domain that corresponds to a registered mark, especially where the term is a common word used by multiple parties. The dissent’s approach would effectively grant trademark owners of dictionary words a near-monopoly over domain registrations combining that word with descriptive or trending modifiers such as “ai,” regardless of context.
Moreover, the dissent shifts the burden in a manner inconsistent with the Policy. It is the complainant’s burden to prove targeting and bad faith registration. The majority required actual evidence or persuasive inference of targeting; the dissent would infer bad faith primarily from the Respondent’s sophistication and the existence of a registered mark. That approach risks undermining the established distinction between arbitrary/fanciful marks and dictionary-word marks, a distinction long recognized as relevant in assessing targeting.
In short, the majority applied the correct framework: bad faith requires proof that the domain was registered to take unfair advantage of the complainant’s mark. The dissent would have replaced that standard with one closer to “professional domainers register at their peril,” a proposition not supported by the Policy or prevailing jurisprudence.
Second AIGENT Case Gets the Targeting Analysis Right; Earlier Transfer Decision Missed the Mark
Ubiquity Global Services, Inc. v. Kyler Ferris / Year, NAF Claim Number: FA2601002201478
<aigentapp .com>
Panelist: Ms. Lynda M. Braun
Brief Facts: The Complainant, a Delaware corporation, claims that it is the owner of registered and common-law rights in the trademark AIGENT in connection with software products and services, which it and its predecessor have consistently used in interstate commerce in the United States since 2018. The Complainant owns a trademark registration in the United States for its AIGENT trademark, registered on September 22, 2020. The Complainant also has registered trademarks in the European Union and Australia. The Respondent is a real estate broker and entrepreneur based in Texas, USA, who claims that the disputed Domain Name, registered in mid-July, 2025, was used for a real estate-specific software concept titled “Agent App.” On October 2, 2025, and December 29, 2025, Complainant’s counsel sent cease-and-desist letters to Respondent, explaining that Respondent’s unauthorized use of the AIGENT Mark in the disputed Domain Name.
The Complainant alleges that the Respondent has registered and used the disputed Domain Name in bad faith as Respondent has used the disputed Domain Name to divert web traffic for commercial gain and to disrupt Complainant’s business by creating consumer confusion. The Respondent contends that the term “aigent” is a stylized contraction of “AI agent,” which is descriptive in the field of artificial intelligence and that the disputed Domain Name was not designed for services offered by the Complainant. The Respondent further contends that it did not market the product as “AIGENT” but instead consistently used “Agent App” as the project name in a real estate context, and after receiving notice of this dispute, Respondent claims that it took steps to avoid any potential confusion, including discontinuing or taking offline any prior content associated with the disputed Domain Name, without admitting liability or wrongdoing.
Held: While the Complainant has established that it owns rights in the AIGENT Mark in the United States and other jurisdictions worldwide in connection with its specific software services, the question before the Panel is how broad are those rights, since Respondent’s use is for a different purpose. As Respondent asserts in its Response, the term “aigent” is generic. A cursory Google search of the term reveals many uses of the term “aigent” by many different entities. Thus, the Panel concludes that while “aigent” is not per se a dictionary term, it is a coined term combining the term “ai” with “agent” and is commonly used by many entities in the current AI space. As long as the registrant of a disputed Domain Name does not use the term to target a third party’s trademark rights, the term may be used with impunity. In sum, the Panel finds that Respondent has established that it has rights and legitimate interests in respect of the disputed Domain Name.
First, the Respondent set up a website using the disputed Domain Name within 3 weeks of registering the disputed Domain Name, in terms of paragraph 4(c)(1) of the Policy. Second, the Respondent argues that the term “aigent” is not uniquely associated with the Complainant since it is a generic term, plus the services Respondent provides does not compete with those of the Complainant. Third, the Panel accepts Respondent’s statements that it did not register or use the disputed Domain Name to take advantage of and target the trademark rights of the Complainant. The Respondent claims, and the Panel finds credible, the statement that the Respondent had never heard of the Complainant or its AIGENT Mark when registering the disputed Domain Name. Lastly, Respondent states that after receiving notice of this dispute, it took steps to avoid any potential confusion, including discontinuing or taking offline any prior content associated with the disputed Domain Name.
Complaint Denied
Complainant’s Counsel: Julie M. Latsko of Royer Cooper Cohen Braunfeld LLC, USA
Respondent’s Counsel: Self-represented
Case Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
ICA digest vol 6.6, covered the Transfer decision in the earlier matter of <aigenthelp.com>, here.
The denial of <aigentapp.com> reflects a careful and correct application of the Policy’s targeting requirement — something that was notably lacking in the earlier <aigenthelp.com> transfer decision covered in ICA Digest Vol. 6.6.
Here, the Panel confronted the threshold issue directly: what is the nature and scope of rights in the term “aigent”? After noting that a simple search reveals widespread third-party use of the term, the Panel concluded that while “aigent” is not a traditional dictionary word, it is plainly a ccontraction of “AI” and “agent,” and is commonly used by multiple entities. That factual finding is critical. It limits the reach of the Complainant’s trademark rights and frames the analysis properly.
The Panel then articulated the correct principle: the relevant question is whether the registrant used the term to target the Complainant’s trademark rights. That is the heart of the Policy. Similarity alone does not establish bad faith. Nor does trademark ownership, standing alone, confer exclusive rights over every domain incorporating similar descriptive components.
The Respondent launched a website within weeks of registration for a real-estate-specific “Agent App” concept. The Panel found credible the Respondent’s assertion that he had never heard of the Complainant. There was no evidence of impersonation, diversion, or an attempt to capitalize on the Complainant’s goodwill. When notified, the Respondent took down content to avoid confusion. On this record, the absence of targeting was clear.
The contrast with the earlier <aigenthelp.com> decision is stark. In that case, the panel effectively treated “aigent” as if it were uniquely proprietary, without adequately engaging with its descriptive construction and the evidence of widespread third-party usage. That analytical gap led to an overextension of the Complainant’s trademark rights and a failure to distinguish between similarity and targeting. The Policy does not operate on a presumption that a registrant who adopts a term derived from common components must have been aiming at a particular trademark owner.
The present decision demonstrates what a proper bad-faith analysis requires: attention to marketplace usage, careful consideration of the nature of the term, and concrete evidence of targeting. Where those elements are absent, the complaint must fail.
Thin Proof of Common-Law Rights and Misleading Record Lead to Denial and RDNH
anyformat sl v. Jesvin Jose, WIPO Case No. D2026-0007
<anyformat .com>
Panelist: Mr. Lawrence K. Nodine
Brief Facts: The Spanish Complainant has developed AI based services to automate the extraction of information contained in documents, presentations, or voice recordings. The Complainant registered the Domain Name <anyformat .ai> on February 18, 2024, and began using ANYFORMAT as a trademark for its information extraction service. On September 10, 2025, the Complainant filed a trademark application with the EUIPO to register the trademark, which is currently pending registration. The Respondent purchased the disputed Domain Name on November 30, 2025, which resolves to a website providing the functionality to convert uploaded files to the PDF format. The Complainant alleges that, with an intent to profit, the Respondent contacted the Complainant to discuss the sale of the disputed Domain Name, after copying the Complainant’s website.
The Complainant claims common-law rights from use of the mark since 2024 and alleges the Respondent copied the Complainant’s landing page with “similar messaging,” redirecting users to third-party sites offering file-to-PDF conversion, suggesting a low-effort, repurposed page rather than a genuine offering. The Respondent contends that the Respondent selected the disputed Domain Name because “any format” is a common descriptive phrase widely used in the technology sector to denote compatibility or conversion between multiple file formats. The Respondent further contends that he has never listed the disputed Domain Name for sale and never solicited any buyer. It was a broker representing the Complainant who initiated communications via email on December 21, 2025, inquiring about Respondent’s interest in selling the disputed Domain Name.
Held: The Complainant contends that it has unregistered rights, but it has not submitted sufficient evidence to support this claim. The Complainant does not offer, for example, any evidence of the quantity of its sales (in units or value), marketing, or geographic range. Consequently, the evidence is insufficient to support a finding of unregistered rights. While there may be additional evidence the Complainant could have provided, and while its rights may eventually vest assuming its application proceeds to registration, the Panel finds based on the evidence provided, the first element of the Policy has not been established. The Panel further finds that the Complainant has not established a prima facie case that Respondent lacks rights or legitimate interests in the disputed Domain Name. The evidence doesn’t show the Respondent copied the Complainant’s landing page or its messaging. No text or images were literally copied; the Respondent’s content discusses converting file formats, not extracting data with AI.
The Complainant also failed to prove by a preponderance of the evidence that the disputed Domain Name was registered and used in bad faith. The Respondent denies any knowledge of the Complainant or its trademark when it purchased the disputed Domain Name. This denial is plausible because the Complainant has offered no evidence about the extent of its reputation. In the absence of any evidence about the scale of Complainant’s activities under its nascent mark there is little basis for the Panel to reject Respondent’s claim that he did not know about the Complainant or its trademark when he purchased the disputed Domain Name. Moreover, the Respondent has submitted evidence that several unrelated third parties use the phrase “any format converter” to describe services that assist users to change the format of digital files. This evidence indicates the plausibility of Respondent’s assertion that he registered the disputed Domain Name based on its descriptive connotations.
RDNH: Panels finds that the Complainant has provided “false evidence, or otherwise attempt[ed] to mislead the Panel …”. WIPO Overview 3.0, section 4.18(iv). There is no evidence that Respondent “copied Complainant’s website”. This failed contention is not enough to warrant a finding of RDNH, but the further contention that Respondent contacted the Complainant to propose a sale is misleading. The Complainant submitted Respondent’s December 30, 2025 email acknowledging a prior message from “a broker you had appointed.” In response, the Respondent provided a December 21, 2025 email from a broker for an anonymous buyer, asking if Respondent would sell the disputed Domain Name.
The evidence supports the conclusion that the Complainant initiated communications to discuss a sale of the disputed Domain Name. The Complainant’s allegations to the contrary are at a minimum misleading if not false. It was also misleading for the Complainant to submit a copy of Respondent’s December 30, 2025 email without acknowledging, denying, or clarifying its prior communications with the Respondent via the broker. The Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking. The Panel emphasizes that this finding is based on the Complainant advocacy of misleading evidence.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
Case Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision underscores the evidentiary burden that accompanies claims of unregistered trademark rights.
The Complainant relied primarily on alleged common-law rights in ANYFORMAT dating back to 2024. As reflected in the updated WIPO Overview 3.1, section 1.3, a complainant must provide concrete evidence that a claimed mark has acquired distinctiveness through use — such as sales figures, advertising expenditures, media recognition, and geographic scope. Here, there were no sales figures, no marketing data, and no evidence of consumer recognition. A pending EU trademark application did not cure that deficiency. On this record, the Panel found that the first element had not been established.
The remaining elements were also unsupported. “Any format” is facially descriptive in the context of file conversion and compatibility services, and the Respondent submitted evidence of widespread third-party usage of similar phrasing. The Panel found no persuasive evidence that the Respondent copied the Complainant’s site or targeted its business, and the Respondent’s denial of knowledge was plausible given the absence of evidence concerning the Complainant’s market presence.
The communications record further undermined the Complaint. The Complainant alleged that the Respondent initiated contact to sell the domain name, but the evidence showed that a broker acting for the Complainant first approached the Respondent. The Complainant’s presentation of the correspondence did not clearly acknowledge that sequence of events. The Panel regarded this as misleading and, in the circumstances, concluded that the Complaint had been brought in bad faith.
The RDNH finding is therefore unsurprising. While panels are careful not to equate a failed complaint with abuse, the combination of thin evidence of rights, overstatement of alleged copying, and a materially incomplete account of the sale communications crossed the line. The case serves as a reminder that complainants — particularly when internally represented — must present the full factual record candidly and ensure that serious allegations are supported by evidence before invoking the Policy.
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.