Panel Rejects “Topical Use” Requirement for Descriptive Domain Investors; RDNH Found
This decision squarely rejects a recurring and incorrect theory advanced in UDRP complaints: that a domain investor must use a domain name in connection with goods or services corresponding to the ordinary meaning of the words in the domain, either as to that particular name or across its portfolio. The Panel made clear that no such requirement exists under the Policy. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 6.9) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel Rejects “Topical Use” Requirement for Descriptive Domain Investors; RDNH Found (pizzaman .com *with commentary)
‣ Third-Party Use Undermines Inference of Targeting (dataverse .com *with commentary)
‣ Bad Faith Absent Targeting? (hcltech .ai *with commentary)
‣ Bad Faith Registration Requires Both Awareness and Targeting (sunleaf .com *with commentary)
‣ Panel Rejects Burden-Shifting and Presumed Bad Faith (suncastic .com *with commentary)
Panel Rejects “Topical Use” Requirement for Descriptive Domain Investors; RDNH Found
El Centro Foods, Inc. v. Support, Syncpoint, Inc., WIPO Case No. D2026-0038
<pizzaman .com>
Panelist: Mr. David H. Bernstein
Brief Facts: The Complainant is the owner of four pizzerias in California operated under the name “Pizza Man” and the domain name <pizzamanpizzeria .com>. The Complainant holds three United States trademark registrations incorporating the phrase “Pizza Man,” all registered in 1981 (claiming first use since 1973) and disclaiming any exclusive rights in the term “pizza”. The Respondent registered the disputed Domain Name on April 18, 1998 and it resolves to a webpage advertising the disputed Domain Name was available for sale. On February 21, 2023, the Complainant contacted the Respondent via WhatsApp, asserting trademark rights in “Pizza Man” and expressing interest in purchasing it; during a subsequent phone call, the Respondent offered the Domain Name for US $70,000, which the Complainant declined.
The Complainant alleges that it is “not unreasonable to believe Respondent registered the disputed Domain Name to ensure that he could then sell it to Complainant” because the Complainant had used the PIZZA MAN mark in commerce since 1973 and its PIZZA MAN brand is well-known. The Respondent contends that the term “pizza man” is a common English expression associated with pizza preparation, sale, and delivery and it is not required to operate a pizza business to have rights or legitimate interests in the disputed Domain Name. The Respondent further contends that the negotiations to purchase the disputed Domain Name initiated by the Complainant in February 2023 cannot retroactively create bad faith and that the Complainant’s decades-long delay in bringing this case undermines its claim of abusive registration.
Held: Many UDRP panels have held, investing in domain names composed of descriptive or commonly used phrases can be a bona fide use. Contrary to the Complainant’s arguments, a domain name investor does not have to offer goods (here, pizza-related goods or services) that are related to the dictionary meaning of the domain names in the investor’s portfolio. The phrase “pizza man” is a common term that is widely used in connection with the preparation, delivery, or sale of pizza. The Panel has confirmed that there are many uses of “pizza man” and “pizzaman” on the Internet (including for pizzerias that appear to be located in such disparate places as Alaska, Kentucky, Maryland, Minnesota, New Hampshire, New Jersey, New York, Pennsylvania, Utah, Vermont, and Wisconsin) as well as a U.S. trademark registration for WHO’S YOUR PIZZA MAN for “restaurant services featuring pizza,” U.S. Reg. No. 3,897,152, that coexists with the Complainant’s registrations. That a complainant owns a trademark in a descriptive term does not automatically transform a respondent’s use into one that is illegitimate.
The Complainant claims the Respondent registered the Domain Name in bad faith by knowing or should have known of its trademarks. However, no supporting facts are provided. Given that the Complainant operates only four local restaurants in Los Angeles and uses a common phrase widely used by other pizza businesses, this claim is not credible. Nor are the other circumstances that Paragraph 4(b) of the Policy identifies as evidence of bad faith present in this case. The Respondent has not used the disputed Domain Name in a manner that would cause consumer confusion, as the website to which the disputed Domain Name resolved did not offer any goods or services that consumers could mistakenly believe are offered by or affiliated with the Complainant. The fact that the Respondent offered the disputed Domain Name for sale for US $70,000 does not by itself establish bad faith use.
RDNH: As the Complainant acknowledged, it filed the Complaint only after it attempted to buy the disputed Domain Name but did not want to meet the Respondent’s asking price. The Complainant had to be aware that its use of the PIZZA MAN mark is not exclusive, as the Respondent identified several other restaurants with PIZZA MAN in their business name or domain name when it corresponded with the Complainant about the possible sale of the disputed Domain Name. Additionally, the Complainant offered only conclusory statements to show that its trademarks and business are recognized by consumers, and no evidence to show that the Respondent knew of its trademarks when it registered the disputed Domain Name more than twenty-five years ago.
Given the lack of evidence that the Complainant presented to support its argument for bad-faith registration, the Complainant should have known that it could not succeed on all three required elements.
Complaint Denied (RDNH)
Complainant’s Counsel: Beitchman & Zekian, P.C., United States
Respondent’s Counsel: Self-represented
Case Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision squarely rejects a recurring and incorrect theory advanced in UDRP complaints: that a domain investor must use a domain name in connection with goods or services corresponding to the ordinary meaning of the words in the domain, either as to that particular name or across its portfolio. The Panel made clear that no such requirement exists under the Policy.
The phrase “pizza man” was found to be a common expression, widely used in connection with pizza preparation and delivery. The Panel independently confirmed that there are many third-party uses of “pizza man” and “pizzaman” online. This is particularly interesting because the Panel, appropriately in the circumstances, conducted its own independent research to uncover various third party usage of the term, including in a registered trademark. This evidence appears to have been crucial in confirming the Respondent’s contention that the phrase “pizza man” is a common term that is widely used and in part served to undermine the Complainant’s contention that it was the target of the registration. Nevertheless, it is unclear why no affirmative finding of legitimate interest was found in favour of the Respondent given the foregoing. The Panel did find that the Complainant had failed to establish the second element of the Policy, however the Panel did not make an affirmative finding of rights and legitimate interest, which it could have done under these facts.
As noted in UDRP Perspectives at 2.1, Panels may be tempted to skip over determining whether a Respondent has rights and a legitimate interest. This is often done for reasons of judicial economy, as strictly speaking a case can be dismissed on one prong of the three-part test and therefore the decision need not address any additional, extraneous grounds. Nevertheless, Panelists should generally make an affirmative finding of rights and legitimate interest if the facts so warrant, due to the implicit obligations of Rule 4(c). Paragraph 4(c) of the Policy expressly entitles a Respondent to “prove” its rights and legitimate interests and implicitly directs a Panel to make such a finding if so proven:
“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):…”
Interestingly, the Complainant had also argued, in essence, that because the Respondent was not operating a pizza business, it could not have rights or legitimate interests in <pizzaman .com>. The Panel rejected that premise. Consistent with prior UDRP decisions, the Panel reaffirmed that investing in domain names composed of descriptive or commonly used phrases can itself constitute a bona fide offering of goods or services. Critically, a domain investor is not required to offer goods or services related to the ordinary meaning of the domain names in its portfolio in order to establish legitimacy.
The Policy does not impose a “match the wording” rule. It does not require a registrant of common phrase domains to operate corresponding businesses. The inquiry is whether the respondent targeted the complainant’s mark at the time of registration, not whether the respondent’s business aligns with the subject matter suggested by the domain’s wording. Here, the domain name was registered in 1998. The Complainant operates four local restaurants. There was no evidence that the Respondent knew of or targeted this particular business at the time of registration. Conclusory assertions were insufficient. Nor did offering the domain for sale, even at US $70,000, establish bad faith absent evidence of targeting.
The timing further weakened the Complaint. The Complainant approached the Respondent to purchase the domain, declined the asking price, and then filed the UDRP more than twenty-five years after registration. Given the descriptive nature of the phrase and the absence of evidence of bad-faith registration, the Panel concluded that the Complainant should have known it could not satisfy all three elements. A finding of Reverse Domain Name Hijacking followed.
This decision reinforces a core principle of the UDRP: the Policy addresses abusive targeting of trademark owners — not the legitimate investment in valuable descriptive domain names, and not the policing of whether a registrant’s business matches the wording of its portfolio.
Third-Party Use Undermines Inference of Targeting
Microsoft Corporation v. Harold John, WIPO Case No. D2025-4870
<dataverse .com>
Panelists: Mr. Evan D. Brown (Presiding), Ms. Sally M. Abel and Mr. Robert A. Badgley
Brief Facts: The Complainant since 2020 has used the mark DATAVERSE in connection with its Power Platform suite of products. The Complainant has provided evidence showing that the DATAVERSE mark appears in its official documentation, marketing materials, and product interfaces, and that it has used the mark continuously since 2020. The Complainant asserts common law trademark rights in the DATAVERSE mark through continuous use over the past several years. Additionally, the Complainant owns trademark registrations for the DATAVERSE mark since 2021 in multiple jurisdictions, including the EU, the UK, Mexico, Australia, Brazil, Switzerland, Norway, India, and Taiwan. The Respondent, an experienced data and artificial intelligence professional, acquired the disputed Domain Name in May, 2021 and adds that Dataverse Research Corporation, incorporated in June 2023 and founded and owned by him, is his primary business and source of livelihood.
The Complainant characterizes the website at the Domain Name as containing minimal information, while the Respondent characterizes the website as consistent with the online presence of an early-stage consultancy. The Respondent contends that he has rights or legitimate interests in the disputed Domain Name because he has operated a real business under the Dataverse name, has used the disputed Domain Name in connection with that business since 2021, and has provided data and artificial intelligence consulting services to clients under written agreements. The Respondent further contends that “dataverse” is a descriptive term meaning a “data universe” that has long been used by multiple independent actors in academic and technical contexts. The Respondent points to what he characterizes as a broader ecosystem of third-party, academic, and technical uses of the term “dataverse,” predating and existing independently of the Complainant’s use of the term as a mark.
Held: At the time of the Respondent’s registration of the disputed Domain Name in May 2021, the Complainant had indeed begun using the DATAVERSE mark, and the Panel accepts that products launched by the Complainant often become known quickly within the technology sector. However, the record does not clearly establish the extent to which the Complainant’s DATAVERSE product had achieved market recognition at that point, nor does it contain direct evidence that the Respondent registered the disputed Domain Name with knowledge of or intent to target, the Complainant’s DATAVERSE mark. The Panel notes that the Respondent does not expressly deny awareness of the Complainant’s product at the time of registration, but at the same time, based on the Respondent’s assertions of his understanding of how the term “dataverse” is generally used, the Panel does not infer that the Respondent did know of the Complainant and its DATAVERSE mark, let alone target it.
By contrast, the Respondent has provided a plausible explanation for his registration and use of the disputed Domain Name. The Panel finds Respondent’s explanation plausible on its face and not inherently inconsistent with the surrounding facts. While the existence of such third-party uses does not preclude the Complainant from establishing trademark rights, it does bear on the plausibility of the Respondent’s explanation and complicates an inference that the Respondent necessarily registered the disputed Domain Name to target the Complainant specifically. The Panel accepts that the Respondent’s website is rudimentary, has evolved over time, and may have contained inconsistent representations, but these factors alone do not show that the disputed Domain Name was registered or used in bad faith. In sum, the Panel finds that the Complainant’s case on bad faith rests largely on inference and speculation rather than on evidence of targeting at the time of registration.
RDNH: In the present case, the Panel does not consider that a finding of Reverse Domain Name Hijacking is appropriate. While the Complaint has not succeeded, the record does not support a conclusion that it was brought in bad faith, as an attempt to harass the Respondent, or in circumstances where the Complainant clearly knew it could not prove the elements required under the Policy. The dispute concerns a term that is used in multiple contexts and has been adopted by different actors, and the parties have advanced competing accounts of the Respondent’s intent and the significance of the Respondent’s use.
Complaint Denied
Complainant’s Counsel: Fish & Richardson P.C., United States
Respondent’s Counsel: Self-represented
Case Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision highlights the evidentiary significance of third-party usage when assessing bad faith under the UDRP.
The Complainant established trademark rights in DATAVERSE, with use beginning in 2020 and registrations from 2021. The disputed domain name was acquired in May 2021. The question was whether the Respondent registered the domain name to target the Complainant.
The Respondent characterized “dataverse” as a descriptive contraction of “data universe” and pointed to academic and technical uses of the term predating and existing independently of the Complainant’s branding.
The Panel made an important distinction. The existence of third-party uses does not negate trademark rights. However, such usage can materially undermine a complainant’s claim that the respondent must have registered the domain name to target it specifically. Where a term is used in multiple independent contexts, it becomes significantly more difficult to infer that registration necessarily reflects awareness of, and intent to exploit, a particular trademark owner.
That dynamic was decisive here. The Panel found the Respondent’s explanation “plausible on its face” and not inconsistent with the surrounding facts. The broader ecosystem of uses complicated any inference that the Respondent’s registration was directed at the Complainant.
The Complainant’s bad-faith case rested largely on inference that because the Respondent operates in a related technological field and the mark was already in use, knowledge and targeting should be presumed. The Panel declined to make that inferential leap. Under the Policy, targeting must be proven, not assumed from industry overlap or timing alone.
The decision reinforces a critical analytical boundary: third-party usage may coexist with trademark rights, but it can substantially weaken, and in some cases decisively undermine, a claim that a domain name was registered to target a specific complainant.
Bad Faith Absent Targeting?
<hcltech .ai>
Panelists: Mr. Alan L. Limbury, (Chair), Mr. Richard W. Hill, and Mr. David E. Sorkin (Dissenting)
Brief Facts: The Complainant is a global technology company founded in 1976 as one of India’s original IT garage start-ups. The Complainant is known by and does business as “HCL” and “HCLTech”. The Complainant is ranked 764 on the Forbes 2024 Global 2000 list. The Complainant uses its <hcl .com>, <hcltech .com> and <hcltechnologies .com> domain names (all first created in the 1990s) to provide information about the Complainant and sell software products and services under its HCL and HCLTECH trademarks. The disputed Domain Name was registered on March 30, 2021 and its resolves to a parked landing page, displaying “Relevant Searches” labeled “JOB SEARCH NEAR ME,” “JOB REMOTE JOBS,” and “ANY JOB HIRING NOW.”
The Complainant alleges that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, it resolves to a parked page populated with pay-per-click style links. Such use is designed solely to capitalize on the goodwill associated with the HCL Marks and to divert Internet users for Respondent’s commercial gain, which does not constitute a legitimate or fair use under the Policy. The Respondent had actual knowledge of Complainant’s rights in the HCL Marks when the Respondent registered the <hcltech .ai> domain name. This is evident given the HCL brand’s notoriety and given the Respondent’s use of the trademark laden Domain Name to pass itself off as the Complainant and offer services similar to Complainant’s offering.
The Respondent contends that the undisputed facts show that the Respondent registered <hcltech .ai> on March 30, 2021; the Complainant filed for HCLTECH trademarks only in November 2022, approximately 19 months later; the Respondent could not have targeted a trademark that did not exist; and the Complaint relies on retroactive trademark expansion, speculative bad faith, and unsupported monetization allegations. The Complaint provides no evidence of targeting, intent, or abuse. Mere ownership of a domain name corresponding to a later-filed trademark does not constitute bad faith. Any temporary landing page was automatically generated by the registrar; not configured, curated, or monetized by the Respondent; and produced no demonstrated revenue to the Respondent.
Held: Although HCL is, as the Respondent contends, an abbreviation for many terms unrelated to Complainants’ business, the Panel finds that the disputed Domain Name, comprising the Complainants’ HCLTECH mark, adding the abbreviation “tech” and the “.ai” gTLD to the letters “HCL”, evokes Complainants’ technology-related business and falsely represents to Internet users that the domain name belongs to or is otherwise associated with the Complainants. The Respondent does not give any explanation for his choice of the letters “hcl” in the disputed Domain Name; in particular, he does not allege, much less provide evidence to show, that he is a domain name investor who systematically registers domain names containing three letters and a generic/descriptive term. As already noted, the resolving website shows advertising links to unrelated third‑party products and services, which is neither a bona fide offering nor a legitimate noncommercial or fair use.
The learned dissent below is largely based on the premise that bad faith cannot be found in the absence of targeting. In the instant case, the Panel infers that, on the preponderance of the evidence, the Respondent did know of the Complainant’s activities. The majority is of the view that the instant case can be distinguished from the numerous cases cited in the dissent, because the facts are not the same. Be that as it may, one member of the majority (Richard Hill) is not convinced that targeting is always required to find bad faith under the Policy. For sure targeting is explicitly required under paragraphs 4(b)(i), (ii), and (iii). But not under paragraph 4(b)(iv), nor under chapter 4(b). Final Report of the WIPO Internet Domain Name Process makes it clear that “intent” is not relevant in the context of abusive registrations. That is, a registration may be abusive even if the registrant did not intend it to be so. And bad faith under the Policy can be found even if there is no evidence of targeting.
The circumstances set out above in relation to the second element satisfy the Panel majority that the Respondent was fully aware of the Complainants, their HCL mark and their .com Domain Name when the Respondent registered the disputed Domain Name and that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the domain name resolves, by creating a likelihood of confusion with the Complainants’ HCL mark as to the source, sponsorship, affiliation, or endorsement of that website.
Dissenting Opinion: I respectfully dissent. In my view, the Complainant has failed to demonstrate that the disputed Domain Name was registered in bad faith, as required by paragraph 4(a)(iii) of the Policy. For a domain name to have been registered in bad faith under the Policy, the Respondent must have registered the domain name with the Complainant or its mark in mind. See Para 3.3 of the UDRP Perspectives on Recent Jurisprudence. The Complainant’s case thus rests on whether there is sufficient evidence to support an inference that the Respondent had the Complainant’s HCL or HCLTECH mark in mind when he registered the disputed Domain Name. Based upon the evidence before the Panel, I do not find any basis for inferring that the Respondent was aware of the Complainant’s HCLTECH mark. The Complainant has not shown that it was actively using HCLTECH in March 2021, when the Respondent registered the corresponding domain name, nor that the HCLTECH mark even existed at that time. Furthermore, the United States trademark application was filed in 2022 on intent to use basis.
The Domain Name also incorporates the Complainant’s HCL mark, but there is no evidence properly before the Panel that the Respondent knew of that mark, either. Where the mark is a three-letter combination not exclusively associated with the Complainant, panels are rightfully reluctant to infer knowledge and targeting. Based upon the evidence before the Panel, the Respondent appears to be an individual located in the United States with no obvious connections to the Complainant, India, or the technology industry. I find no basis for inferring that such an individual would have been aware of the Complainant or its HCL mark. Had the Complainant elected to provide the Panel with evidence that the Respondent was likely to have had such knowledge, I would be more open to such an inference. I conclude that the Complainant has failed to demonstrate by a preponderance of the evidence that the disputed Domain Name was registered in bad faith, and would deny the Complaint on that basis.
Transfer
Complainant’s Counsel: Hope V. Shovein of Brooks Kushman P.C., USA
Respondent’s Counsel: Self-represented
Case Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision presents an unusual split. The transfer itself is defensible on conventional targeting grounds – but one Panelist of the Majority’s suggests that bad faith may be found even absent targeting, a proposition that was unnecessary on these facts and unjustifiably strays from the established consensus.
HCLTECH is a fairly distinctive composite identifier closely associated with the Complainant’s branding and its long-standing use of <hcltech .com>. In practical terms, a registrant selecting <hcltech .ai> would likely have encountered the corresponding .com domain in the ordinary course of checking availability. The .com version is the primary and most established extension, and the .ai extension, despite its recent popularity, remains secondary in commercial hierarchy. The decision to register the .ai variant of an established and distinctive .com domain strongly supports an inference that the registrant was aware of the existing domain name and associated brand. On that basis alone, a conventional application of Policy ¶ 4(b)(iv) could sustain a finding of intentional attraction for commercial gain.
The difficulty arises from one member of the Majority making the suggestion that targeting is not always required for bad faith. The reliance on paragraphs 93 – 94 of the WIPO Final Report is misplaced. Those paragraphs address whether domain name registrants should be required to declare an intent to use a domain name at the time of registration. They do not redefine bad faith registration, nor do they eliminate the requirement that abusive registration be deliberate. Indeed, the Policy itself speaks in terms of intentional attraction for commercial gain. Reading bad faith as potentially existing without targeting risks collapsing the third element into little more than a confusing similarity test.
The same member of the Majority also cited AbbVie Inc. v. Musonda Chalwe, FA 2085483 (Forum Mar. 19, 2024, also by this member of the Majority), for his proposition that bad faith may be found even absent evidence of targeting. Contrary to how it has been characterized, this passage does not dispense with targeting as a requirement for bad faith. The Panelist in that case (the same Panelist, as aforesaid) did not say that targeting is unnecessary. Rather, it drew an inference that bad faith registration was inferred from the bad faith use coupled with the distinctive nature of the mark and the absence of any credible alternative explanation. Nothing in this decision stands for the broader proposition that bad faith can be found in the absence of targeting; rather, it illustrates how targeting may be inferred from the surrounding circumstances. To treat AbbVie as authority for dispensing with targeting altogether extends it well beyond its actual holding.
The dissent adheres to the orthodox view that bad faith registration requires sufficient evidence that the respondent registered the domain name with the complainant or its mark in mind. However it appears to underappreciate the practical implications arising from the .ai selection of a highly distinctive domain name without an alternative explanation being provided, as aforesaid, such that evidence of targeting that meets the balance of probabilities threshold could be inferred from the circumstances.
Bad Faith Registration Requires Both Awareness and Targeting
<sunleaf .com>
Panelist: Mr. Charles A. Kuechenmeister
Brief Facts: The Complainant provides quick‑frozen food products and claims rights in the SUN LEAF mark based on its registration with the USPTO. The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name because, although it resolves to an active website, the website does not support a legitimate business or bona fide offering connected to the domain name, as the business it appears to promote has been out of operation since 2016. The Complainant further alleges that, even if the domain name was not registered in bad faith in 1999, its current use or lack of use demonstrates bad faith, given that the website continues to advertise a business that has been closed since 2016. The Complainant also states that when it offered to purchase the Domain Name in 2022, the Respondent demanded $25,000. At present, the Respondent is making no active use of the domain name and is passively holding it. The Respondent did not submit a Response in this proceeding.
Held: Normally the Panel would evaluate the evidence applicable to each of the three elements listed in Policy ¶4(a) but the circumstances present here render that unnecessary. As stated in the Complaint and supported by the evidence, the domain name was registered in 1999 by the named Respondents, who, according to the statement appearing on the resolving website, were doing business as Sun Leaf Nursery, LLP until they decided to close the business at the end of 2015. The Complainant appears not to have acquired rights in the SUN LEAF mark until the April 2008 first use date shown on the USPTO registration certificate submitted. This sequence of events precludes a finding of bad faith registration.
Indeed, the Complaint as much as admits that. Policy ¶4(a)(iii) requires a finding of both registration and use in bad faith. Actual knowledge of the complainant’s mark and intent to target that mark at the time a domain name is registered are foundational requirements for proof of bad faith registration. There is no evidence that the Complainant acquired its rights in the SUN LEAF mark prior to 2008, some nine years after the domain name was registered. The Respondent could not have known of or targeted the Complainant when it registered the Domain Name because the Complainant was not even in existence, and certainly had no rights in the SUN LEAF mark at that time. Registration in bad faith is not proven.
RDNH: The deficiencies in Complainant’s case are glaring. The domain name was registered some nine years before the Complainant acquired any rights in the SUN LEAF mark. And, it was registered for a legitimate business that remained in operation, using the domain name for some 15 years before closing its doors. The Complainant’s counsel should have realized immediately that it could not prevail. There is a substantial body of jurisprudence in existence from the 25 years that the Policy has been in effect, and even a cursory review of past UDRP decisions would have alerted counsel that the lack of evidence supporting bad faith registration in this case would preclude recovery. As little as a careful reading of Policy ¶4(a)(iii) would have revealed that.
Complaint Denied (RDNH)
Complainant’s Counsel: Andrew Dallmann of Key Kesan Dallman PLLC, USA
Respondent’s Counsel: No Response
Case Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This was a chronology case, and the chronology was fatal. The domain name was registered in 1999. The Complainant’s own evidence reflected first use of SUN LEAF in 2008. That gap alone precluded bad faith registration.
More importantly, the Panel articulated the standard correctly. It did not merely refer to “knowledge.” It stated that actual knowledge of the complainant’s mark and intent to target that mark at the time of registration are foundational requirements for bad faith. That formulation is significant. Awareness and targeting are distinct concepts. Even if a respondent is aware of a mark, that awareness alone does not establish bad faith registration. There must be intent to register the domain name because of the mark – that is, targeting.
Here, neither element could be established. The Complainant did not even have rights in 1999. The Respondents therefore could not have known of, let alone targeted, the Complainant at registration. The analysis ends there.
The Complainant attempted to shift the focus to subsequent events, including the fact that the Respondents’ nursery business closed in 2015 and that the domain name was later passively held. But that argument ignores a critical fact: the domain name was used for approximately fifteen years in connection with a bona fide nursery business operating under the Sun Leaf name. The subsequent closure of that business does not retroactively taint an originally legitimate registration. The Policy does not transform a good-faith registration into a bad-faith one merely because a business ceases operations.
The Panel also dismissed reliance on a US $25,000 sale demand. An offer to sell does not establish bad faith where the domain name was lawfully registered years before the complainant acquired rights.
The RDNH finding was therefore unsurprising. The deficiencies were not technical; they were structural. The domain name predated the Complainant’s rights by nearly a decade and had been used for a genuine business for many years. As the Panel observed, even a careful reading of Policy ¶ 4(a)(iii) would have revealed that bad faith registration could not be established.
This decision properly reinforces two core principles: bad faith registration requires both awareness and targeting at the time of registration, and a long period of bona fide use strongly undercuts any attempt to recharacterize an originally legitimate registration as abusive years later.
Panel Rejects Burden-Shifting and Presumed Bad Faith
Suncast Corporation v. Philip Litassy, NAF Claim Number: FA2601002200062
<suncastic .com>
Panelist: Mr. David P. Miranda, Esq.
Brief Facts: The Complainant claims that since at least as early as December 4, 1984, the Complainant has been continuously using the mark “SUNCAST” in connection with the manufacture and sales of commercial and residential products in the home and industrial markets. The Complainant is the owner of four live, incontestable U.S. Trademark Registrations for the SUNCAST trademark in connection with a wide variety of goods including, but not limited to storage sheds and accessories; plastic, metal and wood products and structures. In addition to sales from its own website Suncast .com, the SUNCAST brand is prevalent in “big box” stores such as Wal-Mart, Home Depot, Lowes, and Target, in at least 37 countries its products are sold. The WHOIS search for the Domain Name indicates it was created on December 24, 2025 and the website at this domain appears to have operated since on or about December 24, 2025.
The Complainant alleges that the Respondent’s passive holding of Complainant’s “SUNCAST,” trademark incorporated into the objectionable domain name <suncastic .com> can only be intended for the purpose of disrupting the business of the Complainant. The Respondent infers a bad faith intent and takes unfair advantage of or otherwise abuses Complainant’s mark. The Respondent contends the name ‘Suncastic’ was independently coined from the concepts of Sun + forecast + fantastic and that it had no prior awareness of Suncast Corporation and have never sought to trade on its reputation. The Respondent further contends that its service is a non-commercial solar-energy forecasting tool. The project, with only three users, is exclusively focused on photovoltaic production forecasts, energy planning, and weather data. The Complainant has provided no instance of actual confusion, misrepresentation, or impersonation.
Held: The Respondent contends it has minimal to no use of the name other than its website, which has only three registered users other than the Respondent. The Respondent concedes it has made no commercial use of the name and has not indicated any legitimate business purpose for the name. Panels have recognized that it is difficult for a respondent to establish rights or legitimate interests where, as here, that the Respondent has no relevant trademark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark. Even where a domain consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute legitimate interests or rights without some proof of such rights. Thus, Complainant has met its burden as to this element of its claim.
The Complainant contends generally that panels have found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. However, the Complainant neither offers any citations to decisions that support this proposition, nor the Complainant provides no proof of bad faith registration and use other than the similarity of the domain and the mark. The Complainant attempts to shift the burden by contending that the Respondent must show good faith registration and use of the mark, which is not the standard. The Complainant has failed to submit sufficient support to establish bad faith registration and use of the domain in question. The panel finds Complainant as such has failed to meet its burden of establishing bad faith under UDRP Policy 4(b)(iv).
Complaint Denied
Complainant’s Counsel: Maria Jose Rivera of McHale & Slavin, P.A., USA
Respondent’s Counsel: Self-represented
Case Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision is notable less for its outcome than for what it rejects: an improper attempt to convert confusing similarity into a presumption of bad faith and to shift the burden of proof onto the respondent.
The Complainant’s SUNCAST mark is longstanding and commercially significant. The disputed domain, however, is suncastic .com – a coined variation that the Respondent contended derived from “sun + forecast + fantastic,” used for a small, non-commercial solar forecasting tool with only three users.
The Panel found that the Complainant satisfied the first element and, applying conventional UDRP reasoning, also found the second element met, emphasizing that respondents typically face difficulty establishing rights or legitimate interests where a domain incorporates a complainant’s trademark without authorization. That portion of the decision is unremarkable.
The critical issue was bad faith.
The Complainant argued, in essence, that the mere registration of a domain name confusingly similar to a well-known mark by an unaffiliated party gives rise to a presumption of bad faith. Yet it cited no supporting authority and offered no evidence of targeting beyond similarity itself.
The Panel rejected this approach outright. Confusing similarity does not create a presumption of bad faith. Nor does the Policy require a respondent to prove good faith. The burden remains squarely on the complainant to establish both bad faith registration and bad faith use.
Importantly, the Panel identified the Complainant’s argument as an attempt to invert that burden. The assertion that the Respondent “must show” good faith registration misstates the standard. The UDRP does not operate on a presumption of bad faith triggered by similarity alone.
The Complainant also failed to provide evidence of targeting, impersonation, diversion, or commercial exploitation of the mark. The Respondent’s minimal and non-commercial use, whether ultimately persuasive on the second element or not, did not supply the missing proof of bad faith registration.
The decision reinforces a structural principle of UDRP jurisprudence: similarity may satisfy paragraph 4(a)(i), and even weaken a respondent’s position under paragraph 4(a)(ii), but it does not by itself satisfy paragraph 4(a)(iii). The complainant must prove bad faith. It cannot demand that the respondent disprove it.
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.