Perfume Company Tries to Take P&G’s Domains Through the UDRP; Gets RDNH Instead
This is a well-reasoned decision that reaches the right result, and the RDNH finding in particular is a model of how the analysis should be done, grounded squarely in what the Complaint itself disclosed. Our one substantive observation concerns the element the Panel chose not to decide. The Panel acknowledged the Respondent’s former trademarks, product line, and website, observed that the Respondent “may well assert residual rights or legitimate interests such as preventing impersonation or damage to its associated FEBREZE brand, especially given that there is still an aftermarket for SCENTSTORIES products”, and then declined to reach a finding on the second element, resting the decision on the third element alone. Continue reading here
We hope you will enjoy this edition of the Digest (vol. 6.31) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Perfume Company Tries to Take P&G’s Domains Through the UDRP; Gets RDNH Instead (scentstories.com and scentstory.com *with commentary)
‣ A Domain With Independent Value Puts Targeting to the Proof (nuwave.ai *with commentary)
‣ Five Leroy Merlin Lookalike Domains Used for Phishing and Impersonation Transferred to French Retail Giant (immo-lmerlin.com and others *with commentary)
‣ Phishing Email Traced to Gmail, Not Disputed Domain (hiagroup.com *with commentary)
‣ Common Spanish and Indonesian Word Defeats Colombian Trademark Claim (pasar.com *with commentary)
Perfume Company Tries to Take P&G’s Domains Through the UDRP; Gets RDNH Instead
<scentstories.com> and <scentstory.com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Complainant is a Delaware-incorporated luxury perfume company headquartered in Las Vegas and operating under the MiN NEW YORK brand. It holds two United States trademark registrations: SCENT STORIES (registered October 14, 2014; first used in September 2013) and #SCENTSTORY (registered June 13, 2017; first used in March 2014). The Respondent is a publicly traded multinational household products corporation headquartered in the United States. It registered both disputed domain names in early 2004 in connection with a FEBREZE product extension: a scent disc player marketed as “FEBREZE Scentstories.” The Respondent operated an active website at <scentstories.com> from 2004 to 2006. It also formerly held a U.S. trademark registration for SCENTSTORIES (registered December 13, 2005), which it allowed to lapse in 2012 after discontinuing the product line. Both disputed domain names currently resolve to inactive pages, although an aftermarket for the discontinued product exists on eBay and Etsy.
The Complainant alleges that the Respondent acted in bad faith when it renewed the registration of the disputed Domain Names in 2026, with “constructive or actual notice” of the Complainant’s trademark registrations. The Respondent contends that screenshots of its former “Scentstories” website and evidence of its former trademark registrations and applications demonstrate its rights and legitimate interests in the disputed domain name <scentstories.com>, asserting that the similar disputed domain name <scentstory.com> “was registered for defensive purpose being a probable variation of ‘scentstories’”. The Respondent further contends that the disputed domain names were not, and logically could not have been, registered in contemplation of the Complainant’s marks. The earliest of these was not in use until nearly a decade later. The Respondent requests a finding of Reverse Domain Name Hijacking.
Held: The Respondent claims rights and legitimate interests based on its former SCENTSTORIES trademarks, product line, and website. While the record indicates that these have been discontinued or abandoned for some years, and it is generally accepted that rights or legitimate interests are to be assessed at the time of the filing of the complaint (WIPO Overview 3.1, section 2.11), the Respondent may well assert residual rights or legitimate interests such as preventing impersonation or damage to its associated FEBREZE brand, especially given that there is still an aftermarket for SCENTSTORIES products. In any event, the Panel does not find it necessary to reach a finding on this element of the Complaint, given the Panel’s finding on the third element below.
The Complainant does not rely on the examples set out in paragraph 4(b) of the Policy, but instead invokes the principles of “constructive notice” and “passive holding” in an effort to infer bad faith. However, the Respondent registered the disputed domain names nearly a decade before the Complainant began using the earliest of its marks. Panels have long rejected the theory that bad faith should be assessed as of the date on which a respondent most recently renewed a disputed domain name. See WIPO Overview 3.1, section 3.9. In this case, the Respondent could not have targeted the Complainant’s marks when it registered the disputed domain names in 2004 because, by the Complainant’s own account, those marks were not in use until many years later. Nothing in the record suggests that the Respondent could have known of the Complainant’s marks in advance. Accordingly, the Panel finds that the disputed domain names were not registered in bad faith. See WIPO Overview 3.1, section 3.8.1.
RDNH: The Panel notes in this case that the Complainant is not represented independently by legal counsel, and the Complainant’s president, who acts as its representative, is not listed as a member of the bar of Nevada or New York. Nevertheless, the Complaint acknowledges the apparent difficulty where both disputed domain names pre-date the Complainant’s trademark applications by many years. The Center makes available WIPO Overview 3.1 as a resource, which plainly addresses the timing issue, yet the Complaint cites no authority for the bald assertion that “this temporal sequence does not preclude the UDRP claims at issue”. Moreover, the Complainant asserts bad faith because the Respondent allegedly failed to reply to the Complainant’s communications before filing UDRP complaints. The Respondent denies that any such communications occurred, and the Complainant offers no proof of them. In these circumstances, the Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Luca Barbero, c/o Studio Barbero S.p.A., Italy
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This is a well-reasoned decision that reaches the right result, and the RDNH finding in particular is a model of how the analysis should be done, grounded squarely in what the Complaint itself disclosed. Our one substantive observation concerns the element the Panel chose not to decide. The Panel acknowledged the Respondent’s former trademarks, product line, and website, observed that the Respondent “may well assert residual rights or legitimate interests such as preventing impersonation or damage to its associated FEBREZE brand, especially given that there is still an aftermarket for SCENTSTORIES products”, and then declined to reach a finding on the second element, resting the decision on the third element alone.
On this record, an affirmative finding that the Respondent had rights or legitimate interests in the domain names would have been well supported. The Respondent registered them in 2004 for a genuine product launch, in the absence of any evidence that it was targeting the Complainant or any then-existing trademark rights, used them in connection with that product, and held its own corresponding trademark registration.
The Panel’s hesitancy may have reflected the principle, set out in section 2.11 of the WIPO Overview 3.1, that rights or legitimate interests are assessed as of the filing of the complaint. Rights or legitimate interests are indeed assessed in light of the circumstances existing when the complaint is filed, but that does not mean that a bona fide interest acquired through the original registration and use disappears merely because a product is later discontinued or a corresponding trademark registration lapses. Such an interest may continue, provided that it has not been vitiated by intervening conduct, and there is no continuing-use requirement under the Policy that compelled the Respondent to operate an active website. Here, the Respondent’s original bona fide registration and use, its former corresponding trademark registration, the continuing aftermarket for the product, and the plausible defensive function that the domain names continued to serve in relation to the associated FEBREZE brand strongly supported an affirmative finding.
These propositions have long roots. In Write Brothers, Inc. v. Dennis Pollack, Forum Claim No. FA0210000127800 (December 23, 2002), a three-member Panel recognized that legitimate rights may arise from bona fide registration and preparations for legitimate use, and that a registrant is not automatically required to establish an active website. In rejecting the contention that the respondent’s subsequent inactivity altered the result, the Panel held that “nor did Respondent’s subsequent conduct divest Respondent of its rights in the domain name”. On that reasoning, this Respondent’s position was stronger still: it registered the domain names, used them in connection with an actual product, and held a corresponding trademark registration, and nothing in the record suggested that its interest had been vitiated by anything that followed.
Judicial economy is a legitimate consideration, but as UDRPPerspectives.org observes at section 2.1, 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 where the facts warrant it. A respondent needs only “a” legitimate interest, not a better one than the complainant’s. And a respondent whose bona fides have been challenged, and who has effectively been accused of a species of fraud, may deserve the vindication that an affirmative finding provides. The facts here warranted one, and we respectfully suggest that an express finding would have made a strong decision stronger still.
The decision’s second notable aspect is one the Panel handled exactly as it should have, and it concerns an argument that continues to recur despite long-settled consensus. The Complainant contended that the Respondent’s renewal of the registrations, with constructive or actual notice of the Complainant’s marks, constituted bad faith. The theory that bad faith may be assessed as of the date of renewal rather than registration was laid to rest years ago, as chronicled in “The Rise and Fall of the UDRP Theory of ‘Retroactive Bad Faith'” by Nat Cohen and Zak Muscovitch on behalf of the Internet Commerce Association, published in CircleID on May 8, 2017, and section 3.9 of the WIPO Overview 3.1 now states the consensus plainly: renewal by the same registrant is not a new registration.
Yet the argument keeps resurfacing. In recent months it appeared in REINSCH, INC., E. G. and Tri-State Communities LLC v. Tony Rivera, Forum Claim No. FA2604002214022 (<chainbridgeestates.com>) and Carfax Commerce Inc. v. Matvey Furash, WIPO Case No. D2026-0627 (<accs-market.com>), both covered in vol. 6.20 of this Digest, and in Chris Robles, Trippy Tacos LLC v. Rajat Gupta, WIPO Case No. D2026-1634 (<trippytacos.com>), covered in vol. 6.28. The CDRP, by contrast, forecloses the argument structurally. It requires at paragraph 3.1(a) that the complainant’s rights in its mark predate the registration of the domain name, a threshold condition that might well have discouraged a complaint like this one from being filed altogether. Unlike the CDRP, the UDRP contains no express temporal prerequisite under its first element, and decisions like this one illustrate a recurring consequence of that structural difference.
There is also something remarkable about the posture of this case that deserves to be said plainly, if diplomatically. The Complainant elected to pursue a major consumer products company over domain names that, as the record revealed, the Respondent had registered for a genuine product line, supported by its own former trademark registration, approximately a decade before the Complainant’s marks existed – a history that even a cursory investigation of the domain names and the USPTO register would have surfaced before filing. Whatever it’s subjective motive, a complainant in that position is not presenting a genuine case of cybersquatting as the Policy understands it. The practical effect of the relief sought would have been a windfall: the acquisition, at the cost of a filing fee, of domain names corresponding to a brand adopted approximately a decade after the Respondent registered them. The Policy has occasionally been treated by complainants as a bargain-priced acquisition channel of this kind, and the surest institutional answer to that temptation is precisely what the Panel delivered here.
Finally, the RDNH finding is also significant because of the party against whom it was made. The Complainant was represented internally by its president, who the Panel noted was not listed as a member of the bar of Nevada or New York, and the Panel found RDNH nonetheless. The absence of independent counsel did not insulate the Complainant from an RDNH finding on these facts, because a party who invokes the Policy assumes an obligation to become familiar with its established interpretation, and the WIPO Overview, which the Center makes freely available, plainly addresses the timing issue. The Complaint acknowledged the difficulty and pressed on anyway, asserting without authority that the temporal sequence was no obstacle, and alleging pre-filing communications for which it offered no proof. Whether a complainant is a lay businessperson or counsel of record, the objective facts and the settled jurisprudence are available to all before filing, and anyone who proceeds in defiance of them does so at their own peril.
A Domain With Independent Value Puts Targeting to the Proof
Nuwave Communications, Inc. v. Natarista Sembiring, WIPO Case No. DAI2026-0066
<nuwave.ai>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant, founded in 1998, is a Nevada-incorporated telecommunications and cloud communications technology company, operating under the NUWAVE mark from its primary website at <nuwave.com> (registered November 18, 1999). Its earliest extant trademark registrations for the NUWAVE mark on its own are an Australian registration (effective May 1, 2024; registered December 9, 2024) and a Hong Kong registration (registered August 28, 2024). The earliest registration identified for NUWAVE COMMUNICATIONS is a United States registration (registered August 20, 2024; claimed first use January 5, 2015). The disputed Domain Name was registered on April 23, 2025 by an Indonesia-based domain name investor, and is listed for sale through the Atom.com and Semoga.com marketplaces at an asking price of USD 27,999, with traffic redirecting to the Atom.com marketplace listing.
The Complainant claims decades of continuous, extensive, and widespread commercial use of the NUWAVE mark in international markets. It alleges that the mark was readily discoverable through basic Internet and trademark searches, and that the disputed Domain Name is passively held and offered for sale on a domain name marketplace for approximately USD 27,999, an amount far exceeding any reasonable out-of-pocket costs directly related to its registration. The Respondent contends that it registered the disputed Domain Name for its independent branding value as a short, memorable, and easy-to-pronounce name, consistent with its investment criteria across its “.ai” portfolio, that it never approached or targeted the Complainant, and that numerous independent businesses in different jurisdictions use “NuWave” as part of their commercial identities, undermining any claim of distinctiveness.
Held: The Complainant has failed to show any penetration of its mark in Indonesia, where the Respondent is reportedly based, which might have come to the Respondent’s attention. The Panel noted, during a limited review of public trademark records undertaken primarily to verify the Complainant’s trademark portfolio, the existence of multiple third-party trademark registrations containing the term “NUWAVE”. This is not necessarily surprising, given that the term is a contraction of the well-known dictionary phrase “new wave” and that the abbreviation of “new” to “nu” is relatively commonplace in the Panel’s experience. There is no evidence on the present record that the term “nuwave” is predominantly associated with the Complainant, far less exclusively referable to it. Consequently, the Panel does not find that the identity between the Complainant’s trademark and the disputed domain name means that the Respondent necessarily registered the disputed domain name with the Complainant in mind or with intent to target it.
The evidence before the Panel indicates that the Respondent has been operating a domain name investment business since 2013, and, in particular, that it has been investing in domain names consisting of a variety of dictionary terms and neologisms in the “.ai” space since about February 2024. Where a domain name could credibly have been acquired by a respondent for its value independent of any connection with a complainant then it is incumbent on the complainant to demonstrate targeting of the complainant’s mark. Furthermore, the Panel cannot infer from the asking price of the disputed domain name itself that the Respondent intended to target the Complainant in particular, as opposed to the wider variety of people and businesses interested in the term “nuwave”. Indeed, there is no evidence in the record that the Complainant has “deep pockets” or that the disputed domain name was priced on that basis.
In terms of the use of the disputed domain name, it appears most probable on the record before the Panel that it was placed for general sale upon registration. It must also be noted that the Respondent did not approach the Complainant or offer to sell the disputed domain name directly to it. The Panel also briefly notes that it does not accept the Complainant’s submissions that the disputed domain name is being passively held, and/or that this should lead to a conclusion that it was registered and is being used in bad faith. In the Panel’s opinion, the pointing of the disputed domain name to a domain name marketplace offering it for sale is an active use, not a passive one. 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.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision merits close attention because it did not turn on chronology. Unlike the many recent cases in which the domain name predated the complainant’s trademark rights, here the Complainant’s earliest extant registrations preceded the April 2025 registration of the disputed Domain Name. The Complaint nonetheless failed, and the reason it failed is instructive: identity between a trademark and a domain name does not, by itself, establish that the respondent registered the domain name with the complainant in mind. The term “nuwave” is a contraction of the dictionary phrase “new wave”, the abbreviation of “new” to “nu” is commonplace, and the Panel’s limited review of public trademark records, undertaken primarily to verify the Complainant’s own portfolio, surfaced multiple third-party registrations containing the term. On that record, there was no basis to find that “nuwave” was predominantly associated with the Complainant, let alone exclusively referable to it, and no evidence that the Complainant’s mark had any penetration in Indonesia, where the Respondent is based.
“Where a domain name could credibly have been acquired by a respondent for its value independent of any connection with a complainant then it is incumbent on the complainant to demonstrate targeting of the complainant’s mark.” That single sentence from the decision places the evidentiary obligation exactly where the Policy puts it, and it deserves wide circulation. As UDRPPerspectives.org explains at section 3.3, the onus is on the complainant to prove the respondent’s intention to target the specific complainant rather than anyone who may hold a trademark for the corresponding term, and targeting is far harder to establish where the domain name corresponds to a common term with a multitude of potential users than where it corresponds to a highly distinctive mark primarily associated with a single holder. A respondent, in turn, can support its good faith by showing that the complainant was an unlikely target, that the domain name’s value derives from the nature of the term rather than from the complainant, or that the registration fits a pattern of acquiring comparable domain names for investment purposes. The Respondent here did all three: the Complainant had no demonstrated reputation in the Respondent’s market, “nuwave” carries obvious independent appeal as a short, brandable contraction of a dictionary phrase, and the Respondent documented that it had operated a domain name investment business since 2013, with a portfolio of dictionary terms and neologisms in the “.ai” space acquired under consistent criteria since early 2024. A respondent who can document that its acquisition fits an established pattern makes the complainant’s targeting burden considerably harder to discharge, and rightly so.
The treatment of price follows the reasoning recently covered in vol. 6.30 of this Digest concerning <glide.ai>. The Panel declined to infer targeting from the USD $27,999 asking price, observing that the price could reflect the interest of the wider variety of people and businesses interested in the term, and that there was no evidence the disputed Domain Name had been priced on a “deep pockets” theory directed at this Complainant. Also significant was what the Respondent did not do: it never approached the Complainant or offered to sell the disputed Domain Name to it directly. A general offer to the market, without evidence that the registration or asking price was directed at the particular trademark owner, is not conduct condemned by the Policy, and two recent decisions make that point in plain terms.
Perhaps the decision’s most quietly useful observation concerns passive holding. The Complainant argued that the disputed Domain Name was passively held, invoking the doctrine under which nonuse, considered together with the surrounding circumstances, may support a finding of bad faith. The Panel rejected the premise: pointing a domain name to a marketplace listing where it is offered for sale is an active use, not a passive one. That observation deserves to be remembered. The passive-holding doctrine does not naturally apply where the domain name is actively directed to a sales marketplace in the ordinary course of a domain name investment business. Whether the offering is abusive still depends on targeting, but it should not be mischaracterized as nonuse. Complainants who reflexively plead passive holding whenever a domain name lacks a developed website should expect this decision to be cited against them.
Five Leroy Merlin Lookalike Domains Used for Phishing and Impersonation Transferred to French Retail Giant
GROUPE ADEO v. christophe pelet et al., CAC Case No. CAC-UDRP-108790
<immo-lmerlin.com>, and 4 other domain names
Panelist: Mr. Igor Motsnyi
Brief Facts: The French Complainant, founded in 1923, specializes in household goods, living environment development, and DIY, with over 24,000 employees in France. It operates the subsidiary “L’IMMOBILIÈRE LEROY MERLIN FRANCE” and holds multiple trademark registrations for LEROY MERLIN, including International registrations dated July 15, 1992, and August 14, 1998, and an EU registration dated December 7, 2012. The Complainant’s domain names <leroymerlin.fr> and <leroymerlin.com> have been registered since 1996. The disputed domain names were registered between August 11, 2025 and February 04, 2026 and either resolved to an error page or a parking page with commercial links.
The Complainant alleges that the Respondent registered the disputed domain names with full knowledge of the Complainant’s well-known marks, and that their use for phishing, impersonation, PPC parking, and passive holding all constituted bad faith. The Complainant further points out that three of the five disputed domain names, <immo-lmerlin.com>, <immobiliere-merlin.com>, and <limmobiliere-lm.com>, were used to send fraudulent emails impersonating the Complainant’s employees. The remaining two resolved to parking pages with commercial links or error pages. No Response was filed.
Preliminary Issue – Consolidation of Complaint against multiple Respondents: The Panel notes that under par. 3 (c) of the UDRP Rules, the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Consolidation is also addressed in WIPO Overview 3.1, section 4.11.2, which states that “panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. A similar position is articulated in sec. 0.7 of UDRPPerspectives.org.
The Panel has also consolidation authority under Rule 10 (e) of the UDRP Rules. The Panel carefully considered the evidence available in this dispute and facts of the case and decided to accept the consolidation request, given the totality of circumstances – identical registrar, same email services provider, uniform naming pattern, and the absence of any response challenging consolidation, indicated that all five disputed domain names were more likely than not under common control.
Held: The Panel agrees with a consensus view expressed in WIPO Overview 3.1, section 2.13.1 that “the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or (unlicensed) pharmaceuticals, phishing/identity theft, distributing malware, unauthorized account access/hacking, copycat sites, passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. The Complainant provided evidence of fraudulent use of three out of five disputed domain names for the purpose of impersonating the Complainant and its employees (sending fraudulent emails), namely <immo-lmerlin.com>, <immobiliere-merlin.com> and <limmobiliere-lm.com>. There is no evidence of any possible rights and legitimate interest of the Respondent in respect of the two other disputed domain names.
It is well established that bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see WIPO Overview 3.1, section 3.1). Targeting with the intent to take unfair commercial advantage of the complainant’s mark is important in establishing bad faith under the Policy, see UDRP Perspectives, section 3.3. Besides, as noted by Gerald M. Levine in “Domain Name Arbitration”: “knowledge and targeting are prerequisites to finding bad faith registration” and “knowledge of a complainant’s mark, if not directly evident or denied, can be inferred or rebutted from website’s content, strength of the mark and respective timing of a mark’s use in commerce and registration of the domain name” (see “Domain Name Arbitration,” Second Edition, 2019, page 235).
Here, both direct and circumstantial evidence indicates that the Respondent targeted the Complainant and such targeting was with intent to profit commercially from the Trademarks. The Panel finds both direct and circumstantial evidence of targeting: the Trademarks’ fame and reputation in France rendered it implausible that French-based registrants were unaware of them; the registration of five domain names in the same naming pattern constituted a pattern of conduct under paragraph 4(b)(ii); and the use of three disputed domain names for fraudulent impersonation of the Complainant’s employees constituted bad faith under paragraph 4(b)(iv).
Transfer
Complainant’s Counsel: NAMESHIELD S.A.S., France
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The facts here were as one-sided as they come, and that is precisely what makes the decision worth reading. Five domain names incorporating or closely imitating a famous French retailer’s marks and the name of its real estate subsidiary, three of them used to send fraudulent emails impersonating the Complainant’s employees, registered against marks whose fame and reputation in France made it implausible, as the Panel found, that the French-based registrants were unaware of them. Undefended fraud cases are where analytical shortcuts creep into the jurisprudence, because no one is there to object. This decision took none.
Rather than treating an undefended fraud case as an occasion for abbreviated reasoning, the Panel worked through the framework properly: the use of a domain name for illegal activity can never confer rights or legitimate interests under section 2.13.1 of the WIPO Overview 3.1, and bad faith required knowledge and targeting, established here by both direct evidence (the fraudulent emails) and circumstantial evidence (the marks’ fame in France, the registrants’ location, and the uniform naming pattern across five registrations).
The citation of Gerald Levine’s treatise for the proposition that knowledge and targeting are prerequisites to bad-faith registration is worth noting. The same analytical discipline that protects legitimate registrants in contested cases was applied where the evidence overwhelmingly established abusive conduct, and that consistency is precisely what gives the framework its integrity. Targeting analysis is not a hurdle erected in the path of complainants facing obvious abuse; it is the Policy’s method, and it produced a swift and correct transfer here.
The consolidation analysis is the decision’s most practically useful contribution. The Complaint named multiple registrants across five domain names, and the Panel assessed common control, fairness, and procedural efficiency under section 4.11.2 of the WIPO Overview 3.1 and section 0.7 of UDRPPerspectives.org. The same registrar, a shared email services provider, and a uniform naming pattern supported the inference of common control, and no Respondent appeared to rebut that inference or identify any prejudice arising from consolidation.
Fragmentation across aliases can obscure common control and, if approached too formalistically, force brand owners into serial and costlier proceedings. A sensible, evidence-based approach to consolidation is the appropriate response.
Notably, direct evidence of fraudulent use existed for only three of the five domain names, while the other two resolved to parking or error pages. Common control did not relieve the Complainant of proving bad faith in respect of each domain name, but the demonstrated use of three of them, together with the coordinated naming pattern and the other evidence of targeting, properly informed the Panel’s assessment of the remaining two. The absence of direct evidence of fraudulent use for those two did not require a different result where their composition and their place within the same coordinated registration pattern supported the same inference of targeting and bad faith.
In the interest of full disclosure, the Panelist in this case is the co-author, together with ICA General Counsel Zak Muscovitch, of UDRPPerspectives.org, which the decision cites.
Phishing Email Traced to Gmail, Not Disputed Domain
HAI Group v. Name Redacted, WIPO Case No. D2026-2474
<hiagroup.com>
Panelist: Mr. Jeremy Speres
Brief Facts: The Complainant, HAI Group, has traded under the HAI GROUP mark since 1987 as a United States-based insurance enterprise. It owns a trademark registration for HAI GROUP before the USPTO (registered: December 11, 2012; first use: February 29, 2004). The Complainant’s primary website is operated from its domain name <haigroup.com> (registered in 2001). The disputed domain name was registered on May 26, 2015, by a domain name investor based in Germany, and presently resolves to a parked page stating: “This domain is registered, but may still be available.”
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith with actual knowledge of the Complainant and its HAI GROUP mark. The Complainant further alleges that the disputed domain name is an obvious typosquatted version of its mark and domain name, and was used in a phishing scheme that impersonated a named employee, reproduced genuine contact details and billing information, and sought to divert invoice payments to a fraudulent bank account, conduct falling squarely within paragraph 4(b)(iv) of the Policy.
The Respondent contends that the disputed domain name is a generic three-letter acronym combined with the descriptive word “group,” acquired and passively held as a legitimate domain investment for over 11 years without any knowledge of the Complainant. The Respondent further contends that the alleged phishing email was sent from an external Gmail account rather than through the disputed Domain Name, which had allegedly never been configured with MX records or otherwise used for email. The Respondent requests a finding of RDNH.
Procedural Order No. 1: The Panel invited the Complainant to provide it with the original May 8, 2026, email, including its full, unaltered Simple Mail Transfer Protocol (“SMTP”) headers, so that the Panel could confirm its provenance. The Complainant provided this, and the Panel was able to confirm, from a reading of the headers, that the email was sent from a Gmail address and not the disputed Domain Name. There is, therefore, no evidence in the record that either the disputed domain name was used to send, or that the Respondent sent, the phishing email.
Held: The Panel considers that there are a number of plausible reasons why a phisher might choose not to spoof the Complainant’s actual domain name. One possible explanation is the following. The Panel has independently checked the publicly accessible Domain Name System (“DNS”) records for the Complainant’s corporate domain name and notes that the Complainant has included Sender Policy Framework (“SPF”) DNS records. SPF is an email authentication method that checks if a sending mail server is permitted to send email for a specific domain name. It works through DNS text records listing approved IP addresses, and it helps prevent email spoofing. The phisher may well have been aware of this and may have wanted to avoid triggering the Complainant’s SPF policy, which could have resulted in the recipient of the phishing email’s (the Complainant’s client’s) own mail servers rejecting the phishing email as having been sent from an unauthorized mail server.
In the absence of any direct evidence of bad faith usage of the disputed domain name, the Complainant is essentially left with the similarities between the disputed domain name and its HAI GROUP mark. They are undoubtedly similar, however, there are two difficulties here for the Complainant. Firstly, it has not established that its mark is well known and has not put forward any evidence showing why the Respondent, based in Germany, would or should have known of the Complainant’s mark. As the Respondent points out, the Complainant’s own website is geographically restricted and does not permit users from outside of the United States to access it, making it less likely that any reputation in the Complainant’s mark could have extended to the Respondent’s jurisdiction. Secondly, “hia” is a three-letter acronym with broad application, and there is nothing in the record contradicting the Respondent’s claim that he acquired the disputed domain name as an investment for purposes of resale. With the Respondent having held the disputed domain name for 11 years, the absence of any direct evidence of bad faith over such a long period undermines the Complainant’s claims of targeting.
RDNH: The Respondent requested a finding of RDNH, contending that the Complainant, assisted by a specialist cybersecurity firm, failed to undertake basic technical due diligence that would have revealed the absence of any email infrastructure associated with the disputed domain name and the alleged phishing email’s true origin from an external Gmail account. The Complainant is indeed represented by a specialist cybersecurity firm, and it could well be asked whether they may have appreciated the points around spoofing and SPF addressed above. Nevertheless, the phishing email was prepared with cunning and the display name versus sending address issue was, by design, easy to miss. Although the Complainant was professionally represented, the Panel is not persuaded that the deficiencies in the Complaint were so obvious that the filing of the Complaint itself constituted an abuse of process. The Panel declines to find RDNH accordingly.
Complaint Denied
Complainant’s Counsel: ZeroFox, United States
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This is a particularly important decision because it demonstrates the degree of technical care that allegations of phishing require. Such claims are among the most serious in a UDRP proceeding, and their apparent gravity can easily overwhelm a disciplined examination of the evidence. Here, while the phishing email was genuine, the alleged connection between that email, the disputed domain name, and the Respondent was not. The phisher inserted a Complainant employee’s name and an email address incorporating the disputed domain name into the display field, while the actual sending address was a Gmail account. Any third party could have inserted that text without controlling or using the disputed domain name.
Procedural Order No. 1 provides an excellent model for panels confronted with similar claims. Rather than relying on the visual appearance of a forwarded email, the Panel requested the original message alongside its full, unaltered SMTP headers. Those headers enabled the Panel to determine the message’s actual provenance and confirm that it originated from Gmail, not the disputed domain name. The distinction between what an email displays and what its technical records reveal about its origin is elementary to email forensics, yet it often receives insufficient attention in domain name disputes. The UDRP Rules expressly authorize panels to request further documents, and the Panel exercised that authority precisely as intended when a decisive allegation rests on an inadequate initial record.
The Panel’s additional consideration of the Complainant’s SPF records reflects the same analytical discipline. Without attempting to speculate on the phisher’s actual motives, the Panel identified a technically plausible explanation for why an unrelated wrongdoer might use a typographical variant in the display field—namely, to evade authentication controls associated with the Complainant’s primary domain name. More important than this specific explanation is the underlying method: the Panel tested the Complainant’s proposed inference against actual email protocol mechanics, rather than assuming that a domain name in a display field established control or involvement by the registrant.
This decision sets an encouraging example of technical sophistication for UDRP panels handling claims of online fraud. Panels are not expected to act as cybersecurity laboratories; however, where a complaint relies on an alleged email scheme, the underlying technical evidence must be examined. A screenshot, forwarded message, or visible “From” header indicates what a recipient saw, but it does not establish where the message originated or who sent it.
The risks of failing to perform this analysis are especially acute in default proceedings. Because spoofing a domain name in an unauthenticated email is trivially easy, accepting a spoofed email as automatic evidence of bad faith creates a dangerous precedent: hijacking a domain name via the UDRP would become as simple as fabricating a spoofed email, filing a complaint, and hoping the domain owner fails to appear.
Ultimately, this Panel demonstrated the correct approach to uncorroborated claims. Allegations cannot be evaluated in isolation, particularly when a respondent defaults. Just as trademark rights must be verified and bare assertions regarding the implausibility of passive holding must be tested, claims of email fraud require verifying actual technical origin. Requesting full headers via a procedural order, as demonstrated here, provides an essential model for panels seeking to maintain procedural integrity and safeguard due process.
Once the phishing allegation was properly removed from the equation, the Complainant’s targeting case was reduced largely to similarity. The Complainant had not demonstrated that its mark was well known, had produced no evidence explaining why a domain name investor in Germany would have known of it, and operated a website that was inaccessible to users outside the United States. “HIA” was a three-letter acronym with broad potential application, the Respondent’s investment explanation was not contradicted by the record, and the disputed Domain Name had been held for approximately 11 years without direct evidence of bad-faith conduct. The Policy asks whether the respondent registered and used the domain name in bad faith. It does not permit a transfer merely because an unrelated phisher later selected the domain name as text to insert into a falsified display name.
The decision on RDNH was measured. The Respondent had substantial grounds for requesting it: the Complainant was represented by a specialist cybersecurity firm, the actual Gmail sending address was visible from the face of the forwarded email, and the original headers confirmed that the disputed Domain Name had not sent the message. The Panel nevertheless accepted that the phishing email had been prepared with sufficient cunning that the distinction between the display name and the actual sending address was easy to miss, and was not persuaded that filing the Complaint amounted to an abuse of process. Whether every panel would have exercised its discretion in the same way, the refusal to find RDNH does not diminish the decision’s central contribution.
Equally appropriate was the Panel’s decision to redact the Respondent’s name. The evidence indicated that an unrelated third party had placed the disputed Domain Name into a fraudulent email without the Respondent’s involvement. Publicly and permanently associating the Respondent’s identity with phishing in those circumstances would itself have produced an unfair reputational consequence. The combination of procedural initiative, technical literacy, evidentiary restraint, and attention to the innocent registrant’s reputation makes this decision an important model for future UDRP cases involving alleged email fraud.
Common Spanish and Indonesian Word Defeats Colombian Trademark Claim
Agencia de Aduanas Pasar Ltda. Nivel 1 v. 3 Mings LLC, Ming K Chow, WIPO Case No. D2026-2346
<pasar.com>
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant is a Colombian company providing integrated logistics services, operating under the PASAR brand and using the domain name <pasarltda.com>. It holds three Colombian trademark registrations: ALPASAR (registered June 28, 2023), PASAR (registered July 7, 2023), and a mixed PASAREX mark (registered September 11, 2023). The Complainant was incorporated in Bogotá in 1978 but did not file its trademark applications until 2022. The US-based Respondent registered the disputed domain name on March 18, 1999. The Respondent also registered other common Indonesian words (including “anggur,” “belanja,” “biru,” “perusahaan,” and “sewa”) as domain names in the period 1998–2000. In 2008, the Respondent was developing a multilingual and multi-geo-location classifieds and marketplace website to leverage “pasar” as an Indonesian word but the project did not take off due to other priorities. The disputed domain name is passively held and does not resolve to any website.
The Complainant alleges that the Respondent registered and acquired the disputed domain name for the purpose of preventing the Complainant from using it to reflect its trademark and offering its services through a website legitimately associated with said name. The Complainant further asserts that the disputed domain name is not operational or accessible to Internet users and therefore serves no commercial, informative, or legitimate purpose that would justify its retention by the Respondent. The Respondent contends that “pasar” is a highly versatile Spanish verb meaning “to pass” or “to go through,” a common Indonesian and Malay word meaning “market,” and that the Complainant has not acquired sufficient secondary meaning to claim exclusive rights. The Respondent further contends that it registered the disputed domain name 27 years before receiving notice of the Complaint, with a documented bona fide development concept, and requests a finding of RDNH.
Held: The Panel found the first element satisfied, as the disputed domain name is identical to the Complainant’s registered PASAR trademark. The Panel declined to consider the second element in light of its findings on the third element. On bad faith, the Panel noted that the disputed domain name was registered in 1999, some 24 years before the Complainant obtained its trademark registrations in 2023. Where a respondent registers a domain name before a complainant’s trademark rights accrue, UDRP panels will not normally find bad faith on the part of the respondent. See WIPO Overview 3.1, section 3.8.1. The Panel saw no exceptional circumstances indicating that the Respondent’s intent was to capitalise on nascent, as yet unregistered, trademark rights. See WIPO Overview 3.1, section 3.8.2. Although the Complainant was incorporated in 1978, there was no evidence of any trademark use at the time of registration. In any case, “pasar” is a very common dictionary word in Spanish, as well as in Indonesian and Malay, such that it could have multiple uses in a domain name without reference to the Complainant. Nothing on the record indicates that the Respondent knew, or should have known, of the Complainant or any nascent trademark rights when it registered the disputed domain name.
RDNH: The Panel notes that the Complainant has legal representation. Despite this, it made no attempt to show that the Respondent could or should have known of the existence of itself or any of its marks at the time when it registered the disputed domain name. It chose to ignore the prolonged interval between the registration of the disputed domain name and the registration of its trademarks, omitting even to state the trademark registration dates in its arguments. Further, the Complainant failed to acknowledge that the disputed domain name is a very common word with multiple meanings that do not refer to itself, such that a good faith use is plausible. There is every reason to believe that the Complainant knew that the Complaint as presented could not succeed on any reasonable interpretation of the Policy. Clearly, the Complainant feels that it would make better use of the disputed domain name than the Respondent is making of it, but that is no basis for a UDRP complaint. The Complainant has unjustifiably put the Respondent to the time and effort of defending itself.
Complaint Denied (RDNH)
Complainant’s Counsel: Muñoz Abogados S.A.S., Colombia
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The central defect in the Complaint is captured by the Panel’s observation that the Complainant evidently believed it would make better use of the disputed Domain Name than the Respondent, but that such a belief provides no basis for relief under the UDRP. The Policy does not allocate domain names according to which party has the more immediate commercial use for them, nor does it operate as a means of correcting a complainant’s failure to secure a desirable domain name decades earlier. It addresses abusive registration and use directed at a trademark owner. Here, the disputed Domain Name was registered in 1999, the Complainant did not apply for its trademarks until 2022, and the record contained no evidence from which the Respondent’s knowledge of, much less targeting of, the Complainant could plausibly be inferred (see section 3.8.1 of the WIPO Overview 3.1).
The fact that the Complainant had existed as a corporation since 1978 did not bridge that evidentiary gap. Corporate existence is not synonymous with trademark use, reputation, or public recognition, and the Panel distinguished the Complainant’s corporate history from evidence of activities or trademark use in 1999 capable of coming to the attention of a United States registrant. The record contained none. The chronology therefore did more than show that the registered trademarks postdated the disputed Domain Name by 24 years. It exposed the absence of any factual basis for the proposition that the Respondent registered the disputed Domain Name because of the Complainant or any nascent rights belonging to it.
The nature of the term made the Complaint weaker still. “Pasar” is a common Spanish verb with numerous meanings and also means “market” in Indonesian and Malay. The Respondent’s registration of other Indonesian dictionary terms during the same period was consistent with an interest in the linguistic value of such words rather than an effort to prevent this particular Colombian company from reflecting its mark in a domain name. The Respondent also produced a 2008 internal email thread evidencing contemporaneous consideration of a geo-located global classifieds platform associated with “pasar”. The Panel did not need to decide the second element, but this evidence reinforced the central point under the third: the disputed Domain Name had obvious meanings and potential uses entirely independent of the Complainant. As we observe elsewhere in this edition in connection with <scentstories.com>, an affirmative finding under the second element would have required little additional analysis and would have afforded the Respondent the fuller vindication that the record supported, though the RDNH finding here supplies much of that vindication on its own.
The Complainant’s reliance on the Respondent’s nonuse was equally misplaced. The Policy does not impose a use-it-or-lose-it rule, and passive holding cannot manufacture bad-faith targeting where the domain name predates the complainant’s demonstrated trademark rights and the record discloses a credible, independent dictionary-word rationale for its registration. Nor does the mere fact that a complainant now has a business use for the domain name impose an obligation on the registrant to surrender it. The Complainant was required to prove that this Respondent registered the disputed Domain Name with the Complainant or its rights in mind (see UDRPPerspectives.org at section 3.3). The absence of an active website supplied no substitute for that proof.
The asserted blocking theory was also difficult to reconcile with the Policy’s actual requirements. Paragraph 4(b)(ii) addresses a registration made to prevent a trademark owner from reflecting its mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. Nothing in the record suggested a pattern of registrations directed at the Complainant or at other trademark owners. To the contrary, the Respondent’s contemporaneous acquisitions of other dictionary terms were consistent with a pattern of registering Indonesian dictionary words unrelated to the Complainant. A complainant cannot convert a respondent’s ownership of a desirable common-word domain name into abusive blocking merely by asserting that it would prefer to own the name itself.
The RDNH finding was amply warranted and is expressed in unusually direct terms. The represented Complainant made no attempt to explain how the Respondent could have known of it in 1999, omitted the trademark registration dates from its arguments, ignored the 24-year gap between registration of the disputed Domain Name and registration of its marks, and failed to confront the multiple dictionary meanings of the term. These were not peripheral defects that emerged only after a finely balanced evidentiary assessment. They were the facts that determined whether the Complaint could succeed at all. As the Panel found, there was every reason to believe that the Complainant knew that the Complaint as presented could not succeed on any reasonable interpretation of the Policy.
The final sentence of the RDNH analysis deserves particular attention: the Complainant unjustifiably put the Respondent to the time and effort of defending itself. That is the practical harm that an RDNH finding recognizes. A domain name registrant should not be required to defend a 27-year-old common-word registration merely because a later trademark owner considers itself a more deserving user. The UDRP provides an efficient remedy for cybersquatting, not a discounted acquisition procedure for domain names that another party would now prefer to own.
Disclaimer: The facts are taken from the decisions themselves and have not been independently verified. The editors and publishers accept no responsibility for their accuracy.
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.