Plan B Without a Penalty: The Rocca.com Panel Divides on RDNH
The merits of this case were never close. A man named Rocca, using <rocca.com> for his family’s email since 2001, seven years before the Complainant’s earliest ROCCA registration, is about as far from a cybersquatter as the Policy contemplates, and the Panel was unanimous in denying the Complaint. The more interesting question was Reverse Domain Name Hijacking, on which the Panel split two to one. The majority declined to find RDNH because the registrant of record was a company dissolved in 2012 whose details had never been updated, the website was parked, and a broker had quoted a six-figure price that could reasonably have coloured the Complainant’s view of the Respondent’s motives. The minority would have found it. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 6.39) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Plan B Without a Penalty: The Rocca.com Panel Divides on RDNH (rocca.com *with commentary)
‣ You Cannot Describe an LSAT Service Without Saying LSAT: Nominative Use Prevails Again (lsataccommodations.com and lsataccomodations.com *with commentary)
‣ Panel Treats Fraudulent Transfer as Fresh Registration and Orders Return to Religious Institution (shridharmasthala.org *with commentary)
‣ Domain Investor’s “X” Brandable Portfolio Survives Claim Despite AI-Startup-Matching Sales Copy (xano.ai *with commentary)
‣ Domain Investor’s “Nerd” Portfolio and WIPO Database Screen Defeat Lapsed-Domain Trademark Claim (cnerd.com *with commentary)
Plan B Without a Penalty: The Rocca.com Panel Divides on RDNH
Damiani International S.A. v. Andrea Rocca, Giuliana Bossi Rocca, WIPO Case No. D2026-2719
<rocca.com>
Panelist: Mr. Steven A. Maier, Mr. Fabrizio Bedarida and Mr. Edoardo Fano
Brief Facts: The Complainant is a retailer of luxury watches and jewellery, trading under the name and trademark ROCCA through physical outlets in Italy and various other locations worldwide, as well as online at <rocca1794.com>. The Complainant owns various trademark registrations for ROCCA, including, for example, EU trademark registrations for the word mark (September 1, 2008) and the figurative mark ROCCA 1794 (August 13, 2020). The disputed Domain Name was acquired in 2001 by Finco SRL, an Italian company in which the Respondent, Andrea Rocca (also acting for co-respondent Giuliana Bossi Rocca, the minority shareholder), held a 95% stake. Finco SRL was dissolved in 2012 and, under Italian law, its assets (including the domain) passed to its shareholders, although the WHOIS record was never updated. Archive.org shows the Domain Name displaying “Andrea Rocca” with a matching email address in 2009, before being parked from 2010 onward.
The Complainant acknowledges that “rocca” is an Italian dictionary word and a common surname. It alleges that the disputed Domain Name has never been used for a legitimate business under that name, and that the only apparent connection is a historical WHOIS record listing “Andrea Rocca” as Finco SRL’s administrative contact on March 11, 2009. The Complainant further alleges that the MX records were a technical device to mask passive holding and that a 2024 broker exchange, in which the owner allegedly sought a mid-six-figure price, demonstrates speculative intent. Lastly, it submits that it filed the Complaint in good faith based on the information then available, as Finco SRL remained listed as registrant despite its dissolution. It argues that any later evidence of legitimate interests does not retroactively render the Complaint abusive.
The Respondent contends that the Domain Name matched his own surname and had been used continuously for personal and family email, over 100,000 messages in his own account, well before any dispute arose. The Respondent denies ever offering to sell the domain, producing evidence of unsolicited purchase approaches in 2011, 2015, 2018, 2019, and 2020, the last of which he declined, and argued the USD $500,000 figure cited by the Complainant was never quoted by him but likely invented by the broker to close out the inquiry. The Respondent further contends that the proceeding is an attempt at Reverse Domain Name Hijacking, asserting the Complainant knew or should have known this was not a clear cybersquatting case, had failed to make basic contact efforts before filing, and was really pursuing the Domain Name only after a failed purchase attempt tied to a rebranding strategy.
Held: The Respondent has demonstrated to the satisfaction of the Panel that the disputed Domain Name is used by the Respondent, and other members of the Respondent’s family named Rocca, for the purpose of active email accounts. The evidence demonstrates genuine and longstanding use of the disputed Domain Name as an email identifier corresponding to the family name Rocca, rather than a token or recently-created use designed to support the present proceeding. Specifically, as contemplated by paragraph 4(c)(iii) of the Policy, the Respondent is making a legitimate noncommercial or fair use of the disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel finds, furthermore, that the Respondent has commonly been known by a name corresponding to the disputed Domain Name (Policy, paragraph 4(c)(ii)).
The Panel further finds that the disputed Domain Name was neither registered nor used in bad faith, given that it was used for personal email accounts operated by the Respondent and other members of a family genuinely named “Rocca.” There is no evidence upon which to conclude that this activity was in some manner a sham or pretext designed to disguise the Respondent’s targeting of the Complainant’s trademark, or that the Respondent registered or has used the disputed Domain Name in an attempt to take unfair advantage of the Complainant’s trademark rights. Concerning the negotiations to purchase the disputed Domain Name in 2024, which were initiated by the Complainant and not the Respondent, the Panel accepts on balance the evidence of the Respondent that he did not canvass a figure of at least USD $500,000 for the sale of the disputed Domain Name, and that this was more likely a figure volunteered by the broker.
RDNH (Majority – Panelists Mr. Bedarida and Mr. Fano): The Majority Panelists find it significant that the Respondent failed to update the registration details for the disputed Domain Name following the dissolution of the original registrant, Finco SRL, in breach of, e.g., the applicable ICANN regulations. The Majority Panelists do not believe it was incumbent upon the Complainant to attempt to contact the Respondent via the “[…]@rocca.com” email address, since the evidence of that email address in the Complainant’s possession dated back to 2009 or 2010. The Complainant was, therefore, not unreasonable in not trying to use it. The Majority Panelists observe that, so far as the Complainant was aware, the disputed Domain Name was being passively held, and also that the Complainant would have faced objective difficulties in determining whether or not the disputed Domain Name had been used for the purposes of email.
The Majority Panelists also take account for the fact that the Complainant has been advised by the broker of a six-figure price to purchase the disputed Domain Name, which may reasonably have influenced the Complainant in filing the Complaint, irrespective of the question of whether the Respondent had in fact approved that offer. The Majority Panelists are not of the view that the Complainant brought the Complaint in bad faith following the failure of its attempt to purchase the disputed Domain Name on commercial terms.
RDNH (Minority – Presiding Panelist Mr. Maier): The Minority Panelist is unable to discern any basis upon which the Complainant may reasonably have believed that the disputed Domain Name was registered in order to target its ROCCA trademark. There is no evidence of the Respondent having engaged in any activity under the disputed Domain Name that might confuse Internet users into believing that the disputed Domain Name was owned or operated by, or otherwise legitimately affiliated with, the Complainant. Moreover, even if the broker’s pricing of the disputed Domain Name at a minimum of USD $500,000 evidenced the use of the disputed Domain Name in bad faith, that would have no bearing upon the circumstances of the registration of the disputed Domain Name some 23 years previously. The Complainant is expertly represented in the proceeding, and must therefore be taken to have known of the conjunctive requirement of demonstrating both registration and use of the disputed Domain Name in bad faith, in the absence of which a complaint cannot succeed.
Secondly, given that the Complainant was prepared to approach the Respondent, albeit indirectly, with an offer to purchase the disputed Domain Name, the Minority Panelist considers it unreasonable that it made no attempt to contact the Respondent, either using the email address in its possession or via the Registrar, to put forward its allegation that the Respondent had registered the disputed Domain Name abusively and to demand its transfer to the Complainant. Thirdly, the Minority Panelist takes a different view from the Majority Panelists concerning the Complainant’s failed attempt to purchase the disputed Domain Name from the Respondent. While the disputed Domain Name was acquired by the Respondent in 2001, and the ROCCA trademark and attendant rights acquired by the Complainant in 2008, at no time during the following 18 years does the Complainant appear to have asserted that the disputed Domain Name had been registered abusively and that it was entitled to a transfer of it under the terms of the UDRP.
The Minority Panelist concluded the Complainant lacked a genuine belief in bad-faith registration, but the Majority view prevailed and no RDNH finding was made.
Complaint Denied
Complainant’s Counsel: Kivial s.r.l., Italy
Respondent’s Counsel: Chiomenti, Italy
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The merits of this case were never close. A man named Rocca, using <rocca.com> for his family’s email since 2001, seven years before the Complainant’s earliest ROCCA registration, is about as far from a cybersquatter as the Policy contemplates, and the Panel was unanimous in denying the Complaint. The more interesting question was Reverse Domain Name Hijacking, on which the Panel split two to one. The majority declined to find RDNH because the registrant of record was a company dissolved in 2012 whose details had never been updated, the website was parked, and a broker had quoted a six-figure price that could reasonably have coloured the Complainant’s view of the Respondent’s motives. The minority would have found it.
The Complainant acknowledged that “rocca” is an Italian dictionary word and a common surname, and a 2009 record connecting the Domain Name to a person of that surname was available to the Complainant. It chose to approach the Respondent through a broker to buy the name, and only when it was unsatisfied with the price, did it allege that the name had been abusively registered, without ever putting that allegation to the Respondent directly. That sequence, a purchase attempt followed by a complaint when the price proves unwelcome, is the pattern that UDRP Perspectives, §4.2 (When a Finding of RDNH is Appropriate) identifies as characteristic of an abusive filing, and the minority found it here.
The Complainant had good reason to want the Domain Name for itself due to rebranding and had attempted to purchase it. On what basis however, could the Complainant have reasonably believed that the Respondent had targeted the Complainant’s trademark, particularly in light of the common nature of the surname, Rocca? The short answer, is that there was no such evidentiary basis, as the minority found.
This is a very common fact pattern in that faced with the prospect of paying more than it wants to for a common term domain name that it has no monopoly rights over, a complainant will often turn to legal advisors. It often doesn’t take a lot to make out a prima facie case even if it is ultimately a losing one. An unsuccessful complaint costs the complainant a filing fee and its own legal costs and nothing more, while the respondent bears the full cost of defending a name it was entitled to hold. RDNH is the only counterweight the Policy provides, and a modest one at that.
Reasonable panelists can differ on whether the Complainant’s conduct crossed the line, and the majority’s reluctance to declare RDNH against a complainant confronted with a stale registration record is understandable. But the minority’s central point does not depend on the state of the record. The Complainant knew the registration date and knew the date of its own rights before it filed, and absent any evidence of bad faith registration, which was independently fatal, those dates alone should have shown it that this was a speculative Complaint.
And it turned out relatively well for the Complainant. It got a kick at the can without repercussion.
You Cannot Describe an LSAT Service Without Saying LSAT: Nominative Use Prevails Again
Law School Admission Council, Inc. v. Stephanie de Pinho, Forum Claim Number: FA2608002238218
<lsataccommodations.com> and <lsataccomodations.com>
Panelists: Ms. Dawn Osborne, Mr. Nicholas J.T. Smith and Ms. Claire R. Kowarsky (Chair)
Brief Facts: The Complainant is a not-for-profit organization that provides products and services relating to the law school admission process, holds numerous U.S. registrations for the LSAT mark, and has operated <lsat.com> since 2000. The Respondent, whose named registrant is Stephanie de Pinho, holds the two domain names on behalf of American Disabilities Testing Association LLC (“ADTA”), a business that provides clients with access to licensed clinicians who evaluate whether an individual’s disability-related symptoms and functional limitations support documentation for requested LSAT testing accommodations. The Domain Names, registered in June 2026, combine “LSAT” with “accommodations” and a common misspelling thereof. They resolve to a website branded with the ADTA name and logo that refers extensively to “LSAT Accommodations” and “LSATAccommodations.com” as service identifiers.
The Complainant alleges the Domain Names are confusingly similar and that the Respondent’s website, with only an inconspicuous disclaimer, was likely to make users believe it was owned or authorized by the Complainant, exceeding legitimate descriptive use. The Complainant further alleges bad faith under the disruption and confusion provisions of paragraph 4(b), contending the Respondent knowingly targeted the LSAT mark, used privacy registration, and ran a site designed to pass itself off as the Complainant or an authorized licensee. The Respondent contends that it holds rights or legitimate interests through nominative fair use, since it cannot accurately describe its LSAT-specific accommodation-documentation services without referencing the LSAT by name. It relies on three prior Forum decisions involving the same Complainant in which panels found legitimate interests for independent LSAT-related service providers using the mark descriptively.
Held: The record establishes that the Respondent operates a genuine commercial business providing evaluation and documentation services to individuals seeking disability-related accommodations in connection with the LSAT. Previous panels have considered similar circumstances involving the Complainant’s LSAT mark. The present case resembles those earlier cases but differs in certain material respects. In particular, the Respondent makes more extensive use of the LSAT mark on its website and in its marketing, including by referring to its service as “LSATAccommodations.com” in addition to identifying itself as ADTA. Further, although the Respondent’s website includes a disclaimer stating that it is not affiliated with the Complainant, that disclaimer is less prominent than the references to the LSAT appearing elsewhere on the website. These circumstances warrant consideration in determining whether the Respondent’s use constitutes a bona fide offering of services giving rise to rights or legitimate interests under the Policy.
Nevertheless, considering the record as a whole, the Panel is not persuaded that these circumstances negate the Respondent’s rights or legitimate interests under the Policy. The Respondent provides an actual service specifically related to LSAT accommodations; the Domain Names directly describe that service; and the Respondent prominently identifies the service provider on the website through the ADTA logo and the name “American Disabilities Testing Association.” The Panel, therefore, does not accept the Complainant’s contention that the Respondent’s use is merely a pretext to impersonate the Complainant or suggest an affiliation with it. Rather, the Respondent uses the LSAT mark to identify the examination in relation to which it provides independent test-accommodation evaluation and documentation services. On balance, the Panel finds that the Respondent’s use of the Domain Names in connection with its bona fide offering of independent LSAT-related services is sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy.
RDNH: The Panel declines to make an RDNH finding. Although the Complainant has not succeeded in this proceeding, the Panel considers that it had a reasonable basis for bringing the Complaint. The Panel acknowledges Respondent’s argument that the Complainant, represented by experienced counsel, was aware of several earlier decisions rejecting complaints involving independent providers of LSAT-related services. On the other hand, the Complainant has also succeeded in other UDRP proceedings concerning its LSAT mark. The Respondent makes extensive use of Complainant’s LSAT mark in connection with its website and marketing, including use of “LSATAccommodations.com” as a service identifier.
The Panel considers that these circumstances differ in material respects from those presented in the earlier UDRP proceedings relied upon by the Respondent. The Complainant, therefore, had a reasonable basis for seeking a determination under the Policy in respect of the Respondent’s particular conduct. The fact that the Complainant has previously been unsuccessful in proceedings involving different respondents and materially different factual circumstances does not, without more, establish that the Complainant knew or should have known that it could not succeed under the Policy, or that the Complaint was otherwise brought in bad faith.
Complaint Denied
Complainant’s Counsel: Wendy K. Marsh of Nyemaster Goode, P.C., USA
Respondent’s Counsel: Douglas M Isenberg of The GigaLaw Firm, USA
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Respondent runs a business that connects people seeking disability accommodations on the LSAT with clinicians who can evaluate and document their needs. That is a service about the LSAT, offered to LSAT candidates, and it cannot be described without saying so. The Complainant administers the LSAT and decides which accommodation requests are granted. A complaint by the test administrator against an independent provider of accommodation documentation is not a dispute about a domain name in any ordinary sense. Whatever the Complainant’s purpose, a transfer would have removed from the market a business the Complainant plainly regards as unwelcome, and the Domain Names were the available lever.
The Panel was right to decline. It accepted that the Respondent operates “a genuine commercial business,” that the Domain Names “directly describe that service,” and that the website prominently identifies the provider as the American Disabilities Testing Association, with its own name and logo.
The Respondent uses LSAT “to identify the examination in relation to which it provides independent test-accommodation evaluation and documentation services,” which is what any business serving LSAT candidates must do. Whether the Respondent’s marketing is as careful as it could be is a question for a trademark court, if it is a question at all. It is not a basis for transferring the domain names of a going concern under a policy directed at cybersquatting, which is the limited scope the UDRP was given and which UDRP Perspectives, §0.1 (Scope of the Policy) describes.
This is at least the fourth complaint the Complainant has brought against an independent provider of LSAT-related services on a nominative-use theory, and the fourth it has lost. Each of those respondents was a small business put to the expense of defending its domain names against a well-resourced complainant represented by experienced counsel.
A panel assessing whether a complaint was brought in bad faith is entitled to look at the merits of the particular case, as this one did. It is also entitled to ask whether a complainant that repeatedly invokes the Policy against independent service providers has stopped using the Policy to resolve disputes about domain names and started using it as a cost-of-doing-business tool against competitors it cannot otherwise reach (see UDRP Perspectives, §4.2 (When a Finding of RDNH is Appropriate)). The next panel to see this Complainant across the table from an LSAT service provider may wish to ask that question.
Panel Treats Fraudulent Transfer as Fresh Registration and Orders Return to Religious Institution
Shri Dharmasthala Manjunatheshwara Educational Society v. Chen Jia, CAC Case No. CAC-UDRP-108857
<shridharmasthala.org>
Panelist: Mr. Dietrich Beier
Brief Facts: The Complainant is the administrative and educational body of Shri Dharmasthala, a South Indian religious institution with a history of over 800 years. It was registered under the Karnataka Societies Registration Act in 1985 and operates alongside a related Educational Trust. It has held the disputed Domain Name since 2001 and used it as its primary online platform since 2003, including for temple accommodation bookings, seva reservations, and online donations. The Complainant relies on common law rights in DHARMASTHALA and SHRI DHARMASTHALA. On June 10, 2026, the Domain Name was transferred out of the Complainant’s control without its knowledge or consent. The registrar reported foreign logins to the account from March 11, 2026, originating in Sweden, Switzerland, and later Japan; the account had no two-factor authentication, and its email address appeared in public data breaches. However, the website continued to resolve to its original content.
The Complainant asserts that it holds common law rights in SHRI DHARMASTHALA, pointing to use of the name as an institutional and commercial identifier since 1966 (reinforced by domain use since 2003–04) on its registration certificates, renewal invoices, official email IDs, website, and communications, and in the title of Shri Dharmasthala Manjunatheshwara University Act, 2018. It cited the domain’s role as its primary commercial platform; decades of media coverage, including visit by the Indian Prime Minister, and a National Geographic feature on its Annadana dining hall; social media followings of 580,000 on Facebook and 225,000 on Instagram; roughly 5.5 million devotees annually; and 30,000 to 70,000 meals served daily. It further alleges the Domain Name was fraudulently obtained through the account compromise, that this amounts to bad-faith registration, and that the Respondent’s continued control over where the domain points is an ongoing bad-faith use. The Respondent did not file a Response.
Held: The Complainant has shown relevant factors such as (i) the duration and nature of the use of the mark, (ii) sales under the mark, (iii) the nature and extent of advertising using the mark, including evidence of expenditures over a relevant time period, and (iv) the degree of actual public recognition (e.g., by consumers, industry, trade and professional associations, or the media). The Complainant has also shown that the claimed mark is used as a source identifier of goods or services e.g., on a website or on products or packaging used in commerce, provided that the mark, as used, is linked to the goods or services that are being branded with the mark. Even if the acquired distinctiveness as shown above should be limited to the region in India, this would not prevent the existence of common law rights in view of the UDRP, since as noted in section 1.1.2 of the WIPO Overview. The disputed Domain Name is identical to the Complainant’s common law SHRI DHARMASTHALA mark.
The keeping up of a domain name fraudulently acquired and letting the legitimate owner announce the Complainant’s goods and services cannot be considered as a bona fide offering of related goods or services by the Respondent. The Panel therefore finds that the Respondent does not have rights or legitimate interests in the domain name. Further, in view of the intense use of the name and the disputed Domain Name by the Complainant, the Respondent must have been aware of the Complainant and its trademarks when obtaining the disputed Domain Name. The (fraudulent) acquisition of the Domain Name is here considered as equivalent to an initial registration of a domain name and further use is considered as use in bad faith since it is also established that the redirecting of the disputed Domain Name to Complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant (section 3.1.4 of WIPO Overview 3.1). The Panel therefore considers the disputed Domain Name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
Transfer
Complainant’s Counsel: UDRPKing.com
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Complainant, the educational and administrative body of an 800-year-old South Indian temple institution, had held <shridharmasthala.org> since 2001 and run its accommodation bookings, seva reservations and online donations through it since 2003. In June 2026 the Domain Name was transferred out of its registrar account without its knowledge, after months of logins from Sweden, Switzerland and Japan to an account that had no two-factor authentication and whose email address had appeared in public data breaches. The hijacker then left the website pointing at the Complainant’s own content.
That left the Complainant with three difficulties: a mark that was never registered, a domain name that had been stolen rather than registered against it, and a respondent who had done nothing visible with the property. The Panel worked through each and ordered a transfer.
On rights, the Panel accepted common law rights in SHRI DHARMASTHALA on the strength of six decades of institutional use, the Domain Name’s role as the Complainant’s principal commercial platform, national and international media coverage, and a following that runs to millions of annual visitors. It added that distinctiveness confined to a region of India would still suffice for the Policy.
On the harder questions, the Panel treated the fraudulent acquisition as “equivalent to an initial registration,” so that the Respondent’s knowledge of the Complainant at the moment of the acquisition satisfied the registration limb. It then held that leaving the Domain Name pointed at the Complainant’s website was use in bad faith because the Respondent “retains control over the redirection thus creating a real or implied ongoing threat to the complainant.” Both conclusions are sound. Treating an unauthorized transfer obtained through account compromise as a new registration for the purposes of the Policy appropriately focuses on the Respondent’s acquisition of control over the Domain Name, while the Respondent’s continuing ability to redirect it created the ongoing threat the Panel identified. A registrant whose website continues to resolve only at the sufferance of the person who hijacked the name has lost it as surely as if the site had gone dark.
The Complainant in this case was successfully represented by Ankur Raheja, the Editor in Chief of this Digest.
Domain Investor’s “X” Brandable Portfolio Survives Claim Despite AI-Startup-Matching Sales Copy
Xano, Inc. v. Patrick Robalewski, Forum Claim Number: FA2608002237082
<xano.ai>
Panelist: Mr. Ho-Hyun Nahm, Esq., Professor David E. Sorkin, and Mr. Alan L. Limbury (Chair)
Brief Facts: The Complainant owns the registered mark XANO (U.S. registration originally granted to BB Games, Inc. in 2015, with the assignment to the Complainant recorded on August 26, 2025) for backend web-development and automation software, and now markets an AI-agent backend platform. The disputed Domain Name was registered by the Respondent, a domain investor trading as “LamaDomains,” on August 7, 2024, before the assignment to the Complainant was recorded and before the Complainant’s first AI-feature release in March 2025 (per the Respondent). The Domain Name resolves to a registrar sales page listing it for USD $300,000, with AI-generated marketing copy describing it as suited to “AI startups in backend automation, data infrastructure, or no-code/low-code platforms.”
The Complainant alleges that the Domain Name resolves solely to a sales page offering it for USD $300,000, with a description closely mirroring the Complainant’s established business. It argues the Respondent is therefore not offering a coined domain for an unrelated dictionary meaning, but marketing a domain consisting entirely of the Complainant’s distinctive mark for use in the same or a closely related commercial field. The Respondent contends that it is a professional domain investor dealing in short, brandable, pronounceable strings, particularly four-letter “.ai” names. The Respondent further contends “xano” is not a coined term but an ordinary word in multiple living languages, and that the mark itself was held by an unrelated company (BB Games, Inc.) for most of the period the Complainant relies on.
Held: The Panel finds that the Respondent, a domain name investor, registered the <xano.ai> Domain Name with intent to sell it to the general public, as with Respondent’s similarly structured domain names. The Panel finds that the Respondent has shown that it has rights or legitimate interests in respect of the domain name because, as a domain name investor in similarly structured domain names who had previously acquired the <xeno.ai> domain name, the Respondent registered and is using the <xano.ai> domain name in connection with a bona fide offering of services, namely the offering of the domain name itself for sale to the general public. See UDRP Perspectives (“www.udrpperspectives.org”), section 2.6 and also see typeguard, inc. v. Narendra Ghimire, WIPO Case No. DAI2026-0029, July 13, 2026 (<glide.ai>).
The Panel makes this finding irrespective of whether the Respondent might have been aware of BB Games, Inc.’s XANO mark when the Respondent registered the domain name, since the Respondent has shown that there are many other registrants of the XANO mark unrelated to the Complainant, and that the word “xano” is an ordinary word in Greek and Catalan, and a Portuguese diminutive of the given name Alexandre, used by a professional Portuguese footballer. Based upon the evidence before it, the Panel finds it more likely than not that the Respondent selected <xano.ai> for reasons entirely unrelated to the Complainant and its use of Xano. The aforesaid circumstances also satisfy the Panel that the Respondent did not register the disputed Domain Name in bad faith and is not using it in bad faith.
RDNH: The Complainant clearly satisfied the first UDRP element and had a reasonable basis to believe it could also satisfy the second and third elements when filing this complaint. Given that the <xano.ai> domain name resolved to a sales page explicitly marketing the domain as perfect for “AI startups in backend automation, data infrastructure, or no-code/low-code platforms”, the Complainant had colorable grounds to pursue this proceeding.
Even though the domain name was offered to the general public rather than directly to the Complainant, the presence of automated content that so closely mirrored Complainant’s highly specialized business niche understandably led the Complainant to believe it had a valid case for targeting. Because the Complainant initiated this proceeding with a reasonable, good-faith belief in its chances of success, the Panel declines to find that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding.
Complaint Denied
Complainant’s Counsel: Valerie Franxman, California, USA
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision makes a useful pair with Damiani International S.A. v. Andrea Rocca, WIPO Case No. D2026-2719 (<rocca.com>), commented on above.
Both complaints failed for want of targeting, and in both the complainant escaped a finding of Reverse Domain Name Hijacking, but the two cases sit at different points on the spectrum.
On RDNH, the Rocca majority declined to find RDNH in part because a stale registration record obscured who the registrant was and what he intended; the minority thought the registration date, which the Complainant knew, should have ended the matter before filing.
The Xano Panel declined because the registrar’s sales page carried AI-generated copy describing the Domain Name as suited to “AI startups in backend automation, data infrastructure, or no-code/low-code platforms,” a description that “so closely mirrored Complainant’s highly specialized business niche” that it “understandably led the Complainant to believe it had a valid case for targeting.”
Of the two bases for declining RDNH, Xano’s is considerably stronger. A complainant reading that copy could reasonably have thought the Respondent had it in mind, and the Panel was entitled to give weight to that impression even though the copy was automated and the offer was to the world at large. The Rocca Complainant had no equivalent: nothing on the record pointed at it, and the one fact that mattered, the registration date, pointed the other way (see UDRP Perspectives, §4.2 (When a Finding of RDNH is Appropriate)).
This case is also notable for its reference to UDRP Perspectives, which has increasingly become a valuable resource for UDRP panelists and counsel. The Panel cited https://udrpperspectives.org/#2_6:
“Speculating in and trading in domain names when done without intent to profit from other’s trademarks can in and of itself, constitute a “legitimate interest” under the Policy – even without actually using the domain name in connection with its dictionary meaning.
Speculating in and trading in domain names can indeed constitute a legitimate interest under the Policy. Such a practice may constitute use of the domain name in connection with a bona fide offering of goods or services (i.e. the sale of the domain name itself).
Where a Respondent is in the business of investing in domain names, a legitimate interest may be found since the Complainant’s arguments as to a lack of a legitimate interest will have been rebutted.”
Domain Investor’s “Nerd” Portfolio and WIPO Database Screen Defeat Lapsed-Domain Trademark Claim
CNerd Inc. v. Domain Admin, FindYourDomain, WIPO Case No. D2026-3015
<cnerd.com>
Panelist: Mr. Lawrence K. Nodine
Brief Facts: The Complainant, a New York-based computer consulting business incorporated in 2003, claims that it adopted the term “CNerd” in 1998 in connection with computer consulting and technology services, and that it registered and used the disputed Domain Name as its primary website and email address from at least 2000 until the disputed Domain Name lapsed in January 2024. The Complainant claims common law rights in the “CNerd” mark. The Respondent is a domain name investor whose portfolio includes 76 domains built around the term “nerd” and it acquired the lapsed domain at auction in 2024. The domain resolves to a for-sale marketplace page, initially listed at USD $5,200 and later reduced to USD $4,595, with no PPC advertising or content referencing the Complainant.
The Complainant claims common law rights through longstanding use of CNerd, supported by incorporation records, archived website screenshots, and correspondence using “CNERD” and “@cnerd.com.” The Respondent contends that the Complainant has failed to establish common-law rights in the mark because it submitted no evidence of secondary meaning, such as evidence of sales, advertising expenditures, or public recognition. The Respondent further contends that it has rights or legitimate interests in the disputed Domain Name as a domain name investor dealing in generic and dictionary-based strings, of which the disputed Domain Name is 1 of 76 similar “nerd”-formative acquisitions in its portfolio. The Respondent also contends that it did not register or use the disputed Domain Name in bad faith because it screened the term “CNERD” against the trademark database before it purchased the disputed Domain Name.
Preliminary Issue (Procedural Order): Although the Complaint cited 21 annexes, nine were not filed, prompting the Panel to issue a Procedural Order inviting the Complainant to submit the missing annexes. Instead of simply submitting the missing annexes, the Complainant submitted (on August 23, 2026) an 8-page discussion of them, advocating inferences to be drawn, and correcting mistakes in its prior assertions about the missing annexes. Two corrections stand out. First, the Complainant admitted it did not possess the “transcript” of its conversation with a GoDaddy representative listed as an annex to the Complaint. It therefore submitted a summary based on its notes and recollection. Second, the Complainant explained that, of the four decisions cited in paragraph 30 of the Amended Complaint, two were cited incorrectly and were withdrawn after review.
In its Procedural Order, the Panel did not give the Complainant leave to offer a substitute for evidence that, although previously described, did not exist or to offer new advocacy about the omitted annexes that could and should have been in the original Complaint. On August 28, 2026, the Respondent filed a supplemental response to Complainant’s August 23, 2026, submissions of the previously missing annexes. The Respondent argued that the Complainant had corrected many mistakes only because the Respondent exposed them. The Respondent asserted that this pattern supports a finding of Reverse Domain Name Hijacking (“RDNH”).
Held: The Complainant claims that it has used the mark since 1998 and submits Internet Archive screenshots of webpages associated with the disputed Domain Name during the period that the Complainant owned it. The Panel deems these archival screenshots sufficient to corroborate Complainant’s allegation of long-term use of the mark, especially given that the Respondent appears to concede that the Complainant has used “CNerd” for many years, although the Respondent does not agree that the mark has acquired secondary meaning. The Panel further notes that to the extent that Complainant has acquired any common law rights, they would be limited to the geographic area where the Complainant offers services, or its commercial reputation is known. There is no need under Policy paragraph 4(a)(i) to delineate the geographic scope of Complainant’s rights, because it is sufficient that the Complainant has rights somewhere.
The evidence in the case file as presented does not indicate that Respondent’s aim in registering the disputed Domain Name was to profit from or exploit Complainant’s trademark. The Complainant has not proved, on the balance of probabilities, that the Respondent registered the disputed Domain Name in bad faith targeting of Complainant or its trademark rights. The Respondent contends that it satisfied any duty to investigate the prior owner’s rights by searching for “CNERD” in WIPO’s Global Brand Database, while the Complainant argues that the Respondent should also have searched for unregistered rights. Even if Complainant’s evidence were sufficient to put the Respondent on notice of Complainant’s common law rights (it was not), it does not automatically follow that the Respondent was targeting Complainant’s mark.
The Respondent says that it was motivated to purchase the domain name because it contains the descriptive term “nerd” and offers evidence that it has invested in many other domain names that include “nerd.” This persuades the Panel that the purchase was motivated by the Respondent’s “nerd” investment strategy, not an intent to target the mark. The Complainant also argues that the Respondent’s intent to target the mark may be inferred from the asking price that the Respondent set for the disputed Domain Name. The Panel is not persuaded. If a domain name is acquired without bad faith, an investor may ask any price, including, of course, a price in excess of out-of-pocket expenses. Although an “exorbitant” asking price may sometimes, in the context of all the evidence, contribute to a finding of bad faith targeting, (see, e.g., All Star C.V., Converse, Inc. v. Narendra Ghimire, WIPO Case No. DCO2024-0014), this is not such a case.
RDNH: The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.1, section 4.16. The Panel notes in this regard that the Complainant previously owned and used the disputed Domain Name for approximately 24 years and (despite the lapse being its responsibility) that longstanding use contributed to a not unreasonable belief that it had a legitimate grievance. The Panel makes no RDNH declaration
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Grant G. Carpenter, United States
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Complainant, a small New York computer consultancy, let <cnerd.com> lapse in January 2024 after using it for some 24 years, and an investor who holds 76 “nerd” domain names bought it at auction. The Complaint that followed was drafted in-house, and the procedural history suggests how.
The Complaint listed 21 annexes and filed twelve. When the Panel invited the Complainant to file the missing nine, it responded with eight pages of new argument and two admissions: a “transcript” of a conversation with GoDaddy, listed as an annex, did not exist and had to be replaced with a summary “based on its notes and memory,” and of four decisions cited in the Amended Complaint, “two were cited wrongly” and were withdrawn after the Complainant “obtained and read each of them,” which is to say for the first time.
The Complaint also cited the WIPO Overview by section number, pleaded the language of paragraph 4(b)(i) verbatim, and generated a cascade of supplemental filings each framed as “confined to matters the Complainant could not reasonably have anticipated.”
Whether the cause was generative AI, which the decision does not say, or ordinary carelessness, the pattern is the same: authorities cited that had apparently not been read, an annex described that did not exist, and corrections made only after the Respondent exposed the errors. A filing that speaks fluent UDRP without understanding what the Policy requires is a hazard whatever produced it.
Whatever the cause, the Panel handled the consequences well. It declined to admit the Complainant’s belated secondary-meaning evidence, observing that the Overview section the Complainant itself had cited “expressly calls for such evidence and should have alerted Complainant to the need for” it, and that new evidence required to make out a prima facie case should rarely arrive by supplemental filing. It refused to let the Complainant substitute a recollection for a document that never existed.
And on the merits it applied the targeting analysis without allowance for the Complainant’s sympathetic position. The Respondent had screened “CNERD” against the WIPO Global Brand Database before buying; the Complainant said it should have searched for unregistered rights too, and the Panel found that such a search would have revealed nothing, adding that even notice of a mark “does not automatically follow” into targeting. The Respondent’s 76 other “nerd” names made its explanation credible, and the USD $4,595 asking price sat just below the average across its portfolio. “If a domain name is acquired without bad faith, an investor may ask any price,” the Panel said, and that sentence deserves to be quoted back to every complainant who treats a list price as proof of intent.
The Panel declined to find Reverse Domain Name Hijacking because 24 years of use gave the Complainant “a not unreasonable belief that it had a legitimate grievance,” and that is a fair reading of the Complainant’s state of mind.
It leaves unaddressed, however, the Respondent’s point that the Complainant corrected its mistakes only after the Respondent exposed them. A complainant certifies under the Rules that the information in its complaint is complete and accurate. Listing an annex that does not exist and citing decisions that were, by the Complainant’s own admission, cited wrongly raise a serious issue under that certification whether the errors originate with a person or a program, and a respondent put to the expense of exposing them has a real complaint of its own. A grievance about a lapsed domain name may be understandable, and this one was. What it does not excuse is filing a complaint whose contents its author had not verified. The Panel’s finding of a “not unreasonable belief” answers why the Complainant filed; it does not answer whether submitting unverified factual assertions and authorities is itself an abuse of the proceeding, and that is the question this case leaves open.
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.