Registration of “Stamps .com” Mark Does Not Confer an Exclusive Right to the Stand-Alone Term “Stamps”
This case will be of special interest for those who have wondered how the UDRP will consider the U.S. Supreme Court’s Booking.com decision. The ICA filed an amicus brief in the Booking.com case through its very able counsel, David Weslow of Wiley and afterwards published the article, “How Does the Booking.Com Decision Affect My Generic Domain Names”. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 5.39) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Registration of “Stamps.com” Mark Does Not Confer an Exclusive Right to the Stand-Alone Term “Stamps” (stamps .ai *with commentary)
‣ Fight Over a Golf Club Fan Site (royalportrush .com *with commentary)
‣ Domain Name Registrations that are Justified by Legitimate Free Speech Rights Not Considered Abusive (hazardousjamul .com *with commentary)
‣ AI Brand Protection Firm Found to Have Engaged in RDNH (concreted .com *with commentary)
‣ Domain Investment and Resale Are Recognized as Legitimate Commercial Practices (swiftsight .com *with commentary)
Registration of “Stamps.com” Mark Does Not Confer an Exclusive Right to the Stand-Alone Term “Stamps”
Auctane LLC v. Brett Bloom, NAF Claim Number: FA2508002173738
<stamps .ai>
Panelist: Mr. Paddy Tam
Brief Facts: The Complainant, founded in 2011, is a global shipping and logistics company. One of its key offerings is STAMPS .COM, a platform with over four million customers that provides postage printing, shipping label services, online postage discounts. It also holds multiple valid U.S. federal registrations for the STAMPS .COM, STAMPS .COM ONLINE, and STAMPSCOM marks, many of which are legally incontestable, making the marks distinctive and entitled to broad protection. The Respondent’s disputed Domain Name was registered on December 16, 2017. The Complainant alleges that the Respondent knowingly registered and is using the disputed Domain Name in bad faith to falsely suggest a connection with the Complainant, confuse consumers, and profit from the Complainant’s reputation.
The Respondent contends that the Respondent has rights and a legitimate interest in the disputed Domain Name, having registered it in 2017 for a bona fide business, STAMPS .AI, INC., which provides software for stamp collectors. The Respondent’s use is for a stamp-collecting software service, entirely different in purpose from the Complainant’s shipping and printing services. Therefore, the disputed Domain Name is not likely to cause confusion, and the Complainant has not shown it is identical or confusingly similar to a trademark in which it holds rights. At the time of registration, the Respondent was unaware of the Complainant and its trademarks; the Respondent’s use of the descriptive term “stamps” simply describes its stamp-collecting services and therefore does not demonstrate bad faith.
Held: The Panel notes that the Complainant owns trademark rights in the STAMPS .COM mark but no evidence has been presented to the Panel that the Complainant also owns trademark rights in the term “stamps” due common/descriptive nature of the term. In U.S. Patent and Trademark Office v. Booking.com, the Court observed that the registration of “Booking.com” would not confer upon its owner an exclusive right to the term “booking,” noting that “Booking.com” constitutes a weak, descriptive mark. The Court emphasized that the doctrine of fair use permits competitors to employ descriptive terms in good faith and “otherwise than as a mark” to describe their own goods or services. The Panel is of the view that the Complainant does not hold rights in the term “stamps,” and that the Complainant’s STAMPS .COM trademarks do not preclude the Respondent from asserting legitimate interests.
See Paper Denim & Cloth, LLC v. VertMarkets, Inc., FA 1356783 (Forum Dec. 22, 2010) (“Respondent also argues that the term of the <resin .com> domain name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term(s) on the Internet. The Panel agrees with Respondent and finds that Respondent can establish rights or legitimate interests in the disputed Domain Name pursuant to Policy ¶4(a)(ii).”). See also PIRELLI & C. S.p.A. v. Oakwood Services Inc., FA 1118584 (Forum Mar. 6, 2008) (“Finally, notwithstanding Complainant’s registrations of ZERO in Europe and the U.S., the <zero.net> domain name consists of a common, generic term, and Complainant’s interest in the name does not preclude Respondent from also having a legitimate interest in it… As further support for this finding, the panel in another UDRP proceeding held that the respondent in that matter had rights and legitimate interests in the <zero.com> domain name as “the word ‘zero’ is a common English word.”)
Complaint Denied
Complainant’s Counsel: Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, USA
Respondent’s Counsel: Jodi-Ann Tillman of Shutts & Bowen LLP, USA
Case Comment by ICA General Counsel, Zak Muscovitch: This case will be of special interest for those who have wondered how the UDRP will consider the U.S. Supreme Court’s Booking.com decision. The ICA filed an amicus brief in the Booking.com case through its very able counsel, David Weslow of Wiley and afterwards published the article, “How Does the Booking.Com Decision Affect My Generic Domain Names”. At the time we stated in part;
“Many members of the ICA own valuable generic domain names. The Supreme Court decision, in our view, protects the value of generic .com domain names because the Supreme Court confirmed that they are now potentially registrable as trademarks with sufficient consumer identified association, an attractive feature for end-users. The decision also ensures the continued viability of domain name registrations which are similar to the generic .com if those domain names are used descriptively and in good faith, since the Supreme Court confirmed that a trademarked generic .com will be given a very weak and limited scope of protection.”
It is gratifying to see that the Stamps.ai case outcome is consistent with our take on the Booking.com, as set out above. Congratulations to the Panel for its sound reasoning and application of the Booking .com principles.
Fight Over a Golf Club Fan Site
Royal Portrush Golf Club v. The Hostmaster, royalportrush .com, WIPO Case No. D2025-2879
<royalportrush .com>
Panelist: Mr. Andrew D. S. Lothian (Presiding), Ms. Jane Lambert and Mr. Tony Willoughby
Brief Facts: The Complainant is a historic and world-renowned private golf club established in 1888 and known for hosting the British Open in 2019 and 2025. It owns several UK-registered trademarks for “ROYAL PORTRUSH,” including both word and device marks. The Complainant alleges that the disputed Domain Name, registered on September 28, 2003, is identical to its trademark and is being used in a manner that creates consumer confusion, misleads the public, and causes reputational harm. It further alleges that the Respondent operates the Domain Name in bad faith, using the club’s identity and imagery without authorization to promote accommodation services and attract users for commercial gain.
The Respondent contends that the site originated in 2003 as a genuine fan site, clearly disclaimed affiliation, and even passed on tee-time requests to the Complainant for several years. It argues that its activities were known to and tolerated by the Complainant, with cordial exchanges including meetings in 2012. The Respondent further contends that accommodation listings added from 2008 were limited, non-commercial in nature, and generated negligible income, far outweighed by its unpaid work maintaining the website. It stresses that the disputed Domain Name predates the Complainant’s registered word marks and that there is little evidence of public confusion beyond a single complaint in 2025.
In its supplement submissions, the Complainant further alleges the disputed Domain Name unlawfully trades off its goodwill, misrepresents association, and constitutes both trademark infringement and bad faith registration and use under the Policy. By contrast, the Respondent argues the Complaint omits important details, selectively presents evidence, and ignores its disclaimers and contributions to the club’s visibility. The Respondent characterizes its site as a fan project, not a commercial enterprise, and emphasizes its long-standing transparency and cooperation with the Complainant. Both parties dispute whether the Domain Name creates confusion or merely provides legitimate fan-based tourism content.
Held: The Complainant’s submissions on rights and legitimate interests were minimal, consisting of only two points: that the Respondent has no registered trade mark and that the Domain Name was registered long after the Complainant had built goodwill in ROYAL PORTRUSH. This fell short of the usual burden to exclude defenses under paragraph 4(c), particularly since the Complainant had long been aware of the Respondent’s claim to operate a fan site, most recently restated in February 2025. Despite this, the Panel chose to examine the Respondent’s case instead of dismissing the Complaint outright. The Domain Name closely matches the Complainant’s distinctive mark, but screenshots from 2004 showed it was clearly a fan site with disclaimers. Since 2018, however, the redesigned site appeared more ambiguous, though disclaimers remained.
The Respondent argues that the website qualifies as a legitimate noncommercial fan site under paragraph 4(c)(iii) of the Policy. Comparisons were drawn with the Green Bay Packers case, where long-running fan use and acquiescence created legitimate interests despite some commercial activity. Here, any commercial use was modest, incidental, and insufficient to cover operating costs, unlike in that case. For years, the Complainant cooperated with the Respondent’s use and only intermittently raised objections, creating an impression of acquiescence. In these unique circumstances, the Respondent might reasonably claim legitimate interests in the disputed Domain Name. However, the redesigned 2018 site increased risk of confusion, weighing against this claim. Ultimately, the Panel did not reach a conclusive finding on rights and legitimate interests, deciding the case on the third element instead.
The Panel unanimously finds that the Respondent is not a cybersquatter and registered the disputed Domain Name in good faith. Early versions of the website expressed genuine fondness for the Complainant’s golf course and made clear there was no affiliation, with no evidence of pretext or abusive targeting of the Complainant’s rights. Any commercial activity, such as plans for accommodation bookings, was incidental to the primary intent of providing valuable information to golfers. Evidence shows the website was operated in good faith for most of its existence, including actions like providing referrals to the Complainant without seeking commercial gain. While the Panel harbors concerns about the post-2018 website iteration creating confusion as to official affiliation despite a disclaimer, these concerns are moot since the Complaint requires proof of both registration and use in bad faith. Trade mark infringement issues raised by both Parties fall outside the scope of this Policy decision and may be pursued in another forum.
RDNH: The Panel finds the Complaint was brought in bad faith, noting significant omissions by the Complainant and its advisers, without adequate explanation despite Procedural Order No. 1. The Complainant knew or should have known the long history of the disputed Domain Name and had ample means to investigate, such as staff consultations or the Internet Archive. Despite notice from the Respondent in February 2025 that the site had been operating as a fan site since 2003, the Complainant failed to disclose this information. Instead, its advisers misleadingly implied that the Respondent’s reply was a mere formality, omitting crucial context.
The Panel is particularly concerned that the Complainant’s advisers withheld the Respondent’s full reply while presenting only partial correspondence. This omission, combined with truncated screenshots concealing the Respondent’s disclaimer, demonstrates intentionally incomplete evidence. Given that the Complainant is represented by legal counsel, it should be held to a higher standard in this regard. WIPO Overview 3.0, section 4.16. By concealing material facts and failing to investigate, the Complainant abused the proceeding, and the Panel concludes the Complaint was filed in bad faith.
Complaint Denied (RDNH)
Complainant’s Counsel: Thorntons Law LLP, United Kingdom
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Well first of all, it cannot escape attention that the Panel is a dream team of heavy hitters. Given the Panel, one would surely expect an interesting and thoughtful decision and one won’t be disappointed. I would encourage you all to read the entirety of the case as in my view the case turned on the very specific and unique facts of the particular case. Another Panel may have come to a different conclusion had they not appreciated the nuance of the particular facts as much as this Panel apparently did. But having the experience and confidence that comes with experience appears to have enabled the Panel to carefully consider the facts and the nuance of the facts in a manner that may not have been initially apparent and which tilted the case in favor of the Respondent.
Domain Name Registrations that are Justified by Legitimate Free Speech Rights Not Considered Abusive
Jamul Indian Village Development Corporation v. Matthew Anderson, NAF Claim Number: FA2508002173770
<hazardousjamul .com>
Panelist: Mr. Steven M. Levy
Brief Facts: The Complainant is a tribal enterprise of the Jamul Indian Village of California, a federally recognized Indian tribe, which owns and operates a casino in Southern California. The Complainant owns a number of U.S. trademark registrations including for JAMUL (June 12, 2018) and for JAMUL CASINO (September 25, 2018). It also owns the domain name <jamulcasino .com> which was registered on September 14, 2003 and this is used as the address of its legitimate website. The disputed Domain Name was registered on July 29, 2024 and resolves to a website with the heading “Jamul Casino | Crackheads, Cancer & Crime” and contains many statements that are highly critical of certain Jamul tribe members, the Jamul Casino Resort, and the regulatory and tax structure under which the casino operates.
The Complainant alleges that the “Respondent’s sole purpose in establishing the website associated with the Domain Name [is] to cast aspersions and slanderous remarks in order to retributively harm Complainant’s business” and that ”the Domain Name [is not] used merely to express Respondent’s genuine opinion of Complainant’s business, or to offer a neutral forum for third-party reviews of Complainant’s business.” The Respondent did not file a formal UDRP Response but sent several emails to the Forum, asserting that he is not associated with the registrant, requested that the Forum stop sending communications to that address, and warned it would block future emails from the complainant’s domains if contacts continued.
Held: It has long been recognized that critical commentary is protected by the Policy so long as it is “genuine and noncommercial” and is not “primarily a pretext for cybersquatting, commercial activity, or tarnishment.” See WIPO Overview 3.0 at 2.6.1 and UDRP Perspectives on Recent Jurisprudence, § 2.10 (updated June 2, 2025). Screenshots of the website have been submitted as described above and the site also includes portions of negative user reviews of the casino that appear to have been copied from Google. In considering the matter, this Panel adopts the view expressed in Roman Polanski v. Matan Uziel, D2022-4360 (WIPO Jan. 26, 2025), i.e., “[i]t is not the Panel’s role, nor within its capacity, to rule on whether the criticism is right or wrong; the question before the Panel is whether the disputed Domain Name is being genuinely used for a fair use purpose.”
To that end, the Panel notes that there is no evidence of any commercial activity on Respondent’s website and there is also no indication that the site is used as a subterfuge for cybersquatting activity. The Complaint claims that “Respondent uses the JAMUL and JAMUL CASINO marks to propound false and misleading statements about Complainant’s casino, hospitality, and recreational services” but it provides no further details, evidence, or context in support of its contentions. As such, the Panel must take the presented evidence at face value and it finds both that the content of the website makes it immediately apparent that it is a source of criticism that does not originate with the Complainant, and that there is no indication or evidence that the Respondent’s site is disingenuous, commercial, or was created with an ulterior motive beyond expressing criticism of the Complainant and its casino.
Complaint Denied
Complainant’s Counsel: Barry F. Soalt of Procopio, Cory, Hargreaves and Savitch LLP, California, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Take note of the Panel’s clearly written decision. Deciding a case and clearly explaining the reasons behind the disposition is important not just for the successful party, but especially for the losing party. This is so, because it is the losing party that needs to know where its case went wrong and why the Panel denied the Complaint.
This case is also noteworthy for the Panel’s decisive refusal to judge the criticism, beyond determining whether it was bona fide – in the sense of not being presented as a ruse or for an ulterior motive, as the Panel clearly explained. As also explained in UDRP Perspective at 2.10, the key is whether the use is a ruse rather than a legitimate exercise of free speech. It is immaterial what the Panelist may think of the quality, utility or lawfulness of the exercise, e.g. whether it may be scandalous, not worth protecting, or defamatory. Such issues are beyond the scope of the UDRP. Well done, Panel, for fully understanding the scope of the UDRP and the protections that the UDRP affords to criticism sites.
AI Brand Protection Firm Found to Have Engaged in RDNH
Ideas On Board Corp. v. luz mery garcia piedrahita, WIPO Case No. D2025-3330
<concreted .com>
Panelist: Mr. Andrea Mondini
Brief Facts: The Korean Complainant, established in 2023, is active in the fragrance and lifestyle market and released three perfumes under the brand CONCRETED. The Complainant hosts its website at <concreted .kr>. The Complainant owns a trademark registration for the trademark CONCRETED in the Republic of Korea which was registered on February 15, 2024. The disputed Domain Name was originally created on February 18, 2000. The Respondent and her husband acquired the disputed Domain Name in 2011 and used it in the past for a website relating to concrete materials. According to the evidence submitted with the Complaint, the disputed Domain Name currently resolves to a broker’s website offering it for sale.
The Complainant states that its perfumes, which were launched under the brand CONCRETED, have been featured on Fragrantica, one of the most authoritative online fragrance databases worldwide, thus showing that they have garnered notable recognition within the fragrance community worldwide. The Complainant further alleges that the disputed Domain Name was registered in bad faith because it is obvious that the Respondent had, or should have had, knowledge of both the Complainant and its well-known trademark CONCRETED at the time it registered the disputed Domain Name. The Respondent is using the disputed Domain Name in bad faith by listing it for sale and by concealing the Respondent’s identity.
The Respondent contends that the registration of the disputed Domain Name as early as 2011 cannot have been undertaken in bad faith, considering that the Complainant was established in 2023 and its trademark was registered in 2024. The disputed Domain Name consists of a common word or phrase, and the Respondent registered and used it in the past for a website relating to concrete and concrete resources. Offering for sale a non-distinctive domain name does not constitute illegitimate use. The Complainant completed the broker’s contact form; the broker quoted USD $5,900, which the Complainant rejected as too high and said it did not need the domain immediately.
Held: The Panel finds that the Respondent has rights or legitimate interests in the disputed Domain Name because it registered it before the Complainant was established and before it registered its trademark. Moreover, the Respondent has shown that it used the disputed Domain Name in 2011 for a website relating to concrete and concrete resources. Further, the fact that the Respondent registered the disputed Domain Name before the Complainant registered its trademark, and even before the Complainant was established, also undermines the Complainant’s assertion that the disputed Domain Name was registered in bad faith. Moreover, offering a domain name for sale that consists of a dictionary term and does not target the Complainant’s trademark, does not constitute use in bad faith.
RDNH: Given that the Complainant was established and registered its trademark many years after the Respondent registered the disputed Domain Name, there could not have been bad faith registration nor use in bad faith by targeting the Complainant’s trademark. That means that the Complaint was doomed to failure. This issue is not close or subject to ambiguity: both the Policy and the WIPO Overview 3.0 make it clear that bad faith only can be found if the Respondent acted in bad faith towards the Complainant and its trademark rights. Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an attempt at RDNH.
Complaint Denied (RDNH)
Complainant’s Counsel: Marq Vision, Inc., United States
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States
Case Comment by ICA General Counsel, Zak Muscovitch: First of all, congratulations to the Panelist. This appears to be his first RDNH finding in a solo Panelist capacity (at least according to UDRP.tools).
Secondly, as remarkably noted in DNW.com (See “AI-powered IP protection firm MarqVision files reverse domain name hijacking case”), “John Berryhill, who represented the domain name owner, ran correspondence from MarqVision that requested more time to respond through an AI checker, which stated that AI generated the correspondence.”
Domain Investment and Resale Are Recognized as Legitimate Commercial Practices
Airs Medical Inc. v. HugeDomains .com, ADNDRC Case No. KR-2500279
<swiftsight .com>
Panelist: Mr. Ho Hyun Nahm (Presiding), Mr. Matthew Kennedy and Mr. Changhoon Lee
Brief Facts: The Complainant is a Korean healthcare technology company established in 2018 and specializing in AI-based medical imaging and robotics. The Complainant is the lawful owner of the trademark SWIFTSIGHT, registered in Korea on January 8, 2025 and filed internationally designating other jurisdictions. The Complainant submits that SWIFTSIGHT is scheduled for official launch in December 2025 and is actively utilized in connection with the Complainant’s forthcoming medical imaging solutions. Since 2003, the Respondent has been engaged in acquiring, holding, and reselling generic, descriptive, and brandable domain names to businesses and individuals seeking valuable online assets. The disputed Domain Name was registered on February 22, 2011, and was listed for sale on February 23, 2011 at a price of US $4,395. The disputed Domain Name does not resolve to an active website.
The Complainant alleges that the Respondent registered the disputed Domain Name with no genuine business purpose and promptly offered it for sale on a public marketplace, conduct that falls squarely within Paragraph 4(b)(i). The Respondent claims rights and legitimate interests and contends that it has long operated a legitimate business acquiring and reselling generic, descriptive, and brandable domains. Panels have repeatedly recognized this model as bona fide. Offering such a domain for sale is consistent with lawful investment activity. The Respondent further contends that the Bad faith registration is impossible where a domain predates trademark rights. The Respondent registered the disputed Domain Name in 2011, more than a decade before the Complainant’s 2024 filing. Passive holding or resale of dictionary-based domains is lawful and does not prove bad faith absent targeting.
Held: The disputed Domain Name was registered in February 2011, while the Complainant was not incorporated until 2018 and did not secure trademark rights in SWIFTSIGHT until January 2025. The Panel specifically notes that the SWIFTSIGHT product has not yet been launched and is only scheduled for official launch in December 2025. Consistent with well-established UDRP precedent, a domain name registered prior to the existence of a complainant’s rights generally cannot, as a matter of law, have been registered in bad faith (see WIPO Overview 3.0, section 3.8.1). There are no exceptional circumstances in the present case that would indicate that the Respondent anticipated the Complainant’s nascent trademark rights (see WIPO Overview 3.0, section 3.8.2).
The Panel further observes that the mere fact that the Respondent has listed the disputed Domain Name for sale does not, without more, constitute bad faith. Numerous panels have confirmed that domain investment and resale are recognized as legitimate business practices absent evidence of targeting a particular trademark owner. Here, the record discloses no evidence of targeting, solicitation, or intent to disrupt the Complainant. Accordingly, the Panel finds that the disputed Domain Name was registered more than a decade before the Complainant acquired trademark rights, rendering bad faith registration legally impossible. In the absence of evidence of abusive intent, the Complainant has failed to satisfy Paragraph 4(a)(iii) of the Policy.
RDNH: In this case, the undisputed chronology is determinative. The Complainant, represented by experienced in-house counsel, either knew or ought to have known that it could not succeed under the Policy, because bad faith registration is impossible in the circumstances of this case, where the domain name predates the existence of trademark rights by more than a decade. The fact that the Respondent has listed the disputed Domain Name for sale does not change this analysis. As numerous UDRP decisions confirm, domain investment and resale are recognized as legitimate commercial practices when not directed at a particular rights holder. There is no evidence of targeting, solicitation, or disruption of the Complainant’s business.
In materially similar circumstances, panels have found RDNH. See Everiii & Partners International Co. Ltd. v. Nien Chen, Hearty Creative Inc., HK-2301847 (ADNDRC, February 8, 2024) (where the panel concluded that the complainant engaged in RDNH because it was fully aware that the disputed Domain Name had been registered prior to its asserted trademark rights, knowledge that was readily verifiable from the publicly available Whois database). Given the Complainant’s clear knowledge of these facts and the professional expertise of its in-house counsel, the Panel concludes that the Complaint was brought in bad faith and constitutes an abuse of the UDRP process.
Complaint Denied (RDNH)
Complainant’s Counsel: Represented Internally
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Congratulations to the Panel for its resolute decision and in particular its finding of RDNH. It is good to see the consistency of approaches, even amongst different dispute resolution providers. For those keeping track, with 65 RDNH findings so far through September, 2025 is a record setting year for RDNH, having already exceeded the 58 RDNH findings made in all of 2024. See RDNH.com for a compendium of RDNH cases.
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings. He is the founder of Cylaw Solutions.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.