Respondent Offered to Transfer Domains for $50.20
This case highlights how the UDRP is not intended to be a trademark court. Its mandate is strictly limited to resolving cases where a domain name was registered in bad faith, i.e. targeting of a trademark owner’s mark and goodwill. Cases which involve a determination of who has “better” rights or whether trademark rights were infringed without bad faith registration of a domain name, are generally left to the courts. Continue reading commentary here.
WIPO and ICA Conclude Comprehensive Review of the UDRP
This initiative was driven by a robust international process that included nearly a dozen consultations with industry leaders, legal experts, and stakeholders. The goal was to identify best practices, establish areas of consensus, and pinpoint potential improvements to the policy. Coordinated by Zak Muscovitch, General Counsel to the ICA and Brian Beckham, WIPO, the project team, comprising experts and UDRP stakeholders from around the world.
Following a period of public comment on the draft, the Final Report is now being shared, including submission to ICANN for consideration in any future UDRP review undertaken by its Generic Names Supporting Organization (GNSO). By clearly identifying where stakeholder agreement and disagreement lie, this independent report is expected to significantly benefit and streamline ICANN’s official review process, ensuring any future changes are well-informed and reflective of community input.
The UDRP is the cornerstone for resolving domain name disputes globally, and its effectiveness relies on continuous review and refinement. We thank everyone involved. You can access the complete WIPO/ICA UDRP Review Final Report and background information on WIPO’s website. The Executive Summary Table of Recommendations in the Final Report, is also available here.
We hope you will enjoy this edition of the Digest (vol. 6.1) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Respondent Offered to Transfer Domains for $50.20 (suez .digital and suezdigital .com *with commentary)
‣ Four-Letter Domain Name Not Registered to Target Complainant (vdft .com *with commentary)
‣ Respondent Aware of Complainant’s Nascent Trademark Rights at Registration (upkeeping .com *with commentary)
‣ Complainant Admitted Domain Preexisted Trademark, No RDNH Considered (123go .com *with commentary)
‣ Panel: “Ping” Is a Common Word With Multiple Legitimate Meanings (ping .bot *with commentary)
Respondent Offered to Transfer Domains for $50.20
SUEZ INTERNATIONAL v. Zacharias Cymbaluk, NAF Claim Number: FA2511002187432
<suez .digital> and <suezdigital .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant, with a history spanning over 160 years, claims itself to be a global leader in providing water and waste management services to millions of people and businesses worldwide. The Complainant’s marks have also been widely and publicly utilized in Canada for years in connection with key public projects, solidifying their significant presence and goodwill in the Canadian market. In 2022, the Complainant established its Digital Solutions division in North America, dedicated to providing customers with advanced decision-support software. The Complainant alleges that the Respondent’s registration of Domain Names identical to a famous mark; subsequent offer to sell those Domain Names; demand for an exorbitant sum explicitly linked to Complainant’s wealth; and operation of his actual business under a separate, non-infringing name, provides clear and compelling evidence of bad faith under Paragraph 4(b)(i) of the Policy.
The Complainant further alleges that the Respondent’s bad faith is further confirmed by his operation of a separate, non-infringing website at <cymb .ca> promoting the exact same digital marketing services. The Respondent operates a legitimate Ontario sole proprietorship under the registered business name SUEZ DIGITAL, providing digital marketing and website services, with a particular focus on dental clinics in Ontario, Canada. The Respondent contends that he chose the name “Suez Digital” for metaphorical and personal reasons unrelated to the Complainant. The Respondent visited Egypt in high school and was fascinated by the efficiency of the Suez Canal, adopted the “Suez” metaphor to represent helping clients streamline and “bypass” the long, complicated journey of digital marketing. The Respondent further declares that at the time of adopting SUEZ DIGITAL and registering the Domain Names (May/July 2022), the Respondent had never heard of SUEZ International and did not know of Complainant’s business, logo, customers or operations.
Held: The Panel notes that, although registered by the Complainant as a trademark, SUEZ is well-known as the name of a city in Egypt; the name of the Gulf of Suez; and the name of the Suez Canal. The Respondent has produced copies of invoices and screenshots of his website showing that, since January 16, 2023, he has provided digital consulting services under the Suez Digital name. He registered the business name SUEZ DIGITAL in Ontario on June 9, 2023, and his services are directed primarily to dental clinics. These circumstances satisfy the Panel that, before any notice to the Respondent of the dispute, the Respondent used the Domain Names in connection with a bona fide offering of services and that the Respondent, as a business, has been commonly known by the Domain Names. Accordingly, the Panel finds that the Respondent has shown that he does have rights and legitimate interests in respect of the disputed Domain Names.
The Panel further finds that the Respondent registered and used the disputed Domain Names in good faith, without knowledge of the Complainant or its SUEZ mark. The evidence shows the Respondent did not register the Domain Names to sell or transfer them for profit (Policy ¶4(b)(i)), engage in a pattern of blocking Complainant’s mark (¶4(b)(ii)), or create confusion or trade on Complainant’s goodwill (¶4(b)(iv)). As to Respondent’s operation of a separate website at <cymb .ca> under the brand “CYMB Group”, the Panel accepts Respondent’s Declaration that after receiving Complainant’s lawyer’s letter in September 2024, the Respondent felt intimidated and pressured, and temporarily took his website down and attempted to rebrand to reduce conflict. Finally, the Panel does not accept that, in the circumstances of this case, any discrepancies in the public WHOIS record indicate bad faith on the part of Respondent.
RDNH: Correspondence began on September 23, 2024, when Complainant’s counsel sent a cease-and-desist letter to the Respondent. On September 30, the Respondent agreed to resolve the matter amicably and requested reimbursement of the domain registration costs. On October 18, the Respondent stated that the total for both domains was USD 50.20. On June 25, 2025, the Complainant’s counsel offered CAD 1,500 for the Domain Names and the execution of a contractual undertaking. The Respondent rejected the Complainant’s initial offer and stated that he expected payment in the range of USD 18,000 to USD 100,000 to consider a transfer, which the Complainant characterizes as an exorbitant demand and a direct admission of Respondent’s bad faith intent.
The Complainant and its counsel were aware in October 2024 of Respondent’s willingness to transfer the Domain Names to the Complainant for USD 50.20 as reimbursement for the costs related to the Domain Names, and were aware that this willingness was inconsistent with the Domain Names having been registered primarily for the purpose set out in paragraph 4(b)(i) of the Policy. Despite that knowledge, the Complainant and its counsel chose to make the above submission.
Complaint Denied (RDNH)
Complainant’s Counsel: Jules Gaudin of ROBIC, LLP, Canada
Respondent’s Counsel: Randall F. More of Randall More Holdings LTD, Canada
Case Comment by ICA General Counsel, Zak Muscovitch: This case highlights how the UDRP is not intended to be a trademark court. Its mandate is strictly limited to resolving cases where a domain name was registered in bad faith, i.e. targeting of a trademark owner’s mark and goodwill. Cases which involve a determination of who has “better” rights or whether trademark rights were infringed without bad faith registration of a domain name, are generally left to the courts.
This case is also noteworthy for the Panel’s expressly affirmative finding of the Respondent’s rights and legitimate interest in the disputed Domain Name. Panels all too often skip over a Respondent’s rights and legitimate interest, even where a factual and legal case is made out for them and despite the fact that Paragraph 4(c) of the Policy expressly entitles a Respondent to “prove” its rights and legitimate interests and implicitly directs a Panel to make such a finding if so proven (see UDRPPerspectives.org at 2.1).
Lastly, this is a rather strange case in that apparently, the Respondent was originally willing to transfer the Domain Names for only fifty bucks yet the case somehow proceeded, and as a result RDNH was found.
Four-Letter Domain Name Not Registered to Target Complainant
La Banque Populaire Val de France v. Kaparthi Jonnalagadda, WIPO Case No. D2025-4638
<vdft .com>
Panelist: Mr. Wilson Pinheiro Jabur
Brief Facts: The Complainant is a French credit provider, part of the BPCE group, that has provided credit services to buyers and private investors in connection with new residential programs under the unregistered VAL DE FRANCE TRANSACTIONS or VDFT mark since 2012. The Complainant states that the mark has acquired distinctiveness through extensive use, with more than 570,000 clients served and revenues exceeding EUR 1.6 million in 2022. The Complainant operates the domain name <banquepopulaire .fr/valdefrance> and owns the domain name <vdft .fr> (registered on December 8, 2014). The disputed Domain Name was registered on April 21, 2005, and resolves to a parked webpage offering it for sale for USD 89,999. The Respondent is a domain name investor based in India, holding other four-letter domain names and argues the same is not against the Policy.
The Complainant alleges that the disputed Domain Name is being offered for sale for large amounts which are in excess of the registration costs, a further indicative of the Respondent’s bad faith and intent to profit on the Complainant’s notoriety. The Respondent contends that VDFT is merely an acronym of the Complainant’s subsidiary corporate name, and that the Complainant has not shown use of “VDFT” as an unregistered mark in an open, continuous, extensive, and uninterrupted manner over any significant period so as to acquire any common law rights. The Respondent further contends that given that the Complainant is represented by counsel, it ought to have undertaken a minimal due diligence before filing the Complaint and should be held to a higher standard and found guilty of Reverse Domain Name Hijacking.
Procedural Matter – Language of the Proceeding: The Complaint was filed in French. The Complainant requested that the language of the proceeding be French given that, under its view, the disputed domain refers to the Complainant’s VAL DE FRANCE TRANSACTIONS (VDFT) mark and that the Complainant owns the BANQUE POPULAIRE VAL DE FRANCE trademark, notorious in France. The Complainant also noted the Respondent used a privacy service to hide their identity, making translation of the Complaint into English an undue expense. The Respondent requested that the language of the proceeding be English as he does not understand French.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview 3.0”, section 4.5.1). Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules, that the language of the proceeding shall be English.
Held: The Complainant has failed to produce sufficient evidence showing actual use of the acronym “VDFT” in its commercial activities as a source identifier, being it the Panel’s view that the Complainant relied solely on the fact that such is the acronym of VAL DE FRANCE TRANSACTIONS. The lack of any unregistered trademark in VDFT is further corroborated by the Complainant’s webpage available at its own website, in which at no point the acronym is used in a trademark sense. In addition to that, in spite of apparently owning the domain name <vdft .fr>, no use of this domain name, present or past could be found.
The Panel finds that the Respondent registered the disputed Domain Name for its intrinsic four-letter nature and is entitled to offer it for sale, especially considering that the Respondent has never targeted the Complainant. Further, the disputed Domain Name is being offered for sale, but this is not sufficient on its own to conclude that the Complainant has satisfied its burden of proving registration and use in bad faith. The Panel finds that the Respondent did not register the disputed Domain Name in bad faith targeting of the Complainant or its trademark rights because the Complainant did not prove that the Respondent registered the disputed Domain Name due to its significance in relation to the Complainant or any trademark of the Complainant.
Furthermore, the Complainant did not prove to be well-known as VDFT, at the time that the Respondent registered the disputed Domain Name. WIPO Overview 3.0, section 3.8.1. While the Panel notes that there seemed to have been a change of use of the disputed Domain Name around 2013 (according to Wayback Machine), and it is plausible that the Respondent may have acquired the disputed Domain Name at a time different to the original creation date, the Complainant did not provide any relevant evidence showing that the Respondent was targeting the Complainant with the disputed Domain Name at any point in time. On the contrary, the Panel finds more likely than not that the Respondent registered it due to its value as a four-letter domain name.
RDNH: This is a clear case in which the Complainant, represented by Counsel, ought to have known that it could not have succeeded under the Policy: the Complainant has not shown unregistered rights over VDFT; the disputed Domain Name was registered in 2005, well before the Complainant started offering its VAL DE FRANCE TRANSACTIONS service in 2012; the disputed Domain Name consists of a four letter domain name that can be read as different acronyms; the Complainant intends to rely on its alleged notoriety which however does not extend to VAL DE FRANCE TRANSACTIONS and particularly not to VDFT based on the evidence provided by the Complainant; there is no bad faith use by the Respondent, who is not and has never targeted the Complainant.
Complaint Denied (RDNH)
Complainant’s Counsel: La SELARL JB avocat, France
Respondent’s Counsel: Cylaw Solutions, India
Case Comment by ICA General Counsel, Zak Muscovitch: First, it is gratifying to see that despite the Complainant’s request for the case to be heard in French despite the language of the Registration Agreement being in English, that the Panel decided to hear the case in English. Straying from the language of the Registration Agreement should be done sparingly and only when the circumstances clearly warrant. Here, once the Respondent indicated that it was not a French-speaker and that it wanted to proceed in the default language of the Registration Agreement, the Panel duly found that it was unwarranted to change the proceeding to French.
It is also gratifying to see that the Panel engaged in a robust examination of the evidence and arguments. The fact that the Respondent had many other four-letter acronym domain names and the absence of evidence of unregistered trademark rights at the material time, resulted in the clear dismissal of the Complaint and a finding of RDNH. Congratulations to our Editor, Ankur Raheja, for successfully representing the Respondent in this case.
Respondent Aware of Complainant’s Nascent Trademark Rights at Registration
UPKEEPING, LLC v. Andrew Klein / Zccounting LLC, NAF Claim Number: FA2512002192981
<upkeeping .com>
Panelist: Mr. Alan L. Libury
Brief Facts: The Complainant claims itself to be an established leader in the bookkeeping industry. The Complainant owns the well-known and valuable trademark UPKEEPING (USPTO registration dated March 5, 2024; claiming first use as March 24, 2021), which it uses throughout the United States in connection with its bookkeeping, payroll, invoicing, accounting and other financial related services for businesses. Based upon Complainant’s wide scale and continuous use of the UPKEEPING name and mark since at least as early as January 27, 2021, the mark has unquestionably acquired distinctiveness and is an exceedingly valuable source identifier used and owned exclusively by the Complainant. The Owner and Principal of the Complainant, Erin Pohan, worked part-time for ZCCOUNTING, LLC (Respondent) from August 19, 2020 to August 27, 2021. On January 27, 2021, Pohan tried to buy the Domain Name <upkeeping .com> via Daaz, learned the holder wanted USD 7,500, declined, and instead registered <upkeeping .co> that same day with GoDaddy. The Complainant formed UPKEEPING, LLC in Washington on March 24, 2021.
Months after the Complainant began using the UPKEEPING mark, Daaz emailed her on October 11, 2021 saying her offer for disputed Domain Name was canceled because another buyer purchased it. A Whois check then showed the Respondent as the registrant. On October 18, 2021, visiting the website at the disputed Domain Name revealed a copycat site of Complainant’s, including stock photos of fake team members. The Complainant alleges that the Respondent only intends to use the mark to confuse and hijack Complainant’s clients and potential clients by redirecting them to its own website, which is not a bona fide intent to use in commerce and also falsely suggests a connection with the Complainant and its business. In an informal Response, the Respondent firstly asked procedural questions and asserted that the Complainant was previously an employee of the Respondent and stole clients from the Respondent. The second email offered to sell the domain name “for simply the costs that I incurred when she stole my clients and trade secrets to start her own business.”
Held: The disputed Domain Name was initially registered on January 19, 2005 by an unknown third party. The Complainant has shown that in 2021 Pohan offered to buy the Domain Name but that, in November 2021, shortly after she ceased to be employed part time by the Respondent, she was told that it had been sold to someone else. Screenshots dated October 19, 2021 show the Domain Name resolved to a website copying much of the content of the Complainant’s <upkeeping .co> website. WHOIS information as at that date shows the Respondent’s organization, Zccounting LLC, as the registrant of the Domain Name. These circumstances, together with the Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent.
As stated in UDRP Perspectives at paragraph 3.2: “UDRP Panels routinely determine that a domain name could not have been registered in bad faith when the registration pre-dates a trademark right. It is axiomatic that a Respondent could not have registered a domain name in bad faith before a Complainant acquired rights in the corresponding trademark. For bad faith registration to have occurred, the trademark must predate the Respondent’s domain name registration. There is one limited exception to the general rule, namely where the domain name was registered because of “nascent” trademark rights, such as where the Respondent registered the domain name as a result of the Complainant’s announcement of a new corporate name or where the Respondent registered the domain name because of the Complainant’s trademark application.”
The Panel notes that on October 13, 2021, some six weeks after Pohan ceased her part time employment with the Respondent, the Respondent applied to register the UPKEEPING mark with the USPTO, claiming first use as January 3, 2021. A few days later, on October 25, 2021, the Complainant applied to register the UPKEEPING mark with the USPTO, claiming first use as March 24, 2021, the day on which the Complainant Upkeeping LLC was incorporated. On October 7, 2023, the Complainant filed an opposition to Respondent’s USPTO application and on November 1, 2023, the Respondent applied to amend the application to be an intent-to-use application. The Respondent’s application to register the UPKEEPING mark was abandoned by consent of the parties on November 10, 2023 and the Complainant’s application to register the mark was granted on March 5, 2024, with effect from its application date of October 25, 2021.
These circumstances and those set out above in relation to the second element, together with Complainant’s assertions, undisputed by the Respondent, satisfy the Panel that, although the Respondent registered the disputed Domain Name on or around October 19, 2021, prior to Complainant’s application to register the UPKEEPING mark, the Respondent was then aware of Complainant’s <upkeeping .co> domain name and Complainant’s use of the UPKEEPING mark since March 24, 2021. In all the circumstances of this case, the Panel finds that the Respondent was aware of Complainant’s nascent trademark rights when the Respondent registered the disputed Domain Name and did so primarily for the purpose of disrupting Complainant’s competing business.
Transfer
Complainant’s Counsel: Jaclyn Ionin of IONIN LAW LLC, USA
Respondent’s Counsel: No (formal) Response
Case Comment by ICA General Counsel, Zak Muscovitch: Reference to UDRPPerspectives.org in decisions is always appreciated, as it was here. UDRPPerspectives.org provides a free and helpful compendium of UDRP perspectives on particular topics. It was created by Igor Motsnyi and I.
Complainant Admitted Domain Preexisted Trademark, No RDNH Considered
ADME (CY) LTD v. Melba Porter, WIPO Case No. D2025-4205
<123go .com>
Panelist: Mr. Luca Barbero
Brief Facts: The Cyprus based Complainant specializes in the publication of video content for a young audience under the mark 123GO!. The Complainant’s brand was established with the launch of its official YouTube channel on January 17, 2019 “@123GO_”, currently recording over 5 billion views overall, and the Complainant has been operating since February 27, 2019 a Facebook page “@123go.tsp”, currently recording more than 2.1 million followers. The Complainant is the owner of several trademark registrations for 123GO!, including the Russian trademark (November 5, 2020); International trademark (February 6, 2020); and other International registrations. The disputed Domain Name was registered on October 11, 1995, and is not pointed to an active website.
The Complainant alleges that the disputed Domain Name is not being used as an active website offering any goods or services, and there is no evidence that the Respondent has made any bona fide preparations to use it at the time of the filing of the Complaint. The Complainant further alleges that the Respondent is passively holding the disputed Domain Name and that the Respondent is preventing the Complainant from reflecting its mark in a corresponding domain name, the Respondent’s ongoing conduct only demonstrates its bad faith and lack of legitimate purpose. The Respondent did not reply to the Complainant’s contentions.
Held: In the present case, the disputed Domain Name was registered on October 11, 1995, whilst according to the Complainant’s submissions, the Complainant first used the 123GO! mark and filed its first trademark application for 123GO! in 2019, more than 23 years after the disputed Domain Name was registered. The Complainant has not provided any evidence demonstrating that the Respondent was or could be aware of the Complainant’s trademark at the time of registration of the disputed Domain Name. Indeed, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. WIPO Overview 3.0, section 3.8.1.
Further, the Complainant has not provided evidence demonstrating that the disputed Domain Name was transferred from a third party to the Respondent on a date after the Complainant’s trademark rights accrued; mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith. Moreover, the disputed Domain Name is pointed to an inactive website and there is no evidence that the Respondent ever intended to target the Complainant through the use of the disputed Domain Name. Therefore, the Panel finds that the Complainant has failed to establish the third element of the Policy.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: According to the decision, in its reply to the Panel Order No. 1, the Complainant acknowledged the fact that the disputed Domain Name was registered prior to the establishment of its brand and registration of its first trademark, but contends that the Respondent’s renewal of the disputed domain name, combined with the absence of any actual use by the Respondent, should be treated as a fresh registration occurring after the Complainant’s trademark rights were established. The Complainant also reiterates that passive holding, without legitimate purpose, of the disputed domain name, may constitute bad faith.
The Panel also found that the disputed Domain Name was pointed to an inactive website and there is no evidence that the Respondent ever intended to target the Complainant through the use of the disputed Domain Name and the case was dismissed.
This was of course the right determination by the Panel, however one cannot help but wonder why RDNH was not expressly considered in the decision, let alone found. As explained in UDRPPerpectives.org, declarations of Reverse Domain Name Hijacking play a critical role in the UDRP by deterring abusive use of the Policy and preserving the integrity of the UDRP for legitimate claims. A Panel will not have satisfactorily discharged its duty under the UDRP without an express consideration of RDNH where the facts and circumstances warrant. This is so, not just because of Rule 15(e) which requires a Panel to consider RDNH, but also because RDNH is essentially a kind of “counterclaim” that the Respondent is entitled to adjudication of. Even when RDNH is not expressly requested by a Respondent – indeed even in ‘no response’ cases – a Panelist must still consider RDNH where appropriate.
Panel: “Ping” Is a Common Word with Multiple Legitimate Meanings
Karsten Manufacturing Corporation v. Lyuben Stoev, WIPO Case No. D2025-3902
<ping .bot>
Panelist: Mr. Matthew S. Harris (Presiding), Mr. Evan D. Brown and Ms. Marilena Comanescu
Brief Facts: The US based Complainant, has used the trade mark PING, at least since January 1959, in connection with golf clubs, golf equipment, and related goods and services. It also promotes its business and offers golfing related products from a website operating from the Domain Name <ping .com>. The Complainant is the owner of various trade marks for PING, including US trademark for PING (September 20, 1960) and EU trademark (December 19, 2023). The Domain Name was registered by the Bulgarian Respondent on December 31, 2024. It was used, at least to some degree, after registration for a PPC parking page. Subsequent to the filing of the Complaint in these proceedings, a website began to operate from the Domain Name that purported to comprise “The Ultimate Guide to the Ping Command in Linux.” Further changes were later made to that page, replacing that text with an offering of a “ping automation service.”
The Complainant alleges that the PPC use made of the disputed Domain Name falls within the scope of paragraph 4(b)(iv) of the Policy, and that there is “no conceivable reason for [the] Respondent to have registered the Disputed Domain other than to trade off the reputation and goodwill of the PING Mark.” The Complainant also relies upon the setting up of Mail eXchange (“MX”) records for the Domain Name which means that the Respondent “can” send “fraudulent emails”. The Respondent contends that the disputed Domain Name was bought to host information and a ping tool and that he previously owned <ping .site>, but its renewal cost (over USD 3000) was too high. The Respondent adds that he is a software engineer with more than 20 years of professional experience in IT System Administration and that he registered the Domain Name because of its associations with the generic and technical meaning and in particular to create a technical tool related to the Domain Name’s generic meaning.
Held: The Complainant’s contention that there is no conceivable use of the Domain Name other than in connection with its business and marks, is obviously wrong. “Ping” is an ordinary English word that has a number of potential meanings. The Respondent perhaps overstates matters somewhat when he contends that the use of the “.bot” gTLD necessarily signals a use of the Domain Name which is unrelated to the Complainant’s commercial activities. Nevertheless, the Panel accepts that this gTLD was a natural one for the Respondent to choose for his claimed project. As such it lends at least some support to the Respondent’s claims. Further, the Respondent has now set up a website that is consistent with its claimed use of the disputed Domain Name many months after registration and after being notified of the Complainant’s claims. The Panel suspects this launch was largely prompted by the proceedings, and panels often give little weight to uses that appear only after a dispute arises. However, a GitHub screenshot indicates some work on the site may have occurred before the Respondent learned of the Complainant’s claims.
The one factor that does undermine the Respondent’s contentions, is the use of the Domain Name for PPC links associated with the Complainant’s business and marks. Such links have frequently been found by panels to fall within the scope of paragraph 4(b)(iv) of the Policy as evidence of bad faith registration and use. However, the evidence shows that at times links were displayed which had nothing to do with the Complainant and were more consistent with the Respondent’s contentions as to the Internet meaning of the term “ping”. For these reasons, and notwithstanding these PPC links, the Panel concludes that the Complainant has failed to demonstrate that the Domain Name was registered in bad faith. The Panel is further satisfied that the term “ping” can be used in a descriptive sense unrelated to the Complainant, and for the reasons already given, the Panel concludes that the Complainant has failed to show that the Domain Name was registered not because of that descriptive meaning but because of its associations with the Complainant’s mark.
The Panel would add that it does not consider it to be significant either way that the Respondent applied for the EU trade mark “ping .bot” on September 30, 2025. Given the timing, the application likely responded to these proceedings, but the Respondent did not rely on it in his Response. The Panel is further unconvinced by the Complainant’s contention that the Respondent has concealed and continues to conceal himself in the WhoIs database and that this is another indicator of bad faith in this case. Furthermore, the Panel is similarly unconvinced by the Complainant’s reference to the configuration of MX records. There are cases where the configuration of such records can be a genuine cause for concern, particularly if the domain name takes a form or relates to a trade mark that suggests that the domain name is particularly susceptible to fraudulent use. However, there is nothing before the Panel that suggests that the Domain Name has been used for such an improper purpose or there are factors that suggest this is particularly likely in this case.
RDNH: There are aspects of the Complaint in this case that the Panel finds troubling. One is the Complainant’s contention that the Domain Name was registered only to trade on the PING Mark’s reputation and goodwill. That was flawed, since “ping” is an ordinary English word with many legitimate uses. Similarly, the Complainant must or should have known that it was at best overstating matters when it claimed that there was some deliberate disguising of the Respondent’s identity or suggesting that the configuration of MX records indicated bad faith. The Complainant has engaged external counsel who should have known better than to advance these contentions in the way that they were.
Further, the Complaint’s lack of care is shown by missing PPC links the Complainant intended to rely on, which were only provided in a supplemental submission. Unsurprisingly, much of the Response addressed the alleged misleading nature of the Complainant’s claims. This is, to say the least, unfortunate. However, the Panel has seen nothing that suggests that the Complainant should have known that the Domain Name had been registered for the reasons claimed by the Respondent, particularly in circumstances where the Domain Name had been held for many months without being used for an active website consistent with the Respondent’s subsequent contentions. In the circumstances, the Panel declines to make a finding of reverse domain name hijacking.
Complaint Denied
Complainant’s Counsel: Elster & McGrady LLC, United States
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Just because RDNH is considered by a Panel, does not necessarily mean that it must be found. That was the case here where the Panel expressly considered it but ultimately found that it was not warranted.
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.