“Stepping Into the Shoes”: Assessing Continuity After Portfolio Transfers
The decision engages an issue that has arisen in prior UDRP cases, namely whether, and in what circumstances, a portfolio acquisition preserves the original registration date for purposes of assessing bad faith. The Panel’s treatment of this question is careful and grounded in the evidentiary record, but it also highlights the continuing tension between doctrinal consistency and commercial reality. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 6.16) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ “Stepping Into the Shoes”: Assessing Continuity After Portfolio Transfers (capte.com *with commentary)
‣ Renewal Is Not Re-Registration Under the UDRP (artforfilm.com *with commentary)
‣ Independent Maintenance Provider Satisfies Oki Data Without Authorization (beechtec.com *with commentary)
‣ Exact-Match Domain Name Undermines Oki Data Compliance (lostmary.ie *with commentary)
‣ When Competing Origin Stories Collide, the UDRP Properly Steps Aside (eshikhon.com and eshikhon.net *with commentary)
‣ No Targeting Without Evidence of Cross-Border Reputation (mac-oil.com *with commentary)
“Stepping Into the Shoes”: Assessing Continuity After Portfolio Transfers
Capte Holding B.V. v. Domain Administrator, NameFind LLC, WIPO Case No. D2026-0455
<capte .com>
Panelists: Mr. Matthew Kennedy (Presiding), Mr. David H. Bernstein, and Mr. Andrew D.S. Lothian
Brief Facts: The Complainant is a Dutch company established in 2017 that offers telematics solutions for fleet management and public transportation. It holds an EU trademark registration for a figurative CAPTE mark registered on November 7, 2025 (application filed July 17, 2025) and operates under <capte .co>. The Respondent, a GoDaddy‑owned domain investment and resale company, had held the disputed domain through Uniregistry since at least 2008. In February 2020, GoDaddy announced its acquisition of Uniregistry and its domains, and by March 18, 2020 the domain was transferred to NameFind Cayman Islands Ltd, an entity related to the Respondent. The Complainant, claiming common law rights in CAPTE dating to 2017, asserts that the 2020 portfolio acquisition constitutes a new registration for UDRP purposes, and argues bad faith use based on monetized parking and offering the domain for sale at a price far exceeding registration costs.
On November 7, 2025, in response to an expression of interest in the disputed Domain Name, the Registrar sent an email communication to the Complainant advising that the seller had set the asking price at USD $11,499. On November 10, 2025, the Complainant notified the Respondent of its EU trademark, requested the domain transfer, and threatened UDRP proceedings. On November 13, 2025, the Respondent refused, noting the domain predated the Complainant’s trademark. The Respondent contends that the 2020 transaction was a continuation of Uniregistry’s business under different management, not a new registration, and that the Respondent steps into the shoes of its predecessor with an unbroken chain of possession dating to 2008. The Respondent further contends it had no knowledge of the Complainant, a niche European business with minimal online presence, and that domain resale at a profit is a lawful business that does not constitute cybersquatting. The Respondent requests a finding of RDNH.
Held: On rights and legitimate interests, the majority finds it unnecessary to reach this element in light of its conclusions on bad faith. The majority first addresses the critical threshold question of which date governs the bad faith assessment. Finding that the Respondent fails to provide satisfactory evidence of an unbroken chain of possession prior to 2020, the Registrar’s absorption of Uniregistry’s portfolio constituting a merger of assets into its own business rather than a mere formal continuation, the Panel fixes March 18, 2020 as the relevant acquisition date. The disputed Domain Name was acquired by a company apparently related to the Respondent at least five years before the registration of the Complainant’s CAPTE trademark in December 2025. Where a respondent registers a domain name before the complainant’s trademark rights accrue, UDRP panels will not normally find bad faith registration on the part of the respondent. See WIPO Overview 3.1, section 3.8.1.
The Panel also considers the possibility that exceptional circumstances may exist that would establish the Complainant’s nascent trademark rights under WIPO Overview 3.1, section 3.8.2. However, the CAPTE mark, while textually distinctive, is identical to several third-party trademarks, and the Complainant’s pre-2020 commercial activity, attendance at three trade exhibitions and a single invoice to one client, is insufficient to establish the kind of reputation that would have brought a niche European telematics business to the attention of a United States-based domain investor. The Complainant further emphasizes the fact that the Respondent merely offers the disputed Domain Name for sale for a substantial price. However, no circumstances have been drawn to the Panel’s attention from which the inference could be drawn that this offer indicates any targeting of the Complainant’s mark, let alone at the time of acquisition of the disputed Domain Name years prior. See WIPO Overview 3.1, section 3.1.1.
RDNH: In the Panel’s view, the Complainant has not presented a compelling case and produced only limited evidence of its reputation. However, that does not mean that the Complainant initiated this proceeding knowing that it could not succeed. The Complainant was established under the distinctive “Capte” name years prior to the acquisition of the disputed Domain Name by a NameFind company. Therefore, the Panel does not find that the Complaint has been brought in bad faith or that it constitutes an attempt at Reverse Domain Name Hijacking.
Concurring Opinion (Panelist Bernstein): This Panelist would reach the question of rights and legitimate interests, finding that the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests, which the Respondent fails to rebut. The Respondent provides no credible explanation for why it or its predecessor registered the disputed Domain Name, dismissing the question as “unimportant,” whether because it was a neologism, a French word, an acronym, or simply a five-letter string previously registered by another party in 2004. The Panelist notes that when the burden of production shifts to a respondent to come forward with evidence, bare assertions will not suffice; and that this finding on the second element informs his conclusion that a finding of RDNH is not warranted, since the Complainant succeeded on at least one element of the Policy.
Complaint Denied
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Levine Samuel, LLP, United States
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The decision engages an issue that has arisen in prior UDRP cases, namely whether, and in what circumstances, a portfolio acquisition preserves the original registration date for purposes of assessing bad faith. The Panel’s treatment of this question is careful and grounded in the evidentiary record, but it also highlights the continuing tension between doctrinal consistency and commercial reality.
The majority does not reject the “step into the shoes” principle. That principle, as it has developed in UDRP jurisprudence, reflects the notion that where a domain name passes between entities in a manner that preserves the substance of ownership, the transferee may be treated as inheriting the position of the original registrant, including the original registration date for purposes of assessing bad faith. It is most commonly applied in circumstances such as transfers between commonly controlled entities, corporate reorganizations, or successions that do not reflect a change in the underlying beneficial ownership or intent. The rationale is that the Policy is concerned with abusive registration, not with formal changes in registrant name where the continuity of control and purpose remains intact.
Here, however, the Panel held that the Respondent failed to establish a sufficient evidentiary basis to demonstrate such continuity from the original registration in 2004 through to the 2020 acquisition. On that footing, the Panel fixes the relevant date as March 18, 2020, being the date on which the Domain Name was transferred to a NameFind-related entity following the GoDaddy acquisition of Uniregistry. This framing is important. The Panel’s conclusion is not that such continuity cannot exist, but that it must be demonstrated on the record.
On one hand, requiring evidence of continuity is consistent with the Policy’s fact-specific inquiry. On the other, the practical reality of large-scale portfolio acquisitions complicates this expectation. While it may be unrealistic to expect a respondent to justify the provenance or purpose of each domain name within a portfolio of 100,000+ names, it is nevertheless notable that the Respondent chose to characterize the rationale for registration as “unimportant” rather than offering even a general explanation of the acquisition context. In that sense, the evidentiary gap identified by the Panel was not purely structural, but at least in part a function of the Respondent’s presentation of its case. The acquisition of a domain portfolio is not typically an atomized exercise in intent formation for each string; it is a bulk commercial transaction. However, a brief explanation of the acquisition context, including why this particular Domain Name formed part of the portfolio, may have assisted the Panel in assessing whether the Respondent truly stepped into the shoes of its predecessor, even if the rationale of the original registrant itself could not be fully established. This more contextual approach also addresses, at least in part, the concern reflected in the concurring opinion regarding the absence of any articulated basis for the Respondent’s interest in the Domain Name.
The broader doctrinal question remains whether, as a matter of principle, a bona fide acquisition of an ongoing domain name business should ordinarily permit the acquirer to inherit the original registrant’s position absent evidence of targeting. There is a strong analogy to trademark law, where assignments do not reset priority but rather transfer it along with goodwill. While the UDRP is not bound by trademark assignment principles, the comparison is instructive and supports the view that continuity of ownership, where established in some circumstances, should carry with it continuity of priority.
The practical implications of this jurisprudence have long been recognized by experienced practitioners. Structuring domain name holdings within a continuous corporate entity, or transferring them among commonly controlled entities, has generally been treated as preserving priority. Similarly, where a portfolio is sold, doing so through the sale of the entity that holds the domain names, rather than by asset transfer, may avoid triggering the question of whether a “new registration” has occurred. These structural approaches reflect an effort to navigate an area of UDRP law that has yet to fully reconcile formal transfer analysis with commercial practice.
Renewal Is Not Re-Registration Under the UDRP
Art For Film, LLC v. J Long, WIPO Case No. D2026-0033
<artforfilm .com>
Panelists: Ms. Lorelei Ritchie (Presiding), Mr. Thomas L. Creel, and Mr. Lawrence K. Nodine
Brief Facts: The NY-based Complainant, since its inception in 2007, offers services related to the clearance and rental of artwork for, inter alia, films. It owns two USPTO registrations for the ART FOR FILM mark (registered April 1 and April 8, 2025, applications filed December 2023), both containing a disclaimer of exclusive rights in “art” and an acknowledgement that the mark has acquired rather than inherent distinctiveness. The Respondent, based in the state of California, also offers services related to the clearance and rental of artwork for films. The Respondent registered the disputed Domain Name in June 1998. As of the filing of the Complaint, the disputed Domain Name resolves to a webpage providing information about the types of services involved in clearing and renting of “art for film”.
The Complainant acknowledges that the original 1998 registration was not made in bad faith, but argues that Respondent’s renewal of the domain in 2016 constitutes a “re-registration” made in bad faith, by which time, the Respondent allegedly knew of Complainant’s rights. The Complainant relies on certain U.S. ACPA court decisions to support the re-registration theory. The Respondent contends that “art for film” is a purely descriptive term she has used to identify her business since the 1990s, predating the Complainant’s incorporation, and that a 2001 Los Angeles Times Magazine article documenting her work confirms her long-standing bona fide use. The Respondent further contends that renewal by the original registrant cannot constitute a new registration under established UDRP jurisprudence.
Held: The Complainant acknowledges that the Respondent is a “direct competitor” and that the Respondent began legitimately offering art for film, as stated in the disputed Domain Name, long before notice of the instant dispute. At the time of filing the Complaint, the Respondent’s use of the disputed Domain Name to provide information about “cleared art for film & TV” was consistent with the Respondent’s business since the 1990s. The Respondent has also provided evidence elaborating on her use of the term in a manner that describes her bona fide offering of services before she began using the Domain Name in 2017; see WIPO Overview 3.1, section 2.2. The Panel, therefore, finds that the Respondent has provided sufficient evidence of her “rights or legitimate interests” in the disputed Domain Name.
The Panel concludes that the Complainant has not carried its burden of proving that the Respondent registered and used the disputed Domain Name in bad faith within the meaning of the Policy. The Panel notes that in the United States, where both parties are based, Complainant’s claim of acquired distinctiveness of its ART FOR FILM mark is effectively an admission that the mark is prima facie merely descriptive, albeit one capable of source-identifying capacity over time. The descriptive use by the Respondent would generally be considered to be a permissible activity. Overall, the evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit Complainant’s mark, but rather to register it for its descriptive value.
Furthermore, because the Respondent registered the disputed Domain Name in 1998 well before 2007, the earliest date that the Complainant could have acquired rights in the mark, there is no basis for finding bad faith registration. The Panel squarely rejects Complainant’s “re-registration” theory, noting that UDRP panels consistently hold that renewal of a domain name by the same original registrant does not constitute a new registration, and that this principle is well-settled in WIPO Overview 3.1, section 3.9. The Panel further finds that the ACPA cases cited by the Complainant are distinguishable, all involve transfers between different entities or registrations arising from contractual relationships, not simple renewals, and in any event, the UDRP is supra-national law interpreted by its own body of precedent, not by national court decisions interpreting domestic statutes.
Complaint Denied
Complainant’s Counsel: Adwar Ivko, United States
Respondent’s Counsel: Cowan, DeBaets, Abrahams & Sheppard, LLP, United States
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision addresses an argument that occasionally appears in UDRP proceedings but is firmly rejected under established Policy precedent, namely whether renewal of a domain name by the original registrant can constitute a “re-registration” sufficient to reset the bad faith analysis. The Panel’s treatment of this issue is clear and well-reasoned, and reflects settled UDRP jurisprudence.
The Complainant’s position was notably constrained from the outset. It expressly acknowledged that the Respondent’s original 1998 registration was made in good faith, and that the Respondent had long operated in the same line of business. The case therefore depended almost entirely on the proposition that the Respondent’s later renewal of the Domain Name, by which time the Complainant had allegedly acquired rights, could serve as a new point of analysis for bad faith.
The Panel squarely rejects this approach, reaffirming that renewal by the same registrant does not constitute a new registration for UDRP purposes. This principle is not unsettled. It is well established and reflected in WIPO Overview 3.1, section 3.9. The Panel also appropriately distinguishes the U.S. ACPA authorities relied upon by the Complainant, noting that those cases involved materially different factual circumstances, including transfers between parties or contractual re-registrations, rather than simple renewals. In doing so, the Panel maintains a disciplined focus on the Policy as a self-contained, supra-national framework.
On the merits, the Respondent demonstrated long-standing use of the descriptive phrase “art for film” in connection with a bona fide business predating any rights asserted by the Complainant. The Complainant’s trademark registrations, based on acquired distinctiveness and including disclaimers, reinforced the descriptive nature of the term. In these circumstances, the Respondent’s use of the Domain Name in its ordinary descriptive sense supported a finding of rights or legitimate interests.
The bad faith analysis followed directly. Because the Domain Name was registered in 1998, well before the Complainant’s earliest possible rights, and indeed acknowledged by the Complainant itself as having been registered in good faith, there was no basis for a finding of bad faith registration. The attempt to rely on renewal as a substitute for registration did not alter that conclusion.
Overall, the decision reaffirms two settled principles: that renewal by the original registrant does not constitute re-registration under the Policy, and that descriptive domain names used in connection with bona fide offerings remain within the scope of legitimate use, particularly where such use predates the complainant’s asserted rights.
Independent Maintenance Provider Satisfies Oki Data Without Authorization
Textron Aviation Inc. v. Omar Morais, NAF Claim Number: FA2603002208967
<beechtec .com>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant is the general aviation business unit of the Textron conglomerate and owner of the BEECHCRAFT mark (USPTO registration dating to 1963), encompassing the iconic King Air turboprops, Baron G58, and Bonanza G36 piston aircraft. The Respondent operates an independent aviation maintenance business under the name “Beechtec Air Services,” specializing exclusively in Beechcraft piston aircraft. The business is a continuation of a prior operation known as “Beaver Air Services,” which had served the local aviation community since at least 2001. Upon a change in ownership, the prior owner retained the “Beaver Air Services” name, necessitating a rebrand; the Respondent chose “Beechtec” as a descriptive combination communicating that it provides technical maintenance services specifically for Beechcraft aircraft. The disputed Domain Name was registered in 2025. The Complainant alleges that the Respondent falsely presents itself as an “Authorized Dealer” for Beechcraft alongside Beechcraft and Textron Aviation logos, without any disclaimer of affiliation, and is not in fact an authorized dealer or service center.
The Complainant further alleges that Respondent’s location near Houston places it in direct competition with four authorized Beechcraft service centers, and that the Respondent sells aftermarket parts from brands not affiliated with Textron. The Respondent contends it satisfies the Oki Data framework: it actually services Beechcraft aircraft exclusively; the aftermarket products it sells are compatible maintenance products, not competing goods; and the “Authorized Dealer” language on the prior website referred exclusively to those third-party aftermarket suppliers, not to the Complainant. Upon becoming aware of potential ambiguity, the Respondent promptly removed Complainant’s logos and added a clear disclaimer of affiliation. The Respondent also notes that the website was substantially copied from the predecessor business’s website at <beaverairservices .com> during the ownership transition. The Respondent further alleges RDNH, citing a pattern of the Complainant filing complaints against independent Beechcraft and Cessna service providers, and noting that the Complainant’s complaint erroneously referenced a prior UDRP (FA2404002094083) that involved an entirely different domain name and a different respondent.
Held: On rights and legitimate interests, the Panel verifies via the Internet Archive that the resolving website was substantially copied from the predecessor business’s site at <beaverairservices .com>, supporting Respondent’s account of a bona fide business transition rather than opportunistic registration. Applying the Oki Data framework holistically, the Panel finds that Respondent actually services Beechcraft aircraft at a physical facility; that the aftermarket products sold are compatible maintenance items designed for use on Beechcraft aircraft rather than competing goods, negating any “bait and switch” concern; and that the Respondent promptly removed Complainant’s logos and added a clear disclaimer upon becoming aware of potential ambiguity, conduct the Panel credits as demonstrating good faith, consistent with Doosan Bobcat North America, Inc. v. mohit jagwani, (WIPO D2024-3191) and Textron Innovations v. Dogondke (FA 2151258).
The Panel also notes that the present proceeding raises complex legal and factual issues that seem ill-suited to resolution through the Policy. Such proceedings are better resolved in a national court of law which has the benefit of a full range of evidentiary tools such as discovery, witness testimony and cross-examination. The Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032.
RDNH: The Panel has accepted Complainant’s request to strike from the Complaint the incorrect allegation that there had been a prior UDRP dispute involving the disputed Domain Name. Therefore, the Panel will not consider Respondent’s allegations regarding that matter. There is nothing in the record to indicate malice on the part of the Complainant; further, as can be seen from the detailed discussion above, it cannot be said that the Complainant knew (or should have known) that its case was insupportable, in particular because, when the Complaint was filed, the resolving website did not display a clear disclaimer. The Respondent makes much of the fact that the Complainant has filed numerous UDRP complaints, not all of which have been successful. The Complainant is of course entitled to file UDRP complaints, so that cannot be held against it. The Panel notes that RDNH has been found in only one out of some 75 UDRP cases filed by the Complainant with Forum, which must be distinguished from the instant case.
Complaint Denied
Complainant’s Counsel: Jeremiah A. Pastrick, Indiana, USA
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision illustrates a careful and flexible application of the Oki Data framework to an independent service provider operating in a branded aftermarket ecosystem. It also reflects a measured recognition of the limits of the UDRP in resolving factually complex disputes involving competing commercial actors.
The Respondent operated a bona fide aviation maintenance business specializing in Beechcraft aircraft and adopted the name “Beechtec” to convey that focus. The Panel’s analysis proceeds through a holistic application of the Oki Data framework, emphasizing the overall commercial context and course of conduct rather than treating any single factor as determinative. In doing so, the Panel credits evidence that the Respondent’s website was largely derived from a predecessor business, supporting a narrative of continuity rather than opportunistic targeting. That said, the pairing of the Domain Name with the Complainant’s mark warrants some caution, particularly given the initial presence of branding elements and language that risked suggesting affiliation. The Panel ultimately treats these concerns as mitigated by the broader factual context and subsequent corrective steps, rather than as independently dispositive.
Applying Oki Data in this contextual manner, the Panel finds that the Respondent satisfied the core criteria. Importantly, the Panel adopts a practical understanding of the second Oki Data factor. While the Respondent’s website promoted services and included third-party compatible products, it did not sell competing aircraft. Rather, it provided maintenance and aftermarket services for genuine Beechcraft airplanes. The Panel appropriately rejected a rigid application of the “bait and switch” concept, recognizing that offering compatible third-party parts is a routine and legitimate feature of aftermarket service businesses. This reinforces that the Oki Data criteria must be applied with commercial realism, not formalism.
A more difficult issue arises from the Respondent’s prior use of the Complainant’s logos and “Authorized Dealer” language. On its face, this type of conduct can undermine a claim to legitimacy. However, the Panel places weight on the Respondent’s prompt corrective actions. Upon becoming aware of potential ambiguity, the Respondent removed the logos and added a clear disclaimer. The Panel treats this not as an after-the-fact attempt to sanitize improper conduct, but as evidence of good faith, particularly in light of the Respondent’s explanation that the website content had been carried over from a predecessor site.
The decision also usefully situates Oki Data within the broader structure of the Policy. As the Panel implicitly recognizes, the Oki Data factors are a helpful analytical tool, but they do not displace the core requirement of proving bad faith registration and use. Where a respondent operates a genuine, ongoing business providing services for branded goods, the question is not whether every aspect of its presentation strictly complies with the Oki Data factors, but whether the Respondent is engaged in abusive domain name registration of the type the Policy is designed to address. On the record here, the Panel was satisfied that it was not.
The Panel also explicitly observes that the dispute raises legal and factual complexities that are not ideally suited to resolution under the Policy. This is an important reminder of the UDRP’s intended scope. Whether a legitimate aftermarket service provider may be infringing trademark rights through its branding or marketing is ultimately a matter for courts, not for an expedited administrative procedure designed to address clear cases of cybersquatting.
On RDNH, the Panel declines to make a finding. The presence of potentially misleading elements on the Respondent’s website at the time of filing, particularly the absence of a clear disclaimer, provided at least a plausible basis for the Complaint.
Overall, the decision underscores that independent service providers can, in appropriate circumstances, rely on domain names that reference the brands they service, provided that their use remains accurate, non-misleading, and consistent with a bona fide offering of services. It also demonstrates a flexible, context-driven application of Oki Data, in which potentially problematic elements are weighed as part of a broader factual matrix rather than assessed in isolation.
Exact-Match Domain Name Undermines Oki Data Compliance
Dashing Joys Limited v. Imoer Technology Limited, WIPO Case No. DIE2025-0009
<lostmary .ie>
Panelist: Mr. Alistair Payne
Brief Facts: The Hong-Kong based Complainant, has distributed the LOST MARY brand of disposable e-cigarettes internationally since approximately 2022 and owns two EU trademark registrations for LOST MARY (registered January 10, 2024 and March 26, 2024). The LOST MARY e-cigarette entered the Irish market in 2023 and gained considerable consumer recognition. The Respondent had the disputed Domain Name originally registered on its behalf by a third-party website developer in January 2023, before it was re-registered in the Respondent’s name on July 2, 2024. At the date of filing the Complaint in December 2025, the disputed Domain Name did not resolve to an active website. By the date of the decision, it resolves to a website operating under the “VapeWell” brand, offering various genuine LOST MARY products for sale, with the Respondent’s corporate name in the footer but no disclaimer of affiliation with the Complainant.
The Complainant alleges the Respondent is not an authorized distributor or partner, has no trademark rights in LOST MARY, and that the Domain Name was registered after the mark gained significant global recognition. The Complainant further alleges passive holding and bad faith use by diverting Internet users seeking the Complainant’s website. The Respondent contends it is a legitimate reseller of genuine LOST MARY products and satisfies the Oki Data framework: it sells only genuine LOST MARY products, has not misrepresented itself as the Complainant, operates visibly under the VapeWell brand, and has not attempted to corner the market in LOST MARY-related Domain Names. In response to a Panel Order requesting evidence of the date the website went live, the Respondent filed statutory declarations from a company director and the third-party website developer, supported by a Wayback Machine screenshot dated January 20, 2024.
Held: The Panel examines the Wayback Machine evidence closely and independently verifies the January 20, 2024 page, finding it to be a rudimentary webpage entitled “Lost Mary BM600” bearing the statement “© 2024 lostmary. Built by Flystar,” with no branding to distinguish it from the Complainant. It was not until late January or February 2026, after the Complaint was filed, that a more developed website appeared under the VapeWell brand. The Panel finds that even if other Oki Data factors may be satisfied, the critical third factor is not: neither the 2024 nor the 2026 website contains a disclaimer accurately and prominently disclosing the Respondent’s lack of relationship with the Complainant. The registration of a Domain Name identical to a coined and distinctive trademark, without any descriptive modifier, carries a high risk of implied affiliation and does not amount to fair use. The Panel concludes the Respondent has targeted the Complainant’s goodwill in a manner that is neither bona fide nor legitimate.
The Panel further finds the LOST MARY mark is highly distinctive and enjoys international reputation from approximately 2022. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a well-known trademark, and particularly in the case of coined or fanciful marks, can by itself create a presumption of bad faith. WIPO Overview 3.1, section 3.1.4. This is not a “bait and switch” type case in which a respondent seeks to sell alternative products to Internet users. However, Internet users who saw the disputed domain name and the website to which it resolved, whether in in 2024 or in 2026, may very well have been confused into thinking that they were dealing with the Complainant, or with one of its affiliated entities, or authorised distributors, or re-sellers, when this was not the case. The Panel finds that this conduct fulfills the requirements of paragraph 2.1.4 of the Policy and is evidence of registration and of use of the disputed domain name in bad faith.
Transfer
Complainant’s Counsel: Beijing Chofn Intellectual Property Agency Co. Ltd, China
Respondent’s Counsel: F.R. Kelly & Co., Ireland
Note: This dispute was conducted pursuant to the .IE Dispute Resolution Policy (ieDRP), which is a variation of the UDRP (see: https://www.wipo.int/amc/en/domains/cctld/ie/index.html).
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision is a useful reminder that Oki Data is not satisfied merely because a respondent sells genuine branded goods and limits the site to those goods. The Panel treated the inquiry holistically, looking not only at the fact of resale, but at the overall presentation of the Domain Name and website over time. That approach was particularly important here because the Domain Name was identical to a coined mark, with no modifier at all, creating a strong risk of implied affiliation from the outset. In that setting, the absence of a clear disclaimer was not a minor omission. It was central to the failure of the Respondent’s claimed legitimate interest. As the WIPO Overview notes, use of a complainant’s mark without any modifier in a domain name carries a high risk of implied affiliation and generally does not constitute fair use.
The Panel was also right to look beyond the Respondent’s generalized assertion that the site operated under the VapeWell brand. The chronology mattered. The Panel’s independent review of the archived January 20, 2024 webpage showed a rudimentary page titled “Lost Mary BM600” with “© 2024 lostmary. Built by Flystar,” and no branding or disclaimer sufficient to distinguish the Respondent from the trademark owner. The more developed VapeWell-branded version appears to have emerged only after the Complaint was filed, and even then still lacked any prominent statement disclosing the absence of affiliation. That temporal analysis sharpened the case considerably. It prevented the Respondent from retrofitting a later, cleaner presentation onto an earlier record that was much more suggestive of impersonation.
The bad faith analysis follows naturally from that same structure. This was not a classic bait-and-switch case involving competing products. Rather, it was a case in which an unauthorized reseller used an identical domain name for a coined and distinctive mark in a way that could readily lead users to believe they had reached the brand owner itself, or an authorized outlet. The decision is therefore notable for showing how the line between failed Oki Data compliance and bad faith confusion can become very thin where the respondent chooses an exact-match domain name for a well-known coined mark and never properly disassociates itself. The Panel’s reliance on WIPO Overview 3.1 sections 2.5.1, 2.8.2, and 3.1.4 was well placed, and the decision fits comfortably within the broader jurisprudence rejecting reseller claims where the domain name itself overreaches before the website content is even considered.
When Competing Origin Stories Collide, the UDRP Properly Steps Aside
Ahmed Layek v. MD Ibrahim Akbar, CAC-UDRP-108495
<eshikhon .com> and <eshikhon .net>
Panelist: Mr. Gregor Kleinknecht LLM MCIArb
Brief Facts: The Complainant and the Respondent are both private individuals resident in Bangladesh and were previously engaged in a business relationship concerning an e-learning platform trading under the name ESHIKHON. The Complainant owns a US trademark registration for ESHIKHON (registered April 22, 2025, class 41), an e-learning platform offering IT and digital marketing courses. The Complainant also claims unregistered trade mark rights and that he has used the name ESHIKHON in the course of business since at least 2016. The disputed Domain Name <eshikhon .com> was registered on March 1, 2015, predating the Complainant’s trademark by ten years, while <eshikhon .net> was registered on May 27, 2025, after the trademark. Both Domain Names resolve to an active e-learning website at <eshikhon .co .bd>. The Bengali term “shikhon” means “learning,” making ESHIKHON prima facie descriptive of e-learning in Bengali language. Numerous YouTube video tutorials have been published under and by reference to the name ESHIKHON.
The Complainant alleges he founded and funded the ESHIKHON platform, owned the disputed Domain Names from 2016 until February 2022, and that the Respondent, a former independent contractor, unlawfully transferred them to himself using administrative credentials to which he had access. The Respondent counterclaims that he founded the predecessor platform INFONETBD in 2012, rebranded it as ESHIKHON in 2015, and registered <eshikhon .com> at that time; he asserts the Complainant was merely a student who later assisted with international transactions and YouTube channel management, and that in 2022 the Complainant was the one who unlawfully seized access credentials, a matter that led to a police complaint in Bangladesh and restoration of the Domain Names to the Respondent via registrar action. In an unsolicited further submission, the Complainant asserts that he founded ESHIKHON as his own brand venture in 2015, that he funded the business, owns the brand assets, and maintains a valid trade licence for his business operations.
Held: With regard to the legitimate interests, the Panel observes that the disputed Domain Names resolve to an active website providing e-learning services, which would ordinarily be apt to demonstrate that the Respondent has legitimate rights or interests in the disputed Domain Name. However, the Panel is unable to make any findings and to determine whether the Respondent lacks rights or legitimate interests in the disputed Domain Names and/or has registered and is using the disputed Domain Names in bad faith within the meaning of the third UDRP element. The present matter concerns a contested ownership dispute between the Complainant and the Respondent not only relating to the disputed Domain Names but also to the associated brand assets, social media accounts, and You Tube channel, which arises out of a prior business relationship between the parties. The UDRP is only designed and intended to resolve reasonably clear cut cases of cybersquatting and cyberpiracy.
The limited expedited and administrative nature of the UDRP procedure is neither suited nor intended for resolving complex ownership disputes with voluminous and contradictory evidence, the veracity of which the Panel has no means of testing. In these circumstances, the Policy requires Panels to identify those cases appropriate for resolution and to dismiss those that are not. Courts or other appropriate tribunals, which are equipped to examine evidence, including through discovery and witness-examination, should be deferred to where a case involves material irreconcilable facts and versions of events, or where credibility is a key issue and is unable to be determined. The Panel, therefore, concludes that resolving the factual issues involved in this matter is well beyond the limited means available for that purpose under the UDRP. The determination of the present dispute is beyond the scope of the Policy and needs to be effected by a court or arbitral tribunal of competent jurisdiction and with full procedural and evidential powers.
Complaint Denied
Complainant’s Counsel: Dimov Internet Law Consulting
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision is a clear and disciplined application of the principle that the UDRP is not a forum for resolving contested business ownership disputes dressed up as cybersquatting claims. Faced with sharply conflicting narratives about who founded, funded, and controlled the ESHIKHON platform, along with competing allegations of credential misuse and prior possession of the Domain Names, the Panel correctly declined to force a binary outcome on an evidentiary record that could not be reliably tested within the confines of the Policy.
The case is notable because, on its surface, it contains elements that might otherwise support a finding either way. The <eshikhon.com> Domain Name predates the Complainant’s registered rights by a decade, while <eshikhon.net> postdates them. The Respondent operates an active e-learning platform corresponding to the term in dispute, which is itself prima facie descriptive in Bengali. At the same time, the Complainant asserts prior use, ownership of brand assets, and wrongful transfer. Rather than attempting to reconcile these competing strands through inference or selective acceptance, the Panel recognized that the dispute turns on core questions of ownership, credibility, and control arising from a prior business relationship. Those are precisely the kinds of issues that the UDRP is structurally ill-equipped to resolve.
The Panel’s reasoning reflects an appropriately restrained view of the second and third elements. While acknowledging that the Respondent’s use of the Domain Names for a functioning e-learning platform could ordinarily support a finding of rights or legitimate interests, the Panel declined to make even that determination in isolation. Instead, it treated the legitimacy inquiry as inseparable from the broader ownership dispute. This is a careful approach. It avoids the risk of inadvertently endorsing one party’s version of events where the underlying facts remain genuinely contested and untested.
Equally important is the Panel’s articulation of the limits of the UDRP process. The decision underscores that complexity alone does not remove a case from scope. Rather, it is the presence of material, irreconcilable factual disputes, particularly those turning on credibility and competing claims to foundational rights, that makes the Policy an inappropriate vehicle. Here, the allegations of account seizure, prior control, registrar intervention, and competing origin stories created precisely that kind of evidentiary impasse.
In that sense, the decision serves as a useful counterweight to the occasional tendency to stretch the UDRP into broader commercial disputes. The Panel correctly reaffirmed that where a case requires document production, cross-examination, and a full evidentiary record to determine who actually owns or controls a business and its associated assets; the proper forum is a court or arbitral tribunal, not an expedited administrative proceeding.
No Targeting Without Evidence of Cross-Border Reputation
mac OIL GmbH v. Joseph Akouri, WIPO Case No. D2026-1009
<mac-oil .com>
Panelist: Mr. Jeremy Speres
Brief Facts: The Complainant, a German motor vehicle oil change service provider, owns an EU trademark registration for MAC OIL (registered on November 21, 2014). The Complaint contains little information regarding the Complainant’s business. Although the Complaint didn’t mention the Complainant’s website, the Panel notes the contact email provided uses the Domain Name <mac-oil .de> that resolves to the website of a German motor vehicle oil-change provider trading as “macOIL,” referring to the Complainant’s corporation. The disputed Domain Name was registered on July 31, 2019, and presently resolves to a registrar parking page with information and links to ads for heating oil products. Internet Archive records show it previously resolved to parking pages indicating it might be for sale.
The Complainant alleges bad faith registration and use under paragraph 4(b)(i), relying on passive holding, use of a privacy service, and the implausibility of good faith use. The Complainant further alleges that the disputed Domain Name was registered and has been used in bad faith, primarily for the purpose of selling it to the Complainant. The Respondent contends that “mac” and “oil” are common dictionary words, that he registered the domain without knowledge of the Complainant whose business is geographically limited to Germany, and that the Domain Name was registered as a potential future project or generic domain investment. The Respondent requests a finding of RDNH on the basis that the Complaint was filed with no evidence of targeting.
Held: The Panel finds that there is insufficient evidence of targeting. The Complainant adduces no evidence of any reputation or use of its mark in the United States, the Respondent’s jurisdiction. The Panel notes that it is conceivable that the Respondent may have encountered the Complainant’s <mac-oil .de> domain name and sought the disputed “.com” domain name in anticipation of the Complainant desiring it; however, this is speculative and is neither argued nor proven on the evidence provided by the Complainant. The Panel’s independent US-based VPN searches show that “mac oil” and “mac-oil” do not refer to the Complainant on the first three pages, and that several other businesses use similar names, confirming both that the mark lacked recognition in the Respondent’s market and that a due diligence search would not have led the Respondent to associate the terms with the Complainant.
The disputed Domain Name is not being used for any purpose relating to the Complainant or its industry, and there are no other indicia of cybersquatting such as the use of elements of branding (for example, a logo) associated with the Complainant. The disputed Domain Name is composed of a combination of two words, “mac” and “oil” (even if not an ordinary combination), and, as the searches discussed above show, these words have been used by other businesses, showing that it is not inconceivable that the Respondent could likewise have adopted these words for their significance other than as the Complainant’s trademark. In the circumstances, the Complainant has not met its burden of establishing, on balance of probabilities, that it is more likely than not that the disputed Domain Name was registered and has been used with the Complainant’s mark in mind.
RDNH: The Panel considers that the Respondent’s request for a finding of RDNH is not wholly without merit. The Complainant is legally represented and held to a higher standard, and the Panel finds it lacked reasonable grounds for contending that the Respondent registered the domain with knowledge of its mark and intent to sell it back to the Complainant. However, the Complainant’s mark and domain name at <mac-oil .de> both predate the disputed Domain Name by several years, and the Complainant appears to have been trading since at least 2013, circumstances that, while insufficient to prove targeting, are not so obviously meritless as to render the complaint a bad faith filing. The Panel finds the Complainant held a sincere if unsupported belief that cybersquatting had occurred.
Complaint Denied
Complainant’s Counsel: VON ROHR Patentanwälte Partnerschaft mbB, Germany
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision reflects a careful and methodical application of the targeting requirement in cases involving geographically limited marks. The Panel did not accept the Complainant’s assertions at face value, but instead examined whether there was any evidentiary basis to conclude that a U.S.-based registrant would likely have had the German Complainant in mind when registering a domain name composed of two relatively common terms. Finding none, the Panel concluded that the case rested on speculation rather than proof.
A particularly commendable aspect of the decision is the Panel’s willingness to independently test the plausibility of the Complainant’s claim. By conducting U.S.-based searches and observing that the Complainant did not appear in the results, while other businesses using similar terms did, the Panel grounded its reasoning in objective indicia of market visibility. This reinforces an important point: where a complainant relies on a theory of constructive or inferred knowledge across jurisdictions, some evidence of reputation or discoverability in the respondent’s market is ordinarily required. Absent that, the inference of targeting becomes tenuous.
The composition of the Domain Name further supported the Panel’s conclusion. While “mac oil” may not be a standard phrase, it is nonetheless a combination of elements that are widely used and capable of independent meaning. The absence of any use connected to the Complainant’s business, coupled with a parking page featuring unrelated advertising, did not suggest an intent to trade on the Complainant’s goodwill. In this context, the Panel crucially and admirably declined to stretch passive holding into a finding of bad faith without the necessary predicate of targeting.
The Panel’s treatment of RDNH is also measured and balanced. While noting that the Complainant, represented by counsel, advanced a theory of bad faith without evidentiary support, the Panel stopped short of a formal finding. The existence of prior trademark rights and earlier domain use was sufficient to explain, even if not justify, the Complainant’s belief that it may have been targeted. This restrained approach avoids over-penalizing a weak but not wholly abusive complaint.
Overall, the decision stands as a well-reasoned reaffirmation that the burden of proving bad faith registration requires more than temporal priority and conjecture. It requires evidence that the respondent likely had the complainant in mind, and where that element is missing, the case cannot succeed.
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.