“They Won’t Sell It to Us” Is Not a Cause of Action
The Complainant’s theory of bad faith in this case rested on the Respondent’s unwillingness to sell. An offer in 2009 was refused. Offers in 2014 and 2022, the last through a GoDaddy broker, went unanswered. The Complainant then filed a UDRP complaint asserting that the Respondent’s “repeated failure to engage despite numerous attempts to establish contact” showed that the domain name had been registered and used in bad faith. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 6.43) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ “They Won’t Sell It to Us” Is Not a Cause of Action (windspace.com *with commentary)
‣ Domain Acquired in 2007 as a Common Place Name and Surname Defeats the Complaint (westgate.com *with commentary)
‣ A Developer Builds a Tool for Upwork Users. Is That Cybersquatting? (upworkalerts.com *with commentary)
‣ You Cannot Trademark a Game and Then Sue Everyone Who Reports the Score (sattamatkajico.com *with commentary)
‣ Registered the Day the Trademark Application Was Filed (dreampairskids.com *with commentary)
“They Won’t Sell It to Us” Is Not a Cause of Action
WindSpace A/S v. Acciona, SA, WIPO Case No. D2026-3753
<windspace.com>
Panelist: Mr. Sebastian M.W. Hughes
Brief Facts: The Complainant is a Danish company that has carried on business since 2006 in renewable energy, developing wind and solar parks under the WINDSPACE mark. It owns the Danish trademark for WINDSPACE, registered May 17, 2010. The Respondent is a Spanish company that has been active in the Spanish renewable energy sector since 1997. The disputed Domain Name was created on December 17, 1999, by the Respondent’s predecessor in title, Terranova, a Spanish renewable energy company. The website promoted Terranova’s business in Spain from at least 2003 until December 2014, and the Domain Name is now passively held.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed Domain Name, as it has remained inactive for an extended period of time; the Respondent rejected the Complainant’s offer to buy the disputed Domain Name made in September 2009 and did not respond to the Complainant’s further offers in 2014 and, through GoDaddy’s broker, in 2022; and, given the Respondent’s repeated failure to engage despite numerous attempts to establish contact, the disputed Domain Name has been registered and used in bad faith under the Policy.
The Respondent contends that the current inactive status of the disputed domain name results from internal strategic decisions and does not in all the circumstances demonstrate a lack of rights or legitimate interests in the disputed domain name. The Respondent further contends that the term “windspace” has a natural connection with wind and energy and, more broadly, with the renewable energy sector; the Complainant’s attempts to acquire the disputed domain name do not demonstrate that the Respondent had any intention to sell the disputed domain name. The Respondent requests a finding of RDNH.
Held: 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 had no trademark rights at the time that the Respondent’s predecessor in title, Terranova, registered the disputed Domain Name; and the Complainant had not yet applied for or obtained registered rights in respect of the trademark at the time it first approached the Respondent with an offer to purchase the disputed Domain Name. WIPO Overview 3.1, section 3.8.1. The Complainant’s registration for the trademark (in Denmark) was not applied for until September 29, 2009, almost ten years after the date of registration of the disputed Domain Name.
The Complainant’s initial request to purchase the disputed Domain Name was sent to the Respondent, by email, on September 21, 2009, and rejected by the Respondent in October 2009. At that time (in September 2009) the disputed Domain Name was resolved to the Respondent’s Website. The Respondent did not respond to the Complainant’s further offers to buy the disputed Domain Name, in 2014 and 2022. The Respondent purchased the business of Terranova (after Terranova’s merger with Cesa) in 2006 – the same year the Complainant commenced its business in Denmark, and three years before the Complainant filed its application for registration of the trademark in Denmark; and first approached the Respondent with an offer to buy the disputed Domain Name.
RDNH: The Complainant is legally represented and ought therefore to be held to a higher standard. In all the circumstances, the Panel finds the Complainant ought to have been aware that it would be unable to establish bad faith registration and use, as the disputed Domain Name was registered seven years before the Complainant commenced business, and almost ten years before the Complainant obtained its Danish registered rights in the trademark. In light also of the natural meaning of the term WINDSPACE, including in particular in respect of the renewable energy sector; the history of registration and use of the disputed Domain Name; and the Respondent’s refusal to sell the disputed Domain Name, the Complainant ought also to have recognised that it would not be possible to meet the established requirements to support a finding of bad faith through passive holdings. The Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: DLA Piper Denmark Law Firm P/S, Denmark
Respondent’s Counsel: UBILIBET, S.L., Spain
Commentary by ICA General Counsel, Zak Muscovitch:
The Complainant’s theory of bad faith in this case rested on the Respondent’s unwillingness to sell. An offer in 2009 was refused. Offers in 2014 and 2022, the last through a GoDaddy broker, went unanswered. The Complainant then filed a UDRP complaint asserting that the Respondent’s “repeated failure to engage despite numerous attempts to establish contact” showed that the domain name had been registered and used in bad faith.
The chronology left little room for that argument. The domain name was registered in December 1999 by Terranova, a Spanish renewable energy company, and promoted Terranova’s business from at least 2003. Acciona, a large renewable energy group, acquired Terranova’s business in 2006. The Complainant began trading in Denmark that same year and applied for its Danish WINDSPACE mark in September 2009, a week after its first purchase offer. The domain name predates the Complainant’s existence by seven years and its trademark by nearly ten. Under WIPO Overview 3.1, section 3.8.1, that disposes of the third element. A registrant cannot target a mark that does not yet exist, and the Respondent’s acquisition of the name as part of a business purchase in 2006 still predates everything the Complainant could rely on.
The passive holding argument did not change the analysis. The Overview’s section 3.3 factors ask, among other things, whether the mark is distinctive and whether any good faith use is conceivable. “Windspace” is two ordinary words with a natural connection to the wind energy sector in which both parties operate, and the domain name had a decade of documented good faith use before it went dark. A corporate group leaving a legacy domain name idle after a merger is not unusual, and the Respondent’s explanation that this reflected “internal strategic decisions” was accepted. Passive holding is a doctrine for inferring bad faith where no other explanation is plausible. It is not a rule that an unused domain name becomes available to whoever wants it.
The RDNH finding follows the pattern the Overview describes at section 4.16. The Complainant was legally represented and was held to the higher standard that implies. It had been aware since 2009 that the Respondent was not a seller, and it was aware that the domain name predated its own business. The Panel concluded that it ought to have recognised that neither bad faith registration nor passive holding could be made out, and that the Complaint was the kind of filing the Overview describes as a “Plan B”, where the Policy is invoked after commercial negotiations have failed.
Domain Acquired in 2007 as a Common Place Name and Surname Defeats the Complaint
Westgate Resorts, Ltd. v. DNS ADMIN, BEST WEB LIMITED, WIPO Case No. D2026-3320
<westgate.com>
Panelists: Mr. Andrew D. S. Lothian (Presiding), Mr. Michael A. Albert, and Mr. Adam Taylor
Brief Facts: The Complainant is a Florida limited partnership and a wholly owned subsidiary of Central Florida Investments, Inc. (CFI), which operates resort and vacation timeshare properties. CFI owns a U.S. registration for WESTGATE, registered on May 26, 2026; the Complainant uses the mark under license. The Complainant also claims unregistered rights in WESTGATE dating back to 1982, supported by a declaration from its Chief Operating Officer, and has operated <westgateresorts.com> since 1997. The Respondent is a Hong Kong company incorporated around November 2014 by Murat Yikilmaz, a Turkish domain investor, to hold his domain names. Mr. Yikilmaz acquired the Domain Name on or about April 18, 2007, for USD $7,500 from an individual surnamed Westgate, as one of approximately 270 geographic-term domain names he acquired in April and May 2007.
The Domain Name displayed vacation-related advertising links from December 2007 to October 2008, only the domain name in 2012, and links referencing “Westgate Resorts” and “Westgate Timeshare” from 2013 to about 2019. It now redirects to the Respondent’s website, which offers domain names for sale. In September and October 2025, the Complainant approached a broker at the Registrar, who made an initial offer of USD $20,000 to the registrant. The Respondent replied that the price was USD $6 million net, and negotiations went no further. The Complainant alleges that there is no evidence that the Respondent’s use of the disputed Domain Name relates to a bona fide offering of goods or services; rather, the Respondent uses the disputed Domain Name simply to redirect users to a different domain name and to hold it for sale at a vastly inflated price.
The Respondent contends that, in cases brought under the Policy, it has long been established that, where a domain name consists of a common term, the first person to register it in good faith is entitled to the domain name. Such registration constitutes a “legitimate interest,” and panels recognize that aggregating and holding domain names for resale, including dictionary words and common phrases, can constitute a bona fide offering, provided that the registration did not target a trademark. The Respondent further contends that the Complainant made merely conclusory allegations that the Respondent “was aware of the Complainant’s extensive use of the Westgate name” in 2007 “as a function of the Complainant’s extensive marketing and advertising,” without providing any evidence of the nature or reach of that marketing and advertising, whether in 2007 or at any other time.
Preliminary Issue: The Panel notes the Respondent’s comments regarding the Complainant’s delay in bringing the present administrative proceeding. However, panels under the Policy have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits, although such a delay may make it more difficult for a complainant to establish its case on the merits. WIPO Overview 3.1, section 4.17.
Held: The relevant date for the Panel’s assessment of whether the domain name was registered in bad faith is April 18, 2007, as beneficial ownership and control remained unchanged despite the subsequent transfer. The evidence on the record demonstrates to the Panel’s satisfaction that “Westgate” has substantial geographic and surname significance independent of the Complainant. There is thus a plausible basis on the record for Mr. Yikilmaz’s acquisition of the disputed Domain Name as part of his investment portfolio that would not lead the Panel to infer any targeting of the Complainant’s rights at the material time. Notably, with respect to the Complainant’s claimed reputation or goodwill, the formal declaration of the Complainant’s Chief Operating Officer is brief and conclusory, providing no sales, advertising, or media figures relating to the Complainant’s activities at the material time. Although the record indicates that the Complainant operated through <westgateresorts.com>, which would have been accessible from Mr. Yikilmaz’s location, it provides no evidence of the extent or prominence of that online presence in 2007.
The Complainant goes on to indicate that the Respondent’s application of a USD $6 million price to the disputed Domain Name shows targeting. However, it must be noted that the Respondent did not know the identity of the potential buyer, as the negotiations were conducted anonymously. The Complainant has produced no evidence to support the notion that the Respondent would have intuited that it was dealing with the Complainant in particular, as opposed to one of the myriad other companies and people that might be interested in the term “Westgate” in a domain name. The Complainant also claims that the disputed Domain Name was passively held. However, the Panel considers Mr. Yikilmaz’s and the Respondent’s redirection of the domain name, first to advertising-link pages and later to a page promoting the Respondent’s business, to constitute active rather than passive use. Finally, the Panel found “a substantial temporal disconnect” between the 2007 acquisition and the targeted advertising links that began around 2013, and held that later use “does not establish bad faith.”
Complaint Denied
Complainant’s Counsel: Greenspoon Marder, LLP, United States
Respondent’s Counsel: Muscovitch Law P.C., Canada
Commentary by ICA General Counsel, Zak Muscovitch:
Unsolicited supplemental filings are a routine feature of contested UDRP cases, and panels routinely admit them with a sentence or two about fairness. This three-member Panel did something less common. It applied the test in WIPO Overview 3.1, section 4.6, point by point, and refused the Complainant’s filing because none of the three matters it wanted to address was new.
The Overview test asks whether the party seeking to file has shown relevance and explained why the material could not have been provided in the complaint or response, typically owing to some exceptional circumstance. The Complainant said it needed to respond to three things it could not have anticipated. First, that the Respondent had admitted to investing in domain names. Second, that the Respondent had confirmed an acquisition date of April 18, 2007, which the Complainant wished to use as a springboard for discussing later screenshots of the parking page. Third, that those screenshots, some of which referenced Orlando vacations, showed the Respondent’s declaration of ignorance to be false.
The Panel found each was “either known to it or within its reasonable contemplation when it filed the Amended Complaint”. The Respondent’s investment business was on the face of the Complainant’s own Annex 8, which captured the redirect to the Respondent’s portfolio website, and “a modicum of research” into the registrant identity disclosed by the Registrar would have turned up prior decisions describing the Respondent and its principal. The acquisition date made no material difference to the Complainant’s own pleaded date of June 29, 2007, and the screenshots the Complainant wanted to argue from were already in the record as its own Annex 7, the earliest of them post-dating both dates. As for the alleged false statements, they arose “from the same screenshots that the Complainant had produced”, and the Panel saw no reason the Complainant could not have anticipated the Respondent’s likely position on prior knowledge.
Both filings were refused, the Respondent’s having been framed as an objection with an answer in the alternative. The Panel added, for completeness, that admission would not have changed the result, which turned on the absence of any evidence that the Respondent had the Complainant in mind in 2007.
Two lessons follow. A complainant is expected to read its own annexes and to anticipate the obvious: that a domain investor will say it registered a geographic surname as a geographic surname, and will deny knowledge of a complainant it had no reason to know. And “new” means new to the record, not newly noticed by the filing party. A supplemental filing built on material the complainant itself produced is a request for a second complaint, and this Panel declined to entertain one.
Editor’s Note: ICA General Counsel Zak Muscovitch represented the Respondent in this proceeding.
A Developer Builds a Tool for Upwork Users. Is That Cybersquatting?
Upwork Global LLC v. Muhammad Usman, Numerical Miracles, WIPO Case No. D2026-3617
<upworkalerts.com>
Panelist: Mr. Sebastian M.W. Hughes
Brief Facts: The US-based Complainant has been carrying on business under the trademark UPWORK since 2015 in respect of its AI powered online platform at its website “www.upwork.com” that connects freelancers with prospective clients. The Complainant is the owner of registrations in jurisdictions worldwide for the trademark UPWORK, including the European Union, with a registration date of September 8, 2017. The disputed domain name was registered on March 31, 2026 by a software developer located in Pakistan.
The disputed domain name resolves to an English language website, prominently featuring the trademark; using green-coloured corporate livery similar to the corporate livery used by the Complainant on its website; offering the same AI-generated job proposal services offered by the Complainant to freelancers under the trademark, as well as blogs and commentaries comparing the Complainant’s services with those of its competitors; containing on the website footer the copyright notice “© 2026 Upwork Alerts. All rights reserved.”, “Upwork Alerts Upwork copilot to find the right jobs, vet the client, and turn research into a winning proposal”; and containing (amongst other disclaimers) the disclaimer “Not affiliated with Upwork Inc.” (the “Respondent’s Website”). In addition, the Respondent’s Website offers various paid subscription plans for its services.
The Complainant alleges that the disputed domain name has been registered and used in bad faith in respect of the Respondent’s Website. The Respondent contends that he has registered the disputed domain name and built the Respondent’s Website in order to provide a service to freelancers who are already users of the Complainant’s Upwork platform. The Respondent contends that, although he is not a reseller of the Complainant’s services, he satisfies the established Oki Data criteria (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903): he offers a service that operates solely with the Complainant’s marketplace; the website promotes only his own alert and research tools, with no affiliate links or paid promotions; the relationship is accurately disclosed in the footer and Terms of Service; and he has not sought to corner domain names reflecting the mark and holds only this one.
Held: The Panel is unable to conclude that the manner in which the Respondent has registered and used the disputed domain name gives rise to rights or legitimate interests for the purpose of the Policy. The Panel finds that although the Respondent, in building and operating the Respondent’s Website, is not strictly speaking a reseller of the Complainant’s services, the facts demonstrate that he has deliberately registered the disputed domain name and set up the Respondent’s Website, by targeting the Complainant and taking advantage of its trademark, in order to set up a business to generate revenue. The Respondent charges freelancers using the Complainant’s UPWORK platform for unauthorized services that piggyback on the Complainant’s established offerings, and provides blogs and commentary comparing the Complainant’s services with those of its competitors. The Panel finds the second element of the Policy has been established.
In light of the manner of use of the disputed domain name in respect of the Respondent’s Website, the Panel finds that bad faith has been established under paragraph 4(b)(iv) of the Policy. The Panel finds the disclaimers on the Respondent’s Website are not sufficiently clear and prominent, being in small font at the bottom of a long home webpage. The manner of use of the trademark on the Respondent’s Website is also not truly referential to the trademark but is used to indicate source. Accordingly, in all the circumstances the disclaimers amount to an admission by the Respondent that users may be confused. WIPO Overview 3.1, section 3.7. This conclusion is strengthened by the Respondent’s evidence in respect of the manner in which he chose to register and use the disputed Domain Name using the Complainant’s trademark and in respect of a business which derives revenue from attracting freelancers to the Respondent’s Website.
Transfer
Complainant’s Counsel: Fidus Law Chambers, India
Respondent’s Counsel: Self-represented
Commentary by ICA General Counsel, Zak Muscovitch:
Every large online platform has an ecosystem of independent add-on tools built around it. Browser extensions, alert services, analytics dashboards and proposal generators exist for Amazon sellers, Shopify merchants, eBay buyers and, as here, Upwork freelancers. Those businesses are legitimate, and they necessarily refer to the platform by name. The question in this case was whether a developer who did exactly that, openly, had engaged in abusive registration. The Panel said yes. It is at least arguable that this was a contested question of nominative fair use rather than a clear case of cybersquatting, and the decision would have been more persuasive had it met that argument directly.
The Respondent, a software developer in Pakistan, registered upworkalerts.com in March 2026 and built a paid subscription service that monitors Upwork job postings, vets clients and drafts proposals. He did not hide the relationship. The footer read “Not affiliated with Upwork Inc.”, the Terms of Service said the same, the site described itself as a “copilot” for Upwork users, and he argued both nominative fair use and the Oki Data criteria: a service that operates solely with the Complainant’s marketplace, no competing products or affiliate links, accurate disclosure of the relationship, and a single domain name. He sold nothing that Upwork sells. He offered no competitor’s services. He did not try to sell the domain name.
Nominative fair use was the framework the Respondent invoked, and the Panel did not engage with it. The doctrine asks whether the mark is needed to identify what is being referred to, whether only as much of the mark as necessary is used, and whether anything suggests sponsorship or endorsement. Sections 2.5.1 and 2.5.2 of WIPO Overview 3.1 ask the same questions. The Respondent has a strong case on the first two. A tool for Upwork freelancers cannot be described without the word “Upwork”, and “alerts” is a plain description of what it does. The third is where the dispute lies. The Complainant’s position, which the Panel accepted, was that “Upwork Alerts” reads as an Upwork feature and the site had the look and feel of Upwork’s own. The Respondent’s position was that mark plus descriptive term is the form Oki Data has permitted for a quarter century, that the relationship was disclosed, and that a freelancer who reads the page learns quickly that this is a third-party tool. Both positions have support in the Overview. Which should prevail on these facts is a closer question than the decision acknowledges.
What the Panel did instead was find no legitimate interest because the Respondent had “deliberately registered the disputed domain name” using the mark “in order to set up a business to derive revenue” from charging the Complainant’s freelancers for services that “piggy back” on the Complainant’s offerings, and from publishing blogs comparing Upwork with its competitors. Every one of those features is present in the paradigm Oki Data case. A reseller or service provider chooses the mark deliberately, serves the mark owner’s customers, charges them, and makes money doing it. Oki Data and section 2.8 of the Overview exist precisely because those facts are not disqualifying. If deliberate selection of the mark plus revenue from the mark owner’s customers defeats a legitimate interest, it is hard to see how any respondent asserting nominative use could succeed.
The blog point is weaker still. Comparing platforms is ordinary speech, and section 2.5.2 treats commentary as a factor in favour of fair use, not against it. The bad-faith finding then turned the disclaimers against the Respondent. The Panel held that they were in small type at the bottom of a long page and therefore not prominent enough. Applying section 3.7, it treated them as an admission that users might be confused. The result was that the Respondent’s openness about his independence became evidence against him.
The UDRP was designed for clear cases of abusive registration, and the Second Staff Report said so expressly. A self-represented developer who built a working complementary service, disclosed that he was independent, and whose misstep, if it was one, lay in how prominently he said so, does not fit the archetype. Whether “Upwork Alerts” crosses the line from reference to impersonation is a question on which reasonable panels could differ. Where that is so, there is a respectable argument that the dispute belongs in court, with evidence and a trademark law that contains a developed nominative fair use doctrine, rather than being resolved on the papers against the registrant.
Whatever one makes of the outcome, the reasoning deserves caution. The passages about piggybacking and revenue describe every legitimate reseller and service provider on the Internet. Read as a test, they would swallow the rule.
You Cannot Trademark a Game and Then Sue Everyone Who Reports the Score
Rikshiram Aghria v. Ankit Khatri, WIPO Case No. D2026-4110
<sattamatkajico.com>
Panelist: Ms. Shwetasree Majumder
Brief Facts: The Complainant is an individual based in Odisha, India and owns 12 Indian trademark registrations for marks SATTA and SATTA MATKA in stylized form, in various classes. The registrations include SATTA (device mark) in Class 28 and Class 35 respectively, both dated July 13, 2023. The Complainant has not filed evidence of the use of any of these marks. Further, the Complainant has made no assertions as to the business he carries on, or the goods or services in connection with which he uses, or intends to use, the SATTA or SATTA MATKA marks. The disputed Domain Name was registered on August 2, 2023 by an individual based in Andaman and Nicobar Islands, India and redirects to the website “www.madhurresult.live”. This website is titled “Madhur Bazar | Madhur Satta Matka | Kalyan Matka | Madhur Matka”, which publishes results, charts, and “fix” numbers for various Satta Matka markets, together with a disclaimer stating that the website is for entertainment and information purposes only and is not associated with any “Illegal Matka Business or Gamblers”.
The Complainant alleges that the Respondent operates an online betting platform, which is prohibited in India under Section 5 of the Promotion and Regulation of Online Gaming Act, 2025, and cannot constitute a bona fide offering of goods or services. The Complainant further alleges that SATTA MATKA is distinctive and coined; that the Respondent registered the disputed Domain Name to trade on the Complainant’s goodwill; that his use of the domain name for unlawful gambling activities tarnishes the Complainant’s marks; and that the concealment of the Respondent’s identity supports a finding of bad faith. The Respondent contends that “satta” and “satta matka” are generic Hindi terms that have been in use since the 1960s and appear in more than one hundred domain names, and that “jico” is a coined term. The Respondent further contends that he has operated an information portal at the disputed Domain Name since August 2, 2023, which includes a disclaimer and an age-verification requirement and accepts no deposits or stakes, while the Complainant’s marks are registered for toys in Class 28.
Held: The Respondent has used the disputed Domain Name for a website that publishes results and charts for Satta Matka markets. Satta matka is a generic term colloquially used in India for a number-based betting game. The Complainant itself uses the term in that sense. The Respondent’s website uses “satta matka” to name the game it covers, and nothing on the record shows that it targets the Complainant’s marks. The Panel finds that the Respondent has used the disputed Domain Name in its ordinary, descriptive sense and not to target the Complainant’s marks, which is consistent with rights or legitimate interests. WIPO Overview 3.1, section 2.10.1. In the Panel’s view, whether the Respondent’s website is unlawful under the Promotion and Regulation of Online Gaming Act, 2025 is a question best dealt with by a court of competent jurisdiction, and this UDRP Panel is not the appropriate forum to decide it.
Further, the evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark. The Complainant’s applications were filed a few weeks before the disputed Domain Name was registered on August 2, 2023, and the Complainant has filed no evidence of use for his marks. The Complainant’s assertions that SATTA MATKA is “distinctive and coined” and that its goodwill “took years to build” are unsupported. The record indicates that the Respondent chose the colloquially used generic term for his website, and nothing suggests that he had prior knowledge of the Complainant’s applications. The Panel finds that the Respondent did not register the disputed Domain Name in bad faith, as nothing in the record shows that he targeted the Complainant or his marks, which had been applied for only weeks earlier and for which no reputation has been shown. WIPO Overview 3.1, section 3.8.
RDNH: The Complainant brought this Complaint on the strength of applications filed weeks before the disputed Domain Name was registered, for a term which the Complainant itself uses as the name of a betting game, while describing that term as coined and asserting goodwill built over years without filing any evidence of use. As stated earlier, “Satta Matka” is a generic term used colloquially in India for a number-based betting game; “satta” means wagering and “matka” means an earthen pot, from which the winning number is drawn and on which players bet. The Complainant knew, or ought to have known, that it could not show that the Respondent had targeted it. The Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: Self-represented
Respondent’s Counsel: Self-represented
Commentary by ICA General Counsel, Zak Muscovitch:
Satta Matka is a numbers game that has been played in India since the 1960s. “Satta” means wagering and “matka” is the earthen pot from which the winning number was once drawn. It is to Indian betting what “lottery” is to the English language. In July 2023 an individual in Odisha obtained Indian registrations for SATTA and SATTA MATKA in stylized form, including for toys in Class 28. Three weeks later, someone in the Andaman and Nicobar Islands registered sattamatkajico.com for a results and charts portal. Three years after that, the registrant found himself a Respondent in a UDRP, accused of trading on the “coined” and “distinctive” mark SATTA MATKA and of years of accumulated goodwill, none of which was supported by a single piece of evidence of use.
The decision is worth reading for three reasons.
First, the Panel did what a registration-based first element invites complainants to hope panels will not do. Having found standing on the registrations, it looked at what the words actually mean. The Complainant himself used “satta matka” as the name of the game. The Respondent used it the same way. Under WIPO Overview 3.1, section 2.10.1, use of a term in its ordinary descriptive sense, without targeting, is consistent with rights or legitimate interests, and a stylized registration in a toy class does not change what the words mean to a hundred million people.
Second, the Panel declined the invitation to decide whether the Respondent’s site is unlawful under India’s Promotion and Regulation of Online Gaming Act, 2025. Complainants increasingly plead local illegality as a shortcut to the second element, on the theory that an unlawful business cannot be a bona fide offering. The Panel’s answer was that the question “is best dealt with by a court of competent jurisdiction, and this UDRP Panel is not the appropriate forum to decide it”. That is the correct answer. The Policy asks whether the registrant targeted the complainant’s mark. It does not deputize panels to enforce gaming statutes, and a finding of illegality against a respondent on a paper record, with no criminal process and no appeal, is not something a panel should be making.
Third, the Panel found Reverse Domain Name Hijacking against a self-represented complainant. Representation by counsel is often cited as a factor supporting RDNH, but its absence is not a shield. A complainant who files on applications made weeks before the domain name was registered, describes a generic term as coined, asserts years of goodwill without evidence, and uses the term generically in his own pleading “knew, or ought to have known, that it could not show that the Respondent had targeted it”. The Overview’s section 4.16 factors were all present, and the Panel applied them.
Registered the Day the Trademark Application Was Filed
Top Glory Trading Group Inc v. Timofey Anashko, ADNDRC (Hong Kong Office) Case No. HK-2602181
<dreampairskids.com>
Panelist: Mr. Ankur Raheja
Brief Facts: The Complainant is a New Jersey corporation incorporated on June 27, 2013, and owns the DREAM PAIRS footwear brand. It holds trademark registrations for DREAM PAIRS and DREAM PAIRS KIDS in the United States, European Union, United Kingdom, Canada, Mexico and China. This includes U.S. registrations for DREAM PAIRS (January 2, 2018), and DREAM PAIRS KIDS (October 31, 2023). An EU registration for DREAM PAIRS KIDS was filed on March 1, 2022 and registered August 2, 2022. The Respondent, a resident of Laos, registered the Domain Name on March 1, 2022 and the Domain Name has not resolved to an active website. A Wayback Machine capture dated June 19, 2024, shows that the Domain Name was listed for sale on Dan.com for USD $4,995.
The Complainant asserts that the disputed Domain Name was registered and is being used in bad faith, given the distinctiveness and established commercial presence of the DREAM PAIRS mark prior to registration, the composition of the disputed Domain Name, the offer to sell the disputed Domain Name for USD $4,995, a sum in excess of any plausible out-of-pocket registration costs and the Respondent’s passive holding of the disputed Domain Name since registration. The Respondent did not file a Response.
Held: There is no evidence of use of, or demonstrable preparations to use, the disputed Domain Name in connection with a bona fide offering of goods or services under Paragraph 4(c)(i). The only documented use of the disputed Domain Name here is its listing for sale on “Dan.com” at USD $4,995, as shown in the Wayback Machine capture dated June 19, 2024 – a use the Respondent has made no attempt to justify or explain. Nor is there any indication of legitimate noncommercial or fair use within the meaning of Paragraph 4(c)(iii). Further, the disputed Domain Name combines the distinctive DREAM PAIRS mark with the term “kids,” which corresponds to a category of the Complainant’s own footwear products. The selection of a domain name combining a distinctive mark with a term related to the complainant’s own goods supports an inference that the domain name was registered with the complainant’s mark in mind, rather than through independent selection (WIPO Overview 3.1, section 3.2.1(i)). Moreover, the disputed Domain Name was registered on March 1, 2022 – the same day the Complainant filed its trademark application for DREAM PAIRS KIDS at EUIPO.
Furthermore, the disputed Domain Name was offered for sale in 2024 for USD $4,995. Considered together with the distinctiveness of the DREAM PAIRS Mark and the absence of any independent explanation for the Respondent’s choice of domain name, the Panel finds that this offer for sale is evidence of registration in bad faith within the meaning of Paragraph 4(b)(i) of the Policy (WIPO Overview 3.1, section 3.1.1). Non-use of a domain name does not by itself prevent a finding of bad faith under the doctrine of passive holding; panels look at the totality of the circumstances, see WIPO Overview 3.1, section 3.3 and UDRPPerspectives.org, section 3.7; and also see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Those circumstances are present here: the DREAM PAIRS mark is distinctive, the Respondent has filed no Response and offered no explanation for its registration or holding of the disputed Domain Name, and the Panel is unable to conceive of any plausible good-faith use to which a domain name that reproduces the Complainant’s own DREAM PAIRS KIDS mark in its entirety could be put. The Panel finds that the Domain Name was registered and is being used in bad faith.
Transfer
Complainant’s Counsel: Chofn Intellectual Property, China
Respondent’s Counsel: No Response
Commentary by ICA General Counsel, Zak Muscovitch:
The Digest has said more than once that an asking price is not evidence of bad faith registration, and that panels are not pricing boards. This decision is a useful illustration of the distinction we have been drawing, because it involves a USD 4,995 Dan.com listing and reaches a transfer, and the price is not what carries the result.
What carries it is the composition of the domain name and its timing. DREAM PAIRS is a distinctive footwear brand with a US registration dating from 2018 and a substantial Amazon presence. The Respondent registered dreampairskids.com on March 1, 2022. That is the day the Complainant filed its EUIPO application for DREAM PAIRS KIDS. The domain name reproduces the newly applied-for mark in its entirety, and “kids” is not a dictionary word randomly appended to a brand. It is a category of the Complainant’s own product line. The Panel drew the inference that WIPO Overview 3.1, section 3.2.1, permits in those circumstances: a domain name combining a distinctive mark with a term related to the complainant’s goods was registered with the mark in mind, not through independent selection. The Respondent, resident in Laos, filed no Response and offered no other explanation.
The same-day coincidence deserves a word. However the Respondent came to register this name on that date, the timing is difficult to square with independent selection, and the Respondent offered nothing to explain it. Combined with the composition of the name, it points to the Complainant’s brand as the source.
The Dan.com listing then plays its proper role. The Panel treated the offer for sale as evidence under paragraph 4(b)(i) “considered together with the distinctiveness of the DREAM PAIRS mark and the absence of any independent explanation for the Respondent’s choice of domain name”. That is the correct sequence. Once targeting is established from the name and the timing, an offer to sell confirms the purpose. Had the name been a dictionary phrase, the same listing would have proved nothing. The price is confirmatory, not foundational, and the decision says so.
Passive holding is handled the same way. The Panel cited Telstra and the Overview’s section 3.3 factors, and found them present: a distinctive mark, no Response, no explanation, and no plausible good faith use for a name that reproduces the Complainant’s mark exactly. Readers will note the citation to UDRPperspectives.org, section 3.7, on the same point.
The Panelist was Ankur Raheja, our Editor in Chief.
Disclaimer: The facts are taken from the decisions themselves and have not been independently verified. The editors and publishers accept no responsibility for their accuracy.
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings. He is the founder of Cylaw Solutions.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.