What Actually Constitutes a Prima Facie Case?
The Panel made the clear and unequivocal statement that, “If a domain name is legitimately held the registrant can ask whatever price it likes for it”. This is correct and is consistent with UDRP Perspectives at 3.5 (“Setting a Price and Offering for Sale”; “If a Respondent has a legitimate interest in a Domain Name, the Respondent is entitled to offer its business asset for sale at market price and this is not bad faith”; see also Personally Cool v. Name Administration, WIPO Case No. D2000-1654; “Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name”). Panelists and counsel would be well advised to bookmark this case for that helpful and concise statement. Continue reading commentary here.
Happening This Thursday!
Register here for Free
We hope you will enjoy this edition of the Digest (vol. 5.46) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ What Actually Constitutes a Prima Facie Case? (augment .ai *with commentary)
‣ Panel Finds RDNH Despite No Response Filed (sunwin .com *with commentary)
‣ Respondent’s Phishing Activity Shows Actual Knowledge Supporting Bad Faith (cancora .co *with commentary)
‣ Panel: Potential Uses of SNEP that Have Nothing to Do with the Complainant (snep .com *with commentary)
‣ Panel: The Policy Does Not Establish a General Domain Name Court (sagesrst .org *with commentary)
What Actually Constitutes a Prima Facie Case?
StayinFront, Inc. v. Narendra Ghimire / Deep Vision Architects, NAF Claim Number: FA2509002177628
<augment .ai>
Panelist: Ms. Claire R. Kowarsky, Mr. Gerald M. Levine and Mr. Nick J. Gardner (Chair)
Brief Facts: Augment, a wholly owned business of the Complainant, is a leading provider of “Extended Reality immersive technology products and services and operates a website at <augment .com>. The Complainant owns the US trademark registrations for AUGMENT, registered since March 26, 2019 (filed on October 9, 2017). The Complainant points out that the Complainant filed its U.S. trademark application for AUGMENT on October 9, 2017 two months before the domain registration on December 16, 2017. The Respondent, therefore, registered the domain with knowledge of Complainant’s rights, according to the Complainant. The Complainant further alleges that the disputed Domain Name has never been used in connection with a bona fide offering of goods or services. Instead, it has been passively held and listed for sale at exorbitant price.
The Respondent is a domain name investor who contends that “augment” is a common dictionary word which is by no means exclusively associated with the Complainant, and which is one of several thematically-related dictionary words registered by the Respondent and offered for general sale. It says the word “augment” is generic to a cornerstone concept of “augmented reality”, which is one of the areas in which AI technology is utilized and services offered by a wide number of companies. The Respondent further contends that there is no bad faith because “Augment” is a common dictionary word with multiple commercial uses and the domain was registered consistent with Respondent’s portfolio strategy. No evidence exists of targeting the Complainant specifically; trading in dictionary-word domains is legitimate per se.
Held: The Panel is by no means convinced that the Complaint has established a prima facie case. The lack of any evidence as to the nature and size of Complainant’s business, or any evidence as to its reputation or fame when assessed against the fact that “augment’ is a dictionary word of obvious application to the field of Artificial Intelligence, and Respondent’s position as a trader in domain names, all suggest that more is required than simply asserting ownership of two US trademark registrations. The Respondent has demonstrated a pattern of registering dictionary words of obvious relevance to the field of Artificial Intelligence, as domain names in the “.ai” TLD. The purchasing and sale of generic or descriptive domain names is a bona fide offering under the Policy so long as infringing or cybersquatting intent is not evident.
Further, the Respondent has listed the disputed Domain Name for sale through GoDaddy as a “Premium Domain” with a minimum offer price of USD $4,999,429 and the Complainant asserts that this constitutes bad faith under Paragraph 4(b)(i)”. The Panel disagrees. If a domain name is legitimately held the registrant can ask whatever price it likes for it, see the decision in <clio .ai>. The Panel does not conclude that the Respondent knew of or targeted Complainant’s AUGMENT trademark at the time that it registered the disputed Domain Name. Thus, there is no evidence to support the claim that the Respondent registered the disputed Domain Name in bad faith under Policy ¶4(a)(iii). Further, the Panel does not accept the doctrine of bad faith as a result of passive holding as established in the well-known decision of Telstra Corporation, is applicable here.
RDNH: The Panel considers that a finding of RDNH is appropriate in the present case for the following reasons. The Complainant should have appreciated that a claim based on a trademark which was a dictionary word was not straightforward and as minimum required evidence of fame and reputation and that the Respondent was in some way targeting or taking advantage of the Complainant. No such evidence was provided.
The Complainant unreasonably ignored numerous previous UDRP decisions involving the Respondent concerning analogous registrations of Domain Names using dictionary words. Accordingly, the Panel concludes this was a complaint which had no prospects of success according to facts available at the time of filing and which should not have been brought. Further, salient aspects of the complaint are based on bare allegations without any supporting evidence.
Complaint Denied (RDNH)
Complainant’s Counsel: Gene Bolmarcich, USA
Respondent’s Counsel: John Berryhill, USA
Case Comment by ICA General Counsel, Zak Muscovitch: There are a number of interesting and helpful aspects to this decision.
The Panel made the clear and unequivocal statement that, “If a domain name is legitimately held the registrant can ask whatever price it likes for it”. This is correct and is consistent with UDRP Perspectives at 3.5 (“Setting a Price and Offering for Sale”; “If a Respondent has a legitimate interest in a Domain Name, the Respondent is entitled to offer its business asset for sale at market price and this is not bad faith”; see also Personally Cool v. Name Administration, WIPO Case No. D2000-1654; “Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name”). Panelists and counsel would be well advised to bookmark this case for that helpful and concise statement.
When examining “Rights and Legitimate Interest”, the Panel stated that it “is by no means convinced that Complaint has established a prima facie case”. The reference to “prima facie case” of course relates to the well established UDRP principle that a Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to show that it does. The term, “prima facie” generally means “on the face of it”. It describes evidence that is sufficient to establish a fact or prove a case, unless it is contradicted by other evidence. A party must establish a prima facie case to move forward, and if successful, the burden of proof then shifts to the other side to present evidence that can rebut the presumption.
The reason that the Panel’s statement is particularly noteworthy is that the Panel quite correctly appreciated that in order for a Complainant to have established a prima facie case, it needs more than to merely recite the boilerplate allegations. A genuinely prima facie case requires some evidence to support the allegations. Only then will a truly prima facie case be made. Nevertheless, in the commonly quoted passage from the WIPO Overview at 2.1, it is noted that “panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent [and] as such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name”.
This passage can be misconstrued to mean that all that is required of a Complainant is to make boilerplate allegations of lack of rights and legitimate interest (i.e. quote the Policy itself) and then it is up to the Respondent to refute them, failing which the Complainant will “be deemed to have satisfied the second element”. That is not always the case. The nature of the disputed domain name and the overall circumstances must be taken into account in weighing whether the Complainant has genuinely made out a prima facie. As the Panel stated:
“The lack of any evidence as to the nature and size of Complainant’s business, or any evidence as to its reputation or fame when assessed against the fact that “augment’ is a dictionary word of obvious application to the field of Artificial Intelligence, and Respondent’s position as a trader in domain names (who has successfully defended a number of previous UDRP cases as to domain names comprising dictionary words) all suggest that more is required than simply asserting ownership of two US trademark registrations.”
Bravo to the Panel. If a Complainant’s trademark is PEPSI and the disputed domain name is >>PEPSI.CO<< for example, the unique nature of the trademark and the Complainant’s fame surely point to the Respondent’s prima facie lack of rights or legitimate interest in the domain name. Combined with a recital in the negative of the usual indicia of lack or rights or legitimate interest under Paragraph 4(c) of the Policy (before notice of the dispute there was no use or demonstrable preparations to use, not commonly known by the domain name, etc.), that would likely be sufficient in such a case.
But where the Disputed Domain Name corresponds to a common dictionary word, and the Complainant has not proven any particular reputation, let alone fame, as was the case here, what kind of prima facie case has really been made? Can it be said that “on its face” the Complainant made out its case in such circumstances? If one only requires the semblance of a case or, in other words, mere allegations that collectively amount to, if proven, a successful case, then one could conclude that a prima facie case has been made. But if one rejects such a notion and, rather, requires some appraisal of the circumstances and the nature of the Domain Name at issue– in other words some evidence to support the allegations be provided — then one can conclude that a genuinely prima facie case has not in fact been made. Even in the above example of PEPSI, the trademark owner’s fame and unique nature of the mark constitutes evidence that a Panel could use to conclude that a prima facie case has been met. Accordingly, some evidence is always required. The amount of evidence will vary in the circumstances. The proper approach is how the Panel proceeded.
The Panel also made a particularly noteworthy finding regarding passive holding. In its decision, the Panel excerpted or described the Complainant’s submission on this issue as follows:
“Even absent active use, passive holding can constitute bad faith where the circumstances indicate targeting of a complainant’s mark. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, Respondent has done nothing other than hold the domain and attempt to sell it at an exorbitant price.”
This is a fairly typical allegation made by Complainants which is often accepted by Panels who have inadvertently misapprehended the crucial requirements of the Telstra test. The Panel, however, truly appreciated the requirements of Telstra, and rejected this incomplete understanding of Telstra:
“The Panel does not accept the doctrine of bad faith as a result of passive holding as established in the well-known decision of Telstra Corporation, is applicable here”.
Even if a trader offering a domain name for sale can be said to be passive holding (which the Panel doubts) the Telstra decision clearly sets out number of criteria which supported the finding of bad faith on the facts of that case , as follows:-
“(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.
These factors are manifestly not present in the current case. Augment is a dictionary word and – unlike the TELSTRA mark in the above case – it is entirely possible and plausible that <augment.ai> could be legitimately used by many persons unconnected with Complainant.” [emphasis added]
Well done, Panel! The misapprehension of Telstra has been particularly troubling, but we are seeing a much improved understanding of it amongst Panelists recently. For more information on this important subject, please see UDRP Perspectives at 3.7.
Lastly, the Panel got it exactly right on its basis for finding of RDNH. Not only did the Panel correctly and clearly state that “it is not necessary for a respondent to seek a RDNH finding for a Panel to find the same”, but it also formulated an accurate and concise basis for RDNH in the circumstances of this case and cases like it: “This was a complaint which had no prospects of success according to facts available at the time of filing and which should not have been brought” [emphasis added]. It is of course well recognized RDNH may be found, inter alia, where the complainant knew it could not succeed as to any of the three elements of the Policy. But this decision goes deeper and clearly explains that a Complainant is responsible for considering facts that it had available at the time of filing.
Here, the Panel pointed out that the Complainant should have inter alia considered the fact that the Domain Name was a dictionary word and therefore “was not straightforward and as minimum required evidence of fame and reputation and that Respondent was in some way targeting or taking advantage of Complainant”. The Panel also pointed out that the Complainant “unreasonably ignored numerous previous UDRP decisions involving Respondent (see above) concerning analogous registrations of domain names using dictionary words [and that] these prior decisions identified precisely the difficulties Complainant faced and what would need to be shown to bring a complaint which had any prospects of success”. Panels should recognize like this Panel clearly did, that Complainants must not be treated like deer in the headlights. Rather, after 25 years of the UDRP, Complainants must take into account facts that are within their knowledge or which are easily available to them.
Panel Finds RDNH Despite No Response Filed
Sunwin Vibes Ltd v. Anthony Simpson, NAF Claim Number: FA2510002183004
<sunwin .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant, established in 2019, operates primarily in the online gaming and casino sector via the domain <sun .win>. The Complainant holds registered trademarks for SUNWIN in key jurisdictions, including the United States and the United Kingdom. The disputed Domain Name was registered on October 7, 1999. The Complaint alleges that the disputed Domain Name has had no bona fide use for over 25 years, hosts no relevant content, and is not used for legitimate non-commercial or fair use. Third-party SEO analysis (Ahrefs) shows that organic traffic primarily comes from Vietnam, which the Respondent monetizes through pay-per-click ads or similar schemes on a parking page, commercially benefiting from confusion with the Complainant’s mark. This is a textbook example of bad faith under UDRP jurisprudence.
The Complainant further alleges that the domain name was registered in 1999 and has been held for over 24 years without any corresponding legal entity, refuting any longstanding legitimate interest. The timing of the company’s creation, years after the Complainant’s brand gained fame, suggests a transparent attempt to create a retroactive justification for cybersquatting. Crucially, the company’s registered business (real estate/communications) is completely disconnected from the domain’s actual use (monetizing casino traffic), demonstrating that the Domain Name is used to free-ride on the Complainant’s trademark rather than for the Respondent’s legitimate activities. Finally, the Complainant’s multiple attempts to contact the Respondent for good-faith negotiation were ignored. The Respondent failed to submit a response in this proceeding.
Held: The disputed Domain Name was registered on October 7, 1999, some 20 years before the Complainant claims to have established its business; some 17 years before the Complainant registered its <sun .win> domain name; and some 25 years before Complainant’s claimed first use in commerce of its AAA SUN.WIN mark. There is no evidence that the domain name has been transferred to a different registrant since it was registered. Even if the domain name’s last update, on June 13, 2018, did involve a transfer to the Respondent from a prior registrant, any such transfer would have taken place prior to Complainant’s claimed first use of its mark.
Under these circumstances the Panel finds that the Respondent could not have been aware of the Complainant or its then unused AAA SUN.WIN mark when the Respondent registered the <sunwin .com> domain name and that, accordingly, irrespective as to whether the Respondent might have been using the domain name in bad faith since the Complainant acquired its trademark rights, the Respondent could not have registered the domain name in bad faith.
RDNH: The Complainant annexes a copy of email correspondence sent to the Respondent about the disputed Domain Name, stating: “I want to buy this domain. Can we make a deal of $3,000?” In the Panel’s view, this is a classic “Plan B” case, i.e., using the Policy after failing in the marketplace to acquire the domain name. This stratagem has been described in several UDRP cases as “a highly improper purpose” and has contributed to findings of RDNH. The Panel therefore finds that the Complainant and its Legal Representative must have known that this is not a case of bad faith registration and that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case demonstrates that in this case the system worked. Here, despite the Respondent not responding at all (and of course, accordingly not asking for RDNH), the Complainant was found to have engaged in RDNH. The Panel zeroed in on the Complainant’s own evidence which demonstrated that it engaged in a “Plan B” case. Well done, Panel, for seeing through the Complainant’s case and making the findings which were appropriate in the circumstances.
Respondent’s Phishing Activity Shows Actual Knowledge Supporting Bad Faith
Cencora, Inc. v. Michael Flacks, NAF Claim Number: FA2510002183042
<cancora .co>
Panelist: Mr. Steven M. Levy
Brief Facts: The Complainant claims itself to be a global healthcare solutions leader driving innovative partnerships with global manufacturers, providers, and pharmacies to improve product access and efficiency throughout the healthcare supply chain. The Complainant has filed dozens of trademark applications throughout the world for the CENCORA mark, many of which have matured to registration (e.g., U.S. registration dated February 4, 2025; and EU registration dated November 8, 2024). It is also the owner of the domain name <cencora .com> which is used for its website and email addresses. The <cancora .co> domain name was created on February 4, 2025. The Respondent failed to submit a Response in this proceeding.
The Complainant notes that the disputed Domain Name resolves to a website that displays the message “Error 1001. DNS Resolution error” and also claims that the Respondent has used the disputed Domain Name to send emails that impersonate one of Complainant’s employees in an attempt to defraud the Complainant’s customers. The Complainant further alleges that the Respondent registered the <cancora .co> domain name with actual knowledge of Complainant’s rights in the CENCORA mark and that “[b]ad faith is also demonstrated by Respondent’s failure to make an active use to the disputed Domain Name and is engaging in typosquatting…”
Held: Using a confusingly similar domain name to impersonate an employee of a complainant in an attempt to defraud its customers, vendors, or other business partners is clearly not a bona fide offering of goods or services or a legitimate non-commercial or fair use per Policy ¶¶ 4(c)(i) or (iii). Here, the Complainant submits copies of a series of phishing emails that the Respondent sent using an address which incorporates the disputed Domain Name. As Complainant has made out a prima facie case that has not been rebutted by the Respondent, upon a preponderance of the available evidence the Panel finds that the Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed Domain Name.
Further, a respondent’s actual knowledge can form a solid foundation upon which a case for bad faith may be built under Policy 4(a)(iii). Although the evidence of Complainant’s brand reputation is rather thin, the Panel finds far more persuasive Respondent’s use of the mark for phishing emails, which clearly shows its familiarity with the Complainant and its mark. Thus, the Panel finds that the Respondent had actual knowledge of Complainant’s rights in its mark at the time it registered the disputed Domain Name. Further, a Respondent’s use of a disputed Domain Name in an e-mail address to pass itself off as a complainant in a phishing scheme is persuasive evidence of bad faith registration and use under Policy ¶4(b)(iv).
Finally, while the Panel notes the submitted screenshot of the <cancora .co> domain shows an error message, it finds that the disputed Domain Name has not been unused or held passively due to its actual use in connection with Respondent’s phishing scheme. However, typosquatting itself is very often an indicator of bad faith. The Panel notes the one-character difference between Complainant’s CENCORA mark and the <cancora .co> domain name. Thus, it finds further support for the conclusion that the Respondent registered and uses the disputed Domain Name in bad faith.
Transfer
Complainant’s Counsel: Patrick C. Stephenson, Nebraska, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This is an excellent example of the proper application of the “prima facie” principle to “Rights and Legitimate Interest”. Here, the Panel to its credit, didn’t just note that ‘the Complainant must first make a prima facie case and then the burden then shifts to Respondent’. Rather, the Panel also noted that the “complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii))” [emphasis added]. Indeed.
This decision is also a credit to the hardworking Panel who thoroughly analysed the evidence and clearly set out all of its reasoning in the decision. Not all Panelists would have demonstrated such dedication to the case. But the Panel’s diligence does credit to the UDRP and is deserving of recognition.
Panel: Potential Uses of SNEP that Have Nothing to Do with the Complainant
SNEP S.p.A. v. Domain Manager, Web Media Group LLC, WIPO Case No. D2025-3597
<snep .com>
Panelist: Ms. Mihaela Maravela (Presiding), Mr. Andrea Mondini and Mr. Nick J. Gardner
Brief Facts: The Complainant owns trademark registrations consisting of “snep,” including the Italian trademark (June 11, 2009), the EU trademark (November 19, 2020), and the international trademark (December 17, 2021). In addition, the Complainant has been the owner of the domain name <snep .it> since April 15, 2017. Further, it claims that it has been an official partner of a major football club since 2020, thereby benefiting from international visibility, but provides no other information about its activities. The disputed Domain Name was registered on November 13, 2000, and redirects to a Registrar parked page offering the disputed Domain Name for sale at USD $425,000. The Complainant alleges that the Respondent’s bad faith is demonstrated by the fact that the disputed Domain Name is publicly offered for sale for an excessively high amount.
The Complainant further alleges that “the Respondent acted in bad faith considering that … it sent numerous offers to sell the domain name … asking for a disproportionate amount as shown in the attached correspondence”. The Respondent responds that the offer actually came upon the Complainant’s own inquiries with the sales brokerage and offers to purchase the disputed Domain Name, and that the entire purpose of the ridiculously low USD $10,000 offer advanced repeatedly by the Complainant was an effort to manufacture evidence for this proceeding. The Respondent further contends that it has registered many other four-letter “.com” domain names for their inherent value and claims that trade in what are otherwise nondistinctive, short and memorable domain names is not an illegitimate activity.
Held: The Complainant’s earliest trademark was filed on February 24, 2006. The disputed domain was registered on November 13, 2000. The Complainant submitted in the Complaint to have prior rights, but did not indicate which those rights are. Accordingly, the Respondent could not have registered the disputed Domain Name with the Complainant or the Complainant’s trademark rights in mind. Moreover, even if the Complainant had prior trademark rights, the Panel is persuaded by the evidence put forward by the Respondent, that there are potential uses of SNEP that have nothing to do with the Complainant, and that the Respondent registered the disputed Domain Name for its inherent value as a four letter acronym. Neither was a case of use in bad faith ever going to succeed, absent evidence of illicit conduct or targeting of the Complainant’s mark. Here there is no evidence, given also the absence of any information on the extent of the Complainant’s sales or reputation.
Further, the Panel does not consider that the price the Respondent has advertised the domain name for sale establishes bad faith. First, if a domain name is legitimately held, the registrant is entitled to ask whatever price it likes for that name. Second, in any event the Respondent has submitted evidence that shows that pronounceable four-letter domain names in the “.com” gTLD are inherently valuable, and the price the Respondent was seeking was not out of line with prices other similar domains have achieved on sale. Having in mind the above and the evidence in the case file, there is no proof that the Respondent targeted the Complainant or its trademarks at the date of the registration of the disputed Domain Name, therefore the Panel cannot conclude that the Respondent registered the disputed Domain Name in bad faith with the intent of taking advantage of the Complainant’s trademark or interfering with Complainant’s use of its mark.
RDNH: The Complaint included information showing that the disputed Domain Name was first registered in 2000 and provided no explanation as to how in these circumstances the Respondent could have registered the disputed Domain Name with the Complainant in mind. The Complainant was clearly aware that the registration date is an issue, as it requested from the Center information on the registration date for the current owner after the filing of the Complaint, with the stated purpose to amend the Complaint. Further, the Complainant’s only ground for bad faith was that the Respondent offered the disputed Domain Name for sale for a large amount of money, and that the disputed Domain Name is listed for sale.
The Complaint appears to rely on paragraphs 4(b)(i) and (ii) of the Policy. Under paragraph 4(b)(i) of the Policy, it would be evidence of registration and use in bad faith if there are circumstances indicating that the Respondent registered the disputed Domain Name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant for a large profit. As the Complainant and its trademarks did not exist when the Respondent registered the disputed Domain Name, this could not have been the Respondent’s primary intention at the time the Respondent registered the disputed Domain Name.
The Complainant in this case is legally represented and the Panel considers that the Complainant knew or ought to have known that the Complaint had no reasonable prospect of success. The Complainant should have appreciated that it would not be able to prevail on the issue of bad faith under the Policy, and should never have filed the Complaint.
Complaint Denied (RDNH)
Complainant’s Counsel: Studio Legale Associato Cerino D’Angelo, Italy
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States of America
Case Comment by ICA General Counsel, Zak Muscovitch: Excellent decision. Well-reasoned and clear. This is another example (in addition to the augment case above), where the Panel clearly acknowledged that “if a domain name is legitimately held, the registrant is entitled to ask whatever price it likes for that name”.
The Panel however made numerous other noteworthy findings and did so in an exemplary manner. I encourage everyone to read the decision in its entirety.
I particularly appreciate the Panel’s succinct encapsulation of what is perhaps the fundamental requirement for finding bad faith under the UDRP: “The Complainant typically must show that the Respondent had the Complainant’s rights in mind when it registered the disputed domain name and that it proceeded with bad faith intent to target such rights.”
I also particularly appreciate how the Panel addressed the fact that the Complainant was “clearly aware that the registration date is an issue, as it requested from the Center information on the registration date for the current owner after the filing of the Complaint, with the stated purpose to amend the Complaint… Although no information was revealed by the Registrar to point to a different registrant and therefore a newer registration date, the Complainant failed to amend the Complaint, or withdraw it.” This is an important observation. Where a Complainant is aware that its rights appear to post-date the Domain Name registration date, the Complainant is obliged to address this issue, not ignore it. Where a Complainant fails to address it, as was the case here, RDNH can be found.
Panel: The Policy Does Not Establish a General Domain Name Court
SAGE Development Authority v. Peter Little Horn, WIPO Case No. D2025-3791
<sagesrst .org>
Panelist: Mr. David H. Bernstein
Brief Facts: The Complainant was created by the Standing Rock Sioux Tribe (“the Tribe”) as a federally chartered corporation under Section 17 of the Indian Reorganization Act of 1934. The Complainant controls and operates all the energy assets for the Tribe within the reservation. The Complainant alleges that it owns common law trademark rights in both the SAGE mark and the SRST mark, and that the two marks, both separately and together, are distinctively associated with SAGE and the Tribe. It alleges that the Tribe commonly abbreviates and represents itself to the public as SRST. The Complainant alleges that it has spent hundreds of thousands of dollars in advertising and promoting services under the SAGE mark throughout the United States, and that SAGE has raised hundreds of thousands of dollars to support its mission under the SAGE mark. The Complainant alleges that the Respondent used the website to misrepresent himself to members of the public and possibly divert donations intended for SAGE and to the benefit of the Tribe
The Respondent served as SAGE’s Communications Director until resigning on July 18, 2024. In that role, he purchased, launched, and operated the disputed domain, buying it in his own name on December 6, 2022 with his personal credit card, expecting reimbursement. Upon resignation, the Respondent refused to relinquish the disputed Domain Name to the Complainant. On July 21, 2024, he emailed the CEO, threatening to remove the website and publish text messages and voice recordings unless he received full back pay, PTO, travel reimbursement, and a two-week notice payout by July 25. The Complainant has attached a complaint it filed against the Respondent in the Standing Rock Sioux Tribal Court. The complaint alleges counts of fraud and misrepresentation, conversion, and tortious interference with business relations, based on, inter alia, refusing to return the disputed Domain Name. The Respondent did not file a response in these proceedings.
Held: Although the Complainant authorized the Respondent to register the disputed Domain Name in 2022 when he was serving as the Complainant’s employee and agent, the Respondent no longer works for the Complainant and no longer has any permission to maintain and use the disputed Domain Name. The Respondent’s status as a former employee does not give the Respondent any current rights or legitimate interests in the disputed Domain Name. Based on the unrebutted allegations of the Complainant, it appears that the Respondent is holding on to the disputed Domain Name as leverage in his severance negotiations. “Holding a domain name as ransom or leverage is not a legitimate interest.” See Central Coast Evaluation Services v. Michael Aponte, WIPO Case No. D2025-2213.
As this Panel noted nearly a quarter century ago, the Policy does not establish a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. This principle frequently is invoked in business disputes where former partners or employees battle over domain names that were registered at a time of harmony, but are now pawns in the parties’ disharmony. Frequently, such cases have to be resolved in the courts because the disputes do not fit within the framework of the UDRP. Here, the Complainant has established clearly that the Respondent is acting in bad faith. The Respondent is holding the disputed Domain Name hostage and has demanded payment for its safe return. Such conduct constitutes bad faith use of the disputed Domain Name.
That, however, is not enough. The Policy also requires a showing of bad registration. As questionable as the Respondent’s current conduct is, the Complainant has failed to show that the Respondent acted in bad faith in 2022 when he registered the disputed Domain Name. To the contrary, the Complainant’s allegations imply that the Complainant authorized the Respondent to register the disputed Domain Name in his own name; at a minimum, the Complainant has failed to show by a preponderance of the evidence that the Respondent was instructed to register the disputed Domain Name in the Complainant’s name, or that the Respondent otherwise acted in bad faith at the time of registration. Given that the Respondent’s misconduct does not align with the strict framework of the UDRP, the Complainant will need to pursue its claims in another forum.
Complaint Denied
Complainant’s Counsel: Dentons US LLP, United States of America
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Kudos to the Panel for providing us with the important reminder that “the Policy does not establish a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names”. When confronted with a case of a Respondent holding a Domain Name to ransom, it is tempting for a Panelist to attempt to met out justice and award the Domain Name to the aggrieved Complainant. But where, as here, this at most constitutes “use in bad faith” and the original registration appears to have been made in good faith with the approval of the Complainant, it would be an error to transfer the Domain Name because it would not comply with the limited jurisdiction of the UDRP. The UDRP is not intended to replace court in all instances.
In a case such as this, a court has jurisdiction and could resolve all questions, not just the issue of the ownership of the Domain Name. For instance, here, the Respondent may very well be aggrieved himself because he is owed money. It could be unfair for a Panel to just transfer the Domain Name and leave the issue of money owed to a court, as that would deprive the Respondent of the leverage that it is due and make settlement more difficult.
Nevertheless, cases where a Domain Name was registered on behalf of the Complainant in good faith at the instruction and with the approval of the Complainant, for example by a website developer or a contractor, only to have the relationship and the Complainant deprived of the Domain Name, are troubling cases. Under the UDRP as written, however, such disputes belong in court. Perhaps there is a way of addressing such issues in a revised UDRP but it would require very careful balancing.
Lastly, it should be noted that the Panel took appropriate care to ensure that the Respondent had fair notice of the proceeding. Though included in a footnote, one can appreciate the particular care and attention taken by the Panel on this crucial aspect of the UDRP, who stated:
“Given the absence of a Response, the Panel has carefully reviewed the record to ensure that the Respondent received the opportunity for fair notice of this proceeding. See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415. The Center sent notification of the Complaint to the Respondent by email, courier, and through a contact form available at the disputed domain name. Although one of the emails bounced back as being undeliverable, other emails sent to the email addresses provided by the Registrar for the Respondent appear to have been received. [emphasis added]
The Written Notice sent by courier was also delivered to the address provided by the Registrar. It thus appears that the Respondent received actual notice of the Complaint by email and courier. Even if Respondent did not receive actual notice, the Panel finds that the Center has discharged its obligation to provide fair notice to the Respondent as required by the Rules, paragraph 2(a).”
Panels will often assume that the Respondent received proper notice under the Rules and that of course is usually the case. Nevertheless, Panels would be well advised to follow the example of the Panel in this case, who specifically looked at this issue as part of discharging the Panel’s duties under the Policy. Notably, it is sometimes forgotten that under the UDRP Rules, the responsibility for discharging the responsibility of providing notice will be achieved by using contact information appearing on an associated website itself, as was the case here, rather than just by using the Whois details:
Communications
When forwarding a complaint, including any annexes, electronically to the Respondent, it shall be the Provider’s responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:
…
(C) if the domain name (or “www.” followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e- mail address shown or e-mail links on that web page; and
Therefore Panels and Providers should always examine the associated website in case it provides alternative means of providing notice to the registrant.
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings. He is the founder of Cylaw Solutions.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.