What is the Proper Scope of the UDRP?
Panelists, including in the above dispute, are regularly making findings that disputes brought before the UDRP are outside of the scope of the UDRP. What is the proper scope of the UDRP and what causes a dispute to be outside of this proper scope?
The word “scope” does not appear in the Policy. Paragraph 4(a) states that it is mandatory for any registrant of a domain name to which the Policies applies to submit to an administrative proceeding whenever a complaint is filed against the registrant’s domain name making the three allegations that, in essence, the complainant has trademark rights, the registrant does not have a legitimate use for the domain name, and that the registrant has registered and used the domain name in bad faith with respect to the Complainant’s trademark rights… continue reading commentry here.
We hope you will enjoy this edition of the Digest (vol. 5.33) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ What is the Proper Scope of the UDRP? (eigglobaltrust .com and eigglobalresources .com *with commentary)
‣ “Nework” Not Confusingly Similar to Newark (nework .us *with commentary)
‣ “Lexical Significance” Was Reason for the Domain Name Registration, Not Complainant (albaoil .com *with commentary)
‣ Did the Panel Adequately Explain the Basis for Finding Bad Faith Registration? (regions .org *with commentary)
‣ RDNH Found in Default Case Involving a Dictionary-Word Domain Listed for Sale (munchies .com *with commentary)
‣ Panel Finds No Plausible Link Between Respondent’s AI Product and Complainant’s Supermarket (norma .app *with commentary)
What is the Proper Scope of the UDRP?
EIG Asset Management, LLC v. Sean Patrick / Sean Eyen, NAF Claim Number: FA2506002163071
<eigglobaltrust .com> and <eigglobalresources .com>
Panelist: Ms. Ivett Paulovics
Brief Facts: The Complainant, incorporated on May 26, 2010, is a Delaware corporation specializing in energy and infrastructure investment. The Complainant holds EU Trademark registration for the word mark EIG, filed on February 26, 2021 and registered on June 24, 2021. The Respondent is identified in the record as a licensed certified public accountant in Florida. The domain names <eigglobaltrust .com> and <eigglobalresources .com> were registered on July 24, 2023 and December 15, 2023, respectively. At the time of the filing of the Complaint, both domain names resolved to an active website promoting a cryptocurrency identified as “EIG Bank Coin.” Following the filing of the Complaint, the Respondent made changes to the website, including adding sections, text, and documents. The Respondent contends that the disputed Domain Names were registered and used on behalf of EIG Global Trust, a Delaware statutory trust incorporated in 2023.
The Complainant alleges that the Respondent is trading on its goodwill and that the activities described are connected to deceptive or illegal schemes, which cannot constitute a bona fide offering of goods or services or a legitimate noncommercial use. The Respondent states that the disputed Domain Names were registered on behalf of a Delaware statutory trust, EIG Global Trust, formed in July 2023 and operating in the digital currency sector. It describes its business as focused on stablecoins pegged to the U.S. dollar for use by central and commercial banks in multiple jurisdictions, distinct from Complainant’s investment activities in the energy sector. The Respondent further contends that it is a legitimate, lawfully formed business using the disputed Domain Names in connection with bona fide services in a separate industry, without intent to trade on Complainant’s goodwill.
Held: The UDRP is intended to provide a remedy for clear-cut cases of abusive domain name registration (i.e., cybersquatting), not to adjudicate complex trademark or business disputes involving competing rights. It is not the appropriate forum for resolving factual disputes over the existence or priority of rights where both parties claim legitimate interests in an acronym used in a domain name. Likewise, addressing or investigating alleged non-compliant, deceptive, or fraudulent financial activities falls outside the UDRP’s limited remit and is more appropriately pursued before the competent regulatory or judicial authorities. This limitation is reflected in the WIPO Final Report on the WIPO Internet Domain Name Process, which formed the basis for the Policy. In this proceeding, both parties have submitted detailed factual and legal arguments. The Complainant relies on its European Union trademark registration for EIG, filed in 2021, and asserts commercial use of the mark since 2012. However, the record contains no documentary evidence substantiating reputation or distinctiveness beyond the registration itself.
The Respondent asserts that the disputed Domain Names were registered and used on behalf of EIG Global Trust, a Delaware statutory trust incorporated in 2023. The Complainant has not provided evidence disproving the existence of the trust or showing that the Respondent’s explanation of the acronym’s origin is false. The Complainant also raises allegations concerning Respondent’s regulatory status, business practices, and the plausibility of certain financial claims made on the associated website. The Respondent disputes these allegations and asserts that third-party materials relied upon by the Complainant is unrelated. The record contains no independent verification of either party’s claims in this regard, and some assertions relate to matters, such as compliance with financial regulation, that fall outside the scope of the Policy. The parties also refer to pre-complaint interactions involving individuals allegedly connected with the Respondent, but no contemporaneous correspondence or documentary evidence of these exchanges has been submitted.
In light of these circumstances, the Panel considers that the dispute raises substantial issues of trademark law, factual disputes requiring cross-examination or discovery, and allegations of regulatory non-compliance. These are matters that cannot be effectively resolved on the limited, document-only record available in UDRP proceedings. On the evidence presented, the Panel is not persuaded that this is a straightforward case of cybersquatting. Rather, it appears to involve a complex factual and legal dispute in which both parties assert plausible claims to the use of the acronym EIG.
Complaint Denied
Complainant’s Counsel: Alberto Zacapa of DLA Piper LLP (US), District of Columbia, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA Director, Nat Cohen:
Nat Cohen is an accomplished domain name investor, UDRP expert, proprietor of UDRP.tools and RDNH.com, and a long-time Director of the ICA.
Panelists, including in the above dispute, are regularly making findings that disputes brought before the UDRP are outside of the scope of the UDRP. What is the proper scope of the UDRP and what causes a dispute to be outside of this proper scope?
The word “scope” does not appear in the Policy. Paragraph 4(a) states that it is mandatory for any registrant of a domain name to which the Policies applies to submit to an administrative proceeding whenever a complaint is filed against the registrant’s domain name making the three allegations that, in essence, the complainant has trademark rights, the registrant does not have a legitimate use for the domain name, and that the registrant has registered and used the domain name in bad faith with respect to the Complainant’s trademark rights.
The scope of the Policy as written is that it applies to every dispute where a complainant files a complaint making the three enumerated allegations, with no exceptions noted. Why is it that panelists are finding that disputes that comply with the requirements of Paragraph 4(a) are nevertheless outside of the scope of the UDRP.
Continue reading commentary here.
“Nework” Not Confusingly Similar to Newark
Premier Farnell Corp. v. Qianya Wang, NAF Claim Number: FA2507002164196
<nework .us>
Panelist: Mr. Dennis A. Foster
Brief Facts: The Complainant distributes electronics, computer equipment, electric motors and machinery. Its business began in Chicago in 1934 under the NEWARK trademark, which it has registered in the USA and the Americas (e.g., US registrations from July 20, 2010 and April 26, 2022) and in Canada, Mexico and Brazil. The Complainant has operated the website <newark .com> since 1994 and distributes webcams, interactive displays and conference phones. The Respondent is a small start-up that began doing business in 2023 at the disputed Domain Name. The Respondent concentrates on making and selling smart boards and webcams. The Complainant alleges that the Respondent registered the disputed Domain Name on July 4, 2023, i.e. decades after the Complainant began doing business with its NEWARK trademark. It may be inferred that the Respondent had actual knowledge of the Complainant and its NEWARK trademarks when the Respondent registered the disputed Domain Name.
The Complainant further alleges that the Respondent’s bad faith is shown by use of the disputed Domain Name to attract for commercial gain users to its website, which is evidence of bad faith registration and use. The Respondent contends that “Nework” is a “portmanteau” word that combines the meanings of “new” and “work” but has nothing to do with the Complainant’s NEWARK trademark. The Respondent has rights or legitimate interests in the disputed Domain Name because it was using the disputed Domain Name for a bona fide offering of goods and services before being notified of this dispute. The Respondent further contends that he does not sell goods that compete with or are similar to those covered by the Complainant’s trademark. Instead, he argues that the numerous third-party uses and registrations of marks consisting of either “Newark” or “Nework” further demonstrate the absence of bad faith by the Respondent.
Held: The Complainant’s initial burden is to prove trademark rights in the disputed Domain Name, which it addresses by submitting copies of its NEWARK trademark registrations in the United States and elsewhere in the Americas. The Complainant contends that because the only difference between its trademark and the disputed Domain Name is the substitution of the letter “o” for the letter “a”, the disputed domain is confusingly similar to the Complainant’s NEWARK trademark and therefore the Complainant has trademark rights in the disputed Domain Name. As the Complainant points out, ccTLDs are not taken into account when analyzing for identity or confusing similarity under Policy paragraph 4(a)(i). The Respondent counters that the difference of one letter can result in a totally different word with a totally different meaning as in, for example, “Spain” and “stain”.
In our case, the Respondent further contends, the Complainant’s NEWARK trademark is commonly understood to refer to New Jersey’s most populous city and its internationally important airport. But the blended or “portmanteau” word “nework” in the disputed Domain Name refers to “new work”. Thus NEWARK and “nework” are not confusingly similar. The Panel agrees with the Respondent. Furthermore, taking into account that the Complainant’s NEWARK trademark refers to the Complainant’s electronics distributorship service and that the Respondent’s <nework .us> domain name is used to sell a smartboard that the Respondent produces, the Panel finds it clear that the disputed Domain Name is not confusingly similar to the Complainant’s NEWARK trademark.
RDNH: The Respondent has requested that the Panel find that the Complainant filed this Complaint in bad faith or to harass the Respondent per Rule 15(e). The Panel disagrees and instead finds the Complainant filed the Complaint seeking to resolve a legitimate dispute. Therefore, the Panel declines to make a finding of Reverse Domain Name Hijacking.
Complaint Denied
Complainant’s Counsel: Jennifer A. Van Kirk of Womble Bond Dickinson (US) LLP, USA
Respondent’s Counsel: Douglas M Isenberg of The GigaLaw Firm, USA
Case Comment by ICA General Counsel, Zak Muscovitch: Congratulations to UDRP Panelist and colleague, Doug Isenberg for his successful defense of a Respondent. According to Domain.Tools, Doug has represented Complainants a total of 599 times to-date, and Respondents a total of 10 times. Although the latter figure may not seem like a lot relative to the number of times that Doug represented a Complainant, it is still a fairly diverse record compared to other counsel who exclusively or even less often, represent just Complainants or Respondents. Exposure to the other side’s arguments and obligations is extremely useful for both counsel and Panelists, and I would encourage others to similarly represent the side that they do not typically represent.
But what makes this case more notable, is that the Complainant failed on the first prong of the test, and particularly on confusing similarity. This happens relatively rarely since it tends to be a relatively easy hurdle to meet. Where it does happen, it tends to happen as a result of failing to prove common law trademark rights rather than failing to prove confusing similarity with a trademark.
As noted in UDRP Perspectives at 1.8, a side-by-side comparison of the domain name and the trademark determines whether the disputed Domain Name is confusingly similar to a Complainant’s trademark, however mere “similarity” is insufficient under the Policy, it must be “confusing similarity”. Confusing similarity does not depend on evidence of actual confusion by the public. Rather, the question is whether the appearance of the domain name itself causes confusion with the trademark.
Confusing similarity is a higher threshold than mere similarity but in most cases it is not a difficult test to meet. Where a domain name merely adds on a descriptive term such as “shop” or “store” to a distinctive trademark or where the domain name is a typo of a distinctive mark, Panels will generally find that a domain name is confusingly similar. Where however, the inclusion of different or additional characters or words results in a new term, a sufficiently different term, conveys a different meaning, or otherwise sufficiently differentiates or distances itself from the trademark, the domain name may not be confusingly similar – as it was here.
Although the first part of the test can be considered preliminary in the sense that only an identical or confusingly similar trademark qualifies for a UDRP and thereby confers “standing” so that the Complainant can proceed onto the second and third parts of the test, it is no more nor less important than the other parts of the test. Panelists should apply an appropriate amount of focus on this part of the test as they do the other parts of the test, and the Panel did to its credit in this case.
“Lexical Significance” Was Reason for the Domain Name Registration, Not Complainant
Alba Edible Oils Pty Ltd v. Domain Admin, FindYourDomain .com, WIPO Case No. D2025-1961
<albaoil .com>
Panelist: Mr. Nick J. Gardner
Brief Facts: The Australian Complainant, formed on January 20, 1987, has traded as “Alba Edible Oils” since about that date. The Complainant supplies products across Australia and exports its products internationally to 21 countries primarily in Asia. The Complainant owns several registered trademarks for “ALBA,” including marks that combine “ALBA” with “RED” and with “EDIBLE OILS” as a prominent element within a device mark. These include, for example, the Australian trademark, registered on March 16, 2015. The Respondent, an investor and trader in domain names, purchased the disputed Domain Name on July 15, 2021 and offers it for sale.
The Complainant alleges that the Domain Name has been advertised for sale since 24 November 2021 in the US$3000-6000 range. The Complainant has tried to contact the Respondent to ascertain the Respondent’s potential rights or interests in respect of the Domain Name, without success. The Complainant also relies upon the doctrine of “passive holding” as establishing bad faith registration and use citing the well-known Telstra case, amongst other cases.
The Respondent contends that the disputed Domain Name simply combines two words: “alba” and “oil”, wherein Alba is a common word in several languages, means “dawn” or “sunrise” in Italian and Spanish; “white” in Latin, Romanian, Croatian and Bosnian; and “albums” in Czech. Additionally, “Alba” is also a common place-name, and also an extremely common given name and surname. The Respondent holds at least a dozen other domains that pair “Alba” or “Oil” with a wide range of unrelated, wholly generic nouns.
Held: The Respondent’s clear evidence is that it obtained the disputed Domain Name because of its lexical content and offered it for sale as part of its legitimate business trading in domain names, see WIPO Overview 3.0 at section 2.1. Also see WIPO Case No. D2006-0964 where the panel held that reselling domain names or using them for advertising links can in certain circumstances represent legitimate interests for purposes of paragraph 4(c) of the Policy. These practices are most likely to be deemed legitimate under the Policy when the respondent regularly engages in the business of registering and reselling domain names, and few other conditions are fulfilled. The Panel agrees with that approach and again considers it applies to the facts and circumstances of this case Accordingly, the Panel concludes the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the disputed Domain Name.
The Panel finds on the evidence that the Respondent registered the disputed Domain Name because it involves the conjoining of two separate words which the Respondent considered attractive as an investment. The Respondent’s evidence that it registered at about the same time, and its ownership of seven other domain names including the word alba provide convincing support to the Respondent’s argument. There is also no evidence to suggest any reason why the Respondent should have known of the Complainant or its business. There is nothing to suggest it has any fame or reputation in the United States. The Panel sees no reason to doubt the Respondent’s claim that it had no knowledge of the Complainant when it purchased the disputed Domain Name. In the circumstances, there is no evidence to suggest the Respondent registered the disputed Domain Name with knowledge of the Complainant’s trademark and therefore with the intention of taking unfair advantage of that trademark.
RDNH: In the view of the Panel this is a complaint which should never have been launched. The Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which was a conjoining of two words and where there was no evidence of any targeting of the Complainant was likely to involve difficult considerations. A simple Internet search should have alerted the Complainant or its advisers to the fact that “alba” has multiple different meanings including various geographic locations; as a given and family name; as part of a scientific taxonomy classification scheme; and with various other meanings in languages other than English.
The Panel agrees with the Respondent’s rhetorical observation that “AlbaOil .com could naturally serve an energy exploration venture in Scotland, an olive-oil exporter from the city of Alba, an aromatherapy brand specializing in Salvia alba (white sage) essential oil, or a cosmetics company marketing ‘dawn-inspired’ face oils”. In the view of the Panel these sorts of possibilities should have been apparent to the Complainant and its advisers. The Panel also considers the Complainant’s argument based on what it incorrectly alleged was the Respondent’s telephone number was misplaced and inaccurate. In all the circumstances the Panel agrees with the Respondent that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Bennett Litigation and Commercial Law, Australia
Respondent’s Counsel: Law Offices of Grant G. Carpenter, United States
Case Comment by ICA General Counsel, Zak Muscovitch: This case highlights the power of ‘similar domain names’ in defending against bad faith registration. As the Panel noted, “the Respondent holds at least a dozen other domains that pair “Alba” or “Oil” with a wide range of unrelated, wholly generic nouns. These include: <albababy .com> <albasport .com> <albavideo .com> <albafoods .com> <albasolo .com> <albamax .com> <albavoice .com> <albayoga .com> <oilweb .com> <Britoil .com> <oilpurification .com> <tigeroil .com> <lowoil .com>”. When a Respondent can show that the disputed Domain Name’s registration is just part of a pattern of registering similar domain names, rather than as a result of targeting the Complainant, the Respondent will succeed as it did here. The Panel noted that the Respondent’s registration of similar names was “clear evidence is that it obtained the disputed Domain Name because of its lexical content and offered it for sale as part of its legitimate business trading in domain names.” I would add that “lexical content” or “lexical significance” (both used by the Panel in this case) are particularly apt descriptive terms and should be used by counsel and Panelists in future cases where appropriate.
As the Panel observed, WIPO Overview at 3.0 at Section 2.1 states that “Over the course of many UDRP cases, panels have acknowledged further grounds which, while not codified in the UDRP as such, would establish respondent rights or legitimate interests in a domain name. For example, generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP”. Notably, the Panel “consider[ed] the same principle applies in relation to a domain name which conjoins two dictionary words and which is held based on its lexical significance, without any targeting of a trademark owner”. Well said.
One final word about “reputation”. As I have said many times before, proving reputation is key because without reputation, there is no basis to awareness and therefore no basis to find targeting, generally speaking. As the Panel noted in this case:
“There is also no evidence to suggest any reason why the Respondent should have known of the Complainant or its business. There is nothing to suggest it has any fame or reputation in the United States. The Panel sees no reason to doubt the Respondent’s claim that it had no knowledge of the Complainant when it purchased the disputed Domain Name. In the circumstances, there is no evidence to suggest the Respondent registered the disputed Domain Name with knowledge of the Complainant’s trademark and therefore with the intention of taking unfair advantage of that trademark.”
The centrality of reputation cannot be understated. Showing up to a UDRP with just a trademark and no evidence of reputation puts a Complainant at a severe disadvantage as it requires a Panelist to infer that the Respondent was somehow aware of the Complainant. Such an inference can perhaps be made where a Panel can take judicial notice of a mark’s fame, such as COCA COLA, but even there a Complainant should make some effort to provide a modicum of evidence about its reputation. But where a mark is generally unknown, is used in a niche industry, or in a particular region or country, or is merely one amongst many identical or similar marks worldwide, a Complainant should bring evidence of reputation in order to try to prove that the Respondent was aware of the Complainant’s prior trademark rights and was trying to specifically take advantage of the Complainant.
Did the Panel Adequately Explain the Basis for Finding Bad Faith Registration?
Regions Bank v. Andrea Denise Dinoia / Puglia .com srls, NAF Claim Number: FA2507002166096
<regions .org>
Panelist: Mr. Debrett G Lyons
Brief Facts: The Complainant provides banking services by reference to the trademark, REGIONS. The trademark for REGIONS, was registered with USPTO, on February 28, 1995. The disputed Domain Name was registered on July 4, 2001, using a privacy service to shield the name of the Respondent. The domain name currently resolves to a parked domain with links to “Online Banking Accounts”, “Online Banking” and “Online Bank Checking” directing Complainant’s customers to websites of its competitors. The landing page carries a notice that the domain name “may be for sale”.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed Domain Name and that the Respondent registered and used the disputed Domain Name in bad faith. In particular, the Complainant asserts that the Respondent has used the disputed Domain Name to impersonate the Complainant and in an unlawful effort to induce Complainant’s customers to divulge their banking passwords. The Respondent failed to submit a Response in this proceeding.
Held: The domain name currently resolves to a parked domain and the landing page carries a notice that the domain name “may be for sale”. Further, and more sinister, is evidence that the domain name has been used as part of the email address, alerts@alert.regions.org, which has been used to send so-called “Security Alert,” emails to banking customers stating that their bank account had been locked and providing instructions (via a bogus link) to unlock the account. Such use is manifestly not a bona fide offering of goods or services or legitimate non-commercial or fair use under the Policy. A prima facie case has been made and so the onus shifts to the Respondent to rebut that case by demonstrating those rights or interests. Absent a Response, the onus is not met and so the Panel finds that the Complainant has satisfied the second clause of the Policy.
The Complainant must prove on the balance of probabilities both that the disputed Domain Name was registered in bad faith and used in bad faith. The Panel finds that the Respondent’s conduct falls squarely under paragraph 4(b)(iv). The Panel has found the domain name to be identical to the trademark. Confusion is inevitable. The use of the domain name is for commercial gain. In terms of the Policy, the Panel finds that the Respondent has used the disputed Domain Name to attract, for commercial gain, internet users to an online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that location
Transfer
Complainant’s Counsel: Rachel Hofstatter of Honigman LLP, District of Columbia, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This case highlights the importance of a Panel fully explaining its decision in despite what appears to be egregious case of bad faith by the Respondent. Here, the Respondent failed to submit a Response and as such must bear responsibility for the Panel only hearing the Complainant’s side of the case. Moreover, it is not unfair for a Panel to assume that if a Respondent facing serious charges of unlawful behavior doesn’t answer them, it is more likely than not that the Respondent doesn’t dispute them. An innocent person would generally have something to say in his or own defense if such charges were leveled at them.
That being said, the burden of carrying the case remains on the Complainant even in the absence of a Response and the Panel must always abide by the requirements of the Policy. Here, the Panel “found” as a matter of fact (See “Findings”) that the disputed Domain Name “was registered on July 4, 2001 using a privacy shield to shield the name of the Respondent”. That means that the Panel believed that the Respondent had been the registrant since 2001. That also means that to succeed, the Complainant must prove that on July 4, 2001, the Respondent targeted the Complainant and registered the Domain Name in bad faith.
What was the evidence of bad faith registration? The Panel did not expressly address that, instead focusing entirely on bad faith use:
“The Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv). The Panel has found the domain name to be identical to the trademark. Confusion is inevitable. The use of the domain name is for commercial gain. In terms of the Policy, the Panel finds that Respondent has used the disputed domain name to attract, for commercial gain, internet users to an online location by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that location (see, for example, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to … Policy ¶ 4(b)(iv)”)).”
Certainly bad faith use was made out and bad faith use can be evidence of the original motivation for registering the Domain Name. But care must be taken to not conflate the two concepts. The Policy requires both bad faith registration and bad faith use. To make the case that bad faith use is evidence of bad faith registration to begin with, there should generally be evidence that the bad faith use commenced shortly after registration, if not immediately, particularly when a Domain Name is 25 years old. The decision however, is silent on this important aspect. Some additional evidence if presented by the Complainant may have revealed a likely more recent change in registrant, with bad faith use commencing immediate thereafter, for example.
The other possible shortcoming in the decision relates to the issue of emails allegedly posing as the Complainant. Such egregious behavior of course constitutes egregious bad faith use however care must be taken by Panels to avoid falling victim to “spoofed” emails. As some Panelists may be aware, spoofing a domain name in an email can be done without the sender owning the domain name. The fraudster merely makes it look like the email is coming from a trusted domain name, but the headers would reveal otherwise. When a Complainant alleges fraudulent emails, it should provide the Panel with evidence of the headers to the emails which will generally reveal whether the emails were genuinely associated with the disputed Domain Name or were spoofed. Without such evidence, a Panel is generally unable to rely on the allegedly fraudulent emails as genuine evidence of bad faith use.
None of this is to say that the Respondent should have won the case in the circumstances. The Respondent has a rather mixed history with the UDRP, as shown in UDRP.Tools and should have responded or face the consequences. Nevertheless, this case serves to remind us all, including Panelists, that we must always remain vigilant about meeting the requirements of the UDRP and that decisions ought to fully explain the basis for the outcome.
RDNH Found in Default Case Involving a Dictionary-Word Domain Listed for Sale
Munchies, LLC v. hovik pashayan, NAF Claim Number: FA2507002166234
<munchies .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant claims rights in the MUNCHIES mark, namely USPTO registration, registered to a previous owner on January 14, 2020, claiming first use in commerce on 20 May, 2017. The trademark was assigned to the Complainant on February 24, 2025 and covers “Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges.” The disputed Domain Name was registered on June 5, 1998 and it resolves to a webpage headed: “Celebrate flavor! Discover delicious bites at munchies .com!” where it is offered for sale for US$500,000.
The Complainant alleges that although the Domain Name was originally registered in 1998, there is no evidence that the Respondent has ever made legitimate use of it. The Domain Name is listed for sale for a substantial price, demonstrating an intent to profit from the goodwill associated with the Complainant’s mark. This conduct indicates Respondent’s lack of rights or legitimate interests and supports a finding of bad faith. The Complainant further alleges that the Respondent’s use of a privacy shield and passive holding further support a finding of bad faith and that the Respondent is attempting to profit by attracting the Complainant or others willing to pay an inflated price for a domain corresponding to a well-known mark. The Respondent failed to submit a Response in this proceeding.
Held: The Panel finds that “munchies” is a common dictionary word meaning “edibles” and that the registration of such words for sale without intent to trade off the goodwill of the owner of a corresponding trademark is a legitimate business. Here, the MUNCHIES mark was not used in commerce until almost 19 years after the registration of the domain name, so it is inconceivable that the Respondent could have had the Complainant, its predecessor or its MUNCHIES mark in mind when registering the domain name. Accordingly, the Panel finds that, before any notice to the Respondent of the dispute, the Respondent has used the domain name in connection with a bona fide offering of services, namely the sale of the domain name. This demonstrates Respondent’s rights or legitimate interests to the domain name for purposes of the Policy.
The circumstances set out above satisfy the Panel that the Respondent could not have been aware of the Complainant’s MUNCHIES mark when the Respondent registered the <munchies .com> domain name and that the Respondent did not register and is not using the domain name in bad faith.
RDNH: The disputed Domain Name was registered in 1998, many years prior to the first use in commerce and registration of the MUNCHIES mark by the Complainant’s predecessor and its subsequent assignment to the Complainant in February, 2025. The descriptive character of the domain name and the short time between the assignment of the mark to the Complainant and the filing of its Complaint in this proceeding persuade the Panel that, despite the Complainant being legally represented, the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Wali U. Raja of Jarrals Law, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Well done by the Panelist in clearly and unequivocally dismissing the Complaint and finding RDNH, despite no Response being filed.
Panel Finds No Plausible Link Between Respondent’s AI Product and Complainant’s Supermarket
<norma .app>
Panelist: Mr. Nick J. Gardner
Brief Facts: The German Complainant, established more than fifty years ago, operates a chain of discount supermarkets. It currently has around 1,450 retail stores in Germany, France, Austria, and the Czech Republic. The Complainant is the proprietor of three European Union word marks which comprise or include the term “norma” namely, “NORMA”, registered on October 13, 2016; “NORMA CONNECT”, registered on May 14, 2019; and “NORMA +”, registered on October 29, 2022. The disputed Domain Name was registered on May 7, 2021 and resolves to a website which is branded “Norma” and which promotes an “AI Powered Analytics” system. The Respondent did not file a Response.
The Complainant alleges the Respondent’s activities infringe the NORMA trademark. It says for example that EU trademark no. 013534854 is, inter alia, registered and used for goods in class 9, as well as for services in class 35. The Complainant further argues by registering the disputed Domain Name, the Respondent intentionally attempted and still attempts to profit from the Complainant’s reputation to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s marks. The Respondent therefore registered the disputed Domain Name in bad faith.
Held: The Respondent’s Website indicates that the Respondent has been carrying out its business since 2022. The Complainant has not suggested the Respondent’s Website is pretextual or inaccurate. The Panel considers it is more likely than not that before any notice to the Respondent of the dispute, the Respondent has used the disputed Domain Name in connection with a bona fide offering of goods or services. In light of the above, the Panel finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the disputed Domain Name.
The Complainant says that clause (iv) of paragraph 4(b) of the Policy applies, which is part of a non-exhaustive list of factors evidencing registration and use in bad faith. The Panel does not understand the basis upon which this allegation is made. The Panel find it difficult to conceive any obvious reason why a company offering some form of sophisticated AI software product would be interested in attracting consumers who were in fact actual or potential customers of a German discount supermarket chain. In the unlikely event of actual or potential customers of the Complainant arriving at the Respondent’s Website the Panel cannot see that they would be likely to do business with the Respondent. They would simply realise they were at the wrong website.
There is also no evidence that the Complainant has any fame or reputation in Greece where the Respondent appears to be based. There is no reason to suppose that the Respondent should have known of the Complainant. It appears the Complainant uses <norma-online .de> as its principal domain name. The Panel thinks it much more likely that the Respondent’s choice of “norma” to form the disputed Domain Name is simply coincidental and unrelated to the Complainant. It may or may not be the case that the Respondent’s activities infringe the Complainant’s NORMA trademark, but that is not a matter for a complaint under the Policy but would need to be determined by an appropriate court. Accordingly, the Panel concludes the Complainant has failed to discharge its burden of proof and has failed to establish that the third condition of the Policy has been fulfilled.
RDNH: In the view of the Panel the present case is misconceived. It takes no account of the fact that it is difficult to conceive any obvious reason that a company which is providing some form of AI software product would have any interest in, or motive for, attracting customers of a German discount supermarket. Absent any evidence of some form of targeting there was nothing in the case file to suggest that the Respondent’s registration of the disputed Domain Names had anything to do with the Complainant. The Panel has however concluded that a finding of RDNH is not necessary. It appears that the Respondent has not been severely inconvenienced or put to any expense dealing with this Complaint and the Panel has the impression that the Complaint’s shortcomings arise because of a failure to appreciate what needed to be shown to succeed under the Policy, rather than any deliberate attempt to proceed in bad faith.
Complaint Denied
Complainant’s Counsel: Betten & Resch Patent- und Rechtsanwälte PartGmbB, Germany
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Interestingly, RDNH was denied in this no-Response case. Since the Respondent did not Respond, the Panel found that the Respondent was “not severely inconvenienced or put to any expense dealing with this Complaint”. That alone should not be the basis for denying RDNH as RDNH serves an important deterrent to bringing abusive cases. However the Panel in this case did not rely on the lack of inconvenience alone. The Panel noted that it “has the impression that the Complaint’s shortcomings arise because of a failure to appreciate what needed to be shown to succeed under the Policy, rather than any deliberate attempt to proceed in bad faith”. I would respectfully disagree with that approach. After 25 years of the UDRP, parties, particularly those represented by counsel, should appreciate the requirements of the UDRP and failing to appreciate those requirements deserves sanction.
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.