When Not Paying Your UDRP Fees Becomes Evidence of Bad Faith
What caught my attention most in this case was the Panel’s treatment of the Complainant’s failure to pay its share of the three-member Panel fees. After the Respondent elected a three-member Panel, the Complainant did not pay the required top-up. The Panel did not treat this as a neutral procedural lapse. Instead, it expressly found that this conduct was “not indicative of a party acting in good faith” and relied on it as part of the basis for its RDNH finding. Continue reading commentary here.
Join us for this year’s Levine Lecture featuring Nick Gardner, who will present: “26 Years of Deciding UDRP Cases—What Does a Panelist Actually Do, and Why? How Will AI Change This?” A veteran of UDRP practice, Nick’s experience ranges from early landmark English court cases to presiding over hundreds of disputes as a leading WIPO and Nominet panelist. The session will include an introduction by Zak Muscovitch, opening remarks by Tony Willoughby, and closing remarks from Gerald Levine.
We hope you will enjoy this edition of the Digest (vol. 6.18) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ When Not Paying Your UDRP Fees Becomes Evidence of Bad Faith (swankysocks.co and swankysocks.com *with commentary)
‣ Panel Steps In: Independent Research Exposes Fatal Gaps in Bank’s Case (taler.buzz *with commentary)
‣ Change the Registrant, Change the Outcome: VLONE.com Transferred (vlone.com *with commentary)
‣ Panel Pushes Back on Weak UDRP Filings (redacnary.com *with commentary)
‣ Panel: Passive Holding Does Not Automatically Amount to Bad Faith (huron.info *with commentary)
‣ Auction Acquisition of Famous Coined Mark With AI-Linked PPC Pages Establishes Bad Faith (bilibili.ai *with commentary)
When Not Paying Your UDRP Fees Becomes Evidence of Bad Faith
Swanky Socks Pty Ltd v. Thomas Lawrence, WIPO Case No. D2026-0356
<swankysocks.co> and <swankysocks.com>
Panelists: Mr. Warwick A. Rothnie (Presiding), Ms. Rebecca Slater and Mr. Nicholas Weston
Brief Facts: The Complainant, incorporated on October 13, 2014, is an Australian retailer selling colourful socks under the SWANKY SOCKS brand. It holds Australian registration (applied September 2019) and an International registration (July 15, 2025) designating multiple jurisdictions. The Respondent, Thomas Lawrence, was the Complainant’s co-founder, sole founding director, and remained a director until April 2024, after which he was employed as General Manager of Sales & Marketing until July 31, 2025. The Respondent registered the Domain Name <swankysocks .com> somewhere between July 29 and August 8, 2013 through an escrow transaction, and registered <swankysocks .co> on May 28, 2025, during his employment.
The Complainant acknowledged that it did not know when the Respondent acquired the <swankysocks .com> domain name. The WHOIS Record annexed to the Complaint, however, states that the disputed domain name was created on January 9, 2012. As it turns out, that was not the date on which the Respondent became the registrant, which was in July/August 2013, still approximately 14 months prior to the establishment of the Complainant. The Complainant persisted with its Complaint even after the Respondent provided evidence establishing the date he became the registrant. Both Domain Names continue to resolve to the Complainant’s website throughout the proceeding. Parallel Federal Court proceedings were filed by the Complainant in September 2025 seeking, among other relief, transfer of the Domain Names.
Held: In the present case, the evidence clearly establishes that the Respondent registered the disputed Domain Name <swankysocks .com> about 14 months before the Complainant was incorporated, and while prior contemplation is possible, the time gap prevents the Panel from drawing that conclusion with confidence. It may seem surprising that the disputed Domain Name did not become an asset of the Complainant when the Complainant was incorporated and commenced to carry on business selling colourful socks under the trademark SWANKY SOCKS. Apart from the evidence that the Respondent continually paid the renewal fees for the domain name registration even after the Complainant was incorporated, the evidence in this proceeding does not allow the Panel to draw any conclusions about that issue which is likely to involve more extensive procedures than are available in proceedings under the Policy.
The disputed Domain Name <swankysocks .co> was registered on May 28, 2025, during the term of his employment with the Complainant; therefore, this disputed Domain Name is potentially on a different footing. The critical question is whether the Respondent registered the disputed Domain Name with the intention of targeting the Complainant’s trademark rights. On the evidence before the Panel, that intention has not been established. As the Complainant has not established that the Respondent registered the disputed Domain Name <swankysocks .com> in bad faith, the Panel’s comments above in relation to the scope of the questions this Panel is able or required to determine under the Policy are equally applicable. The Panel, therefore, finds that the Complainant has failed to discharge its burden of proving bad faith registration of the disputed Domain Name <swankysocks .co>.
RDNH: In the absence of a proper explanation about how the Complainant annexed a WHOIS record but professed ignorance of the registration date it contains where services such as Domain Tools’ WHOIS History have long existed, the Panel finds the basic due diligence the Policy requires of a complainant, particularly one represented by counsel, has not been done in this case. The proposition that a domain name registered well before a complainant existed cannot have been registered in bad faith is a well-established principle. WIPO Overview 3.1, section 3.8.1. The Panel also notes that the Complainant failed to pay its part of the administrative fees following the Respondent’s election of a three-member Panel. The Panel finds this is not indicative of a party acting in good faith. The Respondent’s charges involve serious allegations, at least some of which are more appropriately addressed in the court proceedings.
Complaint Denied (RDNH)
Complainant’s Counsel: Braddon Marx Lawyers, Australia
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
What caught my attention most in this case was the Panel’s treatment of the Complainant’s failure to pay its share of the three-member Panel fees. After the Respondent elected a three-member Panel, the Complainant did not pay the required top-up. The Panel did not treat this as a neutral procedural lapse. Instead, it expressly found that this conduct was “not indicative of a party acting in good faith” and relied on it as part of the basis for its RDNH finding.
I have had an ongoing wager with a few other counsel for around the last 20 years as to when this would finally happen, and it finally did. It came very close once before, in Hale Law, P.A. v. Roger Hale, WIPO Case No. D2023-0084. In Hale Law (>gotohale .com<), after the respondent elected a three-member panel, the complainant failed to pay its USD $500 share despite repeated requests from WIPO. The respondent ultimately paid the shortfall himself in order to obtain a decision. Within the same hour, the complainant attempted to withdraw the complaint. The panel refused the withdrawal, proceeded to a decision, denied the complaint, and found RDNH.
The present case however, is more extreme factually. In this case, the Panel expressly relied upon this failure to pay its share, and in particular, treated the non-payment as part of a broader pattern of conduct undermining the Complainant’s good faith. I think that a complainant’s failure to pay its share of the panel fees is, in principle, evidence of an abuse of the administrative proceeding and can, in appropriate circumstances, justify a finding of RDNH on that basis alone.
Under the Rules, “Reverse Domain Name Hijacking” includes using the Policy in bad faith to attempt to deprive a registrant of a domain name, and requires a panel to declare that a complaint “was brought in bad faith and constitutes an abuse of the administrative proceeding” where such conduct is found.
The “abuse of the administrative proceeding” is a key consideration here. Commencing a UDRP and putting the Respondent to the time and expense of defending only to resile via an attempt to defeat the process by not remitting the required fee is definitely an abuse of process. Even if the complainant, in such circumstances, manages to ultimately prevail in the case, RDNH could still arguably be found on the basis of abuse of the proceeding itself.
Where a complainant fails to pay its share, I believe the respondent should be offered its choice of three options: (i) allow the complaint to be administratively dismissed; (ii) proceed before a single-member panel; or (iii) pay the shortfall and proceed before a three-member panel. Where the respondent elects to proceed despite the complainant’s default, panels should, as here, treat the non-payment as relevant to abuse of the proceeding. If the respondent elects to have the case proceed – whether by single member or three-member panel – because the complainant failed to pay its share of the fee after the respondent duly remitted its share, then the respondent should feel confident that the Panel will, as it should, take the complainant’s failure into account and consider it an abuse of the proceeding as the Panel, to its credit, did in the present case.
The Panel’s characterization of the overall dispute is also important. The Respondent was a co-founder, director, and later employee, the domain names resolved to the Complainant’s own website, and parallel Federal Court proceedings were already underway addressing entitlement to the domain names. These facts point to a dispute over control and ownership of business assets rather than cybersquatting. The Panel confined itself to the question required under the Policy – whether the Respondent registered the domain names in bad faith by targeting the Complainant’s trademark – and declined to resolve the underlying dispute between the parties. Questions about whether the domain names should have been transferred to the company or retained by the Respondent were left to the court proceedings, where the necessary factual and legal issues can be properly determined.
Panel Steps In: Independent Research Exposes Fatal Gaps in Bank’s Case
CA Indosuez (Switzerland) SA v. Environ Architectural Design AK Maier, WIPO Case No. D2026-0759
<taler.buzz>
Panelist: Ms. Stephanie G. Hartung
Brief Facts: The Complainant, a company organized under the laws of Switzerland, is active in the financial industry. The Complainant has provided evidence that it is the registered owner of various trademarks relating to its THALER brand, including, but not limited to, the Swiss word/device trademark THALER, registered on March 29, 2000. The disputed Domain Name was registered on November 26, 2025, by a US-based Respondent; it does not resolve to any active content on the Internet. The Respondent did not file a Response.
The Complainant alleges that the disputed Domain Name is extremely similar to one of Complainant’s trademarks, and the mere absence of use of the disputed Domain Name is not incompatible with the existence of bad faith. The Complainant further alleges that in the banking sector, look-alike domain names are widely recognized as primary instruments for phishing and financial fraud, why the passive holding of the disputed Domain Name constitutes a latent threat to the integrity of the financial system and a risk of fraud.
Held: As researched by the Panel, the Panel notes that “taler” (a variant spelling of “thaler”) refers to the currency, which is one of the most significant European silver coins, having served as the standard currency from the early modern period through to the 19th century. Consequently, the term “taler” is a dictionary word, the registration of which, as recognized by UDRP panels, does not by itself automatically confer rights or legitimate interest on a Respondent. By the same token, UDRP panels also widely agree that aggregating and holding domain names (usually for resale) consisting of e.g., dictionary words can be bona fide and is not per se illegitimate under the UDRP, see WIPO Overview 3.1, section 2.1. The Panel, however, decided to leave it open whether or not the Respondent has rights or legitimate interests in respect of the disputed Domain Name, as this Complaint still fails for the reasons set out in the section below.
The Complainant is right when pointing to the view of UDRP panels that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.1, section 3.3. By the same token, the Panel also notes that the Complainant, however, has not addressed any of the factors that need be considered relevant in applying the passive holding doctrine in order to support a finding of bad faith despite the non-use of the disputed Domain Name. Certainly, the mere similarity with Complainant’s THALER trademark is not per se an exclusion criteria, especially given that the term “taler” of which the disputed Domain Name is composed is a dictionary term which can apply in a wide variety of contexts. Lastly, regarding the Complainant’s allegation concerning phishing and financial fraud, the Complainant has missed the opportunity to address any of the typical circumstances that might demonstrate not only a latent, but a concrete risk of such fraud to the disadvantage of the Complainant.
The Panel, therefore, concludes that the Complainant with regard to the specific setting in the case at hand has failed to meet its burden of proof under paragraph 4(b)(iii) of the Policy in showing that the Respondent has registered and is using the disputed Domain Name in bad faith. In this context, it also carries weight in the eyes of the Panel that the Complainant has been legally represented in this UDRP proceeding which further increases the demands placed on a thorough presentation of Complainant’s arguments.
Complaint Denied
Complainant’s Counsel: id est avocats sàrl, Switzerland
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch and Nat Cohen:
This decision merits attention not principally for its outcome – complaint denials in passive holding cases are no longer unusual – but for the manner in which the Panel arrived at it. Exercising its limited powers of independent research under paragraph 10 of the Rules, the Panel supplied a factual finding the Complainant had conspicuously declined to address: whether any plausible good faith use of the disputed domain name could be identified. What the Panel discovered – that “taler” designates one of the most historically significant European silver coins, the standard spelling of “thaler” prior to 1901 – effectively resolved the case.
The passive holding doctrine, as reflected in WIPO Overview 3.1, section 3.3, is not a presumption triggered by inactivity and a missing response. It requires a complainant to demonstrate, among other factors, the degree of distinctiveness or reputation of its mark and – critically – the implausibility of any conceivable good faith use of the domain. As section 3.8, “Applying the Passive Holding Doctrine in the Absence of a Response”, of UDRPperspectives.org makes clear, a respondent’s failure to file a response does not relieve the complainant of this burden; material factual allegations must be established through evidence, not assumed from default.
Here the Complainant addressed neither factor. It offered nothing about the reach or notoriety of its Swiss-registered THALER trademark, and nothing about why a domain composed of a historical currency term paired with the “.buzz” TLD – more commonly associated with news and publicity than with financial services – could not serve some non-infringing purpose.
The significance of the Panel’s independent research extends beyond this proceeding. As noted in the ICA UDRP Digest comment on Fairmont.group (Fairmont Hotel Management v. Yali (WIPO Case No. D2024-1292)), UDRP decisions invoking the passive holding doctrine have frequently omitted from their analysis the very factor that makes or breaks the doctrine: the implausibility of any good faith use to which the domain name may be put. That omission matters, and it points to why panel research is sometimes not merely permissible but necessary.
Where a complainant asserts the absence of plausible good faith use without supporting that assertion with evidence, the no-response posture removes the adversarial check that would ordinarily expose an unfounded claim. The “implausibility of good faith use” is an inherently factual question that can turn on geographic familiarity, linguistic context, or awareness of markets and communities beyond the panelist’s immediate frame of reference. A panel that accepts the assertion as self-proving, without verification, risks substituting assumption for analysis. The Panel avoided that error by appropriately conducting independent research to assess the plausibility of a legitimate use for the <taler .buzz> domain name.
Change the Registrant, Change the Outcome: VLONE.com Transferred
LVDV Holdings, LLC v. 胡雪峰 (Hu Xue Feng), WIPO Case No. D2026-0196
<vlone.com>
Panelist: Ms. Deanna Wong Wai Man
Brief Facts: The US-based Complainant claims to have extensively used the VLONE mark in commerce for apparel, accessories, retail and digital commerce services, and brand collaborations, through which the mark has acquired substantial goodwill and recognition. The Complainant provides evidence of the ownership of United States trademark registrations for the mark VLONE, (registered on August 5, 2014; first use in commerce of April 1, 2012). The registration is currently subject to a cancellation proceeding at the USPTO Trademark Trial and Appeal Board. The disputed Domain Name was registered on November 15, 2010, and resolves to an inactive website. The Respondent did not file a Response.
The Complainant alleges that the disputed Domain Name was registered and is being used in bad faith, given the distinctiveness and reputation of the VLONE mark, the Respondent’s alleged awareness of the Complainant’s rights, the passive holding of a domain name identical to the mark, and the absence of any plausible good-faith use, which the Complainant claims supports a finding of bad faith under established UDRP principles. The Complainant further in response to procedural order adds that case hinges on whether the Respondent targeted the VLONE mark when acquiring the domain around 2019, asserting VLONE was already globally recognized and the Respondent’s exact-match domain acquisition was opportunistic.
Procedural Issue: Change in Registrant (Panel Order No. 1): On April 1, 2026, the Panel issued Procedural Order No. 1, noting that while the Complainant’s VLONE trademark was registered in 2014, the disputed Domain Name was originally registered in 2010. In light of section 3.9 of the WIPO Overview 3.1, which provides that the relevant date for assessing bad faith is when the current registrant acquired the Domain Name, the Panel highlighted certain evidence submitted by the Complainant prima facie suggesting a possible change in registrant around 2019. The Panel invited both parties to submit evidence on the acquisition date. The Complainant responded; the Respondent did not.
Historical WHOIS records confirmed that the original 2010 registrant was a different individual, replaced days later by a China-based company that remained on record until 2019, after which further registrant changes occurred. With no rebuttal from the Respondent, the Panel found a credible indication of a change in ownership, shifting the burden to the Respondent to establish an unbroken chain of possession, a burden it failed to discharge. In doing so, the Panel applied a practical evidentiary approach in circumstances where the relevant information was uniquely within the Respondent’s knowledge.
Held: The Panel accepts the Complainant’s evidence that the Respondent acquired the disputed domain in 2019, which is after the Complainant’s trademark registration and is the relevant date for assessing bad faith registration under the Policy. The disputed Domain Name is identical to the Complainant’s trademark, which had been intensively and publicly used for years before the Respondent’s acquisition. This means that even a cursory Internet or trademark search at the time of acquisition of the disputed Domain Name would have revealed the Complainant’s, by then, longstanding rights in, and public and intensive use of, the VLONE mark. In the Panel’s view, the above elements, on balance, indicate an intention to target the Complainant on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent acquired the disputed Domain Name in bad faith.
Further, Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not by itself prevent a finding of bad faith under the doctrine of passive holding. To the contrary, in looking at the totality of circumstances in each case, panels have found that the registration and non-use of a domain name can still constitute bad faith for purposes of the Policy, see WIPO Overview 3.1, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness, reputation and intensive use of the Complainant’s trademark, the composition of the disputed Domain Name, the failure of the Respondent to submit a Response or reply to the Panel Order, and finds that in the circumstances of this case the passive holding of the disputed Domain Name does not prevent a finding of bad faith under the Policy.
Transfer
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
The Panel’s handling of the evidentiary record is central to this decision. Although the domain name was originally registered in 2010 – predating the Complainant’s rights – the Panel did not treat that date as dispositive. Instead, it properly focused on whether the Respondent was a subsequent acquirer.
The Procedural Order was critical. It identified prima facie evidence of a change in registrant around 2019 and invited clarification. The Complainant produced WHOIS history showing a different registrant until 2019, after which the domain appeared under new ownership. The Respondent did not rebut this evidence. The Panel was, therefore, entitled to infer a change in registrant and treat 2019 as the relevant date – a careful use of evidentiary inference in a default setting.
That inference was grounded in the record. While not conclusive proof, the WHOIS history constituted sufficient evidence – particularly in the absence of rebuttal – to support the Panel’s conclusion. Requiring conclusive proof in such circumstances – where the relevant information lies with the Respondent – would, as a practical matter, deprive the “change in registrant” analysis of meaningful effect.
Once the 2019 acquisition date is accepted, the bad faith analysis follows more conventionally. By that time, the VLONE mark had been used publicly and extensively. The Respondent acquired an exact-match domain name and passively held it. The Panel inferred that the acquisition was opportunistic.
The more difficult issue is the application of Telstra. The domain name predates the Complainant, which indicates that, at least at the time of original registration, plausible non-infringing uses existed. Telstra requires that such plausible good faith use be effectively excluded. This is the critical constraint on the doctrine: passive holding does not establish bad faith unless plausible good faith use is ruled out.
That requirement is not satisfied on the original timeline. However, once the analysis shifts to 2019, the inquiry changes: the question becomes whether a third party acquiring an exact-match domain corresponding to an established brand could plausibly be acting for reasons unrelated to that brand. On that narrower question, the Panel’s reasoning is more defensible. The Panel did not treat non-use as determinative, but considered it in light of the timing of acquisition and the nature of the mark at that time. The Panel’s analysis remains anchored to the core Telstra requirement rather than treating inactivity as a proxy for bad faith.
This avoids the over-expansive application of Telstra seen in cases where non-use is treated as sufficient without excluding plausible alternative uses. The result is a more disciplined application of the doctrine, tied to the circumstances of acquisition rather than the abstract characteristics of the domain name alone.
The decision reflects the now-settled approach that acquisition can reset the bad faith analysis. A domain name originally registered in good faith may nonetheless be found abusive if later acquired with intent to target a complainant’s mark.
The broader concern – that this approach may expose older domain names to challenge following ownership changes – is not without force. However, the evidentiary burden remains the constraint. A complainant must establish both a change in registrant and targeting at the time of acquisition. Here, the Panel found both.
The decision underscores – in a disciplined and fact-driven way – that WHOIS history can be outcome-determinative, and that a respondent’s failure to engage may result in adverse inferences on issues – such as chain of title – uniquely within its knowledge.
Panel Pushes Back on Weak UDRP Filings
Zscaler, Inc. v. Ola Crown / crownnew, Forum Claim Number: FA2604002214046
<redacnary.com>
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant holds a USPTO registration for the RED CANARY mark (Reg. No. 5,189,391, registered April 25, 2017). The disputed Domain Name was registered by a US-based respondent on March 18, 2026 anonymously. The Complainant claims that the disputed Domain Name is a minor misspelling of the mark, inverting the letters “c” and “a” to produce “redacnary.” The Complainant further alleges that the Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, but registered and uses the disputed Domain Name in bad faith to impersonate the Complainant to conduct a phishing scheme. The Respondent failed to submit a Response in this proceeding.
Held: The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview 3.1, Section 4.3. The Factual and Legal Grounds section of the Complaint consists of 4 brief paragraphs making numerous assertions that the Complainant has not chosen to support in the 4 pages of documentary material provided as part of the Complaint. The Uniform Domain Name Dispute Resolution Policy, is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014).
The Domain Name consists of a misspelling of the generic words “RED CANARY”. Noting the complete absence of any evidence that the Complainant has ever used the RED CANARY mark or has a reputation in it the Panel is not satisfied that RED CANARY mark is so distinctive, well-known and ubiquitous that the Panel can conclude, for that reason alone, that the Respondent’s registration was motivated by awareness of the Complainant and a desire to take advantage of any confusion, as opposed to registration of the Domain Name other purposes. Nor does the Complainant provide any other evidence, such that it would be reasonable to infer Respondent was aware of the Complainant at the time of registration or engaged in any other conduct that would suggest registration and use of the Domain Name in bad faith.
The Complaint further submits that the Domain Name is used to impersonate the Complaint and for phishing purposes but provides no evidence for these assertions, indeed there is no evidence of the use of the Domain Name at all. Nor is the mere fact that the Domain Name a misspelling of the RED CANARY mark/words RED CANARY a sufficient basis to find, by itself, that the Domain Name was used for phishing purposes. In the present case, the Complainant’s mark consists of two generic English-language words. The Domain Name is a misspelling of those words. In the absence of any evidence of the reputation of the mark or the use of the Domain Name, the Panel cannot find that the registration of the Domain Name was motivated by awareness of the Complainant or a desire to take advantage of any confusion with the Complainant.
Complaint Denied
Complainant’s Counsel: Jessica L. Davis, USA
Respondent’s Counsel: No Response
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision stands as a pointed reminder that even in default cases, a complainant must prove its case with evidence, not assertions – and reflects a disciplined refusal by the Panel to bridge evidentiary gaps on the Complainant’s behalf.
The Panel began from an uncontroversial but often underapplied premise: while it may accept reasonable allegations in the absence of a response, it is not required to accept conclusory or unsupported claims. The Panel adhered to that distinction rigorously. The Complaint consisted of only a few brief paragraphs supported by minimal documentary material, and critically, failed to establish even basic elements of its case.
Most notably, the Complainant provided no evidence of use or reputation in its RED CANARY mark beyond the existence of a trademark registration. Given that the mark consists of two ordinary English words, the Panel declined to assume distinctiveness or notoriety in the absence of evidence. This was a careful and appropriate approach. Rather than inferring targeting from the existence of a mark alone, the Panel required proof that the Respondent was likely aware of the Complainant – and found none.
The Panel’s treatment of the alleged phishing activity is equally instructive. The Complaint asserted that the domain name was being used to impersonate the Complainant and conduct phishing, but provided no evidence of any use at all. The Panel rejected this submission outright. The mere fact of a misspelling – even of a registered mark – was not treated as a substitute for evidence of bad faith use. This reflects a disciplined application of the Policy, grounded in proof rather than conjecture.
The decision also reflects a principled rejection of several weak but common arguments. The Respondent’s use of privacy was given no weight. Nor was the existence of a typo domain name treated as sufficient, in itself, to establish bad faith. The Panel instead required a coherent evidentiary basis linking the domain name to the Complainant and declined to infer one where none had been established.
What emerges from the decision is a clear signal that panels will not compensate for deficient pleadings, even in default cases. There is a wide variation in the quality of UDRP complaints, and this case illustrates a lower tolerance for filings that rely on assertion rather than evidence. The Panel’s reasoning suggests a measured insistence that the UDRP remain an evidence-based process, rather than one driven by assumption.
The broader lesson is straightforward. The UDRP is designed to address clear cases of cybersquatting, but it requires proof. Where a complainant fails to demonstrate reputation, targeting, or use – even in a case involving a typo domain – the claim will fail. Well done, Panel.
Panel: Passive Holding Does Not Automatically Amount to Bad Faith
Huron Consulting Group Inc. v. Yilun Pan, Forum Claim Number: FA2604002215476
<huron.info>
Panelist: Ms. Ivett Paulovics
Brief Facts: The Complainant asserts rights in the HURON trademark based on multiple trademark registrations in the United States and in other jurisdictions, as well as its use of the mark in connection with consulting services. The Respondent is an individual residing in Ontario, Canada, who registered the disputed Domain Name on March 2, 2026, at a standard registration fee. The domain does not resolve to an active website, though DNS configuration activity was recorded but the Respondent denies that the disputed Domain Name has been used for email or other deceptive conduct.
The Complainant alleges that the disputed Domain Name was registered and is being used in bad faith. It submits that the Respondent was aware of the Complainant’s mark at the time of registration and that the passive holding of the disputed Domain Name, combined with the alleged risk of email-related fraud, supports a finding of bad faith. The Respondent contends that the disputed Domain Name was registered for its well-known geographic and historical significance, “Huron” being the name of a Great Lake, a region of Ontario, and carrying deep cultural and historical meaning in Canada.
Held: The disputed Domain Name includes “Huron,” a geographic and historical term linked to Lake Huron and the Huron-Wendat people. The term is also widely used in geographic place names in both Canada and the United States and is not exclusively associated with the Complainant. The Respondent has provided a plausible explanation for the registration of the disputed Domain Name based on its geographic significance. The Panel therefore accepts that the Respondent has a connection to a region where the term “Huron” is commonly used. The Panel further notes that the disputed Domain Name was registered recently and that the record reflects technical configuration activity, which is consistent with a domain name in the process of being set up. While the Respondent has not provided evidence of a fully developed project or demonstrable preparations for use in the sense of Policy 4(c)(i), the Policy does not require such evidence where the domain name consists of a term with an independent meaning and there is no indication that it was registered to target the complainant.
Panels have declined to find bad faith where a domain name corresponds to a term with a geographic or descriptive meaning and the evidence does not establish targeting of the complainant, particularly where the respondent’s location supports a plausible alternative meaning. See Zetland Capital v. Steve King, D2024-0264 (WIPO Mar. 26, 2024). The disputed Domain Name does not resolve to an active website. However, passive holding does not automatically amount to bad faith. The Panel has considered the principles set out in Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000), but finds that they do not apply in the present case. Unlike in Telstra, the mark at issue is not a coined or inherently distinctive term uniquely associated with the Complainant, and the record does not exclude plausible good faith uses of the disputed Domain Name, particularly in connection with its geographic meaning. The Panel further finds that the disputed Domain Name was registered recently and that the record reflects technical configuration activity, including DNS-related changes consistent with a domain name in the process of being set up rather than being passively held for abusive purposes.
Complaint Denied
Complainant’s Counsel: Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision is notable for the Panel’s careful and disciplined application of the Telstra passive holding doctrine – and, in particular, for what it declined to do.
The Complainant relied heavily on passive holding and the asserted risk of email-based fraud. The Panel correctly began by recognizing that non-use does not automatically amount to bad faith, and then turned to the Telstra framework. Rather than treating Telstra as a presumption triggered by inactivity, the Panel engaged with its underlying requirement: whether, on the totality of circumstances, it is possible to conceive of any plausible good faith use of the domain name.
That inquiry proved decisive. The term “Huron” is a well-known geographic and historical term with widespread use in Canada and the United States. The Panel accepted that the Respondent, located in Ontario, had a plausible basis for registering the domain name tied to its geographic significance. On that record, the Panel was not prepared to conclude that all conceivable uses of the domain name would be illegitimate.
This reflects a proper and restrained application of Telstra. The doctrine is not satisfied merely because a domain name is inactive and corresponds to a trademark. It requires that plausible good faith use be effectively excluded. The Panel adhered to that standard and declined to extend the doctrine to a term with an obvious independent meaning.
The Panel’s analysis also demonstrates a sound appreciation of the evidentiary burden. The Complainant’s assertions regarding phishing risk were unsupported by any evidence of use, and the Panel did not permit speculative harm to substitute for proof. In doing so, the Panel maintained the distinction between potential misuse and demonstrated bad faith.
The contrast with cases where Telstra is applied more expansively is instructive. Where panels infer bad faith from non-use in circumstances where plausible alternative uses have not been meaningfully excluded, the doctrine risks becoming detached from its original rationale. Here, by contrast, the Panel grounded the analysis in the actual characteristics of the domain name, the Respondent’s location, and the evidentiary record.
The result is a decision that reinforces the limits of Telstra: passive holding supports a finding of bad faith only where the surrounding circumstances leave no room for legitimate use.
Auction Acquisition of Famous Coined Mark With AI-Linked PPC Pages Establishes Bad Faith
Shanghai Hode Information Technology Co., Ltd. v. Lei Shen, ADNDRC (HKIAC) Case No. HK-2602116
<bilibili.ai>
Panelist: Ms. Claire Kowarsky
Brief Facts: The Complainant, a subsidiary of Bilibili Inc., was launched in 2009 and operates one of China’s largest video community platforms. It holds multiple trademark registrations for BILIBILI, including USPTO Reg. No. 5261803 (August 2017) and China Reg. No. 11356033 (January 2014), as well as a China registration for BILIBILIAI (No. 73316703, February 2024). The platform ranks as the 2nd most popular website in China and 26th globally, recording over 1.27 billion visits in September 2025 alone, and has been judicially recognised as a famous trademark by multiple Chinese courts. The Respondent, located in the United States, acquired the disputed Domain Name on March 3, 2025, via a public Namecheap auction for USD 3,185.96. The Domain Name resolves to a parking page with pay-per-click links related to AI products and is listed for sale at USD 10,000.
The Complainant alleges that the Respondent targeted its famous mark to capitalize on the goodwill and reputation of the brand and notes that the domain is offered for sale at a price far exceeding out-of-pocket costs. The Complainant further alleges that the use of a domain to host a parked page with PPC links related to AI products does not constitute a bona fide offering of goods or services or a legitimate non-commercial fair use. The Respondent contends that the Domain Name is a personal investment based on the name being “memorable, brandable and commercially usable,” and denies any intent to target the Complainant. The Respondent further adds that any PPC links or sales listings appearing were automatically generated by third-party platforms and not intended to target the Complainant.
Held: The Panel acknowledges that hosting PPC links can be legitimate under the UDRP provided such links do not trade off the complainant’s trademark. However, in the context of a domain matching a highly distinctive mark like BILIBILI and utilizing the “.ai” extension, hosting links for AI products in connection with the term “video” – a core aspect of the Complainant’s offer – inherently capitalizes on the reputation of the Complainant. The mere acquisition of a domain at auction does not create a legitimate interest where the resulting use capitalizes on the goodwill of a pre-existing mark, particularly where the respondent has failed to exercise oversight or use available tools (such as using negative keywords to suppress PPC advertising) to prevent the links from trading on the complainant’s trademark (WIPO Overview 3.1, section 2.9). As the Respondent has failed to provide evidence of any bona fide use or legitimate interests independent of the Complainant’s trademark, the Panel finds the Respondent has not rebutted the Complainant’s prima facie case.
Regarding registration, here a domain is identical to a well-known mark, the probative value of the respondent’s registration of a domain name matching such well-known mark can outweigh a respondent’s claim of good faith investment. The Panel finds the Respondent’s assertion that the domain was a ‘personal investment’ based on it being ‘memorable and brandable’ to be unpersuasive. The term ‘BILIBILI’ is a highly distinctive string and neither the Complainant nor the Respondent claims it has any descriptive meaning. Regarding use, WIPO Overview 3.1, section 3.5 clarifies that the fact that links “may be generated by a third party … would not by itself prevent a finding of bad faith.” While a respondent may mitigate such a finding by demonstrating positive efforts to avoid links targeting a complainant, in the present case, the Respondent has provided no evidence of such efforts. On the contrary, the presence of AI-related links on a “.ai” domain matching the Complainant’s BILIBILI mark and highly resembling the Complainant’s BILIBILIAI mark, supports an inference that the Respondent sought to profit from user confusion.
Transfer
Complainant’s Counsel: Paddy Tam, CSC Digital Brand Services
Respondent’s Counsel: Self-represented
Commentary Edited and Approved by ICA General Counsel, Zak Muscovitch:
This decision turns primarily on the Respondent’s inability to offer a credible explanation for registering a domain name identical to a highly distinctive and well-known mark.
The Respondent characterized the registration as a “personal investment,” asserting that the term “bilibili” was “memorable, brandable and commercially usable.” The Panel found this explanation unpersuasive, and properly so. Unlike dictionary or descriptive terms, “BILIBILI” is a coined and highly distinctive string. Neither party suggested any independent meaning for the term. In such circumstances, a bare assertion of “brandability” does little work. The more distinctive the mark, the less plausible it is that a respondent selected it for reasons unrelated to the complainant.
The strength of the Complainant’s mark was therefore central to the analysis. The Panel accepted extensive evidence of the Complainant’s scale, reach, and recognition, including its status as one of the most visited websites globally and its judicial recognition as a famous mark in China. Against that backdrop, the Panel was entitled to infer that the Respondent, acquiring the domain name in 2025, was more likely than not aware of the Complainant and its mark. The combination of a coined term and a well-known brand significantly narrows the range of plausible innocent explanations.
The Respondent’s acquisition at a public auction did not alter this analysis. While auction purchases can, in some cases, support an inference of good faith investment, they do not do so where the domain name corresponds to a highly distinctive and well-known mark. The Panel correctly treated the Respondent’s explanation as insufficient to overcome the inference of targeting arising from the nature of the mark itself.
The PPC use and offer for sale, while present, were not determinative. Rather, they reinforced the broader inference that the Respondent sought to capitalize on the value of the Complainant’s mark. In particular, the offer to sell the domain name at a price substantially exceeding out-of-pocket costs aligned with a strategy of monetizing that value rather than any independent project tied to the term.
The decision reflects a straightforward but important principle: where a respondent registers a domain name identical to a highly distinctive and well-known mark, a credible, evidence-based explanation is required to rebut the inference of targeting. Generalized or unsupported claims of “investment” or “brandability,” in connection with a well-known brand, without more, will not suffice.
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.