Essay by Mr Gerald M Levine, Part 1
Gerald M. Levine, Esq. is a UDRP Panelist and counsel, and is the author of the Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting (2019) and The Clash of Trademarks and and Domain Names on the Internet (2024). He also has an upcoming book with David Weslow on the ACPA.
Help! Someone has registered a Domain Name Corresponding to my Trademark.
Help! I’m being Accused of Squatting on Someone’s Trademark.
PART 1: UNSORTING THE CLEAR FROM THE UNCLEAR
In the vast percentage of UDRP cases—a number that has varied over the years but is currently in the 95% range—panelists have found accused registrants to be indefensibly cybersquatting. These are the “clear cases” that UDRP was crafted to suppress.[1] This is not to say that the distance between clear and unclear is instantly discernable in all cases. There is always a point on a continuum where clear transmutes to unclear and at that point the determination as to which side of the line a dispute sits becomes increasingly exposed to error[2] or the complainant has misjudged and finds itself in the 5% class of dismissals.
It is enough to say that if there is doubt the benefit must go to the respondent “as the onus is on the Complainant to show that the Respondent lacked a right or legitimate interest in the Domain Name,” info-space.com Inc. v. Infospace Technology Co. Ltd., D2000-0074 (WIPO March 28, 2000) (C. Elliot). Or, more recently, the 3-member Panel in PolyTech A/S v. Richard Secor/TechSolutions LLC., FA2003001887223 (Forum April 15, 2020) (N. Brown, KC, D. Safron, and P. DeCicco) stated:
[A]fter considering both sides, and especially if there is any doubt about the matter, the onus of proof remains on the Complainant to prove on the balance of probabilities that the registrant of the domain name has no right or legitimate interest in it,”Which in this case it failed to do.
The 95% class (approximately 6,000 plus decided cases annually) is distinctive in that domain name registrants rarely appear for the very good reason that their domain registrations are indefensible. It is also distinctive in its limited vocabulary of issues as opposed to the wide range of “triable issues” in the 5% class, which makes the smaller class the greater generator of law. I will get to this in the second and third parts of the essay.
We should not conclude from the overriding percentage of transfers (and infrequent cancellations) that domain names composed of common words, personal or family names, or descriptive phrases corresponding to marks are evidence of cybersquatting. The complainant carries the burden of proving 1) it has a trademark (registered or unregistered), 2) the respondent lacks rights or legitimate interests in the disputed domain name, and 3) the respondent registered and is using the disputed domain name in bad faith. The third element is a conjunctive requirement. If the disputed domain name is being used in bad faith but was registered in good faith, the complaint must be dismissed. As stated in a 2004 case and still binding “[t]he prevailing view is that the Policy was not designed to prevent such situations.” The recent decision in Priority Air Express UK Limited v. Priority Airs Ltd., Case No. D2025-0727) (A. Alexiev) is a perfect illustration of this:
The Complainant has failed to establish the first element of the Policy, so the Complaint cannot succeed. Nevertheless, the Panel considers that the circumstances of this case justify a concise record of the Panel’s conclusions on the other two elements. [. . .] The evidence shows that the Respondent was well aware of the Complainant and targeted it with the registration and use of the disputed domain name. “
Complainant has a registered mark for PRIORITY AIR EXPRESS and the respondent registered <priority-airs.com>. I’ll return to this case in Part 2, or if you can’t wait, click on “open hyperlink” now.
The middle element can be described as a fulcrum. If the complainant presents a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name the burden shifts to the respondent to establish that it does. But, if the complainant either fails to make a prima facie case or the respondent successfully rebuts it, the complaint must be dismissed.
To take an example: In Gong Galaxy v. Jeffrey Gong, Gong Inc. WIPO Case No. D2025-0500 (M. Kennedy), the Respondent demonstrated with proof that it is not only commonly known by the surname “Gong” (his birth name) but he “has made a legitimate commercial use of the disputed domain name in connection with his company Gong Inc.”, thus succeeds under both 4(c)(i) and (ii) which is the equivalent in horse racing of a trifecta.
While the respondent does not have to prove that it registered the disputed domain lawfully (it is the complainant’s burden), if it appears and argues its right or legitimate interest under the second element it may also (to avoid being silent on the issue of good faith) counter complainant’s evidence under the third element of conjunctive bad faith. For this reason, we can say that the abundance or lack of credible evidence applies equally to respondents should they appear and make a case.
As I will argue below, failure to understand the evidentiary demands of the Policy demands and what is necessary to satisfy the panel’s expectations can be fatal in a UDRP proceeding.
Domain name registrants must know that if the disputed domain name corresponds to a famous, well-known or (particularly) fanciful mark and they lack any evident good faith use for the domain name that they will be put on the defensive and have a case to answer. The underlying question for the respondent is why it registered a domain name that incorporates in whole in in part the complainant’s mark. This demand for evidence and respondents proffer of proof allows for credible denial of actual knowledge of the complainant or its mark or of its rights or legitimate interests in it even if it does have knowledge but is not targeting complainant’s mark.
To take a recent example in which the Respondent “informally” appeared, the Panel in Compagnie Générale des Etablissements Michelin v. Kiều Công Anh Case No. D2024-4906 (A. Lothian) “considers that despite the Respondent’s protestations of good faith intent according to its alleged referential use of the Complainant’s mark, it cannot have escaped the Respondent’s awareness that the disputed domain name itself [<michelinstreet foodtour.com>] would confuse Internet users and would suggest to them that the Respondent’s tours were in some way officially endorsed by the Complainant, if not actually provided by the Complainant itself.”
There are some disputes in which had the respondent appeared the outcome would likely have been different and in some other cases panelists take default as one would in a US court as an admission of liability rather than, as in commercial arbitration, treating failure to respond as a denial of the claim.[3] There are examples of the first in the 95% class and examples of the second in the 5% class. A respondent does not have to appear to prevail, although if it has a cause to answer and has a defense, failure to appear may be fatal.
An example of using default as a factor to find bad faith when the rights are uncertain or in doubt is <juvenalia.com> transferred to Complainant in Institución Ferial de Madrid (IFEMA) v. Kwangpyo Kim, Mediablue Inc. Case No. D2023-2602. The Panel (C. Gibson) considered the registration and use of <juvenalia.com> to be in bad faith citing default and the use of PPC links. However, there appears to be no evidence that the links were pointing to the complainant, and as the parties are domiciled continents apart in Spain and South Korea it raises a question as to how the Respondent could possibly have any actual knowledge of the Complainant or could have been aware of a trademark composed of a linguistic artifact.[4]
The 5% balance consists of either 1) unclear cases for which complainants fail to adduce sufficient evidence of either or both respondent’s lack of rights or legitimate interests and bad faith registration and use; or 2) are clear cases of their overreaching of rights.
The overall imbalance in mark owners’ favor tells us that the parties are not equally in need of help, but as I’ll explain, mark owners in the 5% class whose complaints are dismissed, and domain name registrants in the 95% class who may have a defense but have defaulted in appearance or failed to develop a defense, most certainly do need help.
Those who follow the unrelenting flow of decisions know that there is both noise and silence in pleadings. Noise is simply a complainant’s insistence that it is right and silence is failing to marshal the necessary evidence to prevail. Neither is persuasive for different reasons whether of complainant’s claim or respondent’s defense. So, for example, in Skytree B.V. v. c/o skytree.com, D2025-0128 (WIPO March 6. 2925) (A. Taylor)
the Complaint raised implausible legal arguments focused more on the Complainant’s desire /alleged entitlement to obtain the disputed domain name than any bad faith on the part of the Respondent, e.g., claiming that the disputed domain name had “degenerated” into bad faith registration and use simply because it was blocking the Complainant from itself using the disputed domain name [NOISE].
In contrast I’d call unmarshalled evidence of infringement, silence.
By silence, I mean to extend it to omissions or failure to offer proof of the truth of a party’s contentions. It is both fatal to the complainant and where the burden shifts to respondent, fatal to any attempted rebuttal. So, for example, in Sullivan & Cromwell LLP v. Mario Messina, FA2503002144071 (Forum April 9, 2025) (C. Kuechenmeister), the Panel held that “Without evidence of what a respondent is doing with a domain name it is not possible determine the presence or absence of a bona fide or legitimate use.” For a law firm of such eminence the failure to put in this kind of evidence is, well, head-scratching.
Whereas a mark distinctive in both a registration and market sense is central in the 95% class, central in the 5% class are common linguistic choices (dictionary words for example, personal name, descriptive phrasing, acronyms, etc). .
The principle was established, for example, in one of the earliest cases dismissing the complaint for the dictionary word “Allocation” (W. Bettink). The complainant was a German company and the respondent resided in the Philippines. Parties’ locations obviously make a difference, but also the very commonness of a mark is a critical factor. Location is featured in Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319 (Sir Ian Barker, D. Foster and R. Ayers) but with a different result. Respondent appeared and argued through distinguished counsel but failed to persuade the Panel of its good faith.
First, the Panel in Edmunds noted in dictum (a central principle in UDRP jurisprudence): “In some WIPO decisions, the Panel has been unable to infer that the Respondent in country ‘A’ (in this case China) knew of the existence of the Complainant and its mark registered in country ‘B’, (in this case the US) particularly when the Complainant had no presence in country ‘A.’”
But in this case, whether one agrees with its decision or not (and I suspect that if the case were argued today, the result would be different), the Panel disobeyed its intuition and “inferred” awareness of “ Complainant’s well-known business and its mark and intended to exploit the mark.” This inference is based in part on the fact that the ”Respondent is not unsophisticated and is well aware of its rights” (in other words, a domainer, a speculator that in the view of some panelists at the time that such respondents had no rights, see <crew.com>) and in other part that the Complainant (a law firm) had unintentionally allowed its registration of <edmunds.com> to lapse. While the surname “Edmunds” may not be common, it is not rare. The speculator view has changed over time to recognize “speculator” rights.
Consider, for example, one such speculator involving <nallis.com>. Nalli is an allegedly famous name. In Nalli’s Silks Sari Centre v. Mira Holdings, WIPO Case No. D2024-5168 (A. Taylor) the Panel concluded that “the Complainant has fallen well short of establishing that the Respondent was likely to have been aware of the Complainant’s mark purely on the basis of its alleged fame” and dismissed the complaint. And in Wynn Resorts Holdings, LLC v. Alexis Delamare, FA2502002139637 (Forum March 12, 2025) (N. Smith) (<wynn.ai>) dismissed the complaint despite the fame of Wynn, although in this case the respondent appears to have a commercial enterprise in mind unrelated to the Complainant’s name.
A rebuttal that calls into question the complainant’s evidence even where there may be a credibility issue is sufficient because infringement is no longer clear. In SoletLuna Holdings, Inc. and LifeWave, Inc. v. Melvin Watson, Mainnet Domain, WIPO Case No. D2024-4336 (E. Brown) the Panel explained that even though it had
doubts about the credibility of the evidence [Respondent] submitted to support this claim – including undated book cover mockups and unclear ISBN documentation – the burden of proof nevertheless remains with the Complainant throughout these proceedings. Given that the Complainant did not satisfy its burden, the Panel need not evaluate the veracity of the Respondent’s evidence in detail.
Affirmative evidence of either or both rights and legitimate interests and good faith registration of the disputed domain name goes one step further because not only does it undermine the complainant’s contentions and argument, it is conclusive that Respondent’s registration of the disputed domain name is not targeting the complainant’s mark.
I offer these cited decisions to underscore how panelists deliberate in balancing rights, for that is the ultimate objective in weighing liability. The cases are also instructive in the craft of pleading and proving or defending one’s interests, but finding on-point cases involves research skills likely to be outside unrepresented parties’ skill sets (unless represented by counsel) and for the unskilled the learning process ordinarily begins with the Policy and Rules of Procedure. But in dipping into the Policy, they are unlikely to be satisfied as to what they must do.
The Policy’s guidance to parties is quite modest. It assumes more knowledge of practice than unrepresented parties generally have. Complainants are instructed that “in the administrative proceeding, [it] must prove that each of these three elements are present.” And in “responding to a complaint” the respondent is given instructions for “demonstrate[ing] your rights to and legitimate interests in responding to the complaint.” What this means in practice is that the parties must file well-crafted pleadings that are more than a mélange of pugilistic allegations and contentions. Indeed, if that were all a party had to offer, it would fail.
Paragraph 4(c) of the Policy and Rules of Procedure at Paragraph 5(c)(i) provide some minimal guidance to domain name registrants, but this “guidance” is not framed in language easily digestible to lay respondents, or for that matter to lay complainants or representatives unfamiliar with the arcana of the developed jurisprudence. Of course, they can always consult the WIPO Overview of Panel Views on Selected WIPO Questions, which I intend to get to in Part 3.
Para. 4(c) states: “When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared.” And when they turn to Paragraph 5 they are told to “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name.” No lawyer would disagree that this is excellent advice but what precisely is the meaning of “all bases” to a layman and what specifically are the affirmative defenses considered apart from the three “circumstances” set forth in Paragraph 4(c) of the Policy?[5]
When we talk about prevailing or failing in a dispute we are immediately confronted not only by questions as to how this may be accomplished but also of what law should be applied in reaching a just result. In Part 2 I’m going to take a stab at explaining some of the challenges in responding to UDRP complaints, and then in Part 3 discuss the jurisprudence developed over the past quarter century and identify online and published materials for further guidance beyond the Policy and Rules to assist in meeting the burdens of proving and rebutting claims of cybersquatting.
[1] ICANN, Second Staff Report on Implementation Documents for Uniform Dispute Resolution Policy, Section 4.1(c) (October 24, 1999), at http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm states: “The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of ‘abusive registrations.” Panelists have construed “narrow” to mean “clear cases of cybersquatting.”
[2] See for example, discussion by N. Cohen in ICA Weekly Digest April 29, 2025 of Libbs Farmaceutica Ltda v. 李林阳(Li Lin Yang), Case No. D2025-0633 (M. Kennedy). The Panel transferred <libbs.com>. Did this meet the “smell test.”
[3] That the UDRP is consistent with arbitration procedure is acknowledged in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.0, § 4.3: “Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” The American Arbitration Association is more succinct: “If no answering statement is filed within the stated time, the respondent will be deemed to deny the claim.” Commercial Arbitration Rules R-5 (2013).
[4] See Z. Muskovitch’s comment in the ICA Weekly Digest that this dispute was not a clear case of cybersquatting. It is not an isolated example: open to the same criticism is <davidson.email> in The Trustees of Davidson College Corp. v. Domain Privacy / Domain Name Privacy Inc. Claim Number: FA2502002142241 (Forum March 23, 2025) (Ho-Hyun Nahm). “Davidson” is a common surname and there’s no evidence of targeting.
[5] J. Berryhill a prominent respondents’ representative reminds us that the Uniform Rapid Suspension System which is an ICANN consensus Policy incorporates several affirmative defense at paragraphs 5.8 and 5.9. These defenses are only elliptically noted in Paragraph 4(c) which states that “any of the following [three] circumstances, in particular but without limitation [. . .] shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii).” It would assist respondents if paragraphs 5.8 and 5.9 were added to Paragraph 4(c) as a footnote.